DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Terminal Disclaimer
The terminal disclaimer filed on 6/29/26 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent 9199141 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Objections
Claim 1 is objected to because of the following informalities: In line 15, the word ‘anr’ should read –an--. Appropriate correction is required.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 3, 5-9, 11, 14, and 15 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Takechi (USPN 8876630) in view of Kumamoto (JP 2010-131093 A).
Regarding claim 1, Takechi discloses a club head 1 having a ball striking plate 11, a rear cavity 14, a frame 10, and a covering element 20. The ball striking plate has a front surface and a rear surface opposite the front surface. The rear cavity is partially bounded by the rear surface of the ball striking plate. The frame extends rearwardly from a perimeter of the ball striking plate and forms a cup-like configuration. The covering element extends from the frame and extends over the rear surface of the ball striking plate. The covering element also includes a center portion, heel-side portion, and toe-side portion wherein the surface features form a highly contoured topographical exterior surface (See Figures 1 and 4). The covering element is further affixed to the rear surface of the ball striking plate. The covering element shows a minimum and maximum height but does not explicitly disclose a maximum to minimum height ratio. Kumamoto et al. discloses a club head having a covering element attached to the rear surface of a ball striking plate. Figure 2 shows the covering element having a minimum height and a maximum height. The abstract discloses the ratio being the minimum and maximum heights being 5 or less. In addition, Figure 2 shows the interior surface of the covering element being substantially planar. One having ordinary skill in the art would have found it obvious to have the covering with a variable thickness and planar interior surface, as taught by Kumamoto, in order to reduce vibration.
Regarding claim 3, Takechi discloses the toe side smaller than the heel side (See Figures 1 and 9).
Regarding claim 5, Takechi discloses the covering element within a cavity encompassed by the frame (See Figure 3).
Regarding claim 6, Takechi discloses majority of the covering element extending
over the majority of the rear surface of the ball striking plate (See Figure 3).
Regarding claim 7, Takechi discloses the surface features being vertical slopes (See Figures 3).
Regarding claim 8, Takechi discloses the covering element affixed to the rear surface by adhesive implied by Takechi noting that it is adhered to the rear surface (See Column 4, lines 43 through 48).
Regarding claim 9, Takechi discloses the adhesive being a liquid-type noting the use of glue (See Column 8, lines 24 through 33).
Regarding claim 11, Takechi discloses the covering element formed of a silicone material (See Column 5, lines 24 through 30 and 52 through 56).
Regarding claim 14, Takechi discloses the covering element visually forming majority of the rear cavity (See Figures 1, 3, and 9).
Regarding claim 15, claim is directed to a product by process. Based on the structure of the covering element being met by Takechi, the process is considered to be met.
Claim 2 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over the prior art applied to claim 1 above in view of Imamoto et al. (USPN 7232381).
Regarding claim 2, the prior art applied to claim 1 above does not disclose the frame having a U-shaped cross-section. Imamoto et al. discloses club head having a covering element therein wherein the frame is U-shaped (See Figure 6). Imamoto et al. notes that the surfaces are curved to eliminate any gaps (See Column 3, lines 6 though 14). One having ordinary skill in the art would have found it obvious to have the frame cross-section of a U-shape, as taught by Imamoto et al., in order to eliminate gaps.
Allowable Subject Matter
Claims 4, 10, 12, and 16 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 1-12 and 14-16 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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/ALVIN A HUNTER/Primary Examiner, Art Unit 3711
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