DETAILED ACTION
This Office action is responsive to communication received 05/26/2026 – Amendment, including amendments to the claims and to the specification; and Terminal Disclaimer.
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 .
Status of Claims
Claims 1-19 remain pending.
Terminal Disclaimer
The terminal disclaimer filed on 05/26/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of USPN 12121780 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Specification - Amendments
Receipt is acknowledged of the amendment to the specification, received 5/26/2026, which replaces Table 2, Table 3, and Paragraph [00282].
Specification - Objection
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o).
The specification lacks proper antecedent basis for the language newly-added to claim 7, namely “a first grain structure”, “a second grain structure”, and “the first grain structure is different from the second grain structure”, when describing attributes of the upper and lower portions of the cup.
Response to Arguments
In the arguments received 05/26/2026, the applicant addresses the outstanding rejection of the claims under 35 U.S.C. §112(b). With respect to claim 7 specifically, the applicant describes that claim 7 has been amended to distinguish the claimed first manufacturing technique from the claimed second manufacturing technique by further detailing a first grain structure and a second grain structure. The applicant moves on to argue “[A]s known in the art, the primary and inherent structural differences between parts made from the different manufacturing techniques is the grain structure. Accordingly, the amendments to claim 7 are supported in the specification as originally filed” (i.e., Remarks of 05/26/2026, scanned page 3).
IN RESPONSE:
With respect to the amendments to claim 7 and the arguments presented to explain the grain structure, it is noted that the originally-filed disclosure is completely silent with respect to “a first grain structure”, “a second grain structure”, and “the first grain structure is different from the second grain structure”. While paragraph [00222] mentions different manufacturing techniques, as remarked by the applicant, there is nothing revealed about the differences in grain structure between any of the manufacturing methods disclosed. Although paragraphs [0172] and [0173] briefly mention grain direction, there is no disclosure provided which explains manufacturing techniques that provide first and second distinct grain structures for the upper portion and lower portion, respectively, of the cup. Thus, the amendments to claim 7 with respect to the first and second grain structures, as these features relate to the upper and lower portions of the cup, do not find support in the specification as originally filed and are considered to introduce new matter into the claims.
FOLLOWING IS AN ACTION ON THE MERITS:
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 7 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. While paragraph [00222] mentions different manufacturing techniques, as remarked by the applicant, there is nothing revealed about the differences in grain structure between any of the manufacturing methods disclosed. Thus, the amendments to claim 7 with respect to the first and second grain structures, as these features relate to the upper and lower portions of the cup, do not find support in the specification as originally filed and are considered to introduce new matter into the claims.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 7 STANDS rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As to claim 7, in one sense, the claim appears to be further limiting the upper portion and the lower portion with what would resemble product-by-process limitations. However, in another sense, it is not explicitly clear what the scope of the claim is, as there are no further limitations introduced for the upper portion and the lower portion as a result of the first and second, different manufacturing techniques. It is simply not clear if the applicant is claiming a product or a process.
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.
Claim 7 (as dependent from claim 6, which depends from claim 1) is rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2022/0184466 to Greensmith et al (hereinafter referred to as “Greensmith”) in view of US PUBS 2014/0080626 to Bezilla et al (hereinafter referred to as “Bezilla”).
At the outset, it is noted that dependent claim 7, as amended via the 05/26/2026 amendment, includes an effective filing date equal to the actual filing date of the instant application, namely 11/15/2023. Here, amended claim 7 requires “a first grain structure”, “a second grain structure”, and “the first grain structure is different from the second grain structure”, none of which terms/phrases finds support in the parent application(s). See MPEP 2163.06(I), noting “[T]he examiner should still consider the subject matter added to the claim in making rejections based on prior art since the new matter rejection may be overcome by applicant”. See MPEP 2152.01, noting “any claims in the new application not supported by the specification and claims of the parent application have an effective filing date equal to the actual filing date of the new application.”
Here, the publication to Greensmith, which corresponds to the earlier-filed United States Application Serial No. 17/124,134, which is the earliest parent to which the present application claims priority, provides support for the features recited in claims 1 and 6. See FIGS. 1, 10, 11, 14, 15, and 18-20. Note that Greensmith includes a golf club head (100), ring (106), cup (104), a forward portion (112), a rearward portion (118), a crown portion (119) and a sole portion (117), a heel portion (116) and a toe portion (114). Also, see paragraph [0138]. In addition, Greensmith includes a two-piece construction for the cup (i.e., paragraph [0224]), and includes an upper cup piece (304A) and a lower cup piece (304B). Also included with Greensmith is a strike face (245), a crown insert (308) and a sole insert (310). As for the particular densities percentages and mass claimed, see paragraphs [0006] – [0008] and [0233] – [0237]. As for the claimed volume, see paragraph [0006].
However, Greensmith lacks the now-claimed “a first grain structure”, “a second grain structure”, and “the first grain structure is different from the second grain structure”, as recited in dependent claim 7. The teaching reference to Bezilla, at paragraph [0135], explains how casting changes the grain size of a material and that stamping may provide a component with a finer grain size, thus resulting in higher mechanical properties. Bezilla, at paragraph [0141], discloses that club head parts may be constructed using any one of a number of known processes such as a stamping, forging, casting and molding processes. In addition, Bezilla notes that forging may change the grain size shape, as compared to other manufacturing techniques. In view of the teaching in Bezilla, 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 device in Greensmith by taking advantage of known manufacturing techniques such as forging or stamping or casting or molding, with the selection of any one of these processes essentially being considered a design choice and with the selection of, for example, a stamping operation or a forging operation providing for a desirable change in the grain structure of a club head component over other common manufacturing techniques in order to enhance the mechanical properties of the golf club head.
Allowable Subject Matter
Claims 1-6 and 8-19 are allowable over the prior art references of record in view of the timely-submitted and properly-filed terminal disclaimer, received 05/26/2026.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Specifically, the amendments to claim 7, including the introduction of “a first grain structure”, “a second grain structure”, and “the first grain structure is different from the second grain structure” 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
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