DETAILED ACTION
This Office action is responsive to communication received 07/23/2026 – Amendment, including an amendment to the claims and to the specification.
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 1-22 remain pending.
Specification
The amendment to the specification received 07/23/2026 has been entered. However, see the further objections to the specification, hereinbelow.
Response to Arguments
In the arguments received 07/23/2026, the applicant contends that the priority application (i.e., U.S. Application No. 17/389,167, filed April 29, 2021) supports the subject matter of claim 1. The applicant argues that the exact terms used in the claims need not necessarily be phrased in the specification. The applicant points to various portions of the disclosure, including paragraphs [0124] and [0307] – [0314], along with FIGS. 36, 37, 45, and 46) to support the argument that the parent ‘167 application supports the claimed subject matter. The applicant requests that the objections to the specification and to the drawings be withdrawn, since clear support for the now-claimed rows and columns is provided by the specification and the drawings.
With respect to the rejection of the claims under 35 U.S.C. §103 as being obvious over US PUBS 2022/0184746 to Greaney et al in view of US PUBS 2015/0196972 to Wohl, JR. et al, the applicant contends that Greaney et al does not qualify as prior art under 35 U.S.C. §102, since Greaney is the publication corresponding to the priority application. The applicant further contends that Wohl, JR. et al is not even concerned with golf club heads.
IN RESPONSE:
While it is acknowledged that the parent ‘167 application provides support for the now-claimed “rows of alternating peaks and valleys” and “columns of alternating peaks and valleys” (i.e., as depicted by the grid array shown in FIGS. 36, 45, and 46), there is no support for the now-claimed language “the depths of the rows and columns of alternating peaks and valleys are greatest at the shared valleys”. While paragraphs [0307] – [0308] of the publication (US PUBS 2022/0184746) corresponding to the parent ‘167 application briefly discuss the ablation pattern depicted in FIG. 36, and while paragraphs discusses [0309] – [0312] of the same publication discuss the valley depth (dv), which is shown in FIG. 37, and additionally while the same publication, with additional reference to FIGS. 46-47, discusses changes in the depth of the valleys between ablated and unablated surfaces, the parent ‘167 application does not clearly provide support for the language “the depths of the rows and columns of alternating peaks and valleys are greatest at the shared valleys”.
In view of the arguments made by the applicant with respect to priority, the effective filing date of amended claims 1-22 remains as the actual filing date of the instant application, namely 05/10/2024. Here, amended independent claim 1 includes subject matter (i.e., “the depths of the rows and columns of alternating peaks and valleys are greatest at the shared valleys”) first introduced into the disclosure via the amendment to the abstract of the disclosure, received 07/23/2026. See MPEP 2152.01. Even if, in arguendo, the applicant is able to argue that the parent ‘167 application provides clear support for the language in claim 1 identified herein, the applicant’s attention is directed to the objections to the specification, hereinbelow.
With respect to the applicant’s arguments concerning the objections to the specification, 37 CFR 1.75(d)(1) is quite explicit in requiring “(1) The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description."
Although the applicant's argument that "a verbatim recitation of every claim term” is not required, the terms and phrases used in claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description. In addition, note the portions of MPEP §608.01(o), emphasized below:
"The meaning of every term used in any of the claims should be apparent from the descriptive
portion of the specification with clear disclosure as to its import; and in mechanical cases, it
should be identified in the descriptive portion of the specification by reference to the
drawing, designating the part or parts therein to which the term applies. A term used in the claims may be given a special meaning in the description. See MPEP § 2111.01 and § 2173.05(a).
Usually, the terminology of the claims present on the filing date of the application follows the nomenclature of the specification, but sometimes in amending the claims or in adding new claims, new terms are introduced that do not appear in the specification. The use of a confusing variety of terms for the same thing should not be permitted.
New claims, including claims first presented after the application filing date where no claims were submitted on filing, and amendments to the claims already in the application should be scrutinized not only for new matter but also for new terminology. While an applicant is not limited to the nomenclature used in the application as filed, he or she should make appropriate amendment of the specification whenever this nomenclature is departed from by amendment of the claims so as to have clear support or antecedent basis in the specification for the new terms appearing in the claims. This is necessary in order to insure certainty in construing the claims in the light of the specification. See 37 CFR 1.75, MPEP § 608.01(i) and § 1302.01 and § 2103. Note that examiners should ensure that the terms and phrases used in claims presented late in prosecution of the application (including claims amended via an examiner's amendment) find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description, see 37 CFR 1.75(d)(1). If the examiner determines that the claims presented late in prosecution do not comply with 37 CFR 1.75(d)(1), applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the terms appearing in the claims provided no new matter is introduced." (emphasis added).
With respect to the applicant’s arguments regarding the rejection of the claims under 35 U.S.C. §103, since it has again been determined that not all of the limitations of amended independent claim 1 find support in the parent ‘167 application, the previously-applied reference to Greaney (US PUBS 2022/0184746) is still applicable as a base reference under 35 U.S.C. §103. Moreover, the teaching reference to Wohl, while not directed towards the bonding of golf club head parts, is nonetheless concerned with “the formation of adhesion promoting surfaces (i.e., surfaces with increased surface energy). Laser ablation patterning for adhesion promotion requires that the laser parameters be adjusted to transcribe topographical features within geometric constraints” (i.e., see paragraph [0024] in Wohl) along with “[T]he laser ablation patterning method is rapid, scalable, environmentally benign, precise, and can be performed directly on a wide variety of materials. The resultant articles of manufacture have surfaces that can be utilized for adhesive bonding…” (i.e., see paragraph [0028] in Wohl).
Specification - Objections
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). No new matter is to be added. Correction of the following is required:
The specification lacks proper antecedent basis for the following terms / phrases:
The phrases “rows of alternating peaks and valleys” and “columns of alternating peaks and valleys” lack proper antecedent basis in the specification.
Claim 1: “wherein each one of the rows of alternating peaks and valleys shares a valley with each one of the columns of alternating peaks and valleys” and “the depths of the rows and columns of alternating peaks and valleys are greatest at the shared valleys”.
Claim 2: “wherein the depths of the rows and columns of alternating peaks and valleys at the shared valleys are at least 1.5 times the depths of the rows and columns of alternating peaks and valleys where valleys are not shared”.
Again, as noted hereinabove, appropriate amendment(s) to the descriptive portions of the specification is necessary when the original nomenclature used in the originally-filed disclosure is departed from by amendment of the claims so as to have clear support or antecedent basis in the specification for the new terms appearing in the claims. See 37 CFR 1.75, MPEP § 608.01(i) and § 1302.01 and § 2103.
Response to Amendment
The amendment filed 07/23/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
The amended abstract of the disclosure states: “[T]he depths of the rows and columns of alternating peaks and valleys are greatest at valleys shared by the rows and columns of alternating peaks and valleys”. This language is deemed to be new matter. Applicant is required to cancel the new matter in the reply to this Office Action.
FOLLOWING IS AN ACTION ON THE MERITS:
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The following language identified in each of amended claims 1 and 2 was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1: “the depths of the rows and columns of alternating peaks and valleys are greatest at the shared valleys”;
Claim 2: “wherein the depths of the rows and columns of alternating peaks and valleys at the shared valleys are at least 1.5 times the depths of the rows and columns of alternating peaks and valleys where valleys are not shared”.
As to claims 3-22, these claims share the deficiency under 35 U.S.C. §112(a) of claim 1.
Claim Rejections - 35 U.S.C. § 112(b)
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 1-22 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.
As to claim 1, lines 22-23, it is not understood how “the depths of the rows and columns of alternating peaks and valleys are greatest at the shared valleys”. A more definitive recitation of the location(s) of the rows and columns and associated peaks and valleys must be included in order to understand where exactly the “shared valleys” are located.
As to claim 2, lines 3 and 5, how is one to interpret the language “shared valleys” with respect to “valleys are not shared”? Where exactly are the shared valleys located and which locations represent the valleys not shared?
As to claims 3-22, these claims share the indefiniteness of claim 1.
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.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. In Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009), the Federal Circuit offered additional instruction as to the need for an explicit analysis. The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.
PNG
media_image1.png
18
19
media_image1.png
Greyscale
"[T]he analysis that "should be made explicit" refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis. . . . Under the flexible inquiry set forth by the Supreme Court, the district court therefore erred by failing to take account of 'the inferences and creative steps,' or even routine steps, that an inventor would employ and by failing to find a motivation to combine related pieces from the prior art." Ball Aerosol, 555 F.3d at 993, 89 USPQ2d at 1877.
PNG
media_image1.png
18
19
media_image1.png
Greyscale
The Federal Circuit’s directive in Ball Aerosol was addressed to a lower court, but it applies to Office personnel as well. When setting forth a rejection, Office personnel are to continue to make appropriate findings of fact as explained in MPEP § 2141 and § 2143, and must provide a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art at the time of the invention. This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.
PNG
media_image1.png
18
19
media_image1.png
Greyscale
I. EXEMPLARY RATIONALES
PNG
media_image1.png
18
19
media_image1.png
Greyscale
Exemplary rationales that may support a conclusion of obviousness include:
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(A) Combining prior art elements according to known methods to yield predictable results;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(B) Simple substitution of one known element for another to obtain predictable results;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
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 1-22 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2022/0184746 to Greaney et al (hereinafter referred to as “Greaney”) in view of US PUBS 2015/0196972 to Wohl, JR. et al (hereinafter referred to as “Wohl”).
Initially, it is once again noted that, in view of the observations hereinabove with respect to priority, the effective filing date of claims 1-22 has been established to be equal to the actual filing date of the instant application, namely 05/10/2024. Here, amended independent claim 1 includes subject matter first introduced into the disclosure via the abstract of the instant application. See MPEP 2152.01.
As to independent claim 1, Greaney shows every feature claimed with the exception of “the depths of the rows and columns of alternating peaks and valleys are greatest at the shared valleys”. Wohl teaches that the ablation depth “will depend on the spacing of topographical features, the dimensions of the features and the rigidity of the ablated material” (i.e., see paragraph [0025]). Thus, Wohl is essentially emphasizing that the depth is a result-effective variable. Wohl also teaches that laser ablation patterning may result in multiple first parallel lines transcribed in a surface of a substrate, with other second parallel lines transcribed in the surface, with at least some of the second parallel lines being oriented perpendicular to the first parallel lines, and thus essentially teaches first and second paths that are either intersecting and/or not intersecting (i.e., see paragraph [0031]). Given the teachings in Wohl, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the device in Greaney by incorporating the feature that “the depths of the rows and columns of alternating peaks and valleys are greatest at the shared valleys”, with there being a reasonable expectation of success that the patterning provided to the ablated surface would have promoted enhanced adhesion between the first-part bonding surface and the second-part ablated bonding surface. As to remaining limitations in claim 1, see paragraphs [0017], [0294] and [0307] – [0314] in Greaney and selectively detailing a first part bonding surface, a second part made of metallic material, adhesive bonding and a pattern of peaks and valleys.
As to claim 2, Greaney does not explicitly disclose “the depths of the rows and columns of alternating peaks and valleys, at the shared valleys, are at least 1.5 times the depths of the rows and columns of alternating peaks and valleys where valleys are not shared”. Wohl teaches that the ablation depth “will depend on the spacing of topographical features, the dimensions of the features and the rigidity of the ablated material” (i.e., see paragraph [0025]). Thus, Wohl is essentially emphasizing that the depth is a result-effective variable. Given the teachings in Wohl, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the device in Greaney by incorporating the feature “the depths of the rows and columns of alternating peaks and valleys, at the shared valleys, are at least 1.5 times the depths of the rows and columns of alternating peaks and valleys where valleys are not shared”, with there being a reasonable expectation of success that the patterning provided to the ablated surface would have promoted enhanced adhesion between the first-part bonding surface and the second-part ablated bonding surface. Here, the specific distinction between the depth at locations where valleys are shared vs. the depth at locations where valleys are not shared would have been attainable through an “obvious to try approach”. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). See MPEP 2144.05.
As to claim 3, the depth of each one of the rows and columns of alternating peaks and valleys varies between, and inclusive of, 5 micrometers and 100 micrometers. Greaney discloses the claimed range (i.e., paragraph [0296] in Greaney).
As to claim 4, the depth of each one of the rows and columns of alternating peaks and valleys varies between, and inclusive of, 20 micrometers and 50 micrometers. Initially, Greaney discloses the claimed range (i.e., paragraph [0296] in Greaney).
As to claim 5, see FIGS. 45-46 in Greaney.
As to claim 6, see FIGS. 45-46 in Greaney.
As to claim 7, Greaney teaches uniform spacing (i.e., paragraph [0310] – [0311]).
As to claim 8, again, Greaney teaches uniform spacing (i.e., paragraph [0310] – [0311]).
As to claim 9, see FIGS. 45-46 in Greaney.
As to claim 10, see FIGS. 36 and 45-46 in Greaney.
As to claim 11, each one of the valleys of the second-part ablation pattern has a second-part-valley major dimension and a second-part-valley minor dimension; and at least one of the second-part-valley major dimension or the second-part-valley minor dimension of any one of the valleys of the second-part ablation pattern is within 20% of a corresponding at least one of the second-part-valley major dimension or the second-part-valley minor dimension of all other ones of the valleys of the second-part ablation pattern (i.e., see paragraph [0025] in Greaney).
As to claim 12, the second-part-valley major dimension is greater than the second-part-valley minor dimension, such that each one of the valleys of the second-part ablation pattern has an oval shape (i.e., see FIG. 46 and paragraph [0309]).
As to claim 13, the second-part ablated bonding surface is non-planar (i.e., see paragraphs [0007], [0010] and [0019] in Greaney).
As to claim 14, the second-part-valley major dimension is between, and inclusive of, 40 micrometers and 80 micrometers. (i.e., see paragraph [0310] in Greaney).
As to claim 15, a distance from a center point of any given one of the valleys of the second-part ablation pattern to any adjacent one of the valleys of the second-part ablation pattern is between, and inclusive of, 80% and 200% of the second-part-valley major dimension of the given one of the valleys (i.e., see paragraph [0310]) in Greaney).
As to claim 16, see FIGS. 45-46 in Greaney.
As to claim 17, a maximum depth of any one of the valleys of the second-part ablation pattern is within 20% of the maximum depth of all other ones of the valleys of the second-part ablation pattern (i.e., see paragraph [0311] in Greaney).
As to claim 18, the second part comprises an opening; and the second-part ablated bonding surface at least partially surrounds the opening (i.e., see paragraphs [0008] and [0050] and claims 3 and 5 in Greaney.
As to claim 19, the golf club head is a fairway-type golf club head or a hybrid-type golf club; and the metallic material of the second part is a steel alloy (i.e., paragraphs [0123] and [0271])
As to claim 20, the golf club head is a fairway-type golf club head or a hybrid-type golf club head; and the metallic material of the second part is a titanium alloy. (i.e., paragraphs [0123] and [0271])
As to claim 21, the golf club head is a driver-type golf club head; and the metallic material of the second part is a titanium alloy (i.e., see paragraphs [0016], [0123], [0271] and claim 17 of Greaney).
As to claim 22, the golf club head is a driver-type golf club head; and the metallic material of the second part is an aluminum alloy (i.e., see paragraphs [0123] and [0271]).
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
See paragraphs [0021] – [0022] in Caldwell discussing a roughened bonding surface area to promote better adhesion between mating club head parts.
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 SEBASTIANO PASSANITI whose telephone number is (571)272-4413. The examiner can normally be reached 9:00AM-5:00PM Mon-Fri.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at (571)-270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711
