DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (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 pre-AIA 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, 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 said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
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-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claim 1-5 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Beach et al., U.S. Patent Application No. 2008/0146374, in view of Rice et al., U.S. Patent Application No. 2006/0068932. As to Claim 1, Beach teaches a golf club head (10) comprising a hosel portion (28), a heel portion (20), a toe portion (22), a crown (26), a sole (24), and a face (12) having a striking surface (13), paragraph 0043. The hosel may define a hosel axis (Ah), paragraph 0046. The examiner finds that the face may be considered to have an ideal impact location at a center of the striking surface and that the center may be considered to define an origin of a coordinate system arranged as claimed. Beach teaches that the face may have a width of 83mm, paragraph 0070 and see Figure 12 A. It is inherent that a first and second off center locations at 40 mm and -40 mm along the horizontal axis from the center exist. Beach teaches a non-metal face plate defining the striking surface, paragraph 0058, noting composite. The face plate may comprise a lay-up of multiple composite prepreg plies, paragraph 0058. The plies may comprise a plurality of prepreg layers arranged within the lay-up so as to define a cross-sectional profile having varying thickness, paragraph 0018. Beach does not specify that a portion of the plies may be configured as strips. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the plies as strips, since it has been held that configuration of parts of an invention is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that a particular claimed configuration was significant, In re Dailey, 149 USPQ 47 (CCPA 1966). Beach, as modified, is silent as to the characteristic time at 10 mm increments between the center and the off-center locations may vary from the characteristic time at the center by no more than 20%. Rice teaches a club head having a face configured with varying thickness in order to tailor the characteristic time at locations away from the face center, paragraphs 0033 and 0034. Rice teaches that characteristic time for locations at the toe and heel as well as other locations away from the face center may vary from that of the center by no more than 20%, see Tables 1 and 2, suggesting that characteristic times at 10 mm increments between the center and first and second off-center locations may remain within 20% of the center characteristic time. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the face to provide characteristic times at 10 mm increments from the face center to the first and second off-center locations to deviate from the center characteristic time by no more than 20% as taught and suggested by Rice to provide Beach, as modified, with consistent characteristic times across the face to yield the predictable result of improving consistency of the face response when a ball is struck at a location away from the face center. As to Claim 2, Beach teaches that each prepreg ply may comprise a plurality of fibers and a resin, paragraph 0058. A first subset of prepreg plies may have fibers oriented at first angle relative to the horizontal axis, a second subset of prepreg plies may have fibers oriented at a second angle greater than the first angle, and a third subset may have fibers oriented at a third angle less than the second angle and greater than the first angle, paragraph 0060. Beach teaches that other plies may be formed of unidirectional prepreg carbon fiber, paragraph 0060, suggesting that fourth, fifth, and sixth prepreg plies oriented at varied angles may also be present. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide additional fourth, fifth, and sixth prepreg plies at varied angles to the horizontal, as suggested, to provide Beach, as modified, with fibers oriented in multiple directions to yield the predictable result of moderating the effects of face plate stress in varied directions. Beach, as modified, discloses the claimed invention except for selecting the specific angles of fiber orientation for the fourth, fifth, and sixth subsets of plies. Beach teaches that the selected orientation of fibers in the prepreg plies is a result effective variable, paragraph 0060, noting prescribed orientation for each ply. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the orientation of the fourth, fifth, and sixth plies as claimed since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, Boesch, 617 F. 2d 272, 205 USPQ 215 (CCPA 1980). As to Claim 3, the examiner finds that the case law applied in the treatment of Claim 2 is equally applicable to support a finding of obviousness with regard to adding seventh and eighth prepreg plies oriented at angles as claimed. As to Claim 4, Beach teaches that the non-metal face plate may comprise a polymer cover layer (cap) disposed on an outer surface of the lay-up to define a striking face, paragraph 0065. As to Claim 5, Beach discloses a face plate (12) illustrated with horizontal lines suggesting a plurality of grooves extending parallel to a horizontal axis. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Beach, as modified, with a plurality of grooves in the polymer cover layer and extending parallel to the horizontal axis, as suggested.
Claims 6, 7, 10-15, 17, 19, and 20 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Beach. As to Claim 6, Beach is applied as in Claims 1 and 2. Beach teaches that fibers of prepreg plies of the first – fourth subsets of plies maybe oriented at the specific angles relative to the x-axis (horizontal axis of face plane), as claimed, paragraph 0060. The examiner finds that the case law applied in the treatment of Claim 2, with regard to the orientation of the fifth and sixth plies is equally applicable. As to Claim 7, the cited case law is applied as in Claim 3. As to Claims 10 and 19, Beach teaches that the club head may comprise a support (18) defining a face opening (16), paragraph 0043. The support may comprise first and second inner peripheral surfaces may circumscribe the opening, see Figure 1, noting that an inwardly extending peripheral surface (32) projects from a transition zone (15) and a second peripheral surface (34) extends from the first peripheral surface, defining a ledge. The non-metal face plate may be received within the opening with a rear surface bonded to the second peripheral surface and an outer peripheral edge of the face plate bonded to the first peripheral surface, paragraphs 0043, 0065 and see Figure 1. As to Claim 11, Beach teaches that the face support (body including face support) may be made of metallic material, paragraph 0022. As to Claim 12, Beach, together with cited case law is applied as in Claim 1, with the same obviousness rationale being found applicable. As to Claim 13, Beach is applied as in Claims 1, 2, and 6, with the same obviousness rationale being found applicable. the examiner finds that the case law applied in the treatment of Claim 2 is equally applicable to support a finding of obviousness with regard to adding seventh and eighth prepreg plies oriented at angles as claimed. As to Claim 14, the examiner finds that the case law applied in the treatment of Claim 2 is equally applicable to support a finding of obviousness with regard to adding seventh and eighth prepreg plies oriented at angles as claimed. As to Claim 15, Beach is applied as in Claim 4. As to Claim 17, Beach, together with cited case law is applied as in Claims 1, 2, 3, 6, and 7, with the same obviousness rationale being found applicable. As to Claim 20, Beach teaches that the rear surface of the face plate may be bonded to the second peripheral surface and the outer peripheral edge of the face plate may be bonded to the first peripheral surface by adhesive, as discussed in the treatment of Claim 19. Beach mentions no other feature between, suggesting that separation is only by the adhesive layer. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the separation between the face plate and the support to be only by the adhesive layer, as suggested.
Claims 8, 9, and 16 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Beach, in view of Antonious, U.S. Patent No. 6,398,665. Beach, as modified, substantially shows the claimed limitations, as discussed above. Beach, as modified, is silent as to a plurality of depressions extending across the striking face. As to Claim 8, Antonious teaches a club head (100) including a plurality of depressions (110) extending across a striking surface (102) in a direction of an x-axis (horizontal), Col. 2, ln. 66 – Col. 3 ln. 6 and see Figure 1. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Beach, as modified, with a plurality of depressions extending across the striking face in a direction of an x-axis, as taught by Antonious, to provide Beach, as modified, with a known substitute arrangement of striking face features. As to Claim 9, Antonious teaches that the depressions may have a round appearance at the striking surface, see Figure 1, suggesting a circular cross-section in an x-z plane (plane coincident with the striking surface). It would have been obvious to provide Beach, as modified, with depressions shaped with a circular cross-section, as taught and suggested by Antonious, to provide Beach, as modified, with a known substitute depression shape. As to Claim 16, Antonious is applied as in Claims 8 and 9, with the same obviousness rationale being found applicable.
Claim 18 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Beach, in view of Chao et al., U.S. Patent Application No. 2005/0239575. Beach, as modified, substantially shows the claimed limitations, as discussed above. As to Claim 18, Beach, as modified, is silent as to a weight port. Chao teaches a club head (20) comprising a composite face plate (22) paragraphs 0035 and 0046. A weight port (90) may be located at a back portion of club head, being opposite the non-metal face plate, paragraph 0048 and see Figure 3. A weight (weight element) may be retained by the weight port, paragraph 0048. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Beach, as modified, with a weight retained in a rear weight port, as taught by Chao, to provide Beach, as modified, with adjustable weighting of the club head to facilitate the process of customizing club head performance.
Claims 21-23 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Beach, ‘374, in view of Chao, and in further view of .Beach et al., U.S. Patent Application No. 2008/0254911. Beach, as modified, substantially shows the claimed limitations, as discussed above. As to Claim 21, Beach, ‘374, together with the obviousness rationale, is applied as in Claim 5, with regard to the presence of a plurality of grooves on the striking surface. Beach, ‘374, as modified, does not disclose club head moment of inertia, club head depth, and center of gravity location. Beach ‘911, teaches a similar club head (2) comprising a CG x-axis moment of inertia between about 300 and about 500 kg x mm squared, and CG z-axis moment of inertia between about 450 and 650 kg x mm squared, paragraph 0073. Club head depth may be between 111.76 and 127 mm, paragraph 0066. The club head may have a CG y axis coordinate of 30 – 50 mm and a CG z-axis coordinate between about -10 and 5 mm, paragraph 0056. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Beach, ‘374, as modified, with moment of inertia, club head depth, and center of gravity location dimensions, as taught by Beach, ‘911, to provide Beach, ‘374, as modified, with a known substitute set of club head dimensions. As to Claim 22, Beach, ‘374, teaches that the club head may have a face size of about 4,000 to about 7,000 mm squared, paragraph 0052. Beach, ‘374, as modified, discloses the claimed invention except for specifying that the face size may be calculated by the claimed steps. It would have been an obvious matter of design choice to set the face size within the claimed range when calculated by the claimed steps, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art, In re Rose, 105 USPQ 237 (CCPA 1955). As to Claim 23, Beach, ‘374, teaches that face size may be at least about 4,500 mm squared, paragraph 0052. Chao teaches that the weight port longitudinal axis may intersect the face, paragraph 0044, noting that the axis is directed toward the face. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Beach, ‘374, as modified, with a longitudinal axis of the weight port arranged to intersect the face, as taught by Chao, to provide Beach, ‘374, as modified, with a known substitute orientation of a weight port.
Claims 24 and 25 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Beach, ‘374, in view of Chao, and in further view of .Beach, ‘911 and Gilbert et al., U.S. Patent Application No. 2008/0242443. Beach, ‘374, as modified, substantially shows the claimed limitations, as discussed above. As to Claim 24, Beach, ‘374, together with the obviousness rationale, is applied as in Claim 5, with regard to the presence of a plurality of scorelines (grooves) on the striking surface. Beach, ‘374, as modified, is silent as to a measure of mean surface roughness. Gilbert teaches that a club head striking surface may be textured to enhance certain shots, see abstract and paragraph 0014, indicating that striking surface roughness is a result effective variable. Further, Gilbert teaches a mean surface roughness of greater than about 1.0 micrometers, suggesting a mean surface roughness of about 2.5 to 5 micrometers (see Mactech surface roughness conversion chart). It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Beach, ‘374, as modified, with striking surface mean surface roughness approximately within the claimed range, as taught and suggested by Gilbert, to provide Beach, ‘374, as modified, with a textured striking surface to yield the predictable result of enhancing certain golf shots. Beach, ‘374, as modified, discloses the claimed invention except for specifying the range for striking face mean surface roughness within the claimed range. It would have been obvious to one of ordinary skill in the art before the effective filing date to set the mean surface roughness within the claimed range, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art, In re Aller, 105 USPQ 233. As to Claim 25, Beach, ‘374, teaches that the cover layer may be a polymer material, as discussed above. A metal cover layer may have a thickness of no more than 1.2 mm (less than about 1 mm), paragraph 0065, suggesting that a polymer cover layer serving the same purpose may have equivalent thickness. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide a polymer cover layer having thickness within the claimed range as taught and suggested by Beach, ‘374, to provide a known substitute cover layer thickness.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN ELLIOTT SIMMS JR whose telephone number is (571)270-7474. The examiner can normally be reached 8:30 am - 5:00 pm - M-F.
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/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711 10 July 2026
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