DETAILED ACTION
This Office action is responsive to communication received 05/27/2026 – Power of Attorney and Statement Under 37 CFR 3.73; and 06/03/2026 – IDS, Terminal Disclaimer and Amendment.
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 .
Terminal Disclaimer
The terminal disclaimer filed on 06/03/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of USPNs 11904217; 10232232; 9555294; 9168432; 8608587; 10413788; 11491375; 11213725; and 12161919 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Status of Claims
Claims 1-3, 5-13, 15 and 17-20 remain pending.
Response to Arguments
In the arguments received 06/03/2026, the applicant notes that a terminal disclaimer has been filed to overcome the rejections of the claim(s) under obviousness-type double patenting in view of a variety of cited prior art references. The applicant addresses the outstanding rejection of claim 8 under 35 U.S.C. §112(b) and the outstanding rejection of claim 16 under 35 U.S.C. §112(d). Last, the applicant notes that the independent claims 1 and 11 have been amended to incorporate the limitations found in previous dependent claims with respect to the maximum height of the ridge apex and thus contends that the rejections of the claims under 35 U.S.C. §103 have been overcome.
IN RESPONSE:
The previous rejections under obviousness-type double patenting have been overcome in view of the timely-submitted and properly-filed terminal disclaimer, received 06/03/2026.
The previous rejection of claim 8 under 35 U.S.C. §112(b) has been withdrawn, as it appears that the applicant has confirmed that claim 3 actually does provide for proper antecedent basis for the language “the ridge length”, which is subsequently referred to in claim 8, which depends from claim 3.
The previous rejection of claim 16 under 35 U.S.C. §112(d) is rendered moot, since claim 16 has been cancelled.
With respect to the outstanding rejections of certain claims under 35 U.S.C. §103, it is noted that the applicant has incorporated the limitations of previous claim 4 into independent claim 1 and the limitations of previous claim 14 into independent claim 11. The applicant has also filed an IDS, received 06/03/2026, with a citation identified as foreign document JP-2016174647 to Saso, published 06/10/2016. This foreign document was cited in the parent application serial no. 17/645,510. Upon further consideration, a new ground(s) of rejection is being made using this Saso reference in combination with further, previously-applied references of record. Any inconvenience to the applicant is sincerely regretted.
FOLLOWING IS AN ACTION ON THE MERITS:
Claim Rejections - 35 USC § 112
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 17 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.
As to claim 17, in each of lines 3 and 4, it would appear that the language “top ridge surface” should perhaps read --ridge top surface-- for proper correspondence with the language initially set forth in claim 11, line 8.
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 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.
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 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.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 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. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. In Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009), the Federal Circuit offered additional instruction as to the need for an explicit analysis. The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.
"[T]he analysis that "should be made explicit" refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis. . . . Under the flexible inquiry set forth by the Supreme Court, the district court therefore erred by failing to take account of 'the inferences and creative steps,' or even routine steps, that an inventor would employ and by failing to find a motivation to combine related pieces from the prior art." Ball Aerosol, 555 F.3d at 993, 89 USPQ2d at 1877.
The Federal Circuit’s directive in Ball Aerosol was addressed to a lower court, but it applies to Office personnel as well. When setting forth a rejection, Office personnel are to continue to make appropriate findings of fact as explained in MPEP § 2141 and § 2143, and must provide a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art at the time of the invention. This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.
I. EXEMPLARY RATIONALES
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over USPN 8,360,900 to Snyder in view of USPN 8,790,196 to Solheim et al (hereinafter referred to as “Solheim”) and also in view of US PUBS 2010/0016096 to Burnett et al (hereinafter referred to as “Burnett”) and also in view of JP-2016174647 to Saso.
Reference is made to annotated FIG. 6A of Snyder, shown below:
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As to independent claim 1, Snyder shows a golf club head comprising: a crown, a sole, a toe end, a heel end, a face portion defining a loft plane, a rear portion, and a leading edge between the face portion and the crown; and a plurality of turbulators including a plurality of ridges disposed on the crown, wherein each ridge of the plurality of ridges includes: a ridge base positioned directly adjacent to the crown; a ridge top surface opposite the ridge base; a ridge apex defined as a maximum height of the ridge measured in a direction perpendicular from the base of the ridge; a ridge front surface comprises a ridge first end closest to the face portion and a ridge second end closest to the ridge apex; and a ridge rear surface defining a portion of the ridge being closest to the rear portion of the golf club head, extending from behind the ridge apex towards the rear portion of the golf club head.
Snyder lacks the features “a crown insert comprising a top surface and a bottom surface”…with a plurality of ridges “integrally formed on the top surface of the crown insert”… and ”the golf club head further comprises a recess in the crown; the crown insert is configured to be received by the recess in the crown; and the crown insert is formed from a composite material”. Solheim shows an arrangement in which features on a crown portion of a club head may be formed directly on the crown or alternatively provided on a crown insert that is subsequently attached to the crown. See col. 32, line 61 through col. 33, line 15 and FIGS. 41-43. In view of the patent to Solheim, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the device in Snyder by forming the plurality of turbulators including the plurality of ridges as part of a separate crown insert that is attached to the crown surface, with there being a reasonable expectation of success that the aerodynamic attributes of the club head would have been easier to modify through the use of an insert. For instance, replacement of a damaged ridge would simply have involved removal of the crown insert and replacement with another crown insert as opposed to extensive repairs to the crown portion. In addition, Solheim teaches that the crown insert may be formed from composite material (i.e., see col. 36, lines 1-18; and see claims 2, 7, 15 and 20 in Solheim). Using composite material in the crown portion would have lowered the center of gravity of the club head. In view of the teaching in Solheim and the above reasoning, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the device in Snyder by providing a crown insert formed of composite material for weight reduction, thereby enabling more discretionary mass to be used elsewhere on the club head to relocate the center of gravity and thus improve club head performance.
Snyder also lacks the feature “the crown further comprises a crown apex”…”the crown apex is located in a front region of the crown rearward of the leading edge and along a centerline extending from the face portion to the rear portion of the golf club head”. Here, Burnett teaches that the location of the crown apex plays an important part in the aerodynamic performance of the club head. The location of the crown apex is generally dependent upon the curvature of the crown from the rear end to the front end. See paragraphs [0057] and [0058] in Burnett. In view of the publication to Burnett, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to locate the crown apex of the Snyder device rearwardly of the leading edge and along a centerline that extends from the face portion to the rear portion of the golf club head in order to assist in creating more desirable airflow across the crown surface.
Snyder also lacks the dimensions “between 0.02 inch (0.51 mm) and 0.07 inch (1.78mm)”, as now claimed, for the maximum height of the ridge. However, it is noted that Snyder reveals that the height of the fins (32) may be “less than approximately 3 mm” or even “approximately 2 mm” (i.e., col. 7, line 55 through col. 8, line 11, specifically col. 7, lines 61-63). Saso shows it to be old in the art to provide one or a plurality of ridges atop the crown surface and having a height of between 0.2 mm and 3 mm (i.e., see the translated Abstract on scanned page 7, as well as the translated explanation under “Claims (3)” of the Saso document provided by the applicant on 06/03/2026). Saso teaches that the ridges assist in increasing the flight distance of struck golf balls by reducing the air resistance of the club head during a swing, with Saso further noting the significance of sizing the ridges with a height in a range of 0.2 mm to 3 mm in order to create a vortex (i.e., see the translations on scanned page 8, lines 12-25; and scanned page 8, line 62 through scanned page 9, line 3 of the Saso document received 06/03/2026). In view of the teaching in Saso, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Snyder by sizing the ridges identified hereinabove to include a maximum height between 0.51 mm and 1.78 mm to help generate a desirable vortex in order to reduce the air resistance encountered by the golf club during a swing and thus impart an impact to a golf ball which tends to increase the ball flight distance.
Claims 2-3 and 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 8,360,900 to Snyder in view of USPN 8,790,196 to Solheim et al (hereinafter referred to as “Solheim”) and also in view of US PUBS 2010/0016096 to Burnett et al (hereinafter referred to as “Burnett”) and also in view of JP-2016174647 to Saso, and also in view of US PUBS 2013/0109494 to Henrikson et al (hereinafter referred to as “Henrikson”).
As to claim 2, Snyder, as modified by Solheim, Burnett and Saso, lacks an explicit teaching of positioning the identified turbulators “in a forward two-fifths of the length of the crown”. Here, Henrikson shows it to be old in the art to position a set of turbulators within a forwardmost portion of the crown (i.e., FIG. 30 in Henrikson shows turbulators 403 clearly located completely within a forward two-fifths of the length of the crown) in order to create a turbulent wake and reduce the speed of the club head during a swing (i.e. see paragraph [0057] in Henrikson). In view of the teaching in Henrikson, it would have been obvious to modify the club head in Snyder by arranging the identified ridges to be situated completely within a forward two-fifths of the length of the crown, the motivation being to provide a particular boundary layer effect.
As to claim 3, Snyder shows that an apex of the ridge is positioned within a first 50% of a ridge length (i.e., see annotated FIG. 6A under claim 1, above).
As to claim 5, Solheim obviates placement of the crown insert to sit flush with the crown to create a smooth and continuous surface. Again, see col. 32, line 61 through col. 33, line 15 and FIGS. 41-43 in Solheim.
As to claim 6, FIGS. 6A and 6B in Snyder show that the ridges extend in a direction substantially perpendicular to the face portion.
As to claim 7, Solheim obviates attachment of the crown inset to the recess via adhesive. Again, see col. 32, line 61 through col. 33, line 15 and FIGS. 41-43 in Solheim.
As to claim 8, the ridge length in a front-to-rear-direction is substantially greater than a ridge width in a heel-to-toe direction. Again, see FIG. 6A in Snyder.
As to claim 9, FIG. 6C in Snyder clearly shows that the ridge first end of the ridge front surface of the ridge is positioned on the leading edge. Also, note col. 8, lines 36-43.
As to claims 10, Snyder shows at least two ridges. See each of FIGS. 6A-6F.
Claims 11, 15 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 8,360,900 to Snyder in view of USPN 8,790,196 to Solheim et al (hereinafter referred to as “Solheim”) and also in view of US PUBS 2004/0192468 to Onoda et al (hereinafter referred to as “Onoda”) and also in view of JP-2016174647 to Saso.
As to independent claim 11, Snyder shows a golf club head comprising: a crown, a sole, a toe end, a heel end, a face portion defining a loft plane, a rear portion, and a leading edge between the face portion and the crown; and a plurality of turbulators including a plurality of ridges disposed on the crown, wherein each ridge of the plurality of ridges includes: a ridge base positioned directly adjacent to the top surface of the crown; a ridge top surface opposite the ridge base; a ridge apex defined as a maximum height of the ridge measured in a direction perpendicular from the ridge base; a ridge front surface comprises a ridge first end closest to the face portion and a ridge second end closest to the ridge apex; and a ridge rear surface defining a portion of the ridge closest to the rear portion of the golf club head, extending from behind the ridge apex towards the rear portion of the golf club head. See annotated FIG. 6A, below:
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Snyder lacks the features “a crown insert comprising a top surface and a bottom surface”…with a plurality of ridges “integrally formed on the top surface of the crown insert”… and ”the crown insert is configured to be received by a recess in the crown”….”at least 50% of the crown is formed from a composite material; the crown insert is formed from a metallic material”. Solheim shows an arrangement in which features on a crown portion of a club head may be formed directly on the crown or alternatively provided on a crown insert that is subsequently attached to the crown. See col. 32, line 61 through col. 33, line 15 and FIGS. 41-43. In view of the patent to Solheim, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the device in Snyder by forming the plurality of turbulators including the plurality of ridges as part of a separate crown insert that is attached to the crown surface, with there being a reasonable expectation of success that the aerodynamic attributes of the club head would have been easier to modify through the use of an insert. For instance, replacement of a damaged ridge would simply have involved removal of the crown insert and replacement with another crown insert as opposed to extensive repairs to the crown portion. As for the material of the crown and the crown insert, attention is directed to Onoda, which teaches that the crown portion may be formed from composite material, with a crown insert formed of metallic material. In fact, Onoda teaches that varying the material of the body, which includes the crown portion, along with the material of the crown insert alters the club head weight distribution (i.e., see paragraph [0021] of Onoda). In view of the teaching in Onoda, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Snyder by incorporating composite material for the crown and introducing a crown insert that is formed of metallic material for the purpose of redistributing the weight of the club head to enhance the performance of the club head.
Snyder, as modified by Solheim and Onoda, also lacks the feature “the recess is defined by a depth that ranges from approximately 0.001 inch to approximately 0.050 inch”. Here, the skilled artisan would have found it obvious to further modify the Snyder device, which has been modified to include a recess and crown insert, with a recess that is dimensioned to a depth sufficient to hold the crown insert being of a predetermined thickness so that the upper surface of the crown insert may sit flush with the remainder of the crown portion. The skilled artisan would have recognized the need for sizing the recess to a depth sufficient enough to maintain any added adhesive along with the insert material. Deciding the depth of the recess would simply have involved routine experimentation. “[W]here 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).
Snyder also lacks the dimensions “between 0.02 inch (0.51 mm) and 0.07 inch (1.78mm)”, as now claimed, for the maximum height of the ridge. However, it is noted that Snyder reveals that the height of the fins (32) may be “less than approximately 3 mm” or even “approximately 2 mm” (i.e., col. 7, line 55 through col. 8, line 11, specifically col. 7, lines 61-63). Saso shows it to be old in the art to provide one or a plurality of ridges atop the crown surface and having a height of between 0.2 mm and 3 mm (i.e., see the translated Abstract on scanned page 7, as well as the translated explanation under “Claims (3)” of the Saso document provided by the applicant on 06/03/2026). Saso teaches that the ridges assist in increasing the flight distance of struck golf balls by reducing the air resistance of the club head during a swing, with Saso further noting the significance of sizing the ridges with a height in a range of 0.2 mm to 3 mm in order to create a vortex (i.e., see the translations on scanned page 8, lines 12-25; and scanned page 8, line 62 through scanned page 9, line 3 of the Saso document received 06/03/2026). In view of the teaching in Saso, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Snyder by sizing the ridges identified hereinabove to include a maximum height between 0.51 mm and 1.78 mm to help generate a desirable vortex in order to reduce the air resistance encountered by the golf club during a swing and thus impart an impact to a golf ball which tends to increase the ball flight distance.
As to claims 15 and 17, although Snyder does not explicitly disclose an angle comprising a range from 87 degrees to 100 degrees between the ridge front surface and the loft plane (claim 15) nor an angle of no less than 60 degrees for the taper of the ridge side walls between the ridge base and the ridge top surface of each ridge (claim 17), Snyder does provide ample teaching for shaping and sizing the turbulators (i.e., fins 32) in order to enhance the aerodynamic efficiency of the club head. See col. 6, line 33 through col. 9, line 51 in Snyder. Here, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to provide a suitable angle at the front surface of each turbulator or fin (32) and taper the side walls at a suitable angle from the base to the top surface in order to enhance the performance of the club head. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 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. Moreover, the specific claimed angle for the front surface along with the specific claimed angle between the side walls for each ridge are not deemed critical. It would appear these values would have been determined through routine experimentation in order to enhance the aerodynamic performance of the club head, which is consistent with the teachings in Snyder. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
As to claim 18, FIGS. 1B and 6C in Snyder show that the leading edge comprises a leading edge plane forming a leading edge angle with the loft plane, wherein the ridge first end of the ridge front surface of each ridge of the plurality of ridges is at least partly located between the leading edge plane and the rear portion, but not extending beyond the leading edge plane. Also, note col. 8, lines 36-58, which explains that the forwardmost end of the ridges or fins (32) may be located slightly rearwardly of the front striking surface plane.
As to claim 19, FIG. 6C shows 2 ridges (i.e., two fins 32a, 32b).
As to claim 20, referring to the ridges (i.e., fins 32) along with col. 7, lines 17-32; and col. 8, lines 12-35, Snyder discloses that the fins or ridges may include a width between the heel end and the toe end of between 2 mm and 10 mm and that the spacing between fins (32) may be between approximately 20 mm and approximately 70 mm. Each of the fins (32) includes a length extending in a front-to-rear direction and between the face portion and the rear portion of the club head. As shown in FIG. 6C, the ridge length of the fins (32a, 32b) is substantially greater than the ridge width. Moreover, based on the measurements disclosed in Snyder, the space between each of the pair of ridges of the plurality of ridges is substantially greater than the ridge width of each of the adjacent pair of ridges of the plurality of ridges that define the space.
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 8,360,900 to Snyder in view of USPN 8,790,196 to Solheim et al (hereinafter referred to as “Solheim”) and also in view of US PUBS 2004/0192468 to Onoda et al (hereinafter referred to as “Onoda”) and also in view of JP-2016174647 to Saso, and also in view of US PUBS 2013/0109494 to Henrikson et al (hereinafter referred to as “Henrikson”).
As to claim 12, Snyder, as modified by Solheim, Onoda and Saso, lacks an explicit teaching of positioning the identified turbulators “completely located in a forward two-fifths of the length of the crown”. Here, Henrikson shows it to be old in the art to position a set of turbulators within a forwardmost portion of the crown (i.e., FIG. 30 in Henrikson shows turbulators 403 clearly located completely within a forward two-fifths of the length of the crown) in order to create a turbulent wake and reduce the speed of the club head during a swing (i.e. see paragraph [0057] in Henrikson). In view of the teaching in Henrikson, it would have been obvious to modify the club head in Snyder by arranging the identified ridges to be situated completely within a forward two-fifths of the length of the crown, the motivation being to provide a particular boundary layer effect.
As to claim 13, Snyder shows that an apex of the ridge (i.e., see annotated FIG. 6A under claim 11, above) is positioned within a first 50% of a ridge length.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEBASTIANO PASSANITI whose telephone number is (571)272-4413. The examiner can normally be reached 9:00AM-5:00PM Mon-Fri.
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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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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711
Prosecution Insights