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 .
Drawings
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
The examiner notes that the drawings (Figures 29, 30A, 30B, and 112) are suitable for illustration using B/W techniques. 37 CFR 1.84(a)(2) indicates, in part, “On rare occasions, color drawings may be necessary as the only practical medium by which to disclose the subject matter sought to be patented in a utility patent application .” However, the drawings include figures depicting the invention of a type which have long been illustrated through use of a variety of shading, cross-hatching markings, and reference numbers. As such, color drawings do not appear to be the only practical medium for the disclosure, given the long-standing use of suitable black and white techniques. Rather than filing a petition to accept color drawings, applicant is advised to consider filing replacement drawings in black and white.
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.
Claim 35 is 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. The limitation providing that 20-65% of the total face area is composed of cells having a total repeated shape area of less than 20% of an individual cell total area 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.
Claim 30 is 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. If the claim limitation is intended to relate to the centroid-to-centroid distance between the centroids of shapes, the claim must so state. The scope of the claim is indefinite.
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 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.
Claim(s) 21-26, 30-33, 35-37, and 41 is/are rejected under 35 U.S.C. 103 as being unpatentable over Davis, U.S. Patent No. 1,965,954, in view of Greaney et al., U.S. Patent Application No 2019/0232121, and in further view of Stites et al., U.S. Patent Application No. 2012/0077616. As to Claim 21, Davis teaches a golf club head (1) comprising a face, a sole, and a hosel portion (2), with a hosel bore, defining a shaft axis, noting shaft (4) attached to hosel portion, page 1, ln. 100 – 104, and see drawing below. It is inherent that the face may have a face center defining a loft plane tangent to the center, together with a face profile length, a face profile width, and total face area. The examiner finds that an origin for an x-axis, a y-axis, and a z-axis may be considered to exist configured and arranged as claimed. Further, vertical center and center horizontal planes may be considered to exist with 10 mm x 10 mm cells laid out on the face, as claimed, being defined. Davis teaches that a portion of the face may have a face pattern created by a contrast between a face surface characteristic (16) and a positive surface characteristic (14), with the face pattern comprising a first repeated shape (egg) that is repeated at last 5 times on the face, page 2, ln. 37-43 and see Figure 1. Davis teaches that the face characteristic may comprise a face color (relatively high lustre) and the positive surface characteristic may comprise a positive color (black), with a contrasting color difference, page 2, ln. 59-69. Davis teaches that the pattern provides smaller and more concentrated shapes in regions further from vertical center line of the face, suggesting that the shape may be repeated 2-30 times in column regions spaced from the vertical center line, see Figure 1. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide a first repeated shape occurring 2-30 times in a designated column region as claimed, and as suggested. The examiner notes that positive surface characteristics divide the face surface into shapes, see Figure 2. It follows that 100% of cell total area is occupied by unrestricted repeated cell shapes, unless a cell includes some portion of the area being configured with a shape that is not repeated. Davis does not specify that a cell may be configured with a non-repeated shape. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure a first and a second cell with a non-repeating shape or shapes, to establish a fractional percentage of total cell area having unrestricted repeated total shape area, since it has been held that configuration of parts of an invention is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that a particular claimed configuration was significant. The examiner finds that providing no more than a D1% of total cell area being unrestricted cell total repeated shape area relates only to aesthetic appeal of the club face and amounts to ornamentation which does not serve to patentably distinguish the invention. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) (matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art), MPEP 2112.01 (III). Davis teaches that the positive surface characteristic, as disclosed, may be applied to existing styles of club head, page 2, ln. 103-104, but Davis does not specify a wood type club head such as would include a crown and club head dimensions, as claimed. Greaney teaches a golf club head (100) which may include a crown (120), paragraph 0036. Greaney teaches that contrasting colors may be applied to the crown and face of the club head, paragraph 0030, and that the difference in color may be greater than 2.3 defined by delta E*ab, paragraphs 0034 and 0035. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Davis, as modified, with a difference in color greater than 2.3 defined by delta E*ab, as taught by Greaney, to provide Davis, as modified, with an appropriate degree of color contrast to yield the predictable result of establishing a readily noticeable degree of color contrast. Greaney teaches that the club head may have mass of 180-210 grams and a volume of 390-500 cc, paragraph 0038. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Davis, as modified, with club head mass and volume within the claimed ranges, as taught by Greaney, to provide Davis, as modified, with known substitute club head dimensions. Davis, as modified, discloses the claimed invention except for reporting a club head body length. Stites teaches a similar golf club head (102), paragraph 0024. The club head may have a body length from a leading edge to a rearward most portion of 115-130 mm, see Table 3 and Figure 1B. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Davis, as modified, with a club head body length within the claimed range, as taught by Stites, to provide Davis, as modified, with a known substitute club head dimension.
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As to Claim 22, the examiner finds that the same rationale applied in the treatment of Claim 21, with regard to the upper boundary of first and second cell unrestricted cell total repeated shape area is equally applicable to the lower boundary of at least 20% of the first and second cell total area, namely that the degree to which a non-repeated shape occupies cell area is a matter of ornamentation. As to Claim 23, Davis, as modified, discloses the claimed invention except for providing that the first cell first repeated shape may include a first cell largest repeated shape having a first cell largest repeated shape area and every other first repeated shape may be configured to have a first cell secondary repeated shape area that is within 60% of the first cell largest repeated shape area. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the first cell secondary repeated shape as claimed since it has been held that configuration of parts of an invention is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that a particular claimed configuration was significant, In re Dailey, 149 USPQ 47 (CCPA 1966). As to Claim 24, the examiner finds that the case law applied in the treatment of Claim 23 is equally applicable to establish obviousness with regard to the first cell secondary repeated shape area of at least one repeated shape is at least 5% less than the first cell largest repeated shape area. As to Claim 25, the examiner finds that the case law applied in the treatment of Claim 23 is equally applicable to establish obviousness with regard to the first cell unrestricted cell total repeated shape area being no more that D2% of the first cell total area, and the second cell unrestricted cell total repeated shape area being no more than D2% of the second cell total area (D2 being defined as claimed). As to Claim 26, the examiner finds that the case law applied in the treatment of Claim 23 is equally applicable to establish obviousness with regard to the first cell unrestricted cell total repeated shape area being no more that D2% of the first cell total area, and the second cell unrestricted cell total repeated shape area being no more than D2% of the second cell total area (D2 being defined as claimed). As to Claim 30, the examiner finds that the same rationale applied in the treatment of Claim 21, with regard to the upper boundary of first and second cell unrestricted cell total repeated shape area is equally applicable to the first cell average centroid-to-centroid distance being 2.5 to 8.0 mm, namely that the arrangement of the cells is a matter of ornamentation. Claim 30 is treated as best understood in view of the rejection under 35 USC §112(b). As to Claim 31, Davis teaches that areas of the face in the regions of the toe and heel do not contain the face pattern, see Figure 1. The examiner finds that column regions, configured as claimed, may be considered to exist on the club face of Davis. It follows that cells toeward of 2T and heelward of 2H would not contain the face pattern. As to Claims 32 and 33, the examiner finds that the same rationale applied in the treatment of Claim 21, with regard to the upper boundary of first and second cell unrestricted cell total repeated shape area is equally applicable to the particular location of the first and second cells configured with shapes as claimed, namely that the arrangement of shapes in cells is a matter of ornamentation. As to Claim 35, the examiner finds that the same rationale applied in the treatment of Claim 21, with regard to the upper boundary of first and second cell unrestricted cell total repeated shape area is equally applicable to the percentage of total face area composed of cells having a total repeated shape area of less than 20% of an individual cell total area, namely that the arrangement of shapes in cells is a matter of ornamentation. As to Claims 36 and 37, Davis teaches a plurality of parallel scorelines (12) formed in the face with adjacent scorelines separated by a separation distance, page 2, ln. 18-21 and see Figure 1. The examiner finds that the same rationale applied in the treatment of Claim 21, with regard to the upper boundary of first and second cell unrestricted cell total repeated shape area is equally applicable to the application of shapes wherein a first repeated shape is polygonal with each edge having an edge length with at least one edge length less than the separation distance, namely that the configuration of shapes in cells is a matter of ornamentation. As to Claim 41, Davis, in view of Greaney, ‘121, and Stites, together with cited case law and rationale is applied as in Claims 21, 30, and 22. Further, Greaney, ‘121, teaches that CIELAB delta E*ab may be greater than 10, paragraph 0035. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Davis, as modified, with a CIELAB delta E*ab within the claimed range, as taught by Greaney, ‘121, to provide Davis, as modified, with noticeable color contrast to yield the predictable result of facilitating discernment of differently colored areas.
Claim(s) 27-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Davis, as modified by Greaney, ‘121’, and Stites, together with cited case law and rationale, as applied to claims 21 and 24 above, and further in view of Greaney et al., U.S. Patent Application No. 2021/0060392. Davis, as modified, substantially shows the claimed limitations, as discussed above. As to Claim 27, Davis teaches that the face may have lustre for contrast, page 2, ln. 66-67, but Davis, as modified, does not provide a face color as claimed. Greaney, ‘392, teaches that a golf club head may have a dark face color with a CIELAB brightness of less than 40, paragraph 0295. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Davis, as modified, with a dark face color having brightness, as claimed and as taught by Greaney, ‘295, to provide Davis, as modified, with readily visible club head face. The examiner finds that the colored face of prior art possesses the structural features of the inventive face and is capable of exhibiting the same characteristic, namely diffusively reflecting color. "The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977), MPEP 2112 (I). As to Claim 28, Davis teaches that the face color may configured to provide contrast, page 2, ln. 66-67, indicating that the coloration of the face is a result effective variable. Davis, as modified, discloses the claimed invention except for providing a face color CIELAB chroma value less than 10. It would have been obvious to one of ordinary skill in the art before the effective filing date to select a range for the chroma value of the face color of less than 10, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art, In re Aller, 105 USPQ 233. As to Claim 29, Greaney, ‘392, teaches that face color may have a CIELAB gloss value of less than 60 gloss units, paragraph 297. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Davis, as modified, with face color having CIELAB gloss value as claimed, and as taught by Greaney, ‘392, to provide Davis, as modified, with a readily visible club head face.
Claim(s) 34, 38, 39, and 40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Davis, as modified by Greaney, ‘121’, and Stites, together with cited case law and rationale, as applied to claims 21 and 23 above, and further in view of Beach et al., U.S. Patent Application No. 2009/0286611. Davis, as modified, substantially shows the claimed limitations, as discussed above. As to Claim 34, Davis, as modified, does not disclose details of the club head center of gravity location or moments of inertia about axes passing through the center of gravity. Stites teaches that a Zup elevation above a ground plane may be 18-30 mm, see Table 1. It would have been obvious to one of ordinary skill in the art before he effective filing date to provide Davis, as modified, with a center of gravity located above a ground plane by a distance within the claimed range, as taught by Stites, to provide Davis, as modified, with a known substitute club head configuration. Beach teaches a similar golf club head (300), paragraph 0101. Beach teaches that the club head may have center of gravity coordinates given by CGx of between -5 to 5 mm, CGz of between -10 to 0 mm, paragraph 0234 and Table 8. The Ixx moment of inertia may be 300-440 kg mm squared, the Iyy moment of inertia may be 265-350 kg mm squared, and the Izz moment of inertia may be 480-700 kg mm squared, paragraphs 238-240. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Davis, as modified, with a club head configured to have a center of gravity location and moment of inertia properties as claimed and as taught by Beach to provide Davis, as modified with a known substitute club head weighting configuration. As to Claim 38, Beach teaches a face opening with at least a portion of a face (6710) covering the face opening and adhesively secured to the golf club head, paragraphs 0270, 0271 and see Figure 67B. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Davis, as modified, with a face adhesively secured to a face opening, as taught by Beach, to provide Davis, as modified, with a face comprising a separate component to yield the predictable result of facilitating the selection of different materials for the face. As to Claim 39, Stites teaches that the club head may be formed by attaching a face member to a one piece club head body, paragraph 0026. The body may be formed from an aluminum alloy, paragraph 0028. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Davis, as modified, with an aluminum alloy club head body, as taught by Stites, to provide Davis, as modified, with a known substitute material forming the portion of the body to which the face may be attached. As to Claim 40, Beach teaches that at least a portion of the face may comprise a non-metallic (composite) material, paragraph 070. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Davis, as modified, with a non-metallic face, as taught by Beach, to provide Davis, as modified, with a known substitute face material.
Claim(s) 42 is/are rejected under 35 U.S.C. 103 as being unpatentable over Davis, in view of Greaney, ‘121, Stites, Greaney, ‘392, and Beach, as applied to claims 21, 40, 29, 22, and 34 above. Davis, as modified by Greaney, ‘121, and Stites, is applied as in Claims 21 and 22. Greaney, ‘392, is applied as in Claims 27-29, and Beach is applied as in Claims 40 and 34. The same rationales being found applicable.
Conclusion
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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/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711 28 August 2025