DETAILED ACTION
Claim Rejections - 35 USC § 103
1. 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
2. The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 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. 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.
3. Claims 1-4, 10-12, 18, 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Iwade (US Pub. No. 2005/0215346) in view of Schweigert et al. (US Pub. No. 2018/0290029) and further in view of Solomon (US Pat. No. 4,702,477).
With respect to claims 1, 4, 11-12- and 20, Iwade teaches a putter-type golf club head 10 that, when oriented in a reference position, comprises: a front portion 16 having a face defining a virtual face plane, the face including a forward-most extent located on the face; a rear portion 18 opposite the front portion and extending rearwardly from the front portion, a rearward-most extent located on the rear portion; a heel; a toe opposite the heel; and a sole surface, a center of gravity including a depth, CGD, that is measured along a depth axis that passes through the CG and is normal to the virtual face plane, the CGD being no greater than 25.0 mm (Fig. 3; paragraphs [0027], [0030]; CGD measured by N (-) M); and a golf club head length L measured in a front to rear direction from the forward-most extent of the front portion to the rearward-most extent, such that CGD/L is no greater than 0.28 and no less than .15 (Fig.’s 2-3; paragraphs [0026]-[0028], [0030]; i.e. using M as 14.9mm, N=B=30mm and ratio of A:B is 1:0.4).
Admittedly, Iwade fails to expressly teach wherein the face has a plurality of texture grooves configured to exhibit a first groove density at a central face location and a second groove density at a second face location horizontally offset from the central face location, the second groove density being less than the first groove density; wherein the face is textured such that a central face location exhibits a first proportion of ball contact area and a second face location, horizontally offset from the central face location, exhibits a second proportion of ball contact area that is greater than the first proportion of ball contact area, wherein the plurality of texture grooves exhibits a first groove spacing at the central location and a second groove spacing at the second location that is less than the first groove spacing, wherein the plurality of texture grooves progressively vary in depth from the central face location toward a perimeter of the face, with grooves at the central face location having a greater depth than grooves at locations closer to the perimeter. However, these features are known in the art as demonstrated by analogous art reference Schweigert et al. – Fig.’s 32-38; paragraphs [0136]-[0156]; See paragraph [0149] teaching decreasing groove depth from center towards perimeter. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to add the groove configuration of the face of Schweigert et al. to the face of Iwade. The rationale to combine is set forth by Schweigert at paragraph [0153] – normalization of ball speed across the face, improved stroke consistency, mitigate ball speed loss for off-center hits. The proposed modification has a reasonable expectation of success as the primary purpose is not frustrated and it can be accomplished using common manufacturing techniques (i.e., groove milling).
Lastly, Iwade fails to teach wherein the CG is located rearward of a portion of a hosel
configured to receive the golf club shaft. However, analogous art reference Solomon teaches
that it is known in the art for a golf club putter to comprise a CG located rearward of a portion of
a hosel 41 to which a shaft 21 may be attached (Fig. 1). At time of applicant's effective filing, a
person ordinary skill in the art would have found it obvious to attach the shaft to the club using
the teachings of Solomon. The rationale to combine is to attach the shaft to the putter using a
known attachment technique. This will also ensure the golfer overcomes starting inertial without
having "a hitch in his or her backswing" (column 5, lines 49-51). The proposed modification has a
reasonable expectation of success. Solomon expressly teaches wherein the shaft axis is rearward
of the club CG (column 4, lines 29-30), which is a primary purpose of Iwade. Further, Iwade
expressly contemplates the use of bent shafts. See Fig. 6, paragraph [0012].
With respect to claims 2-3, Schweigert et al., cited above for textured face grooves, teaches wherein the plurality of texture grooves exhibits a first groove spacing at the central face location and a second groove spacing at the second face location that is greater than the first groove spacing (Fig.’s 32-38; paragraphs [0136]-[0156]). The motivation to combine is the same as stated above. These first grooves inherently comprise a spacing, but Schweigert et al. does not disclose this numeric 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 club of Iwade as modified by Schweigert would not operate different with a first groove thickness within the claimed range. The spacing of grooves is known to be a result effective variable for changing the areas of the hitting portion of the face, which ultimately contributes to the ball speed. See Schweigert et al. at paragraphs [0152]-[0153]. At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to select an optimal first groove spacing, including within the claimed range, via routine experimentation. The motivation to modify the spacing would be to expectantly provide a face hitting projection size that promotes consistent ball speed across the face. No specific purpose for operability has been established in relation to the claimed range as the specification merely notes the claimed range is “preferably” used. The proposed modification has a reasonable expectation of success. The primary purpose of Iwade as modified above is not frustrated and it can be accomplished using common manufacturing techniques (i.e., groove milling).
As per claims 10 and 18, Iwade inherently teaches a moment of inertia about a vertical axis through the CG, Izz, but does not expressly disclose this numeric value. However, 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), MPEP 2144.05. Here, Iwade would not perform differently having the claimed inertial value. Moreover, Izz is known to be a result effective variable for forgiveness of the golf club. At time of applicant’s filing, one ordinary skill in the art would have found it obvious to increase the MOI about z axis to reduce twisting of the face for off-center hits. No specific purpose for operability has been established in relation to the claimed range as the specification allows for inertial values outside the claimed range. The proposed modification has a reasonable expectation of success. The primary purpose of Iwade as modified above is not frustrated.
With respect to claim 21, Schweigert, cited above for the face grooves/textured portion, further teaches wherein the plurality of texture grooves have a groove depth between 0.1 mm and 0.3 mm (paragraph [0140]). The rationale to combine is the same as stated above.
4. Claims 6-9, 14-17, 19 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Iwade (US Pub. No. 2005/0215346) in view of Schweigert et al. (US Pub. No. 2018/0290029) and further in view of Solomon (US Pat. No. 4,702,477) and even further in view of Cole (US Pat. No. 7,326,128).
With respect to claims 6 and 14, Iwade teaches a very forward CG (Fig. 2) using heavier materials in the front portion than the back body portion, as opposed to using any forwardly positioned weight inserts as claimed. However, Cole, directed to the analogous art of golf putters, teaches a weight insert 120/122 that is denser than the main body 102 (Fig. 1; column 2, lines 4-34) and includes an insert CG located rearwardly from the virtual face plane. At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to incorporate the weight inserts of Cole into Iwade. The supreme court has set forth 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. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007). Here, the use of the face inserts could serve as a substitute for the large differences in front and rear part material densities to ensure a forward CG. For example, it may be preferably for the club designer to use the same material in the front and rear portions for manufacturing ease. The inserts could then be used to position the CG near the face. Or, it could be used in addition to the teachings of paragraph [0025]. For example, when the forward member 16 is made of a material that is slightly greater than a titanium alloy rear part 18, the face inserts can be added to ensure forward CG. The proposed combination has a reasonable expectation of success since Iwade does not assign criticality to the hitting surface structure and can be easily positioned therein via routine machining.
Cole teaches wherein the insert CG is located rearwardly a distance from the virtual face plane (shown by aggregate of Fig’s 1-2C), wherein the inserts 120/122 are flush with the face (Fig. 2C). Examiner notes the small depth of the insert shapes shown in Fig.’s 1 and 2C and their taper shape, indicating that the insert CG depth is substantially in close proximity to the virtual face plane. Cole does not expressly disclose this rearward distance. However, in Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830,225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. MPEP 2144.04. Iwade as modified by Cole would not perform different if the distance is less than 1 cm as the inserts are narrow in depth and flush with the face. Applicant’s specification teaches that the claimed distance contributes to a small CGD, however, Iwade expressly teaches a small CGD, including values less than 9mm as contemplated by applicant’s specification (paragraphs [0026]-[0028], [0030]). This further indicates that having the claimed relative dimensions would not perform differently than the prior art device and is therefore obvious in view of Gardner. Moreover, 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), MPEP 2144.05. One ordinary skill in the art will recognize that the position/location of weights is a result effective variable for CG position – see, e.g. extrinsic evidence references Abbott et al. (US Pub. No. 2017/0296886) at paragraphs [0040]-[0042]; Franklin (US Pub. No. 2012/0064992) at paragraph [0025]. At the time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to utilize routine experimentation to optimally position the insert CG to provide a desired club head CG position and inertia to provide a desirable “feel” and forgiveness for off-center hits. The applied art would function as intended by the proposed modification. No specific purpose for operability has been established in relation to the claimed range as the specification notes the claimed range is merely a contributing factor for a small CGD.
With respect to claims 7 and 15, Iwade teaches a very forward CG (Fig. 2) using heavier materials in the front portion than the back body portion, as opposed to using any forwardly positioned weight inserts as claimed. However, Cole, directed to the analogous art of golf putters, teaches a face that includes a heel side recess 132 and a toe side recess 130, a heel insert 122 received in the heel side recess 132; and a toe insert 120 received in the toe side recess 130, the inserts forming first and second portions of the face, respectively (Fig. 1; column 1, lines 46-67; column 2, lines 1-35). The motivation to combine is the same as stated above.
As per claims 8-9 and 16-17, Cole, cited for the high-density face inserts, teaches wherein the inserts can have different weights to align the center of gravity of club head 100 with the geometric center of front face to compensate for the asymmetrical feel caused by hosel (column 2, lines 22-43). Examiner also considers the volume and shape of the inserts to be equal (Fig. 1). Thus, the mass of the toe insert is considered to be greater than the mass of the heel insert. Cole further teaches wherein a density of the heel insert is between 9 g/cm3 and 15 g/cm3 (column 2, lines 33-35). Per MPEP 2131.03, prior art that teaches a range with sufficient specificity overlapping the claimed rang anticipates the claim. Cole teaches that the materials can be different. As the mass of the toe insert is greater than the heel insert as explained above, the toe insert density will necessarily be greater than the density of the heel insert given the shapes/volumes of the inserts are equal. The motivation to combine is the same as stated above. Additionally, at time of invention, one ordinary skill in the art would have found it obvious to utilize this type of weighting to move CG to a desired position.
With respect to claim 19, Cole, cited above for the weight insert having a weight insert density, teaches wherein the weight insert comprises tungsten having a density up to 20 g/cm^3 (column 2, lines 32-35). The rationale to combine is the same as stated above. Claim 19 further requires a central insert forming at least a portion of the face, wherein the central insert comprises a density less than the weight insert density. Iwade does not teach a central insert forming at least a portion of the face. However, analogous art reference Schweigert teaches this feature to be known in the art (paragraphs [0097]-[0100]). Schweigert further teaches wherein the central insert is made from metal alloys, plastic, wood or composite materials Id. As such, the combination of Schweigert and Cole meet the limitation of the central insert comprises a density less than the weight insert density. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to modify the golf club head of Iwade with the face insert of Schweigert. The rationale to combine is to facilitate secure connection of the face to the golf club head body using a known attachment means. By using an insert, the grooves of the face insert can be formed separately from the head. Moroever, a low-density face insert will move weight to the peripheral, which will expectantly increase forgiveness of the golf club.
With respect to claim 22, the combination of Iwade as modified above inherently teaches a ratio of a mass of the weight insert to a mass of the golf club head. Iwade teaches a mass of 379 g (paragraph [0030]). As such, for insert weights having a mass of at least 31 g would provide a combined teaching that meets the claimed ratio. The mass of the weight is not expressly disclosed. However, the mere scaling of a prior art invention capable of being scaled up does not establish patentability. See In re Rinehart, 531 F.2d 1048, 1053 189 USPQ 143 (CCPA 1976). In reviewing applicant’s specification, the specification does not provide criticality to the claimed ratio. Iwade as modified by Cole would not operate differently with high mass weights in the face as Iwade contemplates forward CG. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to scale up the mass of the weight insert to be 31g or more. The rationale to modify is to adjust the weight distribution such that CG is forward. Expectantly, increasing the weight mass will move CG toward the face.
Response to Arguments
5. Applicant’s arguments with respect to the pending claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
6. 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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