DETAILED ACTION
Preliminary Amendment
This office action is in response to a preliminary amendment filed 4/15/26.
Notice of Pre-AIA Status/Priority
The present application is being examined under the pre-AIA first to invent provisions. Restated, applicant claims priority back to 13/842,545 filed on 3/15/13. As such, independent claim 20 receives a priority date of 3/15/13.
For claims 21 and 22, the claims claim “at least one of the first/second passageway and the first/second closed void contain a first/second elastomer”. This language allows for the elastomer to be in both the passageway and the void. However, the Examiner does not really see any written description in the specification for the elastomer being in the “void”. With that said, parent application 16/524,240, originally filed claim 9, claims “at least one of the first passageway and the first closed void contain a first elastomer”. As the original claims are a part of the original disclosure, claim 9 discloses this feature, and thus claims 21 and 22 have priority back to at least parent application 16/524,240 filed on 7/29/19.
The same analysis applies to claim 31. Claim 31 claims “wherein a portion of the first closed void has a first void depth that is less than the first face thickness”. Again, while the Examiner does not see any really description of this in the specification, original claim 5 of parent application 16/524,240 claims “wherein a portion of the first closed void has a fist void depth that is less than the first face thickness”. As such, claim 31 has support from originally filed claim 5 in parent application 16/524,240 filed on 7/29/19.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “elastomer in both the void and passageway” of claims 21 and 22 must be shown or the feature(s) canceled from the claim(s). Restated, claims 21 and 22 allow for the elastomer to be in both the void and the passageway. However, Fig. 8(d) clearly only shows the elastomer in the “passageway”. In addition, the “unsupported face portion centroid located at an elevation above the horizontal ground plane that is greater than the Ycg distance” of claim 21 and 22 also needs to be shown. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC §103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains. Patentability shall not be negatived 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.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-
Claims 20, 25-30, 32, 34, 35, and 39 are rejected under 35 U.S.C. 103(a) as being unpatentable over Shimazaki (US Pub. No. 2011/00221285 A1) in view of Gilbert et al. (herein “Gilbert”; US Pub. No. 2004/0242339 A1) and in further view of Reed et al. (herein “Reed”; US Pub. No. 2005/0277484).
Regarding claim 20, Shimazaki discloses a set of iron-type golf club heads (noting use of two or more irons in the prior art invention to make a set would be obvious and a mere duplication of parts), comprising: a) a first iron-type golf club head having a first loft (Figs. 28-29; noting some loft is obvious), a first heel portion, a first toe portion, a first top line portion, a first sole portion, a first leading edge, and a first trailing edge (Figs. 28-29; noting this is all inherent or obvious), wherein the first iron-type golf club head includes: i) a first body formed of a first body material (par. [0080]) and having a first hosel (Figs. 28-29; noting a hosel is shown), wherein the first body material has a first body material yield strength (par. [0080]; noting a yield strength is inherent in the material), wherein the first hosel has a first bore and a first bore center that defines a first shaft axis which intersects with a horizontal ground plane to define a first origin point and defines a first shaft axis plane (par. [0071] and Figs. 28-29; noting a bore to accommodate the shaft is obvious and an imaginary shaft axis obvious and/or inherent); ii) a first face and attached to the first body, and having a face thickness a first face striking surface, and a first face rear surface (Figs. 28-29; noting this is obvious), and formed of a first face material having a first material yield strength (par. [0080]; noting yield strength would be inherent), wherein: (a) the first face thickness of a portion of the first face is a thickness (Figs. 28-29); a portion of the first face rear surface defines a first closed void (Figs. 28-29, proximate item 22); and (b) a first passageway from the first closed void and accessible from an exterior of the first body (Figs. 28-29, noting “passageway” is the external opening to the void), iii) wherein the first iron-type golf club head has a first center of gravity located: (a) vertically toward the first top line portion of the first iron-type golf club head from the first origin point a first distance Ycg; (b) horizontally from the first origin point toward the first toe portion of the first iron-type golf club head a first distance Xcg; (c) a first distance Zcg from the first origin toward the first trailing edge in a direction generally orthogonal to the vertical direction used to measure the first Ycg distance and generally orthogonal to the horizontal direction used to measure the first Xcg distance; and (d) wherein the first iron-type golf club head has a first opening/closing moment of inertia about a first vertical axis through the first center of gravity, and a first lofting/delofting moment of inertia about a horizontal axis through the first center of gravity (Fig. 28; noting these are all inherent and/or obvious features as it is an imaginary coordinate system), b) a second iron-type golf club head having a second loft (Figs. 28-29; noting duplication of the iron for a set is obvious, and some loft is obvious), a second heel portion, a second toe portion, a second top line portion, a second sole portion, a second leading edge, and a second trailing edge (Figs. 28-29), wherein the second iron-type golf club head includes: i) a second body formed of a second body material that has a second body material (par. [0080]) and having a second hosel, wherein the second body material has a second boy material yield strength (par. [0080]; noting yield strength is inherent in the material), wherein the second hosel has a second bore and a second bore center that defines a second shaft axis which intersects with a horizontal ground plane to define a second origin point and defines a second shaft axis plane (Figs. 28-29; noting a bore to accommodate the shaft is obvious, and an imaginary shaft axis inherent); ii) a second face formed of a second face material and attached to the second body, a second face thickness, a second face striking surface, and a second face rear surface (par. [0080] and Figs. 28-29; noting this is all obvious and/or inherent), wherein: (a) a portion of the second face rear surface defines a second closed void (Figs. 28-29, proximate item 22); and (b) a second passageway from the second closed void and accessible from an exterior of the second body (Figs. 28-29, noting “passageway” is the external opening to the void), iii) wherein the second iron-type golf club head has a second center of gravity located: (a) vertically toward the second top line portion of the second iron-type golf club head from the second origin point a second distance Ycg; (b) horizontally from the second origin point toward the second toe portion of the second iron-type golf club head a second distance Xcg; (c) a second distance Zcg from the second origin toward the second trailing edge in a direction generally orthogonal to the vertical direction used to measure the second Ycg distance and generally orthogonal to the horizontal direction used to measure the second Xcg distance; and (d) wherein the second iron-type golf club head has a second opening/closing moment of inertia about a second vertical axis through the second center of gravity, and a second lofting/delofting moment of inertia about a horizontal axis through the second center of gravity (Fig. 28; noting these are all inherent and/or obvious features as it is an imaginary coordinate system). It is noted Shimazaki does not specifically disclose a first club with a loft of 30 degrees or less, a club with a second loft of at least 31 degrees, and c) wherein the second opening/closing moment of inertia is within 20% of the first opening/closing moment of inertia, the second distance Ycg is within 10% of the first distance Ycg, the first distance Ycg and the second distance Ycg are no more than 0.801", and the first distance Zcg and the second distance Zcg are no more than 0.492". However, Reed discloses a conventional set of irons (Table 1,Fig. 6, noting “Mizuno MP-14”) wherein a first club with a loft of 30 degrees or less (Table 1, Mizuno, noting the 3 iron with a loft of 23.1 degrees), a club with a second loft of at least 31 degrees (Table 1, Mizuno, noting the 6 iron with a loft of 31.5 degrees), and c) wherein the second opening/closing moment of inertia is within 20% of the first opening/closing moment of inertia (Table 1, Mizuno, 3 and 6 iron, noting (2415.7-2130.7)/2130.7 x 100 % = 13.38%), the second distance Ycg is within 10% of the first distance Ycg (Table 1, Mizuno, 3 and 6 iron, noting (0.748-0.754)/0.748 x 100 = 0.8 %), the first distance Ycg and the second distance Ycg are no more than 0.801" (Table 1, Mizuno, 3 and 6 iron, noting 0.748 and 0.754, respectively), and the first distance Zcg and the second distance Zcg are no more than 0.492" (Table 1, Mizuno, 3 and 6 iron, noting 0.271 and 0.348, respectively). Thus, it would have been obvious to a person of ordinary skill in the art at the time of the invention to modify Shimazaki to use the above relationship within an iron club set as taught by Reed because doing so would be combining prior art elements (a club design intended for a set, and a set design having MOI and cg characteristics for two clubs, the MOI and cg characteristics known to work in a set) according to known methods (implementing the disclosed iron in Shimazaki into a known set having the disclosed MOI and cg characteristics) to yield predictable results (using the Shimazaki iron in a set, the set known to have workable MOI and cg characteristics). Finally, it is noted that the combined Shimazaki and Reed do not specifically discloses a first face material yield strength of at least 1400 MPa and greater than the first body material yield strength, and a portion of the first face is less than 2.0 mm. However, Gilbert discloses a similar iron wherein a first face material yield strength of at least 1400 MPa and greater than the first body material yield strength (par. [0020]; noting the face can be made from a high strength 455 stainless steel material with a yield strength of 225 ksi or 1551 MPa and the body can be made from 431 stainless steel with a yield strength of less than 150 ksi), and a portion of the first face is less than 2.0 mm (par. [0007]; noting 0.06 inches is 1.524 mm, the value making obvious the claimed range). Thus, it would have been obvious to a person of ordinary skill in the art at the time of the invention to modify the combined Shimazaki and Reed to use a first face material with a high yield strength of at least 1400 MPa and a portion of the face being less than 2.0 mm as taught by Gilbert because doing so would be combining prior art elements (an iron with a face, and an iron with an insert face having a higher yield strength than the body) according to known methods (using the insert with the high yield strength and the impact surface) to yield predictable results (using the insert with the high yield strength and the impact surface, the high strength increase increasing ball COR – see Gilbert: par. [0018]).
Regarding claim 25, the combined Shimazaki, Reed, and Gilbert disclose wherein the second face thickness of a portion of the second face is less than 2.0 mm (Gilbert: par. [0007]; see citation above, noting this is a mere duplication of parts for a second club).
Regarding claim 26, the combined Shimazaki, Reed, and Gilbert disclose wherein the second face material yield strength is at least 1400 MPa and greater than the second body material yield strength (Gilbert: par. [0020]; see citation above, again noting this is a mere duplication of parts for a second club).
Regarding claim 27, the combined Shimazaki, Reed, and Gilbert disclose wherein the first lofting/delofting moment of inertia is no more than 760 g*cm^2 (Reed: Table 1, Mizuno; noting a 3 iron value of 431.3).
Regarding claim 28, the combined Shimazaki, Reed, and Gilbert disclose wherein the first opening/closing moment of inertia is no more than 2558 g*cm^2 (Reed: Table 1, Mizuno; noting a 3 iron value of 2130.7).
Regarding claim 29, the combined Shimazaki, Reed, and Gilbert disclose wherein the second lofting/delofting moment of inertia is no more than 760 g*cm^2 (Reed: Table 1, Mizuno; noting a 6 iron value of 566.7).
Regarding claim 30, the combined Shimazaki, Reed, and Gilbert disclose wherein the first opening/closing moment of inertia and the second opening/closing moment of inertia are no more than 2558 g*cm^2 (Reed: Table 1, Mizuno; noting a 3 iron value of 2415.7).
Regarding claim 32, the combined Shimazaki, Reed, and Gilbert disclose wherein the first passageway has a first passageway width and a portion of the first passageway width is greater than the first face thickness (Shimazaki: Fig. 2; noting this would be obvious from the drawings).
Regarding claim 34, the combined Shimazaki, Reed, and Gilbert disclose wherein the first body further includes at least one first body weight element secured to the first body, and the second body further includes at least one second body weight element secured to the second body (Shimazaki: Fig. 11, item 22; noting use for a first and second club is a mere duplication of parts).
Regarding claim 35, the combined Shimazaki, Reed, and Gilbert disclose wherein a portion of the first body weight element is in communication with the first closed void, and a portion of the second body weight element is in communication with the second closed void (Shimazaki: Fig. 11, item 22; noting they are in the void).
Regarding claim 39, the combined Shimazaki, Reed, and Gilbert disclose wherein the first passageway comprises a first sole channel having a first channel leading edge, a first channel trailing edge, a first channel width (Shimazaki: Fig. 2), and a first channel length greater than the first Xcg distance (Shimazaki: Fig. 1 and 2; noting this is obvious from the drawings as the “channel” spans a significant portion of the head, whereas Xcg distance would be about half), and the second passageway comprises a second sole channel having a second channel leading edge, a second channel trailing edge, a second channel width, and a second channel length greater than the second Xcg distance (Shimazaki: see citations above; noting use of this channel formation in two clubs is a mere duplication of parts for the second club).
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 §§ 706.02(l)(1) - 706.02(l)(3) 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.
Claims 20, 23-25, and 38-39 of the current application is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 10,888,749 B2 (formerly application 16/524,240) in view of Gilbert et al. (US Pub. No. 2004/0242339 A1).
Below is claim 20 of the current application (noting italicized language):
20. (new) A set of iron-type golf club heads, comprising:
a) a first iron-type golf club head having a first loft of 30 degrees or less, a first heel portion, a
first toe portion, a first top line portion, a first sole portion, a first leading edge, and a first
trailing edge, wherein the first iron-type golf club head includes:
i) a first body formed of a first body material and having a first hosel, wherein the first
body material has a first body material yield strength, the first hosel has a first bore and a
first bore center that defines a first shaft axis which intersects with a horizontal ground
plane to define a first origin point and defines a first shaft axis plane;
ii) a first face attached to the first body, and having a first face thickness, a first face
striking surface, a first face rear surface, and formed of a first face material having a first
face material yield strength of at least 1400 MPa and greater than the first body material
yield strength, wherein:
(a) the first face thickness of a portion of the first face is less than 2.0 mm;
(b) a portion of the first face rear surface defines a first closed void; and
(c) a first passageway extends from the first closed void and is accessible
from an exterior of the first body;
iii) wherein the first iron-type golf club head has a first center of gravity located:
(a) vertically toward the first top line portion of the first iron-type golf
club head from the first origin point a first distance Ycg;
(b) horizontally from the first origin point toward the first toe portion of
the first iron-type golf club head a first distance Xcg;
(c) a first distance Zcg from the first origin toward the first trailing edge in
a direction generally orthogonal to a vertical direction used to measure the first
Ycg distance and generally orthogonal to the horizontal direction used to measure
the first Xcg distance; and (d) wherein the first iron-type golf club head has a first opening/closing moment of inertia about a first vertical axis through the first center of gravity, and a first lofting/delofting moment of inertia about a horizontal axis through the first center of gravity; and b) a second iron-type golf club head having a second loft of at least 31 degrees, a second heel portion, a second toe portion, a second top line portion, a second sole portion, a second leading edge, and a second trailing edge, wherein the second iron-type golf club head includes: i) a second body formed of a second body material and having a second hosel, wherein the second body material has a second body material yield strength, the second hosel has a second bore and a second bore center that defines a second shaft axis which intersects with a horizontal ground plane to define a second origin point and defines a second shaft axis plane;
ii) a second face attached to the second body, and having a second face thickness, a second face striking surface, a second face rear surface, and formed of a second face material having a second face material yield strength, wherein: (a) a portion of the second face rear surface defines a second closed void; and (b) a second passageway extends from the second closed void and is accessible from an exterior of the second body; iii) wherein the second iron-type golf club head has a second center of gravity located: (a) vertically toward the second top line portion of the second iron-type golf club head from the second origin point a second distance Ycg; (b) horizontally from the second origin point toward the second toe portion of the second iron-type golf club head a second distance Xcg; (c) a second distance Zcg from the second origin toward the second trailing edge in a direction generally orthogonal to a vertical direction used to measure the second Ycg distance and generally orthogonal to the horizontal direction used to measure the second Xcg distance; and(d) wherein the second iron-type golf club head has a second opening/closing moment of inertia about a second vertical axis through the second center of gravity, and a second lofting/delofting moment of inertia about a horizontal axis through the second center of gravity; and c) wherein the second opening/closing moment of inertia is within 20% of the first opening/closing moment of inertia, the second distance Ycg is within 10% of the first distance Ycg, the first distance Ycg and the second distance Ycg are no more than 0.801", and the first distance Zcg and the second distance Zcg are no more than 0.492".
Below is claim 1 of US Pat. No. 10,888,749 B2:
1. A set of iron-type golf club heads, comprising: a) a first iron-type golf club head having a first loft of 30 degrees or less, a first heel portion, a first toe portion, a first top line portion, a first sole portion, a first leading edge, and a first trailing edge, wherein the first iron-type golf club head includes: i) a first body formed of a first body material and having a first hosel, wherein the first hosel has a first bore and a first bore center that defines a first shaft axis which intersects with a horizontal ground plane to define a first origin point and defines a first shaft axis plane; ii) a first face formed of a first face material and attached to the first body, a first face thickness, a first face striking surface, and a first face rear surface, wherein: (a) a portion of the first face rear surface defines a first closed void; and (b) a first passageway from the first closed void and accessible from an exterior of the first body, wherein each vertical cross-section through the first passageway establishes a first passageway axis and a first passageway angle from vertical that is at least 50% of the first loft, and at least a portion of the first passageway axis intersects the first face at a first axis-to-face intersection point and intersects the first shaft axis plane; iii) wherein the first iron-type golf club head has a first center of gravity located: (a) vertically toward the first top line portion of the first iron-type golf club head from the first origin point a first distance Ycg; (b) horizontally from the first origin point toward the first toe portion of the first iron-type golf club head a first distance Xcg; (c) a first distance Zcg from the first origin toward the first trailing edge in a direction generally orthogonal to the vertical direction used to measure the first Ycg distance and generally orthogonal to the horizontal direction used to measure the first Xcg distance; and (d) wherein the first iron-type golf club head has a first opening/closing moment of inertia about a first vertical axis through the first center of gravity, and a first lofting/delofting moment of inertia about a horizontal axis through the first center of gravity of no more than 760 g*cm.sup.∧2; iv) wherein in a first horizontal section parallel to the horizontal ground plane and passing through the first center of gravity, the first closed void is located between the first center of gravity and the first face, with no portion of the first closed void within the first horizontal section extending behind the first center of gravity; b) a second iron-type golf club head having a second loft of at least 31 degrees, a second heel portion, a second toe portion, a second top line portion, a second sole portion, a second leading edge, and a second trailing edge, wherein the second iron-type golf club head includes: i) a second body formed of a second body material and having a second hosel, wherein the second hosel has a second bore and a second bore center that defines a second shaft axis which intersects with a horizontal ground plane to define a second origin point and defines a second shaft axis plane; ii) a second face formed of a second face material and attached to the second body, a second face thickness, a second face striking surface, and a second face rear surface, wherein: (a) a portion of the second face rear surface defines a second closed void; and (b) a second passageway from the second closed void and accessible from an exterior of the second body, wherein each vertical cross-section through the second passageway establishes a second passageway axis and a second passageway angle from vertical that is at least 50% of the second loft, and at least a portion of the second passageway axis intersects the second face at a second axis-to-face intersection point and intersects the second shaft axis plane; iii) wherein the second iron-type golf club head has a second center of gravity located: (a) vertically toward the second top line portion of the second iron-type golf club head from the second origin point a second distance Ycg; (b) horizontally from the second origin point toward the second toe portion of the second iron-type golf club head a second distance Xcg; (c) a second distance Zcg from the second origin toward the second trailing edge in a direction generally orthogonal to the vertical direction used to measure the second Ycg distance and generally orthogonal to the horizontal direction used to measure the second Xcg distance; and (d) wherein the second iron-type golf club head has a second opening/closing moment of inertia about a second vertical axis through the second center of gravity, and a second lofting/delofting moment of inertia about a horizontal axis through the second center of gravity of no more than 760 g*cm.sup.∧2; c) wherein the second opening/closing moment of inertia is within 20% of the first opening/closing moment of inertia, and the second distance Ycg is within 10% of the first distance Ycg.
Below is claim 14 of US Pat. No. 10,888,749 B2:
14. A set of iron-type golf club heads, comprising: a) a first iron-type golf club head having a first loft of 30 degrees or less, a first heel portion, a first toe portion, a first top line portion, a first sole portion, a first leading edge, and a first trailing edge, wherein the first iron-type golf club head includes: i) a first body formed of a first body material and having a first hosel, wherein the first hosel has a first bore and a first bore center that defines a first shaft axis which intersects with a horizontal ground plane to define a first origin point and defines a first shaft axis plane; ii) a first face formed of a first face material and attached to the first body, a first face thickness, a first face striking surface, and a first face rear surface, wherein: (a) a portion of the first face rear surface defines a first closed void; and (b) a first passageway from the first closed void and accessible from an exterior of the first body; iii) wherein the first iron-type golf club head has a first center of gravity located: (a) vertically toward the first top line portion of the first iron-type golf club head from the first origin point a first distance Ycg; (b) horizontally from the first origin point toward the first toe portion of the first iron-type golf club head a first distance Xcg; (c) a first distance Zcg from the first origin toward the first trailing edge in a direction generally orthogonal to the vertical direction used to measure the first Ycg distance and generally orthogonal to the horizontal direction used to measure the first Xcg distance; and (d) wherein the first iron-type golf club head has a first opening/closing moment of inertia about a first vertical axis through the first center of gravity, and a first lofting/delofting moment of inertia about a horizontal axis through the first center of gravity; b) a second iron-type golf club head having a second loft of at least 31 degrees, a second heel portion, a second toe portion, a second top line portion, a second sole portion, a second leading edge, and a second trailing edge, wherein the second iron-type golf club head includes: i) a second body formed of a second body material and having a second hosel, wherein the second hosel has a second bore and a second bore center that defines a second shaft axis which intersects with a horizontal ground plane to define a second origin point and defines a second shaft axis plane; ii) a second face formed of a second face material and attached to the second body, a second face thickness, a second face striking surface, and a second face rear surface, wherein: (a) a portion of the second face rear surface defines a second closed void; and (b) a second passageway from the second closed void and accessible from an exterior of the second body; iii) wherein the second iron-type golf club head has a second center of gravity located: (a) vertically toward the second top line portion of the second iron-type golf club head from the second origin point a second distance Ycg; (b) horizontally from the second origin point toward the second toe portion of the second iron-type golf club head a second distance Xcg; (c) a second distance Zcg from the second origin toward the second trailing edge in a direction generally orthogonal to the vertical direction used to measure the second Ycg distance and generally orthogonal to the horizontal direction used to measure the second Xcg distance; and (d) wherein the second iron-type golf club head has a second opening/closing moment of inertia about a second vertical axis through the second center of gravity, and a second lofting/delofting moment of inertia about a horizontal axis through the second center of gravity; c) wherein the second opening/closing moment of inertia is within 20% of the first opening/closing moment of inertia, the second distance Ycg is within 10% of the first distance Ycg, the first opening/closing moment of inertia and the second opening/closing moment of inertia are no more than 2558 g*cm.sup.∧2, the first lofting/delofting moment of inertia and the second lofting/delofting moment of inertia are no more than 760 g*cm.sup.∧2, the first distance Ycg and the second distance Ycg are no more than 0.801″, and the first distance Zcg and the second distance Zcg are no more than 0.492″.
As can be seen, the claims are extensively overlapping in scope.
For claim 20 of the current application, claims 1, 2, 5, and 6 of the ‘749 patent map to the claim. Current claim 20 additionally requires the italicized language of the first face material to be a different material than the first body material, and for the first face material to have a yield strength of at least 1400 MPa. However, Gilbert makes these limitations obvious. Gilbert discloses a face attached to the body (Fig. 1 and par. [0020]). The face can be made from a high strength 455 stainless steel material with a yield strength of 225 ksi or 1551 MPa and the body can be made from 431 stainless steel with a yield strength of less than 150 ksi (par. [0020]). The motivation to combine would be that the face plate in Gilbert provides increased “increased COR” (see Gilbert” par. [0018]) (see explicit KSR rationale above).
For claim 20 of the current application, claims 14 and 19 of the ‘749 patent map to the claim. Current claim 20 additionally requires the italicized language of the first face material to be a different material than the first body material, and for the first face material to have a yield strength of at least 1400 MPa. However, Gilbert makes these limitations obvious. Gilbert discloses a face attached to the body (Fig. 1 and par. [0020]). The face can be made from a high strength 455 stainless steel material with a yield strength of 225 ksi or 1551 MPa and the body can be made from 431 stainless steel with a yield strength of less than 150 ksi (par. [0020]).
For claim 23, see claims 16 and 17 of the ‘749 patent.
For claim 24, see claims 16 and 17 of the ‘749 patent.
For claim 25 of the current application, see claim 2 of the ‘749 patent.
For claim 26, see Gilbert (par. [0020]).
For claim 27, see claim 1 of the ‘749 patent.
For claim 28, see claim 5 of the ‘749 patent.
For claim 29, see claim 1 of the ‘749 patent.
For claim 30, see claim 5 of the ‘749 patent.
For claim 31, see claim 4 of the ‘749 patent.
For claim 32, see claim 3 of the ‘749 patent.
For claim 33, see claim 5 of the ‘749 patent.
For claim 34 and 35, see claims 11-13 of the ‘749 patent.
For claim 38, see claim 14 of the ‘749 patent.
For claim 39, see claims 1 and 14 of the ‘749 patent.
The Examiner also rejections claims 20-22, 25, 26, 33-39 over claims 1-20 of U.S. Patent No. 10,398,950 B2 (formerly application 15/794,473) in view of Gilbert et al. (US Pub. No. 2004/0242339 A1) and in further view of Reed et al. (US Pub. No. 2005/0277484).
Claim 1 of the ‘950 patent reads as follows:
1. A set of iron-type golf club heads, comprising: a) a first iron-type golf club head having a first loft of 30 degrees or less, a first heel portion, a first toe portion, a first top line portion, a first sole portion, a first leading edge, and a first trailing edge, wherein the first iron-type golf club head includes: i) a first body formed of a first body material and having a first hosel, a first face opening, and a first face support ledge, wherein: (a) the first face support ledge has a first support ledge width separating a first support ledge inner perimeter from a first support ledge outer perimeter, and a first support ledge setback; (b) the first hosel has a first bore and a first bore center that defines a first shaft axis which intersects with a horizontal ground plane to define a first origin point and defines a first shaft axis plane; and (c) the first body material is a carbon steel alloy; ii) a first face formed of a first face material that is different from the first body material and configured to be rigidly supported by the first body face opening having a first face perimeter, a first face thickness no greater than 2.0 mm, a first face striking surface, and a first face rear surface, wherein: (a) a portion of the first face rear surface contacts the first face support ledge thereby defining a first supported face portion having a first supported face area; (b) a portion of the first face rear surface does not contact the first face support ledge thereby defining a first closed void extending in a first void plane substantially parallel to the first face, a first unsupported face portion having a first unsupported face area, wherein the sum of the first supported face area and the first unsupported face area is a first total face area; (c) a first passageway from the first closed void and accessible from an exterior of the first body, wherein each vertical cross-section through the first passageway establishes a first passageway axis and a first passageway angle from vertical that is at least 50% of the first loft, and at least a portion of the first passageway axis intersects the first face at a first axis-to-face intersection point and intersects the first shaft axis plane; (d) the first face material is a precipitation-hardened stainless steel alloy; and (e) at least one of the first passageway and the first closed void contain a first elastomer; iii) wherein the first iron-type golf club head has a first center of gravity located: (a) vertically toward the first top line portion of the first iron-type golf club head from the first origin point a first distance Ycg; (b) horizontally from the first origin point toward the first toe portion of the first iron-type golf club head a first distance Xcg; (c) a first distance Zcg from the first origin toward the first trailing edge in a direction generally orthogonal to the vertical direction used to measure the first Ycg distance and generally orthogonal to the horizontal direction used to measure the first Xcg distance; (d) wherein the first iron-type golf club head has a first opening/closing moment of inertia about a first vertical axis through the first center of gravity; and (e) wherein the elevation of the first axis-to-face intersection point is less than 60% of the first distance Ycg; b) a second iron-type golf club head having a second loft of at least 31 degrees, a second heel portion, a second toe portion, a second top line portion, a second sole portion, a second leading edge, and a second trailing edge, wherein the second iron-type golf club head includes: i) a second body formed of a second body material and having a second hosel, a second face opening, and a second face support ledge, wherein: (a) the second face support ledge has a second support ledge width separating a second support ledge inner perimeter from a second support ledge outer perimeter, and a second support ledge setback; (b) the second hosel has a second bore and a second bore center that defines a second shaft axis which intersects with the horizontal ground plane to define a second origin point and defines a second shaft axis plane; and (c) the second body material is a carbon steel alloy; ii) a second face formed of a second face material that is different from the second body material and configured to be rigidly supported by the second body face opening having a second face perimeter, a second face thickness no greater than 2.0 mm, a second face striking surface, and a second face rear surface, wherein: (a) a portion of the second face rear surface contacts the second face support ledge thereby defining a second supported face portion having a second supported face area; (b) a portion of the second face rear surface does not contact the second face support ledge thereby defining a second closed void extending in a second void plane substantially parallel to the second face, a second unsupported face portion having a second unsupported face area, wherein the sum of the second supported face area and the second unsupported face area is a second total face area; (c) a second passageway from the second closed void and accessible from an exterior of the second body, wherein each vertical cross-section through the second passageway establishes a second passageway axis and a second passageway angle from vertical that is at least 50% of the second loft, and at least a portion of the second passageway axis intersects the second face at a second axis-to-face intersection point and intersects the second shaft axis plane; (d) the second face material is a precipitation-hardened stainless steel alloy; and (e) at least one of the second passageway and the second closed void contain a second elastomer; iii) wherein the second iron-type golf club head has a second center of gravity located: (a) vertically toward the second top line portion of the second iron-type golf club head from the second origin point a second distance Ycg; (b) horizontally from the second origin point toward the second toe portion of the second iron-type golf club head a second distance Xcg; (c) a second distance Zcg from the second origin toward the second trailing edge in a direction generally orthogonal to the vertical direction used to measure the second Ycg distance and generally orthogonal to the horizontal direction used to measure the second Xcg distance; (d) wherein the second iron-type golf club head has a second opening/closing moment of inertia about a second vertical axis through the second center of gravity; and (e) wherein the elevation of the second axis-to-face intersection point is less than 60% of the second distance Ycg; c) wherein the second opening/closing moment of inertia is within 20% of the first opening/closing moment of inertia, and the second distance Ycg is within 10% of the first distance Ycg.
As noted above, Gilbert makes obvious the face plate yield strength and the face plate being a different material than the body. In addition, Reed makes obvious the exact values of Ycg and Zcg (par. [0037]). The motivation to combine would be that Reed discloses known and workable values for Ycg and Zcg on an iron using the exact same measurement system as claimed (i.e. cg location off of the center axis of the shaft)(see explicit KSR rationale above).
For claim 21, see claim 9 of the ‘950 patent.
For claim 22, see claim 9 of the ‘950 patent.
For claim 25, see claim 1 of the ‘950 patent.
For claim 26, see Gilbert (par. [0020]).
For claim 33, see Reed: par. [0037]
For claims 34 and 35, see claims 4-6 of the ‘950 patent.
For claim 36, see claim 2 of the ‘950 patent.
For claim 37, see claim 8 of the ‘950 patent.
For claim 38, see Reed: par. [0037].
For claim 39, see claim 11 of the ‘950 patent.
Allowable Subject Matter
Claims 21-24, 31, 33,and 36-38 are objected to as being dependent claims but would allowable (adding any intervening claims) with the filing of terminal disclaimer(s) as outlined above. The limitations as found in claims 21-24, 31, 33, and 36-38 are not made obvious by the combined prior art of record.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW BRIAN STANCZAK whose telephone number is (571)270-7831. The examiner can normally be reached on 8:30-10 and 1-3:30 M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached on (571)270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
6/30/26
Prosecution Insights