DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
Allowable Subject Matter
Claims 6-7, 9-13 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 6 includes limitations directed towards the hosel portion has a metal structure such that crystal grains of at least a part of the soft iron in the reference hosel outer peripheral portion are finer than crystal grains of the soft iron at the main impact point. Hebreo teaches 6. The iron-type golf club head according to claim 1, wherein the face portion and the hosel portion are integrally formed by forging and See [0023+]. The closest art of record Hebreo teaches the hosel but is silent with regards to the crystal grains and the change in grain size based on the location which have the benefit of changing the stiffness and other mechanical values based on location. The prior art of record, alone or in combination, does not teach or suggest the above-identified limitations, and claim 6 is therefore allowed.
Claim 7 includes limitations directed towards 7. The iron-type golf club head according to claim 1, wherein the hosel portion has a heat-treated metal structure in the reference hosel outer peripheral portion. The closest art of record Hebreo teaches the hosel but is silent with regards to the heat-treated metal structure in the reference hosel as claimed. The prior art of record, alone or in combination, does not teach or suggest the above-identified limitations, and claim 7 is therefore allowed.
Claim 9 includes limitations directed towards a heat treatment process in which the hosel portion is locally heated in the reference hosel outer peripheral portion by a local heating device, whereby the reference hosel outer peripheral portion has a heat-treated metal structure having increased hardness to achieve the hosel hardness higher than the face hardness. Hebreo teaches 9. A method for manufacturing an iron-type golf club head, the iron-type golf club head comprising a face portion having a hitting surface, and a hosel portion continuous to the face portion on a heel-side thereof, See Fig. 16; (1603)(1604), the hitting surface having a main impact point defined as being positioned at the center in a toe-heel direction of the hitting surface and 12 mm above the lowermost end of the hitting surface along the hitting surface in a reference state in which the golf club head is set on a horizontal plane at its lie angle and loft angle, See Fig. 5, the face portion having a face hardness hf (HV) defined by Vickers hardness at a depth of 4 mm from the hitting surface at the main impact point, See [0016+], the hosel portion having a reference hosel outer peripheral portion defined as extending in the circumferential direction of the hosel portion at a position downward from an upper end of the hosel portion by 30 mm along the direction of a hosel axis, and See Fig. 9, the reference hosel outer peripheral portion having a hosel hardness hh (HV) which is an average value of Vickers hardness at positions of 0 degrees, 45 degrees, 90 degrees, 135 degrees, 180 degrees, 225 degrees, 270 degrees and 315 degrees when positions on the reference hosel outer peripheral portion are expressed as angles around the hosel axis on the basis that the most heel side is 0 degrees, the most rear side is 90 degrees, the most toe side is 180 degrees, and the most face side is 270 degrees, and the Vickers hardness is measured at a depth of 1 mm from the outer surface of the hosel portion at reference hosel outer peripheral portion, wherein the hosel hardness hh is higher than the face hardness hf, hardness. See Fig. 9; (904), the method comprising: a casting process in which the face portion and the hosel portion are integrally formed by casting soft iron; and See [0023+]. The closest art of record, Hebreo, teaches the hosel but is silent with regards to the heat treatment process as claimed. The prior art of record, alone or in combination, does not teach or suggest the above-identified limitations, and claim 9 is therefore allowed.
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 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 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.
The notations noted below apply to all rejections: In as much structure set forth by the applicant in the claims, the device is capable of use in the intended manner if so desired (See MPEP 2112). It should be noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, it meets the claim limitations. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963). The intended use defined in the preamble and body of the claim breathes no life and meaning structurally different than that of the applied reference.
Claims 1-5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Hebreo (US 20150283433 A1) in view of Hosooka (US 20230390616 A1).
Regarding claim 1, Hebreo teaches 1. An iron-type golf club head comprising: a face portion having a hitting surface; and See Fig. 16; (1603), a hosel portion continuous to the face portion on a heel-side thereof, See Fig. 16; (1604), wherein the face portion and the hosel portion are made of soft iron, See Fig. 16; (1602), the face portion and the hosel portion are integrally formed by forging or casting the soft iron, See [0023+], the hitting surface has a main impact point which is defined as being positioned at the center in a toe-heel direction of the hitting surface and 12 mm above the lowermost end of the hitting surface along the hitting surface in a reference state in which the golf club head is set on a horizontal plane at its lie angle and loft angle, See Fig. 5 the reference shows the striking surface with what could be an impact point. The limitations directed towards the impact point etc… are not seen to provide structural differentiation over the cited art of record., the face portion has a face hardness hf (HV) which is defined by Vickers hardness measured at a depth of 4 mm from the hitting surface at the main impact point, See [0016+] the location of the depth measurement is not seen to provide patentable distinction over the cited prior art of record., the hosel portion has a reference hosel outer peripheral portion which is defined as extending in the circumferential direction of the hosel portion at a position downward from an upper end of the hosel portion by 30 mm along the direction of a hosel axis, See Fig. 9 the position of the reference hosel outer peripheral portion (in reference to Fig. 1 of the applicants specification) is not considered to provide patentable distinction over the cited prior art of record. The location of this reference, which as shown in Fig. 1 of the applicant’s specification, does not appear to provide structural weight to the claimed limitations. As such, these limitations are not given patentable weight to differentiate over the cited prior art of record., when positions on the reference hosel outer peripheral portion are expressed as angles around the hosel axis on the basis that the most heel side is 0 degrees, the most rear side is 90 degrees, the most toe side is 180 degrees, and the most face side is 270 degrees, the hosel portion has a hosel hardness hh (HV) which is an average of Vickers hardness values at positions of 0 degrees, 45 degrees, 90 degrees, 135 degrees, 180 degrees, 225 degrees, 270 degrees and 315 degrees around the hosel axis, and See Fig. 9; (904) Additionally, the courts held that "Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability….[T]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate." (See In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983)) As such, the positions on the reference hosel are not seen to provide patentable distinction over the cited art of record as there is no new and unobvious functional relationship between the printed matter and the substrate., the Vickers hardness values are values measured at a depth of 1 mm from the outer surface of the hosel portion at the reference hosel outer peripheral portion, See Fig. 9 the location of the measurement for the hardness value is not seen to provide patentable distinction over the cited art of record. Such is akin to a process of using the apparatus which is not seen to provide patentable distinction over the cited prior art of record.
Hosooka does teach what the primary reference is silent on including wherein the hosel hardness hh is higher than the face hardness hf. See [0006+].
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Herbo with Hosooka to provide an iron golf club that can achieve both high rebound property and high durability and improve the angle adjustment capability. ([0005+]).
Regarding claim 2, Hebreo teaches 2. The iron-type golf club head according to claim 1, wherein the soft iron has a carbon content of not more than 0.20% by weight. See [0012+].
Regarding claim 3, Hebreo teaches 3. The iron-type golf club head according to claim 1, wherein the soft iron has a carbon content of not more than 0.15% by weight. See [0012+].
Regarding claim 4, Hosooka teaches 4. The iron-type golf club head according to claim 1, wherein the face hardness hf is less than 130 (HV) and the hosel hardness hh is 130 to 190 (HV). See [0006+].
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Hebreo with Hosooka as combining prior art elements according to known methods to yield predictable results (See the Supreme Courts Rationale (A)).
Regarding claim 5, Hosooka teaches 5. The iron-type golf club head according to claim 1, wherein the ratio hh/hf of the hosel hardness hh to the face hardness hf is not less than 1.10. See [0006+].
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Hebreo with Hosooka as combining prior art elements according to known methods to yield predictable results (See the Supreme Courts Rationale (A)).
Regarding claim 8, Hebreo teaches 8. An iron-type golf club head comprising: a face portion having a hitting surface; and See Fig. 16; (1603), a hosel portion continuous to the face portion on a heel-side thereof, See Fig. 16; (1604), the face portion and the hosel portion integrally formed by forging or casting one kind of soft iron, See [0023+], wherein the face hardness hf (HV) is defined by Vickers hardness measured at a depth of 4 mm from the hitting surface at a main impact point of the hitting surface, See [0016+] the location of the depth measurement is not seen to provide patentable distinction over the cited prior art of record., the main impact point is defined as being positioned at the center in a toe-heel direction of the hitting surface and 12 mm above the lowermost end of the hitting surface along the hitting surface in a reference state of the golf club head defined as being set on a horizontal plane with its lie angle and loft angle, See Fig. 5 the reference shows the striking surface with what could be an impact point. The limitations directed towards the impact point etc… are not seen to provide structural differentiation over the cited art of record., the hosel hardness hh (HV) is defined by an average value of Vickers hardness measured at a depth of 1 mm from the outer surface of a reference hosel outer peripheral portion of the hosel portion at at least eight equiangular positions around the hosel axis, and See Fig. 9 the location of the measurement for the hardness value is not seen to provide patentable distinction over the cited art of record. Such is akin to a process of using the apparatus which is not seen to provide patentable distinction over the cited prior art of record., the reference hosel outer peripheral portion is defined as extending in the circumferential direction of the hosel portion around the hosel axis at a position downward from an upper end of the hosel portion by 30 mm along the direction of the hosel axis. See Fig. 9 the position of the reference hosel outer peripheral portion (in reference to Fig. 1 of the applicant’s specification) is not considered to provide patentable distinction over the cited prior art of record. The location of this reference, which as shown in Fig. 1 of the applicant’s specification, does not appear to provide structural weight to the claimed limitations. As such, these limitations are not given patentable weight to differentiate over the cited prior art of record.
Hosooka does teach what the primary reference is silent on including wherein a hosel hardness hh is higher than a face hardness hf, See [0006+].
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Hebreo with Hosooka to provide an iron golf club that can achieve both high rebound property and high durability and improve the angle adjustment capability. ([0005+]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bloxham US 2024/0100404 A1 - Which speaks of a hosel and hardness.
Wu US 20180051354 A1 - Which speaks of the hosel and hardness values.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S VANDERVEEN whose telephone number is (571)270-0503. The examiner can normally be reached Monday - Friday 11am - 7pm CST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at (571) 270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JEFFREY S VANDERVEEN/Examiner, Art Unit 3711
Prosecution Insights