DETAILED ACTION
1. This action is made Final in response to applicant’s Amendments / Request for Reconsideration filed 8/14/26. Claims 1, 12 and 20 are amended; claims 1-20 are pending.
Claim Rejections - 35 USC § 103
2. 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.
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) and further in view of Lee (US Pub. No. 2010/0125000).
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, each adapted to interchangeably engage either 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, each engaging either 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 limitation that the weights are each adapted to interchangeably engage either said toe biased sole weight receptacle and said heel biased sole weight receptacle, examiner cites to analogous art reference Lee for teaching this feature to be known in the golf club art – paragraph [0058]. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to make the heel and toe weights interchangeable as claimed for the expected purpose of providing a weight distribution that is customized optimized to the player’s swing.
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. Per MPEP 2144.01, "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). Here, the drawings show the heel-ward most extent of the heel weight and the toe-ward most extent of the toe weight to extend substantially adjacent to the most heel-ward extent of the head and most toe-ward extent of the head, respectively.
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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.
Response to Arguments
4. Applicant's arguments filed 8/14/26 have been fully considered but they are not persuasive.
Applicant argues that Fig. 4 of Stevens cannot provide the basis for meeting the claimed Weight Perimeter Placement Ratio of claims 1-3, 17-20 since Stevens does not specify that its drawings are “to scale”. Examiner respectfully traverses this position. Examiner is not citing to the drawing to provide the specific dimensions of D2 and D3. Rather, Fig. 4 clearly shows that the heel-ward most extent of the heel weight and the toe-ward most extent of the toe weight to extend substantially adjacent to the most heel-ward extent of the head and most toe-ward extent of the head, respectively. Per MPEP 2144.01, "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
Applicant further argues that the intended purpose of Sander would be destroyed if it was combined with teachings of Stevens. Adding weights to the hybrid club of Sander “would destroy” the “harmony of maintaining similar characteristics between the hybrids and irons. Examiner respectfully disagrees. Sander expressly teaches that the weights for the hybrid clubs are greater than the weight for the woods. Sander expressly teaches a wide range of weights for the hybrids: 220 to 290 grams. The toe and heel weights can easily be applied while maintaining a weight within the prescribed range. Lastly, Sander expressly teaches that “certain clubs within a set of clubs can have certain properties or characteristics while other clubs have different properties or characteristics”; “In one example, wood-type clubs 200 can have similar properties as hybrid-type clubs 300 and in another example hybrid-type clubs 300 can have similar properties to iron-type clubs 400”. Column 16, lines 50-59.
In response to applicant's argument that adding the weights of Stevens into Sander would destroy the weight and CG values of Sander, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). The combination of Stevens is merely providing adjustment of the CG and weighting that is suitable to a golfer’s swing for a hybrid sized club. Notably, a person ordinary skill in the art would recognize that adding interchangeable weights to a golf club does not necessarily mean the weight of the club is changed drastically. A club designer would recognize that different materials could be used for the crown and/or face as weight saving measures to accommodate the added weight of the heel and toe weights. The main function of the heel and toe weights are to promote fade or draw bias via moving CG in the heel toe direction. The overall
Conclusion
5. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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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