DETAILED ACTION
This Office action is responsive to the following communication received:
06/03/2024 – application papers received, including IDS, power of attorney and Certification and Request for Prioritized Examination Under 37 CFR 1.102(e);
10/08/2024 – Response to Notice to File Corrected Application Papers, including replacement drawings; and
01/06/2026 – Petition to Make Special Based on Age.
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 .
Continuation Data
This application is a CIP of 18/230,357 08/04/2023 ABN.
Decisions on Petitions
The petition for a request for prioritized examination (Track I) has been DISMISSED. See the decision, mailed 11/01/2024.
The petition to make special based upon applicant’s age has been GRANTED. See the decision, mailed 01/06/2026.
Status of Claims
Claims 1-20 are pending.
Priority
Claims 1-20 are accorded an effective filing date of 06/03/2024, which is the actual filing date of the instant application. Here, the limitations recited in each of independent claims 1 and 11, and including “a first layer comprising a Damascus steel and a second layer comprising a bulk-solidifying amorphous alloy” in combination with “and wherein the Damascus Steel comprises a plurality of layers of at least a first material and a second material; and wherein the second layer is formed in a geometric shape comprising one of a honeycomb structure, an X shaped band, a plus shaped band, a circular bullseye shape, and a wire mesh” are only first supported under 35 U.S.C. §112(a) in the instant CIP application.
Drawings
The replacement drawings (FIGS. 1-24) were received on 10/08/2024. The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the geometric shape of “a plus shaped band” and “a wire mesh” (claims 1 and 17) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections - Minor
Claims 2, 4 and 10 are objected to because of the following informalities:
As to claim 2, line 1, after “area”, the term --of-- should be inserted.
As to claim 4, line 1, “Stainless” should read --stainless--.
As to claim 10, after “comprises”, the term --a-- should be inserted.
Appropriate correction is required.
FOLLOWING IS AN ACTION ON THE MERITS:
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.
Claims 1-20 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 7-8, the phrases “a plus shaped band” and “a wire mesh” are not clearly understood. There is no way to ascertain the scope of the claim when considered in light of the specification, given the fact that the specification contains only a very briefly mention of these phrases. Also, in line 15, what exactly is meant by “other areas of the face”. Is this referring to any one particular area of the face that does not include the sweet spot? Or, does this phrase apply to all areas of the face other than the sweet spot?
As to claims 2-4, these claims share the indefiniteness of claim 1.
As to claim 5, line 1, “first layer is towards the shell” is confusing. Is the applicant attempting to describe that the first layer is located away from the face and closer to the shell of the body than the second layer, and the second layer forms a hitting surface on the face?
As to claim 6, lines 1-2, what exactly is meant by “the other areas of the face”. Is this referring to any one area or all areas of the face?
As to claim 7, the “golf club” has not heretofore been recited or included as an element. Is the applicant attempting to claim the golf club head with a golf club? Typically, a “golf club” comprises a golf club head, a shaft and a grip. The applicant is asked to consider if it would be more accurate to recite –wherein the golf club head is attached to a shaft, and wherein the shaft is attached to a grip, and wherein the combination of the golf club head, the shaft and the grip forms a golf club--.
As to claim 8, line 1, after “wherein”, the phrase --a variation in thickness from-- should be inserted for completeness.
As to claims 9-11, these claims share the indefiniteness of claim 1.
As to claim 12, lines 2-3, “from rest of the face” should initially read --from a rest of the face--. Notwithstanding this proposed change, it is not clear exactly what portion of the face is the “rest of the face”. Clarification is requested.
As to claim 13, lines 1-2, the phrase “the Damascus steel has at least 2 times yield strength of that of a material used for the shell” should be drafted as --the Damascus steel has a yield strength 2 times a yield strength of a material used for the shell-- simply to improve the readability of the claim. Notwithstanding this proposed change, the claim must still clarify if the “material for the shell” is referring to any or all of the “first material” and “second material” already recited in claim 1, or if “material for the shell” is referring to a different material.
As to claims 14-16, these claims share the indefiniteness of claim 1.
As to claim 17, line 2, it is suggested that the phrase “casting a shell” read --casting a shell for an iron type golf club head and--, and it is further suggested that line 20 simply be deleted. At present, it is not exactly clear how the “configured for manufacturing” phrase in line 20 is to be interpreted. The suggested change clearly sets forth the process step involved in manufacturing process. Also, in line 9, the phrases “a plus shaped band” and “a wire mesh” are not clearly understood. There is no way to ascertain the scope of the claim when considered in light of the specification, given the fact that the specification contains only a very briefly mention of these phrases. Also, in line 11, what exactly is meant by “other areas of the face”. Is this referring to any one particular area of the face that does not include the sweet spot? Or, does this phrase apply to all areas of the face other than the sweet spot?
As to claims 18-20, these claims share the indefiniteness of claim 17.
The Office has made every effort to identify all remaining instances of indefiniteness in the current claim set. To the extent that any remaining occurrences of indefiniteness may exist in the claims, the applicant is respectfully asked to thoroughly review the claims and to amend the claims to capture and to correct any remaining instances of indefiniteness of which the applicant may become aware of during the preparation of a response to this Office action.
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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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, 5, 7, 8, 10 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Byrne (US PUBS 2006/0089208) in view of Fisher (USPN 5,209,473) and also in view of Jarbelius (US PUBS 2021/0207250) and also in view of Tavares (US PUBS 2007/0178988).
As to independent claims 1 and 17, Byrne discloses a golf club head (FIGS. 7, 8) comprising: a body comprising a shell and a face; the shell comprising a hosel, a first periphery, and a back made of a non-layered material (i.e., Byrne makes reference to, and incorporates in its entirety, USPN 6,348,015, which discloses that the face and the main body may be cast from a single piece of metal material and is thus considered to be a “non-layered material”; see col. 4, lines 12-16 in the ‘015 patent); the face comprising a Damascus Steel comprising a plurality of layers of at least a first material and a second material (i.e., see paragraph [0023] in Byrne, noting that at least two different types of metal may be used); the face comprising a second periphery, wherein the second periphery of the face is attached to the first periphery of the shell (i.e., Byrne makes reference to and incorporates in its entirety, USPN 6,348,015, which teaches that the striking face may be attached to the main body via a welding operation, wherein a periphery of the striking face is attached to a periphery of the club head body, as shown in FIG. 2 of the ‘015 patent); wherein the first periphery is attached along a boundary connecting a heel edge, a crown edge, a toe edge, and a sole edge of the second periphery (i.e., again, reference is made to FIG. 2 of the USPN 6,348,015, incorporated by reference in its entirety by Byrne); wherein a first thickness of a sweet spot of the face is greater than a second thickness of other areas of the face (i.e., note FIG. 7 of USPN 6,338,683, incorporated by reference in its entirety by Byrne, and showing a first thickness (T2) coinciding with the sweet spot and a reduced thickness (T1) at portions outside the sweet spot); wherein the face comprises a decorative pattern formed from the Damascus Steel (i.e., see FIG. 9 and paragraph [0028] in Byrne); wherein the golf club head is an iron type golf club head (i.e., see FIGS. 7-8 and paragraph [0027] in Byrne).
Byrne does not explicitly disclose “and a cavity formed behind the face and within the body, the cavity extending rearward from the face to the back of the shell”. Fisher teaches that iron-type club heads essentially fall within two categories, including “muscle-back” and “cavity-back”, with each presenting unique advantages. The “cavity-back” design provides the advantage of perimeter weighting and a larger sweet spot and is thus more forgiving (i.e., col. 1, lines 50-64 in Fisher). In view of the patent to Fisher, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the device in Byrne by designing the iron club head as a “cavity-back” iron-type club head, which would have included a cavity formed behind the face and within the body, the cavity extending rearward from the face to the back of the shell, the motivation being to provide an iron-type club head that takes advantage of perimeter weighting and is more forgiving during off-center shots.
Byrne does not explicitly disclose “wherein a hardness of the face comprising the Damascus Steel on a Rockwell scale is at least 45 HRC”. Jarbelius teaches that a hardness of 57 on a Rockwell scale is sufficient for a Damascus patterned article to provide adequate corrosion resistance, hardness, toughness and wear resistance (i.e., see paragraph [0007] and claim 8 of Jarbelius). In view of the publication to Jarbelius, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the device in Byrne by using Damascus Steel, wherein a hardness of the face comprises Damascus Steel on a Rockwell scale is at least 45 HRC, the motivation being to provide a more durable striking face that is able to withstand the natural elements and stand up to wear and tear due to repeated impacts with a golf ball. More specific to claim 20, Byrne discloses rolling and forging operations as part of the method to produce the club head from Damascus Steel. See paragraphs [0035] and [0037]. Repeated forging and rolling for the purpose of obtaining a particular pattern on the club face would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention.
Byrne does not explicitly disclose that the face further comprises “a second layer comprising a bulk-solidifying amorphous alloy” as well as “wherein the second layer is formed in a geometric shape comprising one of a honeycomb structure, an X shaped band, a plus shaped band, a circular bullseye shape, and a wire mesh”. Here, Tavares is cited to show that any type of club head, including woods, irons, hybrids and putters, may benefit from the addition of an amorphous metal alloy to portion(s) of the strike face in order to allow the skilled artisan to better control the coefficient of restitution as well as other characteristics of the club head (i.e., see paragraphs [0018] – [0020], [0027], [0030], [0109] – [0110] and FIG. 14, noting band-shaped region 1404a). In view of the teaching in Tavares, 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 further modified the club head in Byrne by incorporating a second layer as part of the face, wherein the second layer comprising a bulk-solidifying amorphous alloy in order to change the ball striking characteristics of the striking face. Selection of any specific bulk-modifying amorphous alloy to take advantage of the known properties of the amorphous alloy would have been obvious to one or ordinary skill in the art and before the effective filing date of the claimed invention. See MPEP 2144.07 stating: “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.) See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (Claimed agricultural bagging machine, which differed from a prior art machine only in that the brake means were hydraulically operated rather than mechanically operated, was held to be obvious over the prior art machine in view of references which disclosed hydraulic brakes for performing the same function, albeit in a different environment.).” With respect to the claimed “wherein the second layer is formed in a geometric shape comprising one of a honeycomb structure, an X shaped band, a plus shaped band, a circular bullseye shape, and a wire mesh”, while Tavares appears to show a band located generally about the perimeter of the striking face, 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 shaped the second layer into a convenient geometric shape so as to more selectively highlight or focus or tailor the characteristics of the striking face based upon the placement of the bulk-solidifying amorphous alloy on the face. Since Tavares contemplates controlling the coefficient of restitution of portions of the face, for example, it is clear that the skilled artisan would have been motivated to selectively change the characteristics of the striking face (e.g., the coefficient of restitution) for changing the flexure response of the strike face. As such, the selection of any suitable geometric pattern for the second layer to enhance the ball striking features of a particular portion(s) of the strike face would have involved an obvious design choice in the change of the shape of the geometric pattern. See MPEP 2144.04 (IV)(B) stating: “In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).”
As to claim 3, the second periphery of the face is attached via a welding to the first periphery of the shell (i.e., Byrne makes reference to, and incorporates in its entirety, USPN 6,348,015, which teaches that the striking face may be attached to the main body via a welding operation, wherein a periphery of the striking face is attached to a periphery of the club head body, as shown in FIG. 2 of the ‘015 patent).
As to claim 4 the first material and the second material are selected from titanium materials (i.e., see paragraph [0023] in Byrne).
As to claim 5, and as best understood, the second layer (i.e., the amorphous alloy) forms a portion of the modified hitting surface in Byrne (i.e., see the modification of Byrne in view of Tavares, hereinabove, with Tavares teaching that the amorphous alloy may form a band around the perimeter of the striking face). The first layer (i.e., the Damascus Steel) in Byrne is deemed to be oriented towards the shell. Note the rejection of claim 5 under 35 U.S.C. §112(b), supra.
As to claim 7, although Byrne makes reference to a “golf club head” without explicitly detailing a “golf club”, Byrne does show that the club heads appear to be attached to a shaft through some type of hosel formation (i.e., at least FIGS. 3-5). Note that Fisher teaches the attachment of an iron-type golf club head to a shaft and a grip (i.e., col. 1, lines 13-21). In order to be able to swing the golf club head, and in view of the teaching in Fisher, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to attach the golf club head in Byrne to a shaft and grip (or handle) in order to facilitate holding and swinging the club head to strike a golf ball.
As to claim 8, the first thickness to the second thickness is a continuous variation (i.e., see FIG. 7 of USPN 6,338,683, incorporated by reference in its entirety by Byrne, and showing a gradual change in thickness between a first thickness (T2) at the central portion of the face to a second thickness (T1) at other areas of the face).
As to claim 10, Tavares shows it to be obvious to construct the second layer (i.e., the amorphous alloy material disclosed as the cellular structure in paragraph [0030]) such that the amorphous alloy material may comprise additional layers of metal or polymer materials (i.e., see paragraph [0110] in Tavares).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Byrne (US PUBS 2006/0089208) in view of Fisher (USPN 5,209,473) and also in view of Jarbelius (US PUBS 2021/0207250) and also in view of Tavares (US PUBS 2007/0178988) and also in view of Liou (US PUBS 2003/0092505) and also in view of Hoffman (US PUBS 2019/0201754).
As to claim 2, Byrne in view of Fisher, Jarbelius and Tavares, lacks the feature “wherein the face has a surface area at least 60 square centimeters and the first thickness of the face is in a range of 0.1 centimeter to 0.25 centimeter”. Liou teaches and renders obvious a sweet spot thickness of 0.25 centimeters (2.5 mm), as required by claim 235. See claim 9 of Liou. With the dimensions provided by Liou, the strike face concentrates added mass at the sweet spot without an appreciable increase in face thickness while the circular nature of the sweet spot provides a well-balanced weight distribution. See paragraph [0019] in Liou. Of added benefit to the sweet spot design in Liou is the ability of the face to display a satisfactory trampoline effect under ball impact. See paragraph [0021] in Liou. Moreover, Hoffman teaches a surface area for a face portion of 6000mm2 (i.e., 60 square centimeters). See paragraph [0213] of Hoffman. Generally, a larger surface area provides for an expanded sweet spot and a more forgiving club head. In view of the combined teachings in each of Liou and Hoffman along with the above reasoning, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to further modify the club head in Byrne by providing a face with a surface area of at least 60 square centimeters and a first thickness (through the sweet spot) in a range of 0.1 centimeter to 0.25 centimeter, the motivation being to provide a larger sweet spot area having a thickness that provides adequate structural stability along with good resilience so as to improve club head performance. Here, incorporating the elements of an enlarged surface area as taught by Hoffman along with a specific sweet spot thickness as taught by Liou for the purpose of enlarging the sweet spot of the striking face and providing the face with adequate strength and compliance amounts to combining prior art elements according to known methods to yield predictable results. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
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Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Byrne (US PUBS 2006/0089208) in view of Fisher (USPN 5,209,473) and also in view of Jarbelius (US PUBS 2021/0207250) and also in view of Tavares (US PUBS 2007/0178988) and also in view of Liou (US PUBS 2003/0092505).
As to claim 6, Byrne in view of Fisher, Jarbelius and Tavares, lacks the feature “wherein the sweet spot of the face is at least 10% thicker than the other areas of the face, and wherein the first thickness is distributed circularly along the sweet spot of the face”. Liou teaches that a striking plate may include a sweet spot that is located generally within the confines of a circular, thickened portion of the face, wherein the thickened portion provides an enlargement of the sweet spot in both the heel-to-toe direction as well as the crown edge-to-sole edge direction. See FIGS. 2 and 4 in Liou. Here, Liou discloses that a first thickness T1 (of the sweet spot circular area) is 3 mm while the remaining thickness T2 (outside of the sweet spot circular area) is 2.5 mm. See paragraph [0017] in Liou. Here, the sweet spot is at least 10% thicker than other areas of the face (i.e., comparing a sweet spot thickness of 3 mm to another thickness of 2.5 mm outside the sweet spot). The arrangement in Liou concentrates added mass at the sweet spot without an appreciable increase in face thickness while the circular nature of the sweet spot provides a well-balanced weight distribution. See paragraph [0019] in Liou. Of added benefit to the sweet spot design in Liou is the ability of the face to display a satisfactory trampoline effect under ball impact. See paragraph [0021] in Liou. In view of the publication to Liou, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to further modify the club head in Byrne by providing a sweet spot with a thickness circularly distributed there around, with the sweet spot including a thickness being at least 10% thicker than the remaining, other areas of the face, as required by claim 6, the motivation being to enhance the performance of the club head by increasing the weight at the sweet spot while maintaining a suitable face thickness, which provides durability and affords the necessary “give” or compliance when struck by a golf ball.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Byrne (US PUBS 2006/0089208) in view of Fisher (USPN 5,209,473) and also in view of Jarbelius (US PUBS 2021/0207250) and also in view of Tavares (US PUBS 2007/0178988) and also in view of Kosmatka (USPN 5,830,084).
As to claim 9, Byrne in view of Fisher, Jarbelius and Tavares, lacks the feature “wherein the golf club head produces an audio feedback upon impact of a golf ball based on a location where the golf ball is hit on the face”. Kosmatka teaches that different regions of the striking face may be designed to produce a distinct acoustical tone, whereby regions other than a sweet spot region would emit a different sound upon a golf ball strike, thereby affording a golfer with an added educational or learning tool so as to properly identify when the sweet spot has been struck. See col. 7, lines 6-33 in Kosmatka. In view of the patent to Kosmatka, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to further modify the club head in Byrne by providing the club face with the structural configuration that emits a distinct sound based upon the location of a golf ball strike in order to provide useful audio feedback to a golfer about the location of the golf ball strike.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Byrne (US PUBS 2006/0089208) in view of Fisher (USPN 5,209,473) and also in view of Jarbelius (US PUBS 2021/0207250) and also in view of Tavares (US PUBS 2007/0178988) and also in view of Sanchez (US PUBS 2017/0274262).
As to claim 11, Byrne in view of Fisher, Jarbelius and Tavares, lacks the feature ”wherein the sweet spot on the face further comprises colored rings around the decorative pattern formed from the Damascus Steel”. Sanchez teaches that a striking face may be provided with indicia in the form of multiple, colored rings to assist a golfer in identifying the location of a golf ball strike. See paragraph [0073] and FIG. 2A in Sanchez. In view of the publication to Sanchez, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to further modify the club head in Byrne by providing colored rings to the Damascus Steel pattern on the face of the club head, the motivation being to help a golfer more easily identify the region(s) of the face upon which a golf ball strike has been made such that a golfer may improve the accuracy of his shot.
Claims 12 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Byrne (US PUBS 2006/0089208) in view of Fisher (USPN 5,209,473) and also in view of Jarbelius (US PUBS 2021/0207250) and also in view of Tavares (US PUBS 2007/0178988) and also in view of Morales (USPN 2015/0328506).
As to claim 12, Byrne in view of Fisher, Jarbelius and Tavares, lacks the feature “wherein a backside of the face comprises a ring that marks the sweet spot, wherein the ring comprises at least one of a color and a finish different from rest of face”. Morales teaches a different “finish” in the form of a raised ring-shaped reinforcement rib (120) which is situated concentrically about the geometric face center or sweets spot (118). See paragraphs [0044], [0045] and FIG. 1 in Morales. The ring-shaped reinforcement rib (120) is clearly visible to a golfer. The ring-shaped reinforcement rib (120) in Morales serves the added purpose of improving the performance characteristics of the club head, such as the location of the center of gravity, the moment of inertia and the coefficient of restitution (i.e., again, see paragraph [0045]). In view of the publication to Morales, one of ordinary skill in the art and before the effective filing date of the claimed invention would have fund it obvious to further modify the club head in Byrne by providing the rear of the face with a ring having a different “finish” so as to inform the golfer of the general location of the sweet spot or geometric face center, thereby helping a golfer to more accurately strike a golf ball at the sweet spot.
As to claim 16, Byrne in view of Fisher, Jarbelius and Tavares, lacks the feature “wherein the cavity behind the face is filled with an insert configured to dampen a sound generated by the face upon hitting a golf ball and wherein the insert comprise at least one of a Thermoplastic Elastomers (TPE) and a Polyurethane (PU) foam”. Morales teaches an arrangement in which an insert (805) is attached to a rear surface of the striking face and within the rear cavity of an iron-type club head for absorbing and reducing vibration during golf ball impact. See paragraph [0078] and FIGS. 8-9 in Morales. The insert (805) in Morales may be made of polyurethane or foam. In view of the publication to Morales, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to further modify the club head in Byrne by incorporating an insert within the cavity behind the face for sound attenuation, whereby a reduction in unwanted sound would have been less distracting to a golfer.
Claims 13, 14 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Byrne (US PUBS 2006/0089208) in view of Fisher (USPN 5,209,473) and also in view of Jarbelius (US PUBS 2021/0207250) and also in view of Tavares (US PUBS 2007/0178988) and also in view of Stokke (US PUBS 2020/0324181).
As to claim 13, Byrne in view of Fisher, Jarbelius and Tavares, lacks the feature “wherein the Damascus Steel has at least 2 times yield strength of that of a material used for the shell”. Stokke teaches an arrangement in which the striking face is fabricated from a material having twice the yield strength of the material of the supporting body so that a reduction in face thickness may be realized without sacrificing durability and strength of the face material, whereby a reduction in face thickness may lead to greater compliance of the face so as to control the coefficient or restitution. See paragraphs [0050] – [0054] in Stokke. Also, see paragraph [0118] in Stokke, wherein a specific example is provided to teach that the material of the face (i.e., the first material) has a yield strength that is twice the yield strength of the material of the body (i.e., the second material). In view of the publication to Stokke, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to further modify the club head in Byrne by providing the Damascus Steel with at least two times a yield strength of that of a material used for the shell, the motivation being to enable the skilled artisan to have more options for selectively varying the thickness of the face portion so that the performance of the club head may be increased.
As to claim 14, Byrne in view of Fisher, Jarbelius and Tavares, lacks the feature “wherein the face is heat treated”. Stokke teaches that heat treatment is effective for altering the yield strength of the materials used for each of the face and body portions. See paragraphs [0052] and [0118] in Stokke. In view of the publication to Stokke, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to further modify the club head in Byrne by taking advantage of a heat treatment operation for the face portion in order to alter the yield strength of the face material to provide enhanced club head performance.
As to claim 19, Byrne in view of Fisher, Jarbelius and Tavares, lacks the feature “wherein the shell comprises at least one of an AI 6061, a 431 stainless steel, and a 17-4PH stainless steel”. Stokke teaches that the material of the body (i.e., the second material) may comprise 17-4PH stainless steel. See paragraph [0146] in Stokke. In view of the publication to Stokke, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to further modify the club head in Byrne by using 17-4PH stainless steel for the shell portion to take advantage of the properties of 17-4PH stainless steel material , which is known in the art for its castability and ease in adapting to heat treatments. It has been well-established that the selection of a known material to take advantage of the properties of the known material would have been obvious to one of ordinary skill in the art. See MPEP 2144.07, noting that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. "Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle." 325 U.S. at 335, 65 USPQ at 301.). See In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (Claimed agricultural bagging machine, which differed from a prior art machine only in that the brake means were hydraulically operated rather than mechanically operated, was held to be obvious over the prior art machine in view of references which disclosed hydraulic brakes for performing the same function, albeit in a different environment.).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Byrne (US PUBS 2006/0089208) in view of Fisher (USPN 5,209,473) and also in view of Jarbelius (US PUBS 2021/0207250) and also in view of Tavares (US PUBS 2007/0178988) and also in view of Voges (US PUBS 2017/0151473).
As to claim 15, Byrne in view of Fisher, Jarbelius and Tavares, lacks the feature “wherein the decorative pattern is configured to indicate the sweet spot on the face to mark a center of a hitting zone”. Voges teaches the use of a specific face treatment (i.e., a pattern) to cover the “sweet spot” of the face. The treatment in Voges enhances the appearance of the location of the preferred hitting area on the club face and may also be used to provide the face with certain structural characteristics. See paragraph [0008], [0011], [0018], [0019] and [0021] along with FIG. 1 in Voges. In view of the publication to Voges, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to further modify the club head in Byrne by marking the sweet spot portion of the face with the decorative pattern made by the Damascus Stainless steel, the motivation being to not only visually enhance the location of the sweet spot, but to also impart other properties (i.e., enhanced yield strength) to a specific portion of the face such as the sweet spot.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Byrne (US PUBS 2006/0089208) in view of Fisher (USPN 5,209,473) and also in view of Jarbelius (US PUBS 2021/0207250) and also in view of Tavares (US PUBS 2007/0178988) and also in view of Beck (USPN 5,595,234).
As to claim 18, Byrne in view of Fisher, Jarbelius and Tavares, lacks the feature “wherein the shell is made using investment casting”. Beck teaches that both forging and investment casting are available for producing iron club heads (i.e., see col. 1, lines 36-49 in Beck). Historically, investment casting has been used to achieve a near finished surface without the need for more extensive processing techniques. Moreover, investment casting facilitates the formation of more complicated shapes or patterns and is better suited where accuracy in dimensions of product parts is most critical. In view of the patent to Beck and the above reasoning, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to further modify the Byrne club head by making use of an investment casting technique to manufacture the club head, the motivation being to provide a club head product that is easier to finish and is more accurate in dimensional tolerances. Here, using an investment casting procedure as taught by Beck to manufacture the club head in Byrne would have involved the use of a known technique to improve a similar device in the same way. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
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Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Byrne (US PUBS 2006/0089208) in view of Fisher (USPN 5,209,473) and also in view of Jarbelius (US PUBS 2021/0207250) and also in view of Tavares (US PUBS 2007/0178988) and also in view of Chiang (US PUBS 2014/0283364).
As to claim 20, Byrne in view of Fisher, Jarbelius and Tavares, lacks the feature “wherein the plurality of layers is reduced from an initial thickness to a final thickness in a range of approximately 50 to 1”. Chiang teaches that multiple rolling and forging procedures may be used to reduce the thickness of a blank by about 70-75% while providing the benefit of a lighter weight striking face that includes the necessary strength, ductility and toughness to increase the hitting performance of the club head. See the Abstract along with paragraphs [0013] and [0036] in Chiang. In view of the publication to Chiang, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to further modify the club head in Byrne by performing a number of rolling and forging operations to produce a reduction (in thickness) of the plurality of layers that make up the Damascus Steel, with the reduction being in a range of approximately 50 to 1, with there being a reasonable expectation of success that the reduction of the plurality of layers of the Damascus Steel would have provided a reduced weight of a face made of Damascus Steel along with an increase in strength, ductility and toughness of the club face so as to improve the performance of the club head. The specific, claimed reduction of “approximately 50 to 1” would have been attainable through routine experimentation. "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
See FIGS. 3A-3E in Brubaker;
Abstract and the sole FIG, in Jarbellius;
FIG. 5 in Martens;
FIG. 1 in Cardani;
FIG. 2C in Snyder;
FIG. 5 in Johnson;
FIG. 3A in Scruggs;
FIG. 6 in Peker;
FIGS. 1-2 and 26 in Ehlers show a honeycomb matrix;
FIGS. 5 and 12 in Stites; and
FIG. 1 in Raymont.
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711