DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
Allowable Subject Matter
Claims 6-9, 19-20 are allowed.
Claim 6 includes limitations directed towards 6. The golf club according to claim 5, wherein the main body portion is configured so that a gap L2 in the radial direction of the shaft which is larger than the gap L1 of the second portion, is formed between the main body portion and an inner circumferential surface of the shaft. Kumamoto teaches a golf weight but is silent with regards to the limitations included above. These limitations when viewed in combination with any intervening and parent claims and any remaining limitations of the claim are seen to provide patentable distinction over the cited prior art of record.
Claim 7 includes limitations directed towards 7. The golf club according to claim 5, wherein the gap L1 is gradually increased in the axial direction of the shaft toward the second end. Kumamoto teaches a golf weight but is silent with regards to the gradual increase as shown above. These limitations when viewed in combination with any intervening and parent claims and any remaining limitations of the claim are seen to provide patentable distinction over the cited prior art of record.
Claim 8 includes limitations directed towards 8. The golf club according to claim 1, wherein a thickness in the shaft radial direction of the second portion at its end on the first end side is smaller than a thickness in the shaft radial direction of the second portion at is end on the second end side. Kumamoto teaches a golf weight but is silent with regards to the thickness as claimed. These limitations when viewed in combination with any intervening and parent claims and any remaining limitations of the claim are seen to provide patentable distinction over the cited prior art of record.
Claim 9 includes limitations directed towards 9. The golf club according to claim 1, wherein the main body portion comprises a third portion separating from the inner circumferential surface of the shaft by a gap in the radial direction of the shaft, and a fourth portion contacting with the inner circumferential surface of the shaft in the radial direction of the shaft, the fourth portion is located closer to the second end of the shaft than the third portion, the fourth portion is made of an elastically deformable material, and the fourth portion has an outer diameter larger than an inner diameter of the space of the shaft when the weight member is in its free state. Kumamoto teaches a golf weight but is silent with regards to the portion(s) as shown above. These limitations when viewed in combination with any intervening and parent claims and any remaining limitations of the claim are seen to provide patentable distinction over the cited prior art of record.
Claim 19 includes limitations directed towards 19. The golf club according to claim 18, wherein the main body portion is configured so that a gap L2 in the radial direction of the shaft which is larger than the gap L1 of the second portion, is formed between the main body portion and an inner circumferential surface of the shaft. Kumamoto teaches a golf weight but is silent with regards to the configurations of the body portion the second portion. These limitations when viewed in combination with any intervening and parent claims and any remaining limitations of the claim are seen to provide patentable distinction over the cited prior art of record.
Claim 20 includes limitations directed towards 20. The golf club according to claim 15, wherein the main body portion comprises a third portion separating from the inner circumferential surface of the shaft by a gap in the radial direction of the shaft, and a fourth portion contacting with the inner circumferential surface of the shaft in the radial direction of the shaft, the fourth portion is located closer to the second end of the shaft than the third portion, the fourth portion is made of an elastically deformable material, and the fourth portion has an outer diameter larger than an inner diameter of the space of the shaft when the weight member is in its free state. Kumamoto teaches a golf weight but is silent with regards to the third portion, forth portion and the configuration as explained above. These limitations when viewed in combination with any intervening and parent claims and any remaining limitations of the claim are seen to provide patentable distinction over the cited prior art of record.
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 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.
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.
The notations noted below apply to all rejections: In as much structure set forth by the applicant in the claims, the device is capable of use in the intended manner if so desired (See MPEP 2112). It should be noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, it meets the claim limitations. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963). The intended use defined in the preamble and body of the claim breathes no life and meaning structurally different than that of the applied reference.
Claims 1-5, 10-18 are rejected under 35 U.S.C. 103 as being unpatentable over Kumamoto (JP 2010017200 A) in view of Huiskamp (US 6364787 B1).
Regarding claim 1, Kumamoto teaches 1. A golf club comprising: a pipe-shaped shaft having a space therein and having a first end and a second end; See Fig. 1 and 7 which show the golf club and a pipe-shaped shaft., a weight member attached to the shaft on a first end side; and See Fig. 7; (34), a golf club head attached to the shaft on a second end side, See Fig. 1; (4), wherein the weight member comprises a main body portion and a flange portion, See Fig. 7; (34)(36), the main body portion is at least partially disposed in the space of the pipe-shaped shaft, See Fig. 7 which shows the weight being inside the pipe-shaped shaft., the flange portion is disposed outside the pipe-shaped shaft, and the flange portion comprises a first portion extending in the radial direction of the shaft and having an outer diameter larger than an outer diameter of the shaft at the first end, and See Fig. 7; (36)(44) the tape 44 can be considered part of the flange 36 and covers part of the outer circumferential surface of the shaft.
Huiskamp does teach what the primary reference is silent on including a second portion extending in the axial direction of the shaft from the first portion toward the second end so as to cover an outer circumferential surface of the shaft. See Fig. 2; (LW) noting "At the end of extension E is affixed the weight W which, as shown, is secured in the end of the extension E of shaft S, and which is in this embodiment also in part provided by a lead winding or wrap LW outside the hollow shaft, which may or may not be integral with or affixed to the major weight W.".
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Kumamoto with Huiskamp to help secure the weight to the end of the shaft (See 5:56+).
Regarding claim 2, Kumamoto teaches 2. The golf club according to claim 1, wherein the second portion includes a plurality of the second portions arranged in the circumferential direction of the shaft at intervals. See Fig. 7; (36)(44) the tape 44 can be considered part of the flange 36 and covers part of the outer circumferential surface of the shaft.
Regarding claim 3, Kumamoto teaches 3. The golf club according to claim 2, wherein the plurality of the second portions are arranged in the circumferential direction of the shaft at equal intervals. See Fig. 7; (36)(44) the tape 44 can be considered part of the flange 36 and covers part of the outer circumferential surface of the shaft.
Regarding claim 4, Huiskamp teaches 4. The golf club according to claim 1, wherein the second portion is annularly-shaped and continuous in the circumferential direction of the shaft. See Fig. 2; (LW) noting "At the end of extension E is affixed the weight W which, as shown, is secured in the end of the extension E of shaft S, and which is in this embodiment also in part provided by a lead winding or wrap LW outside the hollow shaft, which may or may not be integral with or affixed to the major weight W.".
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Kumamoto with Huiskamp to help secure the weight to the end of the shaft (See 5:56+).
Regarding claim 5, Kumamoto teaches 5. The golf club according to claim 1, wherein the second portion is configured so that a gap L1 in the radial direction of the shaft is formed between the second portion and the outer circumferential surface of the shaft. See Fig. 7; (G1).
Regarding claim 10, Kumamoto teaches 10. The golf club according to claim 1, wherein the flange portion is formed as a separate part from the main body portion, and the flange portion is fixed to the main body portion by using a connecting means. See Fig. 7; (36)(44) wherein the tape which can can be considered part of the flange is separate from the main body of the weight.
Regarding claim 11, Kumamoto teaches 11. A weight member for a golf club, the golf club comprising a pipe-shaped shaft which has a space therein and a first end and a second end and to which the weight member is attached on the first end side thereof, the weight member comprising a main body portion configured so that at least a part thereof can be disposed on the inside of the space of the shaft, and a flange portion configured to be disposed on the outside of the space of the shaft, wherein the flange portion comprises a first portion extending in a radial direction of the shaft and having an outer diameter larger than an outer diameter of the shaft at the first end, and See Fig. 1 and 7; (4)(34)(36)(44) see the rejection on claim 1 above as the claims are substantially similar.
Huiskamp does teach what the primary reference is silent on including a second portion extending in an axial direction of the shaft from the first portion toward the second end so as to cover an outer circumferential surface of the shaft. See Fig. 2; (LW) noting "At the end of extension E is affixed the weight W which, as shown, is secured in the end of the extension E of shaft S, and which is in this embodiment also in part provided by a lead winding or wrap LW outside the hollow shaft, which may or may not be integral with or affixed to the major weight W.".
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Kumamoto with Huiskamp to help secure the weight to the end of the shaft (See 5:56+).
Regarding claim 12, Kumamoto teaches 12. The weight member according to claim 11, wherein the second portion includes a plurality of the second portions arranged in the circumferential direction of the shaft at intervals. See Fig. 7; (36)(44) the tape 44 can be considered part of the flange 36 and covers part of the outer circumferential surface of the shaft.
Regarding claim 13, Kumamoto teaches 13. The weight member according to claim 12, wherein the plurality of the second portions are arranged in the circumferential direction of the shaft at equal intervals. See Fig. 7; (36)(44) the tape 44 can be considered part of the flange 36 and covers part of the outer circumferential surface of the shaft.
Regarding claim 14, Huiskamp teaches 14. The weight member according to claim 11, wherein the second portion is continuous in the circumferential direction of the shaft. See Fig. 2; (LW) noting "At the end of extension E is affixed the weight W which, as shown, is secured in the end of the extension E of shaft S, and which is in this embodiment also in part provided by a lead winding or wrap LW outside the hollow shaft, which may or may not be integral with or affixed to the major weight W.".
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Kumamoto with Huiskamp to help secure the weight to the end of the shaft (See 5:56+).
Regarding claim 15, Kumamoto teaches 15. A golf club comprising: a pipe-shaped shaft having a space therein and having a first end and a second end; a weight member attached to the shaft on a first end side; and a golf club head attached to the shaft on a second end side, wherein the weight member comprises a main body portion and a flange portion, the main body portion is at least partially disposed in the space of the pipe-shaped shaft, the flange portion is disposed outside the pipe-shaped shaft, and the flange portion comprises a first portion extending in the radial direction of the shaft and having an outer diameter larger than an outer diameter of the shaft at the first end, and See Fig. 1 and 7; (4)(34)(36)(44) see the rejection on claim 1 above as the claims are substantially similar.
Huiskamp does teach what the primary reference is silent on including a second portion extending in the axial direction of the shaft from the first portion toward the second end while being located on the outside in the shaft radial direction of an outer circumferential surface of the shaft. See Fig. 2; (LW) noting "At the end of extension E is affixed the weight W which, as shown, is secured in the end of the extension E of shaft S, and which is in this embodiment also in part provided by a lead winding or wrap LW outside the hollow shaft, which may or may not be integral with or affixed to the major weight W.".
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Kumamoto with Huiskamp to help secure the weight to the end of the shaft (See 5:56+).
Regarding claim 16, Kumamoto teaches 16. The golf club according to claim 15, wherein the second portion includes a plurality of the second portions arranged in the circumferential direction of the shaft at intervals. See Fig. 7; (36)(44) the tape 44 can be considered part of the flange 36 and covers part of the outer circumferential surface of the shaft.
Regarding claim 17, Huiskamp teaches 17. The golf club according to claim 15, wherein the second portion is continuous in the circumferential direction of the shaft. See Fig. 2; (LW) noting "At the end of extension E is affixed the weight W which, as shown, is secured in the end of the extension E of shaft S, and which is in this embodiment also in part provided by a lead winding or wrap LW outside the hollow shaft, which may or may not be integral with or affixed to the major weight W.".
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Kumamoto with Huiskamp to help secure the weight to the end of the shaft (See 5:56+).
Regarding claim 18, Kumamoto teaches 18. The golf club according to claim 15, wherein the second portion is configured so that a gap L1 in the radial direction of the shaft is formed between the second portion and the outer circumferential surface of the shaft. See Fig. 7; (G1).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Johnston US 20230057922 A1 - which shows a weight attached to the end of a golf club.
Johnson US 20170304699 A1 - which shows a expandable weight at the end of a golf club shaft.
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/JEFFREY S VANDERVEEN/Examiner, Art Unit 3711
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