DETAILED ACTION
This Office action is responsive to communication received 10/24/2023 – application papers received, including power of attorney, IDS, miscellaneous incoming letter styled “Rescission of any Prior Disclaimers and Request to Revisit Art”; and 12/06/2023 – Replacement Drawings.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continuation Data
This application is a CON of 17/460,072 08/27/2021 PAT 11813506.
Drawings
The replacement drawings were received on 12/06/2023. These drawings are acceptable.
Status of Claims
Claims 1-20 are pending.
FOLLOWING IS AN ACTION ON THE MERITS:
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,813,506.
For double patenting to exist as between the rejected claims and patent claims 1-20, it must be determined that the rejected claims are not patentably distinct from patent claims 1-20. In order to make this determination, it first must be determined whether there are any differences between the rejected claims and patent claims 1-20 and, if so, whether those differences render the claims patentably distinct.
Specific to claims 1-20, it is clear that all the elements of instant claims 1-20 are found in claims 1-20 of the prior ‘506 patent. The difference between instant claims 1-20 of the application and claims 1-20 of the prior ‘506 patent lies in the fact that the ‘506 patent claims include many more elements and are thus much more specific. For example, the claims of the ‘506 patent further require “wherein said filler is substantially evenly distributed throughout said binder”. Thus the invention of claims 1-20 of the ‘506 patent is in effect a “species” of the “generic” invention of claims 1-20. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1-20 are anticipated by claims 1-20 of the prior ‘506 patent, claims 1-20 are not patentably distinct from claims 1-20 of the ‘506 patent.
As to independent claim 1, see claim 1 of the ‘506 patent.
As to independent claim 2, see claim 1 of the ‘506 patent and also see claim 18 (dependent upon claim 11) of the ‘506 patent.
As to claims 3-7, see claim 1 of the ‘506 patent.
As to claim 8, see claim 2 of the ‘506 patent.
As to claim 9, see claim 9 (dependent upon claim 2) of the ‘506 patent.
As to claim 10, see claim 10 (dependent upon claim 2) of the ‘506 patent.
As to independent claim 11, see claim 9 (dependent upon claim 2) of the ‘506 patent.
As to claim 12, again, see claim 9 (dependent upon claim 2) of the ‘506 patent.
As to claim 13, see claim 13 (dependent upon claim 11) of the ‘506 patent.
As to claim 14, see claim 14 (dependent upon claim 11) of the ‘506 patent.
As to claim 15, see claim 15 (dependent upon claim 11) of the ‘506 patent.
As to claim 16, see claim 16 (dependent upon claim 11) of the ‘506 patent.
As to claim 17, see claim 17 (dependent upon claim 11) of the ‘506 patent.
As to claim 18, see claim 18 (dependent upon claim 11) of the ‘506 patent.
As to claim 19, see claim 19 (dependent upon claim 11) of the ‘506 patent.
As to claim 20, see claim 20 (dependent upon claim 11) of the ‘506 patent.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by US PUBS 2020/0282277 to Spackman (filed 02/28/2020).
As to independent claim 1, Spackman discloses a golf club head (100) comprising: a striking face (120) comprising a top (104), a bottom (108), a heel side (116), and a toe side (112), as shown in FIG. 4; a hosel (FIG. 2, not numbered) located at said heel side (116) of said striking face (120); wherein said toe side (112) is opposite said heel side (116); a sole extending rearwards from said bottom of said striking face (120), as shown in FIG. 8; a topline extending rearwards from said top of said striking face (120), as shown in FIG. 8; wherein said striking face (120) comprises a front surface configured to strike a golf ball and a rear surface (136) opposite said front surface; and a damping element (148) abutting said rear surface (136) of said striking face (120); wherein said damping element (148) covers a majority of said rear surface of said striking face (120) (i.e., paragraph [0064] discloses that the filler may be applied to the entirety of the rear surface of the striking face); wherein said damping element (148) comprises a filler (i.e., graphene particles; see paragraphs [0042] – [0051]); and wherein said filler comprises a plurality of particles (i.e., graphene flakes), wherein said plurality of particles of said filler are less than 5.0 mm in diameter (i.e., paragraph [0046] explains that the flake size corresponds to the diameter of the flakes and can range from 10 microns to 10000 microns (0.010 mm to 10.0 mm)).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. In Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009), the Federal Circuit offered additional instruction as to the need for an explicit analysis. The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.
"[T]he analysis that "should be made explicit" refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis. . . . Under the flexible inquiry set forth by the Supreme Court, the district court therefore erred by failing to take account of 'the inferences and creative steps,' or even routine steps, that an inventor would employ and by failing to find a motivation to combine related pieces from the prior art." Ball Aerosol, 555 F.3d at 993, 89 USPQ2d at 1877.
The Federal Circuit’s directive in Ball Aerosol was addressed to a lower court, but it applies to Office personnel as well. When setting forth a rejection, Office personnel are to continue to make appropriate findings of fact as explained in MPEP § 2141 and § 2143, and must provide a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art at the time of the invention. This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.
I. EXEMPLARY RATIONALES
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Claims 2, 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2020/0282277 to Spackman (filed 02/28/2020).
As to independent claim 2, Spackman discloses a golf club head (100) comprising: a striking face (120) comprising a front surface configured to strike a golf ball and a rear surface (136) opposite said front surface (120); and a damping element (148) abutting said rear surface (136) of said striking face (120); wherein said damping element (148) covers a majority of said rear surface (136) of said striking face (120) (i.e., paragraph [0064] discloses that the filler may be applied to the entirety of the rear surface of the striking face); wherein said damping element (148) comprises a binder (i.e., paragraph [0047] discloses suitable “carriers” or binders) and a filler (i.e., graphene particles; see paragraphs [0042] – [0051]); wherein said damping element (148) comprises an average thickness.
Spackman differs from the claimed invention in that Spackman does not explicitly disclose that the “average thickness of said damping element is greater than or equal to 5 µm and less than or equal to 100 µm”. Instead, Spackman discloses a range of thicknesses for the filler outside of the claimed range. Specifically, paragraph [0067] discloses that the thickness of the filler may range from 0.01 inch to 0.20 inch (254 µm to 5080 µm). Here, the applicant has not disclosed any criticality for the claimed thickness. Moreover, Spackman clearly guides the skilled artisan to control the thickness of the filler material so as not to add significant weight to the club head while enhancing the sound attenuation properties of the golf club head (i.e., see paragraphs [0027] and [0088]). In view of the guidance in Spackman, obtaining the proper thickness for the damping element in order to provide desired acoustical properties and vibration control would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention and would have involved a matter of routine experimentation. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05.
As to claim 8, in Spackman, said filler comprises a plurality of particles, and wherein said plurality of particles of said filler are less than 1.0 mm in diameter (i.e., paragraph [0046] explains that the flake size corresponds to the diameter of the flakes and can range from 10 microns to 10000 microns (0.010 mm to 10.0 mm)).
As to claim 10, in Spackman, said damping element comprises a mass, wherein said mass of said damping element is greater than or equal to 50 mg and less than or equal to 1000 mg (i.e., Spackman discloses a mass of the damping element as between 1 gram and 20 grams; see paragraph [0062]).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2020/0282277 to Spackman (filed 02/28/2020) in view of US PUBS 2014/0037939 to Misumi et al (hereinafter referred to as “Misumi”).
As to claim 3, said binder (i.e., referred to as a “carrier” in Spackman) comprises a polymer (i.e., see paragraph [0047]).
Although Spackman does not explicitly detail the use of “metal” as a filler, given one interpretation, said filler comprises a metal (i.e., Spackman uses Graphene; see paragraph [0046]; Graphene by definition is a semi-metal, with characteristics of metal materials). Even if one were to argue that Graphene is not a metal, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to substitute metal particulates for the Graphene material in Spackman to achieve the desired vibration damping characteristics, in view of the teaching in Misumi, which teaches that either Graphene or metal particulates may be used as a filler material when constructing a damping material for a golf club head (i.e., see paragraphs [0110] and [0192] in Misumi). The selection of a metal filler would have involved the obvious selection of a known material that is also used as part of a damping material. See MPEP 2144.07. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.) See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (Claimed agricultural bagging machine, which differed from a prior art machine only in that the brake means were hydraulically operated rather than mechanically operated, was held to be obvious over the prior art machine in view of references which disclosed hydraulic brakes for performing the same function, albeit in a different environment.).
Claims 4-7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2020/0282277 to Spackman (filed 02/28/2020) in view of Document ID JP 2004261447 A to Hideki et al (hereinafter referred to as “Hideki”).
As to claims 4-5, Spackman does not disclose the particular, claimed density of the filler material. The applicant has disclosed that Mn-20CU-5Ni-2Fe is a suitable filler material for the damping element (i.e., see Specification – paragraphs [0055] and [0059]). Here, the applicant has simply used a material known in the golf club head art. Note that the teaching reference to Hideki discloses the use of the known Mn-20CU-5Ni-2Fe material, which is utilized in the golf club head art in view of its high vibration damping performance (i.e, see translated paragraph [0019] of Hideki). The filler disclosed by Hideki has been disclosed by the applicant as exhibiting a density of 7.25 g/cc, which meets the claimed density requirements of claims 4-5. Here, the substitution of the filler material in Spackman with another, known filler material, specifically Mn-20CU-5Ni-2Fe, to take advantage of the vibration damping performance of the known material would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.) See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (Claimed agricultural bagging machine, which differed from a prior art machine only in that the brake means were hydraulically operated rather than mechanically operated, was held to be obvious over the prior art machine in view of references which disclosed hydraulic brakes for performing the same function, albeit in a different environment.). See MPEP 2144.07.
As to claims 6-7 and 9, the applicant has disclosed that materials such as rubber, resin, polyester, thermoplastic polyurethane and silicone are suitable as a binder material (i.e., see Specification – paragraph [0055]). Clearly, these materials disclosed by the applicant are incorporated for meeting the claimed requirements of the binder. Similarly, Spackman has disclosed that materials available as a carrier (i.e., a binder) include, by way of example, a resin, rubber, a silicone, or a polyurethane elastomer (i.e., see paragraph [0047] in Spackman). Moreover, as noted above under the rejections of claims 4-5, the applicant has disclosed that Mn-20CU-5Ni-2Fe is a suitable filler material for the damping element and for meeting the claimed density requirements (i.e., see Specification – paragraphs [0055] and [0059]). Again, Hideki teaches that Mn-20CU-5Ni-2Fe is known and utilized in the golf club head art for its vibration absorption characteristics. Considering the readily-available nature of the materials used as the filler and the binder and considering that Spackman recognizes that material properties of a filler such as density, hardness, thickness and mass may be selectively altered to tailor the vibration damping characteristics of the club head (i.e., see paragraphs [0048], [0049], [0063] and [0067] in Spackman), it is clear that combining a suitable filler and binder of known density and/or known mass and further optimizing a ratio between the density of the filler and the binder or a ratio between the mass of the binder and the mass of the filler would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention and would have been attainable through routine experimentation. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05. It is further noted that no criticality whatsoever has been disclosed by the applicant for the claimed “wherein a ratio of said density of said filler divided by said density of said binder is greater than or equal to 3”, as set forth in claim 6, or for the claimed “wherein a ratio of said density of said filler divided by said density of said binder is greater than or equal to 5”, as set forth in claim 7.
Claims 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2020/0282277 to Spackman (filed 02/28/2020) in view of in view of Document ID JP 2004261447 A to Hideki et al (hereinafter referred to as “Hideki”) and also in view of US PUBS 2014/0037939 to Misumi et al (hereinafter referred to as “Misumi”).
As to independent claim 11, Spackman discloses a golf club head (100) comprising: a striking face (120) comprising a front surface configured to strike a golf ball and a rear surface (136) opposite said front surface, as shown in FIG. 8; and a damping element (148) abutting said rear surface (136) of said striking face (120); wherein said damping element (148) comprises a binder (i.e., Spackman refers to a “carrier”, which serves as a binder: see paragraph [0447]) and a filler (i.e., see paragraphs [0042] – [0046]); wherein said binder comprises a polymer (i.e., again, see paragraph [0047]).
Spackman does not explicitly disclose “wherein said filler comprises a metal; and wherein said binder has a mass; wherein said filler has a mass; and wherein a ratio of said mass of said binder divided by said mass of said filler is greater than or equal to 4 and less than or equal to 20”.
Given one interpretation, said filler in Spackman comprises a metal (i.e., Spackman uses Graphene; see paragraph [0046]; Graphene by definition is a semi-metal, with characteristics of metal materials). Even if one were to argue that Graphene is not a metal, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to substitute metal particulates for the Graphene material in Spackman to achieve the vibration damping characteristics desired by the club head designer, in view of the teaching in Misumi, which teaches that either Graphene or metal particulates may be used as a filler material when constructing a damping material for a golf club head (i.e., see paragraphs [0110] and [0192] in Misumi). The selection of a metal filler would have involved the obvious selection of a known material that is also used as part of a damping material. See MPEP 2144.07. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.) See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (Claimed agricultural bagging machine, which differed from a prior art machine only in that the brake means were hydraulically operated rather than mechanically operated, was held to be obvious over the prior art machine in view of references which disclosed hydraulic brakes for performing the same function, albeit in a different environment.).
The applicant has disclosed that materials such as rubber, resin, polyester, silicone and thermoplastic polyurethane are suitable as a binder material (i.e., see Specification – paragraph [0055]). Clearly, these materials disclosed by the applicant are incorporated for meeting the claimed requirements of the binder. Similarly, Spackman has disclosed that materials available as a carrier (i.e., a binder) include, by way of example, a resin, rubber, a silicone, or a polyurethane elastomer (i.e., see paragraph [0047] in Spackman). Moreover, the applicant has disclosed that Mn-20CU-5Ni-2Fe is a suitable filler material for the damping element and meeting the claimed density requirements (i.e., see Specification – paragraphs [0055] and [0059]). Hideki teaches that Mn-20CU-5Ni-2Fe is known and utilized in the golf club head art for its vibration absorption characteristics (i.e., see paragraph [0019] in Hideki). Considering the readily-available nature of the materials used as the filler and the binder and considering that Spackman recognizes that material properties of a filler such as density, hardness, thickness and mass may be selectively altered to tailor the vibration damping characteristics of the club head (i.e., see paragraphs [0048], [0049], [0063] and [0067] in Spackman), it is clear that combining a suitable filler and binder of known density and/or known mass and further optimizing a ratio between the mass of the filler and the mass of the binder would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention and would have been attainable through routine experimentation. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05. It is further noted that no criticality whatsoever has been disclosed by the applicant for the claimed “wherein said ratio of said mass of said binder divided by said mass of said filler is greater than or equal to 4 and less than or equal to 20”, as set forth in claim 11.
As to claim 12, in Spackman, said damping element (148) covers a majority of said rear surface (136) of said striking face (120) (i.e., paragraph [0064] discloses that the filler may be applied to the entirety of the rear surface of the striking face).
As to claims 13-15 and 20, the applicant has disclosed that materials such as rubber, resin, polyester, thermoplastic polyurethane and silicone are suitable as a binder material (i.e., see Specification – paragraph [0055]). Clearly, these materials disclosed by the applicant are incorporated for meeting the claimed requirements of the binder. Similarly, Spackman has disclosed that materials available as a carrier (i.e., a binder) include, by way of example, a resin, rubber, a silicone, or a polyurethane elastomer (i.e., see paragraph [0047] in Spackman). Moreover, as noted above under the rejection of claims 11, the applicant has disclosed that Mn-20CU-5Ni-2Fe is a suitable filler material for the damping element and meeting the claimed density requirements (i.e., see Specification – paragraphs [0055] and [0059]). Again, Hideki teaches that Mn-20CU-5Ni-2Fe is known in the golf club head art for its vibration absorption characteristics. Considering the readily-available nature of the materials used as the filler and the binder and considering that Spackman recognizes that material properties of a filler such as density, hardness, thickness and mass may be selectively altered to tailor the vibration damping characteristics of the club head (i.e., see paragraphs [0048], [0049], [0063] and [0067] in Spackman), it is clear that combining a suitable filler and binder of known density and/or known mass and further optimizing a ratio between the density of the filler and the density of the binder or a ratio between the mass of the binder and the mass of the filler would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention and would have been attainable through routine experimentation. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05. It is further noted that no criticality whatsoever has been disclosed by the applicant for the claimed “wherein a ratio of said density of said filler divided by said density of said binder is greater than or equal to 5”, as set forth in claim 15, or for the claimed “wherein said ratio of said mass of said binder divided by said mass of said filler is greater than or equal to 6 and less than or equal to 15”, as set forth in claim 20.
As to claim 16, in Spackman, said filler comprises a plurality of particles, and wherein said plurality of particles of said filler are less than 5.0 mm in diameter (i.e., paragraph [0046] explains that the flake size corresponds to the diameter of the flakes and can range from 10 microns to 10000 microns (0.010 mm to 10.0 mm)).
As to claim 17, in Spackman, said filler comprises a plurality of particles, and wherein said plurality of particles of said filler are less than 1.0 mm in diameter (i.e., paragraph [0046] explains that the flake size corresponds to the diameter of the flakes and can range from 10 microns to 10000 microns (0.010 mm to 10.0 mm)).
As to claim 18, Spackman differs from the claimed invention in that Spackman does not explicitly disclose that the “average thickness of said damping element is greater than or equal to 5 µm and less than or equal to 100 µm”. Instead, Spackman discloses a range of thicknesses for the filler outside of the claimed range. Specifically, paragraph [0067] discloses that the thickness of the filler may range from 0.01 inch to 0.20 inch (254 µm to 5080 µm). Here, the applicant has not disclosed any criticality for the claimed thickness. Spackman clearly guides the skilled artisan to control the thickness of the filler material so as not to add significant weight to the club head while enhancing the sound attenuation properties of the golf club head (i.e., see paragraphs [0027] and [0088]). Obtaining the proper thickness for the damping element in order to provide desired acoustical properties and vibration control would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention and would have been a matter of routine experimentation. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05.
As to claim 19, in Spackman, said damping element comprises a mass, wherein said mass of said damping element is greater than or equal to 50 mg and less than or equal to 1000 mg (i.e., Spackman discloses a mass of the damping element as between 1 gram and 20 grams; see paragraph [0062]).
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Fig. 1D in Park;
Paragraphs [0021] – [0022] in Chen;
Figs. 3-5 in Gilbert;
Fig. 6 in Hutin;
JP H09316234 A discusses polymer binders and metal fillers along with consideration of thickness and density for a composite material used for vibration absorption.
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711