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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 18 May 2026 has been entered.
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.
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(s) 1-4, 6, 12-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jacobson et al., U.S. Patent No. 6,352,482, in view of Kusumoto et al., U.S. Patent No. 6,056,648, and in further view of Toya, Japanese published patent application No. JP 2015-123,184. As to Claim 1, Jacobson teaches a golf club head (22) comprising a strike face (30), and a hosel (38) defining a hosel internal bore (52), Col. 3, ln. 31-38 and 66-67. A shaft adapter (50) may be secured within the hosel bore, Col. 3, ln. 66-67. Jacobson teaches a shaft (40), which may have a tip end section at least partially secured within the shaft adapter, Col. 3, ln. 31, 62-64 and see Figure 16, but Jacobson does not provide that the shaft may be formed from a fiber reinforced polymer. Kusumoto teaches that a golf club shaft may be formed from a fiber reinforced polymer, Col. 3 ln. 30-32, noting synthetic resin. The shaft may extend along a longitudinal axis between a tip end (1) and a grip end (2), Col. 6, ln. 33-38. Kusumoto teaches a tip end section abutting the tip end and a grip end section abutting the grip end, see Figure 1, noting portion proximate location A and portion proximate location B respectively. A tapered section (portion from location B to location D), may be considered to exist extending from and interconnecting the tip end section and the grip end section, Col. 10, ln. 35-40 and see Figure 9. It is inherent that an upper portion may comprise an upper 60% of the tapered section and that a lower portion may comprise a lower 60% of the tapered section as measured along the longitudinal axis. The upper portion may be considered to be located in abutting relation to the grip end section and the lower portion may be considered to be located in abutting relation to the tip end section. Kusumoto teaches a reference portion at least partially located within the upper portion and the reference portion may have a frustoconical shape with a near constant taper rate, Col. 11, ln. 3-6 and see drawing below, noting a generally cylindrical shape with a rate of taper. A narrowed portion may be at least partially located within the lower portion and between the tip end and the reference portion, wherein the outer surface of the narrowed portion may be recessed relative to a reference surface extrapolated from the frustoconical shape toward the tip end, see drawing below. Kusumoto teaches that a first region may have a first taper rate (R1 4/1000), a second region may have a second taper rate (R2 45/1000), and a third region may have a third taper rate (R3 5/1000), with the first region being closest to the tip end, the third region being closest to the grip end, and the second region being between, Col. 11, ln. 3-6 and see drawing below. Kusumoto teaches that R2 may be greater than each of R1 and R3, as illustrated above. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Jacobson with a tapered section between a tip end section and a grip end section arranged and configured as taught by Kusumoto, to provide Jacobson with a tapered shaft of varied degrees of including a second region (R2) having a relatively greater degree of tapering between a first region (R1) and a third region (R3) having similar taper rates, to yield the predictable result of facilitating the process of tailoring the stiffness and air resistance of the shaft. Jacobson, as modified, discloses the claimed invention except for specifying that the taper rates R1 and R3 may be equal. Toya teaches a golf club shaft similar to that of Kusumoto but Toya teaches that regions corresponding to a first region (R1) and a third region (R3) may each have a relatively gentle taper, suggesting that the taper rates may be equal, paragraph 0012 and see Figure 2, noting central sharply tapered region (1c), between first region (1b), and third region (1a). It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Jacobson, as modified, with regions R1 and R3, with gentle taper rates, as taught by Toya to provide Jacobson, as modified, with a known substitute configuration for upper and lower tapered regions surrounding a more sharply tapered region. Jacobson, as modified, discloses the claimed invention except for specifying that the taper rates R1 and R3 may be equal. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the regions R1 and R3 with equal taper rates, 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.
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As to Claim 2, Jacobson teaches that the shaft adapter may comprise a generally tubular body having a shaft adapter inner bore adapted to receive the tip end of a shaft and an outer surface (73) adapted to be secured within the hosel inner bore Col. 3, ln. 35-39, 62-63 and Col. 4, ln. 40, noting cylindrical shape. As to Claim 3, Jacobson teaches that the shaft adapter may comprise a strain relief portion (64) that extends beyond a terminal end of the hosel, Col. 4 ln. 29-30 and see Figure 16. As to Claim 4, Jacobson, as modified, discloses the claimed invention except for providing an integral shaft adapter with strain relief portion instead of a separate parts. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the shaft adapter with a separate strain relief portion, since it has been held that construction a formerly integral structure in various elements involves only routine skill in the art, Nerwin v. Erlichman, 168 USPQ 177, 179. As to Claim 6, Kusumoto teaches that the fiber reinforced polymer in the shaft may comprise a plurality of fibers oriented parallel to the longitudinal axis, Col. 7, ln. 54-61 and see Figure 3A. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Jacobson, as modified, with longitudinally oriented fibers, as taught by Kusumoto, to provide Jacobson, as modified, with fibers oriented so as to improve stiffness, to yield the predictable result of facilitating the manufacture of a thin shaft with adequate stiffness. Jacobson, as modified, discloses the claimed invention except for indicating that the longitudinal fibers may be arranged in the narrow portion. It would have been obvious to one of ordinary skill in the art before the effective filing date to arrange the longitudinal fibers in the narrowed portion, since it has been held that rearranging parts of an invention involves only routine skill in the art, In re Japikse, 86 USPQ 70 (CCPA 1950). As to Claim 12, the examiner finds that the second region may be considered to be adjacent the first region, with the first region being proximate the tip end suggesting that both may be considered to be located entirely within the lower portion of the tapered section (region). It would have been obvious to one of ordinary skill in the art before the effective filing date to arrange the first and second regions, as suggested, to provide Jacobson, as modified, with a known substitute arrangement. As to Claim 13, Kusumoto teaches that the length from location B to location D may be about 27.5 inches, Col. 10, 46-51, which represents the length of the tapered portion except for the parts of the distance from location A to location B and from location D to location E which are not considered to be tip end portion and grip end portion, suggesting that with the addition of some part of the two additional distances the tapered section may have a length greater than about 30 inches. Further, the first region may be closest to the tip end suggesting that the first region may be entirely within about the first 15 inches of the tapered section closest to the tip end section. It would have been obvious to one of ordinary skill in the art before the effective filing date to arrange tapered section length and location of the first region as suggested, to provide Jacobson, as modified, with a known substitute tapered section configuration. As to Claim 14, the examiner finds that the first and second regions are of unspecified length and that the first region may be considered to be located proximate the tip end with the second region beside the first region, suggesting that the first and second regions may be located entirely within about 20 inches of the tapered section located closest to the tip end section. It would have been obvious to one of ordinary skill in the art before the effective filing date to arrange locations of the first and second regions as suggested, to provide Jacobson, as modified, with a known substitute tapered section configuration. As to Claim 15, Kusumoto teaches that the tip end may be cylindrical with an outer diameter of from about 0.30 to about 0.315 inch, Col. 6, ln. 33-34, and Col. 10, ln. 51-53, noting tube body. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Jacobson, as modified, with cylindrical tip end having diameter within the claimed range, as taught by Kusumoto, to provide Jacobson, as modified, with a known substitute tip end configuration. As to Claim 16, Kusumoto teaches that the grip end section may have an outer diameter of from about 0.55 to 0.65 inches, the outer diameter of the tapered section transitioning from the outer diameter of the tip end section to the outer diameter of the grip end section, Col. 10, ln. 57-60 and see Figure 9. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the grip end section diameter and overall transitioning shape, as taught by Kusumoto, to provide Jacobson, as modified, with a known substitute tapered shaft dimensional configuration. As to Claim 17, Kusumoto teaches that the diameter of the narrowed potion tapers from about 0.27 inch to about 0.4 inch. It follows that 40% of the narrowed portion would be located at a point where the diameter would be about 0.32 inch. The diameter of the reference surface (location D) may be about 0.52 inch. With 6% being about 0.03 inch, Col. 10, ln. 45-60. It follows that at least 40% of the narrowed portion, by length along the longitudinal axis, may have an outer diameter that is more than about 6% smaller than the reference surface. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Jacobson, as modified, with a tapered shaft configured as claimed and as taught by Kusumoto, to provide Jacobson, as modified, with a known substitute tapered shaft configuration. As to Claim 18, Kusumoto teaches that the diameter of the narrowed potion tapers from about 0.27 inch to about 0.4 inch. It follows that 50% of the narrowed portion would be located at a point where the diameter would be about 0.34 inch. The diameter of the reference surface (location D) may be about 0.52 inch. With 7% being about 0.04 inch, Col. 10, ln. 45-60. It follows that at least 50% of the narrowed portion, by length along the longitudinal axis, may have an outer diameter that is more than about 7% smaller than the reference surface. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Jacobson, as modified, with a tapered shaft configured as claimed and as taught by Kusumoto, to provide Jacobson, as modified, with a known substitute tapered shaft configuration. As to Claim 19, Kusumoto teaches that the part of the narrowed portion extending from location B to location C may be about 25 inches, all of which portion may be narrowed relative to the reference surface, Col. 10, ln. 48-51. About 7% relative to the reference surface may be about 0.04 inch, as discussed above. The examiner finds that the narrowed portion is within the tapered section in the area proximate the tip end and 11 inches is approximately 50% of the 25 inch distance measuring the narrowed portion. Kusumoto is applied as in Claim 18 with the same obviousness rationale being found applicable. As to Claim 20, Kusumoto teaches that 25 inches of the tapered section located closest to the tip end may have a diameter up to 0.39 inch. The reference surface diameter may be about 0.52 inch, with 9% being about 0.05, Col. 10, ln. 48-51. It follows that 9 inches of the tapered section located closest to the tip end may be narrowed by greater than 9% relative to the reference surface. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Jacobson, as modified, with a tapered shaft configured as claimed and as taught by Kusumoto, to provide Jacobson, as modified, with a known substitute tapered shaft configuration.
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 3 September 2026
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