DETAILED ACTION
Claim Rejections - 35 USC § 103
1. 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 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. Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “ Obvious to try ” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(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;
(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.
2. Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Gilbert et al. (US Pat. No. 6,875,124) in view of Hocknell et al. (US Pub. No. 2004/0192467) and further in view of Deng et al. (US Pub. No. 2009/0149277).
With respect to claims 1 and 10-11, Gilbert et al. teaches an iron-type golf club head 20 comprising: a face 22 having an outer ball-striking surface 23 configured for striking a ball and an inner face surface opposite the outer ball-striking surface 23 (Fig.’s 3-5); a body 21 connected to the face 22, the body having a sole member 28 comprising: a sole surface configured to confront a playing surface during use, and a toe weighted portion 26 (as part of perimeter weight 38) and a heel weighted portion 24 (as part of perimeter weight 38) extending rearward on the sole member 28 and upward from the sole member 28 (Fig.’s 1-5; column 2, lines 50-61); and wherein the iron-type golf club head is formed in part by a face member 22 having a first leg 23 forming at least a portion of the face and a second leg 32 extending rearwardly from a bottom end of the first leg and forming at least a portion of the sole surface (Fig. 4), wherein the face member 22 has a generally L-shaped configuration when viewed in cross-section (Fig. 4), and wherein the iron-type golf club head 20 is further formed in part by a body member connected to the face member 22, the body member having a top portion forming at least a portion of a top side 25 of the body and a bottom portion forming at least a portion of the sole surface (Fig.’s 1-5); wherein a juncture is formed between the face member and the body member (Fig.’s 1-2; column 3, lines 66-67); a rear cavity 31 defined at least partially by the sole member 28 and a rear surface of the face, wherein a bottom surface of the rear cavity is defined by portions of the body member and the face member (Fig. 4); wherein a difference in height is defined between a rear end of the second leg 32 and a front end of the bottom portion, such that a channel is created by the difference in height (Fig. 4);
Admittedly, Gilbert et al. teaches a rectangularly shaped second leg, as opposed to
a trapezoidal shape. However, Hocknell et al., directed to the analogous art of face portions comprising rearwardly extending sections, teaches that it is known to use a trapezoidal shape for a second leg 54 portion of a face’s sole extension (Fig. 12; paragraph [0038]). Hence, at time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to modify the shape of the second leg from rectangular to a trapezoid. Due to the oblique angling of the side walls of the trapezoidal shape, the linear surface area of the interface between the body and second leg is larger compared to the straight walls of the rectangular shape. This increased surface area will provide improved connection strength between the second leg and the body portion. The proposed modification has a reasonable expectation of success. The width and depth portions prescribed by Gilbert et al. can be maintained, and the second leg 32 will maintain its functionality because it will still move a part of the face support rearward to expand face flexibility.
Lastly, Gilbert et al. fails to expressly teach wherein a slot is defined between the toe weighted portion and the heel weighted portion. However, analogous art reference Deng et al. teaches that this feature is known in the art – Fig. 6. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to structure the heel and toe weighted portions with a slot therebetween, as taught by Deng. This will expectantly lower CG and reduce overall weigh of the club to increase launch and workability of the ball.
With respect to claim 2, Gilbert et al. teaches wherein the juncture extends continuously around a periphery of the face across the top portion, and across the sole member between the face member and the body member; and wherein the juncture further continuously extends along a heel side and a toe side of the body (Fig.’s 1-5).
With respect to claims 3 and 12, Gilbert et al. teaches a rear wall extending upward from a rear of the sole member (Fig. 4).
With respect to claims 4 and 15, Gilbert et al. teaches a connection structure connecting the face member to the body member via welding the second leg 32 to the sole and welding the first leg to an open region in the body (column 3, lines 66-67; column 4, lines 10-13; Fig. 1; See also claims 6, 20). As such, Gilbert teaches wherein the connection structure comprises a plurality of weld line segments along the juncture.
With respect to claims 5 and 16, Gilbert et al. teaches wherein the plurality of weld line segments further comprise a horizontal bottom weld line segment extending along the juncture along the sole surface of the body (Fig. 2), between the rear end of the second leg 32 and the bottom portion of the body member (Fig. 4; column 3, lines 65-67).
With respect to claim 6, Gilbert et al. teaches wherein the body member is connected to the face member by a peripheral weld line extending around edges of the face (Fig 1 showing peripheral weld line; See also column 3, lines 65-67), but does not expressly teach wherein the horizontal bottom weld line segment is continuous with the peripheral weld line. However, analogous art reference Deng et al. teaches that it is known in the art to form a continuous weld line between an interfacing juncture of a face portion peripheral weld line and a bottom weld portion for a body portion of a golf club iron (paragraph [0015]; [0046], [0049]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to connect the face member and body member using a continuous welding structure along the entire juncture as taught by Deng et al. The motivation to combine is to facilitate secure connection between the face and the body. The proposed combination has a reasonable expectation of success as Gilbert et al. expressly teaches using a welding connection. The combination is considered to teach that the weld line extends continuously around the entire juncture of Gilbert et al., including the sole portion of the body that connects to the second leg.
With respect to claim 7, Gilbert teaches wherein the plurality of weld line segments comprise a horizontal top weld line segment extending along the juncture on an upper region of the face (Fig. 1), as opposed to being on the top side of the body. However, Den et al. at Fig. 1(C) and 5(B) teaches that it is known to position the horizontal weld segment at a top portion of the body (See also paragraph [0049]). The motivation to combine is the same as stated above.
With respect to claim 8, tertiary reference Deng teaches wherein the weld “penetrates substantially fully (90% or more) into the radial width of the contact interface” (paragraph [0047]). Whether this constitutes extending through “an entire thickness of the juncture” is unclear. However, the mere scaling of a prior art invention capable of being scaled up does not establish patentability. See In re Rinehart, 531 F.2d 1048, 1053 189 USPQ 143 (CCPA 1976). In reviewing applicant’s specification, the specification does not provide criticality to welding connection structure extending entirely through. Moreover, penetrating the weld 100% through the juncture would not modify the operation of the applied art. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to increase the penetration percentage to 100% as this will expectantly provide an exceptionally strong connection between the face and body. Such modification has a reasonable expectation of success since both Gilbert et al. and Deng teach welding a face portion to a body portion. Moreover, Per MPEP 2113, “PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS” - "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
With respect to claims 9 and 17, Gilbert et al. teaches wherein the second leg 32 has a lateral width that is less than a lateral width of the first leg 22 (Fig.’s 1-2).
With respect to claim 13, Gilbert et al. teaches wherein a width of the channel is maximal proximate at a center portion of the sole surface (Fig.’s 2, 4). As such, Gilbert is considered to teach wherein the channel comprises a widened portion proximate a center of the sole surface.
With respect to claim 14, Gilbert et al. teaches wherein the channel spaces the body from a rear surface of the face (Fig. 4).
Double Patenting
3. 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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
4. Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 8,409,022 in view of Hocknell et al. (US Pub. No. 2004/0192467) and further in view of Deng et al. (US Pub. No. 2009/0149277).
The patented claims substantially teach these present claims, but fail to expressly teach wherein the projection/second leg is shaped as a trapezoid. However, Hocknell et al., directed to the analogous art of face portions comprising rearwardly extending sections, teaches that it is known to use a trapezoidal shape for a second leg 54 portion of a face’s sole extension (Fig. 12; paragraph [0038]. Hence, at time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to modify the shape of the second leg from rectangular to a trapezoid. Due to the oblique angling of the side walls of the trapezoidal shape, the linear surface area of the interface between the body and second leg is larger compared to the straight walls of the rectangular shape. This increased surface area will provide improved connection strength between the second leg and the body portion. The proposed modification has a reasonable expectation of success as it can be accomplished using common manufacturing techniques and does not appear to frustrate an intended purpose of the patented invention.
The patented claims fail to expressly teach wherein a slot is defined between a toe weighted portion and the heel weighted portion. However, analogous art reference Deng et al. teaches that this feature is known in the art – Fig. 6. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to structure the heel and toe weighted portions with a slot therebetween, as taught by Deng. This will expectantly lower CG and reduce overall weigh of the club to increase launch and workability of the ball.
Regarding the claimed welding segments, features not taught by the patented claims are obvious features in the art, as evidenced by analogous art reference Deng. The rationale to combine is the same as stated above in the prior art rejections.
The remaining differences between the present claims and patented claims are not patentably distinct from each other because they are considered nominal phrasing differences and/or inherently/impliedly taught by the patented claims as modified above.
5. Claim 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6, 9-12, 14, 15-17 of U.S. Patent No. 10,300,353 in view of Hocknell et al. (US Pub. No. 2004/0192467) and further in view of Deng et al. (US Pub. No. 2009/0149277).
The patented claims substantially teach these present claims, but fail to expressly teach wherein the projection/second leg is shaped as a trapezoid. However, Hocknell et al., directed to the analogous art of face portions comprising rearwardly extending sections, teaches that it is known to use a trapezoidal shape for a second leg 54 portion of a face’s sole extension (Fig. 12; paragraph [0038]. Hence, at time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to modify the shape of the second leg from rectangular to a trapezoid. Due to the oblique angling of the side walls of the trapezoidal shape, the linear surface area of the interface between the body and second leg is larger compared to the straight walls of the rectangular shape. This increased surface area will provide improved connection strength between the second leg and the body portion. The proposed modification has a reasonable expectation of success as it can be accomplished using common manufacturing techniques and does not appear to frustrate an intended purpose of the patented invention.
The patented claims fail to expressly teach wherein a slot is defined between a toe weighted portion and the heel weighted portion. However, analogous art reference Deng et al. teaches that this feature is known in the art – Fig. 6. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to structure the heel and toe weighted portions with a slot therebetween, as taught by Deng. This will expectantly lower CG and reduce overall weigh of the club to increase launch and workability of the ball.
Regarding the claimed welding segments, features not taught by the patented claims are obvious features in the art, as evidenced by analogous art reference Deng. The rationale to combine is the same as stated above in the prior art rejections.
The remaining differences between the present claims and patented claims are not patentably distinct from each other because they are considered nominal phrasing differences and/or inherently/impliedly taught by the patented claims as modified above.
6. Claim 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-17 of U.S. Patent No. 10,814,191 in view of Hocknell et al. (US Pub. No. 2004/0192467) and further in view of Deng et al. (US Pub. No. 2009/0149277).
The patented claims substantially teach these present claims, but fail to expressly teach wherein the projection/second leg is shaped as a trapezoid. However, Hocknell et al., directed to the analogous art of face portions comprising rearwardly extending sections, teaches that it is known to use a trapezoidal shape for a second leg 54 portion of a face’s sole extension (Fig. 12; paragraph [0038]. Hence, at time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to modify the shape of the second leg from rectangular to a trapezoid. Due to the oblique angling of the side walls of the trapezoidal shape, the linear surface area of the interface between the body and second leg is larger compared to the straight walls of the rectangular shape. This increased surface area will provide improved connection strength between the second leg and the body portion. The proposed modification has a reasonable expectation of success as it can be accomplished using common manufacturing techniques and does not appear to frustrate an intended purpose of the patented invention.
The patented claims fail to expressly teach wherein a slot is defined between a toe weighted portion and the heel weighted portion. However, analogous art reference Deng et al. teaches that this feature is known in the art – Fig. 6. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to structure the heel and toe weighted portions with a slot therebetween, as taught by Deng. This will expectantly lower CG and reduce overall weigh of the club to increase launch and workability of the ball.
Regarding the claimed welding segments, features not taught by the patented claims are obvious features in the art, as evidenced by analogous art reference Deng. The rationale to combine is the same as stated above in the prior art rejections.
The remaining differences between the present claims and patented claims are not patentably distinct from each other because they are considered nominal phrasing differences and/or inherently/impliedly taught by the patented claims as modified above.
7. Claim 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-17 of U.S. Patent No. 11,517,797 in view of Gilbert et al. (US Pat. No. 6,875,124) in view of Hocknell et al. (US Pub. No. 2004/0192467) and further in view of Deng et al. (US Pub. No. 2009/0149277).
The patented claims substantially teach these present claims, but fail to expressly teach wherein the projection/second leg is shaped as a trapezoid. However, Hocknell et al., directed to the analogous art of face portions comprising rearwardly extending sections, teaches that it is known to use a trapezoidal shape for a second leg 54 portion of a face’s sole extension (Fig. 12; paragraph [0038]. Hence, at time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to modify the shape of the second leg from rectangular to a trapezoid. Due to the oblique angling of the side walls of the trapezoidal shape, the linear surface area of the interface between the body and second leg is larger compared to the straight walls of the rectangular shape. This increased surface area will provide improved connection strength between the second leg and the body portion. The proposed modification has a reasonable expectation of success as it can be accomplished using common manufacturing techniques and does not appear to frustrate an intended purpose of the patented invention.
The patented claims do not expressly teach wherein a difference in height is defined between a rear end of the second leg and a front end of the bottom portion, such that a channel is created by the difference in height. However, Gilbert teaches wherein a difference in height is defined between a rear end of the second leg 32 and a front end of the bottom portion, such that a channel is created by the difference in height (Fig. 4). However, a person ordinary skill in the art would have found it obvious to
The patented claims fail to expressly teach wherein a slot is defined between a toe weighted portion and the heel weighted portion. However, analogous art reference Deng et al. teaches that this feature is known in the art – Fig. 6. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to structure the heel and toe weighted portions with a slot therebetween, as taught by Deng. This will expectantly lower CG and reduce overall weigh of the club to increase launch and workability of the ball.
Regarding the claimed welding segments, features not taught by the patented claims are obvious features in the art, as evidenced by analogous art reference Deng. The rationale to combine is the same as stated above in the prior art rejections.
The remaining differences between the present claims and patented claims are not patentably distinct from each other because they are considered nominal phrasing differences and/or inherently/impliedly taught by the patented claims as modified above.
8. Claim 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,097,412 in view of Deng et al. (US Pub. No. 2009/0149277).
The patented claims substantially teach these present claims, but fail to expressly teach a slot is defined between a toe weighted portion and the heel weighted portion. However, analogous art reference Deng et al. teaches that this feature is known in the art – Fig. 6. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to structure the heel and toe weighted portions with a slot therebetween, as taught by Deng. This will expectantly lower CG and reduce overall weigh of the club to increase launch and workability of the ball.
Regarding the claimed welding segments, features not taught by the patented claims are obvious features in the art, as evidenced by analogous art reference Deng. The rationale to combine is the same as stated above in the prior art rejections.
The remaining differences between the present claims and patented claims are not patentably distinct from each other because they are considered nominal phrasing differences and/or inherently/impliedly taught by the patented claims as modified above.
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL DAVID DENNIS whose telephone number is (571)270-3538. The examiner can normally be reached M-F 8:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached at (571) 272 4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711
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