DETAILED ACTION
This Office action is responsive to the following communication received:
03/21/2024 – application papers received, IDS (2 documents) and power of attorney;
06/19/2024 – Preliminary Amendment, including amendments to claims; and
02/07/2025 – 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 17/717,903 04/11/2022 PAT 11975249 which is a CON of 16/673,701 11/04/2019 PAT 11338183 which is a CON of 15/859,274 12/29/2017 PAT 10493336 which is a CIP of 15/649,508 07/13/2017 PAT 10493335 which is a CON of 14/981,330 12/28/2015 PAT 9731176 which is a CIP of 14/843,856 09/02/2015 PAT 9849348 which claims benefit of 62/099,012 12/31/2014 and claims benefit of 62/098,707 12/31/2014.
Status of Claims
Claims 1-46 have been canceled.
Claims 47-72 remain pending.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following features indicated hereinbelow must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
“wherein an uppermost portion of the non-metal insert does not contact an uppermost surface of the cavity proximate the topline portion” (claim 48);
“wherein an uppermost surface of the rear surface of the strike plate is above the uppermost portion of the non-metal insert” (claim 49);
“wherein a lowermost portion of the non-metal insert does not contact a lowermost surface of the cavity proximate the sole portion” (claim 59);
“wherein an uppermost portion of the non-metal insert does not contact an uppermost surface of the cavity proximate the topline portion” (claim 70); and
“wherein an uppermost surface of the rear surface of the strike plate is above the uppermost portion of the non-metal insert” (claim 72).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Priority
This application repeats a substantial portion of prior Application No. 17/717,903, filed 11,975,249, and adds disclosure not presented in the prior application.
Specifically, the claims, through the preliminary amendment of 02/07/2025, add the following limitations after the original filing date of this application.
Claim 48: “wherein an uppermost portion of the non-metal insert does not contact an uppermost surface of the cavity proximate the topline portion”
Claim 49: “wherein an uppermost surface of the rear surface of the strike plate is above the uppermost portion of the non-metal insert”;
Claim 56: “wherein an areal mass of the rear panel is between 0.0005 g/mm2 and 0.00925 g/mm2 (emphasis added). Note that the specification only discusses an areal mass for the rear portion of the club head (i.e., scanned page 9, paragraph [0033] of the specification);
Claim 57: “wherein an areal mass of the rear panel is no more than 0.0037 g/mm2. (emphasis added). Note that the specification only discusses an areal mass for the rear portion of the club head (i.e., scanned page 9, paragraph [0033] of the specification);
Claim 59: “wherein a lowermost portion of the non-metal insert does not contact a lowermost surface of the cavity proximate the sole portion”;
Claim 70: “wherein an uppermost portion of the non-metal insert does not contact an uppermost surface of the cavity proximate the topline portion”;
Claim 72: “wherein an uppermost surface of the rear surface of the strike plate is above the uppermost portion of the non-metal insert”.
Because this application names the inventor or at least one joint inventor named in the prior application, it may constitute a continuation-in-part of the prior application. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq. The presentation of a benefit claim may result in an additional fee under 37 CFR 1.17(w)(1) or (2) being required, if the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and 1.78(d) in the application is more than six years before the actual filing date of the application.
As to claims 48-57, 59 and 70-72, these claims, either directly or by way of dependency, include subject matter which is not supported by the specification and the claims of the parent application and thus have an effective filing date equal to the actual filing date of this instant application, namely 03/21/2024. See MPEP 2152.01.
As to claims 47, 58 and 60-69, these claims, either directly or by way of dependency, include subject matter which is supported by the specification and the claims of the parent application and thus have an effective filing date equal to the filing date of the earlier parent application serial no. 15/859,274, filed 12/29/2017, from which the instant application claims priority. See MPEP 2152.01.
Specification - Objection
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the deficiencies listed hereinbelow is required. No new matter should be added.
The following terms/phrases lack proper antecedent basis in the specification:
Claim 47: “non-circular heel-side opening” (emphasis added); “non-circular toe-side opening” (emphasis added);
Claim 48: “wherein an uppermost portion of the non-metal insert does not contact an uppermost surface of the cavity proximate the topline portion”
Claim 49: “wherein an uppermost surface of the rear surface of the strike plate is above the uppermost portion of the non-metal insert”;
Claim 56: “wherein an areal mass of the rear panel is between 0.0005 g/mm2 and 0.00925 g/mm2 (emphasis added). Note that the specification only discusses an areal mass for the rear portion of the club head (i.e., scanned page 9, paragraph [0033] of the specification);
Claim 57: “wherein an areal mass of the rear panel is no more than 0.0037 g/mm2. (emphasis added). Note that the specification only discusses an areal mass for the rear portion of the club head (i.e., scanned page 9, paragraph [0033] of the specification);
Claim 59: “wherein a lowermost portion of the non-metal insert does not contact a lowermost surface of the cavity proximate the sole portion”;
Claim 70: “non-circular heel-side opening” (emphasis added); “non-circular toe-side opening” (emphasis added);
Claim 70: “wherein an uppermost portion of the non-metal insert does not contact an uppermost surface of the cavity proximate the topline portion”;
Claim 72: “wherein an uppermost surface of the rear surface of the strike plate is above the uppermost portion of the non-metal insert”.
FOLLOWING IS AN ACTION ON THE MERITS:
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 48-57, 59 and 70-72 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
It is initially noted that claims 48-57, 59 and 70-72 were first presented with the preliminary amendment, received 02/07/2025. Thus, claims 48-57, 59 and 70-72 are not originally-filed claims in this instant application.
Here, the following subject matter was not described in the specification at the time the application was filed. The specification does not reasonably convey to one skilled in the relevant art that the joint inventors had possession of the claimed invention at the time the application was filed.
Claim 48: “wherein an uppermost portion of the non-metal insert does not contact an uppermost surface of the cavity proximate the topline portion”;
Claim 49: “wherein an uppermost surface of the rear surface of the strike plate is above the uppermost portion of the non-metal insert”;
Claims 50-55 share the indefiniteness of claim 49, which depends from claim 48, under 35 U.S.C. §112(a);
Claim 56: “wherein an areal mass of the rear panel is between 0.0005 g/mm2 and 0.00925 g/mm2 (emphasis added). Note that the specification only discusses an areal mass for the rear portion of the club head (i.e., scanned page 9, paragraph [0033] of the specification);
Claim 57: “wherein an areal mass of the rear panel is no more than 0.0037 g/mm2. (emphasis added). Note that the specification only discusses an areal mass for the rear portion of the club head (i.e., scanned page 9, paragraph [0033] of the specification);
Claim 59: “wherein a lowermost portion of the non-metal insert does not contact a lowermost surface of the cavity proximate the sole portion”;
Claim 70: “wherein an uppermost portion of the non-metal insert does not contact an uppermost surface of the cavity proximate the topline portion”;
Claim 71 shares the indefiniteness of claim 70 under 35 U.S.C. §112(a); and
Claim 72: “wherein an uppermost surface of the rear surface of the strike plate is above the uppermost portion of the non-metal insert”.
Even, in arguendo, if the applicant is able to establish that the joint inventors had possession of the claimed invention at the time the application was filed, it is noted that the objections to the specification, as noted hereinabove, must still be addressed.
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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 48-57, 59 and 70-72 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 48, when interpreting this language in light of the specification, the skilled artisan would be at a loss to understand what exactly each of the uppermost portion of the non-metal insert and the uppermost surface of the cavity is, given that the disclosure only shows the insert (i.e., labeled as element 294) being in contact with the topline and makes no further mention whatsoever as to where the uppermost portion of the non-metal insert is located or what constitutes the uppermost surface of the cavity.
As to claim 49, when interpreting this language in light of the specification, the skilled artisan would be at a loss to understand what exactly is to be considered the uppermost surface of the rear surface of the strike plate and what exactly the uppermost portion of the non-metal insert is referring to.
As to claims 50-57, these claims share the indefiniteness of claim 49, which depends from claim 48.
As to claim 59, when interpreting this language in light of the specification, the skilled artisan would be at a loss to understand what exactly each of the lowermost portion of the non-metal insert and the lowermost surface of the cavity is, given that the disclosure only shows the insert (i.e., labeled as element 295) being in contact with the sole portion and makes no further mention whatsoever as to where the lowermost portion of the non-metal insert is located or what constitutes the lowermost surface of the cavity.
As to claim 70, when interpreting this language in light of the specification, the skilled artisan would be at a loss to understand what exactly each of the uppermost portion of the non-metal insert and the uppermost surface of the cavity is, given that the disclosure only shows the insert (i.e., labeled as element 294) being in contact with the topline and makes no further mention whatsoever as to where the uppermost portion of the non-metal insert is located or what constitutes the uppermost surface of the cavity.
As to claim 71, this claim shares the indefiniteness of claim 70.
As to claim 72, when interpreting this language in light of the specification, the skilled artisan would be at a loss to understand what exactly is to be considered the uppermost surface of the rear surface of the strike plate and what exactly the uppermost portion of the non-metal insert is referring to.
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 47-49 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 11,975,249 in view of US PUBS 2014/0302944 to Roach et al (hereinafter referred to as “Roach”).
As to independent claim 47, although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘249 patent are, on one hand, ,more specific than the instant claims. For example, the claims of the ‘249 patent further require “wherein the cavity comprises a lower region rearward of the rear surface of the face portion, forward of the sole bar, above the sole portion, and no higher than the sole bar; wherein the cavity comprises an upper region rearward of the rear surface of the face portion, forward of the one or more front surfaces of the one or more rear panels, and above the sole bar”. Also, note that the claims of the ‘249 patent do require a stiffening member (i.e., claim 21 of the ‘249 patent), which essentially serves as the now-claimed “bridge bar”. Moreover, the claims of the ‘249 patent require that the mass of the rear panel(s) divided by the volume of the rear panel(s) yields a value of between 1 g/cc and 2 g/cc (i.e., see claim 5 of the ‘249 patent). Combining the limitations of claims 1, 5 and 21 of the ‘249 patent to provide added structural stability to the cavity while providing a panel material that does not negatively affect 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.
On the other hand, the claims of the ‘249 patent lack “the bridge bar has a width WBB that is a minimum distance from a first elongated side to a second elongated side opposite the first elongated side; the width WBB is 2-25 mm”. Roach notes that the truss members (12) may include any cross-sectional shape (i.e., see paragraphs [0067] and [0094]). Roach notes that the design and placement of the truss members may be altered to provide a desired mass distribution. See paragraphs [0091] and [0109] in Roach. In view of the teachings in Roach, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the thickness of the stiffening member in the claimed invention of the ‘249 patent (i.e., recall that the stiffening member recited in the ‘249 patent equates to the now-claimed “bridge bar”), with there being a reasonable expectation of success that altering the thickness of the support arm(s) would have enabled the club head designer to adjust the mass distribution of the club head. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art devices. Also, the limitations of instant claims 48-49 are encompassed by the limitations in claim 1 of the ‘249 patent.
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. In Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009), the Federal Circuit offered additional instruction as to the need for an explicit analysis. The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.
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"[T]he analysis that "should be made explicit" refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis. . . . Under the flexible inquiry set forth by the Supreme Court, the district court therefore erred by failing to take account of 'the inferences and creative steps,' or even routine steps, that an inventor would employ and by failing to find a motivation to combine related pieces from the prior art." Ball Aerosol, 555 F.3d at 993, 89 USPQ2d at 1877.
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The Federal Circuit’s directive in Ball Aerosol was addressed to a lower court, but it applies to Office personnel as well. When setting forth a rejection, Office personnel are to continue to make appropriate findings of fact as explained in MPEP § 2141 and § 2143, and must provide a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art at the time of the invention. This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.
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I. EXEMPLARY RATIONALES
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Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
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(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
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.
Claims 47-48 and 70 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2014/0302944 to Roach et al (hereinafter referred to as “Roach”) in view of the combined teachings to US PUBS 2020/0353325 to Taylor et al (hereinafter referred to as “Taylor”) and USPN 8,974,317 to Griffin et al (hereinafter referred to as “Griffin”).
As to independent claim 47, Roach discloses an iron-type golf club head (FIG. 1), comprising: a body (40) comprising a heel portion (6), a front portion (i.e., includes face 14), a sole portion (8), a toe portion (4), a hosel (10), a topline portion (2), and a back portion (FIG. 1)extending upward from the sole portion toward the topline portion, wherein the back portion comprises: a bridge bar (i.e., truss members 12) spaced apart from the front portion and extending between the sole portion and the topline portion (i.e, paragraph [0059]); at least one non-circular heel-side opening in the back portion and located between the bridge bar and the heel portion (i.e., shown in FIG. 1 between truss 12 and heel portion 6 and including a non-circular cavity portion within which insert 30 is fitted); and at least one non-circular toe-side opening in the back portion and located between the bridge bar and the toe portion (i.e., shown in FIG. 1 between truss 12 and toe portion 4 an including a non-circular cavity portion within which insert 34 is fitted); a strike plate (14) attached to the body (i.e., paragraph [0054]); a cavity within the iron-type golf club head and bound in part by the topline portion, the back portion, the strike plate, and the rear panel (i.e., FIGS. 1-5 show the cavity-back design of the club head); and a non-metal insert (i.e., at least insert 30 is one example of a non-metallic insert). Also, note paragraph [0071] which details other non-metallic inserts that may be positioned within the cavity in contact with a portion of the back portion and a portion of a rear surface of the strike plate.
Roach differs from the claimed invention in that Roach does not explicitly show “a rear panel attached to a portion of the back portion, wherein the rear panel covers the bridge bar, the at least one non-circular heel-side opening, and the at least one non-circular toe-side opening” and further does not explicitly show “the bridge bar has a width WBB that is a minimum distance from a first elongated side to a second elongated side opposite the first elongated side; the width WBB is 2-25 mm; and a mass of the rear panel divided by a volume of the rear panel yields a value no more than 2 g/cc”.
Taylor is cited to show that it is old in the art of iron-type club heads to provide a cover panel at the rear of the club head to cover the cavity and the stiffening member(s) residing within the cavity. See paragraphs [0189] – [0191] and FIG. 11, noting rear panel or rear fascia (160). It is clear that the cover member, which Taylor discloses as being constructed from a plastic or carbon fiber material, does not add appreciable weight to the club head and offers a way for the cavity to be closed. Moreover, the carbon fiber composite rear fascia (160) in Taylor includes a density of 0.9 g/cc to about 5 g/cc. Similarly, Griffin teaches that a cover member (60) may be used to cover a rear cavity (FIG. 6) and provides a way of improving the sound performance of the club head while adding torsional stiffness without adding significant mass (i.e., col. 3, line 58 through col. 4, line 30). In view of the combined teachings of Taylor and Griffin, 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 club head in Roach by incorporating a rear cover panel that covers the bridge bar, the heel-side opening and the toe-side opening, with there being a reasonable expectation of success that covering the cavity would not only provide additional structural stability, but would desirably alter the sound output of the club head.
As to the density of the rear panel (i.e., mass divided by volume), such would have depended upon the specific material selected. Again, Taylor details a carbon fiber material that meets the required density limitation.
As for the claimed width of the bridge bar, the dimensions have not been disclosed as critical. Here, Roach notes that the truss members (12) may include any cross-sectional shape (i.e., see paragraphs [0067] and [0094]). Roach notes that the design and placement of the truss members may be altered to provide a desired mass distribution. See paragraphs [0091] and [0109] in Roach. In view of the teachings in Roach, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the width of the identified bridge bar (i.e., the truss members 12 in Roach), with there being a reasonable expectation of success that altering the dimensions of the bridge bar (i.e., the trusses 12) would have enabled the club head designer to adjust the mass distribution and the rigidity of the club head. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art devices.
As to claim 48, in Roach, the non-metallic insert (e.g., insert 30) may be fashioned to cover only a portion of the rear surface of the strike plate or to cover only a portion of the cavity within which it is situated in order to alter the mass distribution of the club head and works in combination with the truss arrangement to fine tune the vibration behavior of the club head (i.e., see paragraphs [[0055], [0063], [0070], [0071] and [0073]) As such, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to arrange the insert (30) in Roach such that an uppermost portion of the non-metal insert does not contact an uppermost surface of the cavity proximate the topline portion, with there being a reasonable expectation of success that the vibration absorbing properties and coefficient of restitution properties of the club head would have been altered, as desired by the club head designer.
As to independent claim 70, Roach discloses an iron-type golf club head (FIG. 1), comprising: a body (40) comprising a heel portion (6), a front portion (i.e., includes face 14), a sole portion (8), a toe portion (4), a hosel (10), a topline portion (2), and a back portion (FIG. 1)extending upward from the sole portion toward the topline portion, wherein the back portion comprises: a bridge bar (i.e., truss members 12) spaced apart from the front portion and extending between the sole portion and the topline portion (i.e, paragraph [0059]); at least one non-circular heel-side opening in the back portion and located between the bridge bar and the heel portion (i.e., shown in FIG. 1 between truss 12 and heel portion 6 and including a non-circular cavity portion within which insert 30 is fitted); and at least one non-circular toe-side opening in the back portion and located between the bridge bar and the toe portion (i.e., shown in FIG. 1 between truss 12 and toe portion 4 an including a non-circular cavity portion within which insert 34 is fitted); a strike plate (14) attached to the body (i.e., paragraph [0054]); a cavity within the iron-type golf club head and bound in part by the topline portion, the back portion, the strike plate, and the rear panel (i.e., FIGS. 1-5 show the cavity-back design of the club head); and a non-metal insert (i.e., at least insert 30 is one example of a non-metallic insert). Also, note paragraph [0071] which details other non-metallic inserts that may be positioned within the cavity in contact with a portion of the back portion and a portion of a rear surface of the strike plate.
In Roach, the non-metallic insert (e.g., insert 30) may be fashioned to cover only a portion of the rear surface of the strike plate or to cover only a portion of the cavity within which it is situated in order to alter the mass distribution of the club head and works in combination with the truss arrangement to fine tune the vibration behavior of the club head (i.e., see paragraphs [[0055], [0063], [0070], [0071] and [0073]) As such, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to arrange the insert (30) in Roach such that an uppermost portion of the non-metal insert does not contact an uppermost surface of the cavity proximate the topline portion, with there being a reasonable expectation of success that the vibration absorbing properties and coefficient of restitution properties of the club head would have been altered, as desired by the club head designer.
Roach differs from the claimed invention in that Roach does not explicitly show “a rear panel attached to a portion of the back portion, wherein the rear panel covers the bridge bar, the at least one non-circular heel-side opening, and the at least one non-circular toe-side opening” and further does not explicitly show “the bridge bar has a width WBB that is a minimum distance from a first elongated side to a second elongated side opposite the first elongated side; the width WBB is 2-25 mm; and a mass of the rear panel divided by a volume of the rear panel yields a value no more than 2 g/cc”.
Taylor is cited to show that it is old in the art of iron-type club heads to provide a cover panel at the rear of the club head to cover the cavity and the stiffening member(s) residing within the cavity. See paragraphs [0189] – [0191] and FIG. 11, noting rear panel or rear fascia (160). It is clear that the cover member, which Taylor discloses as being constructed from a plastic or carbon fiber material, does not add appreciable weight to the club head and offers a way for the cavity to be closed. Moreover, the carbon fiber composite rear fascia (160) in Taylor includes a density of 0.9 g/cc to about 5 g/cc. Similarly, Griffin teaches that a cover member (60) may be used to cover a rear cavity (FIG. 6) and provides a way of improving the sound performance of the club head while adding torsional stiffness without adding significant mass (i.e., col. 3, line 58 through col. 4, line 30). In view of the combined teachings of Taylor and Griffin, 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 club head in Roach by incorporating a rear cover panel that covers the bridge bar, the heel-side opening and the toe-side opening, with there being a reasonable expectation of success that covering the cavity would not only provide additional structural stability, but would desirably alter the sound output of the club head.
As to the claimed density of the rear panel (i.e., mass divided by volume), such would have depended upon the specific material selected. Again, Taylor details a carbon fiber material that meets the required density limitation.
As for the claimed width of the bridge bar (WBB), the length of the bridge bar (LBB) and a mass of the bridge bar divided by the bridge bar length (LBB), these dimensions have not been disclosed as critical. Here, Roach notes that the truss members (12) may include any cross-sectional shape (i.e., see paragraphs [0067] and [0094]). Roach notes that the design and placement of the truss members may be altered to provide a desired mass distribution. See paragraphs [0091] and [0109] in Roach. In view of the teachings in Roach, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the width, the length and the mass of the identified bridge bar (i.e., the truss members 12 in Roach), with there being a reasonable expectation of success that altering the dimensions of the bridge bar (i.e., the trusses 12) would have enabled the club head designer to adjust the mass distribution and the rigidity of the club head. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art devices.
Claims 49-55, 58-69 and 71-72 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2014/0302944 to Roach et al (hereinafter referred to as “Roach”) in view of the combined teachings to US PUBS 2020/0353325 to Taylor et al (hereinafter referred to as “Taylor (‘325)”) and USPN 8,974,317 to Griffin et al (hereinafter referred to as “Griffin”) and also in view of US PUBS 2016/0045794 to Taylor et al (hereinafter referred to as “Taylor (‘794)”).
For brevity, claims reciting similar limitations have been grouped together for purposes of presenting the following rejections. In some instances, claims containing multiple limitations that may additionally be grouped with similar limitations in other claims are discussed separately. Claims that address only a single limitation are likewise addressed separately.
As to claims 49, 54, 58, 67 and 71, and with respect to the claimed Z-up values, Roach, as modified by Taylor (‘325) and Griffin, lacks the recited Z-up values. Here, Taylor (‘794) teaches that a Z-up value of between 12 mm and 25 mm is desirable for locating the center of gravity in a cavity-back iron-type club head (i.e., see paragraphs [0168] – [0169]). The location of the center of gravity along the z-axis influences the moment of inertia of the club head. In view of the teaching in Taylor (‘794), 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 club head in Roach by locating the center of gravity along the z-axis less than 20 mm (claims 49 and 58) or less than 18 mm (claims 54, 67 and 71), with there being a reasonable expectation of success that limiting the Z-up to less than 20 mm or less than 18 mm would have provided for a lower center of gravity of location to resist twisting of the club head upon impact between the strike plate and a golf ball so as to improve the club head performance.
More specific to claims 53, 54 and 58 and 71, and with respect to the claimed thickness of the forward portion of the sole portion, reference is again made to Taylor (‘794) which teaches that a thickness TFS, which is the thickness of a forward portion of sole portion rearwardly of the strike plate may be dimensioned to be between 0.3 mm and 3.0 mm to alter the performance of the strike plate (i.e., see paragraphs [0120] – [0121] and [0203]). The thinner forward sole portion enables the strike plate to flex for enhanced rebound characteristics. In view of the teachings in Taylor (‘794), 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 club head in Roach by incorporating a thickness of a forward portion of the sole portion to improve club head flexure of the strike plate for improved rebound performance (i.e., FIGS. 2-5 in Roach show a forward portion of the sole portion directly behind the strike plate and having a reduced thickness and creating a clearance or space between the rear surface of the strike plate and the remaining, thickened sole portion; this reduced thickness would have benefitted with the teachings in Taylor (‘794) by utilizing a forward portion thickness of less than 3 mm).
More specific to claims 50-54, 58, 61, 63, 64, 66, 67 and 71, these claims recite various aspects (i.e., values or dimensions) related to the bridge bar, such as the bridge bar width (WBB), the bridge bar depth (DBB), the bridge bar length (LBB) and the mass of the bridge bar divided by the bridge bar length (LBB). It is noted that none of these values or dimensions have been disclosed as critical. Here, Roach notes that the truss members (12) may include any cross- sectional shape (i.e., see paragraphs [0067] and [0094]). Roach notes that the design and placement of the truss members may be altered to provide a desired mass distribution. See paragraphs [0091] and [0109] in Roach. In view of the teachings in Roach, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the width, the depth, the length and the mass of the identified bridge bar (i.e., the truss members 12 in Roach), with there being a reasonable expectation of success that altering the dimensions of the bridge bar (i.e., the trusses 12) would have enabled the club head designer to adjust the mass distribution and the rigidity of the club head. In Gardner v TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art devices.
More specific to claim 55, the depth of the bridge bar (i.e, the truss member 12) in Roach may vary (i.e., see at least FIG. 3, which shows a narrowing of the truss member 12 in a front-to-rear direction, with a portion of the truss member 12 adjacent the topline being thicker than a portion of the truss member 12 adjacent the sole portion; see also paragraphs [0064] – [0067]).
More specific to claim 59, note that Roach discloses that the height of the non-metallic inserts may be adjusted. At least in FIG. 2, a lowermost portion of insert (30) does not contact a lowermost portion of the cavity. At least in FIG. 3, a lowermost portion of insert (32) does not contact a lowermost portion of the cavity. See paragraphs [0070] – [0071] and [0073] in Roach.
More specific to claim 60, Roach shows that the width of the bridge bar (i.e, truss members 42; FIG. 9) in a heel-to-toe direction is greater adjacent the topline as compared to a width adjacent the sole portion (i.e., see at least paragraph [0079]).
More specific to claim 62, looking at FIG. 1 in Roach, and with respect to the bridge bar (i.e., truss member 12 closer to toe portion 4), the heelward end portion of the bridge bar at a top of the bridge bar is closer to the heel portion (6) than a bottom heelward end of the bridge bar. In, the identified truss member 12 has a top end closer to central vertical cross-section plane 3-3, while the lower end is farther from the heel portion and closer to the toe-side vertical cross-section plane 4-4.
More specific to claim 65, Roach includes a strike plate thickness of between 1.5 mm and 4.0 mm. See paragraph [0054].
More specific to claim 68, Roach notes that the non-metallic inserts may be contained between the truss members (12) and a rear portion of the strike plate, and thus the insert(s) would not contact any part of the rear panel. See paragraphs [0071] – [0073] in Roach.
More specific to claim 69, at least Griffin teaches attaching a rear panel to the rim of the peripheral body of an iron-type cavity-back club head in order to enclose the entire cavity rearwardly of the rear surface of the face of the club head (i.e., see the connection of rear panel 60 in FIG. 6). Similarly, in Taylor (‘325), the rear fascia panel (160) covers the entire opening at the rear of the club head (i.e., paragraph [0189]). In view of the combined teachings in Griffin and Taylor (‘325), it would have been obvious to one of ordinary skill in the art to have modified the club head in Roach by affixing a rear panel to the rim of the club head body in order to completely enclose the cavity.
More specific to claims 49 and 72, and with respect to the limitation regarding “wherein an uppermost surface of the rear surface of the strike plate is above the uppermost portion of the non-metal insert”, in Roach, the non-metallic insert (e.g., insert 30) may be fashioned to cover only a portion of the rear surface of the strike plate or to cover only a portion of the cavity within which it is situated in order to alter the mass distribution of the club head and works in combination with the truss arrangement to fine tune the vibration behavior of the club head (i.e., see paragraphs [[0055], [0063], [0070], [0071] and [0073]) As such, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to arrange the insert (30) in Roach such that an uppermost portion of the non-metal insert rests below an uppermost surface of the rear surface of the strike plate, with there being a reasonable expectation of success that the vibration absorbing properties and coefficient of restitution properties of the club head would have been capable of being altered, as desired by the club head designer. Also, claim 72 adds the limitation “and the non-metal insert does not contact any portion of the rear panel”. Here, Roach notes that the non-metallic inserts may be contained between the truss members (12) and a rear portion of the strike plate, and thus the insert(s) would not contact any part of the rear panel. See paragraphs [0071] – [0073] in Roach.
Claims 56-57 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2014/0302944 to Roach et al (hereinafter referred to as “Roach”) in view of the combined teachings to US PUBS 2020/0353325 to Taylor et al (hereinafter referred to as “Taylor (‘325)”) and USPN 8,974,317 to Griffin et al (hereinafter referred to as “Griffin”) and also in view of US PUBS 2016/0045794 to Taylor et al (hereinafter referred to as “Taylor (‘794)”) and also in view of US PUBS 2018/0111027 to Funaki et al (hereinafter referred to as “Funaki”).
As to claims 56-57, and with respect to the claimed areal mass of the rear panel, the further reference to Funaki teaches that a panel made of lightweight material may include a low fiber areal mass (i.e., see cover panel 212 and paragraph [0069] in Funaki) in order to maintain a desired weight distribution of the club head. In view of the further teaching in Funaki, 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 further modified the device in Roach, which has already been modified to include a rear panel, by incorporating an areal mass of the rear panel of between 0.0005 g/mm2 and 0.00925 g/mm2, as required by claim 56, and no more than 0.0037 g/mm2, as required by claim 57, with there being a reasonable expectation of success that a low areal mass for the rear panel would not have created undesirable mass at the rear of the club head. Moreover, the claimed areal mass values have not been disclosed as being critical.
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
See FIG. 1 and bar (19) spanning the rear cavity in a crown-to-sole direction;
FIG. 2 and element (19) in Gorman;
FIG. 1 and element (28) in Fenton extends across the rear cavity;
Element (12a) in FIG. 1 in Takeda;
FIG. 2 and element (6) in Ezaki;
Rear panel (17) in Takeda;
FIG. 1 and element (44) in Roach;
FIGS. 2-5 in Breier (‘551); and
FIG. 1 in Breier (‘360).
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711
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