DETAILED ACTION
1. This action is made Final in response to applicants Amendments / Request for Reconsideration filed 3/9/26. Claims 1 and 11 are amended; claims 1-20 are pending.
Claim Rejections - 35 USC § 112
2. 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 1-20 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. Independent claims recite the following limitation not supported by the specification as originally filed: a hosel configured to receive a golf club shaft “through an upward-facing opening”. The basis for support, according to applicant, is Figures 3A, 4A and 5A (Remarks – page 1, paragraph 1). However, these Figures do not show an opening in the hosel. Examiner notes Fig 4B clearly shows the top of the stem portion of the hosel with an upwardly extending protrusion. If the top of the stem was an opening, this feature would not be present. A person ordinary skill in the art would reasonably conclude the stem portion of the hosel in these Figures is a configured to be received within a female cavity of a shaft as is common in the art. Fig. 2A appears to show a hosel with an opening. This hosel is not structured with a cylindrical stem portion like in Figures 3A, 4A and 5A. Moreover, Fig. 2A is directed to a heel-toe blade type putter, not a mallet or mid mallet embodied by the claims.
Claim Rejections - 35 USC § 103
3. 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.
4. Claims 1-5, 10-13, 18 and 20 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 Cameron (US Pat. No. 7,004,849).
With respect to claims 1, 4-5, 11-13 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 is entirely rearward of a portion of a hosel configured to receive the golf club shaft through an upward-facing opening. However, analogous art reference Cameron teaches that it is known in the art for a golf club putter to comprise a CG (“CG”) located entirely rearward of a portion of a hosel 124 configured to receive a shaft 140 though an upward facing opening (Fig.’s 11-12; column 7, lines 10-33; column 8, lines 12-44). 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 Cameron. The rationale to combine is to attach the shaft to the putter using a known attachment technique. Further, a large MOI about the vertical axis will be achieved (column 8, lines 35-44). The proposed modification has a reasonable expectation of success as Iwade at paragraph [0012] and Cameron at column 7, lines 29-30 expressly contemplates the use of a bent shafts. By bending the shaft, the hosel can easily be positioned to have a portion entirely forward of the CG, while also maintaining the desired feature of Iwade of having a shaft axis rearward of the CG.
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.
5. Claims 6-9, 14-17 and 19 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 Cameron (US Pat. No. 7,004,849) 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.
Response to Arguments
6. 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.
The arguments with respect to new matter are addressed above in the 112(a) rejection.
Conclusion
7. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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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/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711