DETAILED ACTION
Election/Restrictions
Claims 3, 6-8, and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/24/26.
Claims 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/24/26.
Claim Objections
Claim 13 is objected to because of the following informalities: . Claim 13 claims “a diameter of one of the multiple voids”. However, “the multiple voids” does not have proper antecedent basis. Claim 1 actually uses the language “a plurality of two or more voids”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 2 is 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. The term “about” in claim 2, line 2 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The Examiner does see par. [0079] of applicant’s specification. However, this paragraph does not provide an ascertainable and definite limit to the term “about’.
Claim 18 is 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. The term “about” in claim 18, line 2 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The Examiner does see par. [0079] of applicant’s specification. However, this paragraph does not provide an ascertainable and definite limit to the term “about’. In addition, applicant claims that “the plurality of two or more voids are offset from the front surface of the midplane between about 0.025 mm to about 2.00 mm” (emphasis added). It is unclear from both the claim and the specification how the offset is measured. For example, is the offset measured from the center of the void to the midplane (see annotated drawing below)? Is it measured from the edge closest of the void to the midplane? Or is it measured from the furthest edge of the void to the midplane? The Examiner can only assume that based on Fig. 13, applicant is attempting to claim that the center of the void is offset from the midplane since the edge closest to the midplane is actually on the midplane (see applicant’s Fig. 13, figure with midplane 1392).
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Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 4, 10, 12, and 14 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Morales et al. (herein “Morales”; US Pub. No. 2023/0381601 A1).
Regarding claim 1, Morales discloses a golf club face (Fig. 1 being exemplary and representative of Fig. 17 as well) comprising: a front surface to impact a golf ball (Figs. 1 and/or 17; noting this is functionally possible given the structure); a rear surface (Fig. 17 below; noting this is shown and opposite the front surface); and a plurality of two or more voids between the front surface and the rear surface distributed in a pattern (Fig. 17, below and par. [0079]; noting the pattern being positioned radially outward from the center).
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Regarding claim 4, Morales discloses that the plurality of two or more voids are distributed radially around a center of the golf club face (Fig. 17, above, and see par. [0079]).
Regarding claim 10, Morales discloses that each of the plurality of two or more voids extend radially outward from a center of the golf club face (Fig. 17 above showing this).
Regarding claim 12, Morales discloses that the plurality of two or more voids are offset toward the front surface from a midplane (Fig. 17 above showing this, the portion facing item 17100 being the front).
Regarding claim 14, Morales discloses a golf club head (Fig. 1 being exemplary and representative of Fig. 17 as well) comprising: a face (Figs. 1 and/or Fig. 17 above; noting this is inherent) wherein the face comprises: a front surface to impact a golf ball (Fig. 1; noting this is functionally possible given the structure); a rear surface (Fig. 17 above; noting this is shown and opposite the front surface, item 17100 being proximate the front surface); a body extending between the front surface and the rear surface (Fig. 17, noting the “body” may simply be the area/section 230 as shown/referred to in Fig. 2, but inherently present in Fig. 17) wherein the body comprises a plurality of two or more voids distributed in a pattern (Fig. 17, above and par. [0079]; noting the pattern is extending radially out from the center of the face).
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.
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.
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 2, 5, 9, 13, 15, 17, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Morales et al. (herein “Morales”; US Pub. No. 2023/0381601 A1).
Regarding claim 2, it is noted that Morales does not specifically disclose that each of the plurality of two or more voids have a volume of between about 0.05 mm³ to about 8.5 mm³. However, Morales does make obvious that void may be cylindrical (see Fig. 14 and Fig. 2 and par. [0077]; making obvious a circular front cross-section), that the cell width/diameter can specifically be 0.045 inches or 1.143 mm (par. [0065]), and that cell depth/length can specifically be 1.78 mm (par. [0054]). In addition, the Examiner notes that the volume of a cylinder is vol = pi*r2*h. As such, using the values of Morales, the volume can be (pi)*(1.143/2)^2*(1.78) = 1.82 mm³; the calculated value making obvious the claimed range. The Examiner also notes that in, Fig. 17 above, the two outer [larger] voids can be the calculated 1.82 mm3. The two inner voids appear half the size of the outer voids, so they may be 0.913 mm3. But both of these values are within the claimed range. Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that a volume of 0.05 mm³ to about 8.5 mm³ could be used for the volume of the voids because doing so would be using shapes and specific values for the voids specifically taught by Morales to make an obvious calculation for volume based on geometry.
Regarding claim 5, Morales discloses that each of the plurality of two or more voids are cylindrical (see rejection of claim 2 above; noting as per Figs. 14, 2, and par. [0077], the outer shape of the void may be circular, so that it is obvious that the void may be considered “cylindrical”; noting dictonary.com defines “cylinder” as “a surface or solid bounded by two parallel planes and generated by a straight line moving parallel to the given planes and tracing a curve bounded by the planes and lying in a plane perpendicular or oblique to the given planes”).
Regarding claims 9 and 17, Morales discloses that at least some of the plurality of two or more voids have different volumes (Fig. 17 above; noting this is obvious based on the outer voids as compared to the inner voids; restated, all the void may be circular, and the outer voids showing a greater depth than the inner voids, which makes obvious a greater volume).
Regarding claim 13, Morales discloses that the golf club face has a diameter-to-thickness ratio between about 0.5 to about 1.0, wherein the diameter-to-thickness ratio is defined as Diameter - To - Thickness Ratio = a diameter of one of the multiple voids/a thickness of the golf club face (par. [0043]; noting the thickness of the faceplate may be 0.08 mm + 1.78 mm + 0.13 mm = 1.99 mm, and the cell width/diameter of a circular aperture can be 0.045 inches or 1.143 mm from par. [0065], so 1.143/1.99 = 0.574; making obvious the claimed range; see also par. [0049] for face thicknesses).
Regarding claim 15, it is noted that Morales does not specifically disclose that each of the plurality of two or more voids have a volume of between about 0.05 mm³ to about 25.0 mm³. However, Morales does make obvious that void may be cylindrical (see Fig. 14 and Fig. 2 and par. [0077]), that the cell width/diameter can specifically be 0.045 inches or 1.143 mm (par. [0065]), and that cell depth/length can specifically be 1.78 mm (par. [0054]). In addition, the Examiner notes that the volume of a cylinder is vol = pi*r2*h. As such, using the values of Morales, the volume can be (pi)*(1.143/2)^2*(1.78) = 1.82 mm³; the calculated value making obvious the claimed range. The Examiner also notes that in, Fig. 17 above, the two outer voids can be the calculated 1.82 mm3. The two inner voids appear half the size of the outer voids, so they may be 0.913 mm3. But both of these values are within the claimed range. Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that a volume of 0.05 mm³ to about 25.0 mm³ could be used for the volume of the voids because doing so would be using shapes and specific values for the voids specifically taught by Morales to make an obvious calculation for volume based on geometry.
Regarding claim 18, it is noted that Morales does not specifically disclose that the plurality of two or more voids are offset toward the front surface from a midplane between about 0.025 mm to about 2.00 mm. However, Morales clearly discloses a plurality of voids that are present between the midplane and the end of the midportion, item 230 (see Fig. 17 above and Fig. 2 showing the limits of midportion, item 230). Morales, also goes on to state that the midportion, item 230, may be 1.78 mm thick (par. [0043]; noting half of that would be 0.89 mm at the midplane, and half of that would be the center of the void, so 0.445 mm). The Examiner also broadly construes the claimed “offset” to be the measurement from the center of the void as compared to the midplane, so that at least the two outside voids having a center offset 0.445 mm from the midplane (see Fig. 17 above, and par. [0043]; making this obvious). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the void offset would fall within the claimed range because doing so would be utilizing specific values and dimensions in combination with the drawings to arrive at an obvious void placement with regardless to a midplane. Finally, in the alternative, regarding the exact offset distance from the midplane, it has been held that where 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 applicant’s spec, par. [0065], giving no criticality for the exact offset). In addition, to support the Examiner’s assertion that void depth (or offset from midplane) is a result-effective variable (i.e. a variable which achieves a recognized result) and can be optimized or found though routine experimentation, the Examiner evidences Morales which states that void depth (and thus offset from the midplane) is a result-effective variable use to optimize durability of the face (par. [0079]). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact void depth (and thus offset from the midplane) could be found through routine experimentation in order to optimize the durability of the face.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Morales et al. (herein “Morales”; US Pub. No. 2023/0381601 A1) in view of Soracco et al. (herein “Soracco”; US Pat. No. 9,330,406 B2).
Regarding claim 11, it is noted that Morales does not specifically disclose that the golf club face further comprises a fill material to fill each of the plurality of two or more voids. However, Soracco discloses a golf club wherein the head has a plurality of two or more voids (Fig. 4) and the voids can further comprise a fill material (col. 9, line 59 to col. 10, line 3). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Morales to make the golf club face further comprises a fill material to fill each of the plurality of two or more voids as taught and suggested by Soracco because doing so would be combing prior art elements (a golf club with a face that has voids, and a golf club head with voids that are filled with a filler) according to known methods (using the filler in the voids in the face) to yield predictable results (the continued ability to make a golf club with a face having voids in the face, the voids filled with a filler to “provide vibration dampening” – see Soracco: col. 10, lines 1-3).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW BRIAN STANCZAK whose telephone number is (571)270-7831. The examiner can normally be reached on 8:30-10 and 1-3:30 M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached on (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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/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
4/7/26