Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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, a “first adjacent sole surface” and “a second adjacent sole surface” (e.g., claim 1) and the wall thickness (claims 5 and 7) must be shown or the feature(s) canceled from the claim(s). 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: “253”, “256” and “236” within Fig. 10; and “336” within Fig. 11. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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 2 and 14 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.
With respect to claim 2, further clarification is required what does applicant consider “a first forward edge location is defined in the y-axis direction from a sole-ball striking face intersection to the forward most edge”. In at least original paragraph [0065], in conjunction to original Fig. 8A, applicants stated “the forward most edge 137. The forward edge's 137 location may be defined by a dimension 153 measured from a sole-face intersection point 68 in the Y-Axis 16 direction to the forward most point of forward edge 137”.
In that regard, the “forward most edge” (i.e., edge 137) was define within independent claim 1 (line 10), and thus further clarification is required if the claimed “a first forward edge”, of the device of claim 2 is any different that the claimed “ forward most edge”, of the device of claim 1.
With respect to claim 14, same issues as discussed above.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 4-6, 9 and 11-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Golden et al US 2014/0080634 (“Golden”).
As per claim 1, Golden discloses a golf club head (a golf club head 810)(Figs. 52-54; paragraphs [0181]-[0189] in conjunction to at least [0241]-[0271]) comprising: a sole (sole 816)(Fig. 52; [0181]) ; a club head body made of a first material comprising a heel, a toe, a portion of a crown, and a first sole portion (Fig. 52 and [0181]; note [0241]-[0257], as Golden gives examples of suitable materials having a low Young’s modules beta and/or titanium alloys; note for example [0258] and [0261]-[0271] regarding examples of using different alloys in forming the body); wherein the first sole portion comprises a majority of the sole (Fig. 52); a face member made of a second material (face member 820 with striking surface 822)(Fig. 52; [0181]; note [0241]-[0271] as the different alloys to form the golf club head; note for example [0246], [0261]-[0271] as the alloys forming the face member) comprising a portion of a ball striking face and a portion of the crown adjacent to the ball striking face (Fig. 52 and [0181]); and a second sole member made from a third material coupled to the club head body to form a second portion of the sole (Figs. 52-53 and at least [0181]-[0183]; note [0241]-[0271] as the different alloys to form the golf club head; for example [0258]” In an example, a multi-material golf club head is constructed from components constructed of Ti-64 and ATI 425. A body including a crown, a sole or partial sole (e.g., relative to “the third material” of the second dole member), a skirt, a hosel and a face flange may be cast of Ti-64. Then a portion of the sole may be formed by a flexure component that is constructed from ATI 425 sheet material and welded to the cast Ti-64 body, such as in a slot or recess, such as in the configuration shown in FIGS. 5 and 6. A forged face insert is then welded to the face flange of the cast Ti-64 to complete the head” (e.g., relative to “the third material” of the second dole member)), the second sole member comprising: a forward most edge coupled to a forward portion of the first sole portion (note markings hereinafter in conjunction to Fig. 53); a rearward most edge coupled to a rearward portion of the first sole portion (note marking ); a first width defined by the forward most edge and the rearward most edge (note markings hereinafter in conjunction to Fig. 53); a front edge, rearward of the forward most edge; a rear edge, forward of the rearward most edge (note markings hereinafter in conjunction to Fig. 53); a first adjacent sole surface located between the forward most edge and the front edge and forms a portion of an outer surface of the sole (note markings hereinafter in conjunction to Fig. 53); a second adjacent sole surface located between the rearward most edge and the rear edge and forms another portion of an outer surface of the sole(note markings hereinafter in conjunction to Fig. 53);
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a channel (flexure 812) disposed between the forward most edge of and the rearward most edge and recessed from both the first adjacent sole surface and the second adjacent sole surface (Figs. 52-54 in conjunction to the above markings regarding the claimed edges and adjacent sole surfaces), the channel formed by a front side wall, a rear side wall, and a connecting wall extending between the front side wall and the rear side wall (Figs. 52-54; [0182]);
the channel (812) defined by a second width measured between the front edge and the rear edge (note markings hereinafter in conjunction to Fig. 53); the front edge defined by a forward radii endpoint as the channel begins to be recessed from the first adjacent sole surface (note markings hereinafter in conjunction to Fig. 53); and the rear edge defined by a rearward radii endpoint as the channel begins to be recessed from the second adjacent sole surface (note markings hereinafter in conjunction to Fig. 53).
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As per claim 4, with respect to wherein the channel comprises a toe portion, a center portion, and a heel portion, note [0182] and [0184] in conjunction to at least Fig. 2 ([0106] and [0107]) regarding the flexure extends from a toe portion 26 to a heel portion 28.
As per claim 5, with respect to wherein a wall thickness of the channel at the center portion is smaller than the wall thickness of the channel at the toe portion and at the heel portion, note Figs. 52-54 and [0185] and [0189] regarding the central thickness t4 can be smaller than the thickness t3 (e.g., toe portion) and t5 (e.g., heel portion).
As per claim 6, Golden discloses wherein the connecting wall forms a deepest portion of the channel (Figs. 52-54).
As per claim 9, with respect to wherein the second material is a beta-titanium alloy, note [0242] and [0252] as the use of beta-titanium alloy in forming the golf club head (to include the second material).
As per claim 11, with respect to wherein the third material is gum metal, note [0248] and [0252] as the use of gum metal in forming the golf club head (to include the third material).
As per claim 12, with respect to wherein the second width of the channel is substantially constant, note the examiner markings above regarding the “second width”.
As per claim 13, with respect to wherein the first material is a titanium alloy, note [0241], [0242], [0248], [0249], [0252] and [0253] as the use titanium alloy in forming the golf club head (to include the first material).
Claim Rejections - 35 USC § 103
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.
Claim(s) 2-3, 7-8, 10 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Golden.
As per claim 2, with respect to wherein the golf club head defines a coordinate system wherein an origin located at a ground plane origin point has an x-axis parallel to a ground plane and generally parallel to the ball striking face, a y-axis is perpendicular to the x-axis and parallel to the ground plane extending towards a rear of the golf club head, and a z-axis is perpendicular to the ground plane extending vertically, note Golden’s Fig. 52; with respect to and wherein a first forward edge location is defined in the y-axis direction from a sole-ball striking face intersection to the forward most edge in a range, note Golden’s Fig. 52 as marked hereinafter
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In this embodiment of Figs. 52-54, Golden is not specific regarding the range is of 3mm-25mm.
However, in the embodiment of Fig. 1, Golden discloses such range/distance D within 30mm ([0110]). The examiner construed the dimension within 30mm to include the range of 3mm-25mm.
Therefore, 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 to form Golden’s embodiment of Figs. 52-54 and wherein a first forward edge location is defined in the y-axis direction from a sole-ball striking face intersection to the forward most edge in a range of 3 mm to 25 mm for the reason that a skilled artisan would have been motivated by Golden’s suggestions to form the optimize “sole-face intersection point” to enhance the performances of the golf club head (e.g., [0110]).
As per claim 3, although Golden is not specific regarding wherein a maximum first width of the second sole member is in a range between 8 mm and 35 mm, it is noted that it has been held that claimed which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of weight or proportions.
Therefore, 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 to form Golden’s maximum first width of the second sole member is in a range between 8 mm and 35 mm since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In this case the device of Golden would have not operate differently with the dimension as claimed and would function appropriately with the claimed dimension. Further, it appears that applicant places no criticality on the range claimed, and merely indicates that the range be within the claimed dimension.
As per claim 7, although Golden is not specific regarding wherein a wall thickness of the channel may be in a range from 0.3mm to 2.0 mm (within Golden the walls’ thickness t3-t5 ranges from 1.2mm-20 ([0189]), as mentioned above it is noted that it has been held that claimed which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of weight or proportions. Therefore, 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 to form Golden’s wall thickness of the channel may be in a range from 0.3mm to 2.0 mm for similar reasons discussed above with respect to claim 3.
As per claims 8, 10, although Golden is not specific regarding wherein the third material has a modulus of elasticity that is lower than a modulus of elasticity of the first material (claim 8), and wherein the second and third materials have a modulus of elasticity that is lower than the first material (claim 10), Golden teaches to use suitable materials to enhance the performances of his golf club head, in at least [0242] and [0246]” Beta titanium alloys are preferable because they provide a material with relatively low Young's modulus. The deflection of a plate supported at its perimeter under an applied stress is a function of the stiffness of the plate. The stiffness of the plate is directly proportional to the Young's modulus and the cube of the thickness (i.e., t.sup.3). Therefore, when comparing two material samples that have the same thickness and differing Young's moduli, the material having the lower Young's modulus will deflect more under the same applied force. The energy stored in the plate is directly proportional to the deflection of the plate as long as the material is behaving elastically and that stored energy is released as soon as the applied stress is removed. Thus, it is desirable to use materials that are able to deflect more and consequently store more elastic energy ([0242]) and “The material selection for a golf club head must also account for the durability of the golf club head through many impacts with golf balls. As a result, the fatigue life of the face must be considered, and the fatigue life is dependent on the strength of the selected material. Therefore, materials for the golf club head must be selected that provide the maximum ball speed from a face impact and adequate strength to provide an acceptable fatigue life” ([0246]). Therefore, 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 to form Golden’s wherein the third material has a modulus of elasticity that is lower than a modulus of elasticity of the first material and/or wherein the second and third materials have a modulus of elasticity that is lower than the first material for the reason that a skilled artisan would have been motivated by Golden’s suggestions to use such materials that are suitable for forming an enhance and durable golf club head yet light enough to reduce a user’s fatigue.
As per claim 14, with respect to wherein the third material has a forward edge located a distance measured from a sole-intersection point, note the examiner markings above with respect to claim 2.
Golden is not specific regarding such distance is between 5 mm and 20 mm in a front to rear direction.
However, in the embodiment of Fig. 1, Golden discloses such range/distance D between 5mm-20mm([0110]).
Therefore, 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 to form Golden’s embodiment of Figs. 52-54 and wherein a first forward edge location is defined in the y-axis direction from a sole-ball striking face intersection to the forward most edge in a range of 5 mm to 20 mm for the same reasons discussed above with respect to claim 2.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMIR ARIE KLAYMAN whose telephone number is (571)270-7131. The examiner can normally be reached Monday-Friday; 7:00 AM-4:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at 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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/A.A.K/Examiner, Art Unit 3711 9/17/2026 /JOHN E SIMMS JR/Primary Examiner, Art Unit 3711
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