DETAILED ACTION
Priority
1. The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original non-provisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of the first paragraph of 35 U.S.C. 112. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994). The disclosure of the prior-filed application, Application No. 15/203422, fails to provide adequate support or enablement in the manner provided by the first paragraph of 35 U.S.C. 112 for claims 1-17 of this application: independent claim 1 comprises unsupported subject matter pertaining to the spine orientation and location: “the spine member extends from the toe towards the heel of the golf club head; wherein the first ends of each of the first, second, third and fourth legs contact a portion of the interior surface adjacent the crown portion”.
Claim Rejections - 35 USC § 103
2. 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.
3. Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Knight (US Pub. No. 2014/0256463) in view of Hayase et al. (US Pub. No. 2011/0177881).
With respect to claim 1, Knight teaches a golf club head 102 comprising: a face 112 having an outer surface configured for striking a ball and a rear surface opposite the outer surface; a front 124, a rear 126, a toe 122, and a heel 120; a body 108 joined to the face around peripheral edges of the face 112 and extending rearwardly from the face 112, the body including a crown portion 116 and a sole portion 118, wherein the body 108 defines an interior cavity 106 surrounded by an interior surface (Fig.’s 1-7); and a bracing member 130 positioned within the interior cavity 106 and including a spine member 138 spaced from a portion of the interior surface, a first leg 135 having a first end contacting the interior surface and a second end connected to the spine member, a second leg having a first end spaced from the first end of the first leg and contacting the interior surface, and a second end connected to the spine member, a third leg having a first end spaced from the first end of the first leg and from the first end of the second leg and contacting the interior surface, and a second end connected to the spine member, and a fourth leg having a first end spaced from the first end of the first leg and from the first end of the second leg and from the first end of the third leg and contacting the interior surface, and a second end connected to the spine member (Fig.’s 1-7; paragraphs [0067], [0072]-[0075])
Knight further teaches wherein the first ends of each of the first, second, third, and fourth legs contact the interior surface adjacent the sole portion as opposed to the crown portion as claimed, and wherein the bracing member 130 connects the first, second, third and fourth legs (Fig.’s 1-7; paragraph [0074]). Knight also teaches wherein the spine extends from the front to back as opposed a direction of the toe towards the heel. Thus, the features not taught by Knight include the spine legs contacting the interior surface adjacent the crown portion and the spine member extending from the toe towards the heel end. However, in an alternative embodiment, Knight teaches that it is known to position bracing member legs to contact the interior surface adjacent the crown portion – Fig.’s 22-23. The rationale to combine is to provide rigidity/reinforcement at the crown portion, and regulate sound at impact. Examiner cites to analogous art reference Hayase et al. for its teaching of a bracing member spine 20 being arranged from the toe towards the heel portion (Fig.’s 1-5; paragraphs [0160]-[0162]). At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to orient the bracing member of Knight is heel to toe direction. The motivation to combine is to “contribute(s) to the improvement of the hitting sound” (Hayase et al. – paragraph [0163]).
With respect to claims 2-4, Knight teaches wherein the spine member 138 includes a first end and a second end and an elongated body extending therebetween (Fig.’s 1-7; paragraph [0074])., further including a fifth leg having a first end contacting the interior surface and a second end connected to the first end of the spine member, further including a sixth leg having a first end contacting the interior surface and a second end connected to the second end of the spine member Id.
With respect to claims 5-6, Knight teaches wherein the spine member 138, the first leg, the second leg, the third leg, and the fourth leg are all integrally formed as one piece (paragraphs [0076], [0079]; Fig.’s 1-7); wherein the bracing member 130 is constructed of a polymer (paragraph [0076]).
With respect to claim 7, Knight teaches wherein the spine member, the first leg, the second leg, the third leg, and/or the fourth leg is constructed from titanium (paragraph [0076]).
With respect to claims 8-10, Knight teaches wherein the spine member includes a first end and a second end and an elongated linear body extending therebetween (Fig.’s 1-7); wherein the second end of the first leg and the second end of the third leg are located the same distance from the first end of the spine member Id., wherein the first leg and the third leg form a triangular shape and wherein the second leg and the fourth leg form a triangular shape Id.
With respect to claim 11, Knight teaches wherein the spine member 138 includes a first end and a second end and a curvilinear body extending therebetween (“curved” – paragraph [0075]).
With respect to claim 12, Knight teaches wherein the spine member includes a first end and a second end and a body comprising a first segment and a second segment (i.e. the end leg portions at the most forward and rearward portions of the bracing member), wherein the first segment is angled relative to the second segment (Fig.’s 1-7).
With respect to claim 13, Knight inherently teaches both a combined designed mass of the first and third leg and combined designed mass of the second and fourth leg. Knight does not expressly disclose these numeric values. However, the mere scaling up 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). Here, Knight, at paragraphs [0076]-[0077], Knight recognizes that the “mass” of the bracing member can be used to “affect the center of gravity” of the club. Moreover, Knight further contemplates altering the bracing member “to add weight to an area of the head 102, in order to achieve strategic weighting, such as locating the CG and/or affecting MOI”. Even more notably, Knight teaches wherein the bracing member can be designed to have “heavier” portions in the “front”, back, or either side” by using “heavier or thicker” trusses/legs to create weight. Or the designer can “reduce weight” by designing lighter or thinner legs/trusses in other portions of the bracing member. In view of these teachings, one ordinary skill in the art at the time of applicant’s effective filing would have found it obvious to design the first and second legs to have a greater mass (i.e. scaling up the mass) than the second and fourth. This will expectantly produce a designed CG or weighting of the club head biased towards the location of the first and third leg. As one ordinary skill in the art would recognize, CG positioning determines ball flight and varies based on the golfer’s swing path, face/ball impact area. Increased mass at the first and third leg, achieved through selecting a heavier material or thicker legs, will be beneficial to golfer’s that would benefit from a CG biased in the region of the first and third leg.
With respect to claims 14 and 16, Knight as modified by Hayase teaches wherein the interior surface is an interior surface of the club head sole portion (Fig.’s 1-7); wherein the bracing member 130 comprises an inherent length extending across the width of the club head sole portion (Hayase – the motivation to combine is the same as stated above), and wherein the spine of Knight comprises a cross-sectional shape with a spine height and spine width (inherent the elongated shape of the spine 138 of Knight). Admittedly, Knight does not disclose the length of the bracing member, or a spine height and width. However, secondary reference Hayase teaches the following features to be known in the art: wherein the bracing member 20 comprises a length extending across the width of the club head sole portion at least 50% of a largest width of the club head sole portion (paragraph [0217]) and wherein the spine comprises a cross-sectional shape with a spine height that is at least two times a spine width (paragraphs [0016], [0213], [0216]). The motivation to combine is the same as stated above. The proposed modification is considered to have a reasonable expectation of success. Knight contemplates designing the spine with adjustments to “size” (paragraph [0077]). Moreover, the spine can be structured as claimed while still being spaced from the interior surface.
With respect to claim 15, Knight inherently teaches bracing member weight. Knight does not expressly disclose this numeric value. However, at paragraph [0077], Knight recognizes that the weight of the bracing member can be used to “affect the center of gravity” of the club. Where 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), MPEP 2144.05. At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to select a weight for the bracing member, including within the claimed range, via routine experimentation. The motivation to do so it so provide a desired CG of the club, as Knight recognizes the bracing member weight to “affect the center of gravity”.
With respect to claim 17, Knight teaches wherein the spine 138 is spaced from the interior surface (Fig.’s 1-7), which inherently comprises a distance. Knight does not expressly disclose this numeric value. 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, Knight shows a small spacing from the spine to the interior surface, with the Drawings of both applicant’s invention and Fig.’s 1-7 of Knight appearing very similar. Moreover, Knight expressly teaches wherein the bracing member serves to improve the resonance of the sole, thereby producing a more desirable feel and sound of the club. To this extent, any differences in the inherent spacing of Knight and applicant’s claimed range of spacing is not considered to produce a differently performing golf club and is considered obvious in the art.
Double Patenting
4. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
5. Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-15 of U.S. Patent No. 10,384,107 in view of Knight (US Pub. No. 2014/0256463) and further in view of Hayase et al. (US Pub. No. 2011/0177881).
With respect to claims 1-13, patented claims 1, 3-15 substantially teach the golf club head as claimed. The patented claims do not expressly teach wherein the spine extends from the crown and from heel to toe as claimed. Knight teaches that it is known to position bracing member legs to contact the interior surface adjacent the crown portion – Fig.’s 22-23. The rationale to combine is to provide rigidity/reinforcement at the crown portion, and regulate sound at impact. Examiner cites to analogous art reference Hayase et al. for its teaching of a bracing member spine 20 being arranged from the toe towards the heel portion (Fig.’s 1-5; paragraphs [0160]-[0162]). At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to orient the bracing member of Knight is heel to toe direction. The motivation to combine is to “contribute(s) to the improvement of the hitting sound” (Hayase et al. – paragraph [0163]). The remaining claim element deficiencies are met by Knight as set forth above the prior art rejection. The rationale to combine is to provide rigidity/reinforcement and improved acoustic effect at impact using a known bracing member structure.
With respect to claims 14 and 16, the patented claims as modified by Knight and Hayase teaches wherein the interior surface is an interior surface of the club head crown portion wherein the bracing member comprises an inherent length extending across the width of the club head sole portion (Hayase – the motivation to combine is the same as stated above), and wherein the spine of the patented claims comprises a cross-sectional shape with a spine height and spine width (inherent the elongated shape of the spine). Admittedly, the patented claims do not disclose the length of the bracing member, or a spine height and width. However, secondary reference Hayase teaches the following features to be known in the art: wherein the bracing member 20 comprises a length extending across the width of the club head sole portion at least 50% of a largest width of the club head sole portion (paragraph [0217]) and wherein the spine comprises a cross-sectional shape with a spine height that is at least two times a spine width (paragraphs [0016], [0213], [0216]). The motivation to combine is the same as stated above. The proposed modification is considered to have a reasonable expectation of success.
With respect to claim 15, the patented claims’ bracing member inherently comprises a weight but does expressly disclose this numeric value. However, at paragraph [0077] of Knight, it is recognized that the weight of the bracing member can be used to “affect the center of gravity” of the club. Where 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), MPEP 2144.05. At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to select a weight for the bracing member, including within the claimed range, via routine experimentation. The motivation to do so it so provide a desired CG of the club, as Knight recognizes the bracing member weight to “affect the center of gravity”.
With respect to claim 17, the patented claims teach wherein the spine is spaced from the interior surface (Fig.’s 1-7), which inherently comprises a distance, but does not expressly disclose this numeric value. 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 bracing member serves to improve the resonance of the sole, thereby producing a more desirable feel and sound of the club. To this extent, any differences in the inherent spacing of the bracing member of the patented claims and applicant’s claimed range of spacing is not considered to produce a differently performing golf club and is considered obvious in the art.
Conclusion
6. 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.
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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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