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 .
Election/Restrictions
Applicant’s election without traverse of Group I claims 1-10 in the reply filed on 7/16/2026 is acknowledged.
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 7 and 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. Claim 7, the beta stabilizers are present in the amount from 0.25 to 1.75% in the base claim. The value of 0.05% is outside the range. Claim 9, are the elements in addition to the four beta stabilizers and alpha stabilizers in the base claim? If so, the claim should state ‘further comprising’ for clarity.
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) 1, 2, 4, 8, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dye et al. (2026/0159920) in view of Simone et al. (2022/0372597). Claim 1, Dye discloses a titanium alloy for golf club parts [0069]. Dye discloses a titanium alloy comprising one or more alpha (α) stabilizers (Aluminum); four or more beta (β) stabilizers [Molybdenum 0.5-2.5%, Tin 0.05-2.0%, Iron 0 to 1.0%, and Silicon 0-0.3] [0008] and a neutral element comprising zirconium [0008]. Varying the ranges of the stabilizers is within the capabilities of one skilled in the art. "[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). Dye discloses the titanium alloy may be included in golf part but does not specify a particular area [0069]. Simone teaches a golf club comprising a face and aft body wherein the face is made from a titanium alloy. One of ordinary skill in the art would have included the titanium alloy in a club face insert for the desired performance. Claim 2, zirconium is present in the titanium alloy in an amount of about 0.5 to about 2.5 wt% [0008]. Claim 4, the titanium alloy comprises Sn present in an amount of at most about 0.05 wt% [0008]. Claim 8, the one or more alpha (α) stabilizers comprise Al [0008]. Claim 10, Simone teaches the striking face portion comprises a striking face insert, and the striking face insert comprises the titanium alloy [0073]. One of ordinary skill in the art would have included the titanium alloy in a club face insert for the desired performance.
Allowable Subject Matter
Claims 3, 5, and 6 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
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/RAEANN GORDEN/Primary Examiner, Art Unit 3711
September 15, 2026
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