DETAILED ACTION
This Office action is responsive to the following communication received:
08/30/2024 – application papers received, including Power of Attorney;
02/11/2025 – IDS;
05/20/2025 – IDS;
09/18/2025 – IDS;
12/12/2025 – IDS;
04/28/2026 – IDS;
06/22/2026 – IDS; and
07/16/2026 – 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 .
Status of Claims
Claims 1-20 are pending.
Continuation Data
This application is a CIP of 17/727,291 04/22/2022 PAT 12741182 which is a CIP of 17/544,033 12/07/2021 PAT 12179076.
Priority
The subject matter in each of independent claims 1, 10 and 18 is first disclosed in the instant application. Thus, the effective filing date of claims 1-20 has been determined to be the actual filing date of the instant application, namely 08/30/2024. See MPEP 2152.01.
Drawings
The drawings were received on 08/30/2024. 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 centroid “height (HCentroid)” and “height (HLow)” recited in claims 2-4 and 18, along with “height (HAH)” recited in 3, 5, 10, 12 and 13, and “height (HAT)” recited in claim 10 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Also, it is noted that FIG. 34 contains dimensional arrows highlighted in the annotated version below. These arrows do not include any label. What are these arrows referring to?
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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.
FOLLOWING IS AN ACTION ON THE MERITS:
Claim Objections – Minor
Claims 2 and 18 are objected to because of the following informalities:
As to claim 2, line 3, it appears that a comma should follow “plane”.
As to claim 2, line 11, “inches” should read --inch--.
As to claim 18, line 22, it appears that a comma should follow “plane”.
As to claim 18, line 31, “inches” should read --inch--.
As to claim 20, line 2, should --(HAH)-- follow “height” (first occurrence)? See claim 5.
Appropriate correction is required.
Claim Rejections - 35 U.S.C. § 112(b)
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 2-5 and 9-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As to claim 2, lines 2-6, what exactly is the relationship among the “aft slice”, the “slice line”, the “outer perimeter” and the “offset perimeter slice curve”? In addition to the language in lines 4-5, which set forth that the aft slice is a portion of the golf club head to a rear of a slice line and between an outer perimeter of the golf club head and an offset perimeter slice curve, it is suggested to further clarify the aft slice as having a shape corresponding to a shape of the outer perimeter of a rear portion of the golf club head.
As to claim 3, line 2, should “the ground” read --the ground plane--? See claim 2, line 3 and the first recitation of “a ground plane”. In line 3, it is unclear what exactly the “(HCentroid)
less than 70%, 60%, or 50% of the height (HLow)” is referring to. Even if this phrase were to be amended to read --(HCentroid), and less than 70%, 60%, or 50% of the height (HLow)--, it is not clear how to interpret the percentage within a percentage limitation(s). Also, the percentages connote an open-ended range that is not clearly understood. The claim would essentially cover a value of 0% of the height (HLow), which is not understood.
As to claim 4, this claim shares the indefiniteness of claim 3.
As to claim 5, line 2, should “above ground” instead read --above a ground plane--? Also in line 2, after “height (CH)”, should the phrase --above the ground plane-- be introduced?
As to claim 9, line 2, “a clubhead length (LFB)” should likely read –the clubhead length (LFB)--. See claim 1, line 9, wherein a clubhead length is first set forth. Also, in line 2, it seems the language --a distance rearward from the frontmost point, measured in the front-to-back direction,-- should follow “positioned”.
As to claim 10, line 14, after “height (CH)”, should the phrase --above a ground plane-- be introduced? Also, in line 22, after “height (CH)”, should the phrase --above the ground plane-- be introduced?
As to claim 11, line 6, based upon the comments made with respect to claim 10 and, if claim 10 is amended to recite a ground plane, then “a ground plane” in line 6 should read --the ground plane--.
As to claim 12, this claim shares the indefiniteness of claim 10.
As to claim 13, line 3, after “height (HCGN-AH)”, should the phrase --above the ground plane-- be introduced?
As to claim 14, line 2, after “height (CH)”, should the phrase --above the ground plane-- be introduced?
As to claim 15, line 2, “a clubhead length (LFB)” should likely read --the clubhead length (LFB)--. See claim 10, line 9, wherein a clubhead length is first set forth. Also, in line 2, it seems the language --a distance rearward from the frontmost point, measured in the front-to-back direction,-- should follow “positioned”.
As to claims 16-17, these claims share the indefiniteness of claim 10.
As to claim 18, lines 21-25, what exactly is the relationship among the “aft slice”, the “slice line”, the “outer perimeter” and the “offset perimeter slice curve”? In addition to the language in lines 24-25, which sets forth that the aft slice is a portion of the golf club head to a rear of a slice line and between an outer perimeter of the golf club head and an offset perimeter slice curve, it is suggested to further clarify the aft slice as having a shape corresponding to a shape of the outer perimeter of a rear portion of the golf club head.
As to claim 19, line 2, “a clubhead length (LFB)” should likely read --the clubhead length (LFB)--. See claim 18, line 9, wherein a clubhead length is first set forth. Also, in line 2, it seems the language --a distance rearward from the frontmost point, measured in the front-to-back direction,-- should follow “positioned”.
As to claim 20, line 2, after “height (CH)”, should the phrase --above the ground plane-- be introduced?
The Office has made every effort to identify all instances of indefiniteness in the current claim set. To the extent that any remaining occurrences of indefiniteness may exist in the claims, the applicant is respectfully asked to thoroughly review the cams and to amend the claims to capture and to correct any remaining instances of indefiniteness of which the applicant may become aware of during the preparation of a response to this action.
Claim Rejections – 35 U.S.C. § 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 (i.e., changing from AIA to pre-AIA ) 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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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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© 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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© “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.
Claims 1, 5-7, 9-10 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2003/0232663 to Bliss et al (hereinafter referred to as “Bliss”) in view of USPN 6,254,494 to Hasebe et al (hereinafter referred to as “Hasebe”).
As to independent claim 1, Bliss shows a metal-wood type golf club head (FIGS. 5 and 7), the golf club head comprising: a striking face (522) having a face center (i.e., every striking face includes a geometric face center), the striking face (522) defining a frontmost point of the golf club head; a crown (516) connected to a top side of the striking face; a sole (536) which is connected to a bottom side of the striking face; a heel-side midsole weight (528), connected to the sole and a toe-side midsole weight (526), connected to the sole.
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As noted in the annotated version of FIG. 7 of Bliss hereinabove, the heel-side midsole weight (528) is depicted as having a center of mass positioned generally at: a distance (DAH) rearward from the frontmost point, measured in a front-to-back direction, generally about 60% of a clubhead length (LFB) measured from the frontmost point to an aftmost point of the golf club head; and a width (WCG-AH) heelward of the face center, measured in a heel-to-toe direction, between about 5-40% of a clubhead width (CW) measured from a heel-most point to a toe-most point of the golf club head. Bliss further shows the toe-side midsole weight (526) as having a center of mass positioned generally at: a distance (DAT) rearward from the frontmost point, measured in the front-to-back direction, generally about 60% of the clubhead length (LFB) measured from the frontmost point to the aftmost point of the golf club head; and a width (WCG-AT) toeward of the face center, measured in the heel-to-toe direction, between about 5-40% of the clubhead width (CW) measured from the heel-most point to the toe-most point of the golf club head.
Although Bliss is silent as to any actual dimensions or distance in locating the toe-side midsole weight and the heel-side midsole weight identified herein, the description offered by Bliss in paragraphs [0023] – [0024] along with the depiction of the weights (526, 528) reasonably would have revealed to the skilled artisan the approximate percentages that identify the claimed lengths. See MPEP 2125 stating: “The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979)” and “the description of the article pictured can be relied on, in combination with the drawings, for what they would reasonably teach one of ordinary skill in the art.” In re Wright, 569 F.2d 1124, 1127-28, 193 USPQ 332, 335-36 (CCPA 1977). In addition, the further teaching to Hasebe reveals that a hollow club head may be provided with weighting adjacent the midsole measured rearwardly from the face plane. With reference to FIG. 4 in Hasebe, the dimensions provided by Hasebe infer that the distance from the center of the rear weight (B) to a rearmost portion of the clubhead is about 20 mm, with the location of the midsole weight (B) being located 69 mm rearwardly from the face plane. It is further noted that Hasebe states that the dimensions of the clubhead shown in FIGS. 3-4 are the same as the dimensions of the clubhead in FIGS. 1-2, which are detailed in col. 3, line 52 through col. 4, line 2, wherein the clubhead is disclosed as being 90 mm in width. Accordingly, the midsole weight (B) is located roughly about 76% of the clubhead length rearwardly of the face. Thus, the midsole weight (B) in this example in Hasebe is located just outside the upper value of the claimed range of 30-70% of a clubhead length (LFB) measured from the frontmost point to an aftmost point of the golf club head. However, note that each of Bliss and Hasebe is concerned with locating the supplemental weights in a midsole position and rearward of the center of gravity of the clubhead in order to provide an increase in control over the club head during a swing (i.e., see col. 3, lines 1-13 and col. 4, lines 3-34 in Hasebe; and see Abstract and paragraphs [0004], [0005], [0016], [0023] and [0024] in Bliss). In view of the teaching in Hasebe combined with the disclosure of Bliss, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the clubhead in Bliss by locating the toe-side midsole weight and the heel-side midsole weight in locations distanced rearwardly from the frontmost point of the club head and further positioning the midsole weights heelward and toeward of an axis that intersects the face center in a front-to-rear direction at locations commensurate with the claimed percentages in order to adjust the location of the center of gravity for optimal club head performance. As Bliss teaches that tailoring the location of the center of gravity of the clubhead by locating the weights (526, 528) based upon the loft angle of the clubhead enables a more ideal trajectory of a struck golf ball without overspin or under spin of the golf ball, and as Hasebe teaches that the selective placement of weights rearward of the frontmost point of the clubhead directly affects the moment of inertia through the center of gravity and about a club shaft axis, with the distance of a struck golf ball being dependent upon the loft angle of the club head, the exact claimed percentages used to locate the midsole weights would have been attainable through routine experimentation. See MPEP 2144.05 stating: "[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). Also, note that “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).”
In addition, the applicant has not established any unexpected results over the entirety of the claimed distance and width ranges and thus the claimed percent ranges are not deemed critical. See MPEP 716.02(d): “To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).”
Finally, since the clubhead in Bliss, as modified by Hasebe, includes all of the structural features of claim 1, the Bliss clubhead includes “improved aerodynamic properties”, as set forth in the preamble.
As to claim 5, a height (HAH) of the center of mass of the heel-side midsole weight above ground is less than 20% of a clubhead height (CH). See FIG. 5 and paragraph [0023] in Bliss.
As to claim 6, the heel-side midsole weight (528) and the toe-side midsole weight (526) are positioned rearward of a center of gravity (532) of the golf club head. Again, see FIG. 5 and paragraph [0023] in Bliss.
As to claim 7, Bliss lacks the combination of heel-side midsole and toe-side midsole weights combined with “a heel-side fore-sole weight and a toe-side fore-sole weight that are each positioned forward of the center of gravity”. Hasebe shows it to be old in the art to place a fore-sole weight on a heel-side and a toe-side of the centerline (B-B), as shown by the weights (A) and (C) in FIG. 4. Hasebe places the fore-sole weights ahead of the center of gravity and takes advantage of the additional weight adjacent the front face in order to facilitate control the club head (i.e., col. 2, lines 40-67 and col. 4, lines 3-34 in Hasebe). In view of the teachings in Hasebe, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Bliss by introducing a heel-side fore-sole weight and a toe-side fore-sole weight that are each positioned forward of the center of gravity, with there being a reasonable expectation of success that positioning additional weight forward of the center of gravity in a fore-sole arrangement in both the heel and toe portions would have contributed to an increase in the moment of inertia of the club head through the center of gravity, thereby resulting in an increase in the initial angle of a struck golf ball and greater flight distance.
As to claim 9, although Bliss, even as modified by Hasebe, does not explicitly disclose that “an entire structure of the heel-side midsole weight is positioned between 30-70% of a clubhead length (LFB) and between 5-40% of the clubhead width (CW) heelward of the face center”, the exact dimensional location of the heel-side midsole weight rearward of the frontmost point of the clubhead and heelward of the face center expressed as a percentage of the overall clubhead length and clubhead width, respectively, would have been attainable through routine experimentation, for reasons similar to those advanced in the rejection of claim 1 hereinabove. Here again, as Bliss teaches that tailoring the location of the center of gravity of the club head by locating the weights (526, 528) based upon the loft angle of the clubhead enables a more ideal trajectory of a struck golf ball without overspin or under spin of the golf ball, and as Hasebe teaches that the selective placement of weights rearward of the frontmost point of the clubhead directly affects the moment of inertia through the center of gravity and about a club shaft axis, with the distance of a struck golf ball being dependent upon the loft angle of the club head, the exact, claimed percentages used to locate the heel-side midsole weight would have been attainable through routine experimentation. See MPEP 2144.05 stating: "[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). Also, note that “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).”
In addition, the applicant has not established any unexpected results over the entirety of the claimed length and width ranges and thus the claimed ranges are not deemed critical. See MPEP 716.02(d): “To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).”
As to independent claim 10, Bliss shows a metal-wood type golf club head (FIGS. 5 and 7), the golf club head comprising: a striking face (522) having a face center (i.e., every striking face includes a geometric face center), the striking face (522) defining a frontmost point of the golf club head; a crown (516) connected to a top side of the striking face; a sole (536) connected to a bottom side of the striking face; a heel-side midsole weight (528), connected to the sole and a toe-side midsole weight (526), connected to the sole.
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As noted in the annotated version of FIG. 7 of Bliss hereinabove, the heel-side midsole weight (528) is depicted as having a center of mass positioned generally at: a distance (DAH) rearward from the frontmost point, measured in a front-to-back direction, generally about 60% of a clubhead length (LFB) measured from the frontmost point to an aftmost point of the golf club head; and a width (WCG-AH) heelward of the face center, measured in a heel-to-toe direction, between about 5-40% of a clubhead width (CW) measured from a heel-most point to a toe-most point of the golf club head. Bliss further shows the toe-side midsole weight (526) as having a center of mass positioned generally at: a distance (DAT) rearward from the frontmost point, measured in the front-to-back direction, generally about 60% of the clubhead length (LFB) measured from the frontmost point to the aftmost point of the golf club head; and a width (WCG-AT) toeward of the face center, measured in the heel-to-toe direction, between about 5-40% of the clubhead width (CW) measured from the heel-most point to the toe-most point of the golf club head.
Although Bliss is silent as to any actual dimensions or distance in locating the toe-side midsole weight and the heel-side midsole weight identified herein, the description offered by Bliss in paragraphs [0023] – [0024] along with the depiction of the weights (526, 528) reasonably would have revealed to the skilled artisan the approximate percentages that identify the claimed lengths. See MPEP 2125 stating: “The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979)” and “the description of the article pictured can be relied on, in combination with the drawings, for what they would reasonably teach one of ordinary skill in the art.” In re Wright, 569 F.2d 1124, 1127-28, 193 USPQ 332, 335-36 (CCPA 1977). In addition, the further teaching to Hasebe reveals that a hollow club head may be provided with weighting adjacent the midsole measured rearwardly from the face plane. With reference to FIG. 4 in Hasebe, the dimensions provided by Hasebe infer that the distance from the center of rear weight (B) to a rearmost portion of the clubhead is about 20 mm, with the location of the midsole weight (B) being located 69 mm rearwardly from the face plane. It is further noted that Hasebe states that the dimensions of the clubhead shown in FIGS. 3-4 are the same as the dimensions of the clubhead in FIGS. 1-2, which are detailed in col. 3, line 52 through col. 4, line 2, wherein the clubhead is disclosed as being 90 mm in width. Accordingly, the midsole weight (B) is located roughly about 76% of the clubhead length rearwardly of the face. Thus, the midsole weight (B) in this example in Hasebe is located just outside the upper value of the claimed range of 30-70% of a clubhead length (LFB) measured from the frontmost point to an aftmost point of the golf club head. A height (HAH) of the center of mass of the heel-side midsole weight above ground is less than 20% of a clubhead height (CH) (i.e., see FIG. 5 and paragraph [0023] in Bliss). Also, a height (HAT) of the center of mass of the toe-side midsole weight above ground is less than 20% of a clubhead height (CH) (i.e., again, see FIG. 5 and paragraph [0023] in Bliss). Note that each of Bliss and Hasebe is concerned with locating the supplemental weights in a midsole position and rearward of the center of gravity of the clubhead in order to provide an increase in control over the club head during a swing (i.e., see col. 3, lines 1-13 and col. 4, lines 3-34 in Hasebe; and see Abstract and paragraphs [0004], [0005], [0016], [0023] and [0024] in Bliss). In view of the teaching in Hasebe combined with the disclosure of Bliss, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the clubhead in Bliss by locating the toe-side midsole weight and the heel-side midsole weight in locations distanced rearwardly from the frontmost point of the club head and further positioning the midsole weights heelward and toeward of an axis that intersects the face center in a front-to-rear direction at locations commensurate with the claimed percentages in order to adjust the location of the center of gravity for optimal club head performance. As Bliss teaches that tailoring the location of the center of gravity of the clubhead by locating the weights (526, 528) based upon a loft angle of the clubhead enables a more ideal trajectory of a struck golf ball without overspin or under spin of the golf ball, and as Hasebe teaches that the selective placement of weights rearward of the frontmost point of the clubhead directly affects the moment of inertia through the center of gravity and about a club shaft axis, with the distance of a struck golf ball being dependent upon the loft angle of the club head, the exact claimed percentages used to locate the midsole weights would have been attainable through routine experimentation. See MPEP 2144.05 stating: "[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). Also, note that “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).”
In addition, the applicant has not established any unexpected results over the entirety of the claimed distance, width and height ranges and thus the claimed percent ranges are not deemed critical. See MPEP 716.02(d): “To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).”
Finally, since the clubhead in Bliss, as modified by Hasebe, includes all of the features of claim 10, the Bliss clubhead includes “improved aerodynamic properties”, as set forth in the preamble.
As to claim 15, although Bliss, even as modified by Hasebe, does not explicitly disclose that “an entire structure of the heel-side midsole weight is positioned between 40-60% of a clubhead length (LFB) and between 10-30% of the clubhead width (CW) heelward of the face center”, the exact dimensional location of the heel-side midsole weight rearward of the frontmost point of the clubhead and heelward of the face center expressed as a percentage of the overall clubhead length and clubhead with, respectively, would have been attainable through routine experimentation, for reasons similar to those advanced in the rejection of claim 10 hereinabove. Here again, as Bliss teaches that tailoring the location of the center of gravity by locating the weights (526, 528) based upon the loft angle of the clubhead enables a more ideal trajectory of a struck golf ball without overspin or under spin of the golf ball, and as Hasebe teaches that the selective placement of weights rearward of the frontmost point of the clubhead directly affects the moment of inertia through the center of gravity and about a club shaft axis, with the distance of a struck golf ball being dependent upon the loft angle of the club head, the exact, claimed percentages used to locate the heel-side midsole weight would have been attainable through routine experimentation. See MPEP 2144.05 stating: "[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). Also, note that “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).”
In addition, the applicant has not established any unexpected results over the entirety of the claimed length and width ranges and thus the claimed ranges are not deemed critical. See MPEP 716.02(d): “To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).”
As to claim 16, the heel-side midsole weight (528) and the toe-side midsole weight (526) are positioned rearward of a center of gravity (532) of the golf club head. Again, see FIG. 5 and paragraph [0023] in Bliss.
As to claim 17, the weight pads in Bliss, while attached to the interior sole wall, are intended to be sized and dimensioned and moved forward or rearward with respect to the strike face in order to change the location of the center of gravity dependent upon the loft angle of the clubhead and are thus considered to be “replaceable weights”. See the Abstract and paragraphs [0022] and [0023] in Bliss.
Claims 2, 11 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2023/0173357 to Ogg in view of US PUBS 2003/0232663 to Bliss et al (hereinafter referred to as “Bliss”) and also in view of USPN 6,254,494 to Hasebe et al (hereinafter referred to as “Hasebe”).
As to claim 2 (dependent upon independent claim 1), Ogg, in paragraph [0024], details the specifics of an aft slice of the golf club head having a centroid height (HCentroid) that is at least 95% of a height of the face center of the striking face above a ground plane and a height (HLow) of a lowest point of the aft slice is at least 40% of the height of the face center of the striking face above the ground plane, the aft slice being a portion of the golf club head to a rear of a slice line and between an outer perimeter of the golf club head and an offset perimeter slice curve, wherein: the slice line extends in a heel-to-toe direction and is located a slice depth rearward from the frontmost point, the slice depth being equal to 70% of a front-to-back length of the golf club head; and the offset perimeter slice curve is offset from the outer perimeter of the golf club head by a perimeter offset distance of 0.5 inches. Ogg further shows a metal-wood type golf club head (i.e., paragraph [0077]) having improved aerodynamic properties, the golf club head comprising: a striking face (102) having a face center, the striking face defining a frontmost point of the golf club head; a crown (104) connected to a top side of the striking face; and a sole (110) connected to a bottom side of the striking face.
However, Ogg lacks the details of independent claim 1, which are incorporated within dependent claim 2, and which pertain to the specifics of the heel-side midsole weight and the toe-side midsole weight. Here, the skilled artisan would have recognized that the combination of the prior art references to Bliss and Hasebe teaches all of the elements of independent claim 1, as set forth in the rejection hereinabove, with the rejection of claim 1 incorporated herein by reference in its entirety. A complete exposition of the rejection of claim 1 will not be repeated here, for brevity. Given the teachings in Bliss and Hasebe, wherein Bliss is concerned with tailoring the location of the center of gravity of the club head by locating the weights (526, 528) based upon the loft angle of the clubhead to enable a more ideal trajectory of a struck golf ball without overspin or under spin of the golf ball, and further wherein Hasebe teaches that the selective placement of weights rearward of the frontmost point of the clubhead directly affects the moment of inertia through the center of gravity and about a club shaft axis, with the distance of a struck golf ball being dependent upon the loft angle of the club head, 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 club head in Ogg by including all of the remaining structural elements required by claim 1 and pertaining to the specifics of the heel-side midsole weight and the toe-side midsole weight in order to maintain a lower center of gravity and to increase the moment of inertia for enhanced club head performance.
As to dependent claim 11 (dependent upon independent claim 10), Ogg, in paragraph [0018], details the specifics of a skirt, wherein: a rearmost point on the sole is an intersection point of the sole and a lower boundary of the skirt; a rearmost point on the crown is an intersection point of the crown and an upper boundary of the skirt; the lower boundary is a skirt height above a ground plane; and the skirt height is at least 12 mm. Ogg further shows a metal-wood type golf club head (i.e., paragraph [0077]) having improved aerodynamic properties, the golf club head comprising: a striking face (102) having a face center, the striking face defining a frontmost point of the golf club head; a crown (104) connected to a top side of the striking face; and a sole (110) connected to a bottom side of the striking face.
However, Ogg lacks the details of independent claim 10, which are incorporated within dependent claim 11, and which pertain to the specifics of the heel-side midsole weight and the toe-side midsole weight. Here, the skilled artisan would have recognized that the combination of the prior art references to Bliss and Hasebe teaches all of the elements of independent claim 10, as set forth in the rejection hereinabove, with the rejection of claim 10 incorporated herein by reference in its entirety. A complete exposition of the rejection of claim 10 will not be repeated here, for brevity. Given the teachings in Bliss and Hasebe, wherein Bliss is concerned with tailoring the location of the center of gravity of the club head by locating the weights (526, 528) based upon the loft angle of the clubhead to enable a more ideal trajectory of a struck golf ball without overspin or under spin of the golf ball, and further wherein Hasebe teaches that the selective placement of weights rearward of the frontmost point of the clubhead directly affects the moment of inertia through the center of gravity and about a club shaft axis, with the distance of a struck golf ball being dependent upon the loft angle of the club head, 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 club head in Ogg by including all of the remaining structural elements required by claim 10 and pertaining to the specifics of the heel-side midsole weight and the toe-side midsole weight in order to maintain a lower center of gravity and to increase the moment of inertia for enhanced club head performance.
As to independent claim 18, Ogg, in paragraph [0024], details the specifics of an aft slice of the golf club head having a centroid height (HCentroid) that is at least 95% of a height of the face center of the striking face above a ground plane and a height (HLow) of a lowest point of the aft slice is at least 40% of the height of the face center of the striking face above the ground plane, the aft slice being a portion of the golf club head to a rear of a slice line and between an outer perimeter of the golf club head and an offset perimeter slice curve, wherein: the slice line extends in a heel-to-toe direction and is located a slice depth rearward from the frontmost point, the slice depth being equal to 70% of a front-to-back length of the golf club head; and the offset perimeter slice curve is offset from the outer perimeter of the golf club head by a perimeter offset distance of 0.5 inches. Ogg further shows a metal-wood type golf club head (i.e., paragraph [0077]) having improved aerodynamic properties, the golf club head comprising: a striking face (102) having a face center, the striking face defining a frontmost point of the golf club head; a crown (104) connected to a top side of the striking face; and a sole (110) connected to a bottom side of the striking face.
However, Ogg lacks all of the claimed requirements of the heel-side midsole weight and the toe-side midsole weight. Bliss shows a metal-wood type golf club head (FIGS. 5 and 7) having improved aerodynamic properties, the golf club head comprising: a striking face (522) having a face center (i.e., every striking face includes a geometric face center), the striking face (522) defining a frontmost point of the golf club head; a crown (516) connected to a top side of the striking face; a sole (536) connected to a bottom side of the striking face; a heel-side midsole weight (528), connected to the sole and a toe-side midsole weight (526), connected to the sole.
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As noted in the annotated version of FIG. 7 of Bliss hereinabove, the heel-side midsole weight (528) is depicted as having a center of mass positioned generally at: a distance (DAH) rearward from the frontmost point, measured in a front-to-back direction, generally about 60% of a clubhead length (LFB) measured from the frontmost point to an aftmost point of the golf club head; and a width (WCG-AH) heelward of the face center, measured in a heel-to-toe direction, between about 10-30% of a clubhead width (CW) measured from a heel-most point to a toe-most point of the golf club head. Bliss further shows the toe-side midsole weight (526) as having a center of mass positioned generally at: a distance (DAT) rearward from the frontmost point, measured in the front-to-back direction, generally about 60% of the clubhead length (LFB) measured from the frontmost point to the aftmost point of the golf club head; and a width (WCG-AT) toeward of the face center, measured in the heel-to-toe direction, between about 10-30% of the clubhead width (CW) measured from the heel-most point to the toe-most point of the golf club head.
Although Bliss is silent as to any actual dimensions or distance in locating the toe-side midsole weight and the heel-side midsole weight identified herein, the description offered by Bliss in paragraphs [0023] – [0024] along with the depiction of the weights (526, 528) reasonably would have revealed to the skilled artisan the approximate percentages that identify the claimed lengths. See MPEP 2125 stating: “The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979)” and “the description of the article pictured can be relied on, in combination with the drawings, for what they would reasonably teach one of ordinary skill in the art.” In re Wright, 569 F.2d 1124, 1127-28, 193 USPQ 332, 335-36 (CCPA 1977). In addition, the further teaching to Hasebe reveals that a hollow club head may be provided with weighting adjacent the midsole measured rearwardly from the face plane. With reference to FIG. 4 in Hasebe, the dimensions provided by Hasebe infer that the distance from the center of rear weight (B) to a rearmost portion of the clubhead is about 20 mm, with the location of the midsole weight (B) being located 69 mm rearwardly from the face plane. It is further noted that Hasebe states that the dimensions of the clubhead shown in FIGS. 3-4 are the same as the dimensions of the clubhead in FIGS. 1-2, which are detailed in col. 3, line 52 through col. 4, line 2, wherein the clubhead is disclosed as being 90 mm in width. Accordingly, the midsole weight (B) is located roughly about 76% of the clubhead length rearwardly of the face. Thus, the midsole weight (B) in this example in Hasebe is located outside the upper value of the claimed range of 40-60% of a clubhead length (LFB) measured from the frontmost point to an aftmost point of the golf club head. However, note that each of Bliss and Hasebe is concerned with locating weights in a midsole position and rearward of the center of gravity of the clubhead in order to provide an increase in control over the club head during a swing (i.e., see col. 3, lines 1-13 and col. 4, lines 3-34 in Hasebe; and see Abstract and paragraphs [0004], [0005], [0016], [0023] and [0024] in Bliss). In view of the teaching in Hasebe combined with the disclosure of Bliss, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the clubhead in Bliss by locating the toe-side midsole weight and the heel-side midsole weight in locations distanced rearwardly from the frontmost point of the club head and further positioning the midsole weights heelward and toeward of an axis that intersects the face center in a front-to-rear direction at locations commensurate with the claimed percentages in order to adjust the location of the center of gravity for optimal club head performance. As Bliss teaches that tailoring the location of the center of gravity of the clubhead by locating the weights (526, 528) based upon the loft angle of the clubhead enables a more ideal trajectory of a struck golf ball without overspin or under spin of the golf ball, and as Hasebe teaches that the selective placement of weights rearward of the frontmost point of the clubhead directly affects the moment of inertia through the center of gravity and about a club shaft axis, with the distance of a struck golf ball being dependent upon the loft angle of the club head, the exact claimed percentages used to locate the midsole weights would have been attainable through routine experimentation. See MPEP 2144.05 stating: "[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).
In addition, the applicant has not established any unexpected results over the entirety of the claimed distance and width ranges and thus the claimed ranges are not deemed critical. See MPEP 716.02(d): “To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).”
As to claim 19, although Ogg, as modified by Bliss and Hasebe, does not explicitly disclose that “an entire structure of the heel-side midsole weight is positioned between 30-70% of a clubhead length (LFB) and between 5-40% of the clubhead width (CW) heelward of the face center”, the exact dimensional location of the heel-side midsole weight rearward of the frontmost point of the clubhead and heelward of the face center expressed as a percentage of the overall clubhead length and clubhead width, respectively, would have been attainable through routine experimentation, for reasons similar to those advanced in the rejection of claim 18 hereinabove. Here again, as Bliss teaches that tailoring the location of the center of gravity of the club head by locating the weights (526, 528) based upon the loft angle of the clubhead enables a more ideal trajectory of a struck golf ball without overspin or under spin of the golf ball, and as Hasebe teaches that the selective placement of weights rearward of the frontmost point of the clubhead directly affects the moment of inertia through the center of gravity and about a club shaft axis, with the distance of a struck golf ball being dependent upon the loft angle of the club head, the exact, claimed percentages used to locate the heel-side midsole weight would have been attainable through routine experimentation. See MPEP 2144.05 stating: "[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). Also, note that “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).”
In addition, the applicant has not established any unexpected results over the entirety of the claimed length and width ranges and thus the claimed ranges are not deemed critical. See MPEP 716.02(d): “To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).”
As to claim 20, Bliss renders it obvious to dimension a height of the center of mass of the heel-side midsole weight above ground to be less than 20% of a clubhead height (CH). See FIG. 5 and paragraph [0023] in Bliss.
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Allowable Subject Matter
Claim 8 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Here, the specific, claimed relationship between the location of the heel-side fore-sole weight and the location of the heel-side midsole weight combined with the claimed relationship between the location of the toe-side fore-sole weight and the location of the toe-side midsole weight, and further in combination with all of the remaining structural components recited in claims 1 and 6-7 is not shown or suggested or otherwise rendered obvious by the prior art of record.
Claims 3-4 and 12-14 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Note the placement of weights (16, 17, 18, 19) in Hollis;
See FIG. 1 and the weights (272, 274, 276) adjacent the front striking face in Parsons (‘822);
FIG. 4 in Jertson shows midsole weights on a heel and toe side of the clubhead;
Note FIG. 4 in Parson (‘320);
See FIG. 8 in Wallin;
FIG. 9 in Muzutani shows ports for placing weights on heel and toe portions of the sole;
See FIG. 4 and weights (100, 120) in Seluga;
Note weights (80, 84) in Watson;
Note FIG. 9A and the selective positioning of the sole weights in Carter;
See FIG. 4 in Breier;
See FIG. 8(B) in Yokota;
See FIG. 6 in Iizuka;
See FIG. 3 in De Le Cruz;
Note FIG. 2 in Beach;
See FIGS. 7-16, wherein the placement of the rear weight is adjusted with respect to a loft angle in Kobayashi;
See FIG. X in Churchward; and
Note FIG. 1 in Glover.
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711
Prosecution Insights