DETAILED ACTION
This Office action is responsive to communication received 05/24/2024 – application papers received, including power of attorney and IDS; 06/19/2024 – Priority documents.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings were received on 05/24/2024. These drawings are acceptable.
Status of Claims
Claims 1-11 are pending.
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.
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"[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.
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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.
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I. EXEMPLARY RATIONALES
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Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(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;
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(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.
Claims 1, 3, 4, 6, 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2006/0100028 to Kuo in view of USPN 8,435,137 to Hirano.
As to independent claim 1, Kuo discloses a golf club head (1) that is hollow (FIG. 4) and has a volume, the golf club head comprising: a body portion (FIG. 5; element 10”), a face portion (14) including a face surface (11) that is to be a striking surface; a weight member (20) attached to the body portion (10”); and a screw (30) that fastens the weight member (20), wherein the body portion (10”) includes a sole portion, a crown portion, a side portion, and a back portion (i.e., FIG. 4 shows a crown and sole and a back portion identifiable in the usual and customary locations, the weight member (20) is disposed at an outer-surface side of the back portion (i.e., as shown in FIG. 6) and fastened with the screw from an inner-surface side of the back portion (i.e., see FIGS. 3 and 5), and the weight member forms a part of an outer shape of the golf club head (i.e., FIG. 6 shows a completed golf club head, with the weight 20 forming a portion of the overall outer shape of the club head).
Kuo differs from the claimed invention in that Kuo does not explicitly disclose that the volume is “from 400 cc through 460 cc” or that the body portion includes “carbon fiber-reinforced plastic”. Hirano teaches these features that are absent from Kuo, namely a volume for a hollow club head body of between 400 cc and 460 cc in order to increase both the moment of inertia of the club head as well as the center of gravity depth of the club head, which leads to an increase in the carry distance and directional stability of a struck golf ball (i.e., col. 3, lines 1-9). Note that Kuo is similarly concerned with increasing the depth of the center of gravity to improve the hitting efficiency of the club head (i.e., see paragraph [0003] in Kuo). In addition, Hirano teaches that a body portion may include carbon fiber material for improved mass distribution (i.e., col. 4, line 62 through col. 5, line 5; and col. 6, lines 48-57). In view of the teachings in Hirano, 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 Kuo by providing a volume of between 400 cc and 460 cc for enlarging the moment of inertia of the golf club head so as to enhance the ball striking performance of the club head. In view of the teachings in Hirano, 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 Kuo by constructing the body portion from carbon fiber-reinforced plastic material for enhanced weight distribution to thus improve club head performance.
As to claim 3, the face portion (14) and the body portion (10”) in Kuo are separate members. See FIG. 5.
As to claim 4, see two screw holes (22) in the weight member (20), as shown in FIG. 5 in Kuo.
As to claim 6, Kuo lacks an explicit disclosure of “wherein the weight member includes a material having a specific gravity of from 7 through 14, the face portion includes a material having a specific gravity of from 1 through 5, and the body portion includes a material having a specific gravity of from 1 through 2”. In an analogous club head having a face portion, a body portion and a weight member, Hirano details the differences in specific gravity of the materials used in each part of the club head. For instance, in general, see col. 4, lines 62 through col. 5, line 47, wherein Hirano sets forth the specific gravity of the face member (1F) as being not less than 3.0 and not more than 5.0 (i.e., specifically col. 5, lines 6-9); the specific gravity of the body member (1M) as being not less than 1.0 and not more than 3.5 (i.e., specifically col. 5, lines 37-41); and the specific gravity of the weight member (1R) as being not less than 6.0 and not more than 11.5 (i.e., specifically col. 5, lines 19-23). Hirano, within the general passage noted herein, sets forth the rationales for limiting the specific gravity of each of the face member, body member and weight member for reasons such as better castability, ease in increasing the moment of inertia, and sufficient strength of the club head. In view of the teaching in Hirano, 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 Kuo by incorporating materials in the construction of the club head such that the weight member (20) includes a material having a specific gravity of from 7 through 14, the face portion (14) includes a material having a specific gravity of from 1 through 5, and the body portion (10”) includes a material having a specific gravity of from 1 through 2, with there being a reasonable expectation of success that including materials for the face portion, body portion and weight member having specific gravity values within the claimed ranges would have provided for a club head that maximizes the moment of inertia of the club head and relocates the center of gravity club head depth so as to improve the overall performance of the club head.
As to claim 9, Kuo shows a generally curved or u-shaped weight member forming an outer portion of the club head. While one may argue that the weight member in Kuo is not explicitly detailed as forming “a part of an outer surface of the sole portion, the crown portion, and the side portion”, the teaching reference to Hirano teaches attaching a generally curved weight member (1R) to a body portion in a manner that provides for the weight member to form a portion of the outer surface of the crown, the sole and the side portions of the club head. See FIGS. 2, 3, 4(a) and 6 in Hirano. The arrangement of the parts in the club head of Hirano provide the club head body with a semblance of what is typically termed a “wood-type golf club head” (i.e., see col. 2, lines 14-18 in Hirano). The rear member (1R) in Hirano further provides for a complete extension of the backmost portion of the club head and may be adjusted in size, as desired (i.e., col. 4, lines 6-14 in Hirano). Additionally, the shape of the rear member (1R) in Hirano provides ease of manufacturing and enhanced flexibility in the overall design of the club head (i.e., col. 6, lines 37-47 in Hirano). It is again noted that each of Kuo and Hirano are concerned with locating the center of gravity at a greater depth to affect the outcome of a struck golf ball in terms of increased distance and better flight stability so as to enhance the ball striking characteristics of the club head. See col. 3, lines 1-9 in Hirano. See paragraph [0003] in Kuo. In view of the teachings in Hirano and the above reasoning, 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 Kuo by shaping the weight member (20) with a profile that forms an outer surface of the crown, the sole and the side, as such a shape would have complemented the shape of the remainder of the club head and would have provided for a more customary shape of a wood-type club head while still providing for additional weight to be concentrated at a rearmost portion of the club head for added club head performance.
As to claim 11, see FIGS. 4 and 5 in Kuo, which show that the screws (30) follow a face-back direction when viewed in a crown-sole direction (i.e., when viewed from above, the screws 30 extend rearwardly from the face portion towards the weight member).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2006/0100028 to Kuo in view of USPN 8,435,137 to Hirano and also in view of US PUBS 2009/0270199 to Chen.
As to claim 2, Kuo in view of Hirano has been discussed above. Kuo, as modified by Hirano, does not explicitly disclose that the weight member is fastened “adhesively” to the back portion of the club head in combination with the screws. Chen shows a similarly-styled club head having three distinct pieces that are held together both adhesively and with screws (i.e., see paragraphs [0016] and [0018] in Chen). The arrangement in Chen securely fixes all the pieces of the club head together (i.e., see the Abstract in Chen). In view of the teaching in 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 Kuo by supplementing the connections that use screws to further include an adhesive attachment between the weight member and the body portion for added club head integrity, wherein all of the pieces of the club head are securely mated to one another.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2006/0100028 to Kuo in view of USPN 8,435,137 to Hirano and also in view of US PUBS 2013/0324276 to Stites et al (hereinafter referred to as “Stites”).
As to claim 5, Kuo in view of Hirano has been discussed above. Kuo, as modified by Hirano, does not explicitly disclose a “projection” as part of the back portion nor a “recess” as part of the weight member, wherein “the projection and the recess are fitted into each other”. Stites shows it to be old in the art to provide a main body with projections that are fitted within matching apertures or recesses on an adjustable weight member (i.e., paragraph [0062] and FIG. 3). The arrangement in Stites provides a secure engagement between mating club head parts. In view of the teaching in Stites, 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 Kuo by incorporating a combination of a projection and a recess for securing mating the weight member (20) to the main body (10”). Such a modification would have involved the use of a known technique (i.e., the use of a complimentary projection and recess arrangement to secure mating parts of a club head, as taught by Stites) to improve similar devices (i.e., both Stites and Kuo disclose multi-part club heads in which mechanical joining features are used to secure mating parts) in the same way. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2006/0100028 to Kuo in view of USPN 8,435,137 to Hirano and further in view of US PUBS 2023/0190211 to Hsu et al (hereinafter referred to as “Hsu”). Note that the publication to Hsu includes an earlier filing date of December 15, 2022 and relies on a foreign priority date of December 17, 2021.
As to claim 7, Kuo does disclose that the face portion and the weight member include a metal material (i.e., paragraph [0014]). Similarly, Hirano discloses that the face portion and the weight member include metal material (i.e., col. 6, lines 28-42) and further includes a body portion formed of fiber-reinforced plastic material (i.e., col. 6, lines 48-52). However, Kuo, even as modified by Hirano, does not explicitly disclose “a stack of sheets of the carbon fiber-reinforced plastic”. Here, Hsu shows it to be old in the art to construct a main body portion of a golf club head from plural sheets of fiber-reinforced material assembled together to form a unitary club head body (i.e., paragraph [0019]). The use of multiple plies stacked together enables the characteristics of the club head to be selectively altered in terms of stiffness based upon the modulus of elasticity of the various carbon-fiber component plies (i.e., again, paragraph [0019]) and offers the skilled artisan a magnitude of design freedom in selecting and arranging the multiple plies for effectively rearranging the mass distribution of the club head (i.e., paragraph [0032]). As such, the performance requirements of the club head may be changed according to the type of club head produced (i.e., paragraph [0022]). It is further noted that Hsu likewise incorporates metal material within both the face component as well as within a weight member disposed at the rear end of the club head body (i.e., [0023] and [0031]). In view of the teachings in Hsu, 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 Hirano, which in turn is used to modify the club head in Kuo, by utilizing a stack of sheets of carbon fiber-reinforced plastic material for the body portion in order to enable the weight and stiffness requirements of the club head body portion to be more selectively tailored for enhanced club head performance.
As to claim 8, Kuo, as modified by Hirano, lacks “a weight of the weight member is from 25 g through 55 g”. Here, Hsu teaches that a weight located at the rear end of the body portion may include a weight of between 20 g to 70 g (i.e., paragraph [0032]). Hsu teaches that the weight of the weight component may be adjusted to set the center of gravity of the club head at a better position and to increase the moment of inertia of the club head. In view of the teaching in Hsu, 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 Kuo by structuring the weight portion (20) to include a weight of between 25 grams through 55 grams in order provide a high moment of inertia to reduce club head twisting.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2006/0100028 to Kuo in view of USPN 8,435,137 to Hirano and also in view of the combined teachings of US PUBS 2010/0173724 to Stites et al (hereinafter referred to as “Stites”) and Document ID TW-M265079 to Li (hereinafter referred to as “Li”).
As to claim 10, Kuo, as modified by Hirano, lacks an explicit disclosure of “a washer disposed at the inner-surface side of the back portion”. Each of Stites and Li teaches that a washer may be situated between a head of a bolt or screw and a substrate against which the bolt or screw is tightened. A washer, in a mechanical application, is customarily used to ensure tightness between mating parts, distributes the pressure associated with the tightening of the bolt or screw, and facilitates installation and removal of the screw or bolt. See FIGS. 1-2 and scanned page 2, lines 14, 17-18, and 24-27 in Li, which describes the use of a washer between a bolt and a surface of the club head. See FIGS. 13-14 and paragraph [0051] in Stites, which describes the use of a washer to help retain a weight member on a rear portion of a club head. In view of the above reasoning and the combined teachings in Lin and Stites, 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 Kuo by taking advantage of a washer disposed at the inner-surface side of the back portion in order to help securely retain the screw(s) (30) and to make it easier to remove and reinstall the weight portion (20) through the combination of a screw and washer assembly. Such a modification would have involved the use of a known technique (i.e., the use of a washer in a mechanical assembly to facilitate installation and removal of the screw or bolt, as taught by Lin and Stites) to improve similar devices (i.e., each of Lin, Stites and Kuo disclose multi-part club heads in which mechanical joining features are used to secure mating parts) in the same way. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Weight (50) is held in place with pins (110a, 110b) in Fig. 3 in Helmstetter;
Fig. 1 in Kobayashi shows a weight member (12) held in place at a rear of the club head with screws (14);
Fig. 3 in Link shows a weight (4) held in place with a screw (11) from an inner-surface side of the weight;
Fig. 4 in Mattern shows a weight (6) held in place with screws (8);
Yamamoto shows a weight (11) held in place with bolt (7), as shown in Figs. 7-8;
See Fig. 1 in Evans;
See Figs. 5A, 5B in Stites (‘568);
Fig. 9 in Foster shows a weight assembly (65), of interest;
See Fig. 2 in Thielen and member (19) secured with bolts (20);
Alan shows a main body formed from a plurality of sheets of fiber-reinforced material (Fig. 5);
See Figs. 2 and 4 in Dawson;
See Fig. 9 and weight (48) in Burnett; and
See Fig. 3A in Lai.
Conclusion
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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