DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 112
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.
Claims 2, 6, 12-19, 27, 33, 34, 37, 38, and 41-45 are 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. In Claim 2, line 12, the limitation providing a first mass member configured to be secured within a first recess in the sole at a first position constitutes new matter which was not disclosed in the originally filed specification and cannot be added. The examiner notes that applicant’s specification discloses a single mass member movably secured in a channel. Likewise, a second mass member configured to be secured in a second recess is also not disclosed. In Claim 2, ln. 26, the limitations indicating that in the first position and the second position the fastening bolt shaft axis intersects the crown, and in the first position and the second position the fastening bolt shaft axis does not intersect the face, constitute new matter which was not disclosed in the originally filed specification and cannot be added. Likewise the same limitation applied to the second fastening bolt shaft axis is also not disclosed. Further, in line 32, the limitation providing that each of the first position and the second position are less than 50 mm from the geometric center of the face constitutes new matter which was not disclosed in the originally filed specification and cannot be added.
Claims 25, 26, 39, 46, and 47, are 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. In Claim 25, line 12, the limitation providing a first mass member configured to be secured within a first recess in the sole at a first position constitutes new matter which was not disclosed in the originally filed specification and cannot be added. Likewise, a second mass member configured to be secured in a second recess is also not disclosed. In Claim 25, line 17, the limitation indicating that the first position is located on a heel-ward portion of the body that is located heel-ward of a geometric center of the face, less than 40 mm from the geometric center of the face, constitutes new matter which was not disclosed in the originally filed specification and cannot be added.. In Claim 25, ln. 27, the limitations indicating that in the first position and the second position the fastening bolt shaft axis intersects the crown, and in the first position and the second position the fastening bolt shaft axis does not intersect the face, constitute new matter which was not disclosed in the originally filed specification and cannot be added. Likewise the same limitation applied to the second fastening bolt shaft axis is also not disclosed.
Claims 48-51 are 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. In line 23, the limitation providing that the first position is less than 50 mm from the geometric center of the face constitutes new matter which was not disclosed in the originally filed specification and cannot be added.
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.
Claims 2, 6, 12-19, 27, 33, 34, 37, 38, and 41-45 are 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. In Claim 2, line 12, the limitation providing that a first mass member may be configured to be secured within a first recess in the sole at a first position is unclear as to whether the recess is in a position in the sole or whether the first mass is configured to be secured at a selected position from among a plurality of positions within the recess. The examiner notes that the specification discloses a mass member movably secured in a channel and an adjustable sole portion received in a recess. The scope of the claim is indefinite. The same applies to a second mass member, which is not disclosed, but as a duplicate of the first mass member the same lack of clarity is present.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 2, 6, 12-19, 25-27, 38, 39, and 41-51 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Sargent et al., U.S. Patent No. 2011/0152000, in view of Rice et al., U.S. Patent Application No. 2012/0202617, and in further view of Hasebe et al., U.S. Patent No. 6,254,494. As to Claim 2, Sargent teaches a golf club head which may comprise a body, paragraph 0248. The club head may further comprise a face, a crown, a sole, a skirt region (skirt), a hosel, and a body interior surface defining an interior cavity, paragraphs 0016, 0124, 0125, 0262. Sargent teaches that a passageway may extend from the hosel through the club head and open at the sole, paragraph 0131. The passageway may be located on a heel end of the body and may be configured to provide passage for an attachment screw, paragraph 0131 and see Figure 1D. An adjustable shaft connection system may couple a shaft to the hosel and include a shaft sleeve secured by an attachment screw to the hosel such that the shaft sleeve may be configured to support the shaft at various positions relative to the club head to vary the loft and lie angle, paragraphs 0193 and 0194. Shaft loft angle and shaft lie angle may be adjusted throughout an adjustability range of different combinations, paragraphs 0174, 0175 and see Table 6. At least 50 percent of the crown may have an areal weight less than 0.4 g/ cm squared, paragraph 0018. Sargent is silent as to first and second mass members configured to be secured in first and second recesses respectively. Rice teaches a similar golf club head (40) comprising a first recess (84) and a first mass member (200) configured to be secured within the first recess in the sole at a first location defining a first position for the first mass member (inside the recess) via a first fastening bolt (210) extending through the first mass member, paragraphs 0051, 0052 and see Figures 1 and 5. The first fastening bolt may comprise an enlarged head portion and a threaded shaft extending from the head portion and defining a first fastening bolt shaft axis, paragraph 0051 and see Figure 5. A second recess (80) and a second mass member (200) may be configured in the same manner as the first, paragraphs 0051, 0052 and see Figures 1 and 5. The first position may be located on a heel-ward portion of the body that is located heel-ward of a geometric center of the face and the second position may be located on a toe-ward portion of the body that is located toe-ward of the geometric center of the face, see Figure 1. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Sargent with first and second mass members configured to be secured in first and second recess with fastening bolts located as claimed and as taught by Rice, to provide Sargent with a known substitute configuration for adding mass members to a club head sole. Further, Rice teaches first and second recesses positioned on the sole and spaced from the face of the club head, see Figure 1, suggesting that the axes of the first and second fastening bolts may be arranged so as to intersect the club head crown and to not intersect the club head face. It would have been obvious to one of ordinary skill in the art before the effective filing date to arrange the axes of the first and second fastening bolts as claimed and as suggested by Rice to provide Sargent, as modified, with a known substitute arrangement of recesses and fastening bolts. Rice teaches that the first and second positions may be rearward of the hosel and separated by a portion of the sole, see Figure 1. It would have been obvious to one of ordinary skill in the art before the effective filing date to arrange the recesses rearward of the hosel, as taught by Rice, to provide Sargent, as modified, with first and second recesses rearward of the passageway, to yield the predictable result of recesses positioned so as to not interfere with the passageway. Sargent, as modified, does not teach first and second positions for repositionable weights at locations less than 50 mm from the geometric center of the face. Hasebe teaches a golf club head having repositionable weights (A, C) with first and second positions, each of which may be less than 50 mm from the geometric center measured along a head origin y-axis, Col. 4, ln. 3-15 and see Figures 3 and 4. Further, Hasebe teaches that heel-ward and toe-ward weights may be located forward of an imaginary vertical plane located at distance of 40% of the head length from the geometric center of the face measured along the origin y-axis, with the head length being measured as claimed, see Figure 3 noting the location of the weights at less than half the head length. It would have been obvious to one of ordinary skill in the art before the effective filing date to arrange the first and second positions and recesses as claimed and as taught by Hasebe to provide Sargent as modified, with a known substitute arrangement for first and second mass members. Further, Rice teaches that the first recess and second recess may comprise a heel-ward and toe-ward recessed portion interior surface that partially defines the interior cavity of the body, see Figure 5. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the first and second recesses to project into the interior cavity of the club head, as taught by Rice, to provide Sargent, as modified, with a known substitute configuration for mass member receiving recesses. As to Claim 6, Sargent teaches that at least 50 percent of the sole may have an areal weight less than 0.4 g/ cm squared and at least 50 percent of the crown may have a thickness less than about 0.9 mm, paragraphs 0264 and 0261. As to Claim 12, Rice teaches that the first mass member may comprise a non-threaded bore for receiving the shaft of the first fastening bolt and a counter bore in communication with the non-threaded bore for receiving the enlarged head portion of the first fastening bolt, paragraph 0049 and see Figure 5, noting that the screw receiving region of the recess is threaded. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the mass member and recess such that a fastening bolt passes through the mass member and mates with a threaded portion of the recess, as taught by Rice, to provide Sargent, as modified, with a known substitute configuration for a removable mass member. As to Claim 13, Sargent teaches that one repositionable weight for a club head may have mass of no more than 15 g, paragraph 0241. Sargent teaches that at least 50% of the crown may have a thickness less than 0.9 mm, paragraph 0016. Sargent does not specify that the first mass member may have mass of no more than 15 g. Rice teaches that the first mass member may have mass of no more than 15 g., paragraph 0053. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Sargent, as modified, with a first mass member mass within the claimed range, as taught by Rice, to provide Sargent, as modified, with a known substitute mass for the first mass member. As to Claim 14, Rice teaches that a weight port (82) may be located in a rear portion of the club head, see Figure 3. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Sargent, as modified, with a rear weight port, as taught by Rice, to provide Sargent, as modified, with a rear location for a mass member, to yield the predictable result of facilitating the process of tailoring the club head weight distribution. As to Claim 15, Sargent teaches that at least a portion of the face may comprise a composite face plate (6722), paragraph 0288. As to Claim 16, Sargent teaches that the body may comprise a front opening and the composite face plate may be attached to an insert support structure (6714, 6726) located at the front opening, paragraphs 0288 and 0289. The insert support structure may at least partially surround the composite face plate and supports a rear surface of the composite face plate, paragraph 0289 and see Figure 67B. As to Claims 17 and 18, Sargent teaches that at least a portion of the face may have variable face thickness with maximum thickness greater than 3.0 mm and minimum less than 3.0 mm, paragraph 0269. As to Claim 19, Rice teaches a plurality of ribs (12, 130, 140) and that a rib (140) protruding from the body interior surface may be fixed to a heel-ward recessed portion (84) interior surface, Col. 8, ln. 25-40 and see Figure 21. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Sargent, as modified, with a plurality of ribs and a supporting rib protruding from the interior body and fixed to a heel-ward recessed portion interior surface, as taught by Rice, to provide Sargent, as modified, with structural support for a recess, to yield the predictable result of increasing durability of the club head. As to Claim 25, Sargent, as modified by Rice and Hasebe, is applied as in Claims 2, 6, 12, and 17, with the same obviousness rationales being found applicable. Further, Rice teaches that the first and second positions may be located toe-ward of the hosel, see Figure 1. It would have been obvious to one of ordinary skill in the art before the effective filing date to arrange the first and second positions as claimed and as taught by Rice, to provide Sargent, as modified, with first and second positions toe-ward of the passageway, as a known substitute arrangement of recesses. Hasebe is applied as in Claim 2, noting that the distance would also be less than 40 mm. It would have been obvious to one of ordinary skill in the art before the effective filing date to arrange the heel-ward repositionable weight position at less than 40 mm measured on the y-axis from the geometric center as taught by Hasebe, to provide Sargent, as modified, with a known substitute weight position location. As to Claims 26 and 27, Sargent teaches a z-axis moment of inertia may be between about 350 to 600 kg x mm squared, paragraph 0257and an x-axis moment of inertia may be between about 200 to 500 kg x mm squared, paragraph 0256. As to Claim 38, Sargent teaches that the club head may comprise a composite face plate (6710) having variable thickness, paragraph 0289. As to Claims 39 and 41, Sargent, as modified by Rice, is applied as in Claim 13, with the same obviousness rationale being found applicable. Further, Rice teaches that the second mass member may be positioned rearward of the hosel, see Figure 1. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Sargent, as modified, with a the second mass member positioned rearward of the hosel, as taught by Rice to provide Sargent, as modified, with a second mass member rearward of the passageway, to yield the predictable result of avoiding interference between the passageway and the second recess. As to Claim 42, Sargent is applied as in Claims 2 and 6. As to Claim 43, Rice is applied as in Claim 19 with the same obviousness rationale being found applicable. As to Claim 44, Rice teaches that the first mass member may be positioned rearward of the hosel, see Figure 1. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Sargent, as modified, with a the first mass member positioned rearward of the hosel, as taught by Rice to provide Sargent, as modified, with a first mass member rearward of the passageway as a known substitute arrangement of club head recesses. As to Claims 45 and 47, Sargent teaches that the face may comprise a composite material, as discussed above. Sargent, as modified, discloses the claimed invention except for specifying that the composite material may be carbon fiber. It would have been obvious to one of ordinary skill in the art before the effective filing date to select carbon fiber material, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice, In re Leshin, 125 USPQ 416 (CCPA 1960. As to Claim 46, Sargent, as modified, is applied as in Claims 2 and 43 with the same obviousness rationales being found applicable. As to Claim 48, Sargent, as modified, is applied as in Claims 2, 6, 14, and 19, with the same obviousness rationale being found applicable. Sargent, as modified by Rice, is applied as in Claim 2 with regard to the first recess being rearward of the passageway. It follows that first recess and the passageway are separated by a portion of the sole. The examiner finds that in applying the treatment of Claim 2 to Claim 48 the labels of the first and second recesses may be reversed such that the same rationale may be applied to support a finding that the first position may be toe-ward of the geometric center of the face, reversing the labels given to the recesses. As to Claim 49, Sargent, as modified, is applied as in Claim 26, with the same obviousness rationale being found applicable. As to Claim 50, Sargent, together with cited case law is applied as in Claim 45. As to Claim 51, Sargent is applied as in Claim 18.
Claims 33, 34, and 37 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Sargent, ‘000, as applied to claims 2, 12, and 13 above, and further in view of Sargent et al., Patent Application No. 2011/0312437. Sargent, ‘000, as modified substantially shows the claim limitations, as discussed above. As to Claim 33, Sargent, ‘000, as modified, is silent as to an internal rib extending from the hosel. Sargent, ‘437, discloses a similar golf club head having an interior cavity, paragraph 0017. An internal rib (9068) may extend from a hosel (9013), paragraph 0379. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Sargent, ‘000, as modified, with an internal rib extending from the hosel as taught by Sargent, ‘437, to provide Sargent, ‘000, as modified, with additional internal support for the hosel, to yield the predictable result of improving structural integrity of the club head. As to Claim 34, Sargent, ‘437, teaches that the internal rib (9068) may extend to a location toe-ward of the geometric center of the face, see drawing below. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Sargent, ‘000, as modified, with the internal rib being configured to extend to a location toe-ward of the geometric center to provide Sargent, ‘000, as modified, with a known substitute configuration of a hosel supporting internal rib. As to Claim 37, Sargent, ‘437, teaches that the internal rib extends internally a rib height from the body interior surface and the rib height varies, see drawing below. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the internal rib with varying height, as taught by Sargent, ‘437, to provide Sargent, ‘000, as modified, with a known substitute configuration of an internal rib.
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Response to Arguments
Applicant’s arguments 9 March 2026 have been considered persuasive with regard to the rejections under 35 USC §112(a) of Claims 19 and 43 regarding ribs fixed to a recessed portion of the heel-ward recessed portion interior surface of a channel, of Claim 37 regarding a rib extending from the hosel having variable height, and of Claim 48 regarding a first fastening bolt axis intersecting the crown and not the face.
Otherwise, applicant's arguments filed 9 March 2026 have been fully considered but they are not persuasive.
In response to applicant’s argument asserting that Figure 99 of the originally filed specification discloses a first mass member configured to be secured within a first recess in the sole at a first position and a second mass member configured to be secured in a second recess, the examiner maintains the position that Figure 99 of the specification depicts an embodiment described at page 113 of the specification and comprises a channel (9320) extending in a heel-to-toe direction in which a weight member (9344) may be secured at a selected location along the channel. The weight member may be inserted at a toe-side installation cavity (9336), of the recess, which installation cavity may be covered by a cap (9372), secured by a cap screw (9374). There is no disclosure of a second mass member or a second recess. A recess described by the specification does not allow for securing a feature at more than one location. The specification discloses a mass member which may be secured in a channel at more than one location. There is no disclosure of a second position, as claimed, because there is no disclosure of a second mass member or second recess. The examiner finds that the first fastening bolt axis intersecting the crown but not the face is disclosed by Figure 96A, but there is no disclosure of the claimed conditions for a second fastening bolt axis, for the reasoning set forth above. There is no disclosure of a second position of a second mass member on the far left. It follows that there is no supporting disclosure supporting a limitation providing a second position less than 50 mm from the geometric center of the face. The same applies to the similar limitations of Claim 25.
With regard to Claim 48, the examiner maintains the position that the specification discloses a less than 50 mm spacing from the face center only at an x-axis coordinate corresponding to the face center; consequently there is no supporting disclosure of a less than 50 mm spacing for a toe-ward position.
In response to applicant’s argument directed to the rejection of Claim 2, under 35 USC §112(b), the examiner maintains the position that Claim 2 does not clearly specify that a first weight member may be disposed in a channel and that the limitations providing a second recess and second weight member are unclear in view of the lacking disclosure.
With regard to applicant’s arguments related to rejections under 35 USC §103, the examiner maintains the position that a configuration of weight members as claimed, is disclosed by the teaching of the cited references taken in combination. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Rice teaches a club head configured with a relatively forward position of the hosel, which when combined with the primary reference, Sargent, would provide a club head having weights in recesses located entirely rearward of the passageway. Hasebe teaches that a rearward location of the center of gravity may be detrimental to club head performance by increasing backspin and Hasebe teaches a club head with a relative forward position of mass members advantageously positioned to control the degree of backspin to achieve favorable performance, see Col. 2, ln. 40-67. A person or ordinary skill in the art, before the effective filing date, would have been motivated to considered the teaching of the references in combination to arrive at the claimed inventio.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN ELLIOTT SIMMS JR whose telephone number is (571)270-7474. The examiner can normally be reached 8:30 am - 5:00 pm - M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at (571) 270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711 23 March 2026