DETAILED ACTION
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 .
Claim Rejections - 35 USC § 103
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.
Claims 1-4, 9, 11-14, 18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Mase (US Patent No. 6,530,846 B1) in view of Roach et al. (US PGPub. No. 2014/0228143 A1).
In Reference to Claim 1, 2, 4, and 11
Mase teaches (Claim 1) A correlated set of golf clubs comprising: [] a [] golf club comprising a loft L3 that differs from a loft Lc of a closest-lofted golf club of the correlated set by no more than 3°, the third golf club having a non-loft variant (fig’s 1, 7-10, 11-13, and 14-17; column 1 lines 43-46 and 57-59; column 2 lines 1-5, 14-16, 20, 28-30, 36-37, 44-45, and 50-51; same loft angle and one of a variety of other variables is different);
(Claim 2) wherein L3 is substantially equal to Lc (column 3 lines 15-18);
(Claim 4) wherein the non-loft variant is selected from the group consisting of: a club length, a club head moment of inertia about a center of gravity, a sole camber, a leading edge height, a club head volume, a club head center of gravity height, a leading edge radius, a striking face surface area, a striking face average roughness Ra, and a head mass (column 1 lines 43-46 and 57-59; column 2 lines 1-5, 14-16, 20, 28-30, 36-37, 44-45, and 50-51);
(Claim 11) wherein the [] golf club is configured for hitting off a tee, and the closest-lofted golf club is configured for hitting off a fairway (all clubs can be hit off a tee or a fairway, this is merely recitation of intended use that does not add structure to the claims).
Mase fails to teach other clubs in the set that differ in loft of claim 1.
Roach teaches (Claim 1) a first golf club and a second golf club that are successively-lofted and differ in loft by no less than 6° (paragraphs 0075 and 0076, and paragraph 0094; e.g. one disclosed set 1001 includes a mid-iron and a pitching wedge, which are disclosed to be over 6 degrees different from each other).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the non-loft variant golf club set of Mase with the feature of providing additional clubs with degrees of loft differing by more than 6 degrees as taught by the golf club set of Roach for the purpose of providing a more comprehensive set of golf clubs and golf club choices, allowing a user to select a more comprehensive and specifically tailored set of clubs as taught by Roach (paragraph 0005), allowing for an optimized set of golf clubs tailored to a specific user, making the set more attractive to golfers. The examiner further notes that Mase also contemplates using the disclosed non-loft variant club set along with other clubs to form additional sets (column 7 lines 15-18), making it further obvious to one of ordinary skill in the art to add additional clubs of additional lofts to the set for the purpose of creating a more comprehensive set of golf clubs.
In Reference to Claim 3
The modified club set of Mase teaches all of claims 1 and 2 as discussed above.
Mase fails to specifically disclose the markings on the clubs.
Roach teaches (Claim 3) wherein: [a] golf club comprises a first external surface with first indicia including a first numerical club designation; and [a] closest-lofted golf club comprises a second external surface with second indicia including a second numerical club designation that is the same as the first numerical club designation (paragraph 0004, 0014; two clubs manufactured with the same number; also see paragraph 0057 for discussion of additional correlative indicia).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the golf club set of Mase with the feature of numerical designations as taught by the golf club set of Roach for the purpose of allowing a user to easily identify a club when desired as taught by Roach (paragraph 0004), making the set easier to use, and more attractive to the users.
The examiner further notes that it has been held that when the claimed printed matter is not functionally related to the substrate in an unobvious manner, it will not distinguish the invention from the prior art in terms of patentability. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004); In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04 (Fed. Cir. 1983). The fact that the content of the printed matter placed on the substrate may render the device more convenient by providing an individual with a specific type of golf club does not alter the functional relationship. Mere support by the substrate for the printed matter is not the kind of functional relationship necessary for patentability. Thus, there is no novel and unobvious functional relationship between the printed matter e.g. numerical club designation indicia and the substrate e.g. golf club, which is required for patentability.
In Reference to Claim 9
The modified club set of Mase teaches all of claim 1 as discussed above.
Mase further teaches (Claim 9) wherein: the [] golf club further comprises a [] striking face and a [] head center of gravity having a depth from the [] striking face, D3; and the closest-lofted golf club comprises a [] striking face and a [] head center of gravity having a depth from the [] striking face, D4, that is less than D3 by at least [x]mm (fig’s 14-17 show CG’s with varying depths from the striking face; also see column 5 lines 3-4).
Mase does not specifically disclose the specific degree of difference between the CG’s claimed.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the difference between center of gravity depths at least 10mm simply as a matter of engineering design choice, since, it has been held that "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). Since the general conditions of providing multiple clubs with the same loft angle but with CG’s that have varying depths from the strike face, merely claiming a specific difference between depths would not produce any new and unexpected results, would simply be producing workable ranges by routine experimentation, and is not a patentable advance.
In Reference to Claim 12, 13, and 20
Mase teaches (Claim 12) A correlated set of golf clubs comprising: [];a non-loft variant (NLV) golf club comprising a loft Lv that differs from a loft Lc of a closest-lofted golf club of the correlated set by no more than 3° (fig’s 1, 7-10, 11-13, and 14-17; column 1 lines 43-46 and 57-59; column 2 lines 1-5, 14-16, 20, 28-30, 36-37, 44-45, and 50-51; same loft angle and one of a variety of other variables is different);
(Claim 13) wherein Lv is substantially equal to Lc (column 3 lines 15-18);
(Claim 20) wherein the NLV golf club is configured for hitting off a tee, and the closest-lofted golf club is configured for hitting off a fairway (all clubs can be hit off a tee or a fairway, this is merely recitation of intended use that does not add structure to the claims).
Mase fails to teach other clubs in the set that differ in loft of claim 12.
Roach teaches (Claim 12) at least three pairs of successively-loft golf clubs, each of the pairs defining a loft difference that is greater than 4° (paragraphs 0075 and 0076, and paragraph 0094; e.g. one disclosed set 1001 includes a long iron, mid-iron, a pitching wedge, and a lob wedge which are disclosed to be over 4 degrees different from each other and make up at least three pairs).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the non-loft variant golf club set of Mase with the feature of providing additional clubs with degrees of loft differing by more than 4 degrees as taught by the golf club set of Roach for the purpose of providing a more comprehensive set of golf clubs and golf club choices, allowing a user to select a more comprehensive and specifically tailored set of clubs as taught by Roach (paragraph 0005), allowing for an optimized set of golf clubs tailored to a specific user, making the set more attractive to golfers. The examiner further notes that Mase also contemplates using the disclosed non-loft variant club set along with other clubs to form additional sets (column 7 lines 15-18), making it further obvious to one of ordinary skill in the art to add additional clubs of additional lofts to the set for the purpose of creating a more comprehensive set of golf clubs.
In Reference to Claim 14
The modified club set of Mase teaches all of claims 12 and 13 as discussed above.
Mase fails to specifically disclose markings on the clubs.
Roach teaches (Claim 14) wherein: [a] golf club comprises a first external surface with first indicia including a first numerical club designation; and [a] closest-lofted golf club comprises a second external surface with second indicia including a second numerical club designation that is the same as the first numerical club designation (paragraph 0004, 0014; two clubs manufactured with the same number; also see paragraph 0057 for discussion of additional correlative indicia).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the golf club set of Mase with the feature of numerical designations as taught by the golf club set of Roach for the purpose of allowing a user to easily identify a club when desired as taught by Roach (paragraph 0004), making the set easier to use, and more attractive to the users.
The examiner further notes that it has been held that when the claimed printed matter is not functionally related to the substrate in an unobvious manner, it will not distinguish the invention from the prior art in terms of patentability. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004); In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04 (Fed. Cir. 1983). The fact that the content of the printed matter placed on the substrate may render the device more convenient by providing an individual with a specific type of golf club does not alter the functional relationship. Mere support by the substrate for the printed matter is not the kind of functional relationship necessary for patentability. Thus, there is no novel and unobvious functional relationship between the printed matter e.g. numerical club designation indicia and the substrate e.g. golf club, which is required for patentability.
In Reference to Claim 18
The modified golf club set of Mase teaches all of claim 12 as discussed above.
Mase further teaches (Claim 18) wherein: the NLV golf club further comprises a first striking face and a first head center of gravity having a depth from the third striking face, D1; and the closest-lofted golf club comprises a second striking face and a second head center of gravity having a depth from the second striking face, D2, that is less than D1 by at least [x]mm (fig’s 14-17 show CG’s with varying depths from the striking face; also see column 5 lines 3-4).
Mase does not specifically disclose the specific degree of difference between the CG’s claimed.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the difference between center of gravity depths at least 10mm simply as a matter of engineering design choice, since, it has been held that "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). Since the general conditions of providing multiple clubs with the same loft angle but with CG’s that have varying depths from the strike face, merely claiming a specific difference between depths would not produce any new and unexpected results, would simply be producing workable ranges by routine experimentation, and is not a patentable advance.
Claims 5, 6, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Mase in view of Roach et al., and further in view of Best et al. (US PGPub. No. 2007/0042836 A1).
In Reference to Claims 5 and 6
The modified club set of Mase teaches all of claim 1 as discussed above.
Mase fails to teach a variant is a moment of inertia of claims 5 and 6.
Roach teaches (Claim 5) wherein [a] golf club further comprises a club head moment of inertia, Izz3, and [a] closest-lofted golf club comprises a club head moment of inertia, Izzc, that is less than Izz3 by at least [x]gcm² (paragraph 0012).
(Claim 6) wherein Izzc is less than Izz3 by at least [x]gcm² (paragraph 0012).
While Roach teaches the feature of intentionally providing differing moments of inertia between clubs, there is no specific teaching of a moment of inertia value.
Best teaches that a moment of inertia range between clubs in a club set is around 600gcm² (paragraph 0037).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the non-loft variant golf club set of Mase with the feature of providing additional clubs with differing moments of inertia as taught by the golf club set of Roach for the purpose of providing a more comprehensive set of golf clubs and golf club choices, allowing a user to select a more comprehensive and specifically tailored set of clubs as taught by Roach (paragraph 0005), allowing for an optimized set of golf clubs tailored to a specific user, making the set more attractive to golfers.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the difference between moments of inertia at least 500gcm² or 1000gcm² simply as a matter of engineering design choice, since, it has been held that "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). Since the general conditions of providing multiple clubs with differing moments of inertia is taught, and, since a normal range between club moments of inertia is in the hundreds of gcm², merely claiming a difference value of over 500gcm² or 1000gcm² specifically, would not produce any new and unexpected results, would simply be producing workable ranges by routine experimentation, and is not a patentable advance.
In Reference to Claims 15 and 16
The modified golf club set of Mase teaches all of claim 12 as discussed above.
Mase fails to teach the variant is a moment of inertia of claims 15 and 16.
Roach teaches (Claim 15) wherein [a] golf club further comprises a club head moment of inertia, IzzV, and [a] closest-lofted golf club comprises a club head moment of inertia, IzzC, that is less than IzzV by at least []g cm² (paragraph 0012);
(Claim 16) wherein IzzC is less than IzzV by at least []g cm² (paragraph 0012).
While Roach teaches the feature of intentionally providing differing moments of inertia between clubs, there is no specific teaching of a moment of inertia value.
Best teaches that a moment of inertia range between clubs in a club set is around 600gcm² (paragraph 0037).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the non-loft variant golf club set of Mase with the feature of providing additional clubs with differing moments of inertia as taught by the golf club set of Roach for the purpose of providing a more comprehensive set of golf clubs and golf club choices, allowing a user to select a more comprehensive and specifically tailored set of clubs as taught by Roach (paragraph 0005), allowing for an optimized set of golf clubs tailored to a specific user, making the set more attractive to golfers.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the difference between moments of inertia at least 500gcm² or 1000gcm² simply as a matter of engineering design choice, since, it has been held that "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). Since the general conditions of providing multiple clubs with differing moments of inertia is taught, and, since a normal range between club moments of inertia is in the hundreds of gcm², merely claiming a difference value of over 500gcm² or 1000gcm² specifically, would not produce any new and unexpected results, would simply be producing workable ranges by routine experimentation, and is not a patentable advance.
Claims 7, 8, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Mase in view of Roach et al., and further in view of Ezaki et al. (US Patent No. 4,874,171).
In Reference to Claims 7 and 8
The modified club set of Mase teaches all of claim 1 as discussed above.
Mase fails to specifically disclose changing volume, however, it is noted that fig’s 14-17 appear to show differently sized club heads that would inherently have different volumes.
Regardless, Roach teaches (Claim 7) wherein [a] golf club further comprises a head volume V3 and [a] closest-lofted golf club comprises a head volume Vc that is less than V3 by at least [x]cc (paragraph 0007 lines 14-19 and paragraph 0043, changing cavity volume changes head volume, changing edge dimensions and face size also changes volume).
(Claim 8) wherein Vc is less than V3 by at least [x]cc (paragraph 0007 lines 14-19 and paragraph 0043, changing cavity volume changes head volume, changing edge dimensions and face size also changes volume).
While Roach teaches differing volumes between clubs, no specific teaching of volume values.
Ezaki teaches a range of volume values in a club set is between 54 and 198cc (table in columns 5 and 6).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the non-loft variant golf club set of Mase with the feature of providing additional clubs with differing volumes as taught by the golf club set of Roach for the purpose of providing a more comprehensive set of golf clubs and golf club choices, allowing a user to select a more comprehensive and specifically tailored set of clubs as taught by Roach (paragraph 0005), allowing for an optimized set of golf clubs tailored to a specific user, making the set more attractive to golfers.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the difference between volumes at least 75cc or 100cc simply as a matter of engineering design choice, since, it has been held that "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). Since the general conditions of providing multiple clubs with differing volumes is taught, and, since a normal range between club volumes in a club set around 150cc, merely claiming a difference value of over 75cc or 100cc, specifically, would not produce any new and unexpected results, would simply be producing workable ranges by routine experimentation, and is not a patentable advance.
In Reference to Claim 17
The modified golf club set of Mase teaches all of claim 12 as discussed above.
Mase fails to specifically disclose changing volume, however, it is noted that fig’s 14-17 appear to show differently sized club heads that would inherently have different volumes.
Regardless, Roach teaches (Claim 17) wherein [a] golf club further comprises a head volume Vv and the closest-lofted golf club comprises a head volume Vc that is less than Vv by at least [x]cc (paragraph 0007 lines 14-19 and paragraph 0043, changing cavity volume changes head volume, changing edge dimensions and face size also changes volume).
While Roach teaches differing volumes between clubs, no specific teaching of volume values.
Ezaki teaches a range of volume values in a club set is between 54 and 198cc (table in columns 5 and 6).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the non-loft variant golf club set of Mase with the feature of providing additional clubs with differing volumes as taught by the golf club set of Roach for the purpose of providing a more comprehensive set of golf clubs and golf club choices, allowing a user to select a more comprehensive and specifically tailored set of clubs as taught by Roach (paragraph 0005), allowing for an optimized set of golf clubs tailored to a specific user, making the set more attractive to golfers.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the difference between volumes at least 75cc simply as a matter of engineering design choice, since, it has been held that "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). Since the general conditions of providing multiple clubs with differing volumes is taught, and, since a normal range between club volumes in a club set around 150cc, merely claiming a difference value of over 75cc, specifically, would not produce any new and unexpected results, would simply be producing workable ranges by routine experimentation, and is not a patentable advance.
Claims 10 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Mase in view of Roach et al., and further in view of Seagram (US PGPub. No. 2019/0168084 A1).
In Reference to Claim 10
The modified club set of Mase teaches all of claim 1 as discussed above.
Mase fails to teach differences in strike face area.
Roach teaches (Claim 10) wherein: [a] golf club further comprises a [] striking face having a face area, A3; and [a] closest-lofted golf club comprises a [] striking face having a face area, Ac, that is less than A3 by at least [x]% (paragraph 0043).
While Roach teaches differing strike face areas, there is no specific teaching of area values.
Seagram teaches golf club strike face areas can be in a range of 22cm² to 28cm², which is approximately a 20% differential in range.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the non-loft variant golf club set of Mase with the feature of providing additional clubs with differing face areas as taught by the golf club set of Roach for the purpose of providing a more comprehensive set of golf clubs and golf club choices, allowing a user to select a more comprehensive and specifically tailored set of clubs as taught by Roach (paragraph 0005), allowing for an optimized set of golf clubs tailored to a specific user, making the set more attractive to golfers.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the difference between strike face areas of at least 20% simply as a matter of engineering design choice, since, it has been held that "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). Since the general conditions of providing multiple clubs with differing face areas is taught, and, since a normal range between club face areas in a club set around 20%, merely claiming a difference value of over 20%, specifically, would not produce any new and unexpected results, would simply be producing workable ranges by routine experimentation, and is not a patentable advance.
In Reference to Claim 19
The modified club set of Mase teaches all of claim 12 as discussed above.
Mase fails to teach a difference in strike face area.
Roach teaches (Claim 19) wherein: [a] golf club further comprises a first striking face having a first face area, A1; and [a] closest-lofted golf club comprises a second striking face having a second face area, A2, that is less than A1 by at least [x]% (paragraph 0043).
While Roach teaches differing strike face areas, there is no specific teaching of area values.
Seagram teaches golf club strike face areas can be in a range of 22cm² to 28cm², which is approximately a 20% differential in range.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the non-loft variant golf club set of Mase with the feature of providing additional clubs with differing face areas as taught by the golf club set of Roach for the purpose of providing a more comprehensive set of golf clubs and golf club choices, allowing a user to select a more comprehensive and specifically tailored set of clubs as taught by Roach (paragraph 0005), allowing for an optimized set of golf clubs tailored to a specific user, making the set more attractive to golfers.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the difference between strike face areas of at least 20% simply as a matter of engineering design choice, since, it has been held that "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). Since the general conditions of providing multiple clubs with differing face areas is taught, and, since a normal range between club face areas in a club set around 20%, merely claiming a difference value of over 20%, specifically, would not produce any new and unexpected results, would simply be producing workable ranges by routine experimentation, and is not a patentable advance.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additionally cited references disclose inventions similar to applicant’s claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH B BALDORI whose telephone number is (571)270-7424. The examiner can normally be reached Monday - Friday 9am to 5pm EST.
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/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711