DETAILED ACTION
This Office action is responsive to communication received 05/21/2026 – Terminal Disclaimer; and 05/22/2026 – Amendment.
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 .
Terminal Disclaimer
The terminal disclaimer filed on 05/21/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of USPNs 11826620 and 11786789 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Status of Claims
Claims 5-12, 14-15 and 17-20 remain pending.
Response to Arguments
In the arguments received 05/22/2026 and directed to the rejection of claims 5-6 and 9-11 under 35 U.S.C. 103 as being unpatentable over US PUBS 2014/0302944 to Roach et al (hereinafter referred to as “Roach”) in view of US PUBS 2008/0318708 to Clausen et al (hereinafter referred to as “Clausen”), the applicant contends that the claimed “Shore A hardness less than 20” is critical to the performance of the golf club head and alleges that the Office has dismissed the hardness of the second portion of the damping element as non-critical, without providing any rationale or evidence. No further specific arguments were set forth with respect to the outstanding rejections of claims 7-8 under 35 U.S.C. §103.
IN RESPONSE:
In response to the applicant’s assertion that the claimed “wherein said second portion of said damping element has a Shore A hardness less than 20” is critical to the performance of the club head, it is noted that the applicant discloses that the first material of the damping element may include a higher hardness than the second material of the damping element or that the first material of the damping element may include a lower hardness than the second material of the damping element. The applicant notes several examples of combinations of Shore A hardness values for the first and second materials of the damping element and discloses that through the inclusion of multiple materials, “not only can the face be supported and the coefficient of restitution be altered, but additional benefits including reduced vibration for better feel and sound can be attained” (i.e., see Specification, paragraph [00262]). Nowhere does the applicant disclose that the specific, claimed “Shore A hardness less than 20” for the second portion of the damping element is critical. In other words, nowhere does the applicant disclose the effects on the second portion of the damping element of having a Shore A hardness greater than 20 vs. less than 20 and that a Shore A hardness less than 20 provides some unexpected result. Here, the primary reference to Roach similarly details the benefits of reduced vibration for better feel and sound by disclosing that “vibration tuning is accomplished using one or more damping inserts 26” and that “the inserts may be constructed to provide different amounts of dampening at different locations, such as by utilizing different materials and dimensions” (i.e., see paragraph [0070] in Roach). Thus, the applicant has not presented any unexpected advantages or results by reciting a Shore A hardness less than 20 for the second portion of the damping material. See MPEP §2144.05 stating: “Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See also Minerals Separation, Ltd. v. Hyde, 242 U.S. 261, 271 (1916) (a patent based on a change in the proportions of a prior product or process (changing from 4-10% oil to 1% oil) must be confined to the proportions that were shown to be critical (1%)); In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205 (CCPA 1946) ("Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.")”. Also, see MPEP §716.02 - §716.02(g).
Since no specific arguments have been presented against the outstanding rejections of claims 7-8 under 35 U.S.C. §103, no further comments are deemed necessary, here.
FOLLOWING IS AN ACTION ON THE MERITS:
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 5-6 and 9-11 STAND rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2014/0302944 to Roach et al (hereinafter referred to as “Roach”) in view of US PUBS 2008/0318708 to Clausen et al (hereinafter referred to as “Clausen”).
At the outset, it is noted that the effective filing date of claims 5-6 and 9-11 is the filing date of the parent application serial number 17/377,696, filed 07/16/2021.
As to independent claim 5, Roach shows a golf club head (FIGS. 1-3) comprising: a striking face (14); a periphery portion surrounding and extending rearwards from said striking face (the periphery is shown in FIG. 1 as extending rearwardly from a rear surface of the striking face); a coordinate system centered at a center of gravity of said golf club head, said coordinate system comprising a y-axis extending vertically, perpendicular to a ground plane when said golf club head is in an address position at prescribed loft and lie, an x-axis perpendicular to said y-axis and parallel to the striking face, extending towards a heel of said golf club head, and a z-axis perpendicular to said y-axis and said x-axis and extending through said striking face (i.e., Roach shows a coordinate system in FIG. 1; also, every club head can be identified with an xyz coordinate system centered at the center of gravity); wherein said striking face comprises a front surface configured to strike a golf ball (i.e., striking face 14 in FIGS, 2-3 is intended to strike a golf ball) and a rear surface (22) opposite said front surface (14); a support arm (12) spaced from said rear surface (22) of said striking face (14); wherein said support arm (12) abuts said periphery portion at two distinct locations (i.e., in FIG. 21A, a central support arm 12 extends from a periphery adjacent the top to a periphery adjacent the sole); a damping element residing between said support arm and said rear surface of said striking face; wherein said damping element comprises a front surface in contact with said rear surface of said striking face and a rear surface in contact with said support arm (i.e., paragraph [0101]), wherein the damping element comprises a first portion and a second portion, with the second portion at least partially surrounding the first portion (i.e., with reference to the embodiment in FIGS. 1-4, a damping material may be placed between the support arms (12) and the rear surface of the striking face, with the damping material being in the form of inserts that fill the cavities in the toe, central and heel portions formed by the truss members (12); thus the damping element in the toe section and the damping element in the heel section may be considered as partially surrounding a first portion of the damping element situated within the central cavity (i.e., see paragraphs [0071] – [0074]); said damping element comprises an elastomer (i.e., paragraph [0101]).
Roach does not explicitly show “wherein said first portion of said damping element has a greater durometer than said second portion of said damping element; wherein said first portion of said damping element has a Shore A hardness greater than 30 and less than 95; and wherein said second portion of said damping element has a Shore A hardness less than 20”. Clausen shows it to be old in the art to make use of two, separate elastomeric materials, with the durometer of one of the elastomeric materials (34) being greater than the durometer of the other one of the elastomeric materials (36), whereby the damping effect of the combined materials is greatly enhanced over the use of just one material of a given durometer hardness. See paragraph [0014] in Clausen. According to paragraph [0013] in Clausen, a first portion (34) includes a Shore A hardness of between 70-80, while a second portion (36) that partially surrounds the first portion (34) includes a Shore A hardness of between 40-50. Regarding the claimed “Shore A hardness less than 20” of the second portion, note that Roach hints of using one or more or a variety of vibration damping materials not only for insert (26), but also for additional inserts that may be inserted within the heel, toe and central cavities and between the rear surface of the striking face and the support arms or trusses (12). See paragraphs [0070], [0071] in Roach. In view of the publication to Clausen, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the device in Roach by incorporating a damping element having first and second portions, with each of the first and second portions having a different durometer hardness, with there being a reasonable expectation of success that combining materials of varying hardness would have served to enhance and provide a greater reduction in the vibration generated during impact with a golf ball. Here, modifying the club head in Roach would have involved the simple substitution of one known element (i.e., a damping element comprising two materials of diverse hardness, as taught by Clausen) for another (i.e., the damping inserts within the heel, central and toe portions within the cavity in Roach) to obtain predictable results (i.e., superior vibration damping). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). Moreover, the claimed “Shore A hardness less than 20” of the second portion is not deemed critical.
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As to claim 6, Roach notes that a plurality of fasteners may be used, with each of said plurality of fasteners engaging said support arm (12) and said periphery portion (i.e., paragraph [0069]).
As to claim 9, said support arm (12) in Roach is formed separately from said periphery portion (i.e., paragraph [0069]).
As to claim 10, said support arm (12) in Roach extends substantially vertically (i.e., in at least FIG. 21A, a central support arm or truss member (12) extends from the topline to bottom line peripheral portions).
As to claim 11, said damping element in Roach comprises an elastomer (i.e., paragraph [0101]).
Claim 7 STANDS rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2014/0302944 to Roach et al (hereinafter referred to as “Roach”) in view of US PUBS 2008/0318708 to Clausen et al (hereinafter referred to as “Clausen”) and also in view of the combined teachings of USPN 8,974,317 to Griffin et al (hereinafter referred to as “Griffin”) and USPN 6,030,295 to Takeda.
At the outset, it is noted that the effective filing date of claim 7 is the filing date of the parent application serial number 17/377,696, filed 07/16/2021.
As to claim 7, Roach, as modified by Clausen, lacks “a medallion secured to said golf club head via said plurality of fasteners”. Each of Griffin and Takeda shows that a medallion or cover element may be assembled on the periphery of an iron-type golf club head to provide a closure for the rear cavity-back design of the iron-type club head, with the medallion or cover either serving some function in terms of weighting or vibration damping or simply being used to enhance the aesthetics of the club head. See cover (60) in FIGS. 6-7; col. 4, lines 1-8, lines 31-42 and lines 48-51 in Griffin. See cover (17) in FIG. 1; col. 3, lines 24-28; col. 4, lines 29-34; and col. 4, line 66 through col. 5, line 8 in Takeda. In view of the combined teachings to Griffin and Takeda, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the club head in Roach by supplying the club head (e.g., the embodiment in FIG. 21A) with a rear medallion that forms a closed or covered interior cavity, whereby the support arms (12) and any filler material located within the cavity would have been hidden from view. In this way, the club head would have been provided with a more aesthetically-pleasing exterior while simultaneously protecting the support arm (12) and the filler material from any inadvertent damage. Here, the addition of a medallion (i.e., as taught by Griffin and Takeda, which show cavity-backed, iron-type club heads) to the cavity-backed iron-type club head of Roach would simply have involved combining prior art elements according to known methods to yield predictable results. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). That the claim requires the medallion be secured to the golf club via the plurality of fasteners merely presents one of numerous and obvious means by which the skilled artisan would have been aware of to securely fasten the medallion to the periphery of the club head.
Claim 8 STANDS rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2014/0302944 to Roach et al (hereinafter referred to as “Roach”) in view of US PUBS 2008/0318708 to Clausen et al (hereinafter referred to as “Clausen”) and also in view of USPN 7,476,162 to Stites et al (hereinafter referred to as “Stites”).
At the outset, it is noted that the effective filing date of claim 8 is the filing date of the parent application serial number 17/377,696, filed 07/16/2021.
As to claim 8, Roach, as modified by Clausen, lacks “wherein said support arm comprises a plurality of apertures configured to receive said plurality of fasteners, and wherein said periphery portion comprises a plurality of apertures configured to receive said plurality of fasteners”. Note that Roach does disclose that the strut members (12) may be attached to the rear of the face portion and/or to the perimeter via removable fasteners (i.e., see paragraph [0069]). Stites shows an arrangement in which a support (34) arm comprises a plurality of apertures configured to receive a plurality of fasteners (35), and wherein a periphery portion of a golf club head comprises a plurality of apertures configured to receive said plurality of fasteners. FIG. 3 shows that the support arm (34) is fastened to the periphery at heel and toe portions with screws (35) and thus the support arm and the periphery portions at the heel and toe must include apertures through which the screws (35) are fitted. In view of the teaching in Stites, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the device in Roach by using a combination of fasteners and apertures on each of the struts (12) and the club head periphery in order to easily accommodate the removal and attachment of the struts (12), with such a modification involving the use of an obvious change in the mechanical expedient used to secure the struts (12) to the club head.
Allowable Subject Matter
Claims 12, 14-15 and 17-20 are allowable over the prior art references of record in view of the timely-submitted and properly-filed terminal disclaimer, received 05/21/2026.
Moreover, the closest prior art of record includes US PUBS 2014/0302944 to Roach et al, along with US PUBS 2008/0318708 to Clausen et al, USPN 8,974,317 to Griffin et al and USPN 6,030,295 to Takeda. Without the benefit of applicant’s disclosure, it would not have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified any of the prior art devices of record to include the features “wherein said damping element comprises a first portion and a second portion, said second portion at least partially surrounding said first portion; wherein said first portion is substantially cylindrical in shape and wherein said second portion comprises a substantially cylindrical cavity, where said first portion resides within said substantially cylindrical cavity of said second portion” in combination with all of the remaining limitation set forth in independent claim 12.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711
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