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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Sander et al. (US Pat. No. 10,065,087) in view of Stevens et al. (US Pub. No. 2011/0070969).
With respect to claims 1-20, Sander teaches a compact sized golf club head 300 comprising: a body portion having a crown, a sole, and a striking face (Fig’s 9-12); wherein said compact sized golf club head has a volume of between about 100 cc to about 150 cc (column 12, lines 58-61), wherein said compact sized golf club head has a moment of inertia about a y-axis (Iyy) of greater than about 2,850 g-cm2 (column 13, lines 1-5); wherein said moment of inertia about said shaft axis (ISA) is greater than about 5,200 g-cm2; wherein said compact sized golf club head has a CG-C distance D1 of less than about 12.2 mm (column 12, lines 65-67).
Sander does not expressly teach wherein said sole further comprises; a toe biased sole weight receptacle, located at a toe side of said sole, and a heel biased sole weight receptacle, located at a heel side of said sole; a plurality of two or more weights, adapted interchangeable engage said toe biased sole weight receptacle and said heel biased sole weight receptacle. However, analogous art reference Stevens et al. teaches the following to be known in the art: a toe biased sole weight receptacle 34b, located at a toe side of said sole, and a heel biased sole weight receptacle 34a, located at a heel side of a sole; a plurality of two or more weights 30, 32, engage said toe biased sole weight receptacle and said heel biased sole weight receptacle. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to add the weight system to the golf club Sander for the expected purpose of increasing MOI in the heel to toe direction, thereby improving the forgiveness of the club for off-center hits. Regarding the claim that the weights are adjustable, per In re Stevens , 212 F.2d 197, 101 USPQ 284 (CCPA 1954), the Federal Courts have held that adjustability, where needed, is not a patentable advance. See MPEP 2144.04. Within the art, there is an art-recognized need for customization in golf club weighting for providing a CG, MOI and feel of the club suitable to the particular needs of the golfer. A person ordinary skill in the art would have found it obvious to make the weights interchangeable, or adjustable, to optimize the weight distribution of the club.
Regarding the claimed weight perimeter placement ratio, examiner considers Stevens to teach wherein its ratio is greater than about .63 in view of Fig. 4 – See annotated Fig. 4 below. The rationale to combine is the same as stated above.
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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, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).Golf club width is known to be result effective for MOI, workability of the ball, CG positioning, and ease of swing. Weight placement distance is known to be result effective for MOI and CG location. Notably, peripheral weighting of golf clubs is common to golf club woods as it expectantly increases the MOI of the club. Weights at the extreme toe and heel portions provide the most MOI about the toe heel direction to optimally mitigate gear effect for off-center hits. In the instant case, the golf club of Sander as modified above would not operate different with a D2 and D3 within the claimed range. At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to select an optimal D2 and D3, including within the claimed range, via routine experimentation. The motivation to modify the club to have optimal D2 and D3 values that fall within the claimed range is to provide a club with high MOI and a CG generally behind the geometric face center. Further, the applicant does not place criticality to the claimed range such that an unexpected result is achieved from the claimed range, indicating simply that the ratio “may” be within the claimed range (See paragraph [0031]). No specific purpose for operability has been established in relation to the claimed range.
Lastly, Sander teaches (Iyy) up to 4800 g-cm2 (column 13, lines 1-5), and (Ixx) up to 1700 g-cm2 Id. Thus, Sander teaches an overall MOI value of greater than about 6,300 g-cm2. Moreover, MOI is known to be a result effective variable for the forgiveness of the club, swingability, and workability of the ball. At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to select an optimal overall MOI, including within the claimed range, via routine experimentation. See In re Aller. The motivation to provide an optimal overall MOI is to provide a club with high forgiveness for off-center hits.
Conclusion
4. 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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