DETAILED ACTION
1. This action is made non-final in response to applicant’s Request for Continued Examination filed 5/21/26. Claims 3-4, 12-14 are cancelled; claims 1 and 10 are amended; claims 1-2, 5-11, 15-20 and 22-23 are pending.
Claim Rejections - 35 USC § 103
2. 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 of this title, 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.
3. Claims 1-2, 5-8, 10-11, 15-17, 19-20 and 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Ripp et al. (US Pub. No. 2014/0206473) in view of Golden et al. (US Pub. No. 2009/0318243).
With respect to claims 1, 5-7, 10, 15-16, 19-20, Ripp et al. teaches an iron or wedge type golf club head that, when oriented in a reference position, comprises: a loft greater than 40 degrees (paragraph [0056]); a heel portion; a toe portion opposite the heel portion; a sole portion; a top portion opposite the sole portion; and a striking face 16 comprising: a striking face periphery; a plurality of scorelines 18 having a toe-wardmost extent and a heel-wardmost extent, wherein a first virtual vertical plane 74 is perpendicular to the striking face and passes through the toe-wardmost extent and a second virtual vertical plane 76 is parallel to the first virtual vertical plane and passes through the heel-wardmost extent; a central region 68 bounded by the first virtual vertical plane 74, the second virtual vertical plane 76, and the striking face periphery; a first plurality of microgrooves 20 located within the central region, the first plurality of microgrooves 20 having a first average depth and a first pitch (inherent); a toe region 78, toe-ward of the central region 68, bounded by the first virtual vertical plane 74 and the striking face periphery (Fig. 14; paragraph [0087]);
Admittedly, Ripp et al. fails to expressly teach a second plurality of microgrooves located within the toe region. However, analogous art reference Golden et al. teaches that it is known to have a plurality of second microgrooves 50c or 50b at least partially positioned within a toe region, the second plurality of microgrooves 50c or 50b (i) being distinct from a first plurality of microgrooves 50a positioned within a central region (Fig. 22; paragraph [0054]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to add microgrooves to the toe region of Ripp et al. The motivation to combine is to provide “check” to shots played off the toe.
The second microgrooves of Golden et al. inherently have a second pitch, but this numeric value is not disclosed, and thus fails to meet the claim elements of the second pitch being between .03 - .06 inches. However, per MPEP 2144.05, where 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). In the instant case, the golf clubs of Ripp et al. as modified by Golden et al. would not operate different with a second pitch for the second microgrooves within the claimed range.
In the golf club art, groove pitch is known to be a result effective variable for the amount of spin applied to the ball. See Ripp et al. at paragraph [0063], extrinsic reference Nguyen et al. (US Pub. No. 2008/0102981) at paragraph [0053], and Ban et al. (US Pub. No. 2009/0247318) at paragraph [0039]); See also applicant’s own specification at paragraph [0042] – “As will be understood by those of ordinary skill in the art, the average depth D1 and pitch P1 of the micro-grooves 160 will have a significant impact on the roughness characteristics of the scoreline region 114.” At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to select an optimal pitch of the micro-grooves, including within the claimed range, via routine experimentation. The motivation to modify the pitch as claimed is to provide a desired roughness, and thus a desired amount of backspin to a golf ball at impact. Further, the applicant does not place criticality to the claimed range, indicating simply that the pitch contributes to spin rates, overall surface roughness. The specification states that the pitch “may” be within .03 to .06 in. range (See paragraph [0043]). No specific purpose for operability has been established in relation to the claimed range. The proposed modification has a reasonable expectation of success as it involves modifying a parameter conveniently adjusted using common manufacturing techniques.
The second microgrooves of Golden et al. inherently have an average depth, but this numeric value is not disclosed, and thus fails to meet the claim elements of the average depth greater than 1000 and less than 1800 micro inches. However, per MPEP 2144.05, where 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. In the instant case, the golf clubs of Ripp et al. as modified by Golden et al. would not operate different with an average depth for the second microgrooves within the claimed range. In the golf club art, groove depth is known to be a result effective variable for the amount of spin applied to the ball. See Ripp et al. at paragraph [0063]. See also applicant’s own specification at paragraph [0042] – “As will be understood by those of ordinary skill in the art, the average depth D1 and pitch P1 of the micro-grooves 160 will have a significant impact on the roughness characteristics of the scoreline region 114.” At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to select an optimal average depth of the second micro-grooves, including within the claimed range, via routine experimentation. The motivation to modify the depth as claimed is to provide a desired amount of surface roughness, and backspin to a golf ball at impact, as it is known to chip off the toe portion of the club – See extrinsic reference “Paul Azinger – Utilizing the Toe While Pitching (2014)”, uploaded 1/31/14 by RollYourRock at https://www.youtube.com/watch?v=Gd7kRjdvVAU. Further, the applicant does not place criticality to the claimed range, indicating simply that the depth contributes to spin rates, overall surface roughness. The specification states that the depth “may” be within the claimed range (See paragraph [0043]). No specific purpose for operability has been established in relation to the claimed range. The proposed modification has a reasonable expectation of success as it involves modifying a parameter conveniently adjusted using common manufacturing techniques.
The central region 68 of Ripp et al. inherently comprises a first average surface roughness, Ra1, first average depth and a first pitch, but these numeric values are not disclosed. However, per MPEP 2144.05, where 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). In the instant case, the golf clubs of Ripp et al. as modified by Golden et al. would not operate different with a central area first average surface roughness within a range of 40-150 micro inches, or a first average depth less than the second average depth, or a first pitch less than the second pitch. In the golf club art, surface roughness is known to be a result effective variable for the frictional traction between the face and ball at impact, which imparts the “bite” or “check” that is desirable for pitch and wedge shots. See Ripp et al. at paragraph [0005]. Groove pitch and depth is known to be a result effective variable for the amount of spin applied to the ball. See Ripp et al. at paragraph [0063]. See also applicant’s own specification at paragraph [0042] – “As will be understood by those of ordinary skill in the art, the average depth D1 and pitch P1 of the micro-grooves 160 will have a significant impact on the roughness characteristics of the scoreline region 114.” At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to select an optimal first average surface roughness, first average depth and first pitch, including within the claimed range, via routine experimentation. The motivation to select optimal values of first average surface roughness, first average depth and first pitch is to provide a desired amount of backspin to a golf ball at impact. Further, the applicant does not place criticality to the claimed range. The specification states that the first average surface roughness “may” be within the claimed range (See paragraph [0042]). No specific purpose for operability has been established in relation to the claimed range. The proposed modification has a reasonable expectation of success as it involves modifying a parameter conveniently adjusted using common manufacturing techniques.
The toe region 78 of Ripp et al. as modified by Golden et al. inherently comprises a second average surface roughness, Ra2, but this numeric value is not disclosed. However, per MPEP 2144.05, where 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). In the instant case, the golf clubs of Ripp et al. as modified by Golden et al. would not operate different with a central area second average surface roughness greater than 300 micro inches as claimed. In the golf club art, surface roughness is known to be a result effective variable for the frictional traction between the face and ball at impact, which imparts the “bite” or “check” that is desirable for pitch and wedge shots. See Ripp et al. at paragraph [0005]. At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to select an optimal second average surface roughness, including within the claimed range, via routine experimentation. The motivation to modify the second average surface roughness as claimed is to provide a desired amount of backspin to a golf ball at impact. Further, the applicant does not place criticality to the claimed range. The specification states that the first average surface roughness “may” be within the claimed range (See paragraph [0043]). No specific purpose for operability has been established in relation to the claimed range. The proposed modification has a reasonable expectation of success as it involves modifying a parameter conveniently adjusted using common manufacturing techniques.
Examiner notes, with an Ra1 between 40-150 micro inches and Ra2 greater than 300 micro inches, the claimed relationship of Ra2 being no less than 2 times Ra1 is met is met.
With respect to claims 2, Golden et al., cited above for the second plurality of microgrooves 50b, 50c shown in Fig. 22, does not expressly disclose how these grooves are formed. However, when describing microgrooves 50a, 50b in the embodiment shown in Fig. 19, Golden teaches these grooves to be formed via milling (paragraph [0051]). A person ordinary skill in the art would have found it obvious to use a milling technique to form the second plurality of micro-grooves 50b, 50c. This will expectantly allow precession and accuracy in both the depth of the grooves and alignment.
With respect to claims 8 and 17, Golden et al., cited above for the microgrooves 50c or 50b for the toe region, appear to teach linear path (Fig. 22) and thus fail to expressly teach wherein the second plurality of microgrooves follows an arcuate path as claimed. However, both Ripp et al. and Golden et al. expressly teach that it is know to form microgrooves with an arcuate path – Ripp et al – paragraphs [0058]-[0061; Golden et al. – arcuate microgrooves 50 – Fig. 22, paragraph [0054]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to form the second plurality of microgrooves to have an arcuate path. The rationale to combine is to use a known means to form the microgrooves, which will allow the surface roughness to be easily formed and within desired surface roughness ranges. The proposed modification has a reasonable expectation of success as the arcuate path can be conveniently formed using common CNC milling.
With respect to claim 11, Ripp et al. teaches wherein the first plurality of microgrooves comprise milled grooves (paragraph [0058]). Per MPEP 2131, when a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art. Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir. 2001).
With respect to claim 22, Golden et al., cites above for the second plurality of microgrooves 50c, fails to expressly teach wherein at least 95% of the toe region has the second average surface roughness. However, primary reference Ripp et al., in an alternative embodiment, teaches that it is known to form the entire toe region with a plurality of micro-grooves (paragraph [0086]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to cover the entire toe region with the micro-grooves 50c. The rationale to combine is to give the golfer increased surface contact area to hit the ball on the toe. Examiner notes that since the entire toe region comprises the micro-grooves, and claim 1 above establishes Ra2 through routine experimentation optimization (i.e. In re Aller), the claim element so claim 22 are considered met.
With respect to claim 23, when combining the teachings of Golden with Ripp, it is unclear which of the grooves are initially milled, and which of the microgrooves are superimposed thereon. If second microgrooves 50b (Golden) are formed first, the first microgrooves 20 (Ripp) would inherently be superimposed onto the second plurality of microgrooves since Golden shows microgrooves 50b covering a substantial region of the central portion (Fig. 22), and Ripp teaches wherein the entire central region is formed by the first grooves 20 (Fig. 14). Notably, Ripp, in an alternative embodiment, teaches that is known to superimpose a second plurality of microgrooves onto a first plurality of microgrooves for purposes of providing a desired surface roughness for the overlapped area of the first and second grooves (paragraph [0069]). A person ordinary skill in the art at time of applicant’s effective filing would have found it obvious to superimpose the first plurality of grooves (i.e. microgrooves 20 of Ripp) within central portion of the face) onto the second plurality of grooves (i.e. microgrooves 50b of Golden). The rationale to do so is to ensure the resulting surface roughness of the central region is within the USGA limits to produce a conforming golf club. Notably, the USGA rules do not limit surface roughness outside the impact area (i.e. toe region area). Thus, the second plurality of grooves, which extend into the toe region, may be higher than the USGA limits imposed for the central region.
4. Claims 9 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Ripp et al. (US Pub. No. 2014/0206473) in view of Golden et al. (US Pub. No. 2009/0318243), or the in the alternative, in further view of Yamagishi et al. (US Pub. No. 2008/0020859).
With respect to claims 9 and 18, Golden et al., cited above for the microgrooves 50b or 50c for the toe region, teaches wherein the second plurality of microgrooves inherently comprise a maximum profile height, Rt2, but fail to disclose this numeri value. However, per MPEP 2144.05, where 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). In the instant case, the golf clubs of Ripp et al. as modified by Golden et al. would not operate different with a maximum profile height for the second microgrooves within the claimed range. In the golf club art, a maximum profile height is known to be a result effective variable for the surface roughness, and ultimately the amount of spin applied to the ball. See extrinsic reference Ban et al. (US Pub. No. 2009/0247318) at paragraph [0045]. At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to select an optimal maximum profile height of the second micro-grooves, including within the claimed range, via routine experimentation. The motivation to modify is to provide a desired amount of backspin to a golf ball at impact. Further, the applicant does not place criticality to the claimed range, stating that the maximum height “may” be within the claimed range (See paragraph [0042]). No specific purpose for operability has been established in relation to the claimed range. The proposed modification has a reasonable expectation of success as it involves modifying a parameter conveniently adjusted using common manufacturing techniques. In the alternative, examiner cites to analogous art reference Yamagishi et al. for its teaching of a maximum profile height greater than or equal to 1000 micro-in (paragraph [0025]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to select a maximum profile height for the second microgrooves using a known value set forth in Yamagishi et al. The motivation to combine is to increase the surface roughness for the toe region, and provide improved “bite” to the golf ball.
Response to Arguments
5. Applicant's arguments filed 5/21/26 have been fully considered but they are not persuasive.
Applicant argues the application of MPEP 2144.05 – In re Aller is improper for three reasons, cited below, with examiner’s response stated therein.
1. No overlapping Range
There is no requirement in the MPEP that the prior art must show overlapping of ranges to apply In re Aller
2. Specific relationships are not recognized as a result effective variable.
The office action provides express disclosure establishing surface roughness as a result effective variable for the amount of backspin applied to the golf ball, inducing various degrees of “bite” to the ball. Notably, when optimizing Ra1 and Ra2 independently to conform to the prescribed range values set forth in claims 6-7, 15-16, the claimed relationship between Ra1 and Ra2 is met. Specifically, with an Ra1 between 40-150 micro inches and Ra2 greater than 300 micro inches, the claimed relationship of Ra2 being no less than 2 times Ra1 is met. Further, groove pitch and depth are known to be a result effective variable for surface roughness, and ultimately, the amount of spin applied to the ball. See Ripp et al. at paragraph [0063]. See also applicant’s own specification at paragraph [0042] – “As will be understood by those of ordinary skill in the art, the average depth D1 and pitch P1 of the micro-grooves 160 will have a significant impact on the roughness characteristics of the scoreline region 114.”
3. No rationale for why a person ordinary skill in the art would optimize the variables.
A person ordinary skill in the art would clearly recognize that surface roughness is known to be a result effective variable to provide backspin to a hit ball. As set forth in the rejection above, citing to explicit teachings, it is also known to use the toe region of a club to hit certain shots around the green. By adding surface roughness to the toe, the expected result will be to allow intentional toe hits to have bite.
Conclusion
6. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Tassitro (US Pub. No. 2017/0087423).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL DAVID DENNIS whose telephone number is (571)270-3538. The examiner can normally be reached M-F 8:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached at (571) 272 4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711
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