DETAILED ACTION
This Office action is responsive to the following communication received:
03/04/2024 – application papers received, including power of attorney and IDS (3 documents);
05/07/2024 – IDS; and
07/15/2024 – Preliminary Amendment, including amendments to claims.
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 .
Continuation Data
This application is a CON of 17/722,748 04/18/2022 PAT 11964192 which is a CON of 17/077,597 10/22/2020 PAT 11331547 which is a CON of 16/147,026 09/28/2018 PAT 10843048 which is a CON of 15/259,026 09/07/2016 PAT 10086240 which is a CIP of 15/255,638 09/02/2016 PAT 10035049 which is a CIP of 15/087,002 03/31/2016 PAT 9914027 which claims benefit of 62/205,601 08/14/2015.
Drawings
The drawings were received on 03/04/2024. These drawings are acceptable.
Information Disclosure Statement
The information disclosure statement, received 03/04/2024 (the 17 page document) contains a discrepancy in the documents listed therein. Note the following:
Specifically, Citation No. 57 under U.S. Patents is identified as USPN RE41577, with an Issue Date of 2010-08-24 and a Patentee of McLean, G. Here, USPN RE41577 is directed to “High Power Density Fuel Cell Stack Using Micro Structured Components". PTO records for the Issue Date and Patentee for this document match the information provided on the IDS paper. However, the significance of this document as it relates to the claimed invention is not understood. This document has been considered only to the extent that the Patent Number, Issue Date and Patentee provided on the IDS are correct.
Specifically, Citation No. 2 under U.S. Patent Application Publications is identified as US PUBS 20120205615, with an Issue Date of 2012-08-09 and Patentee/Applicant name of Beach et al. PTO records for the Issue Date and Patentee/Applicant for this document do not match the information provided on the IDS paper. Thus, this document has been lined-through.
The IDS paper has been placed in the application file, but the information referred to therein with respect to the two documents highlighted above has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Status of Claims
Claims 1-20 have been cancelled, as directed.
Claims 21-43 remain pending.
FOLLOWING IS AN ACTION ON THE MERITS:
Claim Rejections - 35 USC § 112(b)
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.
Claims 21-43 are 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 21, lines 25-26, should “a ground plane” instead read --the ground plane--? (see previous line 11).
As to claim 21, lines 40-42, a proper coordinate system should be set forth establishing the orientation of the CG z-axis and the CG x-axis. By way of example only, setting forth the elements of an XYZ coordinate system, with language that describes a CG z-axis extending through an origin at the CG in a generally vertical direction relative to the ground plane, when the club head is in the normal address position, and wherein a CG x-axis extends through the origin in a toe-to-heel direction and generally parallel to the striking face and generally perpendicular to the CG z-axis, and wherein a CG y-axis extends through the origin in a front-to-back direction and generally perpendicular to the CG x-axis and generally perpendicular to the CG z-axis would clarify the directions of the coordinates about which the claimed moment of inertia is being referenced.
As to claims 22-36, these claims share the indefiniteness of claim 1.
As to claim 37, lines 23-24, should “a ground plane” instead read --the ground plane--? (see previous line 11).
As to claim 37, lines 38-40, a proper coordinate system should be set forth establishing the orientation of the CG z-axis and the CG x-axis. By way of example only, setting forth the elements of an XYZ coordinate system, with language that describes a CG z-axis extending through an origin at the CG in a generally vertical direction relative to the ground plane, when the club head is in the normal address position, and wherein a CG x-axis extends through the origin in a toe-to-heel direction and generally parallel to the striking face and generally perpendicular to the CG z-axis, and wherein a CG y-axis extends through the origin in a front-to-back direction and generally perpendicular to the CG x-axis and generally perpendicular to the CG z-axis would clarify the directions of the coordinates about which the claimed moment of inertia is being referenced.
As to claims 38-41, these claims share the indefiniteness of claim 37.
As to claim 42, lines 23-24, should “a ground plane” instead read --the ground plane--? (see previous line 11).
As to claim 42, lines 30-32, a proper coordinate system should be set forth establishing the orientation of the CG z-axis and the CG x-axis. By way of example only, setting forth the elements of an XYZ coordinate system, with language that describes a CG z-axis extending through an origin at the CG in a generally vertical direction relative to the ground plane, when the club head is in the normal address position, and wherein a CG x-axis extends through the origin in a toe-to-heel direction and generally parallel to the striking face and generally perpendicular to the CG z-axis, and wherein a CG y-axis extends through the origin in a front-to-back direction and generally perpendicular to the CG x-axis and generally perpendicular to the CG z-axis would clarify the directions of the coordinates about which the claimed moment of inertia is being referenced.
As to claim 42, lines 33-35, with respect to what plane or other structural reference is “lower than the geometric center of the striking face” being measured? Is the trailing edge lower than the geometric center of the striking face and closer to the ground plane when the club head is placed in the address position?
As to claim 43, this claim share the indefiniteness of claim 42. Also, in line 1, the “HCHR distance” should be defined in the claim. Also, in line 3, should “an address position” instead read --the address position-- (see claim 42, line 12)?
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 35 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Here, claim 35 requires “wherein a center of gravity (CG) projection onto the striking face is at most 3 mm above a geometric center of the striking face”. Currently, claim 35 depends from claim 34, which depends from claim 33, which depends from claim 31, which depends from claim 30, which depends from claim 29, wherein claim 29 already sets forth the limitation “wherein a center of gravity (CG) projection onto the striking face is at most 3 mm above a geometric center of the striking face”. Thus, claim 35 does not further limit the subject matter of the claim(s) from which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21-41 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of USPN 11,964,192 in view of US PUBS 2005/0239576 to Stites et al (hereinafter referred to as “Stites”).
As to independent claims 21 and 37, although the claims at issue are not identical, they are not patentably distinct from each other because the differences are considered minor phrasing differences or minor rearrangements in the presentation of the claim limitations and/or present structure that is obvious and well known in the art.
Here, the claims of the ‘192 patent are, on one hand, more specific than the instant claims. For example, the claims of the ‘192 patent further require “a sole insert joined to the frame to cover the sole opening, the sole insert comprising a non-metal material”.
On the other hand, the claims of the ‘192 patent lack the now-claimed “a Zup distance, along a vertical axis, between a ground plane and a center-of-gravity of the golf club head when the golf club head is in an address position on the ground plane is between 23.91 mm and 33.27 mm, inclusive”…”an overall forward-to-rearward depth of the golf club head is at least 95 mm; a peak crown height of the golf club head is less than 70 mm; a volume of the golf club head is between 420 cm3 and 500 cm3”. Stites teaches providing a club head with a CGz distance of 1 to 1.6 inches (25.4 mm to 40.64 mm) and an overall club head depth or breadth of at least 4.2 inches (106.68 mm). See Fig. 1A and TABLE 1 in Stites. In addition, Stites also teaches a peak crown height or head height of 2.34 inches (59.43 mm) and a volume greater than 458. 2 cm3. See Fig. 1A and TABLE 3 in Stites. With the arrangements in Stites, the club head geometry is enlarged to help move the center of gravity of the club head rearwardly to promote better playability by helping launch a struck golf ball, enabling a player to more easily square the club head face at address, and making the club head more resistant to twisting during off-center shots (i.e., see paragraphs [0016] and [0033] in Stites). In view of the teachings in Stites, 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 claimed invention of the ‘192 patent by incorporating a Zup distance, along a vertical axis, between a ground plane and a center-of-gravity of the golf club head when the golf club head is in an address position on the ground plane is between 23.91 mm and 33.27 mm, inclusive along with an overall forward-to-rearward depth of the golf club head is at least 95 mm, and in addition providing a peak crown height of the golf club head is less than 70 mm and a volume of the golf club head is between 420 cm3 and 500 cm3, with there being a reasonable expectation of success that enlarging the club head depth to more than 95 mm and placing the Zup at a specified location within 23.91 mm and 33.27 mm above the ground plane along with having a peak crown height dimensioned to be less than 70 mm and having a volume of the club head sized to between 420 cm3 and 500 cm3 would have provided for a more torsionally stable club head to help produce straighter and more consistent golf ball flights.
As to the remaining limitations in the claims, note the following comments:
More specific to independent claim 21, note the general comments supra and see claims 1, 19 and 22 of the ‘192 patent. More specific to the claimed “ratio of Ixx to Izz”, see claim 14 of the ‘192 patent and further note that the teaching reference to Stites teaches an Ixx of at least 325 kg-mm2 (see TABLE 1 in Stites). One of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to have modified the claimed invention of the ‘192 patent to include a specific Ixx / Izz ratio value for improved club head stability, given that Stites teaches the claimed Ixx value along with the values for the Ixx and Izz that result in the claimed ratio. Any further distinctions over the recited Ixx / Izz ratio would have been attainable through 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). See MPEP 2144.05. Also, see claim 18, which claims dependency back to claim 1 of the ‘192 patent, which provides for the now-claimed feature “at least 20% of a surface area of a sole portion of the golf club head is formed of composite material”.
While the now-claimed limitation “composite material having a density between 1 g/cc and 2 g/cc” is not present as part of the invention of claim 1 or claim 22 of the ‘192 patent, reference is made to claim 19 of the ‘192 patent, which includes this feature. To have modified the invention of claim 1 and/or claim 22 of the ‘192 patent to include a similar requirement for the density of a composite material used for at least 20% of the sole portion in order to control the weight distribution of the club head would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention. Moreover, selection of suitable, known materials for various parts/portions of the club head body to control the weight or to take advantage of other known properties of the material(s) would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention. See MPEP 2144.07 stating, “[T]he selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious).”
As to claim 22, see claim 2 of the ‘192 patent.
As to claim 23, see claim 3 of the ‘192 patent.
As to claim 24, see claim 4 of the ‘192 patent.
As to claim 25, see claim 5 of the ‘192 patent.
As to claim 26, see claim 9 of the ‘192 patent.
As to claim 27, see claim 11 of the ‘192 patent.
As to claim 28, see claim 12 of the ‘192 patent.
As to claim 29, see claim 13 of the ‘192 patent.
As to claims 30 and 31, as noted under the rejection of claim 21 above, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to have modified the claimed invention of the ‘192 patent to include a specific Ixx / Izz ratio value for improved club head stability, given that Stites teaches values for the Ixx and Izz that result in the claimed ratio(s). Any further distinctions over the recited Ixx / Izz ratio would have been attainable through 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). See MPEP 2144.05.
As to claim 32, see claim 16 of the ‘192 patent.
As to claim 33, and with respect to the claimed “ratio of Ixx to Izz”, as noted under the rejection of claim 21 above, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to have modified the claimed invention of the ‘192 patent to include a specific Ixx / Izz ratio value for improved club head stability, given that Stites teaches values for the Ixx and Izz that result in the claimed ratio(s). Any further distinctions over the recited Ixx / Izz ratio would have been attainable through 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). See MPEP 2144.05. With respect to the “face opening and a face plate received in the face opening”, see claim 7 of the ‘192 patent.
As to claim 34, see claim 5 of the ‘192 patent.
As to claim 35, see claim 13 of the ‘192 patent.
As to claim 36, se at least claims 2, 18 and 20 of the ‘192 patent.
More specific to independent claim 37, note the general comments supra and see claims 1, 19 and 22 of the ‘192 patent. More specific to the claimed “ratio of Ixx to Izz”, see claim 14 of the ‘192 patent and further note that the teaching reference to Stites teaches an Ixx of at least 325 kg-mm2 (see TABLE 1 in Stites). One of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to have modified the claimed invention of the ‘192 patent to include a specific Ixx / Izz ratio value for improved club head stability, given that Stites teaches the claimed Ixx value along with the values for the Ixx and Izz that result in the claimed ratio. Any further distinctions over the recited Ixx / Izz ratio would have been attainable through 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). See MPEP 2144.05.
While the now-claimed limitation “non-metal material having a density between 1 g/cc and 2 g/cc” is not present as part of the invention of claim 1 or claim 22 of the ‘192 patent, reference is made to claim 19 of the ‘192 patent, which includes this feature to be used for portions of the club head. To have modified the invention of claim 1 and/or claim 22 of the ‘192 patent to include a similar requirement for the density of a non-metal material used for a crown insert in order to control the weight distribution of the club head would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention. Moreover, selection of suitable, known materials for various parts/portions of the club head body to control the weight or to take advantage of other known properties of the material(s) would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention. See MPEP 2144.07 stating, “[T]he selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious).”
As to claim 38, see claim 9 of the ‘192 patent.
As to claim 39, see claim 2 of the ‘192 patent.
As to claim 40, see claim 3 of the ‘192 patent.
As to claim 41, see claim 5 of the ‘192 patent.
Claims 42 and 43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of USPN 11,964,192 in view of US PUBS 2005/0239576 to Stites et al (hereinafter referred to as “Stites”) and also in view of US PUBS 2009/0088269 to Beach et al (hereinafter referred to as “Beach”).
As to independent claim 42, although the claims at issue are not identical, they are not patentably distinct from each other because the differences are considered minor phrasing differences or minor rearrangements in the presentation of the claim limitations and/or present structure that is obvious and well known in the art.
Here, the claims of the ‘192 patent are, on one hand, more specific than the instant claims. For example, the claims of the ‘192 patent further require “a sole insert joined to the frame to cover the sole opening, the sole insert comprising a non-metal material”.
On the other hand, the claims of the ‘192 patent lack the now-claimed “a Zup distance, along a vertical axis, between a ground plane and a center-of-gravity of the golf club head when the golf club head is in an address position on the ground plane is between 23.91 mm and 33.27 mm, inclusive”…”an overall forward-to-rearward depth of the golf club head is at least 95 mm; a peak crown height of the golf club head is less than 70 mm; a volume of the golf club head is between 420 cm3 and 500 cm3”. Stites teaches providing a club head with a CGz distance of 1 to 1.6 inches (25.4 mm to 40.64 mm) and an overall club head depth or breadth of at least 4.2 inches (106.68 mm). See Fig. 1A and TABLE 1 in Stites. In addition, Stites also teaches a peak crown height or head height of 2.34 inches (59.43 mm) and a volume greater than 458. 2 cm3. See Fig. 1A and TABLE 3 in Stites. With the arrangements in Stites, the club head geometry is enlarged to help move the center of gravity of the club head rearwardly to promote better playability by helping launch a struck golf ball, enabling a player to more easily square the club head face at address, and making the club head more resistant to twisting during off-center shots (i.e., see paragraphs [0016] and [0033] in Stites). In view of the teachings in Stites, 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 claimed invention of the ‘192 patent by incorporating a Zup distance, along a vertical axis, between a ground plane and a center-of-gravity of the golf club head when the golf club head is in an address position on the ground plane is between 23.91 mm and 33.27 mm, inclusive along with an overall forward-to-rearward depth of the golf club head is at least 95 mm, and in addition providing a peak crown height of the golf club head is less than 70 mm and a volume of the golf club head is between 420 cm3 and 500 cm3, with there being a reasonable expectation of success that enlarging the club head depth to more than 95 mm and placing the Zup at a specified location within 23.91 mm and 33.27 mm above the ground plane along with having a peak crown height dimensioned to be less than 70 mm and having a volume of the club head sized to between 420 cm3 and 500 cm3 would have provided for a more torsionally stable club head to help produce straighter and more consistent golf ball flights.
More specific to the claimed “ratio of Ixx to Izz”, see claim 14 of the ‘192 patent and further note that the teaching reference to Stites teaches an Ixx of at least 340 kg-mm2 (see TABLE 1 in Stites; here, Stites clearly contemplates an Ixx greater than 340 kg-mm2). Further still, note that Beach provides a teaching of Ixx of at least 350 kg-mm2 (see FIG. 31 in Beach). One of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to have modified the claimed invention of the ‘192 patent to include a specific Ixx / Izz ratio value for improved club head stability, given that Stites teaches values for the Ixx and Izz that result in the claimed ratio and given that Beach acknowledges that an Ixx value may exceed at least 350 kg-mm2. Any further distinctions over the recited Ixx / Izz ratio or the recited value for Ixx would have been attainable through 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). See MPEP 2144.05.
The claims of the ‘192 patent are also silent insofar as the claimed “the Zup distance minus half of the peak crown height is between -4.63 mm and -9.09 mm, inclusive”. Here, the teaching reference to Beach shows a CGz coordinate being -4.67 mm, which is 4.67 mm below the origin (i.e., see FIG. 30, and considering that the head height is 62.2 mm, with the origin located at ½ the head height or 31.1 mm; the CGz coordinate of -4.67 mm translates to a Zup distance of 26.43 mm (31.1 - 4.67 = 26.43) upward from the ground plane). Beach attempts to optimize the moment of inertia about the Ixx and Izz and to locate the center of gravity to reduce club head twist and improve the playability of the club head (i.e., paragraphs [0061] – [0063], [0070] and [0076] in Beach). In view of the further teachings in Beach, 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 claimed invention of the ‘192 patent by providing that the Zup distance minus half of the peak crown height is between -4.63 mm and -9.09 mm, inclusive, the motivation being to provide greater club head stability during off-center shots.
While the now-claimed limitation “non-metal material having a density between 1 g/cc and 2 g/cc” is not present as part of the invention of claim 1 or claim 22 of the ‘192 patent, reference is made to claim 19 of the ‘192 patent, which includes this feature to be used for portions of the club head. To have modified the invention of claim 1 and/or claim 22 of the ‘192 patent to include a similar requirement for the density of a non-metal material used for a crown insert in order to control the weight distribution of the club head would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention. Moreover, selection of suitable, known materials for various parts/portions of the club head body to control the weight or to take advantage of other known properties of the material(s) would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention. See MPEP 2144.07 stating, “[T]he selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious).”
As to claims 42-43, the claims of the ‘192 patent are also silent with respect to the limitations “in a y-z plane passing through a geometric center of the striking face a trailing edge of the golf club head is lower than the geometric center of the striking face” (claim 42) and “wherein a HCHR distance, along a second vertical axis, between the ground plane and a rearwardmost point of a crown portion of the golf club head when the golf club head is in an address position on the ground plane is less than the Zup distance” (claim 43). Each of the teaching references to Stites and Beach shows these additional features, as shown in the annotated figures hereinbelow. To have modified the claimed invention of the ‘192 patent to have included these additional features to provide desirable club head weight distribution for enhanced club head performance would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention.
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Claims 21-28 and 37-41 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of USPN 11,331,547 in view of US PUBS 2005/0239576 to Stites et al (hereinafter referred to as “Stites”).
As to independent claims 21 and 37, although the claims at issue are not identical, they are not patentably distinct from each other because the differences are considered minor phrasing differences or minor rearrangements in the presentation of the claim limitations and/or present structure that is obvious and well known in the art.
Here, the claims of the ‘547 patent are, on one hand, more specific than the instant claims. For example, the claims of the ‘547 patent further require “a sole insert joined to the frame to cover the sole opening, the sole insert comprising a non-metal material”.
On the other hand, the claims of the ‘547 patent lack the now-claimed “a Zup distance, along a vertical axis, between a ground plane and a center-of-gravity of the golf club head when the golf club head is in an address position on the ground plane is between 23.91 mm and 33.27 mm, inclusive”…”an overall forward-to-rearward depth of the golf club head is at least 95 mm; a peak crown height of the golf club head is less than 70 mm; a volume of the golf club head is between 420 cm3 and 500 cm3”. Stites teaches providing a club head with a CGz distance of 1 to 1.6 inches (25.4 mm to 40.64 mm) and an overall club head depth or breadth of at least 4.2 inches (106.68 mm). See Fig. 1A and TABLE 1 in Stites. In addition, Stites also teaches a peak crown height or head height of 2.34 inches (59.43 mm) and a volume greater than 458. 2 cm3. See Fig. 1A and TABLE 3 in Stites. With the arrangements in Stites, the club head geometry is enlarged to help move the center of gravity of the club head rearwardly to promote better playability by helping launch a struck golf ball, enabling a player to more easily square the club head face at address, and making the club head more resistant to twisting during off-center shots (i.e., see paragraphs [0016] and [0033] in Stites). In view of the teachings in Stites, 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 claimed invention of the ‘547 patent by incorporating a Zup distance, along a vertical axis, between a ground plane and a center-of-gravity of the golf club head when the golf club head is in an address position on the ground plane is between 23.91 mm and 33.27 mm, inclusive along with an overall forward-to-rearward depth of the golf club head is at least 95 mm, and in addition providing a peak crown height of the golf club head is less than 70 mm and a volume of the golf club head is between 420 cm3 and 500 cm3, with there being a reasonable expectation of success that enlarging the club head depth to more than 95 mm and placing the Zup at a specified location within 23.91 mm and 33.27 mm above the ground plane along with having a peak crown height dimensioned to be less than 70 mm and having a volume of the club head sized to between 420 cm3 and 500 cm3 would have provided for a more torsionally stable club head to help produce straighter and more consistent golf ball flights.
As to the remaining limitations in the claims, note the following comments:
More specific to independent claim 21, note the general comments supra and see claims 1 and 20 of the ‘547 patent. More specific to the claimed “ratio of Ixx to Izz”, note that the teaching reference to Stites teaches an Ixx of at least 325 kg-mm2 (see TABLE 1 in Stites). One of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to have modified the claimed invention of the ‘547 patent to include a specific Ixx / Izz ratio value for improved club head stability, given that Stites teaches values for the Ixx and Izz that result in the claimed ratio. Any further distinctions over the recited Ixx / Izz ratio would have been attainable through 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). See MPEP 2144.05. As to the now-claimed limitation “composite material having a density between 1 g/cc and 2 g/cc”, see at least claim 17, which is dependent from claim 1 of the ‘547 patent, as well as claim 20 of the ‘547 patent.
As to claim 22, see claim 2 of the ‘547 patent.
As to claim 23, see claim 6 of the ‘547 patent.
As to claim 24, see claim 8 of the ‘547 patent.
As to claim 25, see claim 9 of the ‘547 patent.
As to claim 26, see claim 11 of the ‘547 patent.
As to claim 27, see claim 14 of the ‘547 patent.
As to claim 28, see claim 15 of the ‘547 patent.
More specific to independent claim 37, note the general comments supra and see claims 1 and 20 of the ‘547 patent. More specific to the claimed “ratio of Ixx to Izz”, note that the teaching reference to Stites teaches an Ixx of at least 325 kg-mm2 (see TABLE 1 in Stites). One of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to have modified the claimed invention of the ‘547 patent to include a specific Ixx / Izz ratio value for improved club head stability, given that Stites teaches values for the Ixx and Izz that result in the claimed ratio. Any further distinctions over the recited Ixx / Izz ratio would have been attainable through 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). See MPEP 2144.05.
With respect to the now-claimed limitation “non-metal material having a density between 1 g/cc and 2 g/cc”, reference is made to claim 17, which depends from claim 1 of the ‘547 patent, and claim 20 of the ‘547 patent, which includes this feature to be used for portions of the club head. To have modified the invention of claim 1 and/or claim 20 of the ‘547 patent to include a similar requirement for the density of a non-metal material used for a crown insert in order to control the weight distribution of the club head would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention. Moreover, selection of suitable, known materials for various parts/portions of the club head body to control the weight or to take advantage of other known properties of the material(s) would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention. See MPEP 2144.07 stating, “[T]he selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious).”
As to claim 38, see claim 11 of the ‘547 patent.
As to claim 39, see at least claims 2 and 21 of the ‘547 patent.
As to claim 40, see claim 6 of the ‘547 patent.
As to claim 41, see claim 9 of the ‘547 patent.
Claims 29-36 and 42-43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of USPN 11,331,547 in view of US PUBS 2005/0239576 to Stites et al (hereinafter referred to as “Stites”) and also in view of US PUBS 2009/0088269 to Beach et al (hereinafter referred to as “Beach”).
As to claims 29 and 35, the claims of the ‘547 patent lack the feature “wherein a center of gravity (CG) projection onto the striking face is at most 3 mm above a geometric center of the striking face”. Beach teaches that the CG z-axis coordinate may be between -7 mm and 1 mm (i.e., see paragraph [0055] and FIG. 30). The placement of the CG combined with optimizing the values of the Ixx and Izz in Beach provides greater club head forgiveness during off-center shots (i.e., see paragraph [0003], [0008] – [0009]). In view of the teachings in Beach, 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 claimed invention of the ‘547 patent by incorporating a center of gravity (CG) projection onto the striking face is at most 3 mm above a geometric center of the striking face, the motivation being to achieve increased resistance to twisting upon impact with a golf ball. Any further distinctions over the recited CG projection distance value would have been attainable through 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). See MPEP 2144.05.
As to claims 30 and 31, as noted under the rejection of claim 21 above, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to have modified the claimed invention of the ‘547 patent to include a specific Ixx / Izz ratio value for improved club head stability, given that Stites teaches values for the Ixx and Izz that result in the claimed ratio(s). Any further distinctions over the recited Ixx / Izz ratio would have been attainable through 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). See MPEP 2144.05.
As to claim 32, see claim 9 of the ‘547 patent.
As to claim 33, and with respect to the claimed “ratio of Ixx to Izz”, as noted under the rejection of claim 21 above, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to have modified the claimed invention of the ‘547 patent to include a specific Ixx / Izz ratio value for improved club head stability, given that Stites teaches values for the Ixx and Izz that result in the claimed ratio(s). Any further distinctions over the recited Ixx / Izz ratio would have been attainable through 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). See MPEP 2144.05. With respect to the “face opening and a face plate received in the face opening”, see claim 8 of the ‘547 patent.
As to claim 34, see claim 9 of the ‘547 patent.
As to claim 36, see at least claims 2 and 21 of the ‘547 patent.
As to independent claim 42, although the claims at issue are not identical, they are not patentably distinct from each other because the differences are considered minor phrasing differences or minor rearrangements in the presentation of the claim limitations and/or present structure that is obvious and well known in the art.
Here, the claims of the ‘547 patent are, on one hand, more specific than the instant claims. For example, the claims of the ‘547 patent further require “a sole insert joined to the frame to cover the sole opening, the sole insert comprising a non-metal material”.
On the other hand, the claims of the ‘547 patent lack the now-claimed “a Zup distance, along a vertical axis, between a ground plane and a center-of-gravity of the golf club head when the golf club head is in an address position on the ground plane is between 23.91 mm and 33.27 mm, inclusive”…”an overall forward-to-rearward depth of the golf club head is at least 95 mm; a peak crown height of the golf club head is less than 70 mm; a volume of the golf club head is between 420 cm3 and 500 cm3”. Stites teaches providing a club head with a CGz distance of 1 to 1.6 inches (25.4 mm to 40.64 mm) and an overall club head depth or breadth of at least 4.2 inches (106.68 mm). See Fig. 1A and TABLE 1 in Stites. In addition, Stites also teaches a peak crown height or head height of 2.34 inches (59.43 mm) and a volume greater than 458. 2 cm3. See Fig. 1A and TABLE 3 in Stites. With the arrangements in Stites, the club head geometry is enlarged to help move the center of gravity of the club head rearwardly to promote better playability by helping launch a struck golf ball and enabling a player to more easily square the club head face at address and to make the club head more resistant to twisting during off-center shots (i.e., see paragraphs [0016] and [0033] in Stites). In view of the teachings in Stites, 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 claimed invention of the ‘547 patent by incorporating a Zup distance, along a vertical axis, between a ground plane and a center-of-gravity of the golf club head when the golf club head is in an address position on the ground plane is between 23.91 mm and 33.27 mm, inclusive along with an overall forward-to-rearward depth of the golf club head is at least 95 mm, and in addition providing a peak crown height of the golf club head is less than 70 mm and a volume of the golf club head is between 420 cm3 and 500 cm3, with there being a reasonable expectation of success that enlarging the club head depth to more than 95 mm and placing the Zup at a specified location within 23.91 mm and 33.27 mm above the ground plane along with having a peak crown height dimensioned to be less than 70 mm and having a volume of the club head sized to between 420 cm3 and 500 cm3 would have provided for a more torsionally stable club head to help produce straighter and more consistent golf ball flights.
More specific to the claimed “ratio of Ixx to Izz”, note that the teaching reference to Stites teaches an Ixx of at least 340 kg-mm2 (see TABLE 1 in Stites; here, Stites clearly contemplates an Ixx greater than 340 kg-mm2). Further still, note that Beach provides a teaching of Ixx of at least 350 kg-mm2 (see FIG. 31 in Beach). One of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to have modified the claimed invention of the ‘547 patent to include a specific Ixx / Izz ratio value for improved club head stability, given that Stites teaches values for the Ixx and Izz that result in the claimed ratio and given that Beach acknowledges that an Ixx value may exceed at least 350 kg-mm2. Any further distinctions over the recited Ixx / Izz ratio or the recited value for Ixx would have been attainable through 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). See MPEP 2144.05.
The claims of the ‘547 patent are also silent insofar as the claimed “the Zup distance minus half of the peak crown height is between -4.63 mm and -9.09 mm, inclusive”. Here, the teaching reference to Beach shows a CGz coordinate being -4.67 mm, which is 4.67 mm below the origin (i.e., see FIG. 30, and considering that head height is 62.2 mm, with the origin located at ½ the head height or 31.1 mm; the CGz coordinate of -4.67 mm translates to a Zup distance of 26.43 mm (31.1 - 4.67 = 26.43) upward from the ground plane). Beach attempts to optimize the moment of inertia about the Ixx and Izz and to locate the center of gravity to reduce club head twist and improve the playability of the club head (i.e., paragraphs [0061] – [0063], [0070] and [0076] in Beach). In view of the further teachings in Beach, 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 claimed invention of the ‘547 patent by providing that the Zup distance minus half of the peak crown height is between -4.63 mm and -9.09 mm, inclusive, the motivation being to provide greater club head stability during off-center shots.
With respect to the now-claimed limitation “non-metal material having a density between 1 g/cc and 2 g/cc”, reference is made to claim 17, which depends from claim 1 of the ‘547 patent, and claim 20 of the ‘547 patent, which includes this feature to be used for portions of the club head. To have modified the invention of claim 1 and/or claim 20 of the ‘547 patent to include a similar requirement for the density of a non-metal material used for a crown insert in order to control the weight distribution of the club head would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention. Moreover, selection of suitable, known materials for various parts/portions of the club head body to control the weight or to take advantage of other known properties of the material(s) would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention. See MPEP 2144.07 stating, “[T]he selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious).”
As to claims 42 and 43, the claims of the ‘547 patent are also silent with respect to the limitations “in a y-z plane passing through a geometric center of the striking face a trailing edge of the golf club head is lower than the geometric center of the striking face” (claim 42) and “wherein a HCHR distance, along a second vertical axis, between the ground plane and a rearwardmost point of a crown portion of the golf club head when the golf club head is in an address position on the ground plane is less than the Zup distance” (claim 43). Each of the teaching references to Stites and Beach shows these additional features, as shown in the annotated figures hereinbelow. To have modified the claimed invention of the ‘547 patent to have included these additional features to provide desirable club head weight distribution for enhanced club head performance would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention.
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Observations on Obviousness-Type Double Patenting
Applicant is respectfully urged to maintain a clear line of demarcation between the instant claim set and the claims in the related applications and patents listed hereinbelow. While no double patenting rejections based on the copending applications and patents listed below are currently being made of record, maintaining a clear distinction between the instant claims and the claims of each of the related applications and patents listed below will help to reduce the likelihood of obviousness-type double patenting concerns arising during later prosecution in the instant case. It is clear that the applicant, who in this case is most familiar with the language, content and prosecution history of the related applications and patents identified below, is best equipped to recognize any potential double patenting concerns and should therefore make an effort to amend the instant claims or file appropriate terminal disclaimers. The applicant is respectfully requested to provide further comment as to whether the applicant believes that the claims of the patents and applications listed hereinbelow conflict, or do not conflict, with the claims of the instant application.
United States Application Serial Nos: 18/355384; 19/020591; 18/436878; 19/011068; 19/240327; 19/456587 and 19/015430
USPNs: 8900069; 8430763; 970745; 9220953; 8888607; 8753222; 8956240; 9700769; 9186560; 9211447; 97007637; 9914027; 9868036; 10086240; 10035049; 10183202; 10076688; 10556158; 10646755; 10874914; 10639524; 10688352; 11167183; 10603555; 10905929; 10974102; 10478679; 10434384; 10252119; 10569144; 10843048; 11148021; 10898764; 11331548; 11331547; 11931631; 11850484; 11712606; 11298599; 11202943; 11628340; 11654336; 11731010; 12364906; 12558598; 12239890; 12357887; 12440732 and 12434108
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Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
See FIGS. 3B, 5 and 8 in Rae;
See FIGS. 58-59 in Luttrell;
See FIGS. 7, 10 and 13 in Guerrette; and
See FIGS. 7 and 23 in Honea.
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711