DETAILED ACTION
Status
Claims 19-20 are pending. Claims 1-18 remain withdrawn. Claim 19 is amended.
Response to Arguments
First, Applicant argues Schaube does not disclose directly laminating the elastomer layer onto either the plastics carrier layer or the plastics outer layer.
Examiner respectfully disagrees. As described in P[0157] of Schaube, “the plastic composite component 10 is subjected to another cross-linking treatment, for example with UV light. The at least one elastomer layer 14 cross-links with the synthetic resin of the plastics outer layer 12 and the plastics carrier layer 16. The plastics outer layer 12, the plastics carrier layer 16 and the elastomer layer or elastomer layers 12 are then bonded to one another in a non-detachable manner.” Therein, the elastomer layer 14 is directly laminated onto both of the carrier layer 16 and the outer layer 12.
Applicant additionally argues Obeshaw does not disclose directly laminating any of the portions onto one another before the mandrel winding step. In response, Examiner notes the claim as written does not require any specific order of the method steps. As such, Applicant’s argument is unpersuasive.
Second, Applicant argues since Obeshaw does not teach a second precursor comprising unvulcanized rubber, Obeshaw cannot teach a step of heat-treating the laminate wound on the outer peripheral surface of the mandrel to simultaneously obtain a first member containing a fiber reinforced plastic by thermally curing the resin of the first precursor and obtain a second member containing a rubber material by vulcanizing the unvulcanized rubber of the second precursor.
Examiner respectfully disagrees. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Furthermore, as laid out in the rejection of record Schaube teaches the materials and Obeshaw teaches some of the process steps that Schaube does not teach. In the end, the combination of Schaube and Obeshaw teach the manufacturing method claimed.
Third, Applicant argues the process of Schaube and Obeshaw are incompatible and a PHOSITA would not have been motivated to combine the two fundamentally different processes of Schaube and Obeshaw without using impermissible hindsight.
In response to Applicant’s assertion that the composite component of Schaube is incompatible with the mandrel winding technique of Obeshaw, Applicant has provided no evidence or fact based rational to support such an assertion. Applicant’s arguments do not take the place of factual evidence. Since Applicant has not provided any factual evidence, such as an affidavit or declaration, to support these assertions, the assertions constitute mere argument.
Furthermore, in combination, by utilizing the mandrel processing steps taught by Obeshaw to the sheet-like first and second members of Schaube, the shaft can be formed using a process dedicated to producing hollow tubular structures which is more cost effective, simpler, and faster, which is just a few benefit of the combination realized by the teachings of Obeshaw. Therein, Schaube’s material would in fact be able to maintain operation as intended and be compatible with the mandrel process of Obeshaw, contrary to Applicant’s assertion. Regarding Applicant’s argument that there is not suggestion to combine the two process without using impermissible hindsight, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). The KSR rationale for applying a known technique (mandrel winding of Obeshaw) to a known device (composite component of Schaube) ready for improvement to yield the predictable result was cited at page 7, in the rejection of record.
In addition, in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Fourth, Applicant argues that in replacing Schaube’s mold-based process with a mandrel winding process the elastomer layer of Schaube would also have to be replaced with the intermediate layer of Obeshaw, which does not teach vulcanized rubber. Further, Applicant argues the notion of selectively adopting only the mandrel – which is technically difficult to apply to autoclave or hot press heat treatment using a mold -- while retaining the vulcanized rubber is classic hindsight reasoning and would not have been reached by a PHOSITA.
In response to Applicant’s assertion that the elastomer layer of Schaube would also have to be replaced with the intermediate layer of Obeshaw, Applicant has provided no evidence or fact based rational to support such an assertion. Applicant’s arguments do not take the place of factual evidence. Since Applicant has not provided any factual evidence, such as an affidavit or declaration, to support these assertions, the assertions constitute mere argument. Examiner notes, the neither Schaube or Obeshaw explicitly discredit or otherwise discourage the proposed modification. Again in response to Applicant’s improper hindsight argument, the combination/modification proposed takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure. As such, the rejections are maintained.
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.
Claim(s) 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schaube et al. (US 20180208302) in view of Obeshaw (US 20020006523), hereinafter: “Schaube” and “Obeshaw”, respectively.
In Regard to Claim 19
Schaube teaches:
A method for manufacturing a golf club shaft(intended use), the method comprising:
a step of providing a first precursor(12 and/or 16; Fig 6) being an uncured or semi-cured material in which a fiber is impregnated with a resin(P[0103]);
a step of directly laminating a second precursor(14; Fig 6) containing an unvulcanized rubber(P[0157]), wherein the first member and the second member are sheet-like(12 is a “fiber mat”, P[0099]; 16 is an “organic sheet”, P[0070]; 14 includes a “woven fabric or knitted fabric”, P[0071])
a step of heat-treating the laminate to simultaneously obtain a first member(cured/hard layer 10,16 – P[0009]) containing a fiber reinforced plastic by thermally curing the resin of the first precursor(P[0009], P[0047, P[0072], P[0157]) and obtain a second member(vulcanized layer 14) containing a rubber material by vulcanizing the unvulcanized rubber of the second precursor(P[0009], P[0014]-[0016]), and integrating the first member and the second member to obtain a wound composite material(P[0009], P[00157]);
Schaube fails to teach:
a step of winding the obtained laminate on an outer peripheral surface of a mandrel;
a step of heat-treating the laminate wound on the outer peripheral surface of the mandrel
a step of withdrawing the mandrel from the wound composite material.
Obeshaw teaches:
A method of forming a similar tubular structural member(2) wherein inner and outer uncured composite layers(4,8; P[0018-0023] along with an intermediate rubber layer(6,12; P[0029], P[0045]) are wound on an outer peripheral surface of a mandrel(20; P[0046]-P[0049]), heat-treated(P[0055], P[0064]) and then the mandrel is withdrawn from the wound composite material(P[0013], P[0065-0067], also see “Example 2”).
Both Schaube and Obeshaw teach known methods for manufacturing tubular shafts. Schaube teaches a method for forming a laminate of fiber reinforced plastic and rubber into a tubular shaft, but does not teach the step of winding the laminate on a mandrel, heat treating the laminate while on the mandrel and then removing the mandrel. Obeshaw teaches a similar method for forming a laminate of fiber reinforced plastic and rubber into a tubular shaft. Obeshaw specifically teaches the step of winding the laminate on a mandrel, heat treating the laminate while on the mandrel and then removing the mandrel. Thus, it would have been obvious to one or ordinary skill in the art before the effective filing date of the claimed invention, to apply the technique of winding the laminate on a mandrel, heat treating the laminate while on the mandrel and then removing the mandrel as taught in Obeshaw, to improve the plastic composite component of Schaube for the predictable result of providing a substrate (mandrel) having sufficient strength, desired shape, and be able to withstand the processing conditions for making the tubular structural member. See KSR; MPEP 2141 III D.
In Regard to Claim 20
Schaube in view of Obeshaw teaches:
The method for manufacturing a golf club shaft according to claim 19(see rejection of claim 19 above), wherein the second precursor containing an unvulcanized rubber blended with a vulcanizer is directly laminated onto the provided first precursor without interposing an adhesive member(the second precursor is directly laminated onto the first precursor without an intermediate adhesive member since there is no mention or suggestion of providing such an adhesive member in P[0009], P[0014]-[0016], P[0157]; Fig 5-6).
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 BRIAN P WOLCOTT whose telephone number is (571)272-9837. The examiner can normally be reached M-F 8:00am-4:30pm.
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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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/BRIAN P WOLCOTT/Primary Examiner, Art Unit 3711
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