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 .
Response to Amendment
The amendments filed 07/15/2026 have been entered. Claims 1-8 and 10-17 remain pending in the application. Applicant’s amendments to the claims have overcome every 112(d) rejection previously set forth in the Non-Final Office Action mailed 04/20/2026.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-5, 8, 10-14, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Best.
Regarding claim 1, Best discloses a set of golf club heads (Fig. 3) with a first golf club head that, when oriented in a reference position, comprises a hollow-type golf club head (Fig. 3, 4 iron) and has a first loft, L1, between 18° and 25° (Table 2, men’s 4i, 23°); and
a second golf club head that, when oriented in a reference position, comprises a cavity-back golf club head (Fig. 3, 9 iron) and has a second loft, L2, between 40° and 50° (Table 2, men’s 9i, 41°);
wherein each golf club head of the set of golf club heads comprises a center of gravity and a moment of inertia, Izz (Col. 6, lines 39-60. Iyy), about a virtual vertical axis passing through the center of gravity. The applicant has defined their moment of inertia Izz about a virtual vertical axis passing through the center of gravity (paragraph 4) and the examiner is reading the claims in light of the specification so that the examiner is interpreting the Iyy of Best to be comparable to applicant’s Izz.
Best does not disclose wherein the first golf club head has a first moment of inertia, Izz(1), and the second golf club head has a second moment of inertia, Izz(2), such that a difference between Izz(1) and Izz(2) is no greater that 102 g·cm2. The clubs disclosed have an Izz difference of 120 g·cm2 (Table 3). However, 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. See in re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), MPEP 2144.05. Best discusses how dimensions alter the center of gravity location and the moments of inertia, making the long irons easier to hit while maintaining the distance of the resulting golf shot (Col 6, lines 36-38). Thus, it would have been obvious to a person of ordinary skill in the art to provide the clubs of Best with the claimed moment of inertia difference as a matter of obtaining optimum ranges via routine optimization.
Regarding claim 10, Best discloses a set of golf club heads (Fig. 3) that a first golf club head that, when oriented in a reference position, comprises a hollow-type golf club head (Fig. 3, 5 iron) and has a first loft, L1, no greater than 25° (Table 2, men’s 4i, 23°); and
a second golf club head that, when oriented in a reference position, comprises a cavity-back golf club head (Fig. 3, 8 iron) and has a second loft, L2, no less than 40° (Table 2, men’s 9i, 41°);
wherein each golf club head of the set of golf club heads comprises a center of gravity and a moment of inertia, Izz (Col. 6, lines 39-60. Iyy), about a virtual vertical axis passing through the center of gravity, and wherein the standard deviation of all the moments of inertia of the golf club heads of the set is no greater than 100 g·cm2 (Table 3).
Best does not disclose wherein the first golf club head has a first moment of inertia, Izz(1), and the second golf club head has a second moment of inertia, Izz(2), such that a difference between Izz(1) and Izz(2) is no greater that 102 g·cm2. The clubs disclosed have an Izz difference of 120 g·cm2 (Table 3). However, where the g3eneral conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See in re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), MPEP 2144.05. Best discusses how dimensions alter the center of gravity location and the moments of inertia, making the long irons easier to hit wh8ile maintaining the distance of the resulting golf shot (Col 6, lines 36-38). Thus, it would have been obvious to a person of ordinary skill in the art to provide the clubs of Best with the claimed moment of inertia difference as a matter of obtaining optimum ranges via routine optimization.
Regarding claims 2 and 11, modified Best further discloses the standard deviation is no greater than 80 g·cm2 (Table 3).
Regarding claims 3 and 12, modified Best further discloses the standard deviation is no greater than 75 g·cm2 (Table 3).
Regarding claims 4 and 13, modified Best further discloses the moment of inertia of the first golf club head, Izz(1), is no less than 2500 g*cm2 (Table 3, 4i, 2540); and the moment of inertia of the second golf club head, Izz(2), is no less than 2500 g*cm2 (Table 3, 9i, 2610);.
Regarding claims 5 and 14, modified Best further discloses the moment of inertia of the first golf club head, Izz(1), is between 2525g·cm2 and 2800g·cm2 (Table 3, 4i, 2570); and the moment of inertia of the second golf club head, Izz(2), is between 2525g·cm2 and 2800g·cm2 (Table 3, 9i, 2660).
Regarding claims 8 and 17, modified Best further discloses that the first club head further comprises a first striking face (Fig. 1, 12) and a first center of gravity (Table 3) spaced rearwardly from the first striking face by a distance Dcg1 (Table 3, CGz, Col. 6, lines 38-59) that satisfies the following: Dcg1 ≥ -0.0648mm/°*L1 + 7.6mm; and
the second club head further comprises a second striking face (Fig. 1, 12) and a second center of gravity (Table 3) spaced rearwardly from the second striking face by a distance Dcg2 (Table 3, CGz, Col. 6, lines 38-59) that satisfies the following: Dcg2 ≥ -0.0648mm/°*L2 + 7.6mm.
For the first club, the men’s 4 iron of Best has a Dcg1=CGz=0.49 inches (12.4 mm) and a L1=23°. Thus, once the numbers are plugged in, the equation is satisfied as 12.4>6.1.
For the second club, the men’s 9 iron of Best has a Dcg2=CGz=0.49 inches (12.4 mm) and a L1=41°. Thus, once the numbers are plugged in, the equation is satisfied as 12.4>4.9. The examiner notes Best's CGz is the coordinate along the defined Z axis based on the origin point being at the leading edge (striking face) of the club and is considered comparable to Dcg as defined by Applicant."
Claims 6 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Best in view of Reed.
Regarding claims 6 and 15, modified Best discloses all the limitations of claim 1 and 10. Best does not disclose that the first golf club head and the second golf club head each comprise a head mass no greater than about 300g. Reed, in the analogous golf club head art, discloses a hollow 5 iron (Fig. 3, Col. 3 lines 20-22) and a cavity back 8 iron (Fig. 4, Col. 3 lines 24-26), both of which have a head mass no greater than 300g (Fig. 5). Thus, it would be obvious to a person having ordinary skill in the art at the time of filing to make the golf club heads of modified Best no more than 300g to minimize the swing weight, keeping the club agile and preventing player fatigue during a game.
Claims 7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Best in view of Park.
Regarding claims 7 and 16, modified Best discloses all the limitations of claim 1 and 10. Best further discloses that the first golf club head further comprises a top portion (Fig. 1, 32), a sole portion (Fig. 1, 20), a striking wall (Fig. 1, 10), and a rear portion (Fig. 1, 30) that form a substantially enclosed interior cavity (Fig. 1, 40). However, modified Best does not disclose that the interior cavity includes at least one stiffening element secured to at least one of the sole portion and the top portion.
Park, in an analogous art, discloses a golf club head with an interior cavity (Fig. 14, 265) that includes a stiffening element (Fig. 14, 260) to improve the club head’s acoustic properties when hitting the ball (Col. 6, lines 20-25). Thus, it would be obvious to a person having ordinary skill in the art at the time of filing to include a stiffening element to the golf club heads of Best in order to have favorable acoustic characteristics at ball impact for more pleasing vibrational frequencies/gameplay.
Response to Arguments
Applicant’s arguments with respect to claims 1 and 10 have been considered but are mostly moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The new loft range requirements are covered by Best’s 4 iron and 9 iron, respectively. See prior art rejection.
Applicant's arguments regarding the difference in moment of intertia (Iyy) have been fully considered but they are not persuasive. While applicant is correct that Best’s clubs (4i and 9i) fall outside the claimed difference range, this limitation alone is not enough to warrant novelty or patentability. Applicant does not claim any significance the specification regarding “difference” in moments of inertia, besides the standard deviation being less than 100g*cm2, (Para. 0004), which was covered in the previous OA by Best. Thus, there appears no significance to the claimed MOI difference of 102 g*cm2, besides it being slightly outside of Best’s claimed MOIs. The MOI represents a known, result effective variable in the golf club art that influences sweet spot and forgiveness/ease of use of an iron. As such, it would be obvious to POSITA to adjust ranges/MOI differences to achieve the desired characteristics of the club. See claims 1/10 rejection supra regarding optimization of ranges.
Conclusion
THIS ACTION IS MADE FINAL. 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 SAMANTHA M BERRY whose telephone number is (571)272-0925. The examiner can normally be reached M-F: 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached at (571) 272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.M.B./ Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711
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