DETAILED ACTION
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, the areas S1 and S2 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.
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 7 and 14 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.
S2 is defined as “an area of the striking face” in order to calculate a specific value derived from a ratio of S1/S2. However, the boundaries of the S2 area are unclear. For example, an area of the striking face could only be a particular designated region, or it could the entire striking face. Because of this language, the scope of the claim and derived value of the ratio are indefinite.
Additionally, “projecting the weight member onto the striking face” is generally confusing for the area of S1, as the weight member never touches the striking face due to the empty space structure. Clarification is needed.
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.
Claims 1-3, 7, and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over JP 3203309 (hereinafter “Hou”) in view of EP 2848287 (hereinafter “Kazuhiro”).
Regarding claim 1, Hou discloses a golf club head comprising: a striking face (Fig. 1, 211), and a sole surface (Figs. 1 and 2, 213), wherein
the golf club head includes a face portion (Figs. 1 and 2, 2) including the striking face, a body portion (Fig. 1, 1), and a weight member (Figs. 1 and 2, 22) disposed in the body portion,
the body portion includes a weight receiving portion (Fig. 1, 215) on which the weight member is disposed, the weight member is coupled to the weight receiving portion,
a toe-heel directional length of the weight member is greater than a top-sole directional length of the weight member (Fig. 2),
the body portion includes a sole thin-wall portion (Fig. 1, 214) whose outer surface constitutes a part of the sole surface,
an inner surface of the sole thin-wall portion includes: a weight contact surface (Fig. 1, interface between 22 and 214) that constitutes a part of the weight receiving portion and is in contact with the weight member; and a space (Fig. 1, S) facing surface that is located on a face side of the weight contact surface and faces an empty space, and
the weight member is not exposed outside the golf club head.
Hou is silent regarding the sole-thin wall portion a having wall thickness of greater than or equal to 0.8 mm and less than or equal to 4.6 mm. Kazuhiro discloses a golf club head with sole side thicknesses ranging from 1.5-3.5 mm so that the face portion can be deflected more effectively (Summary of Invention, para. 8 and Table 2). Thus, it would be obvious to a person of ordinary skill in the art at the time of filing to provide Hou with a sole-thin wall with the claimed thickness as taught by Kazuhiro to optimize sole thickness to create desired deflection characteristics.
Regarding claim 15, Hou discloses a golf club head comprising: a striking face (Fig. 1, 211), and a sole surface (Figs. 1 and 2, 213), wherein
the golf club head includes a face portion (Figs. 1 and 2, 2) including the striking face, a body portion (Fig. 1, 1), and a weight member (Figs. 1 and 2, 22) disposed in the body portion,
the body portion includes a weight receiving portion (Fig. 1, 215) on which the weight member is disposed, the weight member is coupled to the weight receiving portion,
when the weight member is divided into a toe side portion and a heel side portion by a vertical cross section passing through a face center, a weight of the toe side portion is greater than a weight of the heel side portion (Fig. 2, toe side of weight 22 is larger than heel side, and therefore would weigh more),
the body portion includes a sole thin-wall portion (Fig. 1, 214) whose outer surface constitutes a part of the sole surface,
an inner surface of the sole thin-wall portion includes: a weight contact surface (Fig. 1, interface between 22 and 214) that constitutes a part of the weight receiving portion and is in contact with the weight member; and a space (Fig. 1, S) facing surface that is located on a face side of the weight contact surface and faces an empty space, and
the weight member is not exposed outside the golf club head.
Hou is silent regarding the sole-thin wall portion a having wall thickness of greater than or equal to 0.8 mm and less than or equal to 4.6 mm. Kazuhiro discloses a golf club head with sole side thicknesses ranging from 1.5-3.5 mm so that the face portion can be deflected more effectively (Summary of Invention, para. 8 and Table 2). Thus, it would be obvious to a person of ordinary skill in the art at the time of filing to provide Hou with a sole-thin wall with the claimed thickness as taught by Kazuhiro to optimize sole thickness to create desired deflection characteristics.
Regarding claims 2 and 16, modified Hou further discloses the sole thin-wall portion extends continuously from a position located on a sole side of the weight member to the face portion (Figs. 1 and 2, 213 and 214).
Regarding claims 3 and 17, modified Hou further discloses an entirety of the sole thin-wall portion is included in an integrally-formed single-piece member. Wall 214 in Figs. 1 and 2 appears to be unsegmented, i.e. integral. Further, regarding “integrally-formed”, the examiner notes that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. See in re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In this case, the modified Hour teaches the final product which is being interpreted to be merely a wall within the golf club that keeps the weight member in place.
Regarding claim 7, modified Hou further discloses when a projected area of the weight member obtained by projecting the weight member onto the striking face is denoted by S1, and an area of the striking face is denoted by S2, then S1/S2 is greater than or equal to 0.03 and less than or equal to 0.17. The examiner notes that although the drawings are not necessarily drawn to scale, a POSITA would recognize that the area of S1/S2 is greater than .03. See area estimation of Hou Figure 2 below. S1=16102 px2, S2=174421 px2, S1/S2=0.09. Areas for S1 and S2 are being interpreted in view of the 112(b) issues stated supra.
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Claims 4, 6, 18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hou in view of Kazuhiro, as applied in claims 1 and 15, and in further view of JP 2020065791 (hereinafter “Abe 2020”) and US 8342985 (hereinafter “Tomoya”).
Regarding claims 4 and 18, modified Hou does not expressly disclose when the top-sole directional length of the weight member is denoted by D2, and a top-sole directional height of the golf club head at a position of a face center is denoted by H1, then D2/H1 is greater than or equal to 0.05 and less than or equal to 0.5. However, 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), MPEP 2144.05. Modified Hou inherently has a D2 and H1 value. Supplemental to this, Tomoya discloses a golf club with a weight member of different lengths (Fig. 15, 1B), thus making obvious it is conventional to consider weight dimensions/lengths (D2) to optimize weight distribution design of the club head. Abe 2020 discloses consideration of the face height at the position of the face center (Hf) to increase repulsion performance during a golf hit (Abstract), thus rendering obvious to design the face height (H1) to optimize repulsion. Thus, it would have been obvious to one of ordinary skill in the art to provide the modified Hou with the claimed proportionate ratio as taught by Abe 2020 and Tomoya as a matter of obtaining optimum ranges via routine optimization.
Regarding claims 6 and 20, modified Hou does not disclose when a depth of a center of gravity of the golf club head is denoted by D4, and a face-back directional thickness of the golf club head at a position of a face center is denoted by D5, then D4/D5 is greater than or equal to 0.10 and less than or equal to 0.50. However, 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), MPEP 2144.05. Modified Hou inherently has a D4 and D5 value. Supplemental to this, Tomoya discloses a golf club with a center of gravity with depth N as denoted in Figure 3, the center of gravity affecting weight distribution and subsequent swing characteristics of the golf club (Abstract). Thus, it would be obvious to optimize location/depth of the center of gravity (D4) for the desired swing characteristics. Abe 2020 discloses optimum sole width ranges affecting the location of the resulting sweet spot (Fig. 3, W1 and description of Fig. 3 in Specification), thus rendering obvious to modify face-back directional thickness (D5) to optimize sweet spot location. Thus, it would have been obvious to one of ordinary skill in the art to provide the modified Hou with the claimed proportionate ratio as taught by Abe 2020 and Tomoya as a matter of obtaining optimum ranges via routine optimization.
Claims 5 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Hou in view of Kazuhiro, as applied in claims 1 and 15, and in further view of Abe 2020.
Regarding claims 5 and 19, modified Hou does not disclose when a sweet spot height is denoted by H2, and a top-sole directional height of the golf club head at a position of a face center is denoted by H1, then H2/H1 is greater than or equal to 0.30 and less than or equal to 0.50. However, 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), MPEP 2144.05. Modified Hou inherently has a H2 and H1 value. Supplemental to this, Abe 2020 discloses a golf club that considers both face height in the face center (Hf) and vertical height of the sweet spot (Hs) in relation to each other (Abstract). Thus, it would have been obvious to one of ordinary skill in the art to provide the modified Hou with the claimed proportionate ratio as taught by Abe 2020 as a matter of obtaining optimum ranges via routine optimization.
Claims 8-10 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Hou in view of US 20180001157 (hereinafter “Abe 2018”) and Kazuhiro.
Regarding claim 8, Hou discloses a golf club head comprising: a striking face (Fig. 1, 211), and a sole surface (Figs. 1 and 2, 213), wherein
the golf club head includes a face portion (Figs. 1 and 2, 2) including the striking face, a body portion (Fig. 1, 1), and a weight member (Figs. 1 and 2, 22) disposed in the body portion,
the body portion includes a weight receiving portion (Fig. 1, 215) on which the weight member is disposed, the weight member is coupled to the weight receiving portion,
the body portion includes a sole thin-wall portion (Fig. 1, 214) whose outer surface constitutes a part of the sole surface,
an inner surface of the sole thin-wall portion includes: a weight contact surface (Fig. 1, interface between 22 and 214) that constitutes a part of the weight receiving portion and is in contact with the weight member; and a space (Fig. 1, S) facing surface that is located on a face side of the weight contact surface and faces an empty space, and
the weight member is not exposed outside the golf club head.
Hou is silent regarding the weight member has a specific gravity of greater than or equal to 9 and less than or equal to 20. Abe 2018 discloses a golf club with a weight that has a specific gravity between 10 and 18.5 in order to give the club head the desired center of gravity position (Paras. 0064-0065). Thus, it would be obvious to a person of ordinary skill in the art at the time of filing to specify the weight member to have a specific gravity that provides desired center of gravity of the club head.
Hou is silent regarding the sole-thin wall portion a having wall thickness of greater than or equal to 0.8 mm and less than or equal to 4.6 mm. Kazuhiro discloses a golf club head with sole side thicknesses ranging from 1.5-3.5 mm so that the face portion can be deflected more effectively (Summary of Invention, para. 8 and Table 2). Thus, it would be obvious to a person of ordinary skill in the art at the time of filing to optimize sole thickness to create desired deflection characteristics.
Regarding claim 9, modified Hou further discloses the sole thin-wall portion extends continuously from a position located on a sole side of the weight member to the face portion (Figs. 1 and 2, 213 and 214).
Regarding claim 10, modified Hou further discloses an entirety of the sole thin-wall portion is included in an integrally-formed single-piece member. Wall 214 in Figs. 1 and 2 appears to be unsegmented, i.e. integral. Further, regarding “integrally-formed”, the examiner notes that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. See in re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In this case, the final product is taught by the modified Hou with the final product being interpreted to be merely a wall within the golf club that keeps the weight member in place.
Regarding claim 14, modified Hou further discloses when a projected area of the weight member obtained by projecting the weight member onto the striking face is denoted by S1, and an area of the striking face is denoted by S2, then S1/S2 is greater than or equal to 0.03 and less than or equal to 0.17. See area estimation and explanation supra in claim 7.
Claims 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Hou in view of Abe 2018 and Kazuhiro, as applied in claim 8, and further in view of Abe 2020 and Tomoya.
Regarding claim 11, modified Hou does not expressly disclose when the top-sole directional length of the weight member is denoted by D2, and a top-sole directional height of the golf club head at a position of a face center is denoted by H1, then D2/H1 is greater than or equal to 0.05 and less than or equal to 0.5. However, 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), MPEP 2144.05. Modified Hou inherently has a D2 and H1 value. Supplemental to this, Tomoya discloses a golf club with a weight member of different lengths (Fig. 15, 1B), thus making obvious it is conventional to consider weight dimensions/lengths (D2) to optimize weight distribution design of the club head. Abe 2020 discloses consideration of the face height at the position of the face center (Hf) to increase repulsion performance during a golf hit (Abstract), thus rendering obvious to design the face height (H1) to optimize repulsion. Thus, it would have been obvious to one of ordinary skill in the art to provide the modified Hou with the claimed proportionate ratio as taught by Abe 2020 and Tomoya as a matter of obtaining optimum ranges via routine optimization.
Regarding claim 13, modified Hou does not disclose when a depth of a center of gravity of the golf club head is denoted by D4, and a face-back directional thickness of the golf club head at a position of a face center is denoted by D5, then D4/D5 is greater than or equal to 0.10 and less than or equal to 0.50. However, 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), MPEP 2144.05. Modified Hou inherently has a D4 and D5 value. Supplemental to this, Tomoya discloses a golf club with a center of gravity with depth N as denoted in Figure 3, the center of gravity affecting weight distribution and subsequent swing characteristics of the golf club (Abstract). Thus, it would be obvious to optimize location/depth of the center of gravity (D4) for the desired swing characteristics. Abe 2020 discloses optimum sole width ranges affecting the location of the resulting sweet spot (Fig. 3, W1 and description of Fig. 3 in Specification), thus rendering obvious to modify face-back directional thickness (D5) to optimize sweet spot location. Thus, it would have been obvious to one of ordinary skill in the art to provide the modified Hou with the claimed proportionate ratio as taught by Abe 2020 and Tomoya as a matter of obtaining optimum ranges via routine optimization.
Claims 12 is rejected under 35 U.S.C. 103 as being unpatentable over Hou in view of Abe 2018 and Kazuhiro, as applied in claim 8, and further in view of Abe 2020.
Regarding claim 12, modified Hou does not disclose when a sweet spot height is denoted by H2, and a top-sole directional height of the golf club head at a position of a face center is denoted by H1, then H2/H1 is greater than or equal to 0.30 and less than or equal to 0.50. However, 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), MPEP 2144.05. Modified Hou inherently has a H2 and H1 value. Supplemental to this, Abe 2020 discloses a golf club that considers both face height in the face center (Hf) and vertical height of the sweet spot (Hs) in relation to each other (Abstract). Thus, it would have been obvious to one of ordinary skill in the art to provide the modified Hou with the claimed proportionate ratio as taught by Abe 2020 as a matter of obtaining optimum ranges via routine optimization.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMANTHA M BERRY whose telephone number is (571)272-0925. The examiner can normally be reached M-F: 8-5.
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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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/S.M.B./Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711
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