DETAILED ACTION
Claim Rejections - 35 USC § 112
1. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 13 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The recitation therein of “wherein a mass of the body upper portion is between 1 gram and 70 grams less than a mass of a golf club head lacking the rear opening and the insert” is indefinite. A person ordinary skill in the art cannot properly ascertain the metes and bounds of this limitation. The limitation requires making a quantitative comparison respect to an unknown golf club. It is recommended to positively recite the mass properties of the claimed golf club without requiring comparison to an unknown golf club.
Claim Rejections - 35 USC § 103
2. 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 International Co. v. Teleflex Inc., 550 U.S. 398, 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. Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “ Obvious to try ” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
3. Claims 1-3, 8-13 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Sander (US Pub. No. 2015/0057101) in view of Su (US Pat. No. 9,895,584).
With respect to claim 1, Sander teaches a golf club head comprising: a body 14 formed of a metallic material (paragraph [0030]), the body comprising: a front defining a front opening; a sole resting on a ground plane; a rear, comprising an upper portion and a lower; a toe region; a heel region; and a top rail; wherein the sole, the rear, and the top rail enclose a cavity connected to the front opening (Fig.’s 1-3, 4A); a strikeface 12; and an insert 60 formed of a polymeric material is harbored within the cavity and the front opening (Fig. 4A; paragraphs [0031]-[0032]), wherein: the insert 60 forms at least a portion of the strikeface (Fig’s 4A; paragraphs [0031]-[0032]); the insert 60 includes an insert upper portion disposed in the upper portion and having an insert upper portion depth measured perpendicular to the strikeface; the insert includes an insert lower portion having an insert lower portion depth measured perpendicular to the strikeface (Fig’s 4A; paragraphs [0031]-[0032]).
Sander does not expressly disclose wherein the rear upper and lower portion are
joined by an inflection seam, or wherein the insert lower portion depth is greater than the insert upper portion depth. However, analogous art reference Su teaches such features to be known in the art – Fig. 6 showing insert 20 and body 10 rear portions comprising a lower portion depth greater than the upper portion depths of the insert 20 and body 10. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to make the lower portion of the body rear and insert greater in depth than the corresponding upper portion. The rationale to combine is to add MOI (i.e. forgiveness), while maintaining peripheral weighting with a low weight insert.
With respect to claim 2, Sander teaches wherein both the insert upper portion and the insert lower portion form at least the portion of the strikeface (Fig’s 4A; paragraphs [0031]-[0032]).
With respect to claim 3, Sander teaches wherein the upper portion of the rear comprises an opening wall defining a rear opening connected to the cavity, and wherein the insert 60 further harbors within the rear opening (Fig. 4A).
With respect to claims 8 and 10, Sander teaches wherein a density of the metallic material is between 7.70 and 8.10 g/cc, wherein the metallic material comprises a material selected from the group consisting of: a steel-based material, a steel alloy (paragraph [0030]).
With respect to claims 9, 11-12, Sander teaches wherein a density of the polymeric material is between 0.8 g/cc and 1.4 g/cc; wherein the polymeric material comprises a polymeric resin and a reinforcing fiber, wherein the polymeric material is selected from the group consisting of: a glass-filled elastomer, a stainless steel-filled elastomer, a tungsten-filled elastomer, a thermoplastic polyurethane (TPU), a thermoplastic elastomer (TPE), a Kevlar (aramid) fiber-reinforced polymer, and a carbon-fiber reinforced polymer (paragraph [0031]; See also paragraph [0044]).
With respect to claim 13, Sander as modified by Su teaches wherein body includes a body upper portion and a body lower portion. These body upper portion inherently comprises a mass. Examiner notes there could exist a golf club without the rear opening and insert with a mass 1 to 70 grams more than the modified golf club of Sander. In the alternative, examiner notes, the mere scaling of a prior art invention capable of being scaled up does not establish patentability. See In re Rinehart, 531 F.2d 1048, 1053 189 USPQ 143 (CCPA 1976). In reviewing applicant’s specification, the specification does not provide criticality to the claimed range. Moreover, a reduction in the mass of the body upper portion will not adversely affect the functionality of the golf club. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to scale down the mass of the body upper portion. The rationale to do so is to move mass toward the sole, which will expectantly move CG lower, thereby increasing forgiveness and launch.
With respect to claim 18, Sander teaches wherein the insert 60 comprises an injection molded insert (paragraph [0032]).
4. Claims 4 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Sander (US Pub. No. 2015/0057101) in view of Su (US Pat. No. 9,895,584) and further in view of Gee (US Pat. No. 5,425,535).
With respect to claims 4 and 6-7, Sander does not expressly disclose a securing feature as claimed. However, analogous art reference Gee teaches the following to be known in the art: wherein a body further comprises one or more securing features 110 (“retainer”), disposed inside a cavity and extending from one or more of the rear, the sole, the toe region, and the heel region; wherein: at least one of the securing features 110 comprises a first end and a second end; and both the first end and the second end are attached to the sole within the cavity (i.e. the retainer 110 has a first toe-ward side end attached to a sole and a second heel-ward side end attached to the sole); wherein at least one of the securing features 110 forms a through-hole 111 that is filled by insert 109; the insert 109 being geometrically locked (i.e. cured to form a “mechanically coupled” securement) to the at least one securing feature 110 (Fig. 4; column 4, lines 51-65). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to add a securing feature to the golf club of Sander. The rationale is twofold: provide structural support for repeated impact with the face, while also providing a surface area for the insert to cure/secure to.
5. Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Sander (US Pub. No. 2015/0057101) in view of Su (US Pat. No. 9,895,584) and further in view of Taylor et al. (US Pat. No. 11,406,882).
With respect to claims 4-6, Sander does not expressly disclose a securing feature as claimed. However, analogous art reference Taylor teaches the following to be known in the art: wherein a body further comprises one or more securing features 187/177 (“lateral retaining features”; “rib”), disposed inside a cavity and extending from one or more of the rear, the sole, the toe region, and the heel region; wherein at least one of the securing features 187/177 extends from the rear to the sole within the cavity (Fig. 5); wherein: at least one of the securing features 187/177 comprises a first end and a second end; and both the first end and the second end are attached to the sole within the cavity (i.e. the retainer 187/177 has a first rear-ward side end attached to a sole and a second face-ward side end attached to the sole) (column 38, lines 61-67; column 39, lines 1-31). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to add a securing feature to the golf club of Sander. The rationale is twofold: provide rigidity to the club, and providing a surface area for the insert to cure/secure to.
6. Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Sander (US Pub. No. 2015/0057101) in view of Su (US Pat. No. 9,895,584) and further in view of Gilbert (US Pat. No. 6,592,469).
With respect to claims 14-15, Sander does not expressly teach undercuts as claimed. However, analogous art reference Gilbert teaches that it is known to provide an undercut 36 in a top rail and sole portion, causing insert to mechanically lock in (“positive mechanical connection”)(Fig. 4; column 3, lines 20-25). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to add undercuts to the top rail and sole portion of Sander. The rationale to combine is to provide a positive mechanical connection between the insert and body.
7. Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Sander (US Pub. No. 2015/0057101) in view of Su (US Pat. No. 9,895,584) and further in view of Ritchi et al. (US Pub. No. 2016/0287955).
As per claim 16, Sander inherently teaches a total mass, but does not expressly teach a toe weight as claimed. However, Ritchie et al. directed to the analogous art of golf club irons, teaches the following to be known in the art: a total mass; a toe weight; wherein: the body further comprises: a toe cavity; the toe cavity receives the toe weight 2214; and the toe weight comprises a mass between 5% and 45% of the total mass of the club head (paragraphs [0095]-[0096]; Fig.'s 24-25). Hence, at the time of applicant's effective filing, one having ordinary skill in the art would have found it obvious to add a toe weight to mitigate deleterious gear effect for in-to out swing paths (i.e. promote fade bias). The proposed modification is considered to have a reasonable expectation of success since the metal material of the body of Sander is convenient for weight insert cavities.
8. Claim 17 rejected under 35 U.S.C. 103 as being unpatentable over Sander (US Pub. No. 2015/0057101) in view of Su (US Pat. No. 9,895,584) and further in view of Zimmerman et al. (US Pub. No. 2015/0217364).
With respect to claim 17, Sander inherently comprises a blade length, measured in a heel-to-toe direction from an edge of the strikeface in the heel region to an outermost point in the toe region, but fails to expressly disclose this value. Analogous art reference Zimmerman et al. teaches that it is known to provide a blade length that is less than 2.8 inches (paragraph [0009]; fig. 18). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to select a blade length value as taught by Zimmerman. The rationale to combine is to provide good workability of the ball, and ease of swing.
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL DAVID DENNIS whose telephone number is (571)270-3538. The examiner can normally be reached M-F 8:00 am - 5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711
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