DETAILED ACTION
Priority
Independent claims 1, 10, 21, and 29 appear to find support in parent application 14/534,308. As such, claims 1, 10, 21, and 29 get a priority date of 11/6/14.
Preliminary Amendment
This action is in response to a preliminary amendment received 7/10/26.
35 USC § 112
For the claims, the Examiner construes “approximately” to be “10% of the stated value” according to applicant’s par. [0034].
Claim Objections
Claim 21 is objected to because of the following informalities: claim 21, lines 6 and 8 actually claim a “forward lean” twice. The language is repetitive. Appropriate correction is required.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the language “the grip comprises a cross-sectional plane formed along both the central axis of the shaft and the central axis of the grip, and the cross sectional plane comprising a first trapezoidal-shaped grip element formed on one side of the central axis of the grip and a second trapezoidal-shaped grip element formed on an opposing side of the central axis of the grip in an opposite orientation” of claim 10 needs to be present in the specification in order to provide proper antecedent basis. Furthermore, the language “wherein the grip comprises, in a cross-sectional plane extending along the grip center axis and the shaft center axis, a first grip element disposed on one side of the grip center axis and a second grip element disposed on an opposing side of the grip center axis in an opposite orientation” of claim 33 needs to be added for proper antecedent basis. Finally, “the shaft with the forward lean is disposed in a lower front region of the grip, the lower front region being below the grip center axis and closer to the club face than an opposing rear region of the grip” of claim 35 needs to be added for proper antecedent basis.
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 8 is 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. Claim 8 claims “wherein the shaft center axis and the channel center axis are parallel to one another but the grip center axis is at an angle with respect to the shaft and grip center axes”. First, there is only one “grip center axis”, and not a plural “grip center axes”. So, there is no antecedent basis for “said grip center axis”. Second, the Examiner fails to see how the “grip center axis” can be at “an angle with respect to the grip center axes” (i.e. at an angle with respect to itself).
Claims 35 is 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 35 claims “the shaft with the forward lean is disposed in a lower front region of the grip, the lower front region being below the grip center axis and closer to the club face than an opposing rear region of the grip”. With all due respect, the Examiner has no idea what applicant is attempting to claim. It is clear that the shaft has a forward lean from the claim language. So, this would be represented generally by Fig. 8A. Looking at Fig. 8A, the shaft would be disposed in the lower rear region of the grip, not the lower front region as claimed as is currently claimed (emphasis added). In addition, the Examiner fails to understand how the lower front region can be “below the grip center axis” when the center axis runs the entire length of the grip and the shaft is located “in a lower front region of the grip”. It does not help that applicant appears to take this language solely from some figure (in all honesty, the Examiner is not really sure where the language comes from). Restated, the actual language is not used in the specification (i.e. see specification objection above).
Claims 36 is 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. Claim 36 claims a forward lean range “up to 6o”. There does not seem to be support in the originally filed specification for this range. That is, range makes obvious a value of slightly above 0 up to 6o. However, the actual disclosed range, as far as the Examiner can tell, is 1 to 6o as specifically recited in par. [0059] of applicant’s spec. As such, the claimed range of claim 36 is not supported.
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 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, 3-5, 7, 9, 14-16, 20-22, and 24-26 are rejected under 35 U.S.C. 103 as being unpatentable Solari (US Pat. No. 5,782,705) in view of Strand (US Pat. No. 5,308,068).
Regarding claim 1, Solari discloses a golf club (Fig. 1) comprising: a club head having a club face configured to make contact with a golf ball (Figs. 1 and 2; noting this is obvious as seen); the club head further comprising a center of mass at a location point around with distribution of mass of the club head is balanced (Fig. 2, noting a “center or mass” or a “center of gravity” is inherent in the structure, but as applicant has argued “inherency” in parent applications when used under a 103, so the Examiner will say that it is “obvious”; see as evidence, Strand, US Pat. No. 5,308,068, Fig. 3, item 40), a shaft having a shaft length and defining a shaft center axis (Fig. 1, item 14; noting again, an imaginary “shaft center axis” and “length” would be inherent, but the Examiner will say it is “obvious”), the shaft further defining an angle with respect to the club head with a forward lean (Fig. 1). It is noted that Solari does not specifically disclose that the shaft length, the center of mass location, and the angle are respectively configured to generate a torque about the shaft center axis so as to keep the club face square to an arc of motion of the club head during swing of the golf putter and to at least one of: resist or correct twisting of the shaft. However, Strand discloses a similar putter wherein the shaft length, the center of mass location, and the angle are respectively configured to generate a torque about the shaft center axis so as to keep the club face square to an arc of motion of the club head during swing of the golf putter and to at least one of: resist or correct twisting of the shaft (col. 5, lines 10-33; as noting this is functionally possible given the structure and corresponding disclosure). Thus, it would have been obvious to a person of ordinary skill in art at the time of filing to modify Solari to make the shaft length, the center of mass location, and the angle are respectively configured to generate a torque about the shaft center axis so as to keep the club face square to an arc of motion of the club head during swing of the golf putter and to at least one of: resist or correct twisting of the shaft as taught by Strand because doing so would be use of a known technique (arranging the shaft length, lean, and cg location to inhibit the tendency of the face to rotate during striking) to improve a similar product (a putter) in the same way (arranging the shaft length, lean, and cg location to inhibit the tendency of the face to rotate during striking, the arrangement creating more on-line putts – see Strand: col. 5, lines 29-33).
Regarding claim 3, the combined Solari and Strand disclose that the connection point of the shaft is located offset from and not directly above the center of mass location (Strand: Fig. 3, item 40 being the center of mass/gravity; the shaft connection point clearly offset from item 40).
Regarding claim 4, the combined Solari and Strand disclose that the club head and shaft connection point is proximal to a first end of the shaft and the shaft further comprises a grip proximal to a second end of the shaft (Solari: Fig. 1; noting the end proximate the head can be the first end, the end proximate the grip can be the second end), wherein the grip comprises a grip center axis, the grip further comprising a channel configured to receive the shaft therein and having a channel center axis, and wherein the grip center axis and the channel center axis are not parallel to one another (Solari: Fig. 6; as annotated below; noting the “channel center axis” and the “shaft axis” are one in the same).
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Regarding claim 5, the combined Solari and Strand disclose configured and arranged such that the shaft is secured within the grip channel wherein the shaft center axis is parallel to the channel center axis but the shaft center axis is angled relative to the grip center axis and the shaft center axis is not parallel to the grip center axis (Solari: Fig. 6 above and Fig. 1 making obvious the shaft within the grip; noting the shaft axis and the channel center axis are one in the same).
Regarding claim 7, the combined Solari and Strand disclose that the grip has an elliptical cross section with respect to the grip center axis such that a first axis in the grip cross section and a second axis in the grip cross section are perpendicular to one another but have different dimensions from one another (Solari: Fig. 5; noting the Examiner broadly construes this shape as “elliptical” in form as merriam-webster.com defines “elliptical” as “of, relating to, or shaped like an ellipse”, and the Examiner construes Fig. 5 as “relating to an ellipse or oval”). In the alternative, regarding the exact shape of the grip, it has been held that changes in shape are a matter of choice absent persuasive evidence that a person of skill in the art would find the shape significant. In re Daily, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)(see applicant’s spec, par. [0060]; applicant giving no criticality to use the exact elliptical shape). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact shape of the grip would not be significant: that is, the use should still be able to handle the putter by the grip regardless of its exact shape.
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Regarding claim 9, the combined Solari and Strand disclose that the grip has a cross section perpendicular to the grip center axis and wherein the grip cross section comprises at least one flat side (Solari: Fig. 5 above, and col. 2, lines 7-8; noting “A preferred handle grip is oblong with a pair of slightly flattened opposite sides” which make obvious the limitation; emphasis added). In the alternative, regarding the exact shape of the grip, it has been held that changes in shape are a matter of choice absent persuasive evidence that a person of skill in the art would find the shape significant. In re Daily, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)(see applicant’s spec, par. [0011]; applicant giving no criticality to use of flat sides). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact shape of the grip would not be significant: that is, the use should still be able to handle the putter by the grip regardless of its exact shape.
Regarding claims 14 and 25, the combined Solari and Strand disclose that the channel of the grip is adapted to be formed within the grip at an angle with respect to an exterior surface of the grip (Solari: Fig. 6 above; clearly disclosing that the exterior of the “second quadrilateral shape” is at an angle with respect to the grip channel center axis; also noting “adapted to be formed within the grip” is a product-by-process limitation).
Regarding claims 15 and 26, the combined Solari and Strand disclose that the channel center axis is: (a) non-parallel to the grip center axis when viewed from a point on a y-axis (Solari: Fig. 6 above; this view can be along the y-axis), (b) parallel to the grip center axis when viewed from a point on a x-axis (Solari: Fig. 5 and col. 3, lines 37-50; noting this is obvious given the figures and description, albeit the actual view is not shown, as the channel is only off-center in the side view as shown in Fig. 6 above; i.e. the x-axis would be looking at the grip 90 degrees from the view shown in Fig. 6); and (c) parallel to a major axis when viewed from a focal point of the grip (Solari: Figs. 5 and 6; noting this would be obvious given the combined figures, the major axis being along line 6A-6A as the axis channel slant would follow line 6A-6A; noting the view shown in Fig. 5 is a view from a focal point).
Regarding claims 16 and 24, the combined Solari and Strand disclose that the orientation of the club face with respect to the golf ball remains the same irrespective of the position along a longitudinal direction of the grip at which the player holds the club when swung (Solari: Fig. 1; noting this is functionally possible given the structure; restated, the grip if fixedly attached to the shaft which is fixedly attached to the hosel of the club head, so “orientation” would not change as a result of where the grip is longitudinally gripped; the Examiner assuming the that the claim automatically imports that the orientation of the face with respect to the ball never changes and the user is simply gripping the grip at different longitudinal locations with the head remaining in the same orientation as seen in Solari: Fig. 1).
Regarding claim 20, the combined Solari and Strand disclose that the grip comprising one of an elliptical cross section (Solari: Fig. 5; noting the Examiner broadly construes this shape as “elliptical” in form as merriam-webster.com defines “elliptical” as “of, relating to, or shaped like an ellipse”, and the Examiner construes Fig. 5 as “relating to an ellipse or oval”), a cylindrical cross section, a rectangular cross section, a triangular cross section, a hexagonal cross section, a circular cross section, or a square cross section with respect to the channel axis (noting these are not needed as “or” is used). In the alternative, regarding the exact shape of the grip, it has been held that changes in shape are a matter of choice absent persuasive evidence that a person of skill in the art would find the shape significant. In re Daily, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)(see applicant’s spec, par. [0060]; applicant giving no criticality to use the exact elliptical shape). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact shape of the grip would not be significant: that is, the use should still be able to handle the putter by the grip regardless of its exact shape.
Regarding claim 21, Solari discloses a golf club (Fig. 1) comprising: a club head having a club face configured to make contact with a golf ball (Figs. 1 and 2; noting this is obvious as seen); the club head further comprising a center of mass at a location point around with distribution of mass of the club head is balanced (Fig. 2, noting a “center or mass” or a “center of gravity” is inherent in the structure, but as applicant has argued “inherency” in parent applications when used under a 103, so the Examiner will say that it is “obvious”; see as evidence, Strand, US Pat. No. 5,308,068, Fig. 3, item 40), a shaft having a shaft length and defining a shaft center axis (Fig. 1, item 14; noting again, an imaginary “shaft center axis” and “length” would be inherent, but the Examiner will say it is “obvious”), the shaft connected to the club head with a forward lean at a connection point (Fig. 1) the shaft further defining an angle with respect to the club head with a forward lean (Fig. 1). It is noted that Solari does not specifically disclose that the shaft connected to the head at a connection point offset from and not directly above the center of mass location, and the shaft length, the center of mass location, and the angle are respectively configured to generate a torque about the shaft center axis so as to keep the club face square to an arc of motion of the club head during swing of the golf putter and to at least one of: resist or correct twisting of the shaft. However, the Examiner believes that it is obvious that Solari teaches that the shaft is connected to the head at a connection point offset from and not directly above the center of mass location (Fig. 2; noting as evidenced by Strand: Fig. 3, item 40, the cg location in Solari: Fig. 2 would be inherently somewhere approximately in the middle of the putter head proximate line 32, and Solari clearly discloses a connection offset from that middle portion). In addition, Strand discloses a similar putter wherein the shaft connected to the head at a connection point offset from and not directly above the center of mass location (Fig. 3, item 40 being the center of mass/gravity), and the shaft length, the center of mass location, and the angle are respectively configured to generate a torque about the shaft center axis so as to keep the club face square to an arc of motion of the club head during swing of the golf putter and to at least one of: resist or correct twisting of the shaft (col. 5, lines 10-33). Thus, it would have been obvious to a person of ordinary skill in art at the time of filing to modify Solari to make the shaft length, the center of mass location, and the angle are respectively configured to generate a torque about the shaft center axis so as to keep the club face square to an arc of motion of the club head during swing of the golf putter and to at least one of: resist or correct twisting of the shaft as taught by Strand because doing so would be use of a known technique (arranging a connection point for the shaft offset from the cg location and arranging the shaft length, lean, and cg location to inhibit the tendency of the face to rotate during striking) to improve a similar product (a putter that appears to have a shaft connection point offset from the cg) in the same way (making the shaft connection point offset from the cg and arranging the shaft length, lean, and cg location to inhibit the tendency of the face to rotate during striking, the arrangement creating more on-line putts – see Strand: col. 5, lines 29-33).
Regarding claim 22, the combined Solari and Strand disclose a grip proximal to an end of the shaft, including a grip center axis, and a channel having a channel center axis configured to receive the shaft therein, and wherein the grip center axis and the channel center axis are not parallel to one another (Solari: Figs. 1 and 6 above).
Claim 10, 11, 13, and 19 are rejected under 35 U.S.C. 103 as being unpatentable Solari (US Pat. No. 5,782,705) in view of Strand (US Pat. No. 5,308,068) and in further view of Klein et al. (US Pub. No. 2015/0209626 A1).
Regarding claim 10, Solari discloses a golf club (Fig. 1) comprising: a shaft connected to a grip at a first end of the shaft and to a club head at a second end of the shaft (Fig. 1; noting the end proximate the head can be the first end, the end proximate the grip can be the second end); the club head comprising a center of mass having a location at a point around which a distribution of mass of the club head is balanced (Fig. 2, noting a “center or mass” or a “center of gravity” is inherent in the structure, but as applicant has argued “inherency” in parent applications when used under a 103, so the Examiner will say that it is “obvious”; see as evidence, Strand, US Pat. No. 5,308,068, Fig. 3, item 40); the shaft having a shaft length and connected to the club head at a connection point (Fig. 1; noting connected to the hosel of the head); the shaft defining an angle with respect to the club head with a forward lean (Fig. 1; noting a forward lean is obvious at some angle); wherein the first end of the shaft is disposed in a channel in the grip and at an a grip angle with respect to the grip such that a central axis of the shaft is not parallel to a central axis of the grip (Fig. 6 above), wherein, responsive to the grip angle, the grip comprises a cross-sectional plane formed along both the central axis of the shaft and the central axis of the grip, and the cross sectional plane comprising a first quadrilateral-shaped grip element formed on one side of the central axis of the grip and a second quadrilateral-shaped grip element formed on an opposing side of the central axis of the grip in an opposite orientation (Fig. 6 above; noting the sections of the grip on each side of the channel have four distinct sides that can constitute a “quadrilateral”); wherein the channel runs within the grip and is dimensioned to secure the grip to the shaft thereby transferring a force on the grip into a corresponding force on the club head through the shaft (Fig. 1; noting this is functionally possible given the structure). It is noted that Solari does not specifically disclose that the shaft length, the center of mass location, and the angle are respectively configured to generate a torque about the center axis so as to keep the club face approximately square to an arc of motion of the club head during swing of the golf putter and to at least one of: resist or correct twisting of the shaft. However, Strand discloses a similar putter wherein the shaft length, the center of mass location, and the angle are respectively configured to generate a torque about the center axis so as to keep the club face approximately square to an arc of motion of the club head during swing of the golf putter and to at least one of: resist or correct twisting of the shaft (col. 5, lines 10-33; as noting this is functionally possible given the structure and corresponding description). Thus, it would have been obvious to a person of ordinary skill in art at the time of filing to modify Solari to make the shaft length, the center of mass location, and the angle are respectively configured to generate a torque about the shaft center axis so as to keep the club face square to an arc of motion of the club head during swing of the golf putter and to at least one of: resist or correct twisting of the shaft as taught by Strand because doing so would be use of a known technique (arranging the shaft length, lean, and cg location to inhibit the tendency of the face to rotate during striking) to improve a similar product (a putter) in the same way (arranging the shaft length, lean, and cg location to inhibit the tendency of the face to rotate during striking, the arrangement creating more on-line putts – see Strand: col. 5, lines 29-33). Finally, it is noted that the combined Solari and Strand do not disclose that the grip quadrilateral sections are specifically trapezoidal (i.e. two parallel sides). However, Klein discloses a grip in one embodiment that is virtually identical to the grip shown in Solari (Figs. 3A-3B). In addition, in another embodiment, Klein discloses a grip that has trapezoidal sections (Fig. 5A-5C; reproduced below). In the alternative, regarding using a “trapezoidal” shape, it has been held that, absent a convincing argument otherwise, one of ordinary skill in the art could use numerous configuration in shape or form to accomplish the same purpose. See In re Dailey, 149 USPQ 47 (CCPA 1976)(see applicant’s entire spec, noting there is no criticality for this limitation because the word “trapezoidal” is not even present in the specification). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Solari and Strand to use a grip as taught by Klein because doing so would be a simple substitution of one element (a grip formed with quadrilateral regions formed as trapezoidal regions) for another (a grip formed with quadrilateral regions) to yield predictable results (the continued ability to use a grip with an offset channel that creates quadrilateral regions, the quadrilateral regions being trapezoidal in shape). Finally, it the alternative, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact shape of the quadrilateral regions would not be significant: that is, the regions would create an off axis channel regardless of their exact shape.
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Regarding claim 11, the combined Solari, Strand, and Klein disclose that the channel of the grip is adapted to be formed within the grip at an angle with respect to an exterior surface of the grip (Solari: Fig. 6 above; clearly disclosing that the exterior of the “second quadrilateral shape” is at an angle with respect to the grip channel center axis; also noting “adapted to be formed within the grip” is a product-by-process limitation, see also Klein: Fig. 5A-5C above making this limitation obvious).
Regarding claim 13, the combined Solari, Strand, and Klein disclose that the orientation of the club face with respect to the golf ball remains the same irrespective of the position along a longitudinal direction of the grip at which the player holds the club when swung (Solari: Fig. 1; noting this is functionally possible given the structure; restated, the grip if fixedly attached to the shaft which is fixedly attached to the hosel of the club head, so “orientation” would not change as a result of where the grip is longitudinally gripped; the Examiner assuming that the orientation of the face with respect to the ball never changes and the user is simply gripping the grip at different longitudinal locations and the head orientation with respect to the ball never changes as shown in Solari: Fig. 1).
Regarding claim 19, the combined Solari and Strand disclose that the handle is formed in an exterior shape from the top of the handle to the bottom of the handle (Solari: Fig. 6 above). It is noted that Solari does not specifically disclose a handle formed in a uniform exterior. However, Klein discloses a very similar type of putter and grip wherein the handle is formed with a uniform exterior (Fig. 5A-5C). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Solari to make the grip have a uniform exterior as taught by Klein because doing so would be combining prior art elements (a grip having a shaft channel offset from the grip axis and a grip having shaft channel offset from the grip axis with an uniform exterior) according to known methods (using a uniform exterior grip on the former putter) to yield predictable results (the continued ability to use a grip having a shaft axis offset from the grip axis, the grip having a uniform exterior shape).
Claims 29-34 are rejected under 35 U.S.C. 103 as being unpatentable Solari (US Pat. No. 5,782,705).
Regarding claim 29, Solari discloses a golf club (Fig. 1) comprising: a club head having a club face configured to make contact with a golf ball (Figs. 1 and 2; noting this is obvious as seen); a shaft connected to the club head with a forward lean and defining a shaft center axis (Fig. 1, item 14; noting again, an imaginary “shaft center axis” would be inherent, but the Examiner will say it is “obvious”), a grip coupled to the shaft and defining a grip center axis (Fig. 1 and 6 above, as annotated), the grip comprising a channel extending within the grip and configured to receive at least a portion of the shaft (Fig. 1 and 6 above, as annotated), the channel defining a channel center axis that is parallel to the shaft center axis and non-parallel to the grip center axis (Fig. 6 as annotated above); wherein the shaft is secured within the channel such that the shaft center axis is angled relative to the grip center axis (Figs. 1 and 6) while the grip is aligned with the club face (Fig. 1, annotated below; noting the Examiner taking the broadest reasonable interpretation as to the grip being “aligned” with the face; noting “aligned” simply means “arranged in a straight line” as per dictionary.com); and wherein the non-parallel relationship between the channel center axis and the grip center axis is configured to maintain an orientation of the club face with respect to the golf ball irrespective of a position along a longitudinal direction of the grip at which a player holds the golf club when swung (Solari: Fig. 1; noting this is functionally possible given the structure; restated, the grip if fixedly attached to the shaft which is fixedly attached to the hosel of the club head, so “orientation” would not change as a result of where the grip is longitudinally gripped; the Examiner assuming that the orientation of the face with respect to the ball never changes and the user is simply gripping the grip at different longitudinal locations with the head remaining at the same location as seen in Solari: Fig. 1). The Examiner gives the above rejection under a 103 because some of the features of the golf club may be considered inherent to the Examiner or a POSA, but “obvious” to applicant.
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Regarding claims 30, Solari discloses that the channel of the grip is adapted to be formed within the grip at an angle with respect to an exterior surface of the grip (Fig. 6 above; clearly disclosing that the exterior of the “second quadrilateral shape” is at an angle with respect to the grip channel center axis; also noting “adapted to be formed within the grip” is a product-by-process limitation).
Regarding claims 31, Solari discloses that the shaft center axis is angled relative to the grip center axis (Fig. 6 above) to offset or compensate for the forward lean of the shaft (Fig. 6 above; noting this is functionally possible given the structure, the Examiner not importing any limitations into what it means to “offset or compensate for the forward lean” other than that the grip has an offset channel to somehow accommodate a forward lean of the shaft).
Regarding claims 32, Solari discloses that an angle between a plane through the shaft center axis and an x-y plane remains the same, and an angle between a plane through the grip center axis and the x-y plane remains the same, regardless of the position along the grip at which the player holds the golf club (Solari: Fig. 1 and 6 above; noting this is functionally possible given the structure as the x-y plane can be the plane along section 6A-6A of Fig. 5; restated, the grip if fixedly attached to the shaft at angle within the grip via the channel, the shaft is fixedly attached to the hosel of the club head, so “angle” would not change as a result of where the grip is longitudinally gripped; the Examiner assuming that the orientation of the face with respect to the ball never changes and the user is simply gripping the grip at different longitudinal locations).
Regarding claims 33, Solari discloses that the grip comprises, in a cross-sectional plane extending along the grip center axis and the shaft center axis, a first grip element disposed on one side of the grip center axis and a second grip element disposed on an opposing side of the grip center axis in an opposite orientation (Solari: Fig. 6 above; noting the “first grip element” can be the “first quadrilateral shape” and the “second grip element” can be the “second quadrilateral shape”; although the Examiner is unclear what this “grip element” specifically refers to as this language is not used in the specification; noting “element” is only used once in par. [0040] and it is not with regards to the grip).
Regarding claims 34, it is noted that Solari does not specifically disclose that a top end point of the shaft at the shaft center axis is approximately 0.75 inches behind the club face. However, Solari makes obvious some distance between the top end point of the shaft at the shaft center and the club head face (Fig. 1 above). In addition, regarding the placement of the top end point of the shaft with regards to the face, it has been held that the rearrangement of parts is not patentable unless it modifies the operation of the device. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950)(see specifically applicant’s Fig. 10F that appears to show a shaft center axis out past the front face much like Solari: Fig. 1 above, negating any criticality for having the top end behind the face). Furthermore, regarding the exact distance, 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. [0045], applicant stating “This tilt is called forward lean and typically is moved forward so the top center line end point of the shaft is approximately 0.75 inches behind the face of the self-balancing putter 100 but is not limited to that in this configuration”; negating any criticality for the exact distance, emphasis added). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that using the top end of the shaft behind or in front of the face would not modify the operation of the device: that is, the shaft top end would still allow for the use of a grip regardless of its exact location as compared to the face. In addition, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact top end shaft center axis to face distance would not make the claimed device perform differently: that is, putter would still have a shaft with a forward lean and offset grip regardless of the relative distance between the top end of the shaft center axis and the face.
Claim 36 is rejected under 35 U.S.C. 103 as being unpatentable Solari (US Pat. No. 5,782,705) in view of Davis et al. (herein “Davis”; US Pub. No. 2014/0349775 A1).
Regarding claims 36, it is noted that Solari does not specifically disclose that the forward lean ranges up to 6 degrees. However, Solari: Fig. 1 above clearly shows some shaft lean. In addition, Davis discloses a forward lean putter with a lean of 5 degrees (Fig. 9, item 9 and par. [0023]; noting an “obtuse angle” of 95 degrees makes obvious a forward lean of 5 degrees which makes obvious the claimed range). Finally, in the alternative, regarding the exact lean angle, 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. [0059], applicant giving no criticality for using a value of 1 to 6 degrees). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Solari to use a forward lean of 5 degree as taught by Davis because doing so would be combining prior art elements (a golf club with some forward lean and a golf club with a forward lean that can be 5 degrees) according to known methods (using the 5 degree lean in the former putter) to yield predictable results (the continued ability to use a forward lean in the putter, the forward lean being 5 degrees and known to work for putters). In the alternative, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact forward lean angle would not make the claimed device perform differently: that is, putter would still have a shaft with a forward lean and offset grip regardless of the exact forward lean angle.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 10, 21, and 29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 18, 39 of copending Application No. 18/170,659 in view of Strand (US Pat. No. 5,308,068). The Examiner looks at claims 1 of both the current application and the ‘659 application, but notes that all the independent claims recite similar subject matter.
Claim 1 of the current application reads:
1. (Currently Amended) A golf club, comprising:
a club head having a club face configured to make contact with a golf ball;
said club head further comprising a center of mass having a location at a point around
which a distribution of mass of the club head is balanced;
a shaft having a shaft length and defining a shaft center axis;
said shaft connected to said club head at a connection point;
said shaft further defining an angle with respect to said club head with a forward lean;
and wherein said shaft length, said center of mass location, and said angle are respectively
configured to generate a torque about said shaft center axis so as to keep said club face
approximately square to an arc of motion of said club head during swing of said golf putter and to at
least one of: resist or correct twisting of said shaft.
Claim 1 of the ‘659 reads:
1. (Currently Amended) A golf club comprising:
a straight shaft having a shaft center axis;
a grip at one end of said shaft, said grip having a grip center axis, and a front edge of the
grip having a reference line extending down the side of the grip, the grip further comprising a channel configured to receive said shaft therein and having a channel center axis; a club head at another end of said shaft having a forward lean, said club head comprising a club face configured to make contact with a golf ball and the reference line at the front edge of the grip aligned with the club face, and wherein said grip center axis and said channel center axis are not parallel to one another; wherein said channel is angled such that an angle between the grip center axis and the shaft center axis is offset so that the front edge of the grip is aligned with the club face to compensate for the forward lean of said shaft, and wherein the golf club is configured to resist twisting when the club face contacts the golf ball by correcting the club face.
As can be seen, the structural limitations of claim 1 are significantly broader than the structural limitations of claim 1 of the ‘659 and thus claim 1 of the ‘659 makes obvious the claimed structure in the current application. In addition, Strand makes obvious the above functional italicized language of claim 1 of this current application (see rejection of claim 1 above for specifics). As such, a terminal disclaimer is warranted.
This is a provisional nonstatutory double patenting rejection.
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
8/10/26
/NICHOLAS J. WEISS/Supervisory Patent Examiner, Art Unit 3711
Prosecution Insights