DETAILED ACTION
This Office action is responsive to communication received 06/05/2026 – Amendment.
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 1-7, 9-11, and 16-20 remain pending.
Response to Arguments
In the arguments received 06/05/2026, and with respect to the outstanding objections to the drawings, the applicant contends that the method steps outlined in a claim need not always be depicted in a drawing, with the applicant alleging that drawings are not required to understand the subject matter of claims 11-20.
With respect to the outstanding rejection of the claims under 35 U.S.C. §112(b), the applicant argues that the applicant is not required to enumerate the method steps, nor is the applicant required to recite how the claimed structural features are manufactured in a method claim.
With respect to the outstanding rejection of claims 1-5, 11-14 and 17-19 under 35 U.S.C. §102 as being anticipated by USPN 7,303,485 to Tseng, the applicant explains that the limitations of claim 8 have been incorporated into claim 1 and that the limitations of claim 15 have been incorporated into claim 15 and thus overcome the rejection under 35 U.S.C. §102.
With respect to the outstanding rejection of claims 1-7 and 9-10 under 35 U.S.C. §103 as being unpatentable over US PUBS 2018/0028883 to Morin et al in view of USPN 4,523,759 to Igarashi, the applicant explains that the limitations of claim 8 have been incorporated into claim 1 and thus overcome the rejection under 35 U.S.C. §103.
With respect to the rejection of previous claim 8 under 35 U.S.C. §103 as being unpatentable over US PUBS 2018/0028883 to Morin et al in view of USPN 4,523,759 to Igarashi and also in view of USPN 5,184,823 to Desbiolles et al, the applicant contends that Desbiolles only shows a single weight member at element 25 and that regardless of how element 25 is interpreted there is a lack of any second weight member in Desbiolles.
With respect to the rejection of previous claim 15 under 35 U.S.C. §103 as being unpatentable over USPN 7,303,485 to Tseng in view of USPN 5,178,392 to Santioni and also in view of US PUBS 2006/0138199 to Chen, the applicant contends that it would not have been obvious to modify the Tseng device with the further teachings in Chen, as Chen is merely interested in joining two dissimilar metals, whereas the instant invention makes use of pulse welding to allow the golf club head to cool down in between welding passes to prevent excessive heat exposure to the damping element.
Last, the applicant acknowledges the outstanding provisional rejection of claims 1-2, 4-5 and 6-7 under the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/676,398 in view of US PUBS 2018/0028883 to Morin et al, and states that the applicant plans to file a terminal disclaimer to overcome any nonstatutory double patenting rejection, once allowable subject matter has been indicated.
IN RESPONSE:
In view of applicant’s arguments, the prior objection to the drawings relating to a lack of showing of the method steps has been withdrawn.
In view of applicant’s arguments, and in view of the additional amendments made to independent claim 11, the prior rejection of claims 11-20 under 35 U.S.C. §112(b) has been overcome.
In view of the amendments to independent claim 1, the previous rejections under 35 U.S.C. §102 have been overcome.
With respect to the arguments directed against the rejection of claim 8 and the prior art reference to Desbiolles, it is noted that the claims do not distinctly require that the second weight member is separate and distinct from the first weight member. There is nothing that precludes the element 25 in Desbiolles from being considered to include a first weight “member” and a second weight “member”, despite the fact that the drawings appear to show one element. A ”member” is nothing more than a piece or portion or part or segment of a whole. Desbiolles shows a segment or part or piece of element 25 that may be identified as a first weight member and further includes a segment or part or piece of element 25 that may be identified as a second weight member. The weights in Desbiolles include an angled upper surface and wherein the first weight member is located proximate the toe side of the club head and the second weight member is located proximate the heel side of the club head, with portions of each of the first and second weight members having a minimum height proximate the center of the length of the club head in a heel-to-toe direction (i.e., see FIG. 7 and weight 25, along with col. 8, lines 4-14 in Desbiolles). Note the annotated version of FIG. 7 below, which merely illustrates what has already been noted in the outstanding rejection (i.e., see non-final of 03/12/2026, scanned pages 12-13) and stated again hereinabove:
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From the above discussion and annotation of FIG. 7, it is clear that Desbiolles teaches wherein said first weight member is positioned proximate said toe side, wherein said first weight member has an angled upper surface and a maximum height in a sole-to-topline direction at a toewardmost point and a minimum height in said sole-to-topline direction at a heelwardmost point, wherein said second weight member is positioned proximate said heel side, and wherein said second weight member has an angled upper surface and a maximum height in said sole-to-topline direction at a heelwardmost point and a minimum height in said sole-to-topline direction at a toewardmost point.
With respect to the arguments directed against the rejection of claim 8 and the prior art reference to Chen, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). True, Chen uses pulse welding to join dissimilar materials, as outlined in the outstanding rejection and as pointed out by the applicant. However, Chen also takes advantage of the inherent principles associated with pulse welding, namely to minimize a heat effective zone (i.e., see paragraph [0040] in Chen, which specifically outlines the concept of pulse welding for minimizing a heat effective zone). Essentially, pulse welding itself as a manufacturing technique results in heat being substantially contained at the weld site, with the short bursts of high current associated with pulse welding being very controlled, wherein excessive heat does not spread far from the weld location. The skilled artisan, before the effective filing date of the claimed invention, would have found it obvious to have modified the club head in Tseng by taking advantage of welding, as taught by Santioni, and further taking advantage of a known pulse welding technique, as taught by Chen, for securing the plug (18) to the club head to prevent the plug from becoming dislodged during use. While the use of Chen by the skilled artisan would have served to successfully join dissimilar materials, as argued by the applicant, the pulse welding technique disclosed by Chen would also have also provided the advantage of minimizing excessive heat away from the weld zone, which is a natural result of the pulse welding process.
With respect to the applicant’s arguments concerning the provisional double patenting rejection, it would appear that the instant claims, in view of the amendments of 06/05/2026, are presently distinct from the claims of the copending United States Application Serial No. 18/676,398. The applicant is again urged to maintain a clear line of demarcation between the instant claim set and the claims of the other copending applications identified in the non-final Office action of 03/12/2026, namely US Application Serial Nos.: 19/384967; 19/419568; 18/787017; and 18/679007.
FOLLOWING IS AN ACTION ON THE MERITS:
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.
"[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.
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.
I. EXEMPLARY RATIONALES
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(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;
(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 1-7 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2018/0028883 to Morin et al (hereinafter referred to as “Morin”) in view of USPN 4,523,759 to Igarashi and also in view of USPN 5,184,823 to Desboilles et al (hereinafter referred to as “Desboilles”).
As to claim 1, Morin discloses a golf club head (100) comprising: a striking face (118) having a front surface (FIGS. 1A, 1B) configured to strike a golf ball and a rear surface (FIGS. 1A, 1B) opposite said front surface. Note FIG. 4A, which depicts a periphery portion extending rearward from said striking face and including a sole, a topline opposite said sole, a heel side, a toe side opposite said heel side, a back portion (112; FIG. 1A, 1B) extending from said sole to said topline and from said heel side to said toe side and a hosel configured to receive a shaft, with said hosel located on said heel side. Morin shows a cavity (120; FIGS. 1A, 1B) formed between said periphery portion and said striking face; a support pad (i.e., cradle 108) within said cavity (120) attached to said back portion (112); and a damping element (102) positioned between said support pad (108) and said rear surface of said striking face (118).
Morin differs from the claimed invention in that Morin does not explicitly disclose “an aperture extending through said toe side and into said cavity”. Igarashi shows it to be old in the art to provide an opening in a toe side of an iron-type club head. Access to the interior cavity of the club head is clearly facilitated through the use of an opening (i.e., see col. 4, line 57 through col. 5, line 11 in Igarashi). In view of the teaching in Igarashi, 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 club head in Morin by providing an aperture in the toe section to provide access to the interior of the club head.
Morin further differs from the claimed invention in that Morin does not explicitly disclose “a first weight member and a second weight member, wherein said first weight member is positioned proximate said toe side, wherein said first weight member has an angled upper surface and a maximum height in a sole-to-topline direction at a toewardmost point and a minimum height in said sole-to-topline direction at a heelwardmost point, wherein said second weight member is positioned proximate said heel side, and wherein said second weight member has an angled upper surface and a maximum height in said sole-to-topline direction at a heelwardmost point and a minimum height in said sole-to-topline direction at a toewardmost point”. Here, Desboilles shows it to be old in the art to provide a hollow iron-type golf club head with heel and toe weights, wherein the weights include an angled upper surface and wherein a first weight member is located proximate the toe side of the club head and a second weight member is located proximate the heel side of the club head, with portions of each of the first and second weight members having a minimum height proximate the center of the length of the club head in a heel-to-toe direction (i.e., see FIG. 7 and weight 25, along with col. 8, lines 4-14). With the arrangement in Desboilles, a ballast weight is provided to relocate the center of gravity (i.e., col. 1, lines 59-65). In view of the teachings in Desboilles, 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 club head in Morin by introducing a first weight member and a second weight member, wherein said first weight member is positioned proximate said toe side, wherein said first weight member has an angled upper surface and a maximum height in a sole-to-topline direction at a toewardmost point and a minimum height in said sole-to-topline direction at a heelwardmost point, wherein said second weight member is positioned proximate said heel side, and wherein said second weight member has an angled upper surface and a maximum height in said sole-to-topline direction at a heelwardmost point and a minimum height in said sole-to-topline direction at a toewardmost point, with there being a reasonable expectation of success that arranging a first weight member and a second weight member as claimed would have enabled the skilled artisan to concentrate more mass lower on the club head as well as towards the heel and toe ends in order to locate the center of gravity lower on the club head for improved club head performance.
As to claim 2, Igarashi shows it to be obvious to cover the aperture in the toe with a cap (i.e., plate 56; FIGS. 2 and 9). Further, the small opening in the cap itself is covered or sealed with any suitable closure, such as a plug (i.e., col. 5, lines 23-50). In view of the teaching in Igarashi, 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 club head in Morin by including a cap to seal the aperture provided in the toe side in order to provide a more finished, smooth and outward appearance of the golf club head.
As to claim 3, the support pad (i.e., cradle 108) is parallel with said striking face. Here, a surface of the cradle (108) supporting the damping element (102) in Morin is parallel to the striking face (118).
As to claim 4, the support pad (i.e., cradle 108) in Morin includes a raised lip projecting towards said striking face (i.e., see paragraph [0019]).
As to claim 5, said raised lip has an arcuate shape. Morin notes that the cradle includes structure that substantially matches the shape of the rear portion of the elastomer element. With the elastomer element being cylindrical and with the support pad being shaped to contain the elastomer material, the lip of the support pad includes an arcuate shape. Also, see paragraph [0019].
As to claims 6 and 7, see paragraph [0039] in Morin, noting that the elastic modulus of the damping element (102) may be from about 1 GPa to about 50 GPa.
As to claims 9 and 10, Igarashi shows that the aperture or opening in the toe section includes a maximum height in a sole-to-topline direction that is approximately equal to a maximum height of said damping element in said sole-to-topline direction along with a maximum width in a front-to-rear direction that is approximately equal to a maximum width of said damping element in said front-to-rear direction. See FIGS. 2-4 in Igarashi. To have specified that the aperture or opening in the toe section of the modified Morin club head be sized in accordance with the size of the damping element would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention, the motivation being to provide easier access to the damping element and to the remainder of the internal cavity.
Claims 11 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 7,303,485 to Tseng in view of USPN 5,178,392 to Santioni and also in view of US PUBS 2006/0138199 to Chen.
See annotated version of FIG. 1 of Tseng, below:
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As to claim 11, Tseng includes the steps of providing a striking face (17) having a front surface configured to strike a golf ball and a rear surface opposite said front surface; providing a periphery portion extending rearward from said striking face and including a sole, a topline opposite said sole, a heel side, a toe side opposite said heel side, and a back portion extending from said sole to said topline and from said heel side to said toe side, wherein a cavity (11) is formed between said periphery portion and said striking face (17). A hosel is provided and configured to receive a shaft, said hosel located on said heel side. Further, an aperture (14) is provided and extends through said toe side and into said cavity. A damping element (15) is inserted through said aperture into said cavity (i.e., col. 16, lines 16-23). A support pad (annotated FIG. 1, hereinabove) is provided within said cavity and attached to said back portion. The damping element (15) is positioned between said support pad and said rear surface of said striking face (17), as shown in annotated FIG. 1, hereinabove. The aperture (14) is covered with a cap (18).
Tseng differs from the claimed invention in that Tseng does not explicitly disclose a step comprising “pulse welding” insofar as the action taken between the cap and the aperture. Santioni shows it to be old in the art to use welding to secure an end cap to a club head shell to cover an aperture (i.e., col. 4, lines 16-19 and 30-32). The further teaching reference to Chen shows it to be obvious to take advantage of pulse welding in the golf club head art for improving weldability between different metals and for improving the weld strength at the joints (i.e., see paragraph [0002] and [0014] – [0017] in Chen). In view of the combined teachings in Santioni and Chen, 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 club head in Tseng by taking advantage of pulse welding for securing the plug (18) to the club head to prevent the plug from becoming dislodged during use.
As to claim 17, the support pad (annotated FIG. 1 in Tseng) is parallel with said striking face (17).
As to claim 18, note the raised lip highlighted in annotated FIG. 1 of Tseng, above.
As to claim 19, the raised lip in Tseng is arcuate both adjacent portions of the support pad near the heel side and the toe side, as shown in FIG. 1, as well as in a direction extending rearwardly towards the back portion, as shown in FIG. 2 (i.e., the raised lip includes an arcuate portion when viewed in cross-section).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over USPN 7,303,485 to Tseng in view of USPN 5,178,392 to Santioni and also in view of US PUBS 2006/0138199 to Chen and also in view of USPN 7,125,343 to Imamoto.
As to claim 16, Tseng, as modified by Santioni and Chen, does not explicitly disclose an “adhering” step insofar as the action taken between the cap and the aperture. As now amended and as best understood, claim 16 now adds the limitation of “adhering” in addition to the already-employed step of pulse welding the cap over the aperture. Imamoto shows it to be old in the art to attach an end cap to a club head to fixedly place the end cap in position in order to seal an aperture using glue or adhesive (i.e., FIG. 1 and col. 4, lines 6-8). In view of the teaching in Imamoto, 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 club head in Tseng by additionally employing adhesive to adhere the plug (18) to the club head body to prevent the plug from becoming dislodged during use.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over USPN 7,303,485 to Tseng in view of USPN 5,178,392 to Santioni and also in view of US PUBS 2006/0138199 to Chen and also in view of USPN 4,523,759 to Igarashi.
As to claim 20, Tseng, as modified by Santioni and Chen, does not explicitly disclose the method step of “wherein said aperture has a maximum height in a sole-to-topline direction that is approximately equal to a maximum height of said damping element in said sole-to-topline direction, and wherein said aperture has a maximum width in a front-to-rear direction that is approximately equal to a maximum width of said damping element in said front-to-rear direction”. Igarashi shows that the aperture or opening in the toe section includes a maximum height in a sole-to-topline direction that is approximately equal to a maximum height of said damping element in said sole-to-topline direction along with a maximum width in a front-to-rear direction that is approximately equal to a maximum width of said damping element in said front-to-rear direction. See FIGS. 2-4 in Igarashi. To have specified that the aperture or opening in the toe section of the Tseng club head be sized in accordance with the size of the damping element would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention, the motivation being to provide easier access to the damping element and to the remainder of the internal cavity.
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Claim Rejections - 35 USC § 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.
Claim 16 is 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 16, with claim 16 now dependent upon claim 11, which itself has been amended, as a result of the most recent amendment received 06/05/2026, a question is raised as to how the scope of claim 16 is to now be interpreted. Amended claim 11 now calls for “covering said aperture with said cap comprises pulse welding said cap over said aperture”. Amended claim 16 further adds the limitation that covering said aperture with said cap comprises “adhering said cap over said aperture”. The specification at paragraph [0020] discloses that the “cap 136 is then welded or adhered to the periphery portion 101” (emphasis added). As drafted, amended claim 16 adds the further limitation of “adhering said cap” and essentially connotes that the cap is welded and adhered to the aperture. Thus, the scope of the claim is clouded. Note that the claims, prior to amendment, proceeded to claim a first scenario in which the cap is pulse welded over the aperture (i.e., original claim 15, depending on claim 14), along with a distinct second scenario in which the cap is adhered over the aperture (i.e., original claim 16, depending on claim 14, and without the limitations of original claim 15). Clarification is requested.
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Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Specifically, the amendments to each of independent claims 1 and 11 necessitated the new grounds of rejection. 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.
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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.
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711
Prosecution Insights