DETAILED ACTION
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 .
Examiner’s Comment
The within office action is issued to replace non-final office action dated 17 August 2026, which inadvertently addressed canceled claims 1-20.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 31-34 and 43 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In Claim 31, the limitation the rear weight mechanically attached to the rear ring with a screw was not disclosed in the originally filed specification and cannot be added.
Claim 43 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation providing a portion of the forward weight being forward of at least a portion of a fastener port was not disclosed in the originally filed specification and cannot be added.
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.
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.
Claim(s) 21 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee, U.S. Patent Application No. 2010/0125000. As to Claim 21, Lee teaches a wood-type golf club head (ball striking head), paragraph 0032 and see Figure 2. The head may comprise a cup (150) comprising a forward portion of the head, including a hosel, a forward portion of a crown, and a forward portion of a sole, paragraph 0051 and see Figures 2 and 3. The cup may comprise a material, paragraph 0041. It is inherent that the cup may have a cup mass. A face portion (112) may be positioned at a front end of the cup, paragraph 0051. It is inherent that a geometric center of the face may exist and the examiner finds that a coordinate system comprising an x-axis, a y-axis, and a z-axis may be considered to exist as claimed. A rear ring (114) may be formed separately from the cup and coupled to heel and toe portions of the cup to form a club head body, paragraph 0051. The club head body may define a hollow interior region, a crown opening (158), and a sole opening (162), paragraphs 0053 and 0059. The ring may comprise a ring material, paragraph 0047. A crown insert (118) may be coupled to the cup and the ring and enclosing the crown opening, paragraph 0054 and see Figure 2. A sole insert (120, 122) may be coupled to the cup and the rear ring and enclosing the sole opening, paragraph 0055 and see Figure 3. A rear weight (170) may be coupled to a rearward portion of the rear ring, paragraph 0058 and see Figure 3. Lee teaches that strategic weight distribution in the club head reducing twisting in the case of an off-center shot, paragraph 0006, indicating that strategic weight distribution is a result effective variable. Lee teaches that selected weights for placement in the club head may be of different materials of differing density, paragraph 0058. A weight may have a mass of 8 grams, paragraph 0058. Lee does not specify that the weight may have density greater than that of the rear ring. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide a weight having a density greater than that of the rear ring, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Boesch, 617 F. 2d 272, 205 USPQ 215 (CCPA 1980). The examiner finds it inherent that the club head may have a center of gravity located at a distance from the origin measured along the y-axis. The sole opening may have a forward boundary defined by the cup and a rear boundary defined by the rear ring, with the sole insert having a forward portion coupled to the cup and a rear portion coupled to the rear ring, paragraphs 0055 and 0056 and see Figure 3. Lee teaches that the sole may be configured such that the sole insert may extend from the heel portion across the sole opening to the toe portion of the cup, paragraph 0049, noting that the arm (136) may be absent from the club head with the result that the sole insert may extend as claimed. The rear ring may be coupled to the heel portion of the cup defining a heel joint and the rear ring may be coupled to the toe portion of the cup defining a toe joint, paragraph 0050, noting mechanical joining techniques. The heel and toe joint may be spaced 20 to 70 mm rearward of the center face, as measured along the y-axis, paragraph 0051. As to Claim 22, Lee teaches that the heel joint may be rearward of the hosel, measured along the y-axis, see Figure 7.
Claim(s) 23-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee, in view of Hubert, U.S. Patent No. 6,017,280. Lee substantially shows the claimed limitations, as discussed above. As to Claim 23, Lee, as modified, does not specify that a portion the heel or toe joint may be above the y-axis. Hubert teaches a club head comprising a rear ring (4) attached to a cup (1), Col. 9, ln. 7-9. The rear ring may be substantially vertically centered as to the cup, see Figure 1, suggesting that the heel and toe joints may lie on the y-axis. It follows that a portion of each joint may be above the y-axis. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the heel or toe joint above the y-axis, as taught and suggested by Hubert, to provide Lee, as modified, with a known substitute orientation of the joints of the rear ring. As to Claims 24 and 25, Hubert is applied as in Claim 23, noting that the rear ring follows a path around the periphery of the head remaining substantially vertically aligned with the club head center. It follows that at least a portion of the rearward portion of the rear ring lies on the y-axis such that a portion of the rearward portion of the rear ring is above and below the y-axis. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the rearward portion of the rear ring, as taught and suggested by Hubert, to provide Lee, as modified, with a known substitute orientation of rearward portions of the rear ring. As to Claim 26, Lee teaches that the toe joint may be proximate a toeward-most portion of the club head, paragraph 0049, noting that the rear ring extends around the periphery of the club head. As to Claim 27, Lee teaches that the toe joint may be spaced at least 30 mm rearward of the center face, as measured along the y-axis, paragraph 0051. As to Claim 28, Lee teaches that the forward-most portion of the rear ring may be proximate the toe-ward-most portion of the club head, see Figure 3. Lee, as modified, discloses the claimed invention except for providing that the forward-most portion of the rear ring may be forward of the toeward-most portion of the club head. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the club head with a forward-most portion of the rear ring forward to the toeward-most portion of the club head, 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). As to Claim 29, Lee teaches that the rear ring may be coupled to the cup by mechanical joining techniques, paragraph 0050, suggesting interlocking members. It follows that an overlap is present between a forward-most portion of the rear ring and a rearward-most portion of the cup proximate the toe joint. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Lee, as modified with a mechanical toe-joint connection with a forward-most portion of the rear ring extending forward of a rearward-most portion of the cup, as suggested. As to Claim 30, Lee teaches that the rear ring may form rear heel and toe portions of the club head and define an outermost perimeter, paragraph 0009 and see Figure 3. As to Claim 31, Lee teaches that a rear weight (170) may have mass of not more than 15 grams, paragraph 0058. The weight may be attached by threading the weight into a threaded screw base, paragraph 0058. Lee, as modified, discloses the claimed invention except for specifying that the weight may be attached with a screw. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the threaded weight as a weight and separate screw, since it has been held that construction a formerly integral structure in various elements involves only routine skill in the art, Nerwin v. Erlichman, 168 USPQ 177, 179.
Claim(s) 32-41 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee, in view of Hubert, as applied to claims 21, 24, and 31 above, and further in view of DeMille et al., U.S. Patent No. 9,782,642. Lee, as modified, substantially shows the claimed limitations, as discussed above. As to Claim 32, Lee teaches that an additional weight may be placed in another part of the club head, paragraph 0058, but Lee, as modified, does not disclose a forward weight. DeMille teaches that a club head may be provided with a rear weight (26), Col. 5, ln. 1-2. Further a forward weight (100) may be positioned proximate the striking face, Col. 5, ln. 25-28. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Lee, as modified, with a forward weight proximate the striking face, as taught by DeMille, to provide Lee, as modified, with a forward weight secured to the cup, to yield the predictable result of facilitating the process of tailoring the weight distribution and performance of the club head. Lee, as modified, discloses the claimed invention except for specifying that the forward weight mass may be less than the rear weight mass. The examiner notes that strategic distribution of the club head weight is a result effective variable, as discussed above. It would have been obvious to one of ordinary skill in the art before the effective filing date to set the value of the forward weight mass less than that of the rear weight, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Boesch, supra. As to Claim 33, Lee, as modified, discloses the claimed invention except for providing that forward weight may be arranged heelward of the rear weight. It would have been obvious to one of ordinary skill in the art before the effective filing date to arrange the forward weight heelward of the forward weight since it has been held that rearranging parts of an invention involves only routine skill in the art, In re Japikse, 86 USPQ 70 (CCPA 1950). As to Claim 34, Lee teaches that weights may be in various parts of the club head and that weights may have a mass of 1-3 grams (3 grams), paragraph 0058, suggesting that the forward weight may have a mass between 1-3 grams. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Lee, as modified, with a forward weight mass of between 1-3 grams, as suggested. As to Claim 35, Lee teaches that the cup at least partially encompasses a forward portion of the crown opening and a forward portion of the sole opening, paragraphs 0051 and 0053, noting that crown and sole inserts rest on ledges of the cup. The rear ring may at least partially encompass a rearward portion of the crown opening and a rearward portion of the sole opening, paragraphs 0052 and 0053, noting ledges. The forward portions of the crown and sole openings may be defined by forward crown and sole opening recesses ledges of the cup, paragraph 0053. The rearward portions of the crown and sole openings may be defined by crown and sole opening recessed ledges of the rear ring, paragraph 0053. A crown insert (118) may enclose the forward portion of the crown opening and the rearward portion of the crown opening, paragraph 0053 and 0054. The crown insert may be formed separately from the cup and rear ring and secured by adhesion (adhesive), paragraph 0054. The sole insert (120, 122) may enclose the forward portion of the sole opening (162, 166) and the rearward portion of the sole opening and is secured by adhesion to the forward sole opening recessed ledge and the rearward sole opening recessed ledge and the sole insert is formed separately from the cup, the rear ring and the crown insert, paragraphs 0053 and 0055. The examiner notes that an arm (136) may be absent, which would provide single sole opening and a single sole insert. As to Claim 36, Lee teaches that a lower portion of a forward sole opening recessed ledge may extend rearwardly to a position that is rearward of, forward of, or the same as the upper portion of the forward crown opening recessed ledge, paragraph 0051, noting that the top and bottom walls of the cup may be staggered or of equal length. Lee, as modified, discloses the claimed invention except for specifying that the forward sole opening recessed ledge may have a rearward position. It would have been obvious to one of ordinary skill in the art before the effective filing date to arrange the cup with the lower portion of the forward sole opening recessed ledge as claimed, since it has been held that rearranging parts of an invention involves only routine skill in the art, In re Japikse, supra. As to Claims 37 and 38, Lee teaches that the toeward end of the lower forward sole opening may be rearward of the hosel, with the central portion curving toward the face and more nearly aligned with a fastener port (the hosel) adapted to be fastened to a shaft (104), paragraph 0057 and see Figure 2. Lee, as modified, discloses the claimed invention except for specifying that a portion of the forward sole opening recessed ledge may be positioned forward of at least a portion of a fastener port. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the lower portion of the forward sole opening recessed ledge to be positioned forward of at least a portion of a fastener port, 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, supra. As to Claim 39, Lee, as modified, discloses the claimed invention except for providing that at least a portion of the crown opening recessed ledge may be positioned forward of at least a portion of the hosel. It would have been obvious to one of ordinary skill in the art before the effective filing date to arrange the forward crown opening recessed ledge to have at least a portion arranged forward of at least a portion of the hosel, since it has been held that rearranging parts of an invention involves only routine skill in the art, In re Japikse, 86 USPQ 70 (CCPA 1950). As to Claim 40, Hubert teaches that the rearward-most point of the club head may be formed by the center of the rear ring, Col;. 10, ln. 14-16 and see Figure 6, suggesting that the rearward-most point of the club head lies substantially on the y-axis. It would have been obvious to one of ordinary skill in the art before the effective filing date to arrange the rearward-most point of the club head substantially on the y-axis, as taught by Hubert, to provide Lee, as modified, with a known substitute arrangement of the rearward-most point. Lee, as modified, discloses the claimed invention except for providing that club head may be configured with the rearward-most point above the y-axis. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the club head with the rearward-most point above the y-axis, 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). As to Claim 41, Lee is applied as in Claims 26 and 29.
Claim(s) 42 and 43 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee as applied to claim 21 above, and further in view of DeMille. Lee, as modified, substantially shows the claimed limitations, as discussed above. As to Claim 42, DeMille together with cited case law is applied as in Claim 32, with the same obviousness rationale being found applicable. Further, the forward weight placed in the cup inherently places the forward weight proximate the hosel. Lee, as modified, discloses the claimed invention except for specifying that the forward weight may be arranged such that at least a portion of the forward weight may be forward of at least a portion of the hosel. It would have been obvious to one of ordinary skill in the art before the effective filing date to arrange the forward weight in relation to the hosel, as claimed, since it has been held that rearranging parts of an invention involves only routine skill in the art, In re Japikse, supra. As to Claim 43, Lee, together with cited case law is applied as in Claim 37.
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 24 August 2026
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