DETAILED ACTION
1. This action is made Final in response to applicants Amendments / Request for Reconsideration filed 6/10/26. Claims 11, 19 are cancelled; claims 1, 3-10, 12-14, 17 and 20 are amended; claims 1-10, 12-18 and 20 are pending.
Claim Rejections - 35 USC § 112
2. 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 17 and 20 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. The recitation therein of “increasing the swing speed of the user’s golf club head” (claim 17), and “wherein the user’s golf club head has an increased swing speed between 5 and 10 miles per hour faster than an initial swing speed” (claim 20) is indefinite because a person ordinary skill in the art cannot properly ascertain the metes and bounds of this limitation. Swing speed is based on dynamic and unpredictable variables, including but not limited to the biomechanics of the swing and the quantitative swing-effort applied by the user. It is also unclear how many times, and how hard the user must swing the swing speed training device before achieving the increased swing speed? Is maximum effort applied each time? Given these unknown variables, there is not enough objective criteria to properly provide boundaries to the claim requirements.
Claim Rejections - 35 USC § 103
3. 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.
4. Claims 1-10, 12-16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Snyder (US Pub. No. 2021/0245029) in view of Ota (US Pub. No. 2003/0224867), or in the alternative, in further view of Chai (US Pub. No. 2008/0280693).
With respect to claims 1 and 12, Snyder teaches a swing speed training device comprising: a mass having a weight of 140g (Table 1; See also paragraph [0078]); wherein the mass has a bottom portion, the bottom portion includes a bottom surface; a first aperture disposed in the bottom portion, the first aperture having a diameter D1 (i.e. diameter labeled 154) communicating with a second aperture 170 having a diameter D2 (i.e. diameter labeled 172) via a first countersunk flange (Fig. 7), the diameter D1 and the diameter D2 are centered about the mass longitudinal axis; a top portion being having a top surface and a diameter D3, the top surface including a third aperture having a diameter D4, the third aperture communicating with the second aperture; and wherein the diameters D1 and D3 are larger than the diameter D2 (Fig. 7), the diameter D1 being sized to accept a countersunk male threaded fastener 300 and diameter D2 being sized to accept a female threaded portion 700/745 of a user's golf club shaft 600 thereby facilitating a connection or a disconnection between the mass and the user's golf club shaft 600 (paragraph [0046], [0052]). Per MPEP 2114 - a claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). If a prior art structure is inherently capable of performing the intended use as recited, then it shifts the burden to applicant to establish that the prior art does not possess the characteristic relied on. See In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Admittedly, Snyder teaches wherein disc weights 400 are stacked on bottom plate 140 of spindle portion 110 as opposed to having a cylindrical mass having a diameter D, a length L, the length L being less than the diameter D, with an outer cylindrical portion separated from its bottom portion by a radiused portion. However, analogous art reference Ota teaches these features to be known in the art – cylindrical mass 14 having a diameter D, a length L, the length being less than the diameter D, wherein an outer cylindrical portion of the mass is separated from its bottom by a radiused portion (Fig. 3; paragraph [0012]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to provide the mass portion as a cylindrical mass in lieu of the stacked weight discs. The rationale to combine is to provide a known weighting means attachable to a distal end of a golf club shaft. This will also eliminate the need to carry numerous discs, which can be easily lost and inconvenient to keep up with. The proposed combination has a reasonable expectation of success as Snyder expressly contemplates using a single weight instead of the stacked disc weights (paragraph [0057]). Examiner notes the combination of Snyder and Ota teaches wherein D1 and D2 are centered within the diameter D of the cylindrical mass.
Lastly, Snyder teaches wherein a user’s gamer shaft is fitted within the third aperture, frictionally engages the inner sidewalls and the female threaded cavity of the shaft sleeve to receive the countersunk male threaded fastener, providing a secure and releasable connection between the mass and the user’s gamer shaft – Fig. 8a, paragraph [0054]. This arrangement is different than the claimed second countersunk flange, tapered portion and flange as claimed. However, per MPEP 2144.04, In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) when the only difference between the prior art and claimed invention is a particular arrangement that would not modify the operation of the device, such differences were held unpatentable. As stated above, Snyder teaches that its invention “allows a golfer to use their “gamer” shaft and grip during speed training” (paragraph [0006]). Examiner considers the structure used to facilitate the removable attachment of the shaft to the mass to be obvious in view of MPEP 2144.04, In re Japikse. Applicant’s specification does not provide any unexpected criticality to the arrangement other than facilitating removable connection between common gamer shafts, which Snyder expressly teaches. In the alternative, should applicant argue that the second flange provides improved securement between the shaft and mass, examiner cites to analogous art Chai for its express teaching of a second countersunk flange that communicates with a second aperture and receives the distal portion 80 of a golf club shaft 90 to facilitate a removably secure threaded connection therebetween (Fig.’s 1-5). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to incorporate the second countersunk in the second aperture. This will expectantly facilitate a frictional engagement with certain shaft sleeves/hosel, while also enabling convenient fastening of the male fastener into the female threaded cavity.
With respect to claim 2, Snyder teaches wherein the user's golf club shaft is a driver shaft (paragraph [0061]).
With respect to claims 3-6, the diameters D1, D4 of the first and third apertures of Snyder, respectively, inherently have a percentage of the diameter D of the cylindrical mass. The applied art does not expressly disclose this percentage. However, in Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220USPQ 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. See MPEP 2144.04. Here, the applied art and applicant’s invention comprise sizes for D1, D2 and D such that a fastener is countersunk into a bottom of the mass and threadingly engages with female threaded member of the shaft, which enters the mass at a top aperture and is secured therein to facilitate speed training. Applicant’s specification does not provide any unexpected criticality to the arrangement other than facilitating removable connection between common gamer shafts, which Snyder expressly teaches. As such, any differences in sizes between D1, D4 and D is considered obvious in view of Gardner v. TEC Systems, Inc. Supplemental to this, 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 ranges/values. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to scale the values of D1, D4 and D as claimed. The rationale to do so is to provide a prescribed overall weight that is suitable to be swung on a user’s gamer shaft. As extrinsic evidence, examiner cites to analogous art reference Hart (US Pat. No. 6,379,261) for its teaching that a golf club swing weigh/mass can be shaped or sized “to make … desired weight selections” (column 10, lines 38-39).
With respect to claims 7-10, the first and third apertures of Snyder extends an inherent distance of a length L between the bottom surface and the top surface (with respect to the first aperture), and between the top surface and the bottom surface (with respect to the third aperture). The applied are does not expressly disclose this percentage. However, in Gardner v. TEC Systems, 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. See MPEP 2144.04. Here, the applied art and applicant’s invention comprise sizes for lengths for the mass, first and third apertures such that a fastener is countersunk into a bottom of the mass and threadingly engages with female threaded member of the shaft, which enters the mass at a top aperture and is secured therein to facilitate speed training. Applicant’s specification does not provide any unexpected criticality to the arrangement other than facilitating removable connection between common gamer shafts, which Snyder expressly teaches. As such, any differences in sizes between the lengths of the mass, first and third apertures is considered obvious in view of Gardner v. TEC Systems, Inc. Supplemental to this, 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 ranges/values. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to select a value for the mass length, and the length of the first and third apertures. The rationale to do so is to provide a prescribed overall weight that is suitable to be swung on a user’s gamer shaft. As extrinsic evidence, examiner cites to analogous art reference Hart (US Pat. No. 6,379,261) for its teaching that a golf club swing weigh/mass can be shaped or sized “to make … desired weight selections” (column 10, lines 38-39).
With respect to claim 13, Snyder teaches wherein the first, second, and third apertures are colinear and centered on the diameters D, D1, D2, D3 and D4 and on a centerline CL of axis A1 respectively (Fig. 5).
With respect to method claims 14-16, 18, the claimed structure of the golf club is met by the applied art and caselaw set forth above in the rejection of claims 1-10, 12-13. Snyder further teaches a method of increasing a user's golf club swing speed comprising: removing a golf club head from a user's golf club shaft; replacing the golf club head with a swing speed training device 50, the diameter D1 being sized to accept a countersunk male threaded fastener 300 and diameter D2 being sized to accept a female threaded portion 700/745 of the user's golf club shaft 600 thereby facilitating a connection or a disconnection between cylindrical mass and the user's golf club shaft 600; and swinging the user's golf club shaft 600 having the swing speed training device 50 attached (paragraphs [0006], [0046]-[0047], [0061], [0064]), further including the step of removing the swing speed training device 50 from the user's golf club shaft 600, further including replacing the user's golf club head on the user's golf club shaft 600, wherein the golf club head is a driver head and the user's golf club shaft is a driver shaft Id, (Table 1; See also paragraph [0078]).
5. Claims 17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Snyder (US Pub. No. 2021/0245029) in view of Ota (US Pub. No. 2003/0224867), or in the alternative, in further view of Chai (US Pub. No. 2008/0280693), and further in view of Dilz, Jr et al. (US Pat. No. 8,007,367).
With respect to claim 17, Snyder further teaches a method of swinging the user’s golf club shaft thereby increasing the swing speed of the user’s golf club head (paragraphs [0062]-[0069]. Snyder does not expressly disclose the user of a swing speed measuring device. Analogous art reference Dilz teaches such feature to be known in the art (Fig. 1; Abstract). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to use a swing measuring device to determine swing speed. The rationale to combine is to accurately measure a golfer’s club head speed.
With respect to claim 20, and as best understood, examiner notes average swing speeds for low handicaps-scratch is around 110-120mph, mid handicaps is around 90-110mph, and high handicaps is around 70-90mph. Snyder teaches wherein “golfers swing speed should increase in proportion to the % reduction in mass”; specifically, in one embodiment the practice swing speed should increase over the user’s original (using their driver) according to the following:
(a) % increase of new configuration A swing speed>0.75 times the % of mass reduction
(b) % increase of new configuration A swing speed<1.25 times the % of mass reduction
Therefore, if configuration A is 20% less, then the practice swing speed associated with this configuration should be 15-25% higher than the original swing speed” (paragraphs [0062]-[0064]). Snyder teaches similar ranges of speed percentage increases for configuration B and C – paragraphs [0065]-[0069]. Snyder also teaches a wide range of potential weight ranges for each configuration (Table 1). As such, Snyder is considered to teach wherein the user has an increased swing speed of 5-10 miles per hour faster than an initial swing speed when using swing speeds outlined above by a low handicap, mid handicap, and high handicap. Regarding the claimed swing measuring device, this feature is taught by Dilz, Jr. The rationale to combine is the same as stated above.
6. Claims 17 and 20 are also rejected under 35 U.S.C. 103 as being unpatentable over Snyder (US Pub. No. 2021/0245029) in view of Ota (US Pub. No. 2003/0224867), or in the alternative, in further view of Chai (US Pub. No. 2008/0280693), and further in view of Dilz, Jr et al. (US Pat. No. 8,007,367), and even further view of Sorenson (US Pat. No. 8,540,584).
With respect to claims 17 and 20, examiner submits an alternative rejection citing to Sorenson for its teaching of a user increasing the swing speed of the club head from 5-10 mph (column 6, lines 24-35). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to utilize a swing training system to increase club speed by 5-10 mph as taught by Sorenson. The rationale to combine is to increase distance without substantially compromising driving accuracy. Regarding the claimed swing measuring device, this feature is taught by Dilz, Jr. The rationale to combine is the same as stated above.
Response to Arguments
7. Applicant’s arguments with respect to claims have been considered but are substantially moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Regarding applicant’s amendments to claims 17 and 20, the primary issues in the 112(b) rejection have not been addressed. Specifically, swing speed is based on dynamic and unpredictable variables, including but not limited to the biomechanics of the swing and the quantitative swing-effort applied by the user. It is also unclear how many times, and how hard the user must swing the swing speed training device before achieving the increased swing speed? Is maximum effort applied each time? Given these unknown variables, there is not enough objective criteria to properly provide boundaries to the claim requirements.
Conclusion
8. 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 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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