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 .
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-3, 5-7, 10-13, and 15-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nagai et al. (USPN 7611424) in view of Galloway et al. (US 2005/0288124).
Regarding claim 1, Nagai et al. discloses a club head 10 having a club head body, and adjustable weighting system. The club head body includes a toe end, heel end, crown 14, sole 12, strike face, and perimeter 18 at the junction between the crown and sole extending between the toe and heel ends. The club head body also includes a recessed portion 20 in the perimeter having a first surface, a second surface opposite the first surface, and a third surface extending perpendicular to and between the first and second surfaces. The adjustable weighting system is positioned within the
recessed portion. The adjustable weighting system is configured to receive a weight 26
and includes a plurality of discrete attachment locations 22 that includes an attachment
means 30. The weight is selectively removeably attachable to each of the plurality of discrete attachment locations. Nagai et al. does not disclose distance of the weight
from the center of gravity or the combined inertia of the crown to sole inertia and the
heel to toe inertia. Galloway et al. discloses a club head having weights 47 within the
perimeter portion. The center of gravity is located less than 1.7 inches from the exterior
surface of the front wall (Strike face) (See Paragraph 0130). The club head is also
disclosed as having a length of 3 to 4.5 inches, which implies that the center of gravity is
1.3 to 2.8 inches from the rear. Applicant does not disclose why a minimum distance of
1 inch for the discrete attachment locations is critical in attaining the invention. Nagai et al. discloses a plurality of discrete attachment locations in which the locations allow for the weight of the club head to be shifted toward, heelward, or centered rearward. The discrete attachment locations of the instant application would appear to be achieving the same result regardless of distance. Being there is no unexpected result or advantage from the distance of the discrete attachment locations, one having ordinary skill in the art would have found the distance between the discrete attachment points to be obvious routine optimization. Applicant further does not disclose why a recess portion depth of at most 1.0 inch is critical in order to attain the invention. As noted above, Galloway et al. discloses the distance of the CG from the rear being 1.3 to 2.8 inches. Applicant notes that the CG distance can be 0.8 to 1.3 inches (See Paragraph 00132). In light of the above, one having ordinary skill in the art would have found it obvious to have the weight and distance from the center of gravity to be of any value within the above range,
as taught by Galloway et al., in order to optimize the inertial properties of the club head.
Galloway et al. also discloses the inertia about the Izz axis (crown to sole) being greater
than 3500 g-cm² and the inertia about the lyy axis (heel-to-toe) being up to 4000 g-cm²
(See Paragraph 0117). The total of the inertias would be greater than 7500 g-cm².
Applicant does not disclose why having an inertia sum greater than 8000 g-cm² is
critical in attaining the invention. It is noted by the applicant that an inertia sum of
greater than 7500 g-cm² is sufficient to attain the invention (See Paragraph 0124).
Galloway et al. does note that the inertia of the Izz axis can be greater than 3500 g-cm²,
implying that the inertia sum can be greater than 7500 g-cm². In light of the above, one
having ordinary skill in the art would have found the inertia sum to be routine optimization (See In re Aller).
Regarding claim 2, Nagai et al. discloses the plurality of discrete attachment locations having at least 3 discrete attachment locations.
Regarding claim 3, Nagai et al. discloses the recessed portion extending in an arcuate manner from near the toe end to near the heel end following the contour of a trailing edge of the club head.
Regarding claim 5, see the above regarding claim 1.
Regarding claim 6, Applicant does not disclose why the recessed portion having a varying width is critical in order to attain the invention. Nagai et al. shows the recessed portion having a constant width. The recessed portion merely houses the weight that can be repositioned along the perimeter of the club head. It should also be noted that applicant discloses that the recessed portion can be either variable or constant in width (See Paragraph 00860). Being that there is no demonstration of an unexpected result or advantage from the recessed portion, one having ordinary skill in the art would have found the width of the recessed portion to be an obvious design choice.
Regarding claim 7, Nagai et al. discloses the first surface being parallel to the second surface.
Regarding claim 10, Applicant does not disclose why the width of the recessed portion is critical in attaining the invention. Nagai et al. discloses a recessed portion having a width wherein the width is sized to accommodate the weight. One can only assume that the same is also achieved by that of the applicant. Being that no new and unexpected result is attained, one having ordinary skill in the art would have found the width of the recessed portion to be an obvious choice of design.
Regarding claim 11, see the above regarding claims 1 and 3. In addition, Figures 1 and 2 show the recessed portion substantially parallel to the sole and a wall extending between the sole and recessed surface.
Regarding claim 12, see the above regarding claim 2.
Regarding claim 13, see the above regarding claim 3.
Regarding claim 15, see the above regarding claim 1.
Regarding claim 16, see the above regarding claim 6.
Regarding claim 17, see the above regarding claim 10.
Regarding claim 18, see the above regarding claim 10.
Regarding claim 19, Nagai et al. discloses the weight being rectangular shape (See Figure 3).
Regarding claim 20, Nagai et al. notes that additional weights can be attached to the discrete attachment locations (See Column 3, lines 13 through 25). Nagai et al. also notes that the weight can be of the same mass, same shape, and interchangeable (See Column 3, lines 26 through 40).
Allowable Subject Matter
Claims 8 and 9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments with respect to claim(s) s 1-3, 5-13, and 15-20 have been considered but are moot. After further consideration of the previously applied prior art, it has been determined that the previously indicated allowable subject matter has been withdrawn. In light of the further consideration, the above rejection has been furnished.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALVIN A HUNTER whose telephone number is (571)272-4411. The examiner can normally be reached on Monday through Friday from 7:30AM to 4:00PM Eastern Time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim, can be reached at telephone number 571-272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center to authorized users only. Should you have questions about access to the USPTO patent electronic filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/ALVIN A HUNTER/Primary Examiner, Art Unit 3711
Prosecution Insights