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 .
Claim Rejections - 35 USC § 103
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.
Claims 1-4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Willett et al. (2013/0123040 A1) in view of Kultala et al. (US PGPub. No. 2018/0117431).
In Reference to Claims 1-4 and 6-8
Willett teaches (Claim 1) A golf club, comprising: a golf club head having a club head rearmost point and a club head frontmost point (fig’s 20-22), the golf club head comprising: a striking face (200, fig’s 20-22), a sole extending rearwardly from a bottom side of the striking face (item 300, fig’s 20-22) to a rearmost point of the sole (at 510/512, fig. 21), the sole having a closing ascent angle that is less than about 35 degrees and is defined as an angle between (1) a line from the rearmost point of the sole to a sole point, of a projected silhouette of the golf club head from a toe-side viewpoint, that is located on the sole and at a set distance from the club head rearmost point, as measured along a ground plane, and (2) a plane that intersects the sole point and is parallel to the ground plane (fig’s 20-22, paragraph 0097 lines 14-18, crown angle from horizontal plane is disclosed to be less than 20 degrees, sole angle from crown to back shown approximately equal), and a crown extending rearwardly from a topside of the striking face to a rearmost point of the crown (item 400, fig’s 20-22); [];
(Claim 2) wherein the crown has a closing descent angle that is less than about 35 degrees and is defined as an angle between (1) a line from the rearmost point of the crown to a crown point, of the projected silhouette of the golf club head, that is located on the crown and at a set distance from the club head rearmost point, as measured along the ground plane, and (2) a plane that intersects the crown point and is parallel to the ground plane (paragraph 0097 lines 14-18 and fig’s 20-22);
(Claim 3) wherein the closing descent angle is within 85% to 115% of the closing ascent angle (fig’s 20-22, angle from top to back and from ground to back are shown approximately the same).
Willett fails to teach the shaft component claimed.
Kultala teaches (Claim 1) a shaft comprising: a tip end, the shaft being coupled to the golf club head at the tip end, a butt end opposite to the tip end (item 14, tip end thereof, fig’s 1-3), and a tip end portion extending in a tip-to-butt direction from the tip end to 300 mm from the tip end (fig. 5, also note this does not define any structure but is merely a distance along the shaft from the tip end), a smallest diameter of the shaft in the tip end portion being less than 0.330 inches (paragraph 0034);
(Claim 4) wherein the smallest diameter of the shaft in the tip end portion is less than 0.300 inches (paragraph 0034).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the aerodynamic golf club head of Willett with the feature of the aerodynamic golf club shaft with a small diameter as taught by Kultala for the purpose of further improving the aerodynamic qualities of the overall golf club and further reducing drag as taught by Kultala (paragraph 0014), making the club smoother and more efficient to swing, easier to use, and more attractive to the users.
It is further noted that Willett discloses an aerodynamic golf club head, and is merely silent as to a golf club shaft. However, in order to use the golf club head of Willett a user / manufacturer would inherently need to provide a golf club shaft as well. When selecting a golf club shaft for the aerodynamic golf club head of Willett, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have selected a shaft that is also disclosed to have specific aerodynamic qualities as taught by the golf club shaft of Kultala for the purpose of achieving ideal overall aerodynamics for the finished golf club assembly.
In Reference to Claims 6 and 7
The modified device of Willett teaches (Claim 6) wherein the set distance from the club head rearmost point is [x] of a front-to-back length between the club head rearmost point and the club head frontmost point (fig’s 20-22, this distance is not specifically labeled, however, it appears to be about half of the front to back length);
(Claim 7) wherein the set distance from the club head rearmost point is [x] of a front-to-back length between the club head rearmost point and the club head frontmost point (fig’s 20-22, this distance is not specifically labeled, however, it appears to be about half of the front to back length).
Willett does not specifically disclose the set distance claimed.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the specific set distance as a matter of engineering design choice, since 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). Since Willett teaches an ascent and descent angle that is small (less than 20 degrees) starting at some point from the middle of the club head and angling toward the back of the club head, in order to minimize air resistance / airflow separation from the club head behind the club (paragraph 0097 lines 14-18), merely selecting a specific point somewhere mid club that would achieve this goal is an obvious matter of engineering design choice, and is not a patentable advance. Since a variety of points mid club to start this descent / ascent would likely work well, merely finding the optimum or workable point for this element is an obvious matter of engineering design choice and is not a patentable advance.
In Reference to Claim 8
Willett teaches all of claim 1 as discussed above.
Willett further teaches (Claim 8) wherein the golf club head further comprises a skirt connected between the crown and the sole (item 500, fig’s 20-22), wherein the skirt includes an aft skirt portion at a rear of the golf club head, and the aft skirt portion has: a lower boundary that is connected to the sole and that has a skirt height above the ground plane (at 512, dimension 513, fig. 21) that satisfies a ratio of a head length to the skirt height of [x] (fig. 21 and paragraphs 0105 and 0134), the head length being a length of the golf club head between the club head rearmost point and the club head frontmost point (dimension FB, fig. 20); and a skirt thickness (item 530, fig. 21) that satisfies a ratio of the head length to the skirt thickness of [x] (fig. 21 and paragraphs 0105 and 0134), the skirt thickness being a thickness of the alt skirt portion between the crown and the sole (dimension 530, fig. 21).
The examiner notes that since dimensions of the overall head height and overall head length (AH and FB) are given in relation to other embodiments of the club head (paragraph 0134; among other recitations throughout the specification), but the description of the specific dimensions / ratios of the embodiment used for skirt thickness and skirt height (513 and 530) are in percentages of other dimensions of the club head (paragraph 0105), without reference specifically to the overall length, it is unclear to the examiner what the specific ratios would be in the embodiment of fig’s 20-22. However, it is noted that the ratios shown and described appear they would be at least close to what is claimed, if not within the claimed ranges, based on the disclosed values / ratios of items 513, 530, AH, and FB.
Regardless of whether these elements in Willett fall within the claimed ranges, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the claimed ratios as a matter of engineering design choice, since, 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). Since Willett teaches specifically optimizing the thickness of the skirt 530, as well as the skirt height 513, to be within specific disclosed ratios in relation to other features of the club head in order to promote airflow attachment to the club by providing a profile and ratios that produce this function (paragraph 0105), along with disclosing the same general shape with all of the elements claimed, merely claiming a particular ratio or dimensions that accomplish this stated goal is an obvious matter of routine optimization, and is not a patentable advance.
Claims 5 is rejected under 35 U.S.C. 103 as being unpatentable over Willett et al. in view of Kultala et al., and further in view of Nakamura (US Patent No. 10,265,592).
In Reference to Claim 5
The modified device of Willett teaches all of claim 1 as discussed above.
Willett fails to teach the feature of claim 5.
Nakamura teaches (Claim 5) wherein [a] shaft comprises: a reinforced section extending in a tip-to-butt direction from the tip end to 550 mm from the tip end (section Ft2, fig. 2; column 8 lines 18-23 and column 15 lines 14-27); and a pitch-based carbon fiber ply that is in only the reinforced section (s4, fig. 2; column 8 lines 23-26).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the modified aerodynamic golf club of Willett with the feature of providing a pitch-based carbon ply in a tip end reinforced section as taught by the golf club of Nakamura for the purpose of providing improved strength and rigidity distribution, while simultaneously keeping the weight low as taught by Nakamura (column 1 lines 13-21 and 47-52), making the club more durable, more reliable, and easier to use.
Claims 9-10, 13, 14, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Fenton, Jr. (US Patent No. 5,395,109) in view of Sato (US Patent No. 8,128,508).
In Reference to Claims 9, 10, 13, and 14
Fenton teaches (Claim 9) A golf club, comprising: a golf club head, comprising: a striking face, a sole extending rearwardly from a bottom side of the striking face, a crown extending rearwardly from a topside of the striking face (fig’s 1-3, face, sole, and crown, respectively), and a hosel at a heelward side of the golf club head (item 104, fig’s 1-5), the hosel including a hosel opening (item 108, fig’s 4 and 5), wherein the hosel comprises: a first toeward tripping structure including an elongated ridge or groove (an item 116, fig’s 3-5, towards the toe side) having a height or depth of between 0.005 inches and 0.03 inches (column 8 lines 11-17) and extending in a direction from the hosel opening towards the sole (fig’s 2 and 3); and a first heelward tripping structure including an elongated ridge or groove (another item 116, fig’s 3-5, towards the heel side) having a height or depth of between 0.005 inches and 0.03 inches (column 8 lines 11-17) and extending in the direction from the hosel opening towards the sole (fig’s 2 and 3); and a shaft coupled to the golf club head at the hosel opening, the shaft comprising: a tip end inserted into the hosel opening, and an opposite butt end (item 128, fig’s 1-5), [];
(Claim 13) wherein the first heelward tripping structure is spaced apart from the first toeward tripping structure by 70-170 degrees, as measured around a shaft axis of the shaft (fig. 5);
(Claim 14) wherein the first toeward tripping structure is positioned at a shaft-axis angular position of 0-80 degrees measured around a shaft axis of the shaft, wherein the first heelward tripping structure is positioned at a shaft-axis angular position
of 260-340 degrees measured around the shaft axis, and wherein a 0 degree shaft-axis angular position corresponds to a direction forward of the golf club head and perpendicular to a plane defined by the striking face (leftmost two items 116 in fig. 5, toeward item 116 is approximately at 45 degrees, and heelward item 116 is at approximately 315 degrees).
Fenton fails to teach the bending characteristics of claim 9.
Sato teaches (Claim 9) wherein an average bending stiffness of a butt end portion of [a] shaft is greater than 3.70 times an average bending stiffness of a tip end portion of the shaft (fig’s 2 and 3, and Tables 1 and 2, e.g. FW#11 shows tip stiffness of 1.08 and butt stiffness of 6.05, which is over 3.7 times greater, note many other examples in the tables / graphs also meet this limitation);
(Claim 10) wherein the tip end portion extends in a tip-to-butt direction from 150 mm from the tip end to 300 mm from the tip end, and wherein the butt end portion extends in the tip-to-butt direction from 800 mm from the tip end to 950 mm from the tip end (fig’s 2 and 3, and Tables 1 and 2, column 5 lines 7-13 and 23-32, column 3 lines 21-26).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the golf club of Fenton with the feature of the shaft stiffness characteristics of Sato for the purpose of optimizing the whip characteristics of the golf club, achieving an ease in adjusting a timing of a swing of the golf club as taught by Sato (column 1 lines 36-50), making the overall club easier to use, more reliable, and more attractive to the users.
In Reference to Claim 15
The modified device of Fenton teaches all of claim 9 as discussed above.
Fenton further teaches (Claim 15) wherein the golf club head comprises: second and third toeward tripping structures, each located within [x] degrees of the first toeward tripping structure; and second and third heelward tripping structures, each located within [x] degrees of the first heelward tripping structure (an additional two items 116, fig’s 4 and 5).
Fenton fails to teach 30 degree spacing, specifically.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the additional structures at 30 degrees simply as a matter of engineering design choice, since, 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). Since Fenton teaches a plurality of hosel structures that are spaced around the hosel in a variety of spacings (fig’s 2, 3, 4, 5, 6), merely claiming a particular spacing that does not achieve a specific or different result is an obvious matter of engineering design choice, and is not a patentable advance.
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Fenton, Jr. in view of Sato, and further in view of Nakamura (US Patent No. 10,265,592)
In Reference to Claims 11 and 12
The modified device of Fenton teaches all of claim 9 as discussed above.
Fenton fails to teach the features of claims 11 and 12.
Nakamura teaches (Claim 11) wherein the shaft further comprises a pitch-based carbon fiber ply that is at least partially in the tip end portion (item s4, section Ft2, fig. 2; column 8 lines 18-26);
(Claim 12) wherein the pitch-based carbon fiber ply is in only the tip end portion (item s4, section Ft2, fig. 2; column 8 lines 18-26).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the modified aerodynamic golf club of Willett with the feature of providing a pitch-based carbon ply in a tip end reinforced section as taught by the golf club of Nakamura for the purpose of providing improved strength and rigidity distribution, while simultaneously keeping the weight low as taught by Nakamura (column 1 lines 13-21 and 47-52), making the club more durable, more reliable, and easier to use.
Claims 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Willett et al. (2013/0123040 A1) in view of Nakamura (US Patent No. 10,265,592).
In Reference to Claim 16
Willett teaches (Claim 16) A golf club, comprising: a golf club head, comprising: a striking face, the striking face defining a frontmost point of the golf club head (200, fig’s 20-22); a sole extending rearwardly from a bottom side of the striking face (item 300, fig’s 20-22); and a crown extending rearwardly from a top side of the striking face (item 400, fig’s 20-22), wherein an aft slice of the golf club head is a portion of the golf club head rearward of a slice line and between an outer perimeter of the golf club head and an offset perimeter slice curve, wherein the slice line extends in a heel-to-toe direction and is located at a slice depth rearward from the frontmost point, and the offset perimeter slice curve is offset from the outer perimeter of the golf club head by a perimeter offset distance (rear curved portion of clubhead, fig’s 17 and 25, also note there does not appear to be any structure recited here, only a description of a portion of the club), wherein the aft slice has at least one of the following dimensions: a centroid height that is at least [x]% of a height of the golf club head above a ground plane; or a smallest height that is at least [x]% of the height of a geometric center of the striking face above the ground plane (fig’s 20-22, center height of rear curved section is shown to be approximately at the center of the overall height, which would be approximately 50%); [];
(Claim 19) wherein the slice depth is equal to 70% of a front-to-back length of the golf club head and the offset perimeter slice curve is offset from the outer perimeter of the golf club head by 0.5 inches (fig’s 17 and 25, a .5 inch section curve along the back at a line at 70% of the club exists; again, it does not appear there is any structure recited here, only a recitation of a particular portion of the existing club);
(Claim 20) wherein the slice depth is equal to 60% of a front-to-back length of the golf club head and the offset perimeter slice curve is offset from the outer perimeter of the golf club head by 1.0 inches (fig’s 17 and 25, again, a slice with these dimensions exists in the disclosed club, this measurement could be taken, there is no specific structure recited here).
Willett fails to teach the feature of the pitched based carbon ply shaft of claim 16 and the additional features of claims 17 and 18.
Nakamura teaches (Claim 16) a shaft coupled to the golf club head, the shaft comprising: a tip end, an opposite butt end, a reinforced section extending in a tip-to-butt direction from the tip end to 550 mm from the tip end (section Ft2, fig. 2; column 8 lines 18-23 and column 15 lines 14-27), and a first pitch-based carbon fiber ply that is in only the reinforced section (s4, fig. 2; column 8 lines 23-26);
(Claim 17) wherein the shaft further comprises a second pitch-based carbon fiber ply that extends substantially along a full length of the shaft (any of s2, s3, s5, s6, or s7, fig. 2; column 8 lines 23-26);
(Claim 18) wherein the shaft further comprises a second pitch-based carbon fiber ply, wherein [a] first pitch-based carbon fiber ply is a substantially 45 degree ply, and wherein the second pitch-based carbon fiber ply is a substantially negative 45 degree ply (items s2 and s3, fig. 2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the modified aerodynamic golf club of Willett with the feature of providing a pitch-based carbon ply shaft with a tip end reinforced section as taught by the golf club of Nakamura for the purpose of providing improved strength and rigidity distribution, while simultaneously keeping the weight low as taught by Nakamura (column 1 lines 13-21 and 47-52), making the overall finished club more durable, more reliable, and easier to use.
Further, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the first ply at 45 degrees simply as a matter of engineering design choice, since, 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). Since Nakamura teaches the general conditions of a variety of carbon ply layers including a combination of layers at 0 degrees and at positive and negative 45 degree angles, merely claiming a particular layer is at 45 degrees, 0 degrees, or negative 45 degrees is an obvious matter of engineering design choice, and is not a patentable advance.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additionally cited references disclose inventions similar to applicant’s claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH B BALDORI whose telephone number is (571)270-7424. The examiner can normally be reached Monday - Friday 9am to 5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached at 571-272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711
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