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 .
DETAILED ACTION
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 11/21/2024 was considered by the examiner.
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 1-13 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 1 and 4 are unclear in that they recite the relative term “close”. The term renders the claim indefinite because it is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear how close is close enough to be considered “close” per the claim.
Claims 2-13 are unclear due to dependency from claim 1.
Claim 7 is unclear in that it recites “the weight member includes a butting portion, and the butting portion penetrates through the weight member”. As best understood by the Office the weight member (40) in Applicant’s Fig. 1 is secured to the head via a screw and that it is the screw that comprises a butting portion (60). If it is to be assumed that the screw forms part of the weight member then this interpretation will correspond to the rejection below.
Claim Rejections - 35 USC § 102
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, 3, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakanishi US 4928972.
Regarding claim 1, Nakanishi discloses a golf club head (Fig. 2), comprising:
a head body (1) that includes a face portion (2) and a sole portion (3);
a cavity that is provided in the head body and at a rear-surface side of the face portion (Fig. 2);
a fiber-reinforced resin layer (5) that is disposed in the cavity and at a rear surface of the face portion; and
a resin member (6) that is disposed in the cavity, close to the sole portion, and at a rear surface of the fiber-reinforced resin layer, the resin member extending in a toe-heel direction (Fig. 1).
Regarding claim 3, Nakanishi further discloses that the fiber-reinforced resin layer (5) is disposed in the cavity over an entirety of the rear surface of the face portion (Fig. 2).
Regarding claim 10, Nakanishi further discloses that a thickness of the face portion is 1.4 mm or more and 1.85 mm or less (col. 2 ln. 42-46).
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.
Claim(s) 2 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Nakanishi US 4928972.
Regarding claim 2, Nakanishi does not teach the limitations thereof, however, official notice is taken that the specific gravity of the head and components thereof are variables that affect the location of the center of gravity. Thus, it would have been an obvious matter of design choice, before the effective filing date of the claimed invention, to modify specific gravity of the head and its components as taught by Nakanishi by utilizing the claimed ranges in order to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05 (II)(A).
Regarding claim 11, Nakanishi further discloses that the weight of the golf club is a known result effective variable (col. 4 ln. 46-49). Thus, it would have been an obvious matter of design choice, to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the weight of the club as taught by Nakanishi by utilizing the claimed range in order to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05 (II)(A).
Regarding claim 12, Nakanishi further discloses that a moment of inertia is a result effective variable (col. 4 ln. 50-56). Thus, it would have been an obvious matter of design choice, before the effective filing date of the claimed invention, to modify moment of inertia as taught by Nakanishi by utilizing the claimed ranges in order to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05 (II)(A).
Regarding claim 13, Nakanishi further discloses that height of the center of gravity is a result effective variable (col. 4 ln. 54-56). Thus, it would have been an obvious matter of design choice, before the effective filing date of the claimed invention, to modify height of the center of mass as taught by Nakanishi by utilizing the claimed ranges in order to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05 (II)(A).
Claim(s) 4-5 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Nakanishi US 4928972 in view of Nishino US 20070149316.
Regarding claim 4, Nakanishi does not teach the limitations thereof in the embodiment of Fig. 2.
Nishino teaches a golf head club comprising a weight member (2c) that is fixed close to the sole portion of the head body, so as to face the face portion via the fiber-reinforced resin layer and the resin member (Fig. 7), the weight member extending in the toe-heel direction (Fig. 1). Nishino so teaches in order to efficiently allocate more weight to the rear side and bottom side of the head ([0030]). Thus, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the head as taught by Nakanishi by utilizing a weight member as taught by Nishino in order to more effectively allocate weight to the rear and bottom side of the head.
Regarding claim 5, see claim 2 above.
Regarding claim 7, Nishino further teaches that the weight member includes a butting portion (3t), and the butting portion penetrates through the weight member (Fig. 7), and a tip portion of the butting portion is in contact with the resin member (Fig. 7).
Regarding claim 8, see claim 2 above.
Regarding claim 9, Nishino further discloses that the butting portion (3t) is fastened to the weight member (2c) with a screw (3), and a distance between the resin member and the tip portion of the butting portion is variable in accordance with a torque applied for fastening the butting portion to the weight member (Fig. 7).
Claim(s) 6 is rejected under 35 U.S.C. 103 as being unpatentable over Nakanishi US 4928972 in view of Nishino US 20070149316 as applied to claim 4 above and further in view of Parsons US 20220096902.
Regarding claim 6, the combination does not teach that the weight member (Nishino, 2c) is fastened to the head body with two or more screws.
Parsons teaches a golf club head wherein the weight member (the back plate 3672, Fig. 38) is fastened to the head body with two or more screws (Fig. 38). Thus, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the attachment means of the weight member as taught by the combination by utilizing screws as taught by Parsons, in order to achieve the predictable results of fastening the back plate to the head.
Conclusion
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/BRIAN O PETERS/Primary Examiner, Art Unit 3711
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