DETAILED ACTION
Drawings
1. The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the elements listed below must be shown or the feature(s) canceled from the claim(s). No new matter should be entered:
“a face component comprising … a portion of the sole, a portion of the crown, a portion of the toe, a portion of the heel, a heel-side crown-sole transition region, and a toe-side crown-sole transition region; wherein … the face component comprises at least a portion of a FCT screw port … wherein the face component comprises a recessed peripheral ledge, wherein the recessed peripheral ledge is recessed inwardly towards an interior of the golf club head … and an adjustable head-shaft connection assembly comprising a sleeve secured by a fastening member in a locked position … wherein the recessed peripheral ledge is at least partially located: in a lower heel region located in a lower portion of the golf club head proximate the heel-side crown-sole transition region and rearward of the hosel longitudinal axis; in an upper heel region located in a forward crown portion of the golf club head and rearward of the hosel longitudinal axis; in an upper toe region located in the forward crown portion of the golf club head and rearward of the hosel longitudinal axis; and in an upper central region located in the forward crown portion between the upper heel region and the upper toe region” (claim 21).
“a golf club component … having surfaces defining a face opening, a portion of the sole, a portion of the crown, a portion of the toe, a portion of the heel, a heel-side crown-sole transition region, and a toe-side crown-sole transition region; wherein the golf club component has a variable front to back dimension and the golf club component comprises at least a portion of a FCT screw port … wherein the golf club component comprises a recessed peripheral ledge, wherein the recessed peripheral ledge is recessed inwardly towards an interior of the golf club head … and an adjustable head-shaft connection assembly comprising a sleeve secured by a fastening member in a locked position … wherein the recessed peripheral ledge is at least partially located: in a lower heel region located in a lower portion of the golf club head proximate the heel-side crown-sole transition region and rearward of the hosel longitudinal axis; in an upper heel region located in a forward crown portion of the golf club head and rearward of the hosel longitudinal axis; in an upper toe region located in the forward crown portion of the golf club head and rearward of the hosel longitudinal axis; and in an upper central region located in the forward crown portion between the upper heel region and the upper toe region” (claim 43).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
2. 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 24-36 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. Claim 24 includes a Markush grouping of an open list of alternatives: “comprising at least one of a bonded overlay joint, a full lap joint, or a half lap joint”. Applicant should specify that the grouping is a closed list of alternatives. See MPEP 2173.05(h).
Claims 29-33 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. Claim 29 includes a Markush grouping of an open list of alternatives: “one or more thermoplastic materials selected from the following: polysulfones, polyetherimides, and/or polyamide-imides. Applicant should specify that the grouping is a closed list of alternatives. See MPEP 2173.05(h).
Claim 39 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. The recitation therein of “a recessed peripheral ledge” creates an indefinite scope because claim 21, from which 39 depends, also recites “a recessed peripheral ledge”. From the drawings and specification, it does not appear there are two recessed peripheral ledges as claimed. Applicant should add clarity to this discrepancy. Moreover, claim 39 recites the limitation "the recessed peripheral ledge". There is insufficient antecedent basis for this limitation in the claim.
Claim 43 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 43 includes a Markush grouping of an open list of alternatives: “comprising at least one of a bonded overlay joint, a full lap joint, or a half lap joint”. Applicant should specify that the grouping is a closed list of alternatives. See MPEP 2173.05(h). The recitation therein of “a recessed peripheral ledge” creates an indefinite scope because claim 40, from which 43 depends, also recites “a recessed peripheral ledge”. From the drawings and specification, it does not appear there are two recessed peripheral ledges as claimed. Applicant should add clarity to this discrepancy. Moreover, claim 43 recites the limitation "the recessed peripheral ledge". There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 112
3. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21-43 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The following recitations in each independent claim are not supported by the specification as originally filed:
“a face component comprising … a portion of the sole, a portion of the crown, a portion of the toe, a portion of the heel, a heel-side crown-sole transition region, and a toe-side crown-sole transition region; wherein … the face component comprises at least a portion of a FCT screw port … wherein the face component comprises a recessed peripheral ledge, wherein the recessed peripheral ledge is recessed inwardly towards an interior of the golf club head … and an adjustable head-shaft connection assembly comprising a sleeve secured by a fastening member in a locked position … wherein the recessed peripheral ledge is at least partially located: in a lower heel region located in a lower portion of the golf club head proximate the heel-side crown-sole transition region and rearward of the hosel longitudinal axis; in an upper heel region located in a forward crown portion of the golf club head and rearward of the hosel longitudinal axis; in an upper toe region located in the forward crown portion of the golf club head and rearward of the hosel longitudinal axis; and in an upper central region located in the forward crown portion between the upper heel region and the upper toe region” (claim 21).
“a golf club component … having surfaces defining a face opening, a portion of the sole, a portion of the crown, a portion of the toe, a portion of the heel, a heel-side crown-sole transition region, and a toe-side crown-sole transition region; wherein the golf club component has a variable front to back dimension and the golf club component comprises at least a portion of a FCT screw port … wherein the golf club component comprises a recessed peripheral ledge, wherein the recessed peripheral ledge is recessed inwardly towards an interior of the golf club head … and an adjustable head-shaft connection assembly comprising a sleeve secured by a fastening member in a locked position … wherein the recessed peripheral ledge is at least partially located: in a lower heel region located in a lower portion of the golf club head proximate the heel-side crown-sole transition region and rearward of the hosel longitudinal axis; in an upper heel region located in a forward crown portion of the golf club head and rearward of the hosel longitudinal axis; in an upper toe region located in the forward crown portion of the golf club head and rearward of the hosel longitudinal axis; and in an upper central region located in the forward crown portion between the upper heel region and the upper toe region” (claim 43).
Neither the written description nor Drawings teach these features in a golf club head. Applicant is creating an entirely new golf club head after the original filing by combining structural features from distinct golf club embodiments. Examiner notes these structural components taken from the distinct golf club heads are not insignificant features. This constitutes new matter as the original specification does not support the claimed golf club features set forth above.
Conclusion
4. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Yamamoto (US Pat. No. 8,870,680), Cheng (US Pub. No. 2008/0139339) and Cackett et al. (US Pub. No. 2006/0105855).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL DAVID DENNIS whose telephone number is (571)270-3538. The examiner can normally be reached M-F 8:00 am - 5:00 pm.
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, Eugene Kim can be reached at (571) 272 4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711
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