DETAILED ACTION
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 1-20 are objected to because of the following informalities: claims 1-20 use the terms “urethane” and “polyurethane” interchangeably. Applicant should use one term consistently for clarity. Appropriate correction is required.
Drawings
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 “urethane layer member extends to a back side of the 45-degree boundary line” of claims 8 and 17 “an end of the urethane layer member located at a position on a face side relative to the 45-degree boundary line” of claims 11 and 20 must be shown or the feature(s) canceled from the claim(s). Restated, Fig. 6, which is the only figure that shows the imaginary 45o planes, does not show the position of the insert polyurethane face with any clarity (i.e. the imaginary planes of Fig. 6 should have been included in the exploded view of Fig. 7 for claims 11, and 20; and noting claims 8 and 17 are not even attempted to be shown in conjunction with the imaginary planes). No new matter should be entered.
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
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 1-11 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 1 claims a surface roughness “greater than 4.5 µm” or “greater than 25 µm” . The claim is technically indefinite because the range is open-ended. Claims 2-11 are rejected because they depend from claim 1.
Claim 2 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 2 claims a Sdr of “greater than or equal to 0.12”. The claim is technically indefinite because the range is open-ended. Furthermore, claim 2 is indefinite because the details of the measurement of Sdr need to be specifically claimed. The exact details of the measurement used for the measurement appear in applicant’s page 17 and need to be incorporated into claim 2. For example, certainly the exact protocol used (ISO 25178), the exact type of tester used (Wide-Area 3D Measurement System Head VR-5200) and the exact area scanned (10000 x 10000 µm) would need to be included to make the claim definite.
Claims 8, 9, 11, 17, 18, and 20 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 8, 11, 17, and 20 contain multiple issues. First, the “flat plane” and “reference plane” are completely “imaginary”. As such, it should be referred to “imaginary” (i.e. they are not actual structure). Applicant then claims “in each vertical cross section”. What is “each vertical cross section”? This has never been previously defined. Again, the ”straight lines” are also completely “imaginary”. They should be referred to as such. Finally, the entire claim assumes, without ever specifically claiming, that the analysis in claims 8, 11 17, and 20 is performed on a side view cross-section of the face. Restated, the directional view of the analysis in claims 8, 11, 17, and 20 needs to be added. Claims 9 and 18 are rejected because they are dependent on claims 8 and 17.
Claim 13 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 13 should specifically define the structure that creates the “width” measurement (i.e. specifically defined by structure or crown-to-sole, back-to-front, etc. how the width is determined).
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 (i.e., changing from AIA to pre-AIA ) 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, 3, 8, 10, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kosmatka et al. (herein “Kosmatka”; US Pub. No. 2002/0165040 A1) in view of Chao (US Pub. No. 2009/0163289 A1).
Regarding claim 1, Kosmatka discloses a golf club head (Fig. 4) comprising a face portion including a striking face (Fig. 4; noting this is obvious as it is striking a ball), wherein the face portion includes a metal face portion made of a metal (Fig. 4, item 28 and pars. [0048]-[0049] noting it is obvious that item 28 is part of the “unitary head” and thus can be “metal” under par. [0048], see also pars. [0028] and [0051]), and a urethane layer member disposed outside the metal face portion and made of a polyurethane (Fig. 4, item 26 and par. [0050]; noting “polyurethane” is specifically listed and “polyurethane” is “urethane”), and a covered part (Fig. 4; noting the part of the metal body covered by the polyurethane), which is covered by the urethane layer member, of an outer surface of the metal face portion has a surface roughness (Fig. 4, item 26 covering item 28; noting some surface roughness for the covered part is inherent). It is noted that Kosmatka does not specifically disclose that the surface roughness is greater than 4.5 µm when expressed by an arithmetic mean roughness Ra or has a surface roughness of greater than 25 µm when expressed by a maximum peak-to-valley height Rz. However, Chao discloses a similar wood head (Fig. 1) wherein a polymer is used on the front of the striking face (par. [0028]) and wherein cover portion has a surface roughness greater than 4.5 µm when expressed by an arithmetic mean roughness Ra (par. [0122] making obvious to use surface roughness on the backing plate to promote adhesion of polyurethane, and par. [0028]; noting 1 to 10 µm makes obvious the claimed range even though this value refers to the front of the polymer striking face, it still makes obvious a known surface roughness value/range within the four corners of the prior art, i.e. it is at least “obvious to try”) or has a surface roughness of greater than 25 µm when expressed by a maximum peak-to-valley height 15 Rz (noting this is not needed as “or” is used). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Kosmatka to make the polymer have a surface roughness greater than 4.5 µm when expressed by an arithmetic mean roughness Ra as taught by Chao because doing so would be use of a known technique (using a surface roughness on striking plate that is covered, the art listing specific values of surface roughness) to improve a similar product (a wood golf club with an outer polymer layer striking face attached to a covered metal portion) in the same way (using a surface roughness on covered metal portion within a certain range, the surface roughness range allowing for increased “adhesion of urethane” that covers the base striking plate – see Chao: par. [0122]).
Regarding claim 3, the combined Kosmatka and Chao disclose that the urethane layer member includes a striking face constituting part having a thickness of greater than or equal to 0.3 mm and less than or equal to 0.8 mm (Kosmatka: par. [0051]; noting 0.001 to 0.5 inches or 0.0254 to 12.7 mm makes obvious the claimed range; also noting the Examiner interpret this to be the thickness of the urethane layer as it pertains to the striking face).
Regarding claim 8, the combined Kosmatka and Chao disclose that the golf club head includes a head body including the metal face portion, and the urethane layer member (see rejection of claim 1 above), a flat plane that is in contact with the striking face at a face center is defined as a reference plane, in each vertical cross section, contact points between the golf club head outer surface and straight lines having an angle of 45 degrees with respect to the reference plane are determined, a set of the contact points is defined as a 45-degree boundary line, the urethane layer member extends to a back side of the 45-degree - boundary line (Kosmatka: Fig. 4 below; noting the “back side” can simply be the portion moving toward the aft or rear), and the head body includes an edge fixing portion that fixes an edge portion of the urethane layer member on the back side of the 45-degree boundary line (Kosmatka: Fig. 4 as annotated below).
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Regarding claim 10, the combined Kosmatka and Chao disclose that an entirety of the urethane layer member is disposed within the striking face (Kosmatka: Fig. 4 above; noting the Examiner broadly construes this to mean that the urethane layer is only present on the striking face; noting this is obvious as seen above; alternatively, noting if applicant is trying to claim a literal insertion of the polyurethane into the striking face, see Kosmatka: Fig. 3A and par. [0052]; noting “the polymer 26 material may include scorelines 13 on the face” make obvious that the insert of Fig. 3A can be the polymer).
Regarding claim 11, the combined Kosmatka and Chao disclose that a flat plane that is in contact with the striking face at a face center is defined as a reference plane, in each vertical cross section, contact points between the golf club head outer surface and straight lines having an angle of 45 degrees with respect to the reference plane are determined, a set of the contact points is defined as a 45- degree boundary line, and an end of the urethane layer member is located at a position on a face side relative to the 45- degree boundary line (Kosmatka: Fig. 4 above; noting “on a face side relative to the 45-degree boundary line” is so vague and general that Fig. 4 reads on it as annotated above; alternatively, also see Kosmatka: Fig. 3A and par. [0052] and the rejection of claim 10 above; noting use of a polyurethane insert in a face portion, item 30, that does not extend back to the sole and crown makes obvious the above limitation).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Kosmatka et al. (herein “Kosmatka”; US Pub. No. 2002/0165040 A1) in view of Chao (US Pub. No. 2009/0163289 A1) in view of Roach et al. (herein “Roach”; US Pat. No. 7,811,179 B2) and as evidenced by Lambeth et al. (herein “Lambeth”; US Pub. No. 2018/0361211 A1).
Regarding claim 2, it is noted that the combined Kosmatka and Chao do not specifically disclose that that the covered part, which is covered by the urethane layer member, of the outer surface of the metal face portion has a developed interfacial area ratio Sdr of greater than or equal to 0.12. However, Kosmatka clearly discloses the use of a covered part (Fig. 4). Chao makes obvious the ability to use a high surface roughness on the covered portion of the face plate (par. [0122] making obvious to use surface roughness on the backing plate to promote adhesion of polyurethane). In addition, Roach discloses golf club with a striking face having a covered part having an increased surface roughness, which is covered by the outer layer member, of the outer surface of the metal face portion further includes differences in elevation that would inherently create a “developed interfacial area ratio” (Fig. 3; see applicant’s spec, page 17, noting applicant’s positioned is that the “developed interfacial area ratio” is a product of the metal grooves). Finally, regarding the exact value of the developed interfacial area ratio Sdr, it has been held that 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 addition, to support the Examiner’s assertion that developed interfacial area ratio is a result-effective variable (i.e. a variable which achieves a recognized result) and can be optimized or found though routine experimentation, the Examiner evidences Lambeth which specifically states that developed interfacial area ratio is a result-effective variable used to optimize the ball speed, moment of inertia, mass, volume or other physical properties of the golf club (par. [0124]). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Kosmatka and Chao to make the covered part having increased surface roughness and includes a plurality of grooves as taught and suggested by Roach because doing so would be use of a known technique (using a higher surface roughness in the form of a plurality of grooves in the covered portion on a golf club of a striking face) to improve a similar product (a golf club having a multiple layer striking face with a covered portion having a higher surface roughness, the outer layer being polyurethane) in the same way (using a plurality of grooves on a covered portion of a striking face to create a higher surface roughness, the arrangement of the groove and top urethane striking face allowing physical interlocking of the two materials to create a “stronger more resilient bond” – see Roach: col. 3, lines 57-63; also noting this is completely consistent with Chao: par. [0122]). In addition, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact value for the developed interfacial area ratio could be found through routine experimentation in order to optimize the ball speed, moment of inertia, mass, volume or other physical properties of the golf club.
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Kosmatka et al. (herein “Kosmatka”; US Pub. No. 2002/0165040 A1) in view of Chao (US Pub. No. 2009/0163289 A1) and in further view of Roach et al. (herein “Roach”; US Pat. No. 7,811,179 B2).
Regarding claim 4, it is noted that the combined Kosmatka and Chao do not specifically disclose that the covered part, which is covered by the urethane layer member, of the outer surface of the metal face portion further includes at least one groove which is referred to as a metal groove. However, Kosmatka clearly shows that the outer polyurethane layer is attached to a covered portion (Fig. 4). Chao makes obvious the ability to use a high surface roughness on the covered portion of the face plate (par. [0122] making obvious to use surface roughness on the backing plate to promote adhesion of polyurethane). In addition, Roach discloses golf club with a striking face having a covered part, which is covered by the outer layer member, of the outer surface of the metal face portion further includes at least one groove which is referred to as a metal groove (Fig. 3 below and see col. 3, lines 15-20; noting the body can be metal). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Kosmatka and Chao to make the covered part, which is covered by the urethane layer member, of the outer surface of the metal face portion further includes at least one groove which is referred to as a metal groove as taught and suggested by Roach because doing so would be use of a known technique (using a higher surface roughness in the form of a plurality of grooves in the covered portion on a golf club of a striking face) to improve a similar product (a golf club having a multiple layer striking face with a covered portion having a higher surface roughness, the outer layer being polyurethane) in the same way (using a plurality of grooves on a covered portion of a striking face to create a higher surface roughness, the arrangement of the groove and top urethane striking face allowing physical interlocking of the two materials to create a “stronger more resilient bond” – see Roach: col. 3, lines 57-63; also noting this is completely consistent with Chao: par. [0122]).
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Regarding claim 5, the combined Kosmatka, Chao, and Roach disclose that an outer surface of the urethane layer member (Kosmatka: Fig. 4, item 26 and par. [0050]) includes at least one groove which is referred to as a urethane groove, and the urethane groove is disposed so as not to overlap the metal groove (Roach: Fig. 3 above).
Regarding claim 6, the combined Kosmatka, Chao, and Roach disclose that an inner surface of the urethane layer member (Kosmatka: Fig. 4, item 26 and par. [0050]) includes an inner surface protrusion that is inserted into the metal groove (Roach: Fig. 3 above).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kosmatka et al. (herein “Kosmatka”; US Pub. No. 2002/0165040 A1) in view of Chao (US Pub. No. 2009/0163289 A1) in view of Roach et al. (herein “Roach”; US Pat. No. 7,811,179 B2) and in further view of Gray (US Pat. No. 6,592,467 B1).
Regarding claim 7, the combined Kosmatka, Chao, and Roach disclose that the at least one metal groove comprises a plurality of metal grooves, and the metal grooves include the metal grooves having depths the same from each other (Roach: Fig. 3 above). It is noted that the combined Kosmatka, Chao, and Roach do not specifically disclose that the depths of the grooves are different. However, Gray discloses the use of grooves into the front of a face that have different depths (Figs. 2A and 3A). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Kosmtaka, Chao, and Roach to use different groove depths as taught by Gray because doing so would be use of a known technique (using different depths of grooves in the front face) to improve a similar product (a golf club striking face that has a plurality of grooves to accommodate the interlock of a urethane striking face) in the same way (using different groove depth on the covered portion of the striking face, the different depth of the grooves used both interlock the polyurethane front face and to adjust the weighting, balance and cg of the club – see Gray: col. 3, lines 22-42).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Kosmatka et al. (herein “Kosmatka”; US Pub. No. 2002/0165040 A1) in view of Chao (US Pub. No. 2009/0163289 A1) and in further view of Hsiao et al. (herein “Hsiao”; US Pub. No. 2023/0415005 A1).
Regarding claim 9, it is noted that the combined Kosmatka and Chao do not specifically disclose that the edge fixing portion is a groove, and the edge portion of the urethane layer member is inserted into the groove. However, Hsiao discloses a similar golf club with a polyurethane face (abstract) wherein the edge fixing portion is a groove, and the edge portion of the urethane layer member is inserted into the groove (Fig. 1, proximate item 112 on the upper side, noting the lower side would have the same “groove”, the Examiner considering a “groove” to be a recessed portion within the receiving body of the club head so that the urethane layer is flush when installed). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Kosmatka and Chao to use an edge fixing portion as a groove, and the edge portion of the urethane layer member is inserted into the groove as taught by Hsiao because doing so would be combining prior art elements (a golf club with a polyurethane face and a golf club with a polyurethane face attached via a recessed groove) according to known methods (using the groove structure to attach the polyurethane face to the head body to provide a flush combination) to yield predictable results (the continued ability to use a polyurethane face attached to a head body, the face attached to the body via grooves to provide a flush combination).
Claims 12-15, 17, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kosmatka et al. (herein “Kosmatka”; US Pub. No. 2002/0165040 A1) in view of Roach et al. (herein “Roach”; US Pat. No. 7,811,179 B2).
Regarding claim 12, Kosmatka discloses a golf club head (Fig. 4) comprising a face portion including a striking face (Fig. 4; noting this is obvious as it is striking a ball), wherein the face portion includes a metal face portion made of a metal (Fig. 4, item 28 and pars. [0048]-[0049] noting it is obvious that item 28 is part of the “unitary head” and thus can be “metal” under par. [0048], see also pars. [0028] and [0051]), and a urethane layer member disposed outside the metal face portion and made of a polyurethane (Fig. 4, item 26 and par. [0050]; noting “polyurethane” is specifically listed), a covered part (Fig. 4; noting the part of the metal body covered by the polyurethane), which is covered by the urethane layer member, of an outer surface of the metal face portion (Fig. 4 above; again, noting this is the portion that is covered). It is noted that the Kosmatka dos not specifically disclose that the metal face portion includes at least one groove which is referred to as a metal groove, and an inner surface of the urethane layer member includes an inner surface protrusion that is inserted into the metal groove. However, Kosmatka clearly shows that the outer polyurethane layer is attached to a covered portion (Fig. 4). In addition, Roach discloses golf club with a striking face having a covered part, which is covered by the outer layer member, of the outer surface of the metal face portion further includes at least one groove which is referred to as a metal groove, and an inner surface of the outer layer member includes an inner surface protrusion that is inserted into the metal groove (Fig. 3 above and see col. 3, lines 15-20; noting the body can be metal). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Kosmatka to make the covered part, which is covered by the urethane layer member, of the outer surface of the metal face portion further includes at least one groove which is referred to as a metal groove, and an inner surface of the urethane layer member includes an inner surface protrusion that is inserted into the metal groove as taught and suggested by Roach because doing so would be use of a known technique (using a groove in the covered portion on a golf club of a striking face) to improve a similar product (a golf club having a multiple layer striking face, the outer layer being urethane) in the same way (using a groove on a covered portion of a striking face, the arrangement of the groove and covering urethane striking face allowing physical interlocking of the two materials to create a “stronger more resilient bond” – see Roach: col. 3, lines 57-63).
Regarding claim 13, the combined Kosmatka and Roach disclose that a width of the inner surface protrusion is equal to a width of the metal groove (Roach: Fig. 3 above, the Examiner construing “width” to be the side-to-side distance of the groove, although “depth” could also be construed as the width because no directional limitations are present).
Regarding claim 14, the combined Kosmatka and Roach disclose that the urethane layer member includes a striking face constituting part having a thickness of greater than or equal to 0.3 mm and less than or equal to 0.8 mm (Kosmatka: par. [0051]; noting 0.001 to 0.5 inches or 0.0254 to 12.7 mm makes obvious the claimed range; also noting the Examiner interpret this to be the thickness of the urethane layer as it pertains to the striking face).
Regarding claim 15, the combined Kosmatka and Roach disclose that an outer surface of the urethane layer member (Kosmatka: Fig. 4, item 26 and par. [0050]) includes at least one groove which is referred to as a urethane groove, and the urethane groove is disposed so as not to overlap the metal groove (Roach: Fig. 3 above).
Regarding claim 17, the combined Kosmatka and Chao disclose that the golf club head includes a head body including the metal face portion, and the urethane layer member, a flat plane that is in contact with the striking face at a face center is defined as a reference plane, in each vertical cross section, contact points between the golf club head outer surface and straight lines having an angle of 45 degrees with respect to the reference plane are determined, a set of the contact points is defined as a 45-degree boundary line, the urethane layer member extends to a back side of the 45-degree - boundary line (Kosmatka: Fig. 4 above; noting the “back side” can simply be the portion moving toward the aft or rear), and the head body includes an edge fixing portion that fixes an edge portion of the urethane layer member on the back side of the 45-degree boundary line (Kosmatka: Fig. 4 as annotated above).
Regarding claim 19, the combined Kosmatka and Roach disclose that an entirety of the urethane layer member is disposed within the striking face (Kosmatka: Fig. 4 above; noting the Examiner broadly construes this to mean that the urethane layer is only present on the striking face; noting this is obvious as seen above; alternatively, noting if applicant is trying to claim a literal insertion of the polyurethane into the striking face, see Kosmatka: Fig. 3A and par. [0052]; noting “the polymer 26 material may include scorelines 13 on the face” make obvious that the insert of Fig. 3A can be the polymer).
Regarding claim 20, the combined Kosmatka and Roach disclose that a flat plane that is in contact with the striking face at a face center is defined as a reference plane, in each vertical cross section, contact points between the golf club head outer surface and straight lines having an angle of 45 degrees with respect to the reference plane are determined, a set of the contact points is defined as a 45- degree boundary line, and an end of the urethane layer member is located at a position on a face side relative to the 45- degree boundary line (Kosmatka: Fig. 4 above; noting “on a face side relative to the 45-degree boundary line” is so vague and general that Fig. 4 reads on it as annotated above; alternatively, also see Kosmatka: Fig. 3A and par. [0052] and the rejection of claim 10 above; noting use of a polyurethane insert in a face portion, item 30, that does not extend back to the sole and crown makes obvious the above limitation).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Kosmatka et al. (herein “Kosmatka”; US Pub. No. 2002/0165040 A1) in view of Roach et al. (herein “Roach”; US Pat. No. 7,811,179 B2) and in further view of Gray (US Pat. No. 6,592,467 B1).
Regarding claim 16, the combined Kosmtaka and Roach disclose that the at least one metal groove comprises a plurality of metal grooves, and the metal grooves include the metal grooves having depths the same from each other (Roach: Fig. 3 above). It is noted that the combined Kosmtaka and Roach do not specifically disclose that the depths are different. However, Gray discloses the use of grooves that have different depths (Figs. 2A and 3A). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Kosmtaka and Roach to use different groove depths as taught by Gray because doing so would be use of a known technique (using different depths of grooves in the front face) to improve a similar product (a golf club striking face that has a plurality of grooves to accommodate the interlock of a urethane striking face) in the same way (using different groove depth on the covered portion of the striking face, the different depth of the grooves used both interlock the polyurethane front face and to adjust the weighting, balance and cg of the club – see Gray: col. 3, lines 22-42).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Kosmatka et al. (herein “Kosmatka”; US Pub. No. 2002/0165040 A1) in view of Roach et al. (herein “Roach”; US Pat. No. 7,811,179 B2) and in further view of Hsiao et al. (herein “Hsiao”; US Pub. No. 2023/0415005 A1).
Regarding claim 18, it is noted that the combined Kosmatka and Roach do not specifically disclose that the edge fixing portion is a groove, and the edge portion of the urethane layer member is inserted into the groove. However, Hsiao discloses a similar golf club with a polyurethane face (abstract) wherein the edge fixing portion is a groove, and the edge portion of the urethane layer member is inserted into the groove (Fig. 1, proximate item 112 on the upper side, noting the lower side would have the same “groove”, the Examiner considering a “groove” to be a recessed portion within the receiving body of the club head so that the urethane layer is flush when installed). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Kosmatka and Roach to use an edge fixing portion as a groove, and the edge portion of the urethane layer member is inserted into the groove as taught by Hsiao because doing so would be combining prior art elements (a golf club with a polyurethane face and a golf club with a polyurethane face attached via a recessed groove) according to known methods (using the groove structure to attach the polyurethane face to the head body to provide a flush combination) to yield predictable results (the continued ability to use a polyurethane face attached to a head body, the face attached to the body via grooves to provide a flush combination).
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
9/8/26
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