DETAILED ACTION
This Office action is responsive to communication received 03/16/2026 – Amendment and Terminal Disclaimer.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Claims
Claims 1-30 remain pending.
Terminal Disclaimer
The terminal disclaimer filed on 03/16/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference Application Number 19/375,665 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
In the arguments, received 03/16/2026, the applicant responds to the comments brought up in the “Priority” section of the last Office action, noting that all mention of the gap area and gap area summation has been removed from the claims. The applicant addresses the minor objections to the claims, as well as the objections to the specification and drawings, noting that the specification has been amended to provide proper antecedent basis for the claimed subject matter and that the drawings have been amended to show the location of various external perimeter widths. The applicant continues by noting that the outstanding rejections of the claims under 35 U.S.C. §112(b) have been addressed and that a terminal disclaimer has been filed to overcome the rejection of the claims under nonstatutory double patenting. The applicant asserts that the applicant is unaware of any remaining conflicts between the current claims and the patents cited in the Office action under “Observations on Obviousness-Type Double Patenting”. Last, the applicant remarks that the rejection of the claims under 35 U.S.C. §103 is moot in view of the deletion of subject matter in the claims related to the gap area and the gap area summation.
IN RESPONSE:
Applicant’s comments with respect to the “Priority” notations in the last Office action have been noted. It would also appear that the applicant has satisfactorily addressed the minor objections to the claims, the rejections of the claims under 35 U.S.C. §112, the rejection of the claims under 35 U.S.C. §103 and the rejection of the claims under nonstatutory double patenting.
With respect to the amendments to the specification, it appears that considerably more detail has been added to the text than what was originally noted in the last Office action. Using one example, the objections to the specification in the last Office action noted that the following language in each of claims 1 and 19 lacked proper antecedent basis:
"a forward maximum external perimeter width between the opposed heel and toe side portions, measured parallel to the ground center X-axis, located at a forward maximum width location between the geometric center vertical plane and the striking surface; a forward minimum external perimeter width between the opposed heel and toe side portions, measured parallel to the ground center X-axis, located at a forward minimum width location at the striking surface, where the forward minimum external perimeter width is less than the forward maximum external perimeter width; a rearward minimum external perimeter width between the opposed heel and toe side portions, measured parallel to the ground center X-axis, located at a rearward minimum width location rearward of the geometric center vertical plane, where the rearward minimum external perimeter width is less than the forward maximum external perimeter width, and the rearward minimum external perimeter width is less than the forward minimum external perimeter width; a rearward maximum external perimeter width between a heelwardmost point on the heel side outboard extension and a toewardmost point on the toe side outboard extension, measured parallel to the ground center X-axis, where the rearward maximum external perimeter width is greater than the rearward minimum external perimeter width."
However, the amendments to the specification, received 03/16/2026, adds terminology (as an example only, note the language “may be”; “may also be referred to as”; “may be greater than”; “at least as great as”; “may be considered as”), which could cloud the interpretation of certain phrases related to the forward maximum external perimeter width, the forward minimum external perimeter width, the rearward minimum external perimeter width and the rearward maximum external perimeter width. The amendments to the specification further include inconsistencies and misspellings that lead to confusion in the interpretation of certain phrases and terms.
For example, language added at page 21, beyond lines 7-10 by the 03/16/2026 amendment now states, in part, “The rearward maximum external perimeter width (Wrmax) may also be referred to as a maximum outer periphery width between the heel side flange portion 454b and the toe side flange portion 454a, and the maximum outer periphery width may be greater than the striking surface width Wss” (emphasis added). In addition, language that presents further, alternative meanings not previously described could potentially broaden the interpretation of certain phrases. For instance, language now added at page 21, beyond lines 7-10 now states, in part, “The rearward maximum external perimeter width (Wrmax) may also be referred to as a maximum outer periphery width between the heel side flange portion 454b and the toe side flange portion 454a, and the maximum outer periphery width may be greater than the striking surface width Wss.” (emphasis added). Also, note the language “Here, the rear lateral width, which may be either the rearward minimum external perimeter width (Wrmin) or the rearward maximum external perimeter width (Wrmax), is at least as great as the maximum bounding CBP width 110W, which may be considered as a maximum width from the central body portion bounding the heep [sic] gap to the central body portion bounding the toe gap.” (emphasis added).
For example, new language added at page 21, beyond lines 7-10 now discusses the geometric center vertical plane (GCVP), which was not previously disclosed as such in the originally-filed disclosure.
For example, language added at page 7, line 23, to page 8, line 5, includes the phrases “As best seen in FIG.4B, but easily understood with respect to FIG. 1B, 2B, and 5A-7….. Similarly, and easily appreaciated [sic] with reference to FIGS. 1A-1E, 2A-2E, 4A-4E, and 5A-7, at least a portion of the first weight….and at least one of the first weight or the second weight is located heelward of at least a portion of the central body portion bounding the heel gap and heelward of at least a portion of a hosel.” (emphasis added). This language connotes that the elements described are readily evident in the drawings, which may not necessarily be the case. Also, the second weight has been described as associated with the toe weight. Hence, the toe weight cannot be located heelward of at least a portion of the central body, without a substantial reconfiguration of the putter head.
For example, the language added at page 11, to replace lines 11-16 adds additional, new terminology with respect to the “first heel side portion”, “second heel side portion”, “first toe side portion” and “second toe side portion”. The heel side portion and toe side portion were never originally disclosed with such particulars (i.e., first, second).
With respect to the replacement drawings received 03/16/2026, and with respect to the similar changes in each of FIGS. 1D, 2D and 4D, the location of “126” and the “GCVP” does not coincide with what was depicted in the original drawings (e.g., note the location of “126” along with the location of the axis “130” and the axis “122, which pass through the location “126”, as shown for instance in original FIG. 1A). Also, numerals that essentially correspond to the subject identified hereinabove as being added to the specification and describing the “first heel side portion”, “second heel side portion”, “first toe side portion” and “second toe side portion” add significant detail to the drawings not previously disclosed.
Response to Amendments
Determination of New Matter in Specification and Drawings
The amendment filed 03/16/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
The language identified as replacing the paragraph at page 7, line 23, to page 8, line 5 and amended to include the description “As best seen in FIG.4B, but easily understood with respect to FIG. 1B, 2B, and 5A-7….. Similarly, and easily appreaciated [sic] with reference to FIGS. 1A-1E, 2A-2E, 4A-4E, and 5A-7, at least a portion of the first weight….and at least one of the first weight or the second weight is located heelward of at least a portion of the central body portion bounding the heel gap and heelward of at least a portion of a hosel.” (emphasis added) is deemed to be new matter.
The language presented on scanned page 2 and identified as replacing the paragraph at page 11, lines 11-16 and amended to include the description of the “first heel side portion”, “second heel side portion”, “first toe side portion” and “second toe side portion” is deemed to be new matter.
The language presented on scanned pages 3-4 and identified as replacing the paragraph at page 21, lines 7-10 and the description of “The rearward maximum external perimeter width (Wrmax) may also be referred to as a maximum outer periphery width between the heel side flange portion 454b and the toe side flange portion 454a, and the maximum outer periphery width may be greater than the striking surface width Wss” (emphasis added); along with the language “The rearward maximum external perimeter width (Wrmax) may also be referred to as a maximum outer periphery width between the heel side flange portion 454b and the toe side flange portion 454a, and the maximum outer periphery width may be greater than the striking surface width Wss.” (emphasis added); and further including the language “Here, the rear lateral width, which may be either the rearward minimum external perimeter width (Wrmin) or the rearward maximum external perimeter width (Wrmax), is at least as great as the maximum bounding CBP width 110W, which may be considered as a maximum width from the central body portion bounding the heep [sic] gap to the central body portion bounding the toe gap.” (emphasis added); as well as the language added at page 21, beyond lines 7-10 now discussing the geometric center vertical plane (GCVP) is deemed to be new matter.
With respect to the replacement drawings received 03/16/2026, and with respect to the similar changes in each of FIGS. 1D, 2D and 4D, the location of “126” and the “GCVP” does not coincide with what was depicted in the original drawings (e.g., note the location of “126” along with the location of the axis “130” and the axis “122, which pass through the location “126”). Also, numerals that essentially correspond to the subject identified hereinabove as being added to the specification and describing the “first heel side portion”, “second heel side portion”, “first toe side portion” and “second toe side portion” add details to the drawings, which were not originally disclosed. These additions are considered to be new matter.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Objections – Minor
Claim 21 is objected to because of the following minor informalities: In line 32, “a” (first occurrence) should read --the--, as center of gravity has been set forth in previous line 18.
Appropriate correction is required.
Specification – Objections
The disclosure 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).
As explained hereinabove under “Response to Amendments”, the amendments to the specification add additional subject matter beyond the subject matter originally identified in the previous objections. As explained hereinabove, some of the language added by 03/16/2026 amendment is considered to be new matter. The previous objections to the disclosure are once again presented below for the convenience of the applicant.
Correction of the following is required: The specification lacks proper antecedent basis for the following claimed subject matter:
As to independent claim 1:
“a forward maximum external perimeter width between the opposed heel and toe side portions, measured parallel to the ground center X-axis, located at a forward maximum width location between the geometric center vertical plane and the striking surface; a forward minimum external perimeter width between the opposed heel and toe side portions, measured parallel to the ground center X-axis, located at a forward minimum width location closer to the striking surface than the forward maximum width location, where the forward minimum external perimeter width is less than the forward maximum external perimeter width; a rearward minimum external perimeter width between the opposed heel and toe side portions, measured parallel to the ground center X-axis, located at a rearward minimum width location rearward of the geometric center vertical plane, where the rearward minimum external perimeter width is less than the forward maximum external perimeter width, and the rearward minimum external perimeter width is less than the forward minimum external perimeter width; a rearward maximum external perimeter width between a heelwardmost point on the heel side outboard extension and a toewardmost point on the toe side outboard extension, measured parallel to the ground center X-axis, where the rearward maximum external perimeter width is greater than the rearward minimum external perimeter width”;
As to independent claim 19:
“a forward maximum external perimeter width between the opposed heel and toe side portions, measured parallel to the ground center X-axis, located at a forward maximum width location between the geometric center vertical plane and the striking surface; a forward minimum external perimeter width between the opposed heel and toe side portions, measured parallel to the ground center X-axis, located at a forward minimum width location at the striking surface, where the forward minimum external perimeter width is less than the forward maximum external perimeter width; a rearward minimum external perimeter width between the opposed heel and toe side portions, measured parallel to the ground center X-axis, located at a rearward minimum width location rearward of the geometric center vertical plane, where the rearward minimum external perimeter width is less than the forward maximum external perimeter width, and the rearward minimum external perimeter width is less than the forward minimum external perimeter width; a rearward maximum external perimeter width between a heelwardmost point on the heel side outboard extension and a toewardmost point on the toe side outboard extension, measured parallel to the ground center X-axis, where the rearward maximum external perimeter width is greater than the rearward minimum external perimeter width”;
As to independent claim 21:
“wherein a maximum outer periphery width between the heel side flange portion and the toe side flange portion is greater than the striking surface width”;
Drawings - Objections
The replacement drawings (FIGS, 1C, 1D, 1E, 2C, 2D, 2E, 4C, 4D and 4E), received 03/16/2026, are objected to under 37 CFR 1.83(a).
As explained hereinabove under “Response to Amendments”, the replacement drawings, received 03/16/2026, are deemed to include additional markings and numerals related to subject matter that has been described as being added to the specification and identified as new matter. While the replacement drawings do, in part, address the previous objections, the drawings nonetheless are deemed to additionally incorporate new matter. The previous objections are once again presented below for the convenience of the applicant.
Since the claims present various comparisons among and between various external perimeter widths and, in some instances, between these external perimeter widths and the width of the striking surface, the following features identified hereinbelow must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
As to independent claims 1 and 19:
“a forward maximum external perimeter width”;
“a forward minimum external perimeter width”;
“a rearward minimum external perimeter width”; and
“a rearward maximum external perimeter width”.
As to claims 4, 9 and 15:
“a striking surface width”.
As to independent claim 21:
“a striking surface width”;
“a maximum outer periphery width between the heel side flange portion and the toe side flange portion”.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Allowable Subject Matter
Claims 1-30 are allowable over the prior art references of record. Applicant is remined that the minor objection to the claims, the objections to the specification, the objections to the drawings and an appropriate and satisfactory response to the objection under 35 U.S.C. 132(a) must all be addressed and responded to.
Claims 1-18 and 21 are allowable over the prior art references of record in view of the arguments advanced by the applicant’s attorney on scanned page 2, lines 16-20, and received with the Remarks of 03/16/2026.
As to independent claim 19, without the benefit of applicant’s disclosure, it would not have been obvious to one of ordinary skill in the art at the time of the invention to have modified any of the prior art devices of record to have included the specific, combined requirements of a golf club putter head having a face portion plane intersecting a horizontal ground plane to define a ground center location, a ground center X-axis, and a ground center Y-axis; a center of gravity having a CG x-axis, a CG y-axis, and a CG z-axis; and further in combination with a heel gap and a toe gap in combination with a central portion, a heel side outboard extension and a toe side outboard extension, each located as more specifically recited in the claim; and further including the claimed forward maximum external perimeter width, forward minimum external perimeter width, rearward maximum external perimeter width, and rearward minimum external perimeter width, along with the entirety of the claimed description for each of the claimed forward maximum external perimeter width, forward minimum external perimeter width, rearward maximum external perimeter width, and rearward minimum external perimeter width; and further combined with a total club head mass of 300-400 grams; a moment of inertia about the CG z-axis (Izz) of 4000-14000 cm²; the heel side portion bounding the heel side gap and the central portion bounding the heel side gap are formed of steel; the toe side portion bounding the toe side gap and the central portion bounding the toe side gap are formed of steel; an effective footprint defined as an area occupied by an outermost silhouette of the golf club putter head projected onto an X-Y plane; an actual footprint less than the effective footprint, and the actual footprint defined as the area occupied by an actual silhouette of the entire golf club putter head projected onto a X-Y plane; and a footprint ratio of 0.7-0.9, with the footprint ratio defined as the actual footprint divided by the effective footprint.
Independent claims 20-21 are allowable over the prior art references of record in view of the timely-submitted and properly-filed terminal disclaimer, received 03/16/2026.
Dependent claims 22-24, received with the amendment of 03/16/2026, depend either directly or indirectly from allowable independent claim 19.
Dependent claims 25-27, received with the amendment of 03/16/2026, depend either directly or indirectly from allowable independent claim 20.
Dependent claims 28-30, received with the amendment of 03/16/2026, depend from allowable independent claim 21.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEBASTIANO PASSANITI whose telephone number is (571)272-4413. The examiner can normally be reached 9:00AM-5:00PM Mon-Fri.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at (571)-270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711