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 .
Drawings
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 filler volume and flowable elastomeric material must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Further claim 12 where the retention clip length is at least 10% greater than the aperture length is not shown. Instead such length are shown to be the same such that the retention clip fits within the aperture. .
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.
The scope of claim 3 and structural relationships between the appearture width and the furst and second ledge widths is ambiguous and unclear. It appears to recite that the combinations of the elements are both greater and less than the aperture width.
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 3 and 8-10 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.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) s 1, 4-6 and 11 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Gilbert et al. 8,157,673.
As to claim 1, Gilert shows a golf club comprising clearly anticipated body with a face, a topline, sole portion, toe portion, heel portion. 210 is considered a face stabilizing bar having a length between the heel portion and the toe portion, a top surface facing the topline opposite a face stabilizing bar bottom surface 232 that faces the sole portion and a back surface 212 coupled to the face stabilizing bar and the sole portion 206. An aperture in the face stabilizing bar extending from the face stabilizing bar top surface to the face stabilizing bar bottom surface, a face side ledge and a back side ledge formed in the face stabilizing bar between the face stabilizing bar top surface and the face stabilizing bar bottom surface is shown as follows;
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228 and 230 are considered a retention clip located in the aperture and abutting the face side ledge and the back side ledge such that it creates a filler volume between the retention clip and the face stabilizing bar top surface; and an elastomeric material located in the filler volume (col. 10, ln. 18).
The materials of claims 4-6 are considered shown in the aluminum of col. 10, ln. 16 and poluurethane of col. 10, ln. 28.
As to claim 11, the retention clip 228 has a first hardness such as in aluminum and the elastomeric material has a second hardness less than the first hardness such as in the polyurethane of col. 10, ln. 18.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 2, 3, 7-10 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gilber.
Claim 2 recites a range of the aperture length between 50% to 95% of the face stabilizing bar length. While Gilbert does not discuss any dimensions with respect to the length of his aperture, such selections in size have been found obvious. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
As to claim 3, the face and back side ledge in Gilbert inherently have a width with element 284 being considered a channel in retention clip that inherently has channel width less than the aperture width. Each side of the v-shape channel can be described as less than the aperture width plus the first ledge width and the second ledge width. The ambiguous scope of claim 3 is considered to possibly suggest that the retention clip plus the extenstion can have a width greater than the width of the aperture or alternatively less than it. Here the claim is me were one of the two alternative is shown.
As to claim 7, while silicone is not discussed as an alternaive material, the selection of a material has been found obvious. 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)
Claim 8 is directed to a matter of the relative size of the channel 284. While such does not appear to be larger than the aperture width. As set forth above, such changes in size would have been found obvious as such has not been shown to be critical to the claimed invention.
Where the bar depth of claims 9 and 10 has not been clearly defined, such a depth can be selected on Gilber such that the channel depth is greater than the bar depth to meet the limiations of the claim.
12. The golf club of claim 2, wherein the retention clip has a retention clip length that is at least 10% greater than the aperture length.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to William Pierce whose telephone number is (571)272-4414 and E-mail address is bill.pierce@USPTO.gov. For emergency assistance, supervisory assistance can be obtained with Melba Bumgarner at (571)272-4709.
If attempts to reach the examiner by telephone are unsuccessful, communication via email at the above address may be found more effective. Where current PTO internet usage policy does not permit an examiner to initiate communication via email, such are at the discretion of the applicant. However, without a written authorization by applicant in place, the USPTO will not respond via Internet e-mail to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122. A paper copy of such correspondence will be placed in the appropriate patent application. The following is a sample authorization form which may be used by applicant:
“Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with me by responding to this inquiry by electronic mail. I understand that a copy of these communications will be made of record in the application file.”
The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM M PIERCE/ Primary Examiner, Art Unit 3711
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