DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The information disclosure statement filed 10 April 2024 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because the sixth listed reference appears to be listed with an incorrect document number. It has been placed in the application file, but the information referred to therein, particularly the sixth reference, has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
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.
Claims 1-9 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. In Claim 1, line 5, the limitation providing a line adjacent and converse to the heel-to-toe groove lines on one or both ends is unclear. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “converse to the heel-to-toe groove lines” in claim 1 is used by the claim to mean “perpendicular,” while the accepted meaning is “a modified theorem obtained by reversing the hypothesis and conclusion.” The term is indefinite because the specification does not clearly redefine the term. Further, groove lines lack an antecedent basis and it is not clear how a single line can be at both ends of heel and toe groove lines, which also lack an antecedent basis. The adjacent lines aligned to form distinct visible lines lack an antecedent basis. In line 8, in is not clear whether the “said lines” refers to the adjacent lines or to the visible lines.
Claims 4-6 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. In each of Claims 4-6, the limitation indicating the shapes of chevrons, circles, squares, triangles, or arrows each contradict the limitation of Claim 1, from which each of Claims 4-6 depend, in that Claim 1 requires a line rather than a geometric or other shape.
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.
Claim(s) 1-3, 7, and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Imamoto, Japanese Patent Application No. JP H09-131421. As to Claim 1, Imamoto teaches a golf club head having a striking face formed between a toe end and a heel end and a plurality of grooves formed on the face with each groove extending from near the toe to near the heel end, paragraph 0002 and see Figure 1. A line (7, 8) may be formed adjacent and converse to the heel-to-toe grooves on both ends of the grooves, paragraph 0006. The lines are aligned to form distinct visible lines when viewed from overhead, lines may be oriented parallel to each other, and may direct toward a target, paragraphs 0006 and 0012, noting that lines may be inclined at the same angle and that the area in the toe and heel may be blasted. Claim 1 is treated as best understood in view of the rejection under 35 USC §112(b). As to Claim 2, Imamoto teaches that the lines may be facilitated by the natural termination points, paragraph 0012, noting that a visible line may be recognized as the boundary of a groove end and the toe or heel area. As to Claim 3, Imamoto teaches that the angular orientation of adjacent lines may be optimized within a range of +/- 89.5 degrees from a baseline perpendicular to the grooves, paragraph 0009. As to Claim 7, the examiner finds that the lines of Imamoto possess the structural features of the inventive lines and are capable of assisting a golfer in identifying when a clubface is square to a target during address. As to Claim 8, the examiner finds that the lines of Imamoto possess the structural features of the inventive lines, being configured as claimed, and are therefore in optimized angular configuration, and are capable of inherently avoiding additional manufacturing steps, maintaining efficiency.
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.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Imamoto, in view of Zider et al., U.S. Patent Application No. 2005/0192114. As to Claim 4, Imamoto substantially shows the claimed limitations, as discussed above. Imamoto teaches that adjacent lines configured as target facing alignment features, may be lines, paragraph 0011 and see Figure 1, noting set a straight head in a target direction, but Imamoto is silent as to adjacent lines being target facing chevrons. Zider teaches that target facing alignment features may be chevrons, see Figures 2A and 2B. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the lines as chevrons, as taught by Zider, to provide Imamoto with a known substitute line shape. Claim 4 is treated as best understood in view of the rejection under 35 USC §112(b).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Imamoto, in view of Hilton et al., U.S. Patent Application No. 2012/0040771. As to Claim 5, Imamoto substantially shows the claimed limitations, as discussed above. Imamoto teaches that adjacent lines configured as target facing alignment features, may be lines, paragraph 0011 and see Figure 1, noting set a straight head in a target direction, but Imamoto is silent as to adjacent lines being a series of triangles. Hilton teaches that lines may be a series of triangles, see Figure 3A. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the lines as a series of triangles, as taught by Hilton, to provide Imamoto with a known substitute line shape. Claim 5 is treated as best understood in view of the rejection under 35 USC §112(b).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Imamoto, in view of Scott et al., U.S. Patent Application No. 2003/0013539. As to Claim 6, Imamoto substantially shows the claimed limitations, as discussed above. Imamoto teaches that adjacent lines configured as target facing alignment features, may be lines, paragraph 0011 and see Figure 1, noting set a straight head in a target direction, but Imamoto is silent as to adjacent lines being a series of arrows. Scott teaches that lines may be a series of arrows, see Figure 4. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the lines as a series of arrows, as taught by Scott, to provide Imamoto with a known substitute line shape. Claim 6 is treated as best understood in view of the rejection under 35 USC §112(b).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Imamoto, in view of Taylor, U.S. Patent No. 4,077,632. As to Claim 9 provided with a golf club according to any one of Claims 1-3, 7, or 8, Imamoto teaches the step of positioning oneself and a golf club in a stance preparatory to striking a golf ball, paragraphs 0004 and 0012, noting the golfer’s line of sight over the club head at the time of addressing. Imamoto teaches aligning the club with an intended target by visually ensuring that the visible line formed by the adjacent lines of heel and toe groove lines on the club face are parallel to an intended target line, paragraph 0013, noting observing the lines and orienting straight with respect to a target direction. Imamoto discloses the claimed invention except for providing that the club’s face is near the ball. Taylor teaches a similar club head having adjacent lines (16), Col. 3, ln. 3-5. Taylor teaches that positioning oneself with the club face near a ball, Col. 3, ln. 40-44. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Imamoto with the step of positioning oneself with the club face near the ball, as taught by Taylor, to provide Imamoto with a known substitute addressing step preparatory to striking a ball.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Imamoto, in view of Zider with regard to Claim4, Hilton, with regard to Claim 5, and Scott, with regard to Claim 6 and in further view of Taylor, U.S. Patent No. 4,077,632. As to Claim 9 provided with a golf club according to any one of Claims 4-6, Imamoto is applied as in Claim 9 above. Zider, Hilton, and Scott, are applied as in Claims 4, 5, and 6 respectively, with the same obviousness rationales being found applicable. Taylor is applied as in Claim 9, above, with the same obviousness rationale being found applicable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN ELLIOTT SIMMS JR whose telephone number is (571)270-7474. The examiner can normally be reached 8:30 am - 5:00 pm - M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at (571) 270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711 8 December 2025