DETAILED ACTION
This Office action is responsive to communication received 04/17/2025 – application papers received, including Power of Attorney and Authorization for Internet Communication;
04/28/2025 – Priority documents.
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 were received on 04/17/2025. These drawings are acceptable.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
Claims 1-9 are pending.
FOLLOWING IS AN ACTION ON THE MERITS:
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2 and 4-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US PUBS 2021/0162278 to Parsons et al (hereinafter referred to as “Parsons”).
As to claim 1, Parsons discloses a golf club head (e.g., club head 1400; FIGS. 14-22), comprising: a club head main body (1410) which has at least one internal cavity (1510; FIG. 16) in spatial communication with an external space through at least one opening (1542, 1543) of said club head main body (1410); and at least one counterweight block (i.e., filler material introduced within the cavity may clearly serve as a counterweight block, as the filler material may alter the mass distribution, CG and MOI characteristics; see paragraphs [0044], [0061], [0066] – [0069], [0101] and [0110]), wherein the counterweight (i.e., the filler material) is embedded in said at least one internal cavity; said at least one counterweight block (i.e., the filler material) having a cross-section dimension that is greater than a cross-section dimension of said at least one opening (1542, 1543) so that said at least one counterweight block is confined in said at least one internal cavity (i.e., the filler material fills the interior cavity and is clearly larger in cross-section than the diameter of the opening 1542, 1543 through which the filler is introduced; again, see paragraphs [0061] and [0066]), said at least one counterweight block including a plurality of metallic particles which are bonded to one another through a cured binding material (i.e., the filler material may include metal-based materials along with a resin (i.e., see paragraph [0113] and paragraph [0271]). The filler is cured (FIG. 47) after introduction within the internal cavity (1510).
As to claim 2, said cured binding material in said at least one counterweight block includes resin (i.e., paragraph [0271]).
As to claim 4, said club head main body is formed in one-piece (i.e., see paragraph [0273], noting that the club head may be formed via a casting procedure).
As to claim 5, Parsons discloses a method for making a golf club head, comprising the steps of:
A) forming a club head main body (e.g., club head 1400; FIGS. 14-22) which has at least one internal cavity (1510; FIG. 16) in spatial communication with an external space through at least one opening(1542, 1543) of the club head main body (i.e., the club head is formed through casting (paragraph [0273]), with the club head including an opening 1542, 1543);
B) simultaneously introducing a plurality of metallic particles and a binding material into the at least one internal cavity (1510) through the at least one opening (1542, 1543). Here, the filler material may include metal-based materials and a resin (i.e., see paragraph [0113] and paragraph [0271]); and
C) curing the binding material (FIG. 47) inside the at least one internal cavity (1510) to form a cured binding material so that the plurality of metallic particles are bonded to one another through the cured binding material to form at least one counterweight block, the at least one
counterweight block (i.e., the filler material) having a cross-section dimension that is greater than a cross-section dimension of the at least one opening (i.e., the filler material fills the interior cavity and is clearly larger in cross-section than the diameter of the opening 1542, 1543 through which the filler is introduced; again, see paragraph [0061]).
As to claim 6, in step B), the plurality of metallic particles and the binding material are simultaneously introduced into the at least one internal cavity (1510) by introducing a mixture of the plurality of metallic particles and the binding material into the at least one internal cavity (i.e., the filler material may include metal-based materials and is introduced within the interior cavity; see paragraph [0113]) .
As to claim 7, in step B), the binding material includes resin (i.e., paragraph [0271]).
As to claim 8, in step A), the at least one internal cavity (1510) in the club head main body is formed by casting, forging, additive manufacturing or precision machining (i.e., see paragraph [0273], noting that the club head may be formed via a casting procedure or 3D printing, with 3D printing essentially being an additive manufacturing process).
As to claim 9, in step C), the binding material is cured (FIG. 47) by heating the at least one internal cavity so that the plurality of metallic particles are bonded to one another by the cured binding material, thereby forming the at least one counterweight block (i.e., the filler material).
Claims 1-2, 4-7 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by USPN 4,824,116 to Nagamoto et al (hereinafter referred to as “Nagamoto”).
As to claim 1, Nagamoto discloses a golf club head (FIG. 1), comprising: a club head main body (1) which has at least one internal cavity (FIG. 2) in spatial communication with an external space through at least one opening (i.e., threaded hole 14) of said club head main body; and at least one counterweight block (i.e., filler comprising resin 15a embedded with metal pieces 15b serves as a counterweight block) which is embedded in said at least one internal cavity (FIG. 3), said at least one counterweight block having a cross-section dimension that is greater than a cross-section dimension of said at least one opening so that said at least one counterweight block is confined in said at least one internal cavity (i.e., once introduced within the internal cavity, the cured resin expands to a cross-section dimension that is clearly larger than the diameter of the hole 14 through which the resin is introduced within the interior cavity), said at least one counterweight block including a plurality of metallic particles (15b) which are bonded to one another through a cured binding material (i.e., col. 2, lines 45-54).
As to claim 2, said cured binding material in said at least one counterweight block includes resin (i.e., col. 2, lines 15-20).
As to claim 4, said club head main body is formed in one-piece (i.e., main body 11 is formed by a suitable injection molding process; col. 2, lines 5-15).
As to claim 5, Nagamoto discloses a method for making a golf club head , comprising the steps of:
A) forming a club head main body (1) which has at least one internal cavity (FIG. 2) in spatial communication with an external space through at least one opening (i.e., hole 14) of the club head main body (i.e, the club head body is formed via injection molding, with an opening provided at a sole portion of the body; col. 2, lines 5-15);
B) simultaneously or separately introducing a plurality of metallic particles and a
binding material into the at least one internal cavity through the at least one opening (i.e., the metal pieces may be added before or after into the cavity along with the resin binder; col. 2, lines 26-37); and
C) curing the binding material inside the at least one internal cavity to form a cured
binding material so that the plurality of metallic particles are bonded to one another through
the cured binding material to form at least one counterweight block (i.e., col. 2, lines 45-54), the at least one counterweight block having a cross-section dimension that is greater than a cross-section dimension of the at least one opening (i.e., once introduced within the internal cavity, the cured resin expands to a cross-section dimension that is clearly larger than the diameter of the hole 14 through which the resin is introduced within the interior cavity).
As to claim 6, in step B), the plurality of metallic particles and the binding material are simultaneously introduced into the at least one internal cavity by introducing a mixture of the plurality of metallic particles and the binding material into the at least one internal cavity (i.e., col. 2, lines 45-54).
As to claim 7, in step B), the binding material includes resin (col. 2, line 45).
As to claim 9, in step C), the binding material is cured by heating the at least one internal cavity so that the plurality of metallic particles are bonded to one another by the cured binding material, thereby forming the at least one counterweight block (i.e., col. 2, lines 26-37).
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Claim Rejections - 35 U.S.C. § 103
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 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.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 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. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. In Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009), the Federal Circuit offered additional instruction as to the need for an explicit analysis. The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.
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"[T]he analysis that "should be made explicit" refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis. . . . Under the flexible inquiry set forth by the Supreme Court, the district court therefore erred by failing to take account of 'the inferences and creative steps,' or even routine steps, that an inventor would employ and by failing to find a motivation to combine related pieces from the prior art." Ball Aerosol, 555 F.3d at 993, 89 USPQ2d at 1877.
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The Federal Circuit’s directive in Ball Aerosol was addressed to a lower court, but it applies to Office personnel as well. When setting forth a rejection, Office personnel are to continue to make appropriate findings of fact as explained in MPEP § 2141 and § 2143, and must provide a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art at the time of the invention. This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.
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I. EXEMPLARY RATIONALES
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Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(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;
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(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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 3 is rejected under 35 U.S.C. 102 (a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US PUBS 2021/0162278 to Parsons et al (hereinafter referred to as “Parsons”).
Under 35 U.S.C. §102:
Given one interpretation, said at least one counterweight block (i.e., the filler material) is exposed from said club head main body through said at least one opening (i.e., since the filler material is introduced into the interior cavity through one or more openings 1542, 1543 in the body, the filler material is clearly viewable or exposed through the opening just after being introduced within the interior cavity (i.e., see paragraphs [0044], [0047], [0061], and [0146]).
Under 35 U.S.C. §103:
Given another interpretation, one may argue that Parsons does not explicitly show “said at least one counterweight block is exposed from said club head body through said at least one opening”. Parsons shows at least a first filling port, which may comprise any one or more of the ports that are dimensioned to accept mass portions (i.e., see at least paragraph [0061]), and if filled with a mass portion would arguably not have enabled the filling material of the final product in Parsons to be exposed. However, Parsons clearly teaches that not all of the ports need necessarily be filled with a mass portion and that the ports may be selectively filled to account for a particular club head mass distribution (i.e., see paragraphs [0008], [0043], [0067], [0069], [0082] and [0250]). In view of the teachings in Parsons, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have provided a first filling port that is connected to the interior cavity for the introduction of the filler material while not providing a mass portion in this first filling port, but providing mass portion(s) in other ports, which are arranged about the periphery of the club head, in order to customize the location of the center of gravity of the club head for improving the overall performance of the club head. As such, the first filling port would have remained void of a mass portion, thus enabling the filler material introduced through the first filling port and into the interior cavity to have been exposed through the opening and more easily accessed for any inspection or repair.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over USPN 4,824,116 to Nagamoto et al (hereinafter referred to as “Nagamoto”) in view of US PUBS 2017/0028274 to Warren.
As to claim 8, Nagamoto lacks an explicit teaching of “casting, forging, additive manufacturing or precision machining”. Warren shows it to be old in the art to manufacture a hollow unitary club head body using any one of a number of known manufacturing processes such as 3D printing or injection molding (i.e., see paragraph [0058], noting that 3D printing is essentially considered to be additive manufacturing), as such processes are routinely used in the manufacture of golf club heads. In general, additive manufacturing facilitates the production of complex shapes and is touted for producing less waste during the manufacturing process and for being less expensive than other traditional molding operations. In view of the teaching in Warren and the above reasoning, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Nagamoto by forming the internal cavity using a 3D printing process (i.e., additive manufacturing), as such a process is known in the golf club head art for forming hollow club head bodies, with the additive manufacturing process including the advantages noted herein.
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Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Parsons (‘847) details a filler material with metal; see col. 33, line 35 through col. 34, line 47;
Morales (‘737) shows a counterweight in FIG. 2;
See FIG. 5G in Finn;
Simone details various, known manufacturing methods, at paragraph [0175];
See FIGS. 28-30 in Roach;
Morales (‘832) shows a weight mounted within a recess in FIGS. 1, 4 and 5, of interest;
See FIG. 3 and weight (42) in Tanimoto;
Body (6) in FIG. 1 of Tanimoto is dimensioned to be larger than the cavity for a press-fit securement;
Hirakawa shows a weight exposed at the sole portion;
FIG. 4 in Kobayashi (‘243) shows exposed counterweights at a rear portion of the body;
See FIGS. 1 and 9 in Kobayashi (‘705), and showing weights exposed to the exterior;
See filler (7) in Okumoto;
See FIG. 4 in Kurokawa;
Petersen discloses forming a club head in one-piece from a casting procedure (e.g., see claim 11 in Petersen);
Rogers combines metallic particles with a resin mixture;
See paragraph [0202] in Clarke, which discusses additive manufacturing;
Baum discusses curing a core that includes a resin material.
Rosen details a process for forming a form core; and
See FIG. 4 in Janssen.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEBASTIANO PASSANITI whose telephone number is (571)272-4413. The examiner can normally be reached 9:00AM-5:00PM Mon-Fri.
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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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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711
Prosecution Insights