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 Objections
Applicant is advised that should claim 3 be found allowable, claim 20 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 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. Claims 1, 13, and 20, the back face should be defined in the claim. The specification provides two different locations for the back face [0030].
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-6, 8, 10, 11, and 20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Woodward et al. (2023/0390617). Claim 1, Woodward discloses an iron golf club head comprising a main body defining a hollow, the main body including a toe, a heel, a face, a back face, a top, and a sole (figs 4-5). A weight (150) disposed within the hollow, the weight including a weight front, weight back, weight top, weight bottom, weight first side, and a weight second side, wherein a perimeter of the weight is defined by the weight top, weight first side, weight bottom, and weight second side (figs 6 and 8). The weight (150) is welded to the main body [0066]. The weight is disposed at an offset from the sole defining a first gap (Ds) between the weight and the sole and at an offset from the face defining a second gap (DSF) between the weight and the face (fig 6). Claim 2, the weight (150) is welded to the main body around greater than 90 degrees of the perimeter of the weight but less than 270 degrees of the perimeter of the weight. The weight (150) can be attached to one or more internal surfaces including the heel end and top satisfying the perimeter attachment between 90 and 270 degrees [0066] (fig 8 - items 170 connected on the toe side and top). Claim 3, the weight (150) is welded to the main body along a portion of the weight first side, along the weight top, and along a portion of the weight second side, wherein the weight first side is disposed proximate the toe, the weight top is disposed proximate the top, and the weight second side is disposed proximate the heel (fig 8 - items 170 connected at least on the toe side and top). The weight (150) can be attached to one or more internal surfaces including the heel side and top [0066]. Claim 4, the weight is welded to the main body along at least a portion of the weight back, wherein the weight back is disposed proximate the back face (mass pad 130) [0066]. Claim 5, the back face comprises a hollow back-side wall partially defining the hollow, the hollow back-side wall comprising a recess (fig 5). The recess is located behind weight (150). Claim 6, the weight (150) is disposed at least partially within the recess (fig 5). Claim 8, the main body comprises steel [0069]. Claim 10, the first gap (Ds) is capable of allowing the sole to flex without contacting the weight. Claim 11, the second gap (DSF) is capable of allowing the face to deflect without contacting the weight. Claim 20, Woodward discloses an iron golf club head comprising a main body defining a hollow, the main body including a toe, a heel, a face, a back face, a top, and a sole (figs 4-5). A weight (150) disposed within the hollow, the weight including a weight front, weight back, weight top, weight bottom, weight first side, and a weight second side, wherein a perimeter of the weight is defined by the weight top, weight first side, weight bottom, and weight second side (figs 6 and 8). The weight (150) is welded to the main body along a portion of the weight first side, along the weight top, and along a portion of the weight second side, wherein the weight first side is disposed proximate the toe, the weight top is disposed proximate the top, and the weight second side is disposed proximate the heel (fig 8 - items 170 connected at least on the toe side and top). The weight (150) can be attached to one or more internal surfaces including the heel side and top [0066]. The weight is disposed at an offset from the sole defining a first gap (Ds) between the weight and the sole and at an offset from the face defining a second gap (DSF) between the weight and the face (fig 6).
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.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Woodward et al. (2023/0390617). Woodward discloses the weight may be from 10 to 30 grams [0071]. Increasing the weight to approximately 46 grams is within the capabilities of one skilled in the art for the desired weight of the club head. 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).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Woodward et al. (2023/0390617) in view of Woodward et al. (2022/0233924). Woodward discloses the club head has a front and back (fig 5) but does not disclose welding. Woodward ‘924 teaches front and back sections of a club head welded together [0049]. One of ordinary skill in the art would have modified the connection type to welding for a more secure club head.
Claim(s) 7 and 13-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Woodward et al. (2023/0390617) in view of Jertson et al. (2019/0176001). Claim 7, Woodward discloses the weight may be made from tungsten or tungsten alloy [0070]. Tungsten combined with nickel is not disclosed. Jertson teaches a detachable weight/mass made from tungsten and nickel [0076]. One of ordinary skill in the art would modify the material for the desired club head weight. Claim 13, Woodward discloses an iron golf club head comprising a main body defining a hollow, the main body including a toe, a heel, a face, a back face, a top, and a sole (figs 4-5). A weight (150) disposed within the hollow, the weight including a weight front, weight back, weight top, weight bottom, weight first side, and a weight second side, wherein a perimeter of the weight is defined by the weight top, weight first side, weight bottom, and weight second side (figs 6 and 8). The weight (150) is welded to the main body around greater than 90 degrees of the perimeter of the weight but less than 270 degrees of the perimeter of the weight. The weight (150) can be attached to one or more internal surfaces including the heel end and top satisfying the perimeter attachment between 90 and 270 degrees [0066] (fig 8 - items 170 connected on the toe side and top). The weight (150) is disposed at an offset from the sole defining a first gap (Ds) between the weight and the sole and at an offset from the face defining a second gap (DSF) between the weight and the face (fig 6). Woodward discloses the weight may be made from tungsten or tungsten alloy [0070]. Tungsten and nickel are not disclosed. Jertson teaches a detachable weight/mass made from tungsten and nickel [0076]. One of ordinary skill in the art would modify the material for the desired club head weight. Claim 14, the weight (150) is welded to the main body along a portion of the weight first side, along the weight top, and along a portion of the weight second side, wherein the weight first side is disposed proximate the toe, the weight top is disposed proximate the top, and the weight second side is disposed proximate the heel (fig 8 - items 170 connected at least on the toe side and top). The weight (150) can be attached to one or more internal surfaces including the heel side and top [0066]. Claim 15, Woodward discloses the weight is welded to the main body along at least a portion of the weight back, wherein the weight back is disposed proximate the back face (mass pad 130) [0066]. Claim 16, Woodward discloses the back face comprises a hollow back-side wall partially defining the hollow, the hollow back-side wall comprising a recess (fig 5). The recess is located behind weight (150). Claim 17, Woodward discloses the weight (150) is disposed at least partially within the recess (fig 5). Claim 18, the first gap (Ds) is capable of allowing the sole to flex without contacting the weight. Claim 19, the second gap (DSF) is capable of allowing the face to deflect without contacting the weight. One of ordinary skill in the art would modify the material for the desired club head weight.
Conclusion
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/RAEANN GORDEN/Primary Examiner, Art Unit 3711
January 22, 2023