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 .
Continuation
This application is claiming the benefit of prior-filed application No. 17/103,760 under 35 U.S.C. 120, 121, 365(c), or 386(c). Copendency between the current application and the prior application is required. Applicant’s argument regarding the precedential authority of the holding in Immersion Corp. v. HTC Corp., 826 F.3d 1357 is found to be persuasive and copendency with prior application 17/103,760 is established.
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) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al., U. S. Patent Application No. 2018/0133568, in view of Roach et al., U.S. Patent No. 11, 857,848. As to Claim 11, Chen teaches a golf club head (100) comprising a top rail (top of body 101), a sole (112), a toe, (108), a heel (106), a faceplate (102), a rear portion (114), and a hosel, paragraphs 0039, 0041 and see Figures 1 and 2. A rear cavity (116) may be formed between the faceplate and the rear portion wherein the rear cavity is exposed to an exterior of the club head, paragraph 0041 and see Figure 2. The rear portion may define a rear portion void (118) extending through the rear portion in a heel-to-toe direction, paragraphs 0043, 0065 and see Figure 4 illustrating a length of the void. The rear portion may separate the rear portion void from the rear cavity, paragraph 0066 and see Figure 2, noting wall (121). Chen teaches that the rear portion may comprise a rear aperture (opening) providing a pathway from the rear portion void to an exterior of the club head, paragraph 0044. Chen does not provide any other aperture, suggesting that the rear portion void may be entirely enclosed but for the rear aperture. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the rear portion void to be entirely enclosed but for the rear aperture, as suggested. Chen does not specify that the rear aperture may have a diameter between 0.005 and 0.2 inch. It would have been an obvious matter of design choice to provide a rear portion aperture diameter within the claimed range, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art, In re Rose, 105 USPQ 237 (CCPA 1955. Chen does not disclose that the rear portion void may be filled with a cell lattice. Roach teaches a golf club head (40) having a rear portion (56) with a void (130) filled with a cell lattice structure (136) comprising a plurality of cross ribs (segments) extending across the rear portion Col. 7, ln. 57-61, Col. 9, ln. 33-35, Col. 11, ln. 17-19, and see Figure 2. Cross ribs may extend in a high heel to low toe direction, see Figure 2. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Chen with a cell lattice structure filling the rear portion void and comprising a plurality of cross ribs extending across the rear portion, in a high heel to low toe direction, as taught by Roach, to provide Chen with a structural component in the rear portion void to yield the predictable result of adding structural integrity to the hollow void. Roach teaches that dimensions of ribs, including thickness, may be varied to provide improved performance, Col. 39, ln. 6-13, suggesting that rib thickness is a result effective variable. It is inherent that the ribs disclosed by Roach have a thickness but Roach does not disclose rib thickness between 0.01 and 0.10 inch. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Chen, as modified, with rib thickness within the claimed range since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art, In re Aller, 105 USPQ 233.
As to Claim 12, Roach teaches a club head formed by additive manufacturing (3D printing), Col. 26, ln. 26-29. Roach teaches that a fully enclosed void volume may have an aperture (vent hole) which may be filled in (plugged), Col. 27, ln. 6-14. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Chen, as modified, with the aperture being filled in, as taught by Roach, to provide Chen, as modified, with an aperture covered following removal of excess powder resulting from additive manufacturing, to yield the predictable result of a sealed rear portion void. As to Claim 13, Chen, as modified, does not specify that closure of the aperture may be accomplished by welding. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Chen, as modified with the rear aperture filled via welding, since it was known in the art that a component may be joined to a club head by welding. As to Claim 14, Chen, as modified, discloses the claimed invention except for providing that the rear aperture may have a circular shape. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the rear portion aperture with a circular shape 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 (CCPLA 1966). As to Claim 15, Chen teaches that the rear portion may comprise a toe section, a heel section, and a center section, see Figure 1, depicting a rear portion extending entirely across the back of the club head from heel to toe. Chen teaches that the rear portion void may be partially in the toe or partially in the heel, paragraph 0044, noting an opening of the void partially in the toe or heel, suggesting that the rear portion void may be partially in the section of the rear portion between the heel and toe (center section). It would have been obvious to one of ordinary skill in the art before the effective filing date to arrange the rear portion void in the center of the rear portion as suggested.
Allowable Subject Matter
Claims 1-3, 5-10, and 16-20 are allowed.
Response to Arguments
Applicant's arguments filed 22 December 2025 have been fully considered but they are not persuasive, as to the rejection of Claims 11-15, under 35 USC §103.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the examiner maintains the position that the inclusion of a lattice structure in a rear void, as taught by Roach, adds structural integrity to the hollow portion of the club head without adding unnecessary weight. A person of ordinary skill in the art would have considered the use of a lattice for the benefit provided while maintaining the objective a making weight available to place in the perimeter.
Applicant’s argument asserting that the prior art does not teach a plurality of cross ribs forming a plurality of sub-voids is not given weight with regard to Claim 11 because the formation of sub-voids is not positively claimed.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at (571) 270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711 9 January 2026