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 § 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 1-6, 12, 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) in view of Kobayashi (US Pat. No. 5,421,577).
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). It is noted that Atkins does not specifically disclose an iron type golf club. However, Atkins discloses that the invention can be used in “hollow, flat faced bulbous shapes” (col. 1, lines 6-12). In addition, Kobayashi discloses an “iron-type club” wherein the head is hollow, flat faced bulbous shape (Fig. 1). 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 dampening system in an iron-type golf club as taught by Kobayashi because doing so would be use of a known technique (using a backing plate to give strength to a golf head having a hollow body) to improve a similar product (an iron type golf head having a face and hollow body) in the same way (using a backing plate to give strength to a golf head having a hollow body, the golf head being a “iron-type head”).
Regarding claim 2, the combined Atkins and Kobayashi disclose that the aperture comprises a threaded portion, and wherein the damping element is threadedly engaged with the threaded portion of the aperture (Atkins: 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, the combined Atkins and Kobayashi disclose that the second end of the damping element includes a tool engagement feature (Atkins: Fig. 1 and col. 4, lines 43-52).
Regarding claim 4, it is noted that the combined Atkin and Kobayahsi do 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 the combined Atkins and Kobayashi do 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 6, the combined Atkins and Kobayashi disclose a first weight member and a second weight member (Atkins: col. 5, lines 9-16; noting “one or more weights” makes obvious two) wherein the first weight member is positioned proximate the toe side, and wherein the second weight member is positioned proximate the heel side (Kobayashi: Fig. 10, items 28 and 28A; clearly noting that they are located toe and heel side of the cg location).
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). It is noted that Atkins does not specifically disclose an iron type golf club. However, Atkins discloses that the invention can be used in “hollow, flat faced bulbous shapes” (col. 1, lines 6-12). In addition, Kobayashi discloses an “iron-type club” wherein the head is hollow, flat faced bulbous shape (Fig. 1). 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 dampening system in an iron-type golf club as taught by Kobayashi because doing so would be use of a known technique (using a backing plate to give strength to a golf head having a hollow body) to improve a similar product (an iron type golf head having a face and hollow body) in the same way (using a backing plate to give strength to a golf head having a hollow body, the golf head being a “iron-type head”).
Regarding claim 13, it is noted that the combined Atkins and Kobayashi do 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 7 and 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 Kobayashi (US Pat. No. 5,421,577) and in further view of McNally et al. (herein “McNally”; US Pat. No. 5,026,056).
Regarding claim 7, it is noted that the combined Atkins and Kobayashi do not specifically 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. However, Kobayashi clearly discloses the use of a first weight member proximate the toe side, and a second weight member proximate the heel side (Fig. 10, items 28 and 28A). In addition, McNally discloses 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 (Fig. 22, item 68; noting this is obvious). 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 Kobayashi to make 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 as taught by McNally because doing so would be combining prior art elements (a heel and toe weight in an iron, and a heel and toe weight in an iron with angled surfaces) according to known methods (using the latter weights in the former club) to yield predictable results (the continued ability to use heel and toe weights in the iron club, the heel and toe weights having an angled surface).
Regarding claim 8, the combined Atkins, Kobayashi 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 Kobayashi (US Pat. No. 5,421,577) 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, Kobayashi, 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, Kobayashi, 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, Kobayashi, 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, Kobayashi, 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, Kobayashi, 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 Kobayashi (US Pat. No. 5,421,577) and in further view of Long et al. (herein “Long”; US Pat. No. 8,007,372 B2).
Regarding claim 14, it is noted that the combined Atkins and Kobayashi do 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 the combined Atkins and Kobayashi 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, Kobayashi, 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, Kobayashi, 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, Kobayashi, 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, Kobayashi, 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, Kobayashi, 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 Kobayashi (US Pat. No. 5,421,577) and in further view of Hirano (US Pub. No. 2008/0081709 A1).
Regarding claim 20, it is noted that the combined Atkins and Kobayashi do 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 in the back portion (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 the combined Atkins and Kobayashi 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 in a back portion that needs to be filled) in the same way (filling a hole in a golf club back portion 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.
Response to Arguments
Applicant's arguments filed 7/6/26 have been fully considered but they are not generally persuasive.
112(b)
The previous 112(b) rejections are overcome.
102
The previous 102 is overcome by way of amendment. With that said, as noted in the rejection above, the Examiner believes that it is completely obvious to use the structure in Atkins and apply it to a “hollow” iron as taught by Kobayashi.
103
Moving on to the rejection of claim 8 and the use of McNally, the Examiner reproduces McNally: Fig. 22 below (as annotated on applicant’s page 8 of the Remarks and further annotated by the Examiner).
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Applicant disagrees that the combined Atkins and McNally (specifically McNally) discloses:
…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
With all due respect, the difference is opinion is based on claim interpretation. The key question from the reading of claim 8 is where is “a heelwardmost point” location? The Examiner’s interpretation is that “a heelwardmost point” further defines the “angled upper surface” based on the plain language of the claim (i.e. the heelwardmost point is on the angled upper surface, noting this is shown above and annotated by the Examiner). Applicant appears to believe that “a heewardmost point” defines a location on the weight itself (i.e. the heelwardmost point on the weight itself; again annotated above). Respectfully, applicant’s interpretation appears to import limitations from the specification into the claims and the Examiner takes the broadest reasonable interpretation based on the plain language and context of the claim.
In the alternative, assuming arguendo that applicant is correct in their interpretation, the toe weight in McNally generally shows this shape (i.e. a toewardmost point of the weight itself having the maximum height). Use of this geometry on the heel side would be a mere duplication of parts.
With regards to claim 20, the Examiner does not find applicant’s argument compelling. In Atkins, the hole in the back portion (i.e. the club head) that houses the damping element is filled with a cover to provide a cosmetic finish of a “smooth surface” (Fig. 4, item 55 and col. 4, lines 53-55). Hirano discloses the ability to weld holes closed in club heads to also provide a cosmetic finish (par. [0056]; the Examiner specifically notes that this “welding” technique applies to any location on the golf club, including the back portion). Application of welding the hole closed in back portion of the Atkins’ invention as taught by Hirano would result in the dampening element being welding within the hole to the club head body. This combination is annotated below. Applicant argues that “One of ordinary skill in the art would not have looked to the Hirano reference to arrive at a damping element welded to the back portion”. The Examiner respectfully disagrees. A POSA would look to Hirano as a way to cosmetically close a hole in a club head. The resulting weld would both close the hole and weld/lock the dampening element into place. In fact, applicant, in par. [00364] of applicant’s own specification, discloses this same exact method: “The back portion 1712 may also include a welding aperture 1767 specifically for welding the dampening element 702 to the back portion 1212.”
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Double Patenting
The double patenting rejection is maintained as no terminal disclaimer has been filed.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
7/27/26
/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711
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