DETAILED ACTION
This Office action is responsive to communication received 08/20/2025 – application papers received, including IDS and Power of Attorney; 03/05/2026 – Petition to Make Special (applicant’s age).
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 .
Continuation Data
This application is a CON of 19/227,663 06/04/2025 PAT 12420152 which is a CON of 19/093,449 03/28/2025 PAT 12350559 which claims benefit of 63/687,070 08/26/2024 and is a CIP of 19/064,989 02/27/2025 PAT 12377325 which claims benefit of 63/678,703 08/02/2024 and is a CIP of 18/953,266 11/20/2024 PAT 12257485 which is a CON of 18/903,190 10/01/2024 PAT 12194351 which claims benefit of 63/655,229 06/03/2024 and is a CIP of 18/613,386 03/22/2024 PAT 12109464 which is a CIP of 18/442,782 02/15/2024 PAT 12005328 which is a CON of 18/526,106 12/01/2023 PAT 11938385 which claims benefit of 63/461,491 04/24/2023 and is a CIP of 18/205,019 06/02/2023 PAT 11833398 which is a CON of 18/115,222 02/28/2023 PAT 11707655 which claims benefit of 63/389,561 07/15/2022 and claims benefit of 63/443,494 02/06/2023.
Drawings
The drawings were received on 08/20/2025. These drawings are acceptable.
Status of Claims
Claims 1-20 are pending.
Decision on Petition
The petition under 37 CFR 1.102(c), received 03/05/2026, has been GRANTED. See the decision, mailed 04/16/2026.
Priority
A review of the domestic applications for which a benefit is claimed indicates that instant claims 1-20 are to be accorded an effective filing date of the filing date of parent application United States Application Serial Number 19/093,449, filed 03/28/2025.
FOLLOWING IS AN ACTION ON THE MERITS:
Double Patenting
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.
Claims 1-7 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,420,152 in view of US PUBS 2019/0160347 to Jertson et al (hereinafter referred to as “Jertson”).
As to independent claim 1 and dependent claim 16, the claimed invention of the ‘152 patent does not require that “the maximum cavity width is greater than or equal to 0.4 inch (10.16 mm) and less than or equal to 0.9 inch (22.86 mm)”. Here, Jertson shows that the interior cavity of a hollow body club head may include a maximum cavity width of between 0.40 inch and 0.70 inch (i.e., paragraph [0380] and width 6095 shown in FIG. 60). The size of the interior cavity adds to the control of sizing the overall interior volume of the hollow body club head, which in turn controls how much polymer material may be introduced within the hollow body (i.e., see paragraphs [0398] – [0387]). In view of the teaching in Jertson, 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 claimed invention of the ‘152 patent by including a maximum cavity width greater than or equal to 0.4 inch and less than or equal to 0.9 inch, with there being a reasonable expectation of success that the sizing of the cavity to include a maximum width would have enabled the skilled artisan to design the volume of the hollow body to accommodate a predetermined amount of polymer filling, which would have in turn changed the mass and the swing weight of the club head to improve ‘feel’ during a swing and improve overall clubhead performance. As to the remaining limitations in the claims, note the following comments:
As to claim 1, also see claim 1 of the ‘152 patent.
As to claim 2, see claim 3 of the ‘152 patent.
As to claim 3, see claim 4 of the ‘152 patent.
As to claim 4, see claim 6 of the ‘152 patent.
As to claims 5-6, see claims 14 and 19 of the ‘152 patent.
As to claim 7, see claim 5 of the ‘152 patent.
Claims 8-15 and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,420,152.
Although the claims at issue are not identical, they are not patentably distinct from each other because the differences are considered minor phrasing differences or differences in the arrangement of phrases within the claims and/or represent obvious variations over the prior patent.
As to claim 8, see claims 1 and 9 of the ‘152 patent.
As to claim 9, see claim 2 of the ‘152 patent.
As to claims 10 and 19, see claim 4, 9 and 16 of the ‘152 patent. Selection of an appropriate material (i.e., comprising metallic or non-metallic material(s)) for the filler of the claimed invention in the ‘152 patent would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention and based upon the desired sound and vibration absorption requirements and/or weighting requirements for the club head. See MPEP 2144.07: The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.) See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (Claimed agricultural bagging machine, which differed from a prior art machine only in that the brake means were hydraulically operated rather than mechanically operated, was held to be obvious over the prior art machine in view of references which disclosed hydraulic brakes for performing the same function, albeit in a different environment.).
As to claim 11, see claim 15 of the ‘152 patent.
As to claim 12, see claims 14 and 19 of the ‘152 patent.
As to claim 13, see claim 6 of the ‘152 patent.
As to claim 14, see claim 1 of the ‘152 patent.
As to claim 15, see claim 16 of the ‘152 patent.
As to claim 17, see claim 17 of the ‘152 patent.
As to claim 18, see at least claim 19 of the ‘152 patent.
As to claim 20, see claim 6 of the ‘152 patent.
Claim Rejections - 35 USC § 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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2023/0201680 to Parsons et al (hereinafter referred to as “Parsons (‘680)”) in view of USPN 11,400,352 to Parsons et al (hereinafter referred to as “Parsons (‘352)”) and also in view of US PUBS 2019/0160347 to Jertson et al (hereinafter referred to as “Jertson”).
As to claim 1, see annotated FIGS. 103 and 107, presented below:
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Parsons (‘680) shows a golf club head (8800; FIGS. 103-110) comprising: a hollow body portion (FIGS. 107-109) comprising a toe portion with a toe portion edge, a heel portion with a heel portion edge, a front portion including a face portion (8862), a back portion with a back wall portion, a top portion with a top portion edge, a sole portion with a sole portion edge, and an interior cavity (8910) having a maximum cavity width (9410); a body mass portion (8845) integral with the hollow body portion (FIGS. 100-101 and 103) and located at or proximate to the toe portion edge, the body mass portion comprising a cavity portion having an opening to the interior cavity; a first mass portion coupled to the hollow body portion at or proximate to the toe portion edge (i.e., first port 9021 may include a first mass portion; paragraph [0157]); a third mass portion (9646) in the cavity portion, the third mass portion (9646) having a shape different from the first mass portion (i.e., FIGS. 104-106 show a shape for the third mass portion which is different from the generally cylindrically-shaped first mass portion); and a filler material (9312; paragraph [0171]) in at least a portion of the interior cavity (8910), wherein the maximum cavity width is proximate to the sole portion edge and at or proximate to the body mass portion.
Parsons (‘680) differs from the claimed invention in that Parsons (’680) does not explicitly disclose “a second mass portion coupled to the hollow body portion at or proximate to the heel portion edge”. Parsons (‘352) teaches that a first mass portion may be coupled to a hollow body portion at or proximate to the toe portion edge while also providing a second mass portion coupled to the hollow body portion at or proximate to the heel portion edge in order to adjust the moment of inertia and center of gravity of the golf club head (i.e., see FIG. 23 and mass portion (2321) adjacent the toe portion edge and mass portion (2340) adjacent the heel portion edge; and see col. 20, line 45 through col. 22, line 38). In view of the teaching in Parsons (‘352), 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 Parsons (‘680) by further including a second mass portion coupled to the hollow body portion at or proximate the heel portion edge, with there being a reasonable expectation of success that arranging mass portions at both the heel and toe portion edges would have enabled the skilled artisan to more precisely distribute the mass of the club head and/or provide enhanced mass at either or both of locations adjacent the heel and toe portion edges in order to alter the location of the center of gravity of the club head and to affect the moment of inertia of the club head for improved club head performance. With the arrangement of a second mass portion, as provided by the modification of Parsons (‘680) using the teachings from Parsons (‘352), the third mass portion in Parsons (‘680) would have included a shape different from the shape of the second mass portion (i.e., FIGS. 104-106 show a shape for the third mass portion which is different from the generally cylindrically-shaped second mass portion provided by the Parsons (‘352) teaching).
Parsons (‘680) also differs from the claimed invention in that Parsons (’680) does not explicitly disclose “and wherein the maximum cavity width is greater than or equal to 0.4 inch (10.16 mm) and less than or equal to 0.9 inch (22.86 mm)”. Parsons (‘680) implies that a maximum cavity width is to be incorporated within the club head by noting that the club head may include a largest volume to accommodate a larger volume of filler material for enhanced sound and vibration dampening and feel (i.e., see paragraph [0168]). Here, Jertson shows that the interior cavity of a hollow body club head may include a maximum cavity width of between 0.40 inch and 0.70 inch (i.e., paragraph [0380] and width 6095 shown in FIG. 60). The size of the interior cavity adds to the control of sizing the overall interior volume of the hollow body club head, which in turn controls how much polymer material may be introduced within the hollow body (i.e., see paragraphs [0398] – [0387]). In view of the teaching in Jertson, 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 Parsons (‘680) by including a maximum cavity width greater than or equal to 0.4 inch and less than or equal to 0.9 inch, with there being a reasonable expectation of success that the sizing of the cavity to include a maximum width would have enabled the skilled artisan to design the volume of the hollow body to accommodate a predetermined amount of polymer filling, which would have in turn changed the mass and the swing weight of the club head to improve ‘feel’ during a swing and improve overall clubhead performance.
As to claim 2, the third mass portion in Parsons (‘680) is sized and shaped to provide a greater mass than the first mass portion, and a greater mass than the second mass portion in order to locate the center of gravity of the club head lower and more adjacent to the toe portion edge (i.e., paragraphs [0164] – [0170]).
As to claim 3, the filler material in Parsons (‘680) comprises a lower density than a material of the hollow body portion (i.e., paragraphs [0039] and [0171]).
As to claim 4, the third mass portion in Parsons (‘680) is below a horizontal midplane of the hollow body portion (i.e., paragraph [0165]).
As to claim 5, at least a portion of the third mass portion in Parsons (‘680) has a curvature similar to a curvature of the hollow body portion at or proximate to the toe portion edge (i.e., see FIGS. 103-106; paragraphs [0164] – [0166]).
As to claim 6, at least a portion of the third mass portion in Parsons (‘680) has a curvature similar to a curvature of the hollow body portion at or proximate to the sole portion edge (i.e., see FIGS. 103-106; paragraphs [0164] – [0166]).
As to claim 7, a portion of the back wall portion in Parsons (‘680) comprises information associated with the golf club head (i.e., paragraph [0181]).
Claims 8-15 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2023/0201680 to Parsons et al (hereinafter referred to as “Parsons (‘680)”) in view of USPN 11,400,352 to Parsons et al (hereinafter referred to as “Parsons (‘352)”).
Reference is made to annotated FIGS. 103 and 107, presented below:
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As to claim 8, Parsons (‘680) shows a golf club head (8800; FIGS. 103-110) comprising: a hollow body portion (FIGS. 107-109) comprising an interior cavity (8910), a toe portion with a toe portion edge, a heel portion with a heel portion edge, a front portion, a back portion with a back wall portion, a top portion with a top portion edge, and a sole portion with a sole portion edge; a face portion (8862) coupled to the front portion; a first port (9021) on the back wall portion; a body mass portion (8845) integral with the hollow body portion and located at or proximate to the toe portion edge, the body mass portion (8845) comprising a cavity portion having a third port and an opening to the interior cavity (8910); and a first mass portion in the first port (i.e., first port 9021 may include a first mass portion; paragraph [0157]); a third mass portion (9646) in the third port, the third mass portion (9646) having a shape different from the first mass portion (i.e., FIGS. 104-106 show a shape for the third mass portion which is different from the generally cylindrically-shaped first mass portion); and a filler material (9312; paragraph [0171]) in at least a portion of the interior cavity (8910).
Parsons (‘680), while appearing to show a second port and a second mass portion within the second port, does not explicitly show the combination of a second port on the back wall portion and having a second mass portion “wherein a distance between the first port and the second port is greater than 50% of a distance between the toe portion edge and the heel portion edge”. Parsons (‘352) teaches that a first mass portion may be coupled to a hollow body portion at or proximate to the toe portion edge while also providing a second mass portion coupled to the hollow body portion at or proximate to the heel portion edge in order to adjust the moment of inertia and center of gravity of the golf club head (i.e., see FIG. 23 and mass portion (2321) adjacent the toe portion edge and mass portion (2340) adjacent the heel portion edge; and see col. 20, line 45 through col. 22, line 38). With the arrangement in Parsons (‘352), a distance between the first port and the second port identified herein is greater than 50% of a distance between the toe portion edge and the heel portion edge. In view of the teaching in Parsons (‘352), 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 Parsons (‘680) by further including a second mass portion coupled to the hollow body portion at or proximate the heel portion edge, and arranged such that a distance between the first port and the second port is greater than 50% of a distance between the toe portion edge and the heel portion edge,
with there being a reasonable expectation of success that arranging mass portions at both the heel and toe portion edges would have enabled the skilled artisan to more precisely distribute the mass of the club head and/or provide enhanced mass at either or both of locations adjacent the heel and toe portion edges in order to alter the location of the center of gravity of the club head and to affect the moment of inertia of the club head for improved club head performance. With the arrangement of a second mass portion, as provided by the modification of Parsons (‘680) using the teachings from Parsons (‘352), the third mass portion in Parsons (‘680) would have included a shape different from the shape of the second mass portion (i.e., FIGS. 104-106 show a shape for the third mass portion which is different from the generally cylindrically-shaped second mass portion provided by the Parsons (‘352) teaching).
As to claim 9, the first port (9021) in Parsons (‘680) a cylindrical port (FIG. 102). Addedly, the second port obtained through the modification of Parsons (‘680) using Parsons (‘352) is contained within port (2242; FIG. 24) in Parsons (‘352) and is shown to be a cylindrical port.
As to claim 10, the filler material in Parsons (‘680) comprises a non-metallic material (i.e., paragraphs [0039] and [0171]).
As to claim 11, a badge is coupled to the back wall portion in Parsons (‘680), wherein the badge is configured to display information associated with the golf club head (i.e., paragraph [0181]).
As to claim 12, at least a portion of the third mass portion in Parsons (‘680) has a curvature similar to a curvature of the hollow body portion at or proximate to a region between the toe portion edge and the sole portion edge (i.e., see FIGS. 103-106; paragraphs [0164] – [0166]).
As to claim 13, the third port in Parsons (‘680) is below a horizontal midplane of the hollow body portion. (i.e., paragraph [0165]).
As to claim 14, Parsons (‘680) shows it to be obvious to include multiple ports within which a mass portion may be situated, and wherein the mass portions may be interchangeably fitted within first and second ports (i.e., see paragraph [0054]).
As to claim 15, Parsons (‘680) shows a golf club (200; FIG. 1) comprising: a shaft (104) having a first end portion and a second end portion; a grip (106) coupled to the first end portion; and a golf club head (210) coupled to the second end portion, the golf club head (8800; FIGS. 103-110) comprising: a hollow body portion (FIGS. 107-109) comprising a toe portion with a toe portion edge, a heel portion with a heel portion edge, a front portion including a face portion, a back portion with a back wall portion, a top portion with a top portion edge, a sole portion with a sole portion edge, and an interior cavity (8910) having a maximum cavity width (9410); a body mass portion (8845) integral with the hollow body portion and located at or proximate to the toe portion edge, the body mass portion (8845) comprising a cavity portion having an opening to the interior cavity (8910); a first mass portion coupled to the hollow body portion (i.e., first port 9021 may include a first mass portion; paragraph [0157]); a third mass portion (9646) coupled to the cavity portion, the third mass portion (9646) having a shape different from the first mass portion (i.e., FIGS. 104-106 show a shape for the third mass portion which is different from the generally cylindrically-shaped first mass portion); a filler material (9312; paragraph [0171]) in at least a portion of the interior cavity (8910), wherein the maximum cavity width is proximate to the sole portion edge and at or proximate to the body mass portion.
Parsons (‘680), while appearing to show a second port and a second mass portion within the second port, does not explicitly show the combination of “a second mass portion coupled to the hollow body portion at a location between the first mass portion and the heel portion edge”, and “wherein a distance between the first mass portion and the second mass portion is greater than 50% of a distance between the toe portion edge and the heel portion edge”. Parsons (‘352) teaches that a first mass portion may be coupled to a hollow body portion at or proximate to the toe portion edge while also providing a second mass portion coupled to the hollow body portion at or proximate to the heel portion edge in order to adjust the moment of inertia and center of gravity of the golf club head (i.e., see FIG. 23 and mass portion (2321) adjacent the toe portion edge and mass portion (2340) adjacent the heel portion edge; and see col. 20, line 45 through col. 22, line 38). With the arrangement in Parsons (‘352), a distance between the first mass portion and the second mass portion identified herein is greater than 50% of a distance between the toe portion edge and the heel portion edge. In view of the teaching in Parsons (‘352), 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 Parsons (‘680) by further including a second mass portion coupled to the hollow body portion at or proximate the heel portion edge, and arranged such that a distance between the first mass portion and the second mass portion is greater than 50% of a distance between the toe portion edge and the heel portion edge, with there being a reasonable expectation of success that arranging mass portions at both the heel and toe portion edges would have enabled the skilled artisan to more precisely distribute the mass of the club head and/or provide enhanced mass at either or both of locations adjacent the heel and toe portion edges in order to alter the location of the center of gravity of the club head and to affect the moment of inertia of the club head for improved club head performance. With the arrangement of a second mass portion, as provided by the modification of Parsons (‘680) using the teachings from Parsons (‘352), the third mass portion in Parsons (‘680) would have included a shape different from the shape of the second mass portion (i.e., FIGS. 104-106 show a shape for the third mass portion which is different from the generally cylindrically-shaped second mass portion provided by the Parsons (‘352) teaching).
As to claim 17, a badge is coupled to the back wall portion in Parsons (‘680), wherein the badge is configured to display information associated with the golf club head (i.e., paragraph [0181]).
As to claim 18, at least a portion of the third mass portion in Parsons (‘680) has a curvature similar to a curvature of the hollow body portion at or proximate to a region between the toe portion edge and the sole portion edge (i.e., see FIGS. 103-106; paragraphs [0164] – [0166]).
As to claim 19, the filler material in Parsons (‘680) comprises a non-metallic material (i.e., paragraphs [0039] and [0171]).
As to claim 20, the cavity portion of the body mass portion in Parsons (‘680) is below a horizontal midplane of the hollow body portion (i.e., paragraph [0165]).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2023/0201680 to Parsons et al (hereinafter referred to as “Parsons (‘680)”) in view of USPN 11,400,352 to Parsons et al (hereinafter referred to as “Parsons (‘352)”) and also in view of US PUBS 2019/0160347 to Jertson et al (hereinafter referred to as “Jertson”).
As to claim 16, Parsons (‘680) does not show that “the maximum cavity width is greater than or equal to 0.4 inch (10.16 mm) and less than or equal to 0.9 inch (22.86 mm)”. Parsons (‘680) implies that a maximum cavity width is to be incorporated within the club head by noting that the club head may include a largest volume to accommodate a larger volume of filler material for enhanced sound and vibration dampening and feel (i.e., see paragraph [0168]). Here, Jertson shows that the interior cavity of a hollow body club head may include a maximum cavity width of between 0.40 inch and 0.70 inch (i.e., paragraph [0380] and width 6095 shown in FIG. 60). The size of the interior cavity adds to the control of sizing the overall interior volume of the hollow body club head, which in turn controls how much polymer material may be introduced within the hollow body (i.e., see paragraphs [0398] – [0387]). In view of the teaching in Jertson, 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 Parsons (‘680) by including a maximum cavity width greater than or equal to 0.4 inch and less than or equal to 0.9 inch, with there being a reasonable expectation of success that the sizing of the cavity to include a maximum width would have enabled the skilled artisan to design the volume of the hollow body to accommodate a predetermined amount of polymer filling, which would have in turn changed the mass and the swing weight of the club head to improve ‘feel’ during a swing and improve overall clubhead performance.
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.
Claim 7 is 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.
It is not clear what the term “information” is referring to. Is this referring to visible indicia physically included on the back wall portion?
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Fig. 5 in Greer;
Fig. 3 in Hill;
Fig. 1 in Clarke;
Fig. 2 in Hebreo (‘762);
Figs. 9-10 in Ritchie (‘917);
Figs. 12-13 in Ritchie (‘413);
Fig. 6 in Hebreo (‘370); and
Fig. 7 in Takeda.
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Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711
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