DETAILED ACTION
Claim Objections
Claim 9 is objected to because of the following informalities: claim 9 claims that the pressurized insert can have a pressure of 0 psi. However, claim 1, from which claim 9 depends, claims that the insert is “pressurized”. An insert that has a pressure of 0 psi would not be “pressurized”. As such, claim 9 is confusing and does not seem to be consistent with claim 1. Appropriate correction is required.
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 1-13, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Tavares et al. (herein “Tavares”; US Pub. No. 2008/0015050 A1) in view of Gilbert et al. (herein “Gilbert”; US Pub. No. 2007/0042833 A1).
Regarding claim 1, Tavares discloses an iron-type golf club head (Fig. 3A), comprising: a body comprising a front end defining a strike face, a top rail, a sole opposite the top rail, a heel, and a toe opposite the heel; a rear end opposite the front end (Fig. 3A and par. [0029]), the rear end defining a rear wall (Fig. 3A, item 304; defining the perimeter); a cavity at least partially bounded by the strike face, the top rail, the sole, the heel, the toe, and the rear wall (Fig. 3C; noting this is obvious), wherein the rear wall extends partially between the sole and the top rail (Fig. 3A, item 320; noting this is obvious); a club head retainer disposed toward the cavity (Fig. 3C; noting the side of item 320 facing the cavity can be considered the “club head retainer”); the rear wall forming a rear opening that fluidly communicates an exterior of the club head with the cavity (Fig. 3C; noting this is obvious prior to assembly); a cover coupled to the rear wall and covering the opening, thereby to enclose the cavity (Fig. 3A and 3B, item 318; noting it is in physical contact with the rear wall, and thus “coupled”); a pneumatic insert disposed in the cavity (Fig. 3B, item 306 as explained in [0036]; noting a “a gas filled” bladder makes obvious “pneumatic insert”), the pneumatic insert comprising: a membrane enclosing a hollow chamber filled with a pressurized gas at an insert pressure (Fig. 3B, item 306, pars. [0036] and [0033]; noting “under pressure” makes obvious “at an insert pressure”); and an insert retainer mechanically engaging the club head retainer, thereby to secure the pneumatic insert within the cavity (Fig. 3C; noting the lower rear portion of item 306 mechanically engages item 318 which mechanically engages item 320 meeting the claimed language). It is noted that Tavares does not specifically disclose the use of a badge. However, Gilbert discloses the use of a badge that covers a rear cavity (Fig. 2; noting collectively items 26 and 30, item 30 specifically being a “badge” as per par. [0019]). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Tavares to use a badge as taught by Gilbert because doing so would be combining prior art elements (an iron having a rear cover, and an iron having a rear badge) according to known methods (using a rear cover that displays a badge) to yield predictable results (the continued ability to cover the rear cavity, the cover having a badge).
Regarding claim 2, the combined Tavares and Gilbert disclose that the club head retainer comprises a weight pad formed integrally with both the sole and the rear wall (Gilbert: Fig. 2, proximate item 27; noting this can be considered the “weight pad”), the weight pad comprising a weight pad forward surface angled toward the strike face (Gilbert: Fig. 2; noting the forward surface proximate item 27; i.e. the surface facing the cavity; and noting some angle with respect to the striking face is inherent) such that a lower interior undercut is formed between the weight pad forward surface and a sole interior surface; and the insert retainer engages the lower interior undercut (Gilbert: Fig. 2; noting the latter language would be obvious given the combination, i.e. given Tavares: Fig. 3C and the ability of the insert to fill the rear cavity and be kept in place by the badge).
Regarding claim 3, the combined Tavares and Gilbert disclose that the insert retainer comprises a rear protrusion configured to at least partially occupy the lower interior undercut (Gilbert: Fig. 2 and Tavares: Fig. 3C; noting this would be obvious given the combination, see rejection of claim 2 above and Tavares: Fig. 3C making obvious the ability to fill the rear cavity as seen in Gilbert: Fig. 2).
Regarding claim 4, the combined Tavares and Gilbert disclose that the insert retainer entirely occupies the lower interior undercut (Gilbert: Fig. 2 and Tavares: Fig. 3C; noting this would be obvious given the combination, see rejections of claim 1 and 2 above).
Regarding claim 5, the combined Tavares and Gilbert disclose that the insert retainer interlocks with the club head retainer (Tavares: Fig. 3C; noting this is obvious as explained in the rejection of claim 1 above, or noting this is obvious given the combined Gilbert: Fig. 2 and Tavares: Fig. 3C).
Regarding claim 6, the combined Tavares and Gilbert disclose that the club head retainer comprises a top rail undercut formed between interior surfaces of the strike face, the top rail, and the rear wall (Gilbert: Fig. 2; noting this is obvious).
Regarding claim 7, the combined Tavares and Gilbert disclose that the insert retainer comprises an insert top end configured to engage the top rail undercut (Gilbert: Fig. 2 and Tavares: Fig. 3C; noting this would be obvious given the combination, see logic of rejections of claims 2-4 above).
Regarding claim 8, the combined Tavares and Gilbert disclose that the pneumatic insert is secured within the cavity without any adhesives or separate coupling members (Tavares: par. [0036]; stating “alternatively, the gas-filled bladder may be held in place via a retaining member” making obvious only mechanical interlocking).
Regarding claim 9, the combined Tavares and Gilbert disclose that the insert pressure is between 0 and 5 psi (Tavares: par. [0033]; noting atmospheric conditions would make obvious 0 psi as the insert would be under no additional pressure).
Regarding claim 10, it is noted that the combined Tavares and Gilbert do not specifically disclose that the insert pressure is between 0.5 and 1.5 psi. However, Tavares generally discloses that the insert may under “atmospheric conditions” and “under pressure” (par. [0033]; the former making obvious 0 psi and the latter making obvious greater than 0 psi). In addition, regarding the exact pressure within the insert, it has been held that if a change in the relative proportions over the prior does not make the claimed invention perform differently, the claimed device is not patentably distinct from the prior art. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984)(see applicant’s spec, par. [00134]; applicant giving no criticality to the lesser claimed range within the disclosed range of 0 to 30 psi). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact pressure would not make the invention perform differently: that is, the golf club would still have a fluid filled membrane behind the striking face regardless of its exact pressure.
Regarding claim 11, the combined Tavares and Gilbert disclose that the membrane is formed by a process selected from the group consisting of thermoforming, vacuum forming, pressure forming, mechanical forming, drape forming, matched mold forming, twin sheet forming, and billow forming (Tavares: par. [0032]; specifically disclosing creation by “blow molding” and noting the limitation is a “product-by-process” claim, so the burden is back on applicant to show a nonobvious different between the disclosed method and the claimed methods, see MPEP 2113(II)).
Regarding claim 12, Tavares discloses an iron-type golf club head (Fig. 3A), comprising: a body comprising a front end defining a strike face, wherein the striking face defines a face rear surface and a scoring area (Fig. 2 and Fig. 3C; noting the Examiner broadly construes the “scoring area” as an imaginary subset of the area defined by the scorelines of the front of the face as see in Fig. 2 that is specifically supported by bladder, item 306, as see in Fig. 3C on the back side of the striking face; restated the Examiner does not import any limitations into what is considered the “scoring area” on the front other than it has score lines running through it), a top rail, defining a top rail interior surface (Fig. 3C, noting the inner portion of item 304), a sole opposite the top rail, the sole defining a sole interior surface (Fig. 3C, proximate item 316); a heel defining a heel interior surface (Fig. 3B, noting this is obvious and proximate item 214a), and a toe opposite the heel, the toe defining a toe interior surface (Fig. 3C and 3B; noting this is obvious and proximate item 302); a rear end opposite the front end (Fig. 3A and par. [0029]), the rear end opposite the front end, the rear end defining a rear wall, wherein the rear wall extends partially between the sole and the top rail and defines a rear wall interior surface (Fig. 3A, item 304; defining the perimeter; noting an interior surface is obvious and/or inherent); a cavity at least partially bounded by the strike face rear surface, the top rail interior surface, the sole interior surface, the heel interior surface, the toe interior surface, and the rear wall interior surface (Fig. 3C; noting this is obvious), a club head retainer disposed toward the cavity (Fig. 3C; noting the side of item 320 facing the cavity can be considered the “club head retainer”); wherein the rear wall forms a rear opening that fluidly communicates an exterior of the club head with the cavity (Fig. 3C; noting this is obvious prior to assembly); a cover coupled to the rear wall and covering the opening, thereby to enclose the cavity (Fig. 3A and 3B, item 318; noting it is in physical contact with the rear wall, and thus “coupled”); a pneumatic insert disposed in the cavity (Fig. 3B, item 306 as explained in [0036]; noting a “a gas filled” bladder makes obvious “pneumatic insert”), the pneumatic insert comprising: a membrane enclosing a hollow chamber filled with a pressurized gas (Fig. 3B, item 306, pars. [0036] and [0033]; noting “under pressure” makes obvious “pressurized gas”); wherein greater than 80% of the pneumatic insert resides behind the scoring area (Fig. 2 and Fig. 3C; noting the Examiner defines “scoring area” as an imaginary subset of the area defined by the scorelines of the front of the face as see in Fig. 2 that is supported by bladder, item 306, as see in Fig. 3C on the back side of the striking face; so 100% of the insert would reside behind the scoring area); and an insert retainer mechanically engaging the club head retainer, thereby to secure the pneumatic insert within the cavity (Fig. 3C; noting the lower rear portion of item 306 mechanically engages item 318 which mechanically engages item 320 meeting the claimed language). It is noted that Tavares does not specifically disclose the use of a badge. However, Gilbert discloses the use of a badge that covers a rear cavity (Fig. 2; noting collectively items 26 and 30, item 30 specifically being a “badge” as per par. [0019]). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Tavares to use a badge as taught by Gilbert because doing so would be combining prior art elements (an iron having a rear cover, and an iron having a rear badge) according to known methods (using a rear cover that displays a badge) to yield predictable results (the continued ability to cover the rear cavity, the cover having a badge).
Regarding claim 13, the combined Tavares and Gilbert disclose that the strike face further comprises a scoring area back surface opposite the scoring area; and the pneumatic insert contacts greater than 80% of the scoring area back surface (Tavares: Fig. 2 and Fig. 3C; noting the Examiner again broadly interpreting “scoring area” as an imaginary subset of the area defined by the scorelines of the front of the face as see in Fig. 2 that is supported by bladder, item 306, as see in Fig. 3C on the back side of the striking face; so 100% of the insert would reside behind the scoring area based on the imaginary subset).
Regarding claim 16, Tavares discloses an iron-type golf club head (Fig. 3A), comprising: a body (Fig. 3A) comprising: a front end defining a strike face, a top rail, a sole opposite the top rail, a heel, and a toe opposite the heel; a rear end opposite the front end (Fig. 3A and par. [0029]), the rear end defining a rear wall (Fig. 3A, item 304; defining the perimeter); wherein the rear wall extends partially between the sole and top rail (Fig. 3A, item 304; noting this is obvious); a cavity at least partially bounded by the strike face, the top rail, the sole, the heel, the toe, and the rear wall (Fig. 3C; noting this is obvious), wherein the cavity defines a cavity volume (Fig. 3A-3C; noting a volume would be inherent; noting the “cavity volume” can actually be the volume within the cover, item 310 as seen in Fig. 3C); a club head retainer disposed toward the cavity (Fig. 3C; noting the side of item 320 facing the cavity can be considered the “club head retainer”); the rear wall forming a rear opening that fluidly communicates an exterior of the club head with the cavity (Fig. 3C; noting this is obvious prior to assembly); a cover coupled to the rear wall and covering the opening, thereby to enclose the cavity (Fig. 3A and 3B, item 318; noting it is in physical contact with the rear wall, and thus “coupled”); a pneumatic insert disposed in the cavity (Fig. 3B, item 306 as explained in [0036]; noting a “a gas filled” bladder makes obvious “pneumatic insert”), the pneumatic insert comprising: a membrane enclosing a hollow chamber filled with a pressurized gas (Fig. 3B, item 306, pars. [0036] and [0033]; noting “under pressure” makes obvious “at an insert pressure”); and wherein the pneumatic insert occupies greater than 80% of the cavity volume (par. [0037]; noting the “bladder may completely fill the interior chamber” of the cover; making obvious 100%); and an insert retainer mechanically engaging the club head retainer, thereby to secure the pneumatic insert within the cavity (Fig. 3C; noting the lower rear portion of item 306 mechanically engages item 318 which mechanically engages item 320 meeting the claimed language). It is noted that Tavares does not specifically disclose the use of a badge. However, Gilbert discloses the use of a badge that covers a rear cavity (Fig. 2; noting collectively items 26 and 30, item 30 specifically being a “badge” as per par. [0019]). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Tavares to use a badge as taught by Gilbert because doing so would be combining prior art elements (an iron having a rear cover, and an iron having a rear badge) according to known methods (using a rear cover that displays a badge) to yield predictable results (the continued ability to cover the rear cavity, the cover having a badge). Finally, it is also noted that the combined Tavares and Gilbert do not specifically disclose that the insert mass is less than 5 grams. However, Tavares specifically disclose that the insert is “lightweight in nature” and the use of the insert specifically provides weight savings in the golf club that may be allocated to other positions (par. [0007]). In addition, regarding the actual weight of the insert, 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. [00132]; applicant giving no criticality to “less than 5 grams” over the disclosed “0.5 to 10 grams”). In addition, to support the Examiner’s assertion that insert weight 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 Tavares which specifically states that the insert weight is a result-effective variable used to redistribute the weight savings to other areas of the golf club (par. [0007]). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact insert weight could be found through routine experimentation in order to optimize the weight savings created and redistributed throughout the golf club head.
Regarding claim 17, it is noted that the combined Tavares and Gilbert do not specifically disclose that the membrane comprises a membrane thickness less than 0.050 inch. However, regarding the actual thickness of the insert, 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 par. [0127], applicant giving no criticality for a value of 0.050 inch within a disclosed range of 0.001 to 0.100 inches). In addition, to support the Examiner’s assertion that insert wall thickness 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 Tavares which specifically states that the insert wall thickness is a result-effective variable that is based on the material used, conformability, and rigidity of the desired insert (par. [0034]). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact insert wall thickness could be found through routine experimentation in order to optimize the conformability and rigidity of the insert based on the material selected.
Regarding claim 18, the combined Tavares and Gilbert disclose that the pneumatic insert, the badge, and the club head retainer cooperate to form a damping system (Tavares: Fig. 3C and Gilbert: Fig. 2; noting this is functionally possible given the structure; also see Tavares: par. [0055] specifically disclosing this). It is noted that the combined Tavares and Gilbert do not specifically disclose that the damping system comprises a damping system mass less than 10 grams. However, Tavares specifically disclose that the insert is “lightweight in nature” and the use of the insert specifically provides weight savings in the golf club that may be allocated to other positions (par. [0007]). Tavares also specifically discloses that the cover (aka badge) can be made from “lightweight materials” (par. [0036]). Furthermore, Tavares also discloses that the club head retainer (i.e. the rear weight pad) can “provide desired weighting characteristics to the club head” (par. [0043]). Finally, regarding the actual weight of the combined damping system, 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. [00164]; applicant giving no criticality to “less than 10 grams” over the disclosed “1 to 20 grams”). In addition, to support the Examiner’s assertion that overall dampening system weight 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 Tavares which specifically states that the overall dampening system weight is a result-effective variable used to redistribute the weight savings to other areas of the golf club (pars. [0007], [0036], [0043]). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact dampening system weight could be found through routine experimentation in order to optimize the weight savings created by the combined structure and redistributed throughout the rest of the golf club head.
Regarding claim 19, the combined Tavares and Gilbert disclose that the strike face, the top rail, the sole, the heel, the toe, the rear wall, and the badge collectively define a cavity wall surface area (Gilbert: Fig. 2); the cavity wall surface area comprises an insert contact area in contact with the pneumatic insert; and the insert contact area greater than 80% of the cavity wall surface area (Gilbert: Fig. 2 in view of Tavares: Fig. 3C; noting this would be obvious if the pneumatic insert of Tavares: Fig. 3C filled the cavity, i.e. was bodily incorporated, into the cavity of Gilbert: Fig. 2, as it would contact 100% of the cavity wall surface area, but still be held in place within the cavity by the badge of Gilbert: Fig. 2).
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Tavares et al. (herein “Tavares”; US Pub. No. 2008/0015050 A1) in view of Gilbert et al. (herein “Gilbert”; US Pub. No. 2007/0042833 A1) and in further view of Westrum (US Pub. No. 2017/0028270 A1).
Regarding claim 14, the combined Tavares and Gilbert disclose that the scoring area is bounded by a scoring area heel-side boundary plane and a scoring area toe-side boundary plane (Tavares: Figs. 2 and 3C; noting some imaginary boundary plane for what the Examiner considers the “scoring area” would exist). It is noted that the combined Tavares and Gilbert do not specifically disclose that the pneumatic insert does not extend past the scoring area heel-side boundary plane or the scoring area toe-side boundary plane. However, Westrum discloses a similar golf club iron with a rear cavity and an insert wherein the scoring area can be bounded by a scoring area heel-side boundary plane and a scoring area toe-side boundary plane, and the insert does not extend past the scoring area heel-side boundary plane or the scoring area toe-side boundary plane (Fig. 14, item 100; noting the “scoring area” can broadly be interpreted as a subset of the scoreline area shown in Fig. 1 defined as the area in between the heel and toe edges of the insert, Fig. 14, item 100, those edges of the insert defining the boundary planes; see Fig. 1; clearly disclosing scorelines on the front surface). Thus, it would have been obvious to a person of ordinary skill at the time of filing to modify the combined Tavares and Gilbert to make the scoring area is bounded by a scoring area heel-side boundary plane and a scoring area toe-side boundary plane, and the pneumatic insert does not extend past the scoring area heel-side boundary plane or the scoring area toe-side boundary plane as taught and suggested by Westrum because doing so would be combining prior art elements (using a pneumatic rear cavity insert and using a rear cavity insert that is only used in a portion of the cavity) according to known methods (limiting the rear cavity insert to specific region of the cavity) to yield predictable results (limiting the pneumatic rear cavity insert to specific region of the cavity, the specific region giving more support to the front face as well as adding a dampening effect to that specific region of the face).
Regarding claim 15, the combined Tavares, Gilbert, and Westrum disclose that the pneumatic insert does not contact the heel interior surface or the toe interior surface (Westrum: Fig. 14; noting this is obvious).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Tavares et al. (herein “Tavares”; US Pub. No. 2008/0015050 A1) in view of Gilbert et al. (herein “Gilbert”; US Pub. No. 2007/0042833 A1) in view of Gilbert et al. (herein “Gilbert ‘545”; US Pub. No. 2004/0266545 A1).
Regarding claim 20, it is noted that the combined Tavares and Gilbert do not specifically disclose that the insert contact area is greater than 8.0 in2. However, Gilbert makes obvious a rear cavity that would have some inherent volume and contact area (Fig. 2). In addition, Tavares makes obvious filling the rear cavity with a pneumatic insert (Fig. 3C). Finally, regarding the exact contact area, 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). In addition, to support the Examiner’s assertion that rear cavity contact area 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 Gilbert ‘545 which specifically states that rear cavity volume (and thus inherently the rear cavity contact area) is a result-effective variable used to optimize the weight savings that is further redistributed over the club head (par. [0004]). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that rear cavity volume (and thus inherently the rear cavity contact area) could be found through routine experimentation in order to optimize the amount of weight savings created by the use of a rear cavity with that weight savings redistributed throughout the rest of the club head.
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
3/9/26