DETAILED ACTION
Claim Rejections - 35 USC § 103
1. 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.
2. 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.
3. Claims 1-5, 7, 10-17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Knight et al. (US Pat. No. 8,795,102) in view of Woodward et al. (US Pub. No. 2023/0390617).
With respect to claims 1-5, 10-11, 16 and 20, Knight et al. teaches a golf club 100 comprising a shaft 106 connected to a clubhead 102 via hosel 104, the clubhead 102 comprising: a body 109 comprising: a face 114 at a front side of the body 109, the face comprising a striking surface for striking a ball; a back 116 at a rear side of the body; a top at an upper side of the body 109; a sole 120 at a lower side of the body and thicker than the top in a thickness direction of the body (Fig.’s 6, 8), the sole 120 comprising a bottom surface for contacting a playing surface when the golf clubhead 102 is in use; a heel 110 at a right side of the body 109; a toe 112 at a left side of the body 109 and wider than the heel in a width direction of the body (Fig. 9; columns 7-8); a hosel 104 coupled with the heel 110 of the body 109 and configured for connecting the golf clubhead with a shaft 106, the hosel 104 having a hosel axis; wherein the body 109 and the hosel 104 are formed as a unitary piece (column 4, lines 32-33); wherein the striking surface has a loft angle selected from a group consisting of about 26.8°, about 29.8°, about 32.8°, about 35.8°, about 38.8°, about 41.8°, about 44.8°, about 47.8°, about 50.8°, about 53.8°, about 56.8°, about 59.8°, about 62.8°, about 65.8°, and about 68.8° (Table 1; column 4, lines 3-18); wherein the face comprises a plurality of grooves 115 to help grip the ball, impart spin, or both, wherein each groove 115 in the plurality of grooves is elongated in the length direction of the body (Fig. 7; column 7, lines 24-25); wherein the bottom surface of the sole 120 comprises a front bottom edge and a rear bottom edge, wherein a distance from the rear bottom edge to the front bottom edge varies along the length direction of the body and has a peak located between the toe and the heel in the length direction of the body (Fig. 9), wherein a thickness of the sole varies along the length direction of the body and reaches a maximum at a peak between the toe and the heel in the length direction of the body (Fig. 9); wherein the bottom surface of the sole 120 is curved along the thickness direction of the body to help swing the golf clubhead (Fig.’s 6-9);
Per MPEP 2114 - a claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). If a prior art structure is inherently capable of performing the intended use as recited, then it shifts the burden to applicant to establish that the prior art does not possess the characteristic relied on. See In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Knight inherently comprises a CG but does not disclose its position, and thus does not expressly teach wherein a center of gravity (CG) is located (i) closer to the sole than to the top in the width direction of the body, (ii) closer to the heel than to the toe in a length direction of the body (iii) on or in front of a vertical plane passing the hosel axis when the bottom surface of the sole is in contact with the playing surface.
Analogous art reference Woodward et al. teaches the following to be known in the art: a center of gravity (CG) 160 is located (iii) on or in front of a vertical plane passing a hosel axis 1080 of a hosel when a bottom surface of a sole is in contact with a playing surface 1010 (Fig. 2). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to align the CG and hosel axis of Knight as taught by Woodward. The rationale to combine is to provide a CG location that results in ball flight and spin properties suitable to the particular needs of a golfer.
Regarding the claimed CG locations in the width and length directions, per MPEP 2144.05, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the instant case, the golf club of Knight would operate as intended if the CG were within the claimed range. Notably, CG location in the width and length directions are well known to be result effective for provided a desired ball flight and spin condition based on gear effect. At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to select an optimal CG location, including within the claimed range, via routine experimentation. The rationale to optimize is to provide a desired weight distribution of the club that produces ball flights and spin properties suitable for the swing of the golfer. Further, the applicant does not place criticality to the claimed range. The proposed modification has a reasonable expectation of success as it can be accomplished using mass rearrangement.
With respect to claim 7, the golf club of Knight as modified above comprises a width from the top to the sole in the width direction of the body (inherent), a length from the toe to the heel in the length direction of the body (inherent) and a width of the heel in the width direction of the body (inherent). Knight does not expressly disclose these values. However, per MPEP 2144.05, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller. Here, the golf club of Knight would operate as intended if the top to sole width, length and heel to toe width were within the claimed range. Notably, these dimensions are result effective variables for the club MOI and CG location. At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to select optimal values for these parameters, including within the claimed range, via routine experimentation. The rationale to optimize is to provide a desired a desired MOI and weighting distribution suitable to the golfer’s particular swing pattern. Further, the applicant does not place criticality to the claimed ranges. The proposed modification has a reasonable expectation of success as it can be accomplished using mass rearrangement.
With respect to claim 15, per MPEP 2131, when a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art. Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir. 2001). As set forth above in the rejection of claim 1, Knight as modified by Woodward et al. teaches wherein the CG is on a vertical plane passing the hosel axis. Supplemental to this, per MPEP 2144.05, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller. Within the art, the distance between the CG and vertical plane passing the hosel axis is known to be result effective for reducing contact with grass prior the ball, and to more uniformly distribute turf load, thus preventing twisting, when hitting out of the rough. See Truesdale (US Pub. No. 2003/0134687) at paragraph [0023] cited as an extrinsic reference. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to select a CG distance from the vertical plane of the hosel axis within the claimed range via routine experimentation. The rationale to combine is to reduce contact with grass prior the ball, and to more uniformly distribute turf load, thus preventing twisting, when hitting out of the rough.
With respect to claims 12-13, Knight teaches wherein the peak of the sole is positioned near or toe-ward of W3, which is at the midpoint between the heel and toe (“middle sole width”; Fig. 9; column 7, lines 30-32). Thus, based on the rejection of claim 1, which makes it obvious to positon the CG closer to the heel than the toe, the requirement of the CG of the golf clubhead is located between the peak of the sole and the heel in the length direction of the body is met. Regarding this claimed distance, examiner again notes that CG location is known to be a result effective variable for ball flight and spin properties due to gear effect. See MPEP 2144.05 - In re Aller. At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to select an optimal CG location, including within the claimed range, via routine experimentation. The rationale to optimize is to provide a desired weight distribution of the club that produces ball flights and spin properties suitable for the swing of the golfer
With respect to claim 14, Knight inherently teaches a CG height, but does not expressly disclose this value. Examiner again notes that CG location is known to be a result effective variable for ball flight and spin properties due to gear effect. See MPEP 2144.05 - In re Aller. At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to select an optimal CG height location, including within the claimed range, via routine experimentation. The rationale to optimize is to provide a desired weight distribution of the club that produces ball flights and spin properties suitable for the swing of the golfer
With respect to claim 17, Woodward, cited above for the alignment of the CG and hosel axis, further teaches wherein a curve of the bottom surface of the sole along the thickness direction of the body is substantially a segment of a circle with a center located at or adjacent the hosel axis (Fig. 2). The rationale to combine is the same as stated above.
4. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Knight et al. (US Pat. No. 8,795,102) in view of Woodward et al. (US Pub. No. 2023/0390617) and further in view of Pond et al. (US Des. Pat. No. D395,476).
With respect to claim 6, Knight et al. teaches wherein the back is curved substantially smoothly from the toe to the heel (Fig.’s 2, 9), but fails to expressly teach wherein the back is curved from the top to the sole. However, this feature is known in the art as taught by Pond et al. – Fig.’s 1-7 showing a curve with no holes or lumps that rise or fall suddenly and no abrupt changes in curvature.
5. Claims 8-9 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Knight et al. (US Pat. No. 8,795,102) in view of Woodward et al. (US Pub. No. 2023/0390617) and further in view of Hoeflich (US Pat. No. 5,429,353).
With respect to claim 8, Knight inherently comprises a hosel with a lie angle, but fails to disclose this numeric value. However, analogous art reference Hoeflich expressly teaches that it is known to provide a lie angle of from about 59° to about 60° (Table 1). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to select a lie angle as taught by Hoeflich. The rationale to combine is to provide a known lie angle value. Lie angles expectantly dictate hand position at address and are known to be customized for golfer preference.
With respect to claim 9, Knight teaches wherein the sole has a maximal thickness of from about 22 to about 26 mm (column 8, lines 36-48), but fails to expressly disclose a maximum thickness of the top. However, analogous art reference Hoeflich teaches that it is known to provide a maximal thickness 34 for an iron golf club top form about 4 mm to about 6 mm (Fig. 2; column 2, lines 56-59; Table B-2). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to select a top line maximum thickness as taught by Hoeflich for the golf club of Knight. The rationale to combine is to provide a mass distribution that results in a CG and MOI suitable for an iron golf club. The relatively thin top will move CG lower.
With respect to claim 19, Knight teaches a set comprising: a plurality of golf clubheads (59 Degree Wedge and 53 Degree Wedge of Tables 1 and 2), each comprising: a body comprising: a heel at a right side of the body; a toe at a left side of the body and wider than the heel in a width direction of the body; a top at an upper side of the body; a sole at a lower side of the body and thicker than the top in a thickness direction of the body, the sole comprising a bottom surface for contacting a playing surface in use; and a face at a front side of the body and comprising a striking surface for striking a ball, the striking surface having a loft angle when the bottom surface of the sole is in contact with the playing surface; a hosel coupled with the heel of the body for connecting the golf clubhead with a shaft, the hosel having a lie angle when the bottom surface of the sole is in contact with the playing surface (Fig.’s 1-9).
Admittedly, the difference in loft is 6 degrees, which is outside the range of from about 3o to about 3.5. However, Knight further teaches wherein it is known to provide lofts gapping of wedges of from about 3o to about 3.5 (column 4, lines 12-15). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to shrink the loft gapping. This will expectantly mitigate gapping (i.e. distance) issues through the set.
Knight does not expressly teach wherein the lie angles are the same within the set. However, analogous art reference Hoeflich teaches the following to be known in the art:
wherein the lie angle of the hosel of the golf clubhead in the plurality of golf clubheads and the lie angle of the hosel of the next golf clubhead in the plurality of golf clubheads are substantially the same (Table B-1). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to use the same lie angle for the iron golf clubs of Knight for the expected purpose of creating consistency through the set for the golfer.
Knight inherently comprises a CG but does not disclose its position, and thus does not expressly teach wherein a center of gravity (CG) is located closer to the sole than to the top in the width direction of the body and closer to the heel than to the toe in a length direction of the body. However, per MPEP 2144.05, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller. In the instant case, the golf club of Knight would operate as intended if the CG were within the claimed range. Notably, CG location in the width and length directions are well known to be result effective for provided a desired ball flight and spin condition based on gear effect. At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to select an optimal CG location, including within the claimed range, via routine experimentation. The rationale to optimize is to provide a desired weight distribution of the club that produces ball flights and spin properties suitable for the swing of the golfer. Further, the applicant does not place criticality to the claimed range. The proposed modification has a reasonable expectation of success as it can be accomplished using mass rearrangement.
6. Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Knight et al. (US Pat. No. 8,795,102).
With respect to claim 18, Knight et al. teaches a golf clubhead 102 comprising: a body 109 comprising: a heel 110 at a right side of the body 109; a toe 112 at a left side of the body 109 and wider than the heel in a width direction of the body (Fig. 9; columns 7-8); a top at an upper side of the body 109; a sole 120 at a lower side of the body comprising a bottom surface for contacting a playing surface when in use (See MPEP 2114 – In re Schreiber); wherein a thickness of the sole varies along a length direction of the body and reaches a maximum at a peak between the heel and the toe of the body (Fig. 9); a face 114 at a front side of the body 109 and comprising a striking surface for striking a ball; the striking surface having a loft angle when the bottom surface of the sole is in contact with the playing surface (inherent); a hosel 104 coupled with the heel 110 of the body 109 and configured for connecting the golf clubhead with a shaft 106, the hosel 104 having a lie angle when the bottom surface of the sole is in contact with the playing surface (inherent).
Knight inherently comprises a CG but does not disclose its position, and thus does not expressly teach wherein a center of gravity (CG) is located closer to the sole than to the top in the width direction of the body and closer to the heel than to the toe in a length direction of the body. However, per MPEP 2144.05, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller. In the instant case, the golf club of Knight would operate as intended if the CG were within the claimed range. Notably, CG location in the width and length directions are well known to be result effective for provided a desired ball flight and spin condition based on gear effect. At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to select an optimal CG location, including within the claimed range, via routine experimentation. The rationale to optimize is to provide a desired weight distribution of the club that produces ball flights and spin properties suitable for the swing of the golfer. Further, the applicant does not place criticality to the claimed range. The proposed modification has a reasonable expectation of success as it can be accomplished using mass rearrangement.
Conclusion
7. 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.
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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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