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 .
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 at the time any inventions covered therein were effectively filed 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 at the time a later invention was effectively filed 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.
Status of Claims
Claims 1-20, filed April 17, 2025, are pending and have been considered.
Continuity
The application is identified as a continuation-in-part of U.S. Application No. 18/652,681, filed May 1, 2024.
Priority
Applicant's claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of the first paragraph of 35 U.S.C. 112. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The present application is a continuation-in-part of Application No. 18/652,681, filed May 1, 2024. The parent describes groove 112 as having first and second sidewalls, a bottom wall between the sidewalls, and first and second face-side edges located between the respective sidewalls and the striking-face surface ([0025]). By contrast, present claim 1 requires the first-golf-club-head groove to have a bottom wall and first and second edges recited between that bottom wall and the striking-face surface. The present application first describes that configuration as groove 512 in [0047], where the bottom wall is curved and extends to the recited first and second edges. The tangent-defined wall angle, bottom-wall radius, shallow first-groove depth, and three-loft-group architecture are likewise first disclosed in the continuation-in-part ([0047]-[0050]).
Accordingly, on the present record, claim 1 is not entitled to the May 1, 2024 filing date because the parent does not provide written-description support for the first-groove bottom-wall/face-edge relationship now required by claim 1. Claims 2-10 inherit that limitation. Independent claim 11 recites the three-head, three-loft-group architecture first disclosed in [0050], and claims 12-20 inherit that limitation. Claims 1-20 are therefore treated as having an effective filing date of April 17, 2025 for purposes of this action. See MPEP §§ 211, 211.05, and 2163.
All references applied in the prior-art rejections below were publicly available before April 17, 2025.
Information Disclosure Statement
The information disclosure statements filed April 17, 2025 and November 24, 2025 were filed before this first Office action on the merits. Information properly submitted in compliance with 37 CFR 1.97 and 1.98 has been considered. Submission of a reference in an information disclosure statement is not treated as an admission that the reference is prior art or material to patentability. See MPEP § 609.
Claim Objections
Claims 3 and 13 are objected to because of the following informalities, appropriate correction is required:
Claim 3 recites the phrase “said longitudinal plane” in both the first-groove and second-groove wall-angle limitations. Claim 2, through claim 1, provides a longitudinal plane for the first groove and separately provides a longitudinal plane for the second groove. The intended planes can be understood from context, but applicant is recommended to identify expressly the longitudinal plane associated with the respective first and second golf club head grooves.
Claim 13 recites the phrase “said longitudinal plane” for the first, second, and third golf club head grooves after claim 12 has introduced a separate longitudinal plane for each groove. Applicant is recommended to identify expressly the longitudinal plane associated with each respective groove. These informalities do not prevent the scope of claims 3 and 13 from being reasonably ascertained on the present record. The claims are treated on the merits below.
Double Patenting
The present application and copending Application No. 18/652,681 have a common applicant and at least one common joint inventor. The present application expressly claims domestic benefit as a continuation-in-part of Application No. 18/652,681. For double-patenting purposes, the patent-term filing date is measured from the earliest application specifically referenced under 35 U.S.C. 120, regardless of whether every present claim is entitled under 35 U.S.C. 120 to the parent's effective filing date. The one-way test for patentable distinctness is therefore applied. See In re Berg, 140 F.3d 1428, 1435, 46 USPQ2d 1226, 1231-32 (Fed. Cir. 1998); MPEP § 804(II)(B)(4).
In an obviousness-type nonstatutory double-patenting analysis, the claims of the copending application are the primary basis for comparison. The parent specification is not treated as prior art; it may be consulted only to understand the meaning and scope of the parent claims. See General Foods Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d 1272, 1281, 23 USPQ2d 1839, 1846 (Fed. Cir. 1992); In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA 1970). The obviousness-type double-patenting inquiry is similar to, but not necessarily the same as, the analysis under 35 U.S.C. 103; the Graham factual inquiries are considered, the differences between the conflicting claims are identified, and the reason the present claim would have been an obvious variation of the parent claim is articulated. See In re Braat, 937 F.2d 589, 592-93, 19 USPQ2d 1289, 1292 (Fed. Cir. 1991); MPEP § 804(II)(B)(3).
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Chappell and Ueda '862, used below as secondary references in the provisional nonstatutory double-patenting analysis, were publicly available before the effective filing date of the present claims and therefore qualify as prior art under 35 U.S.C. 102(a)(1), as required by MPEP § 804(II)(B)(3).
Claims 1, 2, and 7-9 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 7-9 of copending Application No. 18/652,681 in view of Chappell (US 20020042306 A1). This is a provisional nonstatutory double patenting rejection.
Regarding instant claim 1, parent claim 1 recites the same two-head golf-club-set architecture, including a first head at or below 28 degrees, a second head above 28 degrees, and different groove cross-sectional profiles. Parent claim 1 additionally requires groove widths with the higher-loft groove wider than the lower-loft groove, a narrowing limitation that instant claim 1 does not require. Parent claim 1 does not, however, require the instant first-groove configuration in which the bottom wall extends to first and second face-side edges and the groove is symmetric about a plane equidistant from those edges.
Chappell teaches the missing first-groove configuration. Chappell's D-type groove is formed by a portion of a circle, ellipse, or arc whose opposed ends connect to the club face, and Chappell teaches use of the disclosed groove configurations on irons ([0028], [0042]). Chappell further states that its groove configurations may be combined with other groove types to tailor club performance ([0047]). A circular D-type groove is symmetric about its center plane and provides the claimed bottom wall and opposed face-side edges.
It would have been obvious to a person of ordinary skill in the art to modify the lower-loft groove of the invention defined by parent claim 1 by substituting Chappell's known circular D-type iron groove for the lower-loft groove while retaining the parent claim's two-head loft progression and different groove profiles. Chappell expressly identifies its groove forms as interchangeable/combination groove options for golf clubs and uses them for the same spin-control function. A golf-club-head designer of ordinary skill could machine the known circular groove in the lower-loft head without changing the function of the remaining parent-claim elements, and the resulting different-profile set would have been predictable. The additional parent width relationship merely narrows the parent-claimed species and does not render the broader instant claim patentably distinct. See In re Braat, 937 F.2d at 592-93; In re Goodman, 11 F.3d 1046, 1052, 29 USPQ2d 2010, 2015-16 (Fed. Cir. 1993); In re Berg, 140 F.3d at 1435; MPEP § 804(II)(B)(2)-(4).
Regarding instant claim 2, parent claim 2 already recites the additional second-head groove limitations: first and second sidewalls, a bottom wall between the sidewalls, face-side first and second edges, and symmetry about a longitudinal plane equidistant from the sidewalls. The difference between the complete inventions defined by instant claim 2 and parent claim 2 therefore remains the first-head groove configuration identified for instant claim 1.
Chappell teaches that missing first-head circular D-type groove for the reasons stated above ([0028], [0042], [0047]).
It would have been obvious to a person of ordinary skill in the art to make the same Chappell substitution in the lower-loft groove of the invention defined by parent claim 2 while leaving parent claim 2's expressly recited second-head sidewall groove unchanged. Each groove would retain its ordinary spin-control function, and Chappell expressly teaches that different groove configurations may be combined on golf clubs. The modification therefore would have yielded the predictable instant arrangement. See In re Braat; In re Berg; MPEP § 804(II)(B)(3)-(4).
Regarding instant claim 7, parent claim 7 recites the additional depth limitations, including a depth for each groove and the relationship that the second, higher-loft groove is deeper than the first, lower-loft groove. Parent claim 7 therefore teaches the dependent limitation itself, but retains the parent first-head sidewall groove.
Chappell teaches the missing circular first-head groove and expressly discloses D-groove depths from 0.010 inch to 0.030 inch ([0042]).
It would have been obvious to a person of ordinary skill in the art to use Chappell's circular D groove as the lower-loft groove of the invention defined by parent claim 7 and to select its depth so that the parent claim's expressly required second-greater-than-first depth relationship is retained. Chappell makes groove depth a known selectable groove parameter and expressly permits its groove configurations to be combined with other groove types ([0047]); the substitution and dimensional selection therefore would have been within ordinary skill and predictably preserved the parent-claimed depth progression. See In re Braat; In re Berg; MPEP § 804(II)(B)(3)-(4).
Regarding instant claim 8, parent claim 8 requires a first-groove depth from 0.010 inch to 0.016 inch, whereas instant claim 8 requires 0.006 inch to 0.010 inch. The two claimed ranges meet at the expressly claimed 0.010-inch endpoint. Chappell independently teaches a circular D-groove depth range beginning at 0.010 inch ([0042]).
It would have been obvious to a person of ordinary skill in the art to select the shared 0.010-inch depth when making the Chappell circular-groove substitution because 0.010 inch is expressly within both the parent-claimed range and Chappell's disclosed operative range, and the resulting value falls within instant claim 8. The parent and instant claims therefore overlap at a known workable endpoint, and selection of that endpoint in the known circular groove would have been a routine predictable variation. See In re Braat; In re Goodman; MPEP § 804(II)(B)(2)-(3).
Regarding instant claim 9, parent claim 9 requires a second-groove depth from 0.015 inch to 0.020 inch, whereas instant claim 9 requires 0.010 inch to 0.016 inch. The ranges overlap from 0.015 inch to 0.016 inch. The Chappell modification concerns the first groove and does not require changing the parent second groove.
It would have been obvious to a person of ordinary skill in the art to select a second-groove depth within the 0.015-0.016-inch region common to the parent and instant claims while using Chappell's circular groove for the first head. The shared range represents known claimed subject matter, and the circular-groove substitution does not alter the second groove's depth function. The resulting invention would therefore have been an obvious variation of the parent-claimed invention rather than a patentably distinct invention. See In re Braat; In re Goodman; MPEP § 804(II)(B)(2)-(3).
Claims 3-6 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of copending Application No. 18/652,681 in view of Chappell. This is a provisional nonstatutory double patenting rejection.
Regarding instant claim 3, parent claim 5, through its dependency from parent claims 3, 2, and 1, defines a two-head progressive-groove set in which the higher-loft second-groove wall angle is smaller than the lower-loft first-groove wall angle and the second angle is 16-24 degrees. Parent claim 5 does not define the lower-loft first angle by a line tangent to a circular bottom wall at the face edge.
Chappell teaches the missing circular first-groove geometry. For a circular D groove having a radius of 0.020 inch and a depth of 0.010 inch, both within Chappell's disclosed ranges, the circular-segment geometry yields a 30-degree angle between the groove symmetry plane and a tangent to the circular wall at the face edge. Chappell permits variation of groove dimensions and combinations of groove types for spin control ([0042], [0047]). Selecting 24 degrees within parent claim 5's expressly claimed second-angle range yields a second angle smaller than the 30-degree first tangent angle.
It would have been obvious to a person of ordinary skill in the art to substitute Chappell's known circular D groove for the lower-loft sidewall groove of the invention defined by parent claim 5 and retain a parent-claimed 24-degree higher-loft wall angle. Chappell's groove performs the same golf-ball spin-control function, its dimensions are known machining parameters, and parent claim 5 already requires the higher-loft angle to be smaller. The modification therefore would have predictably produced the instant angle relationship. See In re Braat; In re Berg; MPEP § 804(II)(B)(3)-(4).
Regarding instant claim 4, parent claim 5 does not require the lower-loft first wall angle to be 30-45 degrees. Chappell's circular D groove can be selected at radius 0.020 inch and depth 0.010 inch, producing a 30-degree tangent angle and therefore satisfying the added range of instant claim 4 ([0042], [0047]).
It would have been obvious to a person of ordinary skill in the art to use that known Chappell geometry when making the circular-groove substitution because its radius and depth are expressly disclosed as operative groove dimensions and the resulting 30-degree tangent angle is a direct, predictable consequence of the circular geometry. The parent-claimed higher-loft angle may simultaneously be selected at 24 degrees, preserving the parent-claimed smaller-higher-loft relationship. See In re Braat; MPEP § 804(II)(B)(3).
Regarding instant claim 5, parent claim 5 expressly requires the higher-loft second-groove wall angle to be between 16 degrees and 24 degrees. Instant claim 5 requires 24 degrees to 32 degrees. The two claims therefore share the 24-degree endpoint.
It would have been obvious to a person of ordinary skill in the art to select the expressly parent-claimed 24-degree value while making the Chappell first-groove substitution because that value remains smaller than the 30-degree tangent angle of the selected Chappell geometry and falls within instant claim 5. The shared endpoint and preserved angle relationship demonstrate an obvious overlapping variation, not patentable distinctness. See In re Braat; In re Goodman; MPEP § 804(II)(B)(2)-(3).
Regarding instant claim 6, parent claim 5 does not require a radius for the lower-loft first groove. Chappell teaches that the circular D-groove radius is 0.008-0.026 inch, including 0.020 inch, which lies within instant claim 6's 0.010-0.030-inch range ([0042]) .
It would have been obvious to a person of ordinary skill in the art to select the known 0.020-inch circular-groove radius when substituting Chappell's D groove into the invention defined by parent claim 5 because the value is expressly disclosed as an operative radius and predictably retains the groove's spin-control function. See In re Braat; MPEP § 804(II)(B)(3).
Claim 10 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of copending Application No. 18/652,681 in view of Chappell and Ueda et al. (US 20180311540 A1, “Ueda '540”). This is a provisional nonstatutory double patenting rejection.
Regarding instant claim 10, parent claim 10 defines the same two-head loft architecture, the higher loft/smaller-wall-angle relationship, and the higher-loft/greater-depth relationship. Parent claim 10 does not define the lower-loft first wall angle by a tangent to a circular bottom wall.
Chappell supplies the circular lower-loft groove and a 30-degree tangent angle using the 0.020-inch-radius/0.010-inch-depth geometry described above ([0042], [0047]). Ueda '540 teaches the known loft-dependent wall-angle technique: a lower-loft groove-wall inclination of 28-42 degrees and a higher-loft groove-wall inclination of 23-37 degrees selected to be smaller than the lower-loft angle ([0082]-[0083]). Thus a 28-degree higher-loft angle may be used with Chappell's 30-degree first tangent angle while preserving the smaller-higher-loft relationship. Parent claim 10 itself supplies the second-greater-than-first depth relationship.
It would have been obvious to a person of ordinary skill in the art to use Chappell's circular lower-loft groove and Ueda '540's known smaller-higher-loft angle technique in the invention defined by parent claim 10 because the secondary references address the same iron-groove spin-control problem, supply known groove geometries/angle relationships, and predictably retain the parent claim's depth progression and different-profile functions. The cited references reflect the level of ordinary skill, and no
objective evidence directed to this distinction is presently of record. See In re Braat; In re Berg; MPEP § 804(II)(B)(3)-(4).
Claim 11 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of copending Application No. 18/652,681 in view of Ueda et al. (US 20190282862 A1, “Ueda '862”). This is a provisional nonstatutory double patenting rejection.
Regarding instant claim 11, parent claim 11 defines a progressive set having a lower-loft head at or below 31 degrees and a higher-loft head above 31 degrees, different groove profiles, detailed conventional groove structures, curved groove edges, and an edge-radius relationship. Instant claim 11 is broader than parent claim 11 with respect to those groove-detail and edge-radius limitations, but adds a third, low-loft head at or below 23 degrees and requires three pairwise-different groove profiles.
Ueda '862 teaches the missing three-group progression in a single iron set. Table 8 provides a 20-degree club having a 0.30-mm-deep/0.80-mm-wide groove, a 28-degree club having a 0.38-mm-deep/0.75-mm-wide groove, and a 41-degree club having a 0.43-mm-deep/0.70-mm-wide groove ([0152]-[0153], Table 8). The 28-degree and 41-degree clubs correspond to the parent claim's lower-and higher-loft heads, respectively, while the 20-degree club supplies the additional instant low-loft head. The three groove profiles are pairwise different.
It would have been obvious to a person of ordinary skill in the art to extend the two-profile progressive set defined by parent claim 11 to a three-profile low/middle/high progression using Ueda '862's expressly disclosed 20/28/41-degree arrangement because Ueda demonstrates that dividing an iron set into additional loft-dependent groove groups was a known way to tune groove performance across the set. The parent claim's additional detailed-groove and edge-radius limitations narrow the reference-claimed invention and do not make the broader instant claim patentably distinct once the known third group is added. The modification would have produced the predictable result of a three-zone progressive groove set. See In re Braat; In re Goodman; In re Berg; MPEP § 804(II)(B)(2)-(4).
Claims 12 and 16-20 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11 and 16-18 and 20 of copending Application No. 18/652,681 in view of Ueda '862 and Chappell. This is a provisional nonstatutory double patenting rejection.
Regarding instant claim 12, parent claim 11 expressly recites the conventional sidewall/bottom-wall/face-edge/symmetry structure for both of its groove groups. Mapping the parent lower-loft head to instant claim 12's second head and the parent higher-loft head to the instant third head therefore supplies the additional second-and third-groove structures. Parent claim 11 does not supply the added low-loft first head or its circular bottom-wall/face-edge geometry.
Veda '862 teaches the additional low/middle/high loft progression, and Chappell teaches the circular D-type first groove whose arc ends connect to the club face ([0042]). Ueda '862's 20-, 28-, and 41-degree heads provide the three loft groups; Chappell supplies the first-head circular groove while the parent-claimed conventional grooves are retained for the middle and high heads.
It would have been obvious to a person of ordinary skill in the art to make those modifications for the reasons stated for instant claim 11 and to use Chappell's known circular groove for the newly added low-loft head because Chappell applies the groove to irons and expressly permits combining different groove configurations ([0028], [0047]). The resulting three-groove structure would have been predictable. See In re Braat; In re Berg; MPEP § 804(II)(B)(3)-(4).
Regarding instant claim 16, parent claim 16 requires the parent higher-loft groove to be deeper than the parent lower-loft groove. When those parent heads are mapped to instant claim 16's second and third heads, parent claim 16 supplies the third-greater-than-second depth progression, but does not supply the new first low-loft head or the requirement that both the second and third grooves be deeper than that first groove.
Ueda '862 teaches 0.30-, 0.38-, and 0.43-mm depths for its low-, middle-, and high-loft groups ([0152]-[0153], Table 8), and Chappell teaches a circular first groove with a selectable depth beginning at 0.010 inch ([0042]). Selecting a 0.010-inch first depth, Ueda's 0.38-mm middle depth, and Ueda's 0.43-mm high depth makes both later grooves deeper than the first.
It would have been obvious to a person of ordinary skill in the art to employ Ueda '862's known three-group depth progression when extending the parent claim 16 set and to use Chappell's 0.010-inch circular groove for the added low-loft head. Groove depth is a known spin-control parameter in the cited art, the values are disclosed operative values, and the three-depth progression predictably retains the parent claim's loft-dependent depth concept while adding the new lower group. See In re Braat; MPEP § 804(II)(B)(3).
Regarding instant claim 17, the combination used for instant claim 16 does not by itself require the three numerical ranges of instant claim 17. Chappell expressly permits a 0.010-inch circular first-groove depth ([0042]). Ueda '862's 0.38-mm middle depth converts to approximately 0.01496 inch, within the claimed 0.012-0.019-inch second range, and its 0.43-mm high depth converts to approximately 0.01693 inch, within the claimed 0.015-0.020-inch third range ([0153], Table 8). Parent claims 17 and 18 additionally claim overlapping middle/high depth ranges.
It would have been obvious to a person of ordinary skill in the art to use those expressly disclosed dimensions when implementing the claim 16 three-group progression because they are known operative values for the same groove-depth function and directly produce the claimed ranges. The numerical choices therefore would have been routine predictable selections in the claimed progressive set. See In re Braat; MPEP § 804(II)(B)(3).
Regarding instant claim 18, the parent claims do not require a bottom-wall radius for the newly added low-loft first groove. Chappell teaches a circular D-groove radius from 0.008 inch to 0.026 inch, including 0.020 inch, which lies within instant claim 18's 0.010-0.030-inch range ([0042]).
It would have been obvious to a person of ordinary skill in the art to select the known
0.020-inch radius for the added circular first groove because it is expressly disclosed as an operative D-groove dimension and predictably preserves that groove's function. See In re Braat; MPEP § 804(II)(B)(3).
Regarding instant claim 19, parent claim 11 expressly requires curved edges with an edge radius for both parent groove groups and requires the lower-loft parent groove radius to be smaller than the higher-loft parent groove radius. Mapping the parent lower-loft head to instant claim 19's second head and the parent higher-loft head to the instant third head therefore directly supplies the added second-radius-less-than-third-radius limitation. The only differences remaining are the additional low-loft first head and its circular groove. Ueda '862 and Chappell teach those differences as explained for instant claim 12.
It would have been obvious to a person of ordinary skill in the art to add Ueda '862's known low-loft groove group and Chappell's circular first groove while retaining the parent-claimed middle/high curved-edge-radius relationship because the added features operate independently of the parent radius ordering and predictably extend the parent progressive set to a third lower-loft group. See In re Braat; In re Berg; MPEP § 804(II)(B)(3)-(4).
Regarding instant claim 20, parent claim 20 expressly requires the lower-loft parent groove edge radius to be 0.0025-0.0075 inch and the higher-loft parent groove edge radius to be 0.005-0.010 inch. Mapping those parent heads to the instant second and third heads supplies the complete added numerical limitation of instant claim 20. Ueda '862 and Chappell supply only the additional low-loft first head and its circular groove.
It would have been obvious to a person of ordinary skill in the art to retain the exact parent-claimed middle/high edge-radius ranges when adding Ueda '862's lower loft group and Chappell's circular first groove because those modifications do not require changing the parent edge-radius relationship or ranges. The resulting three-head set would therefore predictably include the instant claim 20 limitation. See In re Braat; In re Berg; MPEP § 804(II)(B)(3)-(4).
Claims 13-15 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of copending Application No. 18/652,681 in view of Ueda '862 and Chappell. This is a provisional nonstatutory double patenting rejection.
For purposes of construing parent claim 13, and not as prior art, the parent specification identifies an embodiment within the scope of that claim in which the lower-loft parent groove has a wall angle from 30 degrees to 45 degrees ([0035]) and the higher-loft parent groove has a wall angle from 16 degrees to 24 degrees ([0039]). See In re Vogel, 422 F.2d at 441-42; General Foods, 972 F.2d at 1281; MPEP § 804(II)(B)(1).
Regarding instant claim 13, parent claim 13 defines the middle/high portion of the instant angle progression: its higher-loft groove wall angle is smaller than its lower-loft groove wall angle. The parent embodiment used to construe that claim includes a lower-loft angle in the 30-45-degree range and a higher-loft angle in the 16-24-degree range ([0035], [0039]). Parent claim 13 does not provide the additional instant low-loft first head or its tangent-defined circular-groove angle, and it therefore does not expressly establish that the high-loft third angle is also smaller than the added first angle.
Ueda '862 supplies the known low/middle/high three-head progression, and Chappell supplies the added low-loft circular groove. Selecting Chappell's 0.020-inch radius and 0.010-inch depth yields a 30-degree first tangent angle. A parent-claim-13 embodiment having, for example, a 30-degree middle angle and a 20-degree high angle then satisfies the instant requirement that the third angle be less than both the first and second angles.
It would have been obvious to a person of ordinary skill in the art to extend the parent claim 13 two-group angle progression with Ueda '862's known third lower-loft group and Chappell's circular low-loft groove because those secondary references provide a known three-group architecture and known circular-groove option for the same iron-groove field. Retaining the parent-claimed smaller high-loft angle and using Chappell's predictable 30- degree tangent angle yields the claimed ordering without changing the groove elements' respective spin-control functions. See In re Braat; MPEP § 804(II)(B)(3)-(4).
Regarding instant claim 14, the parent claim 13 embodiment used to construe the reference claim has a middle-head wall angle between 30 degrees and 45 degrees ([0035]), while Chappell's selected circular first groove provides a 30-degree tangent angle. Those values satisfy the requirement that both the instant first and second angles be 30-45 degrees.
It would have been obvious to a person of ordinary skill in the art to retain the known 30-45-degree middle-head angle encompassed by parent claim 13 and use Chappell's known 30-degree circular-groove tangent angle for the added low head because both are operative golf-groove angle settings and predictably preserve the progressive relationship. See In re Braat; In re Vogel; MPEP § 804(II)(B)(1), (3).
Regarding instant claim 15, the parent claim 13 embodiment used to construe the reference claim has a higher-loft wall angle between 16 degrees and 24 degrees ([0039]). Mapping that parent higher-loft head to the instant third head directly supplies instant claim 15's added numerical range.
It would have been obvious to a person of ordinary skill in the art to retain that parent-claim-13 high-loft angle when adding Ueda '862's lower loft group and Chappell's circular first groove because the added lower group does not require changing the already claimed middle/high angle relationship. The resulting third-head angle therefore predictably remains within 16-24 degrees. See In re Braat; In re Vogel; MPEP § 804(II)(B)(1), (3).
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 11 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ueda '862.
Regarding claim 11, Ueda '862 teaches the claimed iron-set head structure. It states that “the club head 2 has a shape being typical of iron clubs and comprising a clubface 3, a top 4, a sole 5, a toe 6 and a hosel 7” and that the clubface is “a substantially flat surface for hitting a ball” having face grooves that “extend in the toe-heel direction of the head” ([0066]). It further teaches that the top extends rearward from the upper edge of the clubface, the sole extends rearward from the lower edge, and the hosel fixes the tip end of the club shaft ([0067]). The region adjacent the hosel and opposite the toe corresponds to the claimed heel side.
Ueda '862 also teaches all three claimed loft groups and pairwise-different groove profiles in one set. Table 8 discloses club lofts of 20, 22, 25, 28, 32, 36, 41, 46, 51, and 57 degrees. The 20-, 22-, and 25-degree clubs have depth D of 0.30 mm and width W of 0.80 mm; the 28-, 32-, and 36-degree clubs have depth 0.38 mm and width 0.75 mm; and the 41-, 46-, 51-, and 57-degree clubs have depth 0.43 mm and width 0.70 mm ([0152]-[0153], Table 8).
The 20-degree club satisfies the claimed first head having loft less than or equal to 23 degrees; the 28-degree club satisfies the claimed second head having loft between 23 degrees and 32.5 degrees; and the 41-degree club satisfies the claimed third head having loft greater than 32.5 degrees. Their respective groove profiles-0.30 mm/0.80 mm, 0.38 mm/0.75 mm, and 0.43 mm/0.70 mm-are pairwise different. Ueda '862 therefore discloses every limitation of claim 11 arranged as required. See Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987); MPEP § 2131.
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.
Claims 1, 2, and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Ueda '862 in view of Chappell.
Regarding claim 1, Ueda '862 teaches the two-head progressive iron-set framework and the conventional golf-club-head limitations. Ueda '862 teaches an iron head having “a clubface 3, a top 4, a sole 5, a toe 6 and a hosel 7”; the clubface is a substantially flat ball-striking surface having grooves extending in the toe-heel direction ([0066]). The top and sole extend rearward from opposite edges of the clubface and the hosel fixes the club shaft ([0067]). Table 8 discloses a 20-degree club with a groove depth of 0.30 mm and width of 0.80 mm and a 32-degree club with a groove depth of 0.38 mm and width of 0.75 mm, thereby teaching the claimed at-most-28-degree first head, greater-than-28- degree second head, and different groove cross-sectional profiles ([0152]-[0153], Table 8).
Ueda '862 does not teach the claimed first-head groove in which the bottom wall extends to first and second face-side edges and the groove is symmetric about a plane equidistant from those edges. Instead, Ueda '862 teaches a groove bottom 8a between a pair of groove walls 8b and circularly chamfered corners between the groove walls and the clubface ([0069], [0071]).
Chappell teaches the missing first-groove configuration. Chappell teaches a D-type groove formed by a portion of a circle, ellipse, or arc with opposite ends connected to the club face, and teaches that these groove configurations apply to irons ([0028], [0042]). Chappell further states that groove lengths, angles, and radii may be varied to produce different spin characteristics and that the disclosed grooves may be combined with other groove types to modify club performance ([0047]). A circular D groove is symmetric about its center plane and provides a curved bottom wall terminating at opposed face-side edges.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to substitute Chappell's known circular D-type iron groove for the lower-loft groove of Ueda '862 while retaining Ueda '862's higher-loft conventional groove. Ueda '862 is the base progressive iron set; Chappell identifies the circular groove as a known substitute golf-groove configuration used for the same spin-control function and expressly permits combining its groove configurations with other groove types. A person of ordinary skill in golf-club-head design and groove machining could have made that substitution by known machining methods, each groove would continue performing its known ball-engagement/spin function, and the predictable result would be the claimed lower-loft circular profile paired with a different higher-loft profile. The references themselves reflect the pertinent level of ordinary skill, and no objective evidence of nonobviousness directed to this substitution is presently of record. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007); In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982); MPEP § 2143(I)(B).
Regarding claim 2, Ueda '862 teaches the additional second-groove limitations. Ueda '862 teaches that face groove 8 has “a groove bottom 8a and a pair of groove walls 8b,” that the groove walls are symmetrical about the widthwise center line GC, and that the corners between the respective groove walls and clubface are chamfered by a circular arc ([0069], [0071]). These structures correspond to the claimed first and second sidewalls, bottom wall between them, opposed face-side edges, and symmetry of the second groove. Chappell is needed only for the lower-loft first-groove difference identified for claim 1.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to make the Chappell lower-loft groove substitution while leaving Ueda '862's higher-loft second groove unchanged. The substitution is the same known-for-known groove replacement discussed for claim 1; Chappell expressly permits combinations of different groove configurations, and Ueda '862's second groove continues to perform its original function. The claimed arrangement therefore would have been predictable. See KSR; In re Fout; MPEP § 2143(I)(B).
Regarding claim 7, Ueda '862 and Chappell do not, without selecting compatible disclosed dimensions, expressly establish the claimed second-groove-depth-greater-than-first-groove-depth relationship after the first groove is replaced by Chappell's circular groove. Chappell teaches a circular D-groove depth from 0.010 inch to 0.030 inch ([0042]). Ueda '862 teaches a 32-degree second head having a groove depth of 0.38 mm, approximately 0.01496 inch, and expressly teaches a higher-loft group having greater groove depth than a lower-loft group ([0020]-[0021]; [0153], Table 8). Selecting Chappell's disclosed 0.010-inch first-groove depth and Ueda '862's 0.01496-inch second-groove depth provides the claimed relationship.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to use those disclosed depths when implementing the Chappell substitution because groove depth is a recognized spin-control parameter in both references, 0.010 inch is an expressly disclosed operative Chappell depth, and Ueda '862 expressly teaches increasing depth with loft to address spin performance. A skilled golf-club designer could select those known dimensions using ordinary groove-machining techniques, and the predictable result is a higher-loft second groove deeper than the lower-loft circular first groove. See KSR; In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003); MPEP §§ 2143(I)(D), 2144.05.
Regarding claim 8, Ueda '862 does not teach the added first-groove depth range of 0.006-0.010 inch; its selected low-loft depth is 0.30 mm, approximately 0.01181 inch ([0153], Table 8). Chappell teaches that its circular D groove may have a depth beginning at 0.010 inch ([0042]). The expressly disclosed 0.010-inch value is within the claimed 0.006-0.010-inch range.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to select Chappell's expressly disclosed 0.010-inch endpoint when substituting the circular groove into Ueda '862 because that value is a known operative depth for the same golf-groove function and Chappell identifies groove dimensions as variables that may be adjusted for spin performance ([0047]). Selection of the disclosed endpoint would have yielded the predictable claimed depth. See In re Peterson; In re Aller; MPEP § 2144.05.
Regarding claim 9, the Ueda '862/Chappell combination does not expressly state the claimed 0.010-0.016-inch range as the second-groove range. Ueda '862 teaches a 32-degree second head having groove depth 0.38 mm, approximately 0.01496 inch ([0153], Table 8). That expressly disclosed value lies within the claimed 0.010-0.016-inch range and remains greater than the selected 0.010-inch Chappell first-groove depth.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to use Ueda '862's expressly disclosed 0.38-mm second-groove depth when implementing the combination because the value is already used by Ueda '862 for the same middle-loft groove/spin function and falls within the claimed range. The selection requires no new operating principle and predictably preserves the higher-loft/greater-depth relationship. See In re Peterson; MPEP §§ 2143(I)(D), 2144.05.
Claims 3-6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Ueda '862 in view of Chappell and Ueda '540.
Regarding claim 3, Ueda '862 in view of Chappell does not teach the added wall-angle relationship in which the second, higher-loft sidewall angle is smaller than the first, lower-loft tangent-defined angle.
Chappell's circular D groove supplies the first tangent-defined angle. Using a disclosed circular radius of 0.020 inch and a disclosed depth of 0.010 inch gives a circular-segment half-width of approximately 0.01732 inch and a tangent angle of 30 degrees relative to the groove symmetry plane. Both selected dimensions are within Chappell's disclosed operative ranges ([0042]).
Ueda '540 teaches the missing loft-dependent angle relationship. Ueda '540 teaches a lower-loft groove-wall inclination of 28-42 degrees ([0082]) and a higher-loft groove- wall inclination of 23-37 degrees selected “to be smaller than that of the first golf club” ([0083]). Selecting a 28-degree second-groove angle therefore produces a second angle smaller than Chappell's 30-degree first tangent angle.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to apply Ueda '540's known higher-loft/smaller-wall-angle technique to the Ueda '862/Chappell progressive set. The Ueda '862/Chappell combination is the base progressive iron set; Ueda '540 is a comparable iron-groove system improved through loft-dependent wall-angle selection; Ueda '540 explains that wall inclination is selected in view of ball/groove catch and backspin ([0084]-[0102]); and a golf-club-head designer of ordinary skill could apply that same known angle-progression technique to the base set using conventional groove machining. The predictable result is a higher-loft second groove having a smaller wall angle while the first circular groove retains its known tangent geometry. The references reflect the pertinent level of ordinary skill, and no objective evidence directed to this modification is presently of record. See KSR; Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380-81, 2023 USPQ2d 297 (Fed. Cir. 2023); MPEP § 2143(I)(C).
Regarding claim 4, the Ueda '862/Chappell/Ueda '540 combination does not require the first tangent-defined angle to fall within 30-45 degrees unless the circular-groove dimensions are selected accordingly. Chappell teaches the circular-groove radius and depth ranges discussed above ([0042]). Selecting radius 0.020 inch and depth 0.010 inch yields a 30-degree tangent angle, which lies within the claimed 30-45-degree range. Chappell also teaches varying groove lengths, angles, and radii to alter spin characteristics ([0047]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to select those known Chappell dimensions because they are expressly disclosed operative values, Chappell recognizes groove geometry as affecting spin, and the resulting 30-degree tangent angle is a direct and predictable geometric consequence. The selection therefore constitutes routine optimization/selection of known groove dimensions for their recognized function. See In re Peterson; In re Aller; MPEP § 2144.05.
Regarding claim 5, the Ueda '862/Chappell combination does not teach the added 24-32- degree second-groove wall-angle range. Ueda '540 teaches a higher-loft groove-wall inclination of 23-37 degrees ([0083]). That disclosed range overlaps the claimed 24-32-degree range; for example, 28 degrees lies within both ranges and remains smaller than the selected 30-degree Chappell first tangent angle.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to select a 28-degree higher-loft wall angle because it lies within Ueda '540's expressly disclosed operative range, preserves Ueda '540's known higher-loft/smaller-angle relationship, and predictably performs the same ball-engagement/backspin function. See In re Peterson; In re Aller; MPEP § 2144.05.
Regarding claim 6, Ueda '862 and Ueda '540 do not teach the added 0.010-0.030-inch radius of the first groove's bottom wall. Chappell teaches a circular D-groove radius from 0.008 inch to 0.026 inch, including 0.020 inch ([0042]). The disclosed range overlaps the claimed range, and 0.020 inch lies squarely within both.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to select a 0.020-inch bottom-wall radius when implementing Chappell's circular groove because it is an expressly disclosed operative radius, Chappell recognizes radius as a groove-design variable affecting spin ([0047]), and using a value within the overlapping known and claimed ranges would predictably perform the same circular-groove function. See In re Peterson; In re Aller; MPEP § 2144.05.
Regarding claim 10, Ueda '862 in view of Chappell and Ueda '540 does not, without selecting compatible disclosed dimensions, expressly establish the added second-groove-depth-greater-than-first-groove-depth relationship together with claim 3's angle relationship. Chappell teaches the 0.010-inch circular first-groove depth ([0042]). Ueda '862 teaches a 32-degree groove depth of 0.38 mm, approximately 0.01496 inch, and expressly teaches increasing groove depth for higher-loft groups ([0020]-[0021]; [0153], Table 8). Ueda '540 supplies the higher-loft/smaller-wall-angle technique as discussed for claim 3.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to combine the known loft-dependent wall-angle technique with the known depth progression and the circular first groove because each claimed element was known, the angle and depth parameters perform their ordinary groove-engagement/spin functions, conventional groove-machining methods permit the parameters to be used together, and nothing in the references indicates an incompatibility. The selected 0.010-inch first depth and 0.01496-inch second depth predictably produce the claimed depth relationship while the selected angles produce the claim 3 relationship. The combination therefore yields no more than the predictable result of co-tuning known groove parameters by loft. See KSR; MPEP § 2143(I)(A).
Claims 12 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Ueda '862 in view of Chappell.
Regarding claim 12, Ueda '862 teaches the subject matter of independent claim 11 but does not teach the added first-head groove in which a bottom wall extends to opposed face-side edges and the groove is symmetric about a plane equidistant from those edges. Ueda '862 instead uses a groove bottom between paired sidewalls ([0069]). Chappell teaches the missing first-head circular groove as discussed for claim 1: a D-type groove formed by a circular/elliptical/arc portion whose opposite ends connect to the club face ([0042]). Ueda '862 itself teaches the additional second-and third-groove sidewall, bottom-wall, face-edge, and symmetry structures ([0069], [0071]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to substitute Chappell's known circular D groove for the low-loft first groove of Ueda '862's three-profile set while retaining Ueda '862's conventional middle-and high-loft grooves. Chappell applies its groove forms to irons and expressly permits combining different groove types ([0028], [0047]); the substituted and retained grooves perform the same known spin-control functions; and conventional groove machining would allow the substitution with predictable results. See KSR; In re Fout; MPEP § 2143(I)(B).
Regarding claim 16, Ueda '862 in view of Chappell does not expressly state the claimed two depth comparisons after the first groove is replaced by Chappell's circular groove. Chappell teaches a 0.010-inch first-groove depth ([0042]). Ueda '862 teaches a 28-degree middle-head groove depth of 0.38 mm, approximately 0.01496 inch, and a 41-degree high-head groove depth of 0.43 mm, approximately 0.01693 inch ([0153], Table 8). Both are greater than the selected 0.010-inch first-groove depth.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to use those known depths because Ueda '862 expressly varies groove depth by loft for spin control and Chappell expressly permits the selected 0.010-inch circular groove depth. A skilled designer could select the disclosed values using ordinary machining, and the predictable result is that both the middle-and high-loft grooves are deeper than the low-loft first groove. See KSR; In re Peterson; MPEP §§ 2143(I)(D), 2144.05.
Regarding claim 17, the Ueda '862/Chappell combination does not expressly recite the 'three claimed depth ranges as a single textual range set. Chappell expressly permits a first circular-groove depth of 0.010 inch ([0042]), which lies within the claimed 0.006-0.010-inch first range. Ueda '862's 0.38-mm middle depth is approximately 0.01496 inch, within the claimed 0.012-0.019-inch second range, and its 0.43-mm high depth is approximately 0.01693 inch, within the claimed 0.015-0.020-inch third range ([0153], Table 8).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to use those expressly disclosed operative dimensions when implementing the claim 16 depth progression because each value is already used for the same groove-depth function and each falls within the corresponding claimed range. Selecting the known values is routine optimization/selection of known result-effective groove dimensions and predictably yields the claimed three-range progression. See In re Peterson; In re Aller; MPEP § 2144.05.
Regarding claim 18, Ueda '862 does not teach the added 0.010-0.030-inch bottom-wall radius of the first circular groove. Chappell teaches a circular D-groove radius from 0.008 inch to 0.026 inch, including 0.020 inch ([0042]). The disclosed range overlaps the claimed range.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to select Chappell's 0.020-inch radius when making the claim 12 circular-groove substitution because it is a known operative radius within the overlapping range and performs the same recognized circular-groove/spin-control function. See In re Peterson; In re Aller; MPEP § 2144.05.
Claims 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Ueda '862 in view of Chappell and Ueda '540.
Regarding claim 13, Ueda '862 in view of Chappell does not teach the added wall-angle ordering requiring the third, highest-loft groove angle to be smaller than both the first low-loft tangent angle and the second middle-loft sidewall angle.
Chappell's selected circular geometry provides a 30-degree first tangent angle as explained for claim 3. Veda '540 teaches a lower-loft groove-wall inclination of 28-42 degrees ([0082]) and a higher-loft groove-wall inclination of 23-37 degrees selected to be smaller than the lower-loft angle ([0083]). Selecting a 30-degree second-groove angle from Ueda '540's lower-loft range and a 23-degree third-groove angle from its higher-loft range yields a third angle smaller than both the 30-degree Chappell first angle and the 30-degree second angle.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to apply Ueda '540's known higher-loft/smaller-wall-angle technique between the middle-and high-loft heads of the Ueda '862/Chappell three-profile set. The base device is a progressive iron set already varying groove geometry by loft; Ueda '540 is a comparable iron-groove system improved by reducing wall angle with increased loft; Ueda '540 links the technique to predictable ball/groove catch and backspin behavior ([0084]-[0102]); and a designer of ordinary skill could apply the same technique to the base set using known groove-machining methods. The predictable result is the claimed third-angle ordering, while the first circular groove retains its known tangent geometry. The references reflect the pertinent level of ordinary skill, and no objective evidence directed to the modification is presently of record. See KSR; Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th at 1380-81; MPEP § 2143(I)(C).
Regarding claim 14, Ueda '862 in view of Chappell and Ueda '540 does not expressly require both the first and second wall angles to lie within 30-45 degrees. Chappell's selected circular geometry provides a 30-degree first tangent angle. Ueda '540's lower-loft groove-wall range is 28-42 degrees ([0082]), which overlaps the claimed 30-45-degree second-angle range. Selecting 30 degrees for the second angle therefore places both first and second angles within the claimed range while preserving the 23-degree third angle used for claim 13.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to select the disclosed 30-degree values because both are known operative settings, Ueda '540 recognizes wall angle as a spin-affecting parameter, and the selected values preserve the known higher-loft/smaller-angle progression. The numerical choices are routine selections from known operative ranges with predictable groove behavior. See In re Peterson; In re Aller; MPEP § 2144.05.
Regarding claim 15, Ueda '862 in view of Chappell does not teach the added 16-24-degree third-groove wall-angle range. Ueda '540 teaches the higher-loft groove-wall inclination range of 23-37 degrees ([0083]). That range overlaps the claimed range at 23-24 degrees. Selecting 23 degrees additionally preserves the claim 13 relationship in which the third angle is smaller than the selected 30-degree first and second angles.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to select the expressly disclosed 23-degree higher-loft value because it falls within the overlapping known and claimed ranges, preserves the known smaller-higher-loft angle relationship, and predictably performs the same ball-engagement/spin function. See In re Peterson; In re Aller; MPEP § 2144.05.
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Ueda '862 in view of Chappell, Ines et al. (US 20160287951 A1, “Ines”), and Ripp et al. (US 20210339089 A1, “Ripp”).
Regarding claim 19, Ueda '862 in view of Chappell does not teach the added relationship in which the edge radius of the second, middle-loft groove is smaller than the edge radius of the third, higher-loft groove. Ueda '862 teaches curved face-side corners by a circular arc ([0071]) but does not differentiate those edge radii in the claimed direction.
Ines teaches that groove edge radius is a spin-control variable: “a small edge radius R results in higher spin than a large edge radius R,” and edge radius may vary through an iron set ([0051]). Ines also expressly identifies a player-specific design objective in which more spin is desired in longer irons and less spin in short irons to avoid ballooning ([0045]). However, Ines's separately described numerical edge-radius progression embodiments generally decrease radius as loft increases ([0051]-[0053]) and therefore do not disclose the claimed second-radius-less-than-third-radius ordering.
Ripp teaches the remaining directional design principle for a less-spin club. Ripp teaches that sharpening an edge toward about 0.010-inch increases spin, while “if a particular club head ... is intended to impart less spin ... the effective radius r may be increased toward the 0.51 mm (0.020 inch) limit” ([0085]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to vary Ueda '862's middle-and high-loft curved edge radii so that the higher-loft third groove has the larger radius when implementing Ines's expressly identified objective of reducing short-iron spin to avoid ballooning. The base device is Ueda '862's progressive iron set; the design incentive is Ines's express less-spin short- iron objective; the known variation is the edge-radius/spin relationship taught by Ines and independently confirmed by Ripp; a golf-club designer of ordinary skill could implement different radii using ordinary groove machining; and the predictable result is reduced spin from the larger-radius higher-loft groove. Ines's disclosure of alternative radius progressions does not teach away because it does not criticize, discredit, or discourage the larger-radius/less-spin alternative; rather, Ines expressly identifies different player-specific spin objectives. See KSR; In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004); MPEP § 2143(I)(F); MPEP § 2145(I)(D).
Regarding claim 20, the Ueda '862/Chappell/Ines/Ripp combination as applied to claim 19 does not expressly require both numerical edge-radius ranges recited in claim 20. Ines teaches mid-iron edge radii from 0.005 inch to 0.007 inch ([0052]); selecting 0.006 inch lies within instant claim 20's 0.0025-0.0075-inch second-groove range. Ripp teaches effective edge radii preferably from 0.009 inch to 0.021 inch and explains that increasing radius is appropriate where less spin is desired ([0085]); selecting 0.009 inch lies within instant claim 20's 0.005-0.010-inch third-groove range and is larger than 0.006 inch.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to select the 0.006-inch and 0.009-inch values when carrying out the claim 19 spin-tailoring modification because both values are within known operative ranges, edge radius is expressly recognized as a result-effective spin variable, and the selections implement the same design incentive with predictable results. The numerical choices therefore amount to routine selection/optimization of a known result-effective variable rather than a new operating principle. See In re Peterson; In re Aller; MPEP § 2144.05.
Conclusion
The prior art made of record and not relied upon is considered pertinent to
applicant's disclosure. The following references are pertinent for the indicated reasons:
Chen et al. (US 20100292025 A1) -teaches golf-club grooves having opposed curved side surfaces and groove width increasing from the bottom surface toward the striking face, pertinent to the claimed groove geometry.
Greaney et al. (US 20130190102 A1) -teaches golf-club-face scoreline arrangements and dimensions pertinent to groove and scoreline design.
Park et al. (US 7780549 B2) -teaches an iron-type golf club head having a strike face with score lines, pertinent to the claimed iron-face groove environment.
Cackett et al. (US 20110165963 A1) -teaches golf-club groove-edge radii in ranges pertinent to the claimed edge-radius limitations.
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ANDREW JAMES ELLIOTT
Examiner
Art Unit 3711
/ANDREW JAMES ELLIOTT/Examiner, Art Unit 3711
/EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711
