DETAILED ACTION
Priority
Applicant first discusses “left handed” and “right handed” golf clubs in this CIP 18/905,353. As such, all of the claims receive a priority date of 10/3/24 when this CIP was filed.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The preamble of claim 1 is a “removable weight”. As such, the claim is drawn to the specifics of the removable weight. In claim 1, applicant then goes on to claim “wherein each of the right handed golf club head and the left handed golf club head comprise a lower muscle portion comprising a back flange comprising a weight recess”. As such, this limitation (and any limitation directed toward the club head) is completely outside the scope of the claim 1. As claim 1 is limited to a “removable weight”, the claim cannot exceed the scope of the claim. Here applicant is claiming the particulars of the golf club head, but this is outside the scope of the “removable weight”. This issues is carried over into claim 5 wherein applicant tries to claim the width of the removable weight as compared to the width of the flange of the golf club itself.
It is also unclear from claim 1 if applicant is positively requiring there to be both a left and right hand club, or if only one golf club needs to be present (the preamble claims a weight to fit “a right handed or left handed club”; emphasis added). For example, applicant claims “wherein each of the right handed golf club head and the left handed golf club head comprise a lower muscle portion comprising a back flange comprising a weight” (emphasis added). This language would seem to require that both a right and left handed golf club are present. However, applicant then claims “a body portion comprising a first body end and a second body end, wherein the first body end fits in a toeward end of a first weight recess in a first installed position corresponding to the right handed golf club head or a heelward end of a second weight recess in a second installed position corresponding to the left handed golf club head” (emphasis added). The use of “or” in this limitation and the preamble instead of “and” appears to require the use of only one golf club head (i.e. a left or a right). As such, it is unclear if applicant is requiring both a left and a right golf club head, or just one of a left or right. In any event, the particular details of the club are outside the scope of the preamble as noted above.
Claims 5, 12, and 17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claims 5, 12, and 17 compare the "width" of the weight to the "width" of the flange. However, the direction of the "width" (i.e. the direction in which it is measured) is never properly defined within the claim. This makes the claim indefinite.
Claims 6, 13, and 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claims 6, 13, and 18 compare the "width" of the body portion to the "width" of the cover portion. However, the direction of the "width" (i.e. the direction in which it is measured) is never properly defined within the claim. This makes the claim indefinite.
Claims 14-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The preamble of claim 14 is a “removable weight”. As such, the claim is drawn to the specifics of the removable weight. In claim 14, applicant then goes on to claim “wherein each of the right handed golf club head and the left handed golf club head comprise a lower muscle portion comprising a back flange comprising a weight recess”. As such, this limitation (and any limitation directed toward the club head) is completely outside the scope of the claim 14. As claim 14 is limited to a “removable weight”, the claim cannot exceed the scope of the claim. Here applicant is claiming the particulars of the golf club head, but this is outside the scope of the “removable weight”. This issues is carried over into claim 17 wherein applicant tries to claim the width of the removable weight as compared to the width of the flange of the golf club itself.
It is also unclear from claim 14 if applicant is positively requiring there to be both a left and right hand club, or if only one golf club needs to be present (the preamble claims a weight to fit “a right handed or left handed club”; emphasis added). For example, applicant claims “wherein each of the right handed golf club head and the left handed golf club head comprise a lower muscle portion comprising a back flange comprising a weight” (emphasis added). This language would seem to require that both a right and left handed golf club are present. However, applicant then claims “a body portion comprising a first body end and a second body end, wherein the first body end fits in a toeward end of a first weight recess in a first installed position corresponding to the right handed golf club head or a heelward end of a second weight recess in a second installed position corresponding to the left handed golf club head” (emphasis added). The use of “or” in this limitation and the preamble instead of “and” appears to require the use of only one golf club head (i.e. a left or a right). As such, it is unclear if applicant is requiring both a left and a right golf club head, or just one of a left or right. In any event, the particular details of the club are outside the scope of the preamble as noted above.
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, 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.
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 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Petersen et al. (herein “Petersen”; US Pat. No. 9,545,548 B2; as cited in applicant’s IDS) in view of Stites (US Pat. No. 6,077,173).
Regarding claim 1, Petersen discloses a removable weight (col. 19, lines 55-59) to fit into a right handed golf club head or a left handed golf club head (Fig. 1; noting it is right handed; and noting “or” is used so only one is required; also noting based on the preamble, “to fit” is completely functionally language possible given the structure), wherein the right handed golf club head comprise a lower muscle portion (Fig. 4, proximate item 121; showing in side profile that this lower portion may be considered a “muscle portion”; i.e. a solid, non-cavity back, structure) comprising a back flange comprising a weight recess (Fig. 4, proximate item 121 up to approximately item 335), and wherein the removable weight comprises: a body portion comprising a first body end and a second body end, wherein the first body end fits in a toeward end of a first weight recess in a first installed position corresponding to the right handed golf club head (Figs. 7 and 8 below; see Fig. 2 for an installation in a right handed club) and wherein the second body end fits in a heelward end of the first weight recess in the first installed position corresponding to the right handed golf club head (Figs. 7 and 8 below; see Fig. 2 for an installation in a right handed club) and a cover portion to cover the weight recess in the first installed position corresponding to the right handed golf club head (Figs. 7 and 8 below, as see in Fig. 2). It is noted that Petersen does not specifically disclose a left handed club with a lower muscle portion and weigh recess, the weight comprises a first body end corresponding to a heelward end of a second weight recess in a second installed position corresponding to the left handed golf club head, wherein the second body end corresponds to the toeward end of the second weight recess in the second installed position corresponding to the left handed golf club head; and a cover portion to cover the weigh recess in the second installed position corresponding to the left handed golf club head. Restated, Petersen does not specifically disclose the same weight “to fit” in the same orientation in a left hand club. However Petersen discloses the exact same structure for a right handed golf club and the ability to use a mirror symmetric weight “to fit” into the recess of a right handed golf club (Figs. 1, 2, and 6-8; see specifically Figs.7 and 8 below). In addition, Stites makes obvious the ability to use left handed golf clubs that mirror the design of the right handed golf clubs (col. 10, lines 33-40). As the weight in Petersen is mirror symmetric about a center line, and as Stites makes obvious that the left handed club mirrors the right handed club, it would be obvious and functionally possible for the weight to fit in same orientation in the weight recess of the left handed club as in a right handed club. As such, when moving the weight from the right hand club to the left hand club, the orientation of the weight would not change, and thus corresponding locations on the weight as compared to location in the recess would be reversed (as claimed). That is, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Petersen to include a left handed club with the weight that fits in the rear recess because doing so would be combining prior art elements (a weight that is mirror symmetric about a center line and fits in a right handed weight recess and the ability to make a left handed club that mirrors the right handed club) according to known methods (using a left handed club that is a mirror symmetry of the right handed club) to yield predictable results (using a left handed club that is a mirror symmetry of the right handed club, the left handed club also having the ability to receive the mirror symmetric weight insert in the same orientation based on the symmetry of both the weight insert and the golf clubs). The Examiner would also like to provide an additional KSR rationale. It would have be it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Petersen to include a left handed club with the weight that fits in the rear recess in the same orientation because doing so would be obvious to try choosing from a finite number of identified, predictable results (creating a mirror symmetric rear weight insert that clearly fits into a right handed club, and using that insert in only two options: right or left handed clubs) to yield predictable results (the ability to use the same mirror symmetric insert in both a left and right handed golf club in the same orientation, the use of the same insert in the same orientation allowing for a reduction in cost by not having to produce different inserts for both known left and right handed clubs, i.e. using a universal insert shape). Finally, the Examiner interprets this claim language to require both a left and right golf club. If only one is required (e.g. a right), then Petersen makes obvious or anticipates the claim language.
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Regarding claims 2 and 9, the combined Petersen and Stites disclose that the cover portion comprises a first cover end and a second cover end (Petersen: Figs. 7 and 8 above, see Figs. 9 and 10 as installed in a right handed club), wherein the first cover end covers the toeward end of the first weight recess corresponding to the right handed golf club head (Petersen: Fig. 2; noting this is clearly shown, see also Figs. 9 and 10; noting this is obvious and functionally possible) or the heelward end of the second weight recess corresponding to the left handed golf club head (Stites: col. 10, lines 33-40; noting this would be obvious given the mirror image of the left hand golf club, see rationale above; noting this is obvious and functionally possible), and wherein the second cover end covers the heelward end of the first weight recess corresponding to the right handed golf club head (Petersen: Fig. 2; noting this is clearly shown; noting this is obvious and functionally possible) or the toeward end of the second weight recess corresponding to the left handed golf club head (Stites: col. 10, lines 33-40; noting this would be obvious given the mirror image of the left hand golf club, see rationale above; noting this is obvious and functionally possible). The Examiner interprets this claim language to require both a left and right golf club. If only one is required (e.g. a right), then Petersen makes obvious or anticipates the claim language.
Regarding claims 3, 10, and 15, the combined Petersen and Stites disclose that the removable weight comprises a metal (Petersen: col. 11, lines 18-21).
Regarding claims 4, 11, and 16, the combined Petersen and Stites disclose that that the metal comprises one of tungsten, steel, titanium, aluminum, scandium, zinc, nickel, copper, and iron (Petersen: col. 11, lines 18-21, listing aluminum, steel, and tungsten).
Regarding claims 5, 12, and 17, the combined Petersen and Stites disclose that a width of the removable weight, is more than about 75% of a width of the back flange (Petersen: Fig. 2; noting this is obvious to a POSA based on the relative dimensions of the drawings; see MPEP 2125; emphasis added; the Examiner construing width to run in the heel-to-toe direction). In the alternative, regarding the relative width of the weight as compared to the flange, it has been held that if a change in the relative dimensions over the prior does not make the claimed invention perform differently, the claimed device is not patentably distinct from the prior art. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984)(see applicant’s spec, par. [0019]; applicant giving no criticality to the exact percentage). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact relative percentage of the width of the weight to the flange would not make the invention perform differently: that is, the weight would still allow for a change in weight distribution within the flange recess regardless of its exact comparable width. Finally, in a second alternative, the Examiner notes that a POSA would understand that the exact width of the weight as compared to the width of the flange would change not only the overall weight of the club head, but the mass distribution of the club head (see Petersen: col. 11, lines 22-39). As such, a POSA would understand that this relative percentage of the width of flange as compared to the width of the weight could be optimized to achieve not only the desired overall weight of the head, but also the relative mass distribution within the head and desired cg location.
Regarding claims 6, 13, and 18, the combined Petersen and Stites disclose that a width of the body portion is less than a width of the cover portion (Petersen: Fig. 7 above, item 668 being the cover and item 655 being the body; the Examiner construing width to run in the heel-to-toe direction).
Regarding claim 7, Petersen discloses a golf club head comprising: a right handed golf club head (Fig. 1) comprising: a first striking face portion (Fig. 5; noting this is obvious); a first back portion comprising (Fig. 3, proximate item 113): a first upper blade portion (Fig. 4; noting in side profile that this upper portion may be considered a “blade”); a first gutter extending downward from the first upper blade portion (Fig. 3, proximate item 112); and a first lower muscle portion extending downward from the first gutter (Fig. 4, proximate item 121; showing in side profile that this lower portion may be considered a “muscle portion”; i.e. a solid, non-cavity back, structure), wherein the first lower muscle portion comprises: a first back flange (Fig. 4, proximate item 121 up to approximately item 335), wherein the first back flange comprises a first weight recess (Fig. 4, item 331/332); and a first sole extending backward from a first lower portion of the first striking face portion to the first back flange (Fig. 4, proximate item 120 at the bottom); and a removable weight to fit into at least the first weight recess (Figs. 6-8 and col. 19, lines 55-59; also noting “to fit” is functional language that is possible given the structure), comprising: a body portion covered by the first sole in a first installed position (Fig. 9; proximate item 651 being the body), wherein the body portion fits into a portion of the first weight recess (Fig. 9); and a cover portion to cover the first weight recess in the first installed position (Figs. 6-8, proximate item 668). It is noted that Petersen does not specifically disclose a left handed golf club head comprising: a second striking face portion; a second back portion comprising: a second upper blade portion; a second gutter extending downward from the second upper blade portion; and a second lower muscle portion extending downward from the second gutter, wherein the second lower muscle portion comprises: a second back flange, wherein the second back flange comprises a second weight recess; and a second sole extending backward from a second lower portion of the second striking face portion to the second back flange; and the removable weight to fit into the second weight recess, comprising: the body portion covered by the second sole in a second installed position, wherein the body portion fits into a portion of the second weight recess; and the cover portion to cover the second weight recess in the second installed position. Restated, Petersen does not specifically disclose the same weight “to fit” in a left hand club in the same orientation as the right hand club. However Petersen discloses the exact same structure for a right handed golf club and the ability to use a mirror symmetric weight “to fit” into the recess of a right handed golf club (Figs. 1, 2, and 6-8; see specifically Figs. 7 and 8 above). In addition, Stites makes obvious the ability to use left handed golf clubs that mirror the design of the right handed golf clubs so that a mirror symmetric weight can “fit” into the recess of a left handed club (col. 10, lines 33-40). As the weight in Petersen is mirror symmetric about a center line, and as Stites makes obvious that the left handed club mirrors the right handed club, it would be obvious and functionally possible for the same weight to fit in the weight recess of the left handed club using the same orientation. As such, when moving the weight from the right hand club to the left hand club, the orientation of the weight would not change, and thus corresponding locations on the weight as compared to locations in the recess would be reversed (as claimed). That is, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Petersen to include a left handed club with the weight that fits in the rear recess because doing so would be combining prior art elements (a weight that is mirror symmetric about a center line and fits in a right handed weight recess and the ability to make a left handed club that mirrors the right handed club) according to known methods (using a left handed club that is a mirror symmetry of the right handed club) to yield predictable results (using a left handed club that is a mirror symmetry of the right handed club, the left handed club also having the ability to receive the mirror symmetric weight insert in the same orientation based on the symmetry of both the weight insert and the golf clubs). The Examiner would also like to provide an additional KSR rationale. It would have be it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Petersen to include a left handed club with the weight that fits in the rear recess in the same orientation because doing so would be obvious to try choosing from a finite number of identified, predictable results (creating a mirror symmetric rear weight insert that clearly fits into a right handed club, and using that insert in only two options: right or left handed clubs) to yield predictable results (the ability to use the same mirror symmetric insert in both a left and right handed golf club in the same orientation, the use of the same insert in the same orientation allowing for a reduction in cost by not having to produce different inserts for both known left and right handed clubs, i.e. using a universal insert shape).
Regarding claim 8, the combined Petersen and Stites disclose that the body portion comprises a first body end and a second body end (Petersen: Figs. 7 and 8 above), wherein the first body end fits in a toeward end of the first weight recess in the first installed position corresponding to the right handed golf club head (Petersen: Figs. 1, 2, and 7 and 8 above; noting this is obvious an functionally possible) or a heelward end of the second weight recess in the second installed position corresponding to the left handed golf club head (Stites: col. 10, lines 33-40; noting this would be obvious given the mirror image of the left hand golf club, see rationale above; noting this is obvious and functionally possible), and wherein the second body end fits in a heelward end of the first weight recess in the first installed position corresponding to the right handed golf club head (Petersen: Figs. 1, 2, and 7 and 8 above; noting this is obvious and functionally possible) or a toeward end of the second weight recess in the second installed position corresponding to the left handed golf club head (Stites: col. 10, lines 33-40; noting this would be obvious given the mirror image of the left hand golf club, see rationale above; noting this is obvious and functionally possible).
Regarding claim 14, Petersen discloses a removable weight (col. 19, lines 55-59) to fit into a right handed golf club head or a left handed golf club head (Fig. 1; noting it is right handed; and noting “or” is used so only one is required; also noting based on the preamble, this is completely functionally language possible given the structure), wherein the right handed golf club head comprise a lower muscle portion (Fig. 4, proximate item 121; showing in side profile that this lower portion may be considered a “muscle portion”; i.e. a solid, non-cavity back, structure) comprising a back flange comprising a weight recess (Fig. 4, proximate item 121 up to approximately item 335), and wherein the removable weight comprises: a body portion comprising a first body end and a second body end, wherein the first body end fits in a toeward end of a first weight recess in a first installed position corresponding to the right handed golf club head (Figs. 7 and 8 above; see Fig. 2 for an installation in a right handed club) and wherein the second body end fits in a heelward end of the first weight recess in the first installed position corresponding to the right handed golf club head (Figs. 7 and 8 above; see Fig. 2 for an installation in a right handed club) and a cover portion to cover the weight recess in the first installed position corresponding to the right handed golf club head (Figs. 7 and 8 above, as see in Fig. 2) and the cover portion comprises a first cover end and a second cover end (Petersen: Figs. 7 and 8 above), wherein the first cover end covers the toeward end of the first weight recess corresponding to the right handed golf club head (Petersen: Fig. 2; noting this is clearly shown), and wherein the second cover end covers the heelward end of the first weight recess corresponding to the right handed golf club head (Petersen: Fig. 2; noting this is clearly shown). It is noted that Petersen does not specifically disclose a left handed club with a lower muscle portion and weight recess, the weight comprises a first body end corresponding to a heelward end of a second weight recess in a second installed position corresponding to the left handed golf club head, wherein the second body end corresponds to the toeward end of the second weight recess in the second installed position corresponding to the left handed golf club head; a cover portion to cover the weigh recess in the second installed position corresponding to the left handed golf club head, the first cover end corresponds to the heelward end of the second weight recess corresponding to the left handed golf club head, or the second cover end corresponds to the toeward end of the second weight recess corresponding to the left handed golf club head. Restated, Petersen does not specifically disclose the same weight “to fit” in a left hand club in the same orientation as the right hand club. However Petersen discloses the exact same structure for a right handed golf club and the ability to use a mirror symmetric weight “to fit” into the recess of a right handed golf club (Figs. 1, 2, and 6-8; see specifically Figs. 7 and 8 above). In addition, Stites makes obvious the ability to use left handed golf clubs that mirror the design of the right handed golf clubs (col. 10, lines 33-40). As the weight in Petersen is mirror symmetric, and as Stites makes obvious that the left handed club mirrors the right handed club, it would be obvious and functionally possible for the weight to fit in the weight recess of the left handed club in the same orientation as the right handed club. As such, when moving the weight from the right hand club to the left hand club, the orientation of the weight would not change, and thus corresponding locations on the weight as compared to locations in the recess would be reversed (as claimed). That is, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Petersen to include a left handed club with the weight that fits in the rear recess because doing so would be combining prior art elements (a weight that is mirror symmetric about a center line and fits in a right handed weight recess and the ability to make a left handed club that mirrors the right handed club) according to known methods (using a left handed club that is a mirror symmetry of the right handed club) to yield predictable results (using a left handed club that is a mirror symmetry of the right handed club, the left handed club also having the ability to receive the mirror symmetric weight insert). The Examiner would also like to provide an additional KSR rationale. It would have be it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Petersen to include a left handed club with the weight that fits in the rear recess in the same orientation because doing so would be obvious to try choosing from a finite number of identified, predictable results (creating a mirror symmetric rear weight insert that clearly fits into a right handed club, and using that insert in only two options: right or left handed clubs) to yield predictable results (the ability to use the same mirror symmetric insert in both a left and right handed golf club in the same orientation, the use of the same insert in the same orientation allowing for a reduction in cost by not having to produce different inserts for both known left and right handed clubs, i.e. using a universal insert shape). The Examiner interprets this claim language to require both a left and right golf club. If only one is required (e.g. a right), then Petersen makes obvious or anticipates the claim language.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW BRIAN STANCZAK whose telephone number is (571)270-7831. The examiner can normally be reached on 8:30-10 and 1-3:30 M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached on (571)270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
7/28/26
Prosecution Insights