DETAILED ACTION
Priority Date
The Examiner currently gives independent claims 1 and 12 a priority date of 2/26/19 when parent application 16/286,412 was filed. That is, the first time the limitations of claim 1 and 12 appear to have support is in Fig. 15C. Restated, both claims 1 and 12 require “the back portion extending from the sole to the topline and from the heel side to the toe side” (emphasis added). This structure is not shown previously to Fig. 15C.
It should be noted that the additional dependent claims receive different and potentially later priority dates. However, the Examiner has used the date of 2/26/19 for all dependent rejections.
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 4 and 5 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. The term “about” in claims 4 and 5 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.
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 1-3 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Atkins, Sr. (herein “Atkins”; US Pat. No. 5,464,211; as cited in applicant’s IDS).
Regarding claim 1, Atkins discloses a golf club head (Fig. 1) comprising: a striking face having a front surface (Fig. 1, item 14) configured to strike a golf ball (Fig. 1, item 14; noting this is functionally possible given the structure) and a rear surface opposite the front surface (Fig. 1, proximate item 18); a periphery portion extending rearward from the striking face and including a sole (Figs. 1 and 3; noting this is shown), a topline opposite the sole (Fig. 2; noting this is shown), a heel side, a toe side opposite the heel side (Fig. 1; noting this is shown), and a back portion extending from the sole to the topline and from the heel side to the toe side (Figs. 1 and 2; noting this is shown); a hosel configured to receive a shaft (Fig. 1, item 12; actually showing the shaft inserted), the hosel located on the heel side (Fig. 1; noting this is inherently called the “heel side” because of the hosel placement); a cavity formed between the periphery portion and the striking face (Fig. 4; noting this is shown); a coordinate system centered at a center of gravity of the golf club head, the coordinate system comprising a y-axis extending vertically, perpendicular to a ground plane when the golf club head is in an address position at a prescribed loft and lie, an X- axis perpendicular to the y-axis and parallel to the striking face, extending towards the heel side of the golf club head, and a z-axis, perpendicular to the y-axis and the x-axis and extending through the striking face (Fig. 3; noting this is an imaginary coordinate system and it would be inherent in the golf club structure); an aperture extending through the back portion and into the cavity (Fig. 1, proximate item 40); and a damping element comprising a first end and a second end opposite the first end (Fig. 1, items 30 and 44 collectively being the dampening element, the first and second end being inherent), wherein the damping element is positioned within the aperture (Fig. 1; noting this is shown), and wherein the first end of the damping element abuts the rear surface of the striking face (Fig. 1; noting this is shown).
Regarding claim 2, Atkins discloses that the aperture comprises a threaded portion, and wherein the damping element is threadedly engaged with the threaded portion of the aperture (Fig. 1, proximate items 34 and 44 showing the threaded aperture, and items 30 and 44 collectively being the “dampening element’; at least item 44 of the dampening element being threadedly engaged).
Regarding claim 3, Atkins discloses that the second end of the damping element includes a tool engagement feature (Fig. 1 and col. 4, lines 43-52).
Regarding claim 12, Atkins discloses a golf club head (Fig. 1) comprising: a striking face having a front surface (Fig. 1, item 14) configured to strike a golf ball (Fig. 1, item 14; noting this is functionally possible given the structure) and a rear surface opposite the front surface (Fig. 1, proximate item 18); a periphery portion extending rearward from the striking face and including a sole (Figs. 1 and 3; noting this is shown), a topline opposite the sole (Fig. 2; noting this is shown), a heel side, a toe side opposite the heel side (Fig. 1; noting this is shown), and a back portion extending from the sole to the topline and from the heel side to the toe side (Figs. 1 and 2; noting this is shown); a hosel configured to receive a shaft (Fig. 1, item 12; actually showing the shaft inserted), the hosel located on the heel side (Fig. 1; noting this is inherently called the “heel side” because of the hosel placement); a cavity formed between the periphery portion and the striking face (Fig. 4; noting this is shown); a coordinate system centered at a center of gravity of the golf club head, the coordinate system comprising a y-axis extending vertically, perpendicular to a ground plane when the golf club head is in an address position at a prescribed loft and lie, an X- axis perpendicular to the y-axis and parallel to the striking face, extending towards the heel side of the golf club head, and a z-axis, perpendicular to the y-axis and the x-axis and extending through the striking face (Fig. 3; noting this is an imaginary coordinate system and it would be inherent in the golf club structure); an aperture extending through the back portion and into the cavity (Fig. 1, proximate item 40); and a damping element comprising a first end and a second end opposite the first end (Fig. 1, items 32 and 44 collectively being the dampening element, the first and second end being inherent), wherein the damping element is positioned within the aperture (Fig. 1; noting this is shown), and wherein the first end of the damping element abuts the rear surface of the striking face (Fig. 1; noting this is shown), wherein the second end of the damping element includes a tool engagement feature (Fig. 1 and col. 4, lines 43-52), wherein the aperture comprises a threaded portion, and wherein the damping element is threadedly engaged with the threaded portion of the aperture (Fig. 1, proximate items 34 and 44 showing the threaded aperture, and items 30 and 44 collectively being the “dampening element’; at least item 44 of the dampening element being threadedly engaged).
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 4, 5, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Atkins, Sr. (herein “Atkins”; US Pat. No. 5,464,211; as cited in applicant’s IDS).
Regarding claim 4, it is noted that Atkins does not specifically disclose that the damping element has an elastic modulus of about 40 GPa or greater. However, Atkins clearly discloses that the golf club body is made from stainless steel (col. 3, lines 13-15) and clearly discloses that the joint between the striking plate and dampening element is “metal-to-metal” (col. 4, lines 21-26; making obvious that the dampening plate is at least metal). Thus, it would have been obvious to a POSA to make the dampening element from stainless steel consistent with the rest of the disclosure to create the “metal-to-metal joint” as disclosed because doing so would be a simple substitution of one element (stainless metal) for (some metal used to make the dampening element) to obtain predictable results (the continued ability to use metal for the dampening element, the metal being stainless steel). In addition, the Examiner notes that “stainless steel” inherently has an elastic modulus (aka modulus of elasticity or Young’s modulus) of generally 193-200 GPa. Thus, the claimed limitation would have been obvious by using stainless steel to create the dampening element.
Regarding claim 5, it is noted that Atkins does not specifically disclose that the damping element has an elastic modulus of about 70 GPa or greater. However, Atkins clearly discloses that the golf club body is made from stainless steel (col. 3, lines 13-15) and clearly discloses that the striking plate to dampening element is “metal-to-metal” (col. 4, lines 21-26). Thus, it would have been obvious to a POSA to make the dampening element from stainless steel consistent with the rest of the disclosure to create the “metal-to-metal joint” as disclosed because doing so would be a simple substitution of one element (stainless metal) for (some metal used to make the dampening element) to obtain predictable results (the continued ability to use metal for the dampening element, the metal being stainless steel). In addition, the Examiner notes that “stainless steel” inherently has an elastic modulus (aka modulus of elasticity or Young’s modulus) of generally 193-200 GPa. Thus, the claimed limitation would have been obvious by using stainless steel to create the dampening element.
Regarding claim 13, it is noted that Atkins does not specifically disclose that the damping element is made from aluminum, steel, or titanium. However, Atkins clearly discloses that the golf club body is made from stainless steel (col. 3, lines 13-15) and clearly discloses that the joint between the striking plate and dampening element is “metal-to-metal” (col. 4, lines 21-26; making obvious that the dampening plate is at least metal). Thus, it would have been obvious to a POSA to make the dampening element from stainless steel consistent with the rest of the disclosure to create the “metal-to-metal joint” as disclosed because doing so would be a simple substitution of one element (stainless metal) for (some metal used to make the dampening element) to obtain predictable results (the continued ability to use metal for the dampening element, the metal being stainless steel).
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Atkins, Sr. (herein “Atkins”; US Pat. No. 5,464,211; as cited in applicant’s IDS) in view of McNally et al. (herein “McNally”; US Pat. No. 5,026,056).
Regarding claim 6, Atkins discloses a first weight member and a second weight member (col. 5, lines 9-16; noting “one or more weights” makes obvious two). It is noted that Atkins does not specifically disclose wherein the first weight member is positioned proximate the toe side, and wherein the second weight member is positioned proximate the heel side. However, McNally discloses a golf club wherein the first weight member is positioned proximate the toe side, and wherein the second weight member is positioned proximate the heel side (Fig. 22, items 59 and 68). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Atkins to use the first weight proximate the toe side and the second weight proximate the heel side as taught by McNally because doing so would be combining prior art elements (a golf club with additional weights added, and a golf club with additional weights added at the heel and toe) according to known methods (using the additional weights at the heel and toe) to yield predictable results (the continued ability to use additional weights in a golf club, the additional weights placed at the heel and toe in order align the center of gravity with the visual center of the striking face – see McNally: col. 7, lines 24-31).
Regarding claim 7, the combined Atkins and McNally disclose that the first weight member has an angled upper surface and a maximum height in a sole-to-topline direction at a toewardmost point and a minimum height in the sole-to-topline direction at a heelwardmost point (McNally: Fig. 22, item 68; noting this is obvious).
Regarding claim 8, the combined Atkins and McNally disclose that the second weight member has an angled upper surface and a maximum height in the sole-to-topline direction at a heelwardmost point and a minimum height in the sole-to-topline direction at a toewardmost point (McNally: Fig. 22, item 59; noting this is obvious).
Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Atkins, Sr. (herein “Atkins”; US Pat. No. 5,464,211; as cited in applicant’s IDS) in view of McNally et al. (herein “McNally”; US Pat. No. 5,026,056) and in further view of Peralta et al. (herein “Peralta”; US Pub. No. 2011/0143858 A1)
Regarding claim 9, the combined Atkins and McNally disclose that the striking face is integrally formed with the hosel (Atkins: Fig. 4; noting this is obvious as the front half is one integral piece; alternatively, this is merely a product-by-process limitation). It is noted that the combined Atkins and McNally do not specifically disclose that an additional cavity is located soleward of the hosel at the heel side, and wherein a third weight member is positioned within the additional cavity. However, Peralta makes obvious an additional cavity is located soleward of the hosel at the heel side, and wherein a third weight member is positioned within the additional cavity (see Fig. 3 below; noting either one could be, but only one is required). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Atkins and McNally to use an additional cavity is located soleward of the hosel at the heel side, and wherein a third weight member is positioned within the additional cavity as taught by Peralta because doing so would be combining prior art elements (a golf club, and a golf club with an additional cavity and a weight) according to known methods (using an additional cavity and weight on the golf club) to yield predictable results (using an additional cavity and weight on the golf club, the additional cavity and weight allowing a user to adjust the swing weight of the golf club and change the center of gravity – see Peralta: par. [0015]).
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Regarding claim 10, the combined Atkins, McNally, and Peralta disclose that the back portion further comprises a pocket, and wherein a back weight is positioned within the pocket (Peralta: see Fig. 3 above).
Regarding claim 11, the combined Atkins, McNally, and Peralta disclose a cap covering the aperture (Atkins: Fig. 4, item 55).
Claims 14-19 are rejected under 35 U.S.C. 103 as being unpatentable over Atkins, Sr. (herein “Atkins”; US Pat. No. 5,464,211; as cited in applicant’s IDS) in view of Long et al. (herein “Long”; US Pat. No. 8,007,372 B2).
Regarding claim 14, it is noted that Atkins does not specifically disclose that the striking face includes a thickened portion overlapping a face center of the golf club head. However, Atkins does contemplate the ability to use thickened portions on the face (Fig. 1, item 24 and col. 3, lines 23-29). In addition, Long discloses a similar golf club wherein the striking face includes a thickened portion overlapping a face center of the golf club head (Figs. 1, 4, 3B, item 36 and as seen as t2 in Fig. 3B, col. 2, line 62-65, and col. 4, lines 55-56). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Atkins to use a thickened portion overlapping a face center of the golf club head as taught by Long because doing so would be combining prior art elements (a golf club with a dampener, and a golf club with a central thickened region) according to known methods (using a thickened region on the rear surface of the face) to yield predictable results (using a thickened portion on the rear surface of the face, the thickened portion allowing for improved COR and stress under impact – see Atkins: col. 8, lines 1-4).
Regarding claim 15, the combined Atkins and Long disclose that the striking face further includes a thinned portion at least partially surrounding the thickened portion (Long: Fig. 3B, item t1 as seen in Fig. 3).
Regarding claim 16, the combined Atkins and Long disclose that the thickened portion has a thickness measured from the front surface of the striking face to the rear surface of the striking face between 1.5 mm and 2.5 mm (Long: col. 5, lines 22-32; noting t2 can be 0.08 inches to 0.12 inches or 2.032 to 3.048 mm; the disclosed range making obvious the claimed range).
Regarding claim 17, the combined Atkins and Long disclose that the thinned portion has a thickness measured from the front surface of the striking face to the rear surface of the striking face between 1.0 mm and 2.0 mm (Long: col. 5, lines 22-32; noting t1 can be “less than 0.06 inches” or “less than 1.54 mm”; the disclosed range making obvious the claimed range).
Regarding claim 18, the combined Atkins and Long disclose that the thickness of the thickened portion is between 10% and 50% greater than the thickness of the thinned portion (Long: col. 5, lines 22-32; see rejections of claims 16 and 17 above, noting t2 = 2.032 mm and t1 can be 1.54 mm, so (2.032-1.54)/1.54 = 32%).
Regarding claim 19, the combined Atkins and Long disclose that the first end of the damping element abuts the rear surface of the striking face at the thickened portion (Atkins: Fig. 3 and Long: Fig. 4; noting this would be obvious given the combination and a bodily incorporation).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Atkins, Sr. (herein “Atkins”; US Pat. No. 5,464,211; as cited in applicant’s IDS) in view of Hirano (US Pub. No. 2008/0081709 A1).
Regarding claim 20, it is noted that Atkins does not specifically disclose that the damping element is welded to the back portion. However, Atkins clearly discloses filling in the hole made by the aperture (col 4, lines 53-55). In addition, Hirano makes obvious the ability to fill a hole in a golf club head using welding material (par. [0056]). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Atkins to weld the dampening element to the back portion as taught and suggested by Hirano because doing so would be use of a known technique (filling a hole in a golf club using a weld) to improve a similar product (a golf club having a rear aperture that needs to be filled) in the same way (filling a hole in a golf club using a weld, the welding creating a weld between the dampening element and the back portion).
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 1 and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 9-11 of U.S. Patent No. 10,086,244 B2 n view of Atkins, Sr. (herein “Atkins”; US Pat. No. 5,464,211). Claim 1 of the of the ‘244 patent claims:
1. An iron-type golf club head, comprising: a club head body having a back portion and a striking face; an adjustment receiver attached to the back portion and an adjustment driver inserted into the adjustment receiver; a cradle in contact with an end of the adjustment driver such that movement of the adjustment driver causes movement of the cradle; and an elastomer extending from the cradle towards a rear surface of the striking face, wherein the elastomer contacts a portion of the rear surface of the striking face at a geometric center of the striking face.
Claim 1 of the current application claims:
A golf club head comprising: a striking face having a front surface configured to strike a golf ball and a rear surface opposite said front surface; a periphery portion extending rearward from said striking face and including a sole, a topline opposite said sole, a heel side, a toe side opposite said heel side, and a back portion extending from said sole to said topline and from said heel side to said toe side; a hosel configured to receive a shaft, said hosel located on said heel side; a cavity formed between said periphery portion and said striking face; a coordinate system centered at a center of gravity of said golf club head, said coordinate system comprising a y-axis extending vertically, perpendicular to a ground plane when said golf club head is in an address position at a prescribed loft and lie, an X- axis perpendicular to said y-axis and parallel to said striking face, extending towards said heel side of said golf club head, and a z-axis, perpendicular to said y-axis and said x-axis and extending through said striking face; an aperture extending through said back portion and into said cavity; and a damping element comprising a first end and a second end opposite said first end, wherein said damping element is positioned within said aperture, and wherein said first end of said damping element abuts said rear surface of said striking face.
The ‘244 patent claim is more specific as to the type of structure that is required than claims 1 and 12 of the current application. That is, the claim language of claim 1 in the ’244 patent essentially anticipates the more generic claim language of claims 1 and 12 of the current application. The Examiner notes for the record that “the cradle and the adjustment driver” of claim 1 in the ‘244 patent may collectively be the “damping element” of the current claims. The required coordinate system of claims 1 and 12 in the current application is generic and would be inherently present on any club. Finally, claims 1 and 12 do require the back portion to extend from the heel to the toe side. This single limitation that is different in the current 1 and 12 claims is made obvious by Atkins as rejected above.
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
4/6/26