DETAILED ACTION
This Office action is responsive to communication received 06/15/2026 – Power of Attorney and Statement Under 37 CFR 3.73; and 06/30/2026 – Amendment, Drawings and Terminal Disclaimer.
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 .
Status of Claims
Claim 8 has been cancelled, as directed.
Claims 1-7 and 9-10 remain pending.
Drawings
The drawings were received on 06/30/2026. These drawings are not acceptable, as each of the drawing pages is not marked as “Replacement Sheet” or “New Sheet”, as appropriate.
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.
Terminal Disclaimer
The terminal disclaimer filed on 06/30/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of USPNs 12029950; 10376758; 10130855; 10888750; and 11298598 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
In the arguments received 06/30/2026, the applicant contends that none of the applied prior art references of record shows or otherwise suggests “a weight member permanently positioned adjacent the crown and projecting above a crown surface…the weight member having a weight ranging from 25 grams to 130 grams”. The applicant argues that the primary reference to Kim (USPN 8,753,224) instead shows a lightweight, aerodynamic spoiler component positioned atop the crown and that there is no suggestion in Kim that the weight of the spoiler should approach a range between 25 grams and 130 grams.
IN RESPONSE:
It is noted that the aerodynamic spoiler (60), which has been identified in the outstanding rejections under 35 U.S.C. §103 as the claimed weight member, is permanently affixed to the crown, as detailed in col. 4, lines 1-8 in Kim and as set forth in the previous non-final Office action (i.e., see non-final action, scanned page 28, mailed 04/03/2026). Kim notes that the spoiler “may have a mass of no more than 20 grams” (i.e., col. 2, lines 20-22; emphasis added), but clearly does not exclude the spoiler having a different mass. It appears the applicant, through the most recent 06/30/2026 amendment, has selected a mass for the weight member, which is just outside the range disclosed by Kim in an effort to overcome the teaching in Kim. While the applicant argues that the claimed range of “25 grams to 130 grams” serves to increase the moment of inertia and change the position of the center of gravity towards the rear of the golf club head, such benefits are not unexpected when readjusting the mass of any weight member or any appendage attached to or otherwise associated with a golf club head. For example, moving weight from one portion of the club head to another portion of the club head would likely result in a shift of the center of gravity of the club head and a change in the moment of inertia of the club head. Considering a more specific example, simply adding or subtracting mass from a rear portion of the crown portion of a golf club head will necessarily cause a shift in the location of the center of gravity of the club head. This approach to weight distribution is common in the golf club head art, as exemplified by the prior art teaching to US PUBS 2011/0039634 to Tavares et al (i.e., see paragraphs [0003], [0020], [0032], [0051] and [0061]). In essence, altering the weight of the spoiler in Kim to include a weight member of 25 grams (instead of 20 grams) would have served to alter the location of the center of gravity and change the moment of inertia of the club head for improved club head performance. Since the prior art recognizes a direct relationship between the center of gravity location/moment of inertia and the addition and/or subtraction and/or movement of weight from one portion of the club head to another portion of the club head, it appears that the exact weight (in grams) of the weight member would have been obtainable through routine experimentation. See MPEP 2144.05: "[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)”.
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, 2 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 8,753,224 to Kim in view of US PUBS 2010/0331096 to Curtis et al (hereinafter referred to as “Curtis”) and also in view of US PUBS 2011/0039634 to Tavares et al (hereinafter referred to as “Tavares”).
As to independent claim 1, Kim discloses a golf club head (FIGS. 1-6) comprising: a golf club head body having: a club face (20); a crown (30) defining a perimeter of the golf club head; a sole (40) opposite the crown (30); a toe end (14) opposite a heel end; a back end (16; FIG. 6) opposite the club face; a hosel (50); an exterior surface (i.e., shown in FIGS. 1-6), an interior surface (i.e., the body is detailed as having a volume, and being of the driver-type and being fashioned from a metal material such as titanium alloy; thus, one may conclude that the club head body in Kim is hollow and it thus includes an interior surface); a weight member (i.e., spoiler 60 includes a mass and thus may be considered a weight member; see col. 2, lines 21-22) permanently positioned adjacent the crown and projecting above a crown surface (i.e., see FIGS. 4, 6), the weight member having a weight member center of gravity and an elongated arcuate shape along the crown (i.e., see FIG. 5; any weight member will include a center of gravity point), wherein a first end of the weight member is positioned toward the toe end and a second end is positioned at the heel end (i.e., see annotated FIG. 5, below).
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Kim further shows wherein the weight member comprises a maximum projection height that is positioned at the 6 o'clock position (i.e., the maximum height may be deemed to be shown along portion 66 in FIG. 3; also, the 6 o’clock position is explained below in the modification with Curtis).
Kim does not explicitly disclose “a head center of gravity defining an origin of a coordinate system including an x-axis and a z-axis, wherein the x-axis extends through the head center of gravity from the toe end to the heel end, and the z-axis extends through the head center of gravity from the club face to the back end” and further does not explicitly disclose “wherein the x-axis and the z-axis are arranged to coincide with numbers on an analog clock, with the z-axis extending between a 12 o'clock position through the club face and a 6 o'clock position though the back end, and the x-axis extending between a 3 o'clock position through the toe end and a 9 o'clock position through the heel end”. Curtis shows it to be old in the art to identify a coordinate system with an x-axis, y-axis and z-axis, with the x-axis and the z-axis presented by Curtis, as specifically defined by the instant claims. See paragraph [0032] and FIG. 4 in Curtis. Moreover, every club head will include a club head center of gravity. In view of the teachings in Curtis, 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 Kim by identifying a head center of gravity and establishing an XYZ coordinate system to assist a golfer in identifying a point of reference (i.e., the center of gravity (CG) of the head) and to assist in identifying the relationships among various club head parts using the XYZ coordinate system. When combined with the teachings in Curtis, the numbers coinciding with an analog clock and depicted on the annotated version of FIG. 5 of Kim shown supra would be arranged along an x-axis and z-axis.
Kim does not explicitly disclose that the weight member has a weight ranging “from 25 grams to 130 grams”. Instead, Kim notes that the spoiler (60), which is identified herein as being a weight member, “may have a mass of no more than 20 grams” (i.e., col. 2, lines 20-22; emphasis added), but clearly does not exclude the spoiler having a different mass. Here, moving weight from one portion of the club head to another portion of the club head would likely result in a shift of the center of gravity of the club head and a change in the moment of inertia of the club head. Considering a more specific example, simply adding or subtracting mass from a rear portion of the crown portion of a golf club head will necessarily cause a shift in the location of the center of gravity of the club head. This approach to weight distribution is common in the golf club head art, as exemplified by the prior art teaching to Tavares (i.e., see all of paragraphs [0003], [0020], [0032], [0051] and [0061], wherein Tavares more specifically discloses in paragraph [0032] that the arrangement of weight portions on a crown portion “allows club designers and/or club fitters to selectively position additional weight in the overall club head structure 102, e.g., to desirable locations to increase the moment of inertia (MOI) and/or affect other playability characteristics of the club head structure 102 (e.g., to draw or fade bias a club head; to help get shots airborne by providing a low center of gravity; to help produce a lower, more boring ball flight; to help correct or compensate for swing flaws that produce undesired ball flights, such as hooks or slices, ballooning shots, etc.; etc.)” and more specifically discloses in paragraph [0051] that “at least one receptacle may be located anywhere on the crown portion 102c to accommodate the desired center of gravity and associated alterable effects.”). In essence, altering the weight of the spoiler in Kim to include a weight member of 25 grams (instead of 20 grams) would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention and would have served to alter the location of the center of gravity and change the moment of inertia of the club head for improved club head performance. Since the prior art to Tavares recognizes a direct relationship between the center of gravity location/moment of inertia value and the addition and/or subtraction and/or movement of weight from one portion of the club head to another portion of the club head, it appears that the exact weight (in grams) of the weight member (i.e, the spoiler 60 in Kim) would have been obtainable through routine experimentation. See MPEP 2144.05: "[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)”.
As to claim 2, Kim does not explicitly detail that “the weight member is integrally cast with the golf club head body”. Note that “integrally cast” connotes a process step. Attention is directed to MPEP 2113 stating: “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”. Here, the spoiler or weight member (60) may be made of metallic materials and is permanently affixed to the crown (i.e., col. 4, lines 1-8). The finished product in Kim includes “a weight member permanently positioned adjacent the crown and projecting above a crown surface”, as required by independent claim 1. Thus, the claimed product in this product-by-process claim is the same as the product of the prior art to Kim.
As to claim 9, the first end of the weight member identified in Kim is located between the 3 o' clock and 6 o'clock positions. Again, see the annotated version of FIG. 5, hereinabove.
As to claim 10, the weight member identified in Kim is located within an outermost zone when a plurality of concentric zones are defined on the crown. The “series of concentric zones” are considered to be imaginary zones, absent any additional structure defining specific differences in the structure of the crown surface (i.e., note the annotated version of FIG. 5 of Kim, next page).
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Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over USPN 8,753,224 to Kim in view of US PUBS 2010/0331096 to Curtis et al (hereinafter referred to as “Curtis”) and also in view of US PUBS 2011/0039634 to Tavares et al (hereinafter referred to as “Tavares”) and also in view of US PUBS 2010/0160091 to Boyd et al (hereinafter referred to as “Boyd”).
As to claim 6, although the weight member (60) identified in Kim, even as modified by Curtis and Tavares, is not explicitly described as including “a plurality of weight members”, structuring the weight member (i.e., the spoiler 60) in Kim as multiple parts or as a single part would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention, the motivation being to assist and facilitate in the manufacturing process. Here, Boyd teaches that a weight member disposed to the rear of the club head and adjacent to the crown surface may be constructed from a single member or form multiple members that are subsequently joined together. Using plural weight members would have enabled the skilled artisan to design portions of the weight member from different materials. See paragraphs [0015] – [0016] in Boyd.
Allowable Subject Matter
Claims 3-5 and 7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Specifically, applicant’s amendment to independent claim 1 to now require that the weight member has a weight ranging from “25 grams to 130 grams” (emphasis added) necessitated the new grounds of rejection. 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.
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711
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