DETAILED ACTION
This Office action is responsive to communication received 12/10/2025, Amendment, including Terminal Disclaimer and 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 .
Terminal Disclaimer
The terminal disclaimer filed on 12/10/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of USPNs 11779816; 11504585; and 11202944 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Drawings
The replacement drawing (FIG. 3B) was received on 12/10/2025. This replacement drawing is acceptable.
Status of Claims
Claims 1-15 and 17-21 remain pending.
Response to Arguments
In the arguments received 12/10/2025, the applicant addresses the objections to the drawings, the rejection of the claims under 35 U.S.C. §112(a) as well as the rejection of the claims under 35 U.S.C. §112(b). Next, the applicant contends that the primary prior art reference to Amano (USPN 8,827,833) does not anticipate the claimed invention, as the independent claims now require that “the second plurality of features have a different shape than the first plurality of features” and that “the third plurality of features have a different shape than the first plurality of features”. The applicant further contends that none of the further prior art references applied in the rejections teaches the different shape of the second plurality of features and the third plurality of features, and argues that there is no articulated reasoning to support an obviousness conclusion, noting KSR Int'l Co. v. Teleflex Inc.
IN RESPONSE:
Applicant’s arguments with respect to the rejection of claims 1-20 under 35 U.S.C. §112(a) have been fully considered and are persuasive.
Applicant’s arguments with respect to the rejection of claims 1-20 under 35 U.S.C. §112(b) have been fully considered and are persuasive.
Applicant’s arguments with respect to the prior art reference to Amano have been considered. Applicant's amendment to independent claims 1, 12 and 17 to further require that the second plurality of features and the third plurality of features include a different shape than the first plurality of features has necessitated a new grounds of rejection. Admittedly, Amano differs from the claimed invention in that Amano does not explicitly disclose a “different shape”, when detailing the second plurality of features as compared to the first plurality of features and when comparing the third plurality of features as compared to the first plurality of features. Here, Kitigawa et al (US PUBS 2016/0008678) shows it to be old in the art to provide a striking face with grooves of different shapes (i.e., see paragraph [0050]). The groove shape affects the surface roughness of the striking surface which in turn affects the spin of a struck golf ball (i.e., see paragraphs [0004], [0025], [0038] and [0056]). In view of the teaching in Kitigawa, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Amano by providing select ones of the plurality of features with a different shape (e.g., providing the second and third plurality of features with a different shape as compared to the first plurality of features), with there being a reasonable expectation of success that altering the shape of the plurality of features would have directly resulted in a change in the spin characteristics of the striking face through a change in the surface roughness of the striking face and would have thus enabled the skilled artisan to improve the club head performance.
The applicant’s arguments directed towards the remaining prior art references applied in the rejections are of a general nature, summarizing the teachings of each prior art reference and alleging that none of the remaining prior art references applied in the outstanding rejections cure the deficiencies of Amano. As such, 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.
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"[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.
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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.
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I. EXEMPLARY RATIONALES
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Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(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;
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(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 1-3, 7-8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Amano (USPN 8,827,833) in view of US PUBS 2016/0008678 to Kitigawa et al (hereinafter referred to as “Kitigawa”).
Applicant’s attention is directed to the annotated version of FIG. 7 of Amano, below:
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As to claim 1, Amano shows a golf club head (1) having a crown (i.e., both wood-type and iron-type club heads are disclosed, with wood-type club heads usually being identified as having a crown; col. 8, lines 16-17 and 50-52), a sole, and a club face and comprising: a first plurality of features (i.e., micro-grooves 4 are laser generated; col. 4, lines 54-55) generated on the central region of the club face, wherein the first plurality of features provides at least two of a height-intersection coverage of the central region of at least 80%, a width-intersection coverage of the central region of at least 80%, or a surface-area coverage of the central region of at least 25% (i.e., annotated FIG. 7 clearly shows that the microgrooves 4 account for coverage of at least 80% of height and at least 80% of the width of the central region as well as at least 25% of the surface area of the central region); a second plurality of features generated on the toe region of the club face, wherein the second plurality of features do not overlap with the first plurality of features. Amano shows a third plurality of features generated on the heel region of the club face, wherein the third plurality of features do not overlap with the first plurality of features.
It is further noted that the method steps in claim 1, namely “generating a first plurality of features…”, “generating a second plurality of features…” and “generating a third plurality of features…” are not enumerated in any particular order. Since claim 1 is cast in open terminology (i.e., “the method comprising”), the fact that a first, a second and a third plurality of features are generated by Amano in the locations and percentages claimed reveals that Amano comprises the claimed method steps regardless of the order in which the claimed steps are performed. Again, it is noted that the first, second and third plurality of features in Amano are “generated” via laser (i.e., micro-grooves 4 are laser-generated; col. 4, lines 54-55).
Amano differs from the claimed invention in that Amano does not explicitly disclose a “different shape”, when detailing the second plurality of features as compared to the first plurality of features and when comparing the third plurality of features as compared to the first plurality of features. Here, Kitigawa shows it to be old in the art to provide a striking face with grooves of different shapes (i.e., see paragraph [0050]). The groove shape affects the surface roughness of the striking surface which in turn affects the spin of a struck golf ball (i.e., see paragraphs [0004], [0025], [0038] and [0056]). In view of the teaching in Kitigawa, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Amano by providing select ones of the plurality of features with a different shape (e.g., providing the second and third plurality of features with a different shape as compared to the first plurality of features), with there being a reasonable expectation of success that altering the shape of the plurality of features would have directly resulted in a change in the spin characteristics of the striking face through a change in the surface roughness of the striking face and would have thus enabled the skilled artisan to improve the club head performance.
As to claim 2, in Amano, the second plurality features on the toe region of the club face are spaced apart, in a heel-to-toe direction, from the first plurality of features; and the third plurality of features on the toe region of the club face are spaced apart, in a heel-to-toe direction, from the first plurality of features (i.e., col. 7, lines 26-32 detail that the microgrooves 4 in the respective central, heel and toe regions are separated from one another).
As to claim 3, in Amano, the second plurality of features provides width-intersection coverage of the toe region of at least 80% and a surface-area coverage of the toe region of at least 10%; and the third plurality of features provides width-intersection coverage of the heel region of at least 80% and a surface-area coverage of the heel region of at least 10%, as clearly shown in annotated FIG. 7.
As to claim 7, in Amano, the width-intersection coverage of the central region by the first plurality of features is substantially the same as a width-intersection coverage of the toe region by the second plurality of features and a width intersection coverage of the heel region by the third plurality of features. Annotated FIG. 7 shows that “WT”, “WH” and “WC” are substantially equal in width. Also, see col. 7, lines 26-32.
As to claim 8, in Amano, the width-intersection coverage of the central region by the first plurality of features is at least 90%. Annotated FIG. 7 shows that the width of the central region is essentially covered across at least 90% of the width by grooves (4).
As to claim 10, Amano takes advantage of a laser-marking process (i.e., micro-grooves 4 are laser-generated; col. 4, lines 54-55). Also, the depth of the microgrooves (4) is disclosed as being about 20 µm (0.0007 inch), as described in col. 5, lines 7-15.
Claims 11-13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Amano (USPN 8,827,833) in view of US PUBS 2016/0008678 to Kitigawa et al (hereinafter referred to as “Kitigawa”) and also in view of Voges (US PUBS 2008/0051212).
As to claim 11, Amano, as modified by Kitigawa, lacks the features “wherein the first plurality of features form a diamond pattern and the second plurality of features form lines extending in a heel-to-toe direction”. Voges shows it to be old in the art to provide a groove pattern formed as any one or more of diamonds, cross, swirls, lines, circles, boxes, rectangles, or any other pattern in order to provide a desired surface effect such as a difference in reflected light or difference in the manner spin is imparted to a struck golf ball (i.e., see paragraphs [0019] - [0022] in Voges). In view of the teaching in Voges, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Amano by generating the first plurality of features with a diamond pattern in order to introduce a desirable feature (i.e., pattern or design) on the club face at the center region and/or to adjust the spin characteristics of the club face. In addition, and more specific to claim 11, the features of the second plurality of features are lines extending in a heel-to-toe direction. The lines in annotated FIG. 7 shown hereinabove are clearly depicted as extending in the heel-toe direction.
As to claim 12, Amano shows a golf club head (1) having a crown (i.e., both wood-type and iron-type club heads are disclosed, with wood-type club heads usually being identified as having a crown; col. 8, lines 16-17 and 50-52), a sole, and a club face, comprising: applying a coating (i.e., a nickel-plated layer is first applied across the base material of the face, as described in col. 4, lines 55-58) that covers the central region, the toe region, and the heel region of the golf club head; a first plurality of features (i.e., micro-grooves 4 are laser generated; col. 4, lines 54-55) generated on the central region, wherein the first plurality of features provide a width-intersection coverage of the central region of at least 80% and a surface-area coverage of the central region of at least 25%; a second plurality of features generated on the toe region, wherein the second plurality of features do not overlap with the first plurality of features, and are spaced apart, in a heel-to-toe direction, from the first plurality of features. Amano shows a third plurality of features formed on the heel region of the club face, wherein the third plurality of features do not overlap with the first plurality of features, and are spaced apart, in a heel-to-toe direction, from the first plurality of features. The first plurality of features creates a contrast with the second plurality of features and with the third-plurality of features (i.e., the fact that the microgrooves (4) in the central region are spaced apart from the microgrooves in each of the toe region and the heel region provides the required contrast, as broadly as claimed).
It is further noted that the method steps in claim 12, namely “applying a coating…”, “generating a first plurality of features…”, “generating a second plurality of features…” and “forming a third plurality of features…” are not enumerated in any particular order. Since claim 12 is cast in open terminology (i.e., “the method comprising”), the fact that a coating is applied and that a first, a second and a third plurality of features are generated by Amano in the locations and percentages claimed reveals that Amano comprises the claimed method, regardless of the order in which the claimed steps are performed. Again, it is noted that the first, second and third plurality of features in Amano are “generated” or “formed” via laser (i.e., micro-grooves 4 are laser-generated; col. 4, lines 54-55).
Amano lacks the features “wherein the first plurality of features form a diamond pattern”. Voges shows it to be old in the art to provide a groove pattern formed as any one or more of diamonds, cross, swirls, lines, circles, boxes, rectangles, or any other pattern in order to provide a desired surface effect such as a difference in reflected light or difference in the manner spin is imparted to a struck golf ball (i.e., see paragraphs [0019] - [0022] in Voges). In view of the teaching in Voges, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Amano by generating the first plurality of features with a diamond pattern in order to introduce a desirable feature (i.e., pattern or design) on the club face at the center region and/or to adjust the spin characteristics of the club face.
Amano further differs from the claimed invention in that Amano does not explicitly disclose a “different shape”, when detailing the second plurality of features as compared to the first plurality of features and when comparing the third plurality of features as compared to the first plurality of features. Here, Kitigawa shows it to be old in the art to provide a striking face with grooves of different shapes (i.e., see paragraph [0050]). The groove shape affects the surface roughness of the striking surface which in turn affects the spin of a struck golf ball (i.e., see paragraphs [0004], [0025], [0038] and [0056]). In view of the teaching in Kitigawa, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Amano by providing select ones of the plurality of features with a different shape (e.g., providing the second and third plurality of features with a different shape as compared to the first plurality of features), with there being a reasonable expectation of success that altering the shape of the plurality of features would have directly resulted in a change in the spin characteristics of the striking face through a change in the surface roughness of the striking face and would have thus enabled the skilled artisan to improve the club head performance.
As to claim 13, in Amano, the second plurality of features provides a width-intersection coverage of the toe region of at least 90% (i.e., annotated FIG. 7 shows that the width of the central region is essentially covered across at least 90% of the width by grooves 4); the second plurality of features do not extend into the central region; the third plurality of features provides a width-intersection coverage of the heel region of at least 90% (i.e., annotated FIG. 7 shows that the width of the central region is essentially covered across at least 90% of the width by grooves 4); and the third plurality of features do not extend into the central region (i.e., col. 7, lines 26-32 detail that the microgrooves 4 in the respective central, heel and toe regions are separated from one another).
As to claim 15, in Amano, the features of the second plurality of features and the third plurality of features are lines extending in a heel-to-toe direction. The lines in annotated FIG. 7 shown hereinabove are clearly depicted as extending in the heel-toe direction.
Claims 4-6 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Amano (USPN 8,827,833) in view of US PUBS 2016/0008678 to Kitigawa et al (hereinafter referred to as “Kitigawa”) and also in view of Carlyle (USPN 9,162,116).
As to claims 4 and 5, Amano, as modified by Kitigawa, does not explicitly disclose “wherein the first plurality of features has a maximum width between about 30% to 50% of a maximum width of the club face” (claim 4) and “wherein the central region has a maximum width that is between 30% to 50% of a maximum width of the club face” (claim 5). Carlyle teaches that the central section of the striking face may account for a width of between 12 mm and 28 mm (i.e., see FIG. 4 and col. 13, lines 48-62) and in at least another embodiment the central section may account for between 10% and 45% of the width (W) of the club face (i.e., see FIG. 4 col. 14, line 7). Carlyle notes that the location, concentration and orientation of the auxiliary laser-generated grooves (115) may be adjusted to control golf ball spin so as to enhance the different types of shots performed by individual golfers (i.e., col. 1, lines 48-52; col. 4, lines 26-27; col. 4, lines 43-45; col. 4, lines 57-63; and col. 5, line 60 through col. 6, line 2 in Carlyle). Also, with the addition of further processing treatments across portions of the club face, the auxiliary grooves may be provided with a contrast feature that assists a golfer with club head alignment (i.e., col. 6, lines 3-13; and col. 6, lines 56-62 in Carlyle). In view of the teachings in Carlyle, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head face in Amano by generating the first plurality of features to account for between 30% to 50% of a maximum width of the club face and to have the central region account for a maximum width of between about 30% and 50% of a maximum width of the club face, the motivation being to improve the shot performance by controlling spin in the central region where a ball is most likely to be struck and also to arrange the features within the central region with a width percentage compared to the maximum width of the club face, which would serve to enhance a golfer’s ability to align the club head based upon the contrast and visibility of the features within the central region.
As to claim 6, in Amano, the features of the second plurality of features (i.e., microgrooves 4) and the third plurality of features (i.e., microgrooves 4) in Amano are lines extending in a heel-to-toe direction. The microgrooves (4) in annotated FIG. 7 shown herein above under claim 1 are clearly depicted as extending in the heel-toe direction. Moreover, annotated FIG. 7 shown herein above illustrates that the second plurality of features on the toe region do not extend into the central region of the club face and that the third plurality of features on the heel region do not extend into the central region of the club face.
As to claim 17, once again reference is made to annotated FIG. 7 of Amano, hereinbelow: Here, Amano shows a golf club head having a crown (i.e., both wood-type and iron-type club heads are disclosed, with wood-type club heads usually being identified as having a crown; col. 8, lines 16-17 and 50-52), a sole, and a club face and comprising: a first plurality of features (i.e., micro-grooves 4 are laser generated; col. 4, lines 54-55) generated on the central region of a club face, wherein the first plurality of features provide a width-intersection coverage of the central region of at least 90%, a surface-area coverage of the central region of at least 15%; a second plurality of features generated on the toe region of the club face, wherein the second plurality of features do not overlap with the first plurality of features, and are spaced apart, in a heel-to-toe direction, from the first plurality of features. Amano shows a third plurality of features formed on the heel region of the club face, wherein the third plurality of features do not overlap with the first plurality of features, and are spaced apart, in a heel-to-toe direction, from the first plurality of features.
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Amano does not explicitly disclose wherein the first plurality of features provide “a maximum width between about 30% to 50% of a maximum width of the club face measured in a heel-to-toe direction”. Carlyle teaches that the central section of the striking face may account for a width of between 12 mm and 28 mm (i.e., see FIG. 4 and col. 13, lines 48-62) and in at least another embodiment the central section may account for between 10% and 45% of the width (W) of the club face (i.e., see FIG. 4 col. 14, line 7). Carlyle notes that the location, concentration and orientation of the auxiliary laser-generated grooves (115) may be adjusted to control golf ball spin so as to enhance the different types of shots performed by individual golfers (i.e., col. 1, lines 48-52; col. 4, lines 26-27; col. 4, lines 43-45; col. 4, lines 57-63; and col. 5, line 60 through col. 6, line 2 in Carlyle). Also, with the addition of further processing treatments across portions of the club face, the auxiliary grooves may be provided with a contrast feature that assists a golfer with club head alignment (i.e., col. 6, lines 3-13; and col. 6, lines 56-62 in Carlyle). In view of the teachings in Carlyle, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head face in Amano by generating the first plurality of features to account for between 30% to 50% of a maximum width of the club face measured in the heel-to-toe direction, the motivation being not only to improve the shot performance by controlling spin in the central region where a ball is most likely to be struck and also to provide the central region, but also to arrange the features within the central region with a width percentage compared to the maximum width of the club face, which would serve to enhance a golfer’s ability to align the club head based upon the contrast and visibility of the features within the central region.
It is further noted that the method steps in claim 17, namely “generating a first plurality of features…”, “generating a second plurality of features…” and “forming a third plurality of features…” are not enumerated in any particular order. Since claim 17 is cast in open terminology (i.e., “the method comprising”), the fact that a first, a second and a third plurality of features are generated or formed by Amano, as modified by Carlyle, in the locations and percentages claimed reveals that the modified Amano reference comprises the claimed method steps regardless of the order in which the claimed steps are performed. Again, it is noted that the first, second and third plurality of features in Amano are “generated” or “formed” via laser (i.e., micro-grooves 4 are laser-generated; col. 4, lines 54-55).
Amano further differs from the claimed invention in that Amano does not explicitly disclose a “different shape”, when detailing the second plurality of features as compared to the first plurality of features and when comparing the third plurality of features as compared to the first plurality of features. Here, Kitigawa shows it to be old in the art to provide a striking face with grooves of different shapes (i.e., see paragraph [0050]). The groove shape affects the surface roughness of the striking surface which in turn affects the spin of a struck golf ball (i.e., see paragraphs [0004], [0025], [0038] and [0056]). In view of the teaching in Kitigawa, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Amano by providing select ones of the plurality of features with a different shape (e.g., providing the second and third plurality of features with a different shape as compared to the first plurality of features), with there being a reasonable expectation of success that altering the shape of the plurality of features would have directly resulted in a change in the spin characteristics of the striking face through a change in the surface roughness of the striking face and would have thus enabled the skilled artisan to improve the club head performance.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Amano (USPN 8,827,833) in view of US PUBS 2016/0008678 to Kitigawa et al (hereinafter referred to as “Kitigawa”) and also in view of Ripp (USPN 8,858,361).
As to claim 9, Amano, as modified by Kitigawa, does not explicitly disclose “wherein the first plurality of features, the second plurality of features, and the third plurality of features are offset from a lower perimeter of the club face by an offset distance between 2-5 mm”. Ripp teaches that a micro-groove pattern may follow the contour of the lower boundary of the club face and that the micro-grooves may be slightly removed or offset from the perimeter along the entirety of the lower boundary of the club face from the heel region of the club face to the toe region of the club face, and including the central region of the club face (i.e., see FIGS. 13, 13A in Ripp and portions of the micro-grooves adjacent the lower perimeter of the face near the sole). Given the teaching in Ripp and considering that the applicant has not presented any reason(s) for the offset distance of the first, second and third plurality of features, including an offset distance for these features along the lower perimeter, as claimed, is deemed to account for changes in the appearance of the striking face and would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) (Claim was directed to an advertising display device comprising a bottle and a hollow member in the shape of a human figure from the waist up which was adapted to fit over and cover the neck of the bottle, wherein the hollow member and the bottle together give the impression of a human body. Appellant argued that certain limitations in the upper part of the body, including the arrangement of the arms, were not taught by the prior art. The court found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art.).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Amano (USPN 8,827,833) in view of US PUBS 2016/0008678 to Kitigawa et al (hereinafter referred to as “Kitigawa”) and also in view of Voges (US PUBS 2008/0051212) and also in view of Gilbert (US PUBS 2011/0224016).
As to claim 14, Amano, as modified by Kitigawa and Vogue, does not explicitly disclose “a fourth plurality of features on the toe region of the club face, wherein the fourth plurality of features provides a width-intersection coverage of the toe region of at least 80%”. Gilbert teaches that multiple sets of grooves of various geometries or shapes, which may further include logos or custom marks, may include one or more patterns in order to provide visual feedback to a golfer (i.e., see paragraph [0098] and FIGS. 19-21 in Gilbert). In view of the teachings in Gilbert, 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 Amano by forming a fourth plurality of features on the toe region to enhance the visual feedback to a golfer provided by an added plurality of grooves or to simply provide a more aesthetically-pleasing groove pattern. Here, the requirement for a fourth plurality of features is deemed to be nothing more than an obvious duplication of parts (i.e., in this case, a duplication of a groove pattern). In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) (Claims at issue were directed to a water-tight masonry structure wherein a water seal of flexible material fills the joints which form between adjacent pours of concrete. The claimed water seal has a "web" which lies in the joint, and a plurality of "ribs" projecting outwardly from each side of the web into one of the adjacent concrete slabs. The prior art disclosed a flexible water stop for preventing passage of water between masses of concrete in the shape of a plus sign (+). Although the reference did not disclose a plurality of ribs, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Amano (USPN 8,827,833) in view of US PUBS 2016/0008678 to Kitigawa et al (hereinafter referred to as “Kitigawa”) and also in view of Carlyle (USPN 9,162,116) and also in view of Lin (US PUBS 2009/0005191).
As to claim 18, Amano, as modified by Kitigawa and Carlyle, lacks “wherein at least a portion of the first plurality of features are covered by paint”. Lin teaches that grooves on a club face may be coated with paint for increasing visibility of the grooves (i.e., see paragraph [0048]). In view of the teaching in Lin, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have provided the grooves in the club face of Amano with paint to enhance the visibility of the grooves for assisting a golfer with alignment of the club face during a golf swing.
Claim 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Amano (USPN 8,827,833) in view of US PUBS 2016/0008678 to Kitigawa et al (hereinafter referred to as “Kitigawa”) and also in view of Carlyle (USPN 9,162,116) and also in view of Gilbert (US PUBS 2011/0224016) and also in view of Ripp (USPN 8,858,361).
As to claim 19, Amano, as modified by Kitigawa and Carlyle, does not explicitly disclose “a fourth plurality of features on the toe region of the club face, wherein the fourth plurality of features provides a width-intersection coverage of the toe region of at least 80%”. Gilbert teaches that multiple sets of grooves of various geometries or shapes, which may further include logos or custom marks, may include one or more patterns in order to provide visual feedback to a golfer (i.e., see paragraph [0098] and FIGS. 19-21 in Gilbert). In view of the teachings in Gilbert, 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 Amano by generating a fourth plurality of features on the toe region to enhance the visual feedback provided to a golfer by an added plurality of features or to simply provide a more aesthetically-pleasing groove pattern. Here, the requirement for a fourth plurality of features is deemed to be nothing more than an obvious duplication of parts (i.e., in this case, a duplication of a groove pattern). In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) (Claims at issue were directed to a water-tight masonry structure wherein a water seal of flexible material fills the joints which form between adjacent pours of concrete. The claimed water seal has a "web" which lies in the joint, and a plurality of "ribs" projecting outwardly from each side of the web into one of the adjacent concrete slabs. The prior art disclosed a flexible water stop for preventing passage of water between masses of concrete in the shape of a plus sign (+). Although the reference did not disclose a plurality of ribs, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.)
Further, Amano, as modified by Kitigawa, Carlyle and Gilbert, does not explicitly disclose “a band that is contoured to match a shape of a lower perimeter of the club face, the band being offset from the lower perimeter of the club face by an offset distance between 2-5 mm”. Ripp teaches that a micro-groove pattern shaped as a band (i.e., a plurality of overlapping micro-grooves may be considered to be a “band”) may follow the contour of the lower boundary of the club face and that the micro-grooves may be slightly removed or offset from the perimeter (i.e., see FIGS. 13, 13A in Ripp and portions of the micro-grooves adjacent the lower perimeter of the face near the sole). Given the teaching in Ripp and considering that the applicant has not presented any reason(s) for the offset features and the band at the lower boundary, forming a band in the central reason, as claimed, is deemed to account for changes in the appearance of the striking face and would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) (Claim was directed to an advertising display device comprising a bottle and a hollow member in the shape of a human figure from the waist up which was adapted to fit over and cover the neck of the bottle, wherein the hollow member and the bottle together give the impression of a human body. Appellant argued that certain limitations in the upper part of the body, including the arrangement of the arms, were not taught by the prior art. The court found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art.).
As to claim 20, with respect to the language “the central region has a maximum width that is between 30% to 50% of the maximum width of the club face”, note that Carlyle teaches that the central section of the striking face may account for a width of between 12 mm and 28 mm (i.e., see FIG. 4 and col. 13, lines 48-62) and in at least another embodiment the central section may account for between 10% and 45% of the width (W) of the club face (i.e., see FIG. 4 col. 14, line 7). Carlyle notes that the location, concentration and orientation of the auxiliary laser-generated grooves (115) may be adjusted to control golf ball spin so as to enhance the different types of shots performed by individual golfers (i.e., col. 1, lines 48-52; col. 4, lines 26-27; col. 4, lines 43-45; col. 4, lines 57-63; and col. 5, line 60 through col. 6, line 2 in Carlyle). Also, with the addition of further processing treatments across portions of the club face, the auxiliary grooves may be provided with a contrast feature that assists a golfer with club head alignment (i.e., col. 6, lines 3-13; and col. 6, lines 56-62 in Carlyle). In view of the teachings in Carlyle, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head face in Amano by forming the central region to account for a maximum width of between about 30% and 50% of a maximum width of the club face, the motivation being to arrange the features within the central region with a width percentage as compared to the maximum width of the club face, which would serve to enhance a golfer’s ability to align the club head based upon the contrast and visibility of the features within the central region.
Also, annotated FIG. 7 hereinabove clearly shows that the second plurality of features provides a width-intersection coverage of the toe region of at least 90% and a surface-area coverage of the toe region of at least 10%; and that the third plurality of features provides a width-intersection coverage of the heel region of at least 90% and a surface-area coverage of the heel region of at least 10%.
Also, Amano shows that the features of the second plurality of features and third plurality of features are lines extending in the heel-to-toe direction. See annotated FIG. 7 hereinabove.
Further, Amano shows that the first plurality of features do not extend into the heel region or the toe region; that the second plurality of features do not extend into the central region; and that the third plurality of features to do not extend into the central region (see annotated FIG. 7, supra). Note that the inclusion of a fourth plurality of features was deemed to be obvious (i.e., obvious duplication of parts) under claim 19 above, when considering the teachings of Gilbert. With this claim 20 directly depending from claim 19, the further requirement that “the fourth plurality of features do not extend into the central region” is deemed to follow a similar rationale that the fourth plurality of features may be shaped, arranged and/or oriented in much the same fashion as any of the first, second or third plurality of features in order to provide additional visual feedback to a golfer.
As to claim 21, Amano does not explicitly disclose “wherein: the first plurality of features have a first width at a center height of the striking face, a second width at a distance above the center height, and a third width at a point below the center height, wherein each width is measured in the heel-to-toe direction from the heel-most feature of the first plurality of features to the toe-most feature of the first plurality of features; and the first width is greater than the third width; and the second width is greater than the first width”. Again, note that Amano shows a golf club head (1) that may be directed to a wood-type club head (i.e., both wood-type and iron-type club heads are disclosed; col. 8, lines 16-17 and 50-52). Kitigawa shows it to be old in the art to include a plurality of features of diverse width at each of a first width, a second width, and a third width, as further illustrated in the annotated version of FIG. 1, hereinbelow.
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The arrangement of the widths of the various features or grooves on the striking face are fashioned so as to take up a majority of the striking face profile, with the widths of the features essentially following or paralleling the width of the striking face at portions adjacent the center height, above the center height and below the center height. In view of the teaching in Kitigawa, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Amano, when fashioned as a wood-type club head, to provide that the first plurality of features have a first width at a center height of the striking face, a second width at a distance above the center height, and a third width at a point below the center height, wherein each width is measured in the heel-to-toe direction from the heel-most feature of the first plurality of features to the toe-most feature of the first plurality of features; and the first width is greater than the third width; and the second width is greater than the first width, the motivation being to ensure that the striking face is substantially covered with features (i.e., grooves) in a manner that substantially follows the contour or peripheral shape of the striking face so that the surface roughness of the striking face may have an effect on the spin of a struck golf ball at portions not only at the center of the striking face, but also along portions (e.g., toe-ward of center face, heel-ward of center face, above center face, and below center face) across substantially the entirety of the striking face.
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
See paragraphs [0018], [0019], [0035] and [0048] in Shimihara;
See paragraphs [0051] and [0060] in Ban.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Specifically, the amendments to independent claims 1, 12 and 17 to further require that the second plurality of features and the third plurality of features include a different shape than the first plurality of features, along with the addition of new claim 21, necessitated the new grounds of rejection.
Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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