DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
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 1-9 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. In Claim 1, line 9, the limitation indicating that the top line height is less than 24 mm and the limitation in line 20 indicating that the alignment feature being recessed below the top line height are inconsistent. The top line height is considered to be the height of the alignment feature and the limitation recesses the alignment feature below itself. Claim 7 is specifically rejected for the same reasoning applied to the limitation of Claim 7. The scope of the claims is indefinite.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 2 and 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Long, U.S. Patent No. 4,693,478, in view of Grace, U.S. Patent No. 6,796,911. As to Claims 1 and 8, Long teaches a putter type golf club head comprising a mass of at least 300 grams (between 300 and 350 grams), see Abstract. The club head may comprise a heel portion (16), a toe portion (14) opposite the heel portion, and a blade portion (12), Col. 4, ln. 3-5 and see Figure 2. The blade portion may include a front surface forming a striking face (18) and a rear surface (20) opposite the front face, Col. 4, ln. 5-6. Long teaches a rear portion (22) opposite the striking face, Col. 4, ln. 9-10. The rear portion may include a heel side arm (36) and a toe side arm (34) both extending rearward from the rear surface of the blade portion, Col. 4, ln. 11-13 and see Figure 2. A bridge (32) may extend between and connecting heel and toe side arms, Col. 4, ln. 11-13 and see Figure 2. Long teaches an alignment feature (46, 48) recessed below a top line height, which may be less than 24 mm (approximately 3 to 9.5 mm ), Col. 4, ln. 13-15 and 30-32 and see Figure 2, noting etched alignment feature. A cavity may be disposed between the heel and toe side arms, Col. 4, ln. 13-15. A width may be defined by a distance between in a heel-to-toe direction between the heel portion and the toe portion greater that 95 mm (140 mm), Col. 4, ln. 65-67. Long teaches that a depth may be defined by a distance in a front to rear direction between the front surface of the blade and the rear portion, which depth may be greater than 33 mm but Long does not teach a depth greater than 65 mm and Long does not teach that the alignment feature may be substantially planar. Grace teaches a putter-type club head (16) comprising an alignment feature (36) which is substantially planar, Col. 3, ln. 1 and 43-48 and see Figure 5. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Long with a substantially planar alignment feature, as taught by Grace, to provide Long with a viewable feature at a consistent distance from a golfer’s head to yield the predictable result of facilitating the process of determining a correct direction to a target. Further, Grace teaches face width of 102 mm and a depth of comparable dimensions, Col. 3, ln. 9-10 and see Figure 4, suggesting that the depth may be greater than 65 mm. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Long, as modified, with a depth greater than 65 mm as taught and suggested by Grace, to provide Long, as modified, with a known substitute club head depth. Claim 1 is treated as best understood in view of the rejection under 35 USC §112(b). As to Claim 2, Long teaches that the heel and toe side arms may be raised relative to the top surface of the bridge, see Figure 2. As to Claim 7, Long teaches that the alignment feature may be recessed below the club head top by a height greater than 1 mm, see Figure 2 and noting club head height of 35 mm Col. 4, ln. 41-42. Claim 7 is treated as best understood in view of the rejection under 35 USC §112(b). As to Claim 9, Long, as modified, discloses the claimed invention except for providing that the arms may include upper surfaces beveled proximate the cavity and extending outward toward the heel and toe portions respectively. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the heel and toe side arms with upper surfaces beveled as claimed since it has been held that configuration of parts of an invention is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that a particular claimed configuration was significant, In re Dailey, 149 USPQ 47 (CCPA 1966).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Long, in view of Grace, as applied to claim 1 above, and further in view of Morris, U.S. Patent Application No. 2017/0340926. Long, as modified, substantially shows the claimed limitations, as discussed above. As to Claim 3, Long, as modified, is silent as to the dimension of the space between heel and toe side arms. Morris teaches a putter-type club head comprising heel and toe side arms (120, 122), paragraph 0028. The arms may be spaced in a heel-to-toe direction by a distance between 40 and 42.7 mm, paragraph 0037. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Long, as modified, with spacing between heel and toe side arms as claimed and as taught by Morris, to provide Long, as modified, with spacing suitable for confining a golf ball to yield the predictable result of adding a feature to the club head.
Claim(s) 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Long, in view of Grace, as applied to claim 1 above, and further in view of Twitty, U.S. Patent No. 7,927,226. Long, as modified, substantially shows the claimed limitations, as discussed above. As to Claim 4, Long teaches a that the alignment feature may define a virtual center line segment (46) oriented in a substantially front to rear direction, Col. 4, ln. 32-34, but Long, as modified, does not disclose a height between 20 and 22 mm. Twitty teaches an alignment feature (16) having a height slightly greater than half of the height of the club face, and strategically positioned in line with the sweet spot of the putter, Col. 3, ln. 35-36 and 47-49 and see Figure 2, noting that the alignment feature height is a result effective variable. Given a face height of 35 mm (Long – Col. 4, ln. 41-42), the teaching of Twitty suggests a virtual center line height of approximately 20 to 22 mm. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Long, as modified, with a virtual center line height approximately within the claimed range, as taught by Twitty, to provide Long, as modified, with a virtual center line height slightly below the center of the golf ball when the club head is used in putting. Long, as modified, discloses the claimed invention except for setting forth the specific range for the virtual center line height. It would have been obvious to one of ordinary skill in the art before the effective filing date to set the virtual center line height within the claimed range since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art, In re Aller, 105 USPQ 233. As to Claim 5, Long, as modified, discloses the claimed invention except for disclosing a virtual center line height of 21.35 mm. It would have been obvious to one of ordinary skill in the art before the effective filing date to set the virtual center line height at the claimed position since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Boesch, 617 F. 2d 272, 205 USPQ 215 (CCPA 1980). As to Claim 6, Long teaches that a virtual vertical plane may extend through a center of mass and through the heel-to-toe center of the club head, perpendicular to the striking face, Claim 6 and Col. 4, ln. 22-24, and see Figure 4, noting sight line 104 aligned with alignment feature (46). It follows that the virtual center line may be spaced less than 5 mm from the virtual vertical plane. Long, as modified by Grace and Twitty, together with cited case law, places the virtual center line height at 21.35 mm, as discussed above. Long teaches a face center height of approximately 17.5 mm, being half the face height, discussed above, the center line height being greater than a height of the face center.
Conclusion
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/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711 13 March 2026