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 . 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.
Response to Amendment
The Amendment filed 04/13/2026 has been entered. Claims 21-26, 28-37 remain pending in the application.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 31 & 37 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 31 & 37 recite the limitations of "polyisobutylene without a C5 resin", and there is no such recitation in the instant specification to support the negative limitation recitation of "without a C5 resin".
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.
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.
Claim(s) 21-25, 32-33, 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fontanilla (U.S Patent 6060160), and Aberg (U.S Patent 5749991).
Regarding claims 21 & 24, Fontanilla, drawn also to the art of bonding a sports grip to a shaft, such as a golf club (Column 1, lines 58-61), discloses a grip that defines an interior surface configured to fit on an exterior surface of an end of the shaft (Figure 1 – the grip 14 necessarily defines an interior surface and interior volume as it fits onto the exterior surface of the shaft 12). Fontanilla also discloses an adhesive composition applied to the shaft which is activated by a solvent that is non-aqueous (Figures 2-3; Column 2, lines 47-59). Fontanilla has disclosed applying the adhesive to the shaft rather than the grip and then activating it with solvent (Claim 3) such as toluene (Column 2, line 58). Fontanilla has not explicitly disclosed the adhesive coating being on the grip interior surface and the composition comprising one of polyisobutylene, C5 resin, and alkylphenol resin. The above limitations are disclosed by Aberg.
Aberg, drawn also to the art of bonding a tubular object to an inwardly located second object such as a grip bonded to a golf club (Abstract), discloses the adhesive containing polyisobutylene (Column 6, line 16), and discloses that such an adhesive has a particularly good adhesive effect in the absence of water or with low water content (Column 6, lines 8-11). Aberg also discloses the adhesive composition being coated on an inner surface of the first object (grip) which is to be slidingly attached over the second object (golf club) (Abstract), and discloses that this allows the first object (grip) to be stored for years prior to use (Abstract).
It would have been obvious to an ordinarily skilled artisan to have modified the kit of Fontanilla, with the kit comprising an adhesive as claimed in the adhesive composition, as disclosed by Aberg, to arrive at the instant invention, in order to have an adhesive has a particularly good adhesive effect in the absence of water or with low water content.
Further, it would have been obvious to an ordinarily skilled artisan to have modified the kit of Fontanilla, with the application of adhesive on the interior surface of the grip, as disclosed by Aberg, to arrive at the instant invention, in order to allow the grip to be stored for years prior to use.
Regarding claims 22 & 32 (both recite the same language but are dependent on claim 21 & 24, respectively), Fontanilla has disclosed the solvent being toluene (Column 2, line 58).
Regarding claims 23, 25, & 37 (all have the same language and claim same subject matter, but have different dependencies), Fontanilla as modified by Aberg, discloses the adhesive composition containing polyisobutylene.
Regarding claim 33, Aberg also discloses the use of acetone as a solvent (Column 5, line 37).
It would have been obvious to an ordinarily skilled artisan to have modified the solvent of Fontanilla, with the solvent as disclosed by Aberg, since as such this would merely involve a simple substitution of two known elements, and the courts have held that the simple substitution of known elements to obtain predictable results is obvious (MPEP 2143 I(B)).
Claim(s) 26, 28-31, 34-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fontanilla (U.S Patent 6060160), Aberg (U.S Patent 5749991), Mueller (U.S Patent 6235134B1), and Mack (U.S Patent 2349508A).
Regarding claims 26, 28-30, & 34-36, Fontanilla and Aberg have not explicitly disclosed a polyisobutylene and C5 resin being present and being present in the weights as claimed.
Mueller, drawn also to the art of grips for golf clubs (Abstract), discloses a composition that is applied on the grip to attach to a club (Column 8, lines 64-67) to contain both dicyclopentadiene (Column 7, line 9) (suitable C5 resin as disclosed in instant specification [0040]) and polyisobutylene (Column 7, line 48).
It would have been obvious to an ordinarily skilled artisan to have modified the adhesive composition of Fontanilla and Aberg, with the composition containing a C5 resin and polyisobutylene, to arrive at the instant invention, in order to increase the tackiness of the grip (Column 9, lines 5-8).
Regarding the weight ranges as claimed in claims 26, 28-31 and 34-36, while Fontanilla, Aberg, and Mueller, have not explicitly disclosed the weight ranges, it is known to routinely optimize the proportions of the ingredients in an adhesive composition to appropriately alter or have characteristics such as tackiness and softness, as disclosed by Mack (Column 3, lines 38-40 & 55-59), who is also drawn to adhesive compositions containing isobutylene polymers (Column 1, lines 53-55).
Thus it would have been obvious to an ordinarily skilled artisan to have routinely optimized the weight ranges of the components of the adhesive composition, in order to appropriately have or alter characteristics such as tackiness and softness (MPEP 2144.05(II)), as is disclosed also by Mack.
Regarding claim 31, Fontanilla as modified by Aberg, discloses polyisobutylene as being part of the adhesive composition (see claim 21 & 24 rejections above).
Response to Arguments
Applicant's arguments filed 04/13/2026 have been fully considered but they are not persuasive.
Applicant argues that because Aberg discloses an adhesive composition that may contain water and that the adhesive composition of Aberg is activated with water, that an ordinarily skilled artisan would not look to combine the teachings of Fontanilla with Aberg.
The examiner disagrees. Firstly, it is noted that the only the teaching of polyisobutylene being a part of the adhesive composition is used to modify the adhesive composition of Fontanilla, and this is because an explicit advantage is provided by Aberg to having polyisobutylene in the adhesive composition. The explicitly advantage disclosed by Aberg is that such an adhesive has particularly good adhesive effect in the absence of water or low water content, which is also as required by the instant claim 21. The addition of water to the adhesive composition of Aberg does not affect this advantage, and this is specific to the components of the adhesive, which in it’s final stage has no water present as the water is evaporated. Further, using water as a solvent in forming an adhesive composition, amongst other solvents, is well-known in the art of adhesives, and the fact that Aberg used water does not take from the obviousness of modifying the adhesive of Fontanilla to have polyisobutylene, in order to have good adhesion in the absence of water.
In response to applicant's argument that Aberg discloses the use of water in the formation of the adhesive, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Applicant seems to argue that Mueller does not disclose the specifics of claim 21, and that Mack does not disclose the use of a C5 resin, and that thus claim 26 is not obvious.
The examiner disagrees. Mueller is used to disclose the fact that an adhesive composition in an analogous use i.e. golf clubs, can have a polyisobutylene and C5 resin as part of the adhesive composition. Mueller is not used to disclose the specifics of where the adhesive is applied and structure of the shaft/club, this has already been disclosed by Fontanilla. Further, Mack is not used to disclose the C5 resin, but to provide rationale and evidence that the specific weight amounts of all components in an adhesive composition can be routinely optimized.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABHISHEK A PATWARDHAN whose telephone number is (571)272-8431. The examiner can normally be reached Monday to Friday 7:30am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571)270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
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