DETAILED ACTION
This Office action is responsive to communication received 09/17/2024 – application papers received, Power of Attorney, IDS, and miscellaneous letter styled “Rescission of any Prior Disclaimers and Request to Revisit Art”.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continuation Data
This application is a CON of 18/510,476 11/15/2023 which is a CON of 17/691,649 03/10/2022 PAT 12246225 which is a CON of 17/124,134 12/16/2020 PAT 12121780.
Drawings
The drawings were received on 09/17/2024. These drawings are acceptable.
Status of Claims
Claims 1-20 are pending.
FOLLOWING IS AN ACTION ON THE MERITS:
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 8-10 and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,115,419.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘419 patent are more specific than the instant claims and thus encompass all of the limitations of instant claims 1-4, 8-10 and 18-20. In addition, the differences are considered minor phrasing differences and/or the differences present an obvious rearrangement of claim features among the claims and/or the differences present features that are obvious and well known in the art. Here, the claims of the ‘419 patent further require “wherein said golf club head has a MOI-X measurement of greater than about 300 kg-mm2“ (i.e., see claim 1 of the ‘419 patent).
Regarding the remaining limitations in the claims, note the following comments:
As to claim 1, see claim 1 of the ‘419 patent.
As to claim 2, see clam 7 of the ‘419 patent.
As to claim 3, see claim 7 of the ‘419 patent.
As to claim 4, see claim 7 of the ‘419 patent.
As to claim 8, see claim 2 of the ‘419 patent.
As to claim 9, see claim 3 of the ‘419 patent.
As to claim 10, see claim 4 of the ‘419 patent.
As to claim 18, see claim 15 (as dependent upon claim 10) of the ‘419 patent.
As to claim 19, see claim 15 (as dependent upon claim 10) of the ‘419 patent.
As to claim 20, see claim 12 of the ‘419 patent.
Claims 5-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,115,419 in view of Stites (USPN 9,643,065).
As to claims 5-7, although the claimed invention of the ‘419 patent is silent with respect to the face width dimensions, 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 claimed invention of the ‘419 patent by providing a face width “between about 95 mm and about 105 mm” (as required by claim 5), “between about 97 mm and about 103 mm” (as required by claim 6) or “about 100 mm” (as required by claim 7) in order to expand the sweet spot and to alter the weight distribution of the club head for improved club head performance. Here, Stites teaches a face width (i.e., termed “Face Length”) that is dimensioned as ranging from at least 3.75 inches (95.25 mm), or at least 3.8 inches (96.52 mm) or as much as 4.71 inches (119.6 mm). See TABLES 1, 2 and 3 in Stites.
Claims 1 and 11-17 are rejected under the judicially created doctrine of obviousness-type double patenting as unpatentable over claims 1-20 of USPN 11,331,546. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘546 patent are more specific than the instant claims and thus encompass all of the limitations of the instant claims. In addition, the differences are considered minor phrasing differences and/or the differences present an obvious rearrangement of claim features among the claims and/or the differences present features that are obvious and well known in the art.
As to claim 1, see claim 1 of the ‘546 patent.
As to claims 11-17, see claim 2 (as dependent upon claim 1) of the ‘546 patent.
Claims 2-10 and 18-20 are rejected under the judicially created doctrine of obviousness-type double patenting as unpatentable over claims 1-20 of USPN 11,331,546 in view of Stites (USPN 9,643,065).
As to claims 2-4, 8-10 and 18, the claimed invention of the ‘546 patent lacks the specific relationships among various variables such as MOI-X, MOI-SA, MOI-Y, MOI-Z, and CG-B recited throughout claims 2-4, 8-10 and 18. Here, Stites shows it to be old in the art to arrange the structure of the club head to move the center of gravity rearward in the club head structure for improved playability (i.e., col. 3, lines 33-44). Stites clearly teaches that adjustments to the structure and dimensions of the club head can serve to promote more resistance to twisting so that a more consistent, reliable and straighter shot may be realized (i.e., col. 4, lines 11-42; and see col. 9, line 61 through col. 10, line 37). Additional reference is made to TABLE 1, TABLE 2 and TABLE 3 in Stites, wherein various values are provided for all of MOI-X (corresponds to I(xx) in Stites), MOI-SA (corresponds to I(hosel) in Stites), MOI-Y (corresponds to I(zz) in Stites), MOI-Z (corresponds to I(yy) in Stites), and CG-B (corresponds to Delta X in Stites). As an example, and for ease of reference, a portion of TABLE 1 in Stites has been reproduced below, with conversions to (mm) shown, and equivalent symbols/names used by the instant claims, as necessary:
Instant Claims: Stites (mm)
CG-B Delta X 1.1 to 1.6 inches 27.94 mm - 40.64 mm
Face Width Face Length – At least 3.75 inches 95.25 mm
MOI-X I(xx) 260 to 340 kg-mm2
MOI-Z I(yy) 280 to 360 kg-mm2
MOI-Y I(zz) 440 to 540 kg-mm2
MOI-SA I(hosel) 700 to 800 kg-mm2
Using the values disclosed in Stites, each of the requirements of instant claims 2-4 and 8-9 is either explicitly taught or otherwise rendered obvious. For example, the requirement in each of claims 2-4 regarding the measurement of CG-B is taught by Stites, as Delta X is between 27.94 mm and 40.64 mm.
As to claim 8, a value in Stites of MOI-X = 340 is greater than (0.40 * MOI-SA) +50, (0.40 x 700) + 50 = 330, and thus satisfies the claimed requirements.
As to claim 9, a value in Stites of MOI-Y = 540 is greater than (0.52 * MOI-SA) + 147, with (0.52 x 700) +147 = 511, and thus satisfies the claimed requirements.
In view of the teachings in Stites relating to the features and measurements required by claims 2-4 and 8-9 and discussed above, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to provide the claimed invention of the ‘546 patent with a specific relationship among the MOI-SA, MOI-X, and MOI-Y and/or a specific measurement for the CG-B in order to increase golf ball distance and/or golf club head control, and/or otherwise to improve the playability of the club head. Attaining the optimum values required by the instant claims 2-4 and 8-9 would have involved routine experimentation. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
As to claims 10 and 18, the requirement that MOI-Z ≤ (1000 x CG-B / Face Width) – 150 is at least rendered obvious by Stites, as I(yy) is 280 and Delta X / Face Length = 40.64 / 95.25 and thus (1000 x 40.64 / 95.25) – 150 = 277. While the equation set forth in claims 10 and 18 is not exactly disclosed by Stites, 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 claimed invention of the ‘546 patent to provide a specific relationship among the MOI-Z, CG-B and Face Width in order to increase golf ball distance and/or golf club head control, and/or otherwise to improve the playability of the club head. Again, attaining the optimum values required by the instant claims 10 and 18 would have involved routine experimentation. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
As to claims 5-7, although the claimed invention of the ‘546 patent is silent with respect to the face width dimensions, 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 claimed invention of the ‘546 patent by providing a face width “between about 95 mm and about 105 mm” (as required by claim 5), “between about 97 mm and about 103 mm” (as required by claim 6) or “about 100 mm” (as required by claim 7) in order to expand the sweet spot and to alter the weight distribution of the club head for improved club head performance. Here, Stites teaches a face width (i.e., termed “Face Length”) that is dimensioned as ranging from at least 3.75 inches (95.25 mm), or at least 3.8 inches (96.52 mm) or as much as 4.71 inches (119.6 mm). See TABLES 1, 2 and 3 in Stites.
As to claims 19-20, see claim 1 of the ‘546 patent.
Claim 1 is rejected under the judicially created doctrine of obviousness-type double patenting as unpatentable over claims 1-18 of USPN 11,027,178.
As to claim 1, it is clear that all the elements of instant claim 1 are to be found in the claims of the ‘178 patent. The difference between instant claim 1 of the application and claims 1-18 of the patent lies in the fact that the patent claims include many more elements and are thus much more specific. For example, the claims of the ‘178 patent further require “a shaft having a shaft axis coupled to the golf club head at a first end of the shaft and a grip coupled to the shaft at a second end of the shaft” along with the further limitations “wherein said striking face is formed of metal and said golf club head further comprises a crown return located at a frontal portion of said crown made of metal, a sole return located at a frontal portion of said sole made of metal, a central body member located near the central portion of said golf club head in a heel to toe orientation, substantially in line along the z-axis extending from the crown return and the sole return to a back edge of said golf club and made of metal, wherein said golf club head is further comprised of a heel body member made of a non-metallic material and coupled to a heel side of the central body member and a toe body member made of a non-metallic material and coupled to a toe side of the central body member, wherein said golf club head further comprises a central support member comprising a first angled strut member extending from a crown portion of the central body member to said sole and a second angled strut member extending from a sole portion of the central body member to said crown, where the first and second angled strut members cross each other”. Thus, claim 1 of the ‘178 patent encompasses all of the limitations of instant claim 1.
Claims 2-10 and 18-20 are rejected under the judicially created doctrine of obviousness-type double patenting as unpatentable over claims 1-18 of USPN 11,027,178 in view of Stites (USPN 9,643,065).
As to claims 2-4 and 8-10 and 18, the claimed invention of the ‘178 patent lacks the specific relationships among various variables such as MOI-X, MOI-SA, MOI-Y, MOI-Z, and CG-B recited throughout claims 2-4, 8-10 and 18. Here, Stites shows it to be old in the art to arrange the structure of the club head to move the center of gravity rearward in the club head structure for improved playability (i.e., col. 3, lines 33-44). Stites clearly teaches that adjustments to the structure and dimensions of the club head can serve to promote more resistance to twisting so that a more consistent, reliable and straighter shot may be realized (i.e., col. 4, lines 11-42; and see col. 9, line 61 through col. 10, line 37). Additional reference is made to TABLE 1, TABLE 2 and TABLE 3 in Stites, wherein various values are provided for all of MOI-X (corresponds to I(xx) in Stites), MOI-SA (corresponds to I(hosel) in Stites), MOI-Y (corresponds to I(zz) in Stites), MOI-Z (corresponds to I(yy) in Stites), and CG-B (corresponds to Delta X in Stites). As an example, and for ease of reference, a portion of TABLE 1 in Stites has been reproduced below, with conversions to (mm) shown, and equivalent symbols/names used by the instant claims, as necessary:
Instant Claims: Stites (mm)
CG-B Delta X 1.1 to 1.6 inches 27.94 mm - 40.64 mm
Face Width Face Length – At least 3.75 inches 95.25 mm
MOI-X I(xx) 260 to 340 kg-mm2
MOI-Z I(yy) 280 to 360 kg-mm2
MOI-Y I(zz) 440 to 540 kg-mm2
MOI-SA I(hosel) 700 to 800 kg-mm2
Using the values disclosed in Stites, each of the requirements of instant claims 2-4 and 8-9 is either explicitly taught or otherwise rendered obvious. For example, the requirement in each of claims 2-4 regarding the measurement of CG-B is taught by Stites, as Delta X is between 27.94 mm and 40.64 mm.
As to claim 8, a value in Stites of MOI-X = 340 is greater than (0.40 * MOI-SA) +50, (0.40 x 700) + 50 = 330, and thus satisfies the claimed requirements.
As to claim 9, a value in Stites of MOI-Y = 540 is greater than (0.52 * MOI-SA) + 147, with (0.52 x 700) +147 = 511, and thus satisfies the claimed requirements.
In view of the teachings in Stites relating to the features and measurements required by claims 2-4 and 8-9 and discussed above, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to provide the claimed invention of the ‘178 patent with a specific relationship among the MOI-SA, MOI-X, and MOI-Y and/or a specific measurement for the CG-B in order to increase golf ball distance and/or golf club head control, and/or otherwise to improve the playability of the club head. Attaining the optimum values required by the instant claims 2-4 and 8-9 would have involved routine experimentation. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
As to claims 10 and 18, the requirement that MOI-Z ≤ (1000 x CG-B / Face Width) – 150 is at least rendered obvious by Stites, as I(yy) is 280 and Delta X / Face Length = 40.64 / 95.25 and thus (1000 x 40.64 / 95.25) – 150 = 277. While the equation set forth in claims 10 and 18 is not exactly disclosed by Stites, 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 claimed invention of the ‘178 patent to provide a specific relationship among the MOI-Z, CG-B and Face Width in order to increase golf ball distance and/or golf club head control, and/or otherwise to improve the playability of the club head. Again, attaining the optimum values required by the instant claims 10 and 18 would have involved routine experimentation. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
As to claims 5-7, although the claimed invention of the ‘178 patent is silent with respect to the face width dimensions, 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 claimed invention of the ‘178 patent by providing a face width “between about 95 mm and about 105 mm” (claim 5), “between about 97 mm and about 103 mm” (claim 6) or “about 100 mm” (claim 7) in order to expand the sweet spot and to alter the weight distribution of the club head for improved club head performance. Here, Stites teaches a face width (i.e., termed “Face Length”) that is dimensioned as ranging from at least 3.75 inches (95.25 mm), or at least 3.8 inches (96.52 mm) or as much as 4.71 inches (119.6 mm). See TABLES 1, 2 and 3 in Stites.
As to claims 19-20, see claim 2 (as dependent upon claim 1) of the ‘178 patent.
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. In Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009), the Federal Circuit offered additional instruction as to the need for an explicit analysis. The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.
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"[T]he analysis that "should be made explicit" refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis. . . . Under the flexible inquiry set forth by the Supreme Court, the district court therefore erred by failing to take account of 'the inferences and creative steps,' or even routine steps, that an inventor would employ and by failing to find a motivation to combine related pieces from the prior art." Ball Aerosol, 555 F.3d at 993, 89 USPQ2d at 1877.
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The Federal Circuit’s directive in Ball Aerosol was addressed to a lower court, but it applies to Office personnel as well. When setting forth a rejection, Office personnel are to continue to make appropriate findings of fact as explained in MPEP § 2141 and § 2143, and must provide a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art at the time of the invention. This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.
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I. EXEMPLARY RATIONALES
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Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
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(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-10 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 7,198,575 to Beach et al (hereinafter referred to as “Beach”) in view of USPN 9,643,065 to Stites et al (hereinafter referred to as “Stites”).
As to claims 1 and 18, Beach shows a golf club head (10, 50) comprising: a frontal portion further comprising a striking face (16) that helps define a face center (i.e., FIG. 8 shows an axis 80 intersecting the face center of strike face 60), located at a forward portion of said golf club head; a rear portion (81) located aft of said striking face (16), wherein an x-axis is defined as a horizontal axis tangent to a geometric center of said striking face with a positive direction towards a heel of said golf club head, a y-axis is a vertical axis orthogonal to said x-axis with a positive direction towards a crown of said golf club head, and a z-axis being orthogonal to both said x-axis and said y-axis with a positive direction towards said frontal portion of said golf club head (i.e., FIG. 1 displays a coordinate system 12, wherein the axis labeled 26 in Beach corresponds to the claimed “y-axis” in a vertical direction; wherein the axis labeled 28 in Beach corresponds to the claimed “x-axis”; and wherein the axis labeled 30 in Beach corresponds to the claimed “z-axis”); and at least one first weighting member (74a, 74b) located substantially in line with a vertical plane extending through said face center and along the z-axis, wherein said golf club head has a moment of inertia about said y-axis (MOI-Y) passing through a center of gravity (CG) of said golf club head, said golf club head has a moment of inertia about said z-axis (MOI-Z) passing through said CG, said golf club head has a moment of inertia about said x-axis (MOI-X) passing through said CG, and a moment of inertia about a shaft axis (MOI-SA) passing through said shaft axis. Although the labeling of the axis system in FIG. 1 of Beach is somewhat misleading (or perhaps mislabeled), Beach clearly discusses a moment of inertia about a vertical axis 26 as Izz; and further discusses a moment of inertia about the heel/toe axis 28 as Ixx; and further discusses a moment of inertia about the front/back axis 30 as Iyy. See col. 3, lines 22-41 in Beach. Also, Beach shows an axis (37) passing through the hosel portion, which is configured to receive a shaft. While no specific measurement of a moment of inertia about the shaft axis is provided, the club head structure in Beach clearly exhibits a moment of inertia about the shaft axis. Even, in arguendo, if one were to argue that Beach does not disclose a moment of inertia about a shaft axis (MOI-SA) passing through the shaft axis, including this parameter is rendered obvious in light of the teachings in Stites, presented in greater detail below.
More specific to claim 1, Beach lacks “said golf club head has a MOI-Y to MOI-Z ratio of greater than about 1.50, wherein said golf club head has a MOI-Y measurement of greater than about 400 kg-mm², wherein said MOI-SA of said golf club head is less than about 800 kg-mm²”. Using the measurements from TABLE 1 in Stites, it is clear that a ratio of MOI-Y to MOI-Z is greater than 1.50 (i.e., in Stites, MOI-Y corresponds to I(zz) and MOI-Z corresponds to I(yy), with Stites providing a ratio of 440/280 = 1.57). In Stites, the MOI-Y (i.e., I(zz)) is 440 to 540 kg-mm2, which is greater than about 400 kg-mm². Last, Stites discloses an MOI-SA (i.e., I(hosel)) of 700 to 800 kg-mm2, which meets the requirement of an MOI-SA less than about 800 kg-mm². Although Beach discloses that the moment of inertia I(yy), which corresponds to the claimed MOI-Z about the front/back axis (30), may not be as effective for furthering the performance of the club head (i.e., col. 4, lines 10-16) and although Beach does not disclose a specific measurement for the I(yy), Stites clearly teaches that adjustments to the structure and dimensions of the club head can serve to promote more resistance to twisting so that a more consistent, reliable and straighter shot may be realized (i.e., col. 4, lines 11-42; and see col. 9, line 61 through col. 10, line 37). In view of the teachings in Stites, 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 Beach by enhancing the moment of inertia along an axis in a front/back direction and to configure the moment of inertia about each of the vertical axis, the front/back axis and the shaft axis in order to improve the performance of the club head during off-center impacts. Here, the modification of Beach, with the teachings of Stites amounts to applying a known technique (i.e., using MOI-X, MOI-Z and MOI-SA, as taught by Stites) to a known device ready for improvement to yield predictable results (i.e., a reduction in club head twisting during off-center impacts in Beach would have been predictable
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, using the teachings of Stites). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
More specific to claim 18, the requirement that MOI-Z ≤ (1000 x CG-B / Face Width) – 150 is at least rendered obvious by Stites, as I(yy) is 280 and Delta X / Face Length = 40.64 / 95.25 and thus (1000 x 40.64 / 95.25) – 150 = 277. See TABLE 1 in Stites. While the outcome of the equation set forth in claim 18 is not exactly disclosed by Stites, 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 Beach to provide a specific relationship among the MOI-Z, CG-B and Face Width in order to increase golf ball distance and/or golf club head control, and/or otherwise to improve the playability of the club head. Attaining the optimum values required by the instant claim 18 would have involved routine experimentation. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
As to claims 2-4, the requirement in each of claims 2-4 regarding the measurement of CG-B is taught by Stites, as Delta X is between 27.94 mm and 40.64 mm. See TABLE 1 in Stites. In view of the teachings in Stites relating to the features and measurements required by claims 2-4, 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 provided the club head in Beach with a specific measurement for CG-B to improve the playability of the club head. Attaining the optimum values required by the instant claims 2-4 would have involved routine experimentation. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
As to claims 5-7, although Beach is silent with respect to the face width dimensions, 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 Beach by providing a face width “between about 95 mm and about 105 mm” (as required by claim 5), “between about 97 mm and about 103 mm” (as required by claim 6) or “about 100 mm” (as required by claim 7) in order to expand the sweet spot and to alter the weight distribution of the club head for improved club head performance. Here, Stites teaches a face width (i.e., termed “Face Length”) that is dimensioned as ranging from at least 3.75 inches (95.25 mm), or at least 3.8 inches (96.52 mm) or as much as 4.71 inches (119.6 mm). See TABLES 1, 2 and 3 in Stites.
As to claim 8, Beach does not explicitly disclose the claimed relationship between MOI-X and MOI-SA. Here, a value in Stites of MOI-X = 340 is greater than (0.40 * MOI-SA) +50, (0.40 x 700) + 50 = 330, and thus satisfies the claimed requirements. See TABLE 1 in Stites. In view of the teachings in Stites, 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 Beach to provide a specific relationship between MOI-X and MOI-SA in order to increase golf ball flight distance and/or club head control, and/or to improve the playability of the club head.
As to claim 9, Beach does not explicitly disclose the claimed relationship between MOI-Y and MOI-SA. Here, a value in Stites of MOI-Y = 540 is greater than (0.52 * MOI-SA) + 147, with (0.52 x 700) +147 = 511, and thus satisfies the claimed requirements. See TABLE 1 in Stites. In view of the teachings in Stites, 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 Beach to provide a specific relationship between MOI-Y and MOI-SA in order to increase golf ball flight distance and/or club head control, and/or to improve the playability of the club head.
As to claim 10, the requirement that MOI-Z ≤ (1000 x CG-B / Face Width) – 150 is at least rendered obvious by Stites, as I(yy) is 280 and Delta X / Face Length = 40.64 / 95.25 and thus (1000 x 40.64 / 95.25) – 150 = 277. See TABLE 1 in Stites. While the outcome of the equation set forth in claim 10 is not exactly disclosed by Stites, 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 Beach by providing a specific relationship among the MOI-Z, CG-B and Face Width in order to increase golf ball distance and/or golf club head control, and/or otherwise to improve the playability of the club head. Attaining the optimum values required by the instant claim 10 would have involved routine experimentation. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
As to claims 19 and 20, although Beach is concerned with increasing the moment of inertia about a vertical axis (i.e., in Beach, an increase in Izz corresponds to an increase in the claimed MOI-Y), Beach does not explicitly disclose “said golf club head has a MOI-Y measurement of greater than about 400 kg-mm²” (claim 19) and does not explicitly disclose “said MOI-Y measurement of said golf club head is greater than about 410 kg-mm²” (claim 20). Stites discloses an I(zz), which corresponds to the claimed MOI-Y, of 440 to 540 kg-mm2. See TABLE 1 in Stites. In view of the teaching in Stites, 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 Beach by providing an increase in the Izz (i.e., corresponding to the claimed MOI-Y) in order to provided added resistance to rotation during an off-center impact and to increase club head forgiveness.
Claims 11-17 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 7,198,575 to Beach et al (hereinafter referred to as “Beach”) in view of USPN 9,643,065 to Stites et al (hereinafter referred to as “Stites”) and also in view of US PUBS 2009/0286611 to Beach et al (hereinafter referred to as “Beach (‘611)”).
As to claim 11, Beach shows a golf club head (10, 50) comprising: a frontal portion further comprising a striking face (16) that helps define a face center (i.e., FIG. 8 shows an axis 80 intersecting the face center of strike face 60), located at a forward portion of said golf club head; a rear portion (81) located aft of said striking face (16), wherein an x-axis is defined as a horizontal axis tangent to a geometric center of said striking face with a positive direction towards a heel of said golf club head, a y-axis is a vertical axis orthogonal to said x-axis with a positive direction towards a crown of said golf club head, and a z-axis being orthogonal to both said x-axis and said y-axis with a positive direction towards said frontal portion of said golf club head (i.e., FIG. 1 displays a coordinate system 12, wherein the axis labeled 26 in Beach corresponds to the claimed “y-axis” in a vertical direction; wherein the axis labeled 28 in Beach corresponds to the claimed “x-axis”; and wherein the axis labeled 30 in Beach corresponds to the claimed “z-axis”); and at least one first weighting member (74a, 74b) located substantially in line with a vertical plane extending through said face center and along the z-axis, wherein said golf club head has a moment of inertia about said y-axis (MOI-Y) passing through a center of gravity (CG) of said golf club head, said golf club head has a moment of inertia about said z-axis (MOI-Z) passing through said CG, said golf club head has a moment of inertia about said x-axis (MOI-X) passing through said CG, and a moment of inertia about a shaft axis (MOI-SA) passing through said shaft axis. Although the labeling of the axis system in FIG. 1 of Beach is somewhat misleading (or perhaps mislabeled), Beach clearly discusses a moment of inertia about a vertical axis 26 as Izz; and further discusses a moment of inertia about the heel/toe axis 28 as Ixx; and further discusses a moment of inertia about the front/back axis 30 as Iyy. See col. 3, lines 22-41 in Beach. Also, Beach shows an axis (37) passing through the hosel portion, which is configured to receive a shaft. While no specific measurement of a moment of inertia about the shaft axis is provided, the club head structure in Beach clearly exhibits a moment of inertia about the shaft axis. Even, in arguendo, if one were to argue that Beach does not disclose a moment of inertia about a shaft axis (MOI-SA) passing through the shaft axis, including this parameter as part of the Beach club head in order to help evaluate the ability of the club head to reduce twisting and to promote a more consistently stable face alignment during off-center shots is rendered obvious in light of the teachings in Stites, which provides a defined measurement for MOI-SA (i.e., Stites refers to an I(hosel) in TABLES 1, 2 and 3).
Beach does not explicitly disclose the specific, claimed relationship among MOI-Z and MOI-Y. Here, Beach (‘611), in paragraphs [0237] – [0240] discloses values for Iyy, which corresponds to the claimed MOI-Z, and discloses values for Izz, which corresponds to the claimed MOI-Y. Beach (’611) discloses an MOI-Z of less than about 268 kg-mm2 (i.e., Iyy is disclosed as being between 200 kg-mm2 and 400 kg-mm2). Beach (‘611) further discloses an MOI-Y (i.e., Izz) between 420 kg-mm2 and 500 kg-mm2), as Beach (‘611) details Izz = 200 kg-mm2 and 600 kg-mm2). Using a value of Izz = 501 kg-mm2 disclosed by Beach, the equation in claim 11 becomes (0.47 * 501) + 0.33 = 235.8. Since Iyy in Beach (‘611), which corresponds to the claimed MOI-Z, may be between 200 kg-mm2 and 400 kg-mm2, the equation is satisfied. In view of the further teachings in Beach (‘611), 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 Beach by providing values for MOI-Z and MOI-Y to further assist in preventing unwanted club head twist during off-center impacts. Arguably, attaining the optimum values required by the instant claim 11 would have involved routine experimentation. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
As to claims 12-14, Stites shows it to be old in the art to provide a moment of inertia about the shaft axis MOI-SA (i.e., referred to as “I(hosel)” in Stites). Here, TABLE 1 in Stites sets forth I(hosel) = 700 to 800 kg-mm2. In view of the teachings in Stites, 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 Beach by providing a suitable MOI-SA in order to help reduce club head twisting and to promote a more consistently stable face alignment during off-center shots.
As to claims 15-17, Stites shows it to be old in the art to provide an MOI-X having the claimed measurements in each of claims 15-17, as Stites, in TABLE 1, discloses I(xx) = 260 to 340 kg-mm2. Stites clearly teaches that adjustments to the structure and dimensions of the club head can serve to promote more resistance to twisting so that a more consistent, reliable and straighter shot may be realized (i.e., col. 4, lines 11-42; and see col. 9, line 61 through col. 10, line 37). Since Beach (i.e., col. 3, line 42 through col. 4, 16) already acknowledges that increasing the moment of inertia about the x-axis (Ixx) leads to less club head twist during off-center impacts, 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 Beach by increasing the MOI-X (i.e., the Ixx in Beach) in order to improve the performance of the club head during off-center impacts. Arguably, attaining the optimum values required by the instant claims 15-17 would have involved routine experimentation. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Moreover, the modification of Beach, with the teachings of Stites amounts to applying a known technique (i.e., using an increased MOI-X measurement, as taught by Stites) to a known device ready for improvement to yield predictable results (i.e., a reduction in club head twisting during off-center impacts in Beach would have been predictable
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, using the teachings of Stites). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claim Objections - Minor
Claims 1, 11 and 18 are objected to because of the following informalities:
As to claim 1, line 5, --is-- should precede “defined”.
As to claim 11, line 5, --is-- should precede “defined”.
As to claim 11, line 19, “of” should be deleted.
As to claim 18, line 5, --is-- should precede “defined”.
As to claim 18, line 17, “a MOI-Z, a CG-B, and a Face Width numbers” should be drafted to read either --a MOI-Z number, a CG-B number, and a Face Width number--; or --MOI-Z, CG-B, and Face Width numbers--. Appropriate correction is required.
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Bennett (‘663) and Sugimae (‘131) are patents sharing a common assignee with the instant application and are cited as documents of interest for showing various details of the moment of inertia and center of gravity numbers.
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711
