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 .
Status of Claims
Claims 1-5, 7-11, 13-18, and 20 are pending in the application. Claims 1 and 11 are currently amended. Claims 13, 16, and 20 are currently amended to change their dependency. Claims 6, 12, and 19 are cancelled.
Information Disclosure Statement
The information disclosure statements submitted on May 1, 2024 and November 24, 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered.
Response to Amendment
The amendment filed August 19, 2026 has been entered.
Claim 1 was amended to recite that the groove of the first golf club head includes a width, that the groove of the second golf club head includes a width, and that the width of the groove of the second golf club head is greater than the width of the groove of the first golf club head.
Claim 11 was amended to incorporate the groove-sidewall, bottom-wall, edge, symmetry, and curved-edge limitations previously recited in dependent claims and to further recite that the edge radius of the first golf club head groove is less than the edge radius of the second golf club head groove.
Claims 13 and 16 were amended to depend from claim 11. Claim 20 was amended to depend from claim 11. Claims 6, 12, and 19 were cancelled.
The prior rejection of claim 1 under 35 U.S.C. § 102(a)(1) based on Ueda et al. (US 20190282862 A1, “Ueda '862”) is not maintained in the same form because the newly added groove-width relationship is not disclosed by Ueda '862. The prior rejection of claim 11 under 35 U.S.C. § 102(a)(1) based on Ueda '862 is likewise not maintained in the same form because amended claim 11 now includes the additional edge-radius relationship.
The amendments necessitated consideration of the newly claimed groove-width and edge-radius relationships. The new grounds below apply Ines et al. (US 9370699 B1, “Ines”) to those newly added limitations and retain the previously applied references and reasoning where they remain applicable.
Claim Rejections - 35 USC § 102
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 1 is rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Ines (US 9370699 B1).
Regarding claim 1, Ines teaches a set of iron golf clubs with the conventional iron-head structure recited in the claim. Ines states that “FIG. 1 illustrates one embodiment of a set of iron golf clubs 100” and that golf club head 200 “includes a hosel 210 connected to a body portion 220.” Ines further teaches that the hosel is located on the heel side opposite the toe side and is configured to receive a shaft, that the head includes a sole on its lower surface and a topline at its top, and that the body portion includes a striking face configured to strike a golf ball (col. 5, lines 42-59; Figs. 1-4). Figures 2-4 show the body extending rearward from the striking face. Ines also identifies the outer surface 280 of striking face 270 (col. 5, lines 55-59; col. 6, lines 4-30), corresponding to the claimed front surface.
Ines further teaches that loft increases through the set from the long irons to the short irons, with long irons having loft angles greater than or equal to 15 degrees and less than 26 degrees and short irons having loft angles greater than or equal to 37 degrees and less than 47 degrees (col. 5, lines 60-65; col. 6, lines 1-3). Thus, a disclosed long iron satisfies the claimed first golf club head having a loft angle less than or equal to 28 degrees, and a disclosed short iron satisfies the claimed second golf club head having a loft angle greater than 28 degrees.
Ines teaches grooves formed in the striking face and extending heel-to-toe. The reference explains that iron clubs include grooves running across the striking face “from the heel towards the toe” (col. 1, lines 20-24) and further discloses a plurality of grooves 300 in the striking face 270 (col. 6, lines 4-8; Fig. 4).
Ines teaches the claimed cross-sectional groove structure and expressly teaches that groove geometry may differ between clubs. Each groove can include two walls 310 and a base 320, has a width W and depth D, and can include a fillet having radius R at the intersection of a wall and the outer striking-face surface (col. 6, lines 7-30; Fig. 5). Ines further teaches that progressive groove geometry is used through a set and that one or more groove parameters may vary between clubs (col. 6, lines 32-45; col. 7, lines 3-8).
Ines expressly teaches the newly claimed width progression. Ines states that “the groove width W of the long irons is less than the groove width W of the short irons” and discloses long-iron groove widths between 0.01 inch and 0.03 inch and short-iron groove widths between 0.03 inch and 0.037 inch (col. 8, lines 47-63). Ines claim 10 likewise recites a long-iron groove width less than a short-iron groove width. Selecting the disclosed long iron as the first golf club head and the disclosed short iron as the second golf club head therefore yields a first groove width less than the second groove width, exactly as now claimed. The different widths also establish different groove cross-sectional profiles. Accordingly, Ines discloses every limitation of claim 1 arranged as required by the claim. See Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987); MPEP § 2131.
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 2 and 7-9 are rejected under 35 U.S.C. § 103 as being unpatentable over Ines in view of Ueda et al. (US 20190282862 A1, “Ueda '862”).
Regarding claim 2, Ines teaches the subject matter of claim 1 as set forth above and further teaches grooves having two walls and a base, with a radius at the transition between a groove wall and the striking-face surface (col. 6, lines 7-25; Fig. 5). Ines does not expressly state that the groove walls of both selected clubs are symmetrical about the claimed longitudinal plane.
Ueda '862 teaches that “the face groove 8 has a groove bottom 8a and a pair of groove walls 8b” ([0069]) and that “[t]he corners between the respective groove walls 8b and the clubface 3 are chamfered by a circular arc in the cross section” ([0071]). Ueda '862 also expressly teaches that “[t]he groove walls 8b of each face groove are symmetrical about the widthwise center line GC of the face groove 8” ([0069]). The widthwise center line GC is perpendicular to the clubface and equidistant from the groove walls, corresponding under the broadest reasonable interpretation to the claimed longitudinal plane.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to apply Ueda '862's known symmetric groove-wall configuration to the progressive-width grooves of Ines because both references concern iron-type golf-club face grooves used to control ball-groove engagement and spin, and Ueda '862 expressly identifies symmetry about the groove center line as a conventional groove configuration. The artisan could have used that known symmetric configuration in Ines without changing Ines's expressly taught long-iron/short-iron width progression; each groove wall, bottom, and edge would perform the same function and the resulting symmetric groove geometry would have been predictable. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-18, 82 USPQ2d 1385, 1395-96 (2007); MPEP § 2143(I)(D).
Regarding claim 7, the combination of Ines and Ueda '862 teaches the subject matter of claim 2 as set forth above. Ueda '862 additionally teaches the claimed depth relationship because its low-number clubs have groove depth D equal to 0.30 mm and its high-number clubs have groove depth D equal to 0.43 mm (Table 8). Ueda '862 expressly states that “the depth of the face grooves of the above-said at least one 2nd golf club is greater than the depth of the face grooves of the above-said at least one 1st golf club” ([0020]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to use Ueda '862's loft-dependent depth progression in the progressive-groove set of Ines because Ines expressly teaches that width, depth, edge radius, pitch, and draft angle are groove-geometry variables that affect spin and that one or more such parameters may vary between clubs (col. 7, lines 3-8; col. 8, lines 64-65; col. 9, lines 1-5). Ueda '862 supplies a known depth progression directed to the same spin-control problem. Applying that known technique while retaining Ines's width progression would predictably provide the claimed higher-loft/greater-depth relationship and permit simultaneous tuning of two known groove parameters. See KSR; MPEP § 2143(I)(D).
Regarding claim 8, the combination of Ines and Ueda '862 teaches the subject matter of claim 7. Ueda '862 teaches a low-number club groove depth D of 0.30 mm. Converting to inches, 0.30 mm divided by 25.4 mm per inch equals approximately 0.01181 inch, which falls within the claimed range of 0.010 inch to 0.016 inch (Table 8).
It would have been obvious to a person of ordinary skill in the art before the effective filing date, for the reasons stated for claim 7, to use Ueda '862's expressly disclosed 0.30-mm low-loft groove depth in the Ines set. The specific disclosed value already lies within the claimed range, and use of that known value for the same groove-depth/spin function would have yielded the predictable result taught by Ueda '862. See In re Peterson, 315 F.3d 1325, 1329-30, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003); MPEP §§ 2143(I)(D), 2144.05.
Regarding claim 9, the combination of Ines and Ueda '862 teaches the subject matter of claim 7. Ueda '862 teaches a high-number club groove depth D of 0.43 mm. Converting to inches, 0.43 mm divided by 25.4 mm per inch equals approximately 0.01693 inch, which falls within the claimed range of 0.015 inch to 0.020 inch (Table 8).
It would have been obvious to a person of ordinary skill in the art before the effective filing date, for the reasons stated for claim 7, to use Ueda '862's expressly disclosed 0.43-mm high-loft groove depth in the Ines set. That known value lies within the claimed range and performs the same known depth/spin function with a predictable result. See In re Peterson; MPEP §§ 2143(I)(D), 2144.05.
Claims 3-5 and 10 are rejected under 35 U.S.C. § 103 as being unpatentable over Ines in view of Ueda '862 as applied to claim 2 above, and further in view of Ueda et al. (US 20180311540 A1, “Ueda '540”).
Regarding claim 3, the combination of Ines and Ueda '862 teaches the subject matter of claim 2 as set forth above. However, that combination does not expressly teach the claimed relationship in which the wall angle of the higher-lofted second club is less than the wall angle of the lower-lofted first club.
Ueda '540 teaches that the inclination angle B of the groove walls is “in a range from 28 to 42 degrees” for a lower-loft group and “in a range from 23 to 37 degrees” for a higher-loft group, with the higher-loft angle selected to be smaller than that of the lower-loft group ([0082]-[0083]). Ueda '540 explains that the wall-angle progression is selected to obtain a positive catch angle and strong ball-groove engagement for backspin control ([0084]-[0102]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to further modify the Ines/Ueda '862 progressive-groove set to incorporate Ueda '540's loft-dependent wall-angle progression because Ines, Ueda '862, and Ueda '540 all address control of spin through golf-club groove geometry, and Ueda '540 provides a known wall-angle technique for that same purpose. The prior art contains the claimed groove structure and the known wall-angle progression; the artisan could have combined those known elements without changing their respective functions, and the predictable result is a progressive-groove set in which width, depth, symmetry, and wall angle are selected by loft for spin control. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980); KSR; MPEP §§ 2143(I)(A), 2144.06(I).
Regarding claim 4, the combination of Ines, Ueda '862, and Ueda '540 teaches the subject matter of claim 3. Ueda '540 teaches a first-club wall inclination angle B “in a range from 28 to 42 degrees” ([0082]). The claimed first-club wall-angle range of 24 degrees to 32 degrees overlaps Ueda '540's range from 28 degrees to 32 degrees.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to select a first-club wall angle within the overlapping 28-degree to 32-degree region because Ueda '540 recognizes wall inclination angle as affecting catch angle and backspin and expressly identifies values in that region as workable. The variable was therefore result-effective, and selecting a value within the overlapping known and claimed ranges would have been routine optimization with a reasonable expectation of obtaining the same predictable spin-control function. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); In re Peterson; MPEP § 2144.05.
Regarding claim 5, the combination of Ines, Ueda '862, and Ueda '540 teaches the subject matter of claim 3. Ueda '540 teaches a higher-loft second-club wall inclination angle B “in a range from 23 to 37 degrees” and smaller than that of the lower-loft first club ([0083]). The claimed range of 16 degrees to 24 degrees overlaps Ueda '540's second-club range at 23 degrees to 24 degrees. Ueda '540 further teaches wall angles as low as 20 degrees for still-higher-loft clubs ([0083]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to select a second-club wall angle of 23 degrees to 24 degrees because those values are expressly within Ueda '540's known second-club range and also fall within the claimed range. Ueda '540 ties wall angle to catch angle and spin, making wall angle a result-effective variable, and routine selection within the disclosed overlapping range would have had a reasonable expectation of predictable backspin performance. See In re Aller; In re Peterson; MPEP § 2144.05.
Regarding claim 10, the combination of Ines, Ueda '862, and Ueda '540 teaches the subject matter of claim 3. Ueda '862 further teaches the claimed depth relationship because the low-number clubs have groove depth D equal to 0.30 mm and the high-number clubs have groove depth D equal to 0.43 mm (Table 8), with the higher-lofted club therefore having greater groove depth.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to retain Ueda '862's known loft-dependent depth progression while also applying Ueda '540's known loft-dependent wall-angle progression to the Ines set because depth and wall angle are distinct, known groove parameters used for the same spin-control objective. Each parameter would perform its ordinary function, and co-varying those known groove parameters by loft would have predictably provided spin tuning through the set. See In re Kerkhoven; KSR; MPEP §§ 2143(I)(A), 2144.06(I).
Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable over Ines in view of Ueda '862.
Regarding claim 11, Ines teaches the same basic iron-club structure identified for claim 1 and teaches a long iron with loft from 15 degrees to less than 26 degrees and a short iron with loft from 37 degrees to less than 47 degrees (col. 5, lines 60-65; col. 6, lines 1-3), thereby satisfying the claimed first club at or below 31 degrees and second club above 31 degrees. Ines teaches progressive groove geometry and expressly states that one or more groove parameters may vary between clubs (col. 6, lines 32-45; col. 7, lines 3-8). Ines further teaches that each groove can include two walls and a base, a width and depth, and a fillet radius at the intersection of a wall and the outer striking-face surface (col. 6, lines 7-30; Fig. 5). Thus, Ines teaches the claimed sidewall, bottom-wall, curved-edge, and edge-radius structures.
Ines does not expressly state the claimed symmetry about the longitudinal plane. Ueda '862 supplies that limitation by teaching a groove bottom 8a, a pair of groove walls 8b, circularly chamfered groove-wall/clubface corners, and groove walls “symmetrical about the widthwise center line GC” ([0069]; [0071]), as discussed above for claim 2.
The remaining difference is the direction of the claimed edge-radius progression. Ines expressly recognizes edge radius as a spin-affecting groove variable: “a small edge radius R results in higher spin than a large edge radius R” (col. 7, lines 48-52). Ines also teaches that edge radius may vary through the set (col. 7, lines 52-60). Although one disclosed embodiment uses a larger edge radius in the long irons than in the short irons, Ines expressly teaches multiple player-dependent spin objectives and, importantly, identifies a player who may prefer more spin in the long irons and less spin in the short irons to avoid ballooning (col. 6, lines 52-63). Ines therefore discloses both the design objective and the known directional relationship between edge radius and spin.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to configure the lower-loft long iron with a smaller edge radius and the higher-loft short iron with a larger edge radius when implementing Ines's expressly identified “more spin in the long irons / less spin in the short irons” player profile, because Ines itself teaches that smaller radius produces higher spin and larger radius produces lower spin. Edge radius is thus expressly recognized as a result-effective variable for spin. The artisan faced a finite and predictable adjustment-decreasing radius where increased spin was desired and increasing radius where decreased spin was desired-and would have had a reasonable expectation of achieving the stated player-specific spin objective. Applying Ueda '862's known symmetric groove configuration would not alter this radius/spin relationship. The claimed radius direction therefore represents predictable optimization of a known groove parameter to achieve an expressly identified result, not hindsight reconstruction. See KSR; In re Applied Materials, Inc., 692 F.3d 1289, 1297, 104 USPQ2d 1203, 1207 (Fed. Cir. 2012); MPEP §§ 2143(I)(E), 2144.05(II).
Claims 13-15 are rejected under 35 U.S.C. § 103 as being unpatentable over Ines in view of Ueda '862 as applied to claim 11 above, and further in view of Ueda '540.
Regarding claim 13, the combination of Ines and Ueda '862 teaches claim 11 as set forth above but does not expressly teach that the wall angle of the higher-loft second club is less than the wall angle of the lower-loft first club.
Ueda '540 teaches that the groove-wall inclination angle B of a lower-loft group is “in a range from 28 to 42 degrees” and that the inclination angle B of a higher-loft group is “in a range from 23 to 37 degrees” and smaller than that of the lower-loft group ([0082]-[0083]). Ueda '540 further explains the catch-angle basis for this loft-dependent relationship ([0084]-[0102]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to add Ueda '540's known loft-dependent wall-angle progression to the Ines/Ueda '862 set because the references address the same class of iron-club groove structures and the same spin-control problem. The prior art contains the claimed elements, the wall-angle technique was known to be applicable to loft-differentiated clubs, and applying it would have predictably retained the functions of the groove width, depth, symmetry, edge radius, and wall angle while permitting spin to be tuned through the set. See In re Kerkhoven; KSR; MPEP §§ 2143(I)(A), 2144.06(I).
Regarding claim 14, the combination of Ines, Ueda '862, and Ueda '540 teaches the subject matter of claim 13. Ueda '540 teaches a first-club wall inclination angle B in a range from 28 degrees to 42 degrees ([0082]) and further teaches preferred values from 30 degrees to 40 degrees ([0111]) and more-preferred values from 32 degrees to 38 degrees ([0116]). Those disclosed ranges overlap and lie within the claimed range of 30 degrees to 45 degrees.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to select a first-club wall angle in the overlapping 30-degree to 42-degree region because Ueda '540 expressly recognizes wall angle as affecting catch angle and backspin. The claimed range encompasses Ueda '540's preferred values, and selecting a known value within that overlapping range constitutes routine optimization of a recognized result-effective variable with a reasonable expectation of predictable spin behavior. See In re Aller; In re Peterson; MPEP § 2144.05.
Regarding claim 15, the combination of Ines, Ueda '862, and Ueda '540 teaches the subject matter of claim 13. Ueda '540 teaches a higher-loft second-club wall inclination angle B in a range from 23 degrees to 37 degrees and smaller than that of the lower-loft first club ([0083]). The claimed second-club range of 16 degrees to 24 degrees overlaps Ueda '540's range at 23 degrees to 24 degrees. Ueda '540 additionally teaches wall angles down to 20 degrees in a still-higher-loft group ([0083]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to select a second-club wall angle of 23 degrees to 24 degrees because those values are expressly disclosed by Ueda '540 and fall within the claimed range. Ueda '540 identifies wall angle as a result-effective parameter for catch angle and backspin, so selection within the overlapping region would have been routine optimization with a reasonable expectation of the known spin-control result. See In re Aller; In re Peterson; MPEP § 2144.05.
Claims 16-18 are rejected under 35 U.S.C. § 103 as being unpatentable over Ines in view of Ueda '862.
Regarding claim 16, the combination of Ines and Ueda '862 teaches claim 11 as set forth above. Ueda '862 Table 8 discloses a lower-loft club depth of 0.30 mm and a higher-loft club depth of 0.38 mm or 0.43 mm. Ueda '862 also expressly teaches that the groove depth of the second golf club is greater than the groove depth of the first golf club ([0020]; [0035]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to use Ueda '862's known loft-dependent groove-depth progression in the Ines progressive-groove set because Ines expressly recognizes depth as a spin-affecting groove parameter and permits multiple groove parameters to vary through a set, while Ueda '862 supplies a known greater-depth/higher-loft technique directed to the same spin-control problem. Applying that technique would predictably produce the claimed depth relationship without altering the edge-radius relationship established for claim 11. See KSR; MPEP § 2143(I)(D).
Regarding claim 17, the combination of Ines and Ueda '862 teaches the subject matter of claim 16. Ueda '862's middle-number clubs include a 28-degree club having groove depth D equal to 0.38 mm. Converting to inches, 0.38 mm equals approximately 0.01496 inch, which falls within the claimed first-club range of 0.012 inch to 0.019 inch (Table 8).
It would have been obvious to a person of ordinary skill in the art before the effective filing date, for the reasons stated for claim 16, to use the expressly disclosed 0.38-mm depth for a first club at or below 31 degrees. The value already lies within the claimed range and performs the same known depth/spin function with a predictable result. See In re Peterson; MPEP §§ 2143(I)(D), 2144.05.
Regarding claim 18, the combination of Ines and Ueda '862 teaches the subject matter of claim 16. Ueda '862's high-number clubs, all above 31 degrees, have groove depth D equal to 0.43 mm. Converting to inches, 0.43 mm equals approximately 0.01693 inch, which falls within the claimed second-club range of 0.015 inch to 0.020 inch (Table 8).
It would have been obvious to a person of ordinary skill in the art before the effective filing date, for the reasons stated for claim 16, to use the expressly disclosed 0.43-mm depth for the higher-loft second club. The value lies within the claimed range and would predictably perform the same known depth/spin function. See In re Peterson; MPEP §§ 2143(I)(D), 2144.05.
Claim 20 is rejected under 35 U.S.C. § 103 as being unpatentable over Ines in view of Ueda '862 as applied to claim 11 above, and further in view of Cackett et al. (US 20110165963 A1, “Cackett”).
Regarding claim 20, the combination of Ines and Ueda '862 teaches claim 11, including the obviousness of selecting a smaller edge radius for the lower-loft first club and a larger edge radius for the higher-loft second club to implement Ines's expressly identified “more spin in long irons / less spin in short irons” profile. Ines also teaches that edge radius can range from effectively sharp to approximately 0.020 inch and that edge radius directly affects spin (col. 7, lines 48-60).
Cackett discloses an iron-type golf club head having face grooves with “an edge radius ranging from 0.004 inch to 0.009 inch” (Abstract; [0045]). That known range overlaps the claimed first-club range of 0.0025 inch to 0.0075 inch at 0.004 inch to 0.0075 inch and overlaps the claimed second-club range of 0.005 inch to 0.010 inch at 0.005 inch to 0.009 inch. Thus, for example, known edge-radius values within the art permit selection of a first-club radius smaller than a second-club radius while simultaneously satisfying both claimed numerical ranges.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to select edge-radius values within the overlapping Cackett ranges while following Ines's known radius-to-spin relationship because Ines expressly establishes edge radius as a result-effective variable and expressly identifies the spin objective that calls for a smaller radius in the lower-loft club and a larger radius in the higher-loft club. Cackett establishes that values across both claimed ranges were known workable golf-groove radii. Selecting, from those known values, a smaller first-club radius within 0.0025-0.0075 inch and a larger second-club radius within 0.005-0.010 inch would therefore have been routine optimization of a recognized result-effective variable with a reasonable expectation of predictable spin behavior. See In re Aller; In re Applied Materials, Inc.; MPEP § 2144.05.
Response to Arguments
Applicant's arguments, see page 9 of the remarks filed August 19, 2026, particularly the paragraphs beginning “In an effort to advance prosecution, Applicant has amended claim 1 ... “ and “The rejection under 35 U.S.C. §102 of independent claim 1 ... ,” with respect to the rejection of claim 1 under 35 U.S.C. § 102(a)(1) have been fully considered and are persuasive. Therefore, the previous rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of Ines (US 9370699 B1).
Applicant correctly identifies that Ueda '862 Table 8 uses groove widths that decrease as loft increases and therefore does not disclose the newly added limitation that the width of the second, higher-loft groove is greater than the width of the first, lower-loft groove. The prior § 102 rejection of amended claim 1 based on Ueda '862 is therefore not maintained. Ines, however, expressly teaches the opposite width progression now claimed: long-iron groove width less than short-iron groove width, including 0.01-0.03 inch for long irons and 0.03-0.037 inch for short irons (col. 8, lines 47-63). The new § 102(a)(1) rejection of claim 1 is therefore based on Ines, not on the challenged width teaching of Ueda '862.
Applicant's arguments, see pages 9-10 of the remarks filed August 19, 2026, particularly the paragraphs beginning “In an effort to advance prosecution, Applicant has amended claim 11 ... “ and “The rejection under 35 U.S.C. §102 of independent claim 11 ... “ with respect to the rejection of claim 11 under 35 U.S.C. § 102(a)(1) have been fully considered and are persuasive. Therefore, the previous rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of Ines in combination with Ueda '862.
The prior § 102 rejection of claim 11 did not address the edge-radius relationship newly incorporated into claim 11 and is therefore not maintained. Applicant also states that Jertson's identified higher-loft embodiments use smaller edge radii. The present rejection of claim 11 does not rely on Jertson. Instead, Ines expressly recognizes a player profile in which more spin is desired in the long irons and less spin is desired in the short irons (col. 6, lines 52-63), and Ines expressly teaches that smaller edge radius produces higher spin while larger edge radius produces lower spin (col. 7, lines 48-52). The current rejection therefore rests on Ines's own disclosed performance objective and result-effective radius/spin relationship, together with Ueda '862 for the expressly recited symmetric groove structure.
Applicant's arguments filed August 19, 2026 have been fully considered but they are not persuasive with respect to claims 2-5, 7-10, 13-18, and 20. Applicant states generally that these dependent claims are patentable by virtue of their dependence from claims 1 or 11 and because they add further limitations. That argument does not identify a separate error in the treatment of the dependent limitations. As set forth above, claim 1 is rejected on a new ground based on Ines, claim 11 is rejected on a new ground based on Ines in view of Ueda '862, and each additional limitation of claims 2-5, 7-10, 13-18, and 20 is separately addressed by the applied prior art. Accordingly, the generalized dependency argument does not overcome the rejections.
No separate response is made to arguments directed solely to claims 6, 12, or 19 because those claims have been cancelled.
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.
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ANDREW JAMES ELLIOTT
Examiner
Art Unit 3711
/ANDREW JAMES ELLIOTT/Examiner, Art Unit 3711
/EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711
