DETAILED ACTION
This Office action is responsive to communication received 08/27/2024 – application papers received, including Power of Attorney and IDS.
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 .
Continuation Data
This application is a CON of 17/554,934 12/17/2021 PAT 12102889 which is a DIV of 16/528,210 07/31/2019 PAT 11219805 which is a CIP of 16/042,979 07/23/2018 PAT 10653927.
Drawings
The drawings were received on 08/27/2024. These drawings are acceptable.
Status of Claims
Claims 1-20 are pending.
FOLLOWING IS AN ACTION ON THE MERITS:
Double Patenting
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of USPN 11,219,805. Although the claims at issue are not identical, they are not patentably distinct from each other because the differences amount to obvious differences in the arrangement of the claim limitations and obvious phrasing differences and/or obvious variants known in the art.
As to claims 1-3, see claim 1 of the ‘805 patent.
As to claim 4, see claim 13, as dependent upon claim 8, of the ‘805 patent.
As to claim 5, see claim 12, as dependent upon claim 8, as well as claim 17 of the ‘805 patent.
As to claims 6-8, see claim 6, as dependent upon claim 1, of the ‘805 patent. Any further distinctions over the claims of the ‘805 patent to take advantage of the properties of known materials by selecting materials known to be used in the art would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention. 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) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.) See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (Claimed agricultural bagging machine, which differed from a prior art machine only in that the brake means were hydraulically operated rather than mechanically operated, was held to be obvious over the prior art machine in view of references which disclosed hydraulic brakes for performing the same function, albeit in a different environment.). See MPEP 2144.07.
As to claims 9-14, see claims 1-3 of the ‘805 patent.
As to claims 15-20, see claim 6, as dependent upon claim 1, of the ‘805 patent. In addition, the claims of the ‘805 patent recite many more features than the instant claims and thus encompass the limitations of the instant claims or present obvious variations of the claimed grouping of materials and thickness dimensions. Here, for example, the claims of the ‘805 patent further require “an inner layer having an areal density of less than about 200 g/m.sup.2; a middle layer in contact with the inner layer, the middle layer having a thickness of at least 0.6 mm; and an outer layer in contact with the middle layer, wherein a distance between an interior surface of the inner layer and an exterior surface of the outer layer is at least 0.8 mm; wherein an amount of deflection of the crown as a function of a mass of the crown is governed by the following equation when subjected to a downward force of 20 MPa at a geometric center of the crown: Deflection≤−0.3177 (Mass)+5.615, and the crown has a D Score of at least 1.3”.
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 1-8 and 14 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.
As to claim 1, line 9, the phrase “at least 1.3” presents an open-ended range. Here, the exact scope of the claim cannot be determined. See MPEP 2173.05(c). Moreover, “D Score” is not an expression widely-recognized in the art. The “D Score” should be specifically defined in the claim. Moreover, the parameters and procedures that are used for achieving this claimed “D Score” should be positively set forth.
As to claims 2-3, these claims likewise set forth open-ended claims for the value of the “D Score” and thus render the claims indefinite.
As to claims 4-6, these claims share the indefiniteness of claim 1.
As to claims 7 and 8, a “Markush group” has been improperly recited which presents uncertainty and/or ambiguity in the claimed structure. Applicant may consider redrafting the expressions in claims 7-8 to recite the members as “selected from the group consisting of A, B and C”. See MPEP 2173.05(h).
As to claim 14, the phrase “at least 1.3” presents an open-ended range. Here, the exact scope of the claim cannot be determined. See MPEP 2173.05(c). Moreover, “D Score” is not an expression widely-recognized in the art. The “D Score” should be specifically defined in the claim. Moreover, the parameters and procedures that are used for achieving this claimed “D Score” should be positively set forth.
Claim Rejections - 35 USC § 103
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 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.
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.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 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. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. In Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009), the Federal Circuit offered additional instruction as to the need for an explicit analysis. The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.
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"[T]he analysis that "should be made explicit" refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis. . . . Under the flexible inquiry set forth by the Supreme Court, the district court therefore erred by failing to take account of 'the inferences and creative steps,' or even routine steps, that an inventor would employ and by failing to find a motivation to combine related pieces from the prior art." Ball Aerosol, 555 F.3d at 993, 89 USPQ2d at 1877.
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The Federal Circuit’s directive in Ball Aerosol was addressed to a lower court, but it applies to Office personnel as well. When setting forth a rejection, Office personnel are to continue to make appropriate findings of fact as explained in MPEP § 2141 and § 2143, and must provide a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art at the time of the invention. This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.
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I. EXEMPLARY RATIONALES
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Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(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;
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(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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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Claims 1-4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 8,007,369 to Soracco in view of US PUBS 2012/0071264 to Beach et al (hereinafter referred to as “Beach”) and also in view of USPN 4,604,319 to Evans et al (hereinafter referred to as “Evans”) and also in view of US PUBS 2008/0132356 to Chao et al (hereinafter referred to as “Chao”) and also in view of applicant’s disclosure of prior art regarding both Formed In-situ Thermoform Sandwich, hereinafter referred to as “FITS”, and thermoplastic composite skins from TenCate Cetex®, hereinafter referred to as “TenCate Cetex®” and described in paragraph [0097] of the specification.
As to independent claim 1 and dependent claims 6-8, Soracco details the applicant’s basic claimed inventive concept and, with reference to FIG. 3, includes a golf club head (302) having a striking face (303), a sole (308), a crown (306) having a crown structure (310) comprising an inner layer (314), a middle layer (316) in contact with the inner layer (314) and an outer layer (312) in contact with the middle layer (316). The specifics of the club head shown in FIG. 3 are generally discussed in col. 6, line 9 through col. 8, line 43, with an emphasis on col. 7, lines 23-46 and col. 7, lines 59-67 for a discussion of the material make-up of each of layers (312, 314, 316). More specific to claim 6, Soracco does show that the middle layer (316) is dimensioned to a greater thickness than each of the inner layer (314) and the outer layer (312). Note FIG. 3 and the thickness of middle layer (316) as compared to the thickness of inner layer (314) and as compared to the thickness of outer layer (312). Soracco further discloses that the middle layer (316) may comprise a foamed material (i.e., col. 7, line 62), as required by claims 6 and 7, and that the inner layer (314) and the outer layer (312) may comprise carbon-fiber material (i.e., col. 7, line 36), as required by claim 8, and that the inner layer (314) and the outer layer (312) may also comprise a thermoplastic material (i.e., col. 7, lines 34-35), as required by claim 8.
Soracco differs from the claimed invention in that Soracco does not explicitly disclose the claimed ”areal density of less than 1000 g/m2” (claim 1). The applicant has disclosed and acknowledged that materials suitable for the crown structure are commercially available. See paragraph [0097] of the applicant’s specification. The materials selected by the applicant, namely FITS for the inner foam layer material of the crown structure, and TenCate Cetex® for the inner and outer layers of the crown structure, when used together, are disclosed as satisfying the requirements for materials which, when structured for a crown, would provide an acceptable areal density. Here, Soracco has similarly used a combination of thermoplastic composite materials for the inner and outer layers along with a foamed material for the middle layer, as detailed previously hereinabove. In addition, note that the use of technological innovations such as composite structures have often seen an overlap in both the world of aircraft parts development and club head construction. Here, see the BACKGROUND OF THE INVENTION in the further teaching to Evans, which highlights:
“High strength to weight materials constructed from fiber resin matrix composites have become widely used in many industries where strength, corrosion resistance and light weight are desirable. For example, resin matrix materials are particularly well suited for use in aircraft structural members. Sporting equipment, such as tennis racquets and golf clubs, has also been successfully constructed from such materials.” (emphasis added).
Since areal density is dependent upon the density and thickness of the material selected for a specific part (i.e., in this case a crown structure), it would appear that the claimed requirements of the areal density of the crown are achieved as a direct result of the selection by the applicant of suitable, known materials that are capable of being tailored for use in a golf club head to arrive at the desired outcome for the claimed areal density. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination, according to Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Moreover, selection of one material for another material that was known prior to the invention, albeit in a different environment, has been held to be within the level of one ordinary skill in the art. See In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). In this case, the selection of one thermoplastic composite material for a different thermoplastic composite known prior to the invention for the inner and outer layers along with the selection of one foamed material for a different foamed material known prior to the invention for the middle layer would have been within the level of one of ordinary skill in the art. This amounts to the simple substitution of one known element for another to obtain predictable results. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Additionally, the recited areal density of claim 1 relates directly to the mass of the type of material(s) selected over the area of the crown structure for which it is used. Here, the prior art to Beach advocates the selection of composite materials, which provide a suitable areal density for the crown portion for improving the overall weighting characteristics of the club head. See paragraphs [0252] – [0253] along with claim 9 in Beach. Armed with this additional teaching by Beach and combined with the disclosure of known prior art materials such as FITS for the inner foam layer material of the crown structure, and TenCate Cetex® for the inner and outer layers of the crown structure, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the Soracco device to include a crown structure with a suitable areal density that is adequate to satisfy a given strength requirement. The areal density recited in claim 1 would have been attainable through routine experimentation. "[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). See MPEP 2144.05.
Soracco is also silent with respect to a “D Score of at least 1.3”, as required by claim 1, a “D Score of at least 1.5”, as required by claim 2, and a “D Score of at least 1.6”, as required by claim 3. According to the applicant, the premise behind the deflection score or “D Score” is that lower areal densities may be achieved despite greater thicknesses (in the crown materials) and that a higher calculated D Score connotes a higher efficiency of the crown structure, while crown structures that have mass and deflection properties below a calculated baseline provide for a lighter and more durable golf club head. See paragraphs [00110] – [00112] in the specification. Here, the “D Score” is clearly dependent upon which specific materials and thicknesses of said materials are selected for the crown. Moreover, the deflection of the crown is clearly a result-effective variable that is dependent upon the thickness and mass of the crown, as further described by Chao, with the use of different materials for the crown being directly responsible for altering the thickness and mass. See paragraphs [0004] – [0006], [0054], [0056], and [0081] – [0083] in Chao. For the crown structure, the applicant has already selected suitable materials known prior to the invention. In addition, Soracco has disclosed general guidelines for the relative thicknesses among the inner, outer and middle layers of the crown (e.g. thicknesses of the layers in the cross-section of the crown structure 310 in FIG. 3) along with a desire to provide more discretionary weight through the use of a composite crown structure (i.e., col. 6, lines 3-6) and, when further combined with the teachings in Chao as presented herein, the skilled artisan, before the effective filing date of the claimed invention, would have found it obvious to modify the device in Soracco by including suitable materials and thicknesses for the various composite segments of the crown structure (310) in order to maintain the structural integrity of the club head while maintaining an acceptable weight distribution, whereby an acceptable “D Score” would have been realized. The skilled artisan would obviously have been cognizant of the effect of altering the stiffness of the crown portion in Soracco, and thus would have been aware of a change in the deflection properties of the crown with either the introduction of a diverse material in the crown or with the thickness selected for each of the outer, middle and inner layers of the crown.
As to claim 4, the sandwich structure in Soracco covers at least 80% of the crown surface. See Fig. 2 and structure (210) in Soracco.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over USPN 8,007,369 to Soracco in view of US PUBS 2012/0071264 to Beach et al (hereinafter referred to as “Beach”) and also in view of USPN 4,604,319 to Evans et al (hereinafter referred to as “Evans”) and also in view of US PUBS 2008/0132356 to Chao et al (hereinafter referred to as “Chao”) and also in view of applicant’s disclosure of prior art regarding both Formed In-situ Thermoform Sandwich, hereinafter referred to as “FITS”, and thermoplastic composite skins from TenCate Cetex®, hereinafter referred to as “TenCate Cetex®” and described in paragraph [0097] of the specification, further in view of US PUBS 2017/0136314 to Myrhum et al (hereinafter referred to as “Myrhum”).
As to claim 5, Soracco, as modified, does not explicitly disclose “wherein the inner layer has a cutout opening”. The further teaching reference to Myrhum shows it to be obvious to include an inner crown layer that is provided with a plurality of cutouts that not only provide structural integrity to the crown portion, but also contribute to the generation of discretionary mass, as discussed by Myrhum (i.e., paragraphs [0026] and [0029]). In view of the publication to Myrhum, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the device in Soracco by constructing the inner layer (314) with a cutout opening for enabling mass removed from the cutout regions to be redistributed to other portions of the club head body.
Claims 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 8,007,369 to Soracco in view of US PUBS 2012/0071264 to Beach et al (hereinafter referred to as “Beach”) and also in view of USPN 4,604,319 to Evans et al (hereinafter referred to as “Evans”) and also in view of US PUBS 2008/0132356 to Chao et al (hereinafter referred to as “Chao”) and also in view of applicant’s disclosure of prior art regarding both Formed In-situ Thermoform Sandwich, hereinafter referred to as “FITS”, and thermoplastic composite skins from TenCate Cetex®, hereinafter referred to as “TenCate Cetex®” and described in paragraph [0097] of the specification and also in view of USPN 7,607,992 to Nishio.
As to independent claim 9, Soracco details the applicant’s basic claimed inventive concept and, with reference to FIG. 3, includes a golf club head (302) having a striking face (303), a sole (308), a crown (306) having a crown structure (310) comprising an inner layer (314), a middle layer (316) in contact with the inner layer (314) and an outer layer (312) in contact with the middle layer (316). The specifics of the club head shown in FIG. 3 are generally discussed in col. 6, line 9 through col. 8, line 43, with an emphasis on col. 7, lines 23-46 and col. 7, lines 59-67 for a discussion of the material make-up of each of layers (312, 314, 316).
Soracco differs from the claimed invention in that Soracco does not explicitly disclose the claimed “areal density of less than 1000 g/m2“ (claim 9). The applicant has disclosed and acknowledged that materials suitable for the crown structure are commercially available. See paragraph [0097] of the applicant’s specification. The materials selected by the applicant, namely FITS for the inner foam layer material of the crown structure, and TenCate Cetex® for the inner and outer layers of the crown structure, when used together, are disclosed as satisfying the requirements for materials which, when structured for a crown, would provide an acceptable areal density. Here, Soracco has similarly used a combination of thermoplastic composite materials for the inner and outer layers along with a foamed material for the middle layer, as detailed previously hereinabove. In addition, note that the use of technological innovations such as composite structures have often seen an overlap in both the world of aircraft parts development and club head construction. Here, see the BACKGROUND OF THE INVENTION in the further teaching to Evans, which highlights:
“High strength to weight materials constructed from fiber resin matrix composites have become widely used in many industries where strength, corrosion resistance and light weight are desirable. For example, resin matrix materials are particularly well suited for use in aircraft structural members. Sporting equipment, such as tennis racquets and golf clubs, has also been successfully constructed from such materials.” (emphasis added).
Since areal density is dependent upon the density and thickness of the material selected for a specific part (i.e., in this case a crown structure), it would appear that the claimed requirements of the areal density of the crown are achieved as a direct result of the selection by the applicant of suitable, known materials that are capable of being tailored for use in a golf club head to arrive at the desired outcome for the claimed areal density. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination, according to Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Moreover, selection of one material for another material that was known prior to the invention, albeit in a different environment, has been held to be within the level of one ordinary skill in the art. See In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). In this case, the selection of one thermoplastic composite material for a different thermoplastic composite known prior to the invention for the inner and outer layers along with the selection of one foamed material for a different foamed material known prior to the invention for the middle layer would have been within the level of one of ordinary skill in the art. This amounts to the simple substitution of one known element for another to obtain predictable results. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Additionally, the recited areal density of claim 9 relates directly to the mass of the type of material(s) selected over the area of the crown structure for which it is used. Here, the prior art to Beach advocates the selection of composite materials, which provide a suitable areal density for the crown portion for improving the overall weighting characteristics of the club head. See paragraphs [0252] – [0253] along with claim 9 in Beach. Armed with this additional teaching by Beach and combined with the disclosure of known prior art materials such as FITS for the inner foam layer material of the crown structure, and TenCate Cetex® for the inner and outer layers of the crown structure, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the Soracco device to include a crown structure with a suitable areal density that is adequate to satisfy a given strength requirement. The areal density recited in claim 9 would have been attainable through routine experimentation. "[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). See MPEP 2144.05.
As to claims 9 and 14, Soracco is silent with respect to ”the amount of deflection of the crown as a function of a mass of the crown is governed by the following equation when subjected to a force of 20 MPa: Deflection < -0.3177 (Mass) + 5.615”, as required by claim 9, and is silent with respect to a “D Score of at least 1.3”, as required by claim 14. According to the applicant, the premise behind the “Deflection” and the “D Score” is that lower areal densities may be achieved despite greater thicknesses (in the crown materials) and that a higher calculated D Score connotes a higher efficiency of the crown structure, while crown structures that have mass and deflection properties below a calculated baseline provide for a lighter and more durable golf club head. See paragraphs [00110] – [00112] in the specification. Here, the “Deflection” and the “D Score” are clearly dependent upon which specific materials and thicknesses of said materials are selected for the crown. Moreover, the deflection of the crown is clearly a result-effective variable that is dependent upon the thickness and mass of the crown, as further described by Chao, with the use of different materials for the crown being directly responsible for altering the thickness and mass. See paragraphs [0004] – [0006], [0054], [0056], and [0081] – [0083] in Chao. For the crown structure, the applicant has already selected suitable materials known prior to the invention. In addition, Soracco has disclosed general guidelines for the relative thicknesses among the inner, outer and middle layers of the crown (e.g. thicknesses of the layers in the cross-section of the crown structure 310 in FIG. 3) along with a desire to provide more discretionary weight through the use of a composite crown structure (i.e., col. 6, lines 3-6) and, when further combined with the teachings in Chao as presented herein, the skilled artisan, before the effective filing date of the claimed invention, would have found it obvious to modify the device in Soracco by including suitable materials and thicknesses for the various composite segments of the crown structure (310) in order to maintain the structural integrity of the club head while maintaining an acceptable weight distribution, whereby an acceptable “amount of deflection” and “D Score” would have been realized. The skilled artisan would obviously have been cognizant of the effect of altering the stiffness of the crown portion in Soracco, and thus would have been aware of a change in the deflection properties of the crown with either the introduction of a diverse material in the crown or with the thickness selected for each of the outer, middle and inner layers of the crown.
In addition, and as to claims 9 and 13, the claimed “distance between an interior surface of the inner layer and an exterior surface of the outer layer is at least 0.8 mm”, as required by claim 9, and “distance between an interior surface of the inner layer and the exterior surface of the outer layer is at least 2.58 mm”, as required by claim 13, is not explicitly disclosed by Soracco, but essentially amounts to an overall thickness of the crown structure. One skilled in the art would have further been motivated to maintain this “distance” to at least 0.8 mm, as required by claim 9, or at least 2.5 mm, as required by claim 13, so as to maintain the structural integrity of the crown portion. To this point, the teaching reference to Nishio is cited to teach that it is old in the art to design a composite crown structure with a thickness dimension between 0.3 mm and 3.5 mm (i.e., col. 4, lines 25-33), wherein a thickness less than 0.3 mm compromises the structural integrity of the crown and a thickness greater than 3.5 mm adds unnecessary and undesired weight to the club head. Armed with this additional teaching by Nishio and combined with the disclosure of known prior art materials such as FITS for the inner foam layer material of the crown structure, and TenCate Cetex® for the inner and outer layers of the crown structure, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the Soracco device to include a crown structure with a thickness that is adequate to maintain the structural integrity of the club head without adding unnecessary weight. The specific thickness or claimed “distance” between an interior surface of the inner layer and an exterior distance of the outer layer of claims 9 and 13 would have been attainable through routine experimentation. "[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). See MPEP 2144.05.
As to claims 10-12, Soracco does not explicitly detail the claimed dimensional thickness of the middle layer, as required by claim 10, nor the claimed dimensional thickness of the inner layer, as required by claim 11, nor the claimed dimensional thickness of the outer layer, as required by claim 12. Soracco does, however, generally show that the middle layer is dimensioned to a greater thickness than each of the inner layer and the outer layer (i.e., FIG. 3 and the thickness of middle layer 316 as compared to the thickness of inner layer 314 and as compared to the thickness of outer layer 312). Soracco also states that the middle layer may include a thickness profile that is capable of providing structural stiffness and vibration damping (i.e., col. 7, lines 51-58). Revisiting the statements set forth above and considering that Soracco prefers carbon fiber material for the inner and outer layers (i.e., col. 7, lines 45-46) along with foam for the middle layer (i.e., col. 7, line 62) and recognizing that the size and weight of the club head are often determined and/or limited by either or both of USGA rules or predetermined restraints by the manufacturer or the golfer for the preferred club head weight distribution, it is clear that one of ordinary skill in the art and before the effective filing date of the claimed invention would have been able to arrive at suitable dimensions for the inner, outer and middle layers. There would have been a reasonable expectation of success that combining different thicknesses for the middle, outer and inner layers would have provided a club head with the necessary structural integrity to withstand repeated impacts without compromising the requirement for an acceptable weight distribution. The specific, claimed “thickness” in each of claims 10-12 would have been attainable through routine experimentation. "[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). See MPEP 2144.05.
Claims 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 8,007,369 to Soracco in view of US PUBS 2012/0071264 to Beach et al (hereinafter referred to as “Beach”) and also in view of USPN 4,604,319 to Evans et al (hereinafter referred to as “Evans”) and also in view of applicant’s disclosure of prior art regarding both Formed In-situ Thermoform Sandwich, hereinafter referred to as “FITS”, and thermoplastic composite skins from TenCate Cetex®, hereinafter referred to as “TenCate Cetex®” and described in paragraph [0097] of the specification and also in view of USPN 7,607,992 to Nishio.
As to independent claim 15 and dependent claims 16-20, Soracco details the applicant’s basic claimed inventive concept and, with reference to FIG. 3, includes a golf club head (302) having a striking face (303), a sole (308), a crown (306) having a crown structure (310) comprising an inner layer (314), a middle layer (316) in contact with the inner layer (314) and an outer layer (312) in contact with the middle layer (316). The specifics of the club head shown in FIG. 3 are generally discussed in col. 6, line 9 through col. 8, line 43, with an emphasis on col. 7, lines 23-46 and col. 7, lines 59-67 for a discussion of the material make-up of each of layers (312, 314, 316). The outer layer (312) in Soracco serves as the “second layer”, as required by claims 15 and 16. The middle layer (316) may serve as the claims “first layer”, as required by claims 15 and 17. When introducing the “third layer”, as required by claims 18 and 19, the outer layer (312) in Soracco can be interpreted as the “second layer”, while the inner layer (314) serves as the “first layer” and the middle layer (316) serves as the “third layer”. More specific to claim 19, the “third layer” or middle layer (316) in Soracco is clearly greater in thickness than each of the identified first layer and second layer. Here, Soracco shows that the middle layer is dimensioned to a greater thickness than each of the inner layer and the outer layer (i.e., FIG. 3 and the thickness of middle layer 316 as compared to the thickness of inner layer 314 and as compared to the thickness of outer layer 312). More specific to the “foamed material”, as required by claim 20, again see col. 7, lines 23-46 and col. 7, lines 59-67 in Soracco for a discussion of the material make-up of each of layers (312, 314, 316).
Soracco differs from the claimed invention in that Soracco does not explicitly disclose the claimed “areal density of less than 1000 g/m2” (claim 15). The applicant has disclosed and acknowledged that materials suitable for the crown structure are commercially available. See paragraph [0097] of the applicant’s specification. The materials selected by the applicant, namely FITS for the inner foam layer material of the crown structure, and TenCate Cetex® for the inner and outer layers of the crown structure, when used together, are disclosed as satisfying the requirements for materials which, when structured for a crown, would provide an acceptable areal density. Here, Soracco has similarly used a combination of thermoplastic composite materials for the inner and outer layers along with a foamed material for the middle layer, as detailed previously hereinabove. In addition, note that the use of technological innovations such as composite structures have often seen an overlap in both the world of aircraft parts development and club head construction. Here, see the BACKGROUND OF THE INVENTION in the further teaching to Evans, which highlights:
“High strength to weight materials constructed from fiber resin matrix composites have become widely used in many industries where strength, corrosion resistance and light weight are desirable. For example, resin matrix materials are particularly well suited for use in aircraft structural members. Sporting equipment, such as tennis racquets and golf clubs, has also been successfully constructed from such materials.” (emphasis added).
Since areal density is dependent upon the density and thickness of the material selected for a specific part (i.e., in this case a crown structure), it would appear that the claimed requirements of the areal density of the crown are achieved as a direct result of the selection by the applicant of suitable, known materials that are capable of being tailored for use in a golf club head to arrive at the desired outcome for the claimed areal density. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination, according to Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Moreover, selection of one material for another material that was known prior to the invention, albeit in a different environment, has been held to be within the level of one ordinary skill in the art. See In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). In this case, the selection of one thermoplastic composite material for a different thermoplastic composite known prior to the invention for the inner and outer layers along with the selection of one foamed material for a different foamed material known prior to the invention for the middle layer would have been within the level of one of ordinary skill in the art. This amounts to the simple substitution of one known element for another to obtain predictable results. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Additionally, the recited areal density of claim 15 relates directly to the mass of the type of material(s) selected over the area of the crown structure for which it is used. Here, the prior art to Beach advocates the selection of composite materials, which provide a suitable areal density for the crown portion for improving the overall weighting characteristics of the club head. See paragraphs [0252] – [0253] along with claim 9 in Beach. Armed with this additional teaching by Beach and combined with the disclosure of known prior art materials such as FITS for the inner foam layer material of the crown structure, and TenCate Cetex® for the inner and outer layers of the crown structure, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the Soracco device to include a crown structure with a suitable areal density that is adequate to satisfy a given strength requirement. The areal density recited in claim 15 would have been attainable through routine experimentation. "[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). See MPEP 2144.05.
Similarly, and with respect to the “first areal density” and the “second areal density”, as required by claim 15, along with “a third areal density”, as required by claim 18, the prior art to Beach advocates the selection of composite materials, which provide a suitable areal density for the crown portion for improving the overall weighting characteristics of the club head. See paragraphs [0252] – [0253] along with claim 9 in Beach. Armed with this additional teaching by Beach and combined with the disclosure of known prior art materials such as FITS for the inner foam layer material of the crown structure, and TenCate Cetex® for the inner and outer layers of the crown structure, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the Soracco by selecting suitable materials for each of the claimed “first layer”, the “second layer” and the “third layer” in order to provide the necessary structural integrity for the crown while taking into account the overall mass distribution of the club head. Moreover, selection of one material for another material that was known prior to the invention, albeit in a different environment, has been held to be within the level of one ordinary skill in the art. See In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
In addition, and as to claim 15, the claimed “the structure comprising a plurality of layers having a thickness of at least 0.8 mm” is not explicitly disclosed by Soracco, but essentially amounts to an overall thickness of the crown structure. One skilled in the art would have further been motivated to maintain the “thickness” of the structure to at least 0.8 mm, as required by claim 15, so as to maintain the integrity of the crown portion. To this point, the teaching reference to Nishio is cited to teach that it is old in the art to design a composite crown structure with a thickness dimension between 0.3 mm and 3.5 mm (i.e., col. 4, lines 25-33), wherein a thickness less than 0.3 mm compromises the structural integrity of the crown and a thickness greater than 3.5 mm adds unnecessary and undesired weight to the club head. Armed with this additional teaching by Nishio and combined with the disclosure of known prior art materials such as FITS for the inner foam layer material of the crown structure, and TenCate Cetex® for the inner and outer layers of the crown structure, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to modify the Soracco device to include a crown structure with a thickness for the overall structure and with a thickness for the first layer that is adequate to maintain the structural integrity of the club head without adding unnecessary weight. The specific, claimed “thickness” in claim 15 would have been attainable through routine experimentation. "[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). See MPEP 2144.05.
More specific to claim 20, Soracco does not explicitly detail the claimed dimensional “thickness of at least 0.6 mm” of the first layer. Revisiting the statements set forth above and considering that Soracco prefers carbon fiber material for the inner and outer layers (i.e., col. 7, lines 45-46) along with foam for the middle layer (i.e., col. 7, line 62) and recognizing that the size and weight of the club head are often determined and/or limited by either or both of USGA rules or predetermined restraints by the manufacturer or the golfer for the preferred club head weight distribution, it is clear that one of ordinary skill in the art and before the effective filing date of the claimed invention would have been able to arrive at suitable dimensions for the first layer. There would have been a reasonable expectation of success that altering the thickness of the first layer would have provided a club head with the necessary structural integrity to withstand repeated impacts without compromising the requirement for an acceptable weight distribution. The specific, claimed “thickness” in claim 20 would have been attainable through routine experimentation. "[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). See MPEP 2144.05.
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Note paragraphs [0004] – [0005] in Deshmukh (‘118).
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711
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