DETAILED ACTION
This Office action is responsive to communication received 04/27/2026 – Election.
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 .
Election/Restrictions
Applicant’s election of Species II in the reply filed on 04/27/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
In the remarks received with the 04/27/2026 election of species, the applicant argues that claims 1-2 and 3-22 read on Species II. This election is interpreted as applicant having indicated that claims 1-22 read on Species I. However, the applicant further states that “Notably, the first member of FIGS. 1-3 also forms a part of each of Species II-V”.
After further review, it would appear that claim 3 is not directed to Species II. Here, claim 3 appears to be directed to the specific species illustrated in FIGS. 8-9. According to MPEP 821, “[A]ll claims that the examiner finds are not directed to the elected invention are withdrawn from further consideration by the examiner in accordance with 37 CFR 1.142(b).” Thus, claim 3 will not be treated on the merits at this time. At the same time, it is not understood why the applicant has neglected to include claim 23 as part of the claim set that reads on Species II. It would appear that a threaded member is a part of each of the embodiments identified in Species II-IV. Claim 23 merely stipulates that the threaded member is a screw, but has no bearing on distinguishing the at least one second member of the various species disclosed. Thus claim 23 will be examined along with claims 1-2 and 4-22.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
Status of Claims
Claims 1-23 remain pending.
Claim 3 has been withdrawn as being drawn to a non-elected species.
Drawings
The drawings were received on 09/09/2025. These drawings are acceptable.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). No new matter is to be added. Correction of the following is required:
The specification lacks proper antecedent basis for the following language:
Claim 1: a plurality of axially extending teeth that have an outer diameter that is different than an outer diameter of the second anti-rotational member… the second outer diameter being different than the first outer diameter… the third outer diameter being different than the first outer diameter and different than the second outer diameter… the second shape being different than the first shape such that the teeth of the plurality of axially extending teeth of the third anti-rotational member are configured differently than the teeth of the plurality of axially extending teeth of the second anti-rotational member. (emphasis added).
Claim 2: the second shape being different than the first shape such that the teeth of the plurality of axially extending teeth of the third anti-rotational member are configured differently than the teeth of the plurality of axially extending teeth of the second anti-rotational member… the second shape includes a first axial tip facing axially away from the second third anti-rotational member and first and second sides that extend from the first axial tip towards the third anti-rotational member, the first and second sides are substantially parallel to one another; the first shape includes a second axial tip and third and fourth sides that extend from the second axial tip towards the second anti-rotational member, the third and fourth sides are non-parallel to one another and taper away from one another when moving from the second axial tip towards the second anti-rotational member. (emphasis added).
Claim 4: the second outer diameter being different than the first outer diameter. (emphasis added).
Claim 7: axially extending teeth that have an outer diameter that is different than an outer diameter of the head portion of the second member. (emphasis added).
Claim 8: plurality of axially extending teeth that have an outer diameter that is different than an outer diameter of the second anti-rotational member. (emphasis added).
Claim 9: the second outer diameter being different than the first outer diameter… the third outer diameter being different than the first outer diameter and different than the second outer diameter. (emphasis added).
Claim 10: the second shape being different than the first shape… the plurality of axially extending teeth of the third anti-rotational member are configured differently than the teeth of the plurality of axially extending teeth of the second anti-rotational member. (emphasis added).
Claim 17: a plurality of axially extending teeth that have an outer diameter that is different than an outer diameter of the head portion of the second member… a plurality of axially extending teeth that have an outer diameter that is different than an outer diameter of the second anti-rotational member… the second outer diameter being different than the first outer diameter… the third outer diameter being different than the first outer diameter and different than the second outer diameter… the second shape being different than the first shape… the teeth of the plurality of axially extending teeth of the third anti-rotational member are configured differently than the teeth of the plurality of axially extending teeth of the second anti-rotational member. (emphasis added).
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FOLLOWING IS AN ACTION ON THE MERITS:
Claim Objections - Minor
Claim 1 is objected to because of the following informalities:
In line 2, the term “anti-rotation” should perhaps read --anti-rotational--, to provide consistency with further recitations of the term “anti-rotational” used throughout the remainder of the claim set. Appropriate correction is required.
Claim Rejections - 35 U.S.C. § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-2 and 4-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As to claim 1, lines 25-39, the term “different” is used to describe distinctions between various outer diameters associated with the plurality of axially extending teeth of each of the third anti-rotational member and the second anti-rotational member. The term “different” is also used to describe distinctions between a shape of the plurality of axially extending teeth of the third anti-rotational member and the plurality of axially extending teeth of second anti-rotational member. Since the term “different” encompasses such a vast assortment of comparisons, the scope of the claim becomes clouded. It is noted that no specific disclosure or definition of what is meant by “different” in terms of a diameter or shape has been articulated within the specification. Thus, the skilled artisan is at a loss to understand what the claim language intends to encompass.
As to claim 1, lines 34-35, should the phrase “the plurality of axially extending teeth having a first shape” instead read --the plurality of axially extending teeth of the third anti-rotational member having a first shape--?
As to claim 2, lines 2-3, should the phrase “the plurality of axially extending teeth having a first shape” instead read --the plurality of axially extending teeth of the third anti-rotational member having a first shape--?
As to claim 2, lines 4-7, the fact that the first and second shapes are different such that the plurality of axially extending teeth of the third anti-rotational member are configured differently than the plurality of axially extending teeth of the second anti-rotational member leads to confusion in determining exactly which shape(s) the claim seeks to encompass. The plurality of axially extending teeth of each of the third anti-rotational member and the second anti-rotational member may potentially include numerous different shapes and it appears that the claim language seeks to unjustly cover the scope for all such potential changes in shape.
As to claims 4 and 7-10, as was the case for claim 1, the term “different” is used to describe distinctions between various outer diameters associated with the plurality of axially extending teeth of each of the third anti-rotational member and the second anti-rotational member. The term “different” is also used to describe distinctions between a shape of the plurality of axially extending teeth of the third anti-rotational member and the plurality of axially extending teeth of second anti-rotational member. Since the term “different” encompasses such a vast assortment of comparisons, the scope of the claim becomes clouded. It is noted that no specific disclosure or definition of what is meant by “different” in terms of a diameter or shape has been articulated within the specification. Thus, the skilled artisan is at a loss to understand what the claim language intends to encompass.
As to claim 5, this claim shares the indefiniteness of claim 1.
More specific to claim 7, line 4, is “the plurality of axially extending teeth” referring to the plurality of axially extending teeth of the third anti-rotational member or of the second anti-rotational member?
More specific to claim 8, lines 3-4, is “the plurality of axially extending teeth” referring to the plurality of axially extending teeth of the third anti-rotational member or of the second anti-rotational member?
More specific to claim 10, lines 2-3, should the phrase “the plurality of axially extending teeth having a first shape” instead read --the plurality of axially extending teeth of the third anti-rotational member having a first shape--?
As to claim 11, line 6, the phrase “the tapered portion an outer radial surface that reduces” appears to be missing a modifier or other language that describes the relationship between the tapered portion and the outer radial surface.
As to claim 12, line 2, how is “above” supposed to be interpreted? In what orientation or with respect to what plane is the connector being viewed or arranged in order to establish what direction or location is “above”?
As to claims 13-16, these claims share the indefiniteness of claim 1.
As to claim 17, as was the case for claim 1, the term “different” is used to describe distinctions between various outer diameters associated with the plurality of axially extending teeth of each of the third anti-rotational member and the second anti-rotational member. The term “different” is also used to describe distinctions between a shape of the plurality of axially extending teeth of the third anti-rotational member and the plurality of axially extending teeth of second anti-rotational member. Since the term “different” encompasses such a vast assortment of comparisons, the scope of the claim becomes clouded. It is noted that no specific disclosure or definition of what is meant by “different” in terms of a diameter or shape has been articulated within the specification. Thus, the skilled artisan is at a loss to understand what the claim language intends to encompass.
As to claim 17, lines 40-41, should the phrase “the plurality of axially extending teeth having a first shape” instead read --the plurality of axially extending teeth of the third anti-rotational member having a first shape--?
As to claim 18, line 9, how is “above” supposed to be interpreted? In what orientation or with respect to what plane is the connector being viewed or arranged in order to establish what direction or location is “above”?
As to claims 19-21, these claims share the indefiniteness of claim 18.
Claim Rejections - 35 U.S.C. § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 20 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Here, claim 20 requires “wherein an upper most extent of the first member extends axially above an upper most extent of the second member when the first and second members are mated to one another”, when describing the universal connector system. This identical language first appears in independent claim 18, lines 8-10. Thus, dependent claim 20 does not further limit the subject matter of independent claim 18.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-2 and 4-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,415,116 in view of US PUBS 2008/0254908 to Bennett et al (hereinafter referred to as “Bennett (‘908)”) and also in view of USPN 8,235,837 to Bennett et al (hereinafter referred to as “Bennett (‘837)”).
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 minor rearrangements in the presentation of the claim limitations and/or present structure that is obvious and well known in the art.
As to independent claims 1, 17, 18 and 22, as well as dependent claims 4 and 7-10, the claims of the ‘116 patent are, on one hand, more specific than the instant claims, wherein the claims of the ‘116 patent require “a plurality of axially extending teeth that have an outer diameter that is smaller than an outer diameter of the head portion of the second member and the outer diameter of the plurality of axially extending teeth is greater than an outer diameter of the body portion of the second member” along with “wherein the third anti-rotational member of the second member is the plurality of axially extending teeth that have the outer diameter that is smaller than the outer diameter of the head portion of the second member and the outer diameter of the plurality of axially extending teeth is greater than an outer diameter of the body portion of the second member”.
On the other hand, rather than express a comparison between the diameter of the plurality of axially extending teeth of the third anti-rotational member and the diameter of either or both of the head portion and body portion of the second member, the instant claims focus on the use of the term “different” to describe distinctions among various outer diameters associated with the plurality of axially extending teeth of each of the third anti-rotational member and the second anti-rotational member and the diameter of the body portion of the second member. Since the third anti-rotational member is associated with the second member and, more specifically, since the third anti-rotational member is associated with a head portion of the second member, any comparative descriptions relating to the differences or similarities between and among the diameters of the second anti-rotational member, the third anti-rotational member and the second body member are deemed to be obvious variations in the manner of reciting the features of the universal connector.
In addition, and more specific to claims 1, 14-15, 17-18 and 21-23, the claimed invention of the ‘116 patent lacks a “threaded member” and more particularly a threaded member in the form of “a screw”. Bennett (‘908) shows it to be old in the art to matingly retain plural parts of a connector system that is used between the shaft and the head portion using a threaded screw (24), which draws portions a two part hosel (16, 18) closer together as the mating teeth (17, 19) towards one another and provides a secure shaft-connector-head assembly. See FIG. 1 and paragraph [0048] in Bennett (‘908). In addition, see col. 27, line 59 through col. 28, line 61 in Bennett (‘837) for a discussion of the matable engagement between the first member (452) and the second member (451) and with an explanation that the threaded member biases the first and second anti-rotational members towards one another; and wherein the length of the threaded member may be sized to extend into the first member so that an intermediary structure (458) is not required (i.e., col. 28, lines 52-54). In view of the teaching in Bennett (‘908) and Bennett (‘837), 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 ‘116 patent to further include a threaded member, in the shape of a screw, for axially biasing the first and second members to maintain the first and second anti-rotational members in alignment.
More specific to claim 2, absent any recognition or specific criticality associated with the shape of the plurality of axially extending teeth associated with each of the third anti-rotational member and the second anti-rotational member and the further limitations of each of the first axial tip and the second axial tip, the claimed characteristics of the plurality of axially extending teeth is deemed to result from an obvious change in shape. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant).
More specific to claim 5, see claim 2 of the ‘116 patent.
More specific to claim 6, see clam 3 of the ‘116 patent.
More specific to claims 11 and 16, see claims 1 and 18 of the ‘116 patent, and noting the tapered portion.
More specific to claims 12-13 and 19-20, see claims 1 and 18 of the ‘116 patent, noting that the first member is described as comprising a shaft bore, which is arranged at an upper or distal end of the first member and is configured to receive a shaft portion, and wherein the second member comprises structure configured to engage a hosel portion of a club head; thus the first member is aligned “above” an uppermost extent of the second member in an assembled state.
Claims 1-2, 4, 7-10, 12-15 and 17-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11,426,638 in view of US PUBS 2008/0254908 to Bennett et al (hereinafter referred to as “Bennett (‘908)”) and also in view of USPN 8,235,837 to Bennett et al (hereinafter referred to as “Bennett (‘837)”).
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 minor rearrangements in the presentation of the claim limitations and/or present structure that is obvious and well known in the art.
As to independent claims 1, 17, 18 and 22, as well as dependent claims 4 and 7-10, the claims of the ‘638 patent are, on one hand, more specific than the instant claims, wherein the claims of the ‘638 patent require “a plurality of downwardly extending teeth that have an outer diameter that is smaller than an outer diameter of the head portion of the second member and the outer diameter of the plurality of downwardly extending teeth is greater than an outer diameter of the body portion of the second member”.
On the other hand, rather than express a comparison between the diameter of the plurality of axially extending teeth of the third anti-rotational member and the diameter of either or both of the head portion and body portion of the second member, the instant claims focus on the use of the term “different” to describe distinctions among various outer diameters associated with the plurality of axially extending teeth of each of the third anti-rotational member and the second anti-rotational member and the diameter of the body portion of the second member. Since the third anti-rotational member is associated with the second member and, more specifically, since the third anti-rotational member is associated with a head portion of the second member, any comparative descriptions relating to the differences or similarities between and among the diameters of the second anti-rotational member, the third anti-rotational member and the second body member are deemed to be obvious variations in the manner of reciting the features of the universal connector.
More specific to claims 1, 14-15, 17-18 and 21-23, the claimed invention of the ‘638 patent, while discussing a threaded bore, lacks an explicit recitation of a “threaded member” and more particularly a threaded member in the form of “a screw”. Bennett (‘908) shows it to be old in the art to retain plural parts of a connector system that is used between the shaft and the head portion using a threaded screw (24), which draws portions a two part hosel (16, 18) closer together as the mating teeth (17, 19) towards one another and provides a secure shaft-connector-head assembly. See FIG. 1 and paragraph [0048] in Bennett (‘908). In addition, see col. 27, line 59 through col. 28, line 61 in Bennett (‘837) for a discussion of the matable engagement between the first member (452) and the second member (451) and with an explanation that the threaded member biases the first and second anti-rotational members towards one another; and wherein the length of the threaded member may be sized to extend into the first member so that an intermediary structure (458) is not required (i.e., col. 28, lines 52-54). In view of the teaching in Bennett (‘908) and Bennett (‘837), 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 ‘638 patent to further include a threaded member, in the shape of a screw, for axially biasing the first and second members to maintain the first and second anti-rotational members in alignment.
More specific to claim 2, absent any recognition or specific criticality associated with the shape of the plurality of axially extending teeth associated with each of the third anti-rotational member and the second anti-rotational member and the further limitations of each of the first axial tip and the second axial tip, the claimed characteristics of the plurality of axially extending teeth is deemed to result from an obvious change in shape. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant).
More specific to claims 12-13 and 19-20, see claims 1 and 15 of the ‘638 patent, noting that the first member is described as comprising a shaft bore, which is arranged at an upper or distal end of the first member and is configured to receive a shaft portion, and wherein the second member comprises structure configured to engage a hosel portion of a club head; thus the first member is aligned “above” an uppermost extent of the second member in an assembled state.
Claims 11 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11,426,638 in view of US PUBS 2008/0254908 to Bennett et al (hereinafter referred to as “Bennett (‘908)”) and also in view of USPN 8,235,837 to Bennett et al (hereinafter referred to as “Bennett (‘837)) and also in view of US PUBS 2013/0059676 to Boyd et al (hereinafter referred to as “Boyd”).
As to claims 11 and 16, the claimed invention of the ‘638 patent lacks “a tapered portion”. Here, Boyd teaches that a tapered configuration for a shaft adaptor provides a more conventional aesthetic appearance (i.e., paragraphs [0069] and [0083]). In view of the teaching in Boyd, 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 universal connector of the ‘638 patent to include a more tapered configuration to provide a smoother, cleaner outwardly visible appearance that is generally recognized in the golf club art.
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Claims 18-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 9,724,571 in view of US PUBS 2008/0254908 to Bennett et al (hereinafter referred to as “Bennett (‘908)”) and also in view of USPN 8,235,837 to Bennett et al (hereinafter referred to as “Bennett (‘837))
As to independent claims 18 and 22, 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 minor rearrangements in the presentation of the claim limitations and/or present structure that is obvious and well known in the art. See claim 4 (as it depends from claim 1) and see claim 8 (as it depends from claim 5) of the ‘571 patent, noting that the ‘571 patent encompasses the limitations of the third anti-rotational member, namely “a plurality of radially outwardly extending ribs that are axially offset from the head portion of the second member such that the body portion of the second member forms a cylindrical region between the plurality of radially outwardly extending ribs and the head portion of the second member, the cylindrical region having an outer diameter that is smaller than an outer diameter of the head portion of the second member”, as set forth in each of claims 18 and 22.
As to claims 19-20, see claims 1 and 5 of the ‘571 patent.
More specific to independent claims 18 and 22, along with dependent claims 22-23, the claims of the ‘571 patent lack an explicit recitation of a “threaded member” and more particularly a threaded member in the form of “a screw”. Bennett shows it to be old in the art to retain plural parts of a connector system that is used between the shaft and the head portion using a threaded screw (24), which draws portions a two part hosel (16, 18) closer together as the mating teeth (17, 19) towards one another and provides a secure shaft-connector-head assembly. See FIG. 1 and paragraph [0048] in Bennett (‘908). In addition, see col. 27, line 59 through col. 28, line 61 in Bennett (‘837) for a discussion of the matable engagement between the first member (452) and the second member (451) and with an explanation that the threaded member biases the first and second anti-rotational members towards one another; and wherein the length of the threaded member may be sized to extend into the first member so that an intermediary structure (458) is not required (i.e., col. 28, lines 52-54). In view of the teaching in Bennett (‘908) and Bennett (‘837), 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 ‘571 patent to further include a threaded member, in the shape of a screw, for axially biasing the first and second members to maintain the first and second anti-rotational members in alignment.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 18-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by USPN 8,235,837 to Bennett et al (hereinafter referred to as “Bennett”).
As to independent claim 18, Bennett shows a universal connector (450: FIG. 56) and includes a first member (452) and at least one second member (451). Each one of the first member (452) and the second member (451) is separately formed as a single piece. The first member (452) includes a first anti-rotational member in the form of a plurality of axially facing teeth (i.e., tangs 464) while the second member (451) comprises a second anti-rotational member in the form of a plurality of axially facing teeth formed by the cutouts (465), wherein the second member (451) is matable with the first member (452); the second member (451) further including a third anti-rotational member (467) in the form of a plurality of radially outwardly facing facets (i.e., tangs 467) that are radially outward facing flat faces formed at the interface between the head portion and the body portion of the second member; the first and second anti-rotational members axially and angularly engageable with one another to prevent relative rotation of the first member (452) relative to the second member (451) about a longitudinal axis of the connector, the first and second anti-rotational members form a mating interface which is exposed on an exterior radially outer facing surface of the connector, the third anti-rotational member configured to mate with the golf club head anti-rotational member (470) of the golf club head (453) to prevent relative rotation of the second member relative to the golf club head, the third anti-rotational member axially offset from the second anti-rotational member (i.e., tangs 457 are offset from the teeth or cutouts 465); and a threaded member (459) axially biasing the first member into the second member maintaining the first anti-rotational member in axial engagement with the second anti-rotational member. See col. 27, line 59 through col. 28, line 61 for a discussion of the matable engagement between the first member (452) and the second member (451) and with an explanation that the threaded member biases the first and second anti-rotational members towards one another; and wherein the length of the threaded member may be sized to extend into the first member so that an intermediary structure (458) is not required (i.e., col. 28, lines 52-54). As noted herein, the arrangement of the tangs (457) meets the claim requirement that “the third anti-rotational member being selected from the group consisting of”, wherein at least one of the further listed claimed limitations in the grouping of limitations for the third anti-rotational member specifically consists of a plurality of radially outwardly facing facets that are radially outward facing flat faces formed at the interface between the head portion and the body portion of the second member.
As to claims 19-20, see FIG. 56; wherein a first end of the first member (452) defines an upper most axial extent of the universal connector system and wherein an upper most extent of the first member (452) extends axially above an upper most extent of the second member (451) when the first and second members are mated to one another.
As to claim 21, again, see screw (459) and col. 27, line 59 through col. 28, line 61 for a discussion of the matable engagement between the first member (452) and the second member (451) and with an explanation that the threaded member biases the first and second anti-rotational members towards one another.
Claims 22-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Boyd et al (US PUBS 2013/0059676, hereinafter referred to as “Boyd”).
As to claim 22, see FIG. 2 showing a connector for a golf club head (102), comprising a first member (200) having a first anti-rotational member (212a, 212a1, 212a2; paragraphs [0067], [0068] and Figs. 3A, 3B); at least one second member (300) configured for mating with the golf club (102), as shown in Fig. 2, and having a second anti-rotational feature (312; Fig. 8A); the at least one second member (300) including a head portion (i.e., first end 304), a body portion (i.e., generally labeled 302) and a third anti-rotational member (322a, 322a1, 322a2; paragraph [0080]; with the head portion (304), the body portion (302) and the third anti-rotational member (322a, 322a1, 322a2) formed as a single piece with the second anti-rotational feature (312; Fig. 8A, paragraph [0074]). The third anti-rotational member (322a, 322a1, 322a2) being ribs (i.e., see Fig. 4 in which the splines (322a, 322a1, 322a2) are raised away from the surface of the body portion (302) and clearly from ribs). With these ribs or splines positioned about the circumference of the body (302), it is clearly shown that the ribs have an outer dimension that is smaller than the outer dimension of the head potion (304) of the second member (300). This arrangement of the “ribs” therefore meets the claim requirement that “the third anti-rotational member being selected from the group consisting of”, wherein at least one of the further listed claimed limitations in the grouping of limitations for the third anti-rotational member specifically consists of “a plurality of members in the form of teeth, ribs or facets that have an outer diameter that is smaller than an outer diameter of the head portion of the second member”. Note threaded bore (210) as part of the first member (200), wherein the bore (210) is configured to receive a mounting screw (408) therein. See Fig. 2, Fig. 11B and paragraph [0078]).
As to claim 23, the threaded member is a screw (408).
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.
"[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.
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.
I. EXEMPLARY RATIONALES
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Claims 1, 5-6 and 10-17 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 8,235,837 to Bennett et al (hereinafter referred to as “Bennett”).
As to independent claims 1 and 17, Bennett shows a universal connector (450: FIG. 56) and includes a first member (452) and at least one second member (451). Each one of the first member (452) and the second member (451) is separately formed as a single piece. The first member (452) includes a first anti-rotational member in the form of a plurality of axially facing teeth (i.e., tangs 464) while the second member (451) comprises a plurality of axially facing teeth formed by the cutouts (465), wherein the second member (451) is matable with the first member (452); the second member (451) including a third anti-rotational member (467); the first and second anti-rotational members axially and angularly engageable with one another to prevent relative rotation of the first member (452) relative to the second member (451) about a longitudinal axis of the connector, the first and second anti-rotational members form a mating interface which is exposed on an exterior radially outer facing surface of the connector, the third anti-rotational member configured to mate with the golf club head anti-rotational member (470) of the golf club head (453) to prevent relative rotation of the second member relative to the golf club head, the third anti-rotational member axially offset from the second anti-rotational member (i.e., tangs 457 are offset from the teeth or cutouts 465); and a threaded member (459) axially biasing the first member into the second member maintaining the first anti-rotational member in axial engagement with the second anti- rotational member. See col. 27, line 59 through col. 28, line 61 for a discussion of the matable engagement between the first member (452) and the second member (451) and with an explanation that the threaded member biases the first and second anti-rotational members towards one another; and wherein the length of the threaded member may be sized to extend into the first member so that an intermediary structure (458) is not required (i.e., col. 28, lines 52-54).
More specific to independent claims 1 and 17, along with dependent claim 10, this arrangement of the “plurality of axially extending teeth” (i.e., tangs 457) therefore meets the claim requirement that “the third anti-rotational member being selected from the group consisting of”, wherein at least one of the further listed claimed limitations in the grouping of limitations for the third anti-rotational member specifically consists of “a plurality of axially extending teeth, the plurality of axially extending teeth having a first shape, the plurality of axially extending teeth of the second anti-rotational member having a second shape, the second shape being different than the first shape such that the teeth of the plurality of axially extending teeth of the third anti-rotational member are configured differently than the teeth of the plurality of axially extending teeth of the second anti-rotational member”, as required by each of claims 1, 10 and 17. While it may be argued that the arrangement in FIG. 56 does not explicitly show a different shape between the second and third anti-rotational members, note that FIG. 7 in Bennett shows a similar arrangement of teeth (i.e., projections 67) situated within cutouts (71). The arrangement of the cutouts (71) provides a different shape for the surrounding “teeth”. By using a similar interpretation when examining the embodiment in FIG. 56, one can observe that the cutouts (465) associated with the second anti-rotational member form “teeth” (i.e., the structure extending between the cutouts and located on oppositely opposed sides of the cylindrical member (451). These “teeth” of the of the second anti-rotational member (451) have a different shape than the “teeth” (i.e., tangs (467) of the third anti-rotational member. In view of the additional embodiment depicted in FIG. 7 of Bennett, one of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to have modified the shape of the second anti-rotational member to include “teeth” of a different configuration from the shape of the third anti-rotational member for the purpose of providing structure that effectively engages with the first anti-rotational member of the first member (452).
As to claim 5, see FIG. 56 and the axial arrangement of the first and second members.
As to claim 6, as broadly as claimed, the circumferential abutment formed by flat portions (474) and disposed adjacent to and surrounding the third anti-rotational member (i.e., tangs 467) forms a “radial transition” between the second and third anti-rotational members.
As to claim 11, see FIG. 57 and tapered portion (455), wherein an upper most portion of the assembly denotes the distal end and wherein the tapered portion is disposed between the distal end and the first anti-rotational member (i.e., tangs 464).
As to claims 12-13, see FIG. 56, wherein a first end of the first member (452) defines an upper most axial extent of the universal connector system and wherein an upper most extent of the first member (452) extends axially above an upper most extent of the second member (451) when the first and second members are mated to one another.
As to claims 14-15, again, see screw (459) and col. 27, line 59 through col. 28, line 61 for a discussion of the matable engagement between the first member (452) and the second member (451) and with an explanation that the threaded member biases the first and second anti-rotational members towards one another; and wherein the length of threaded member may be sized to extend into the first member so that an intermediary structure (458) is not required (i.e., col. 28, lines 52-54).
As to claim 16, with a showing in Bennett of a tapered element (455), it may be argued that “formed as a single piece”, when referring to the tapered portion, body portion and first anti-rotational member, connotes a product-by-process limitation, and that Bennett shows a completed and assembled single piece. Nonetheless, even if one were to argue that Bennett does not show “the tapered portion, body portion, and first anti-rotational member formed as a single piece”, 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 formed the tapered portion, body portion, and first anti-rotational member as a single piece, as such a modification would have involved an obvious engineering choice. In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) (A claim to a fluid transporting vehicle was rejected as obvious over a prior art reference which differed from the prior art in claiming a brake drum integral with a clamping means, whereas the brake disc and clamp of the prior art comprise several parts rigidly secured together as a single unit. The court affirmed the rejection holding, among other reasons, "that the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice."); but see Schenck v. Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983) (Claims were directed to a vibratory testing machine (a hard-bearing wheel balancer) comprising a holding structure, a base structure, and a supporting means which form "a single integral and gaplessly continuous piece." Nortron argued that the invention is just making integral what had been made in four bolted pieces. The court found this argument unpersuasive and held that the claims were patentable because the prior art perceived a need for mechanisms to dampen resonance, whereas the inventor eliminated the need for dampening via the one-piece gapless support structure, showing insight that was contrary to the understandings and expectations of the art.). See MPEP 2144.
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Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
See threaded screw (13) in Fig. 1 of Tseng;
Fig. 3 in Dacey;
Figs. 2 and 19A in Bolane;
Figs. 5, 16A, 16C and 16D in Nivanh;
Fig. 1 in Sander;
Figs. 4, 6 and 19 in Sato;
Fig. 2 in Soracco; and
Fig. 2 in Bennett (‘908).
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711
Prosecution Insights