DETAILED ACTION
1. This action is made Final in response to applicant’s Amendments / Request for Reconsideration filed 1/29/26. Claims 1, 8, 11, 14 and 20 are amended; claims 1-20 are pending.
Priority
2. The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original non-provisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of the first paragraph of 35 U.S.C. 112. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994). The disclosure of the prior-filed application, Application No. 18/241633, fails to provide adequate support or enablement in the manner provided by the first paragraph of 35 U.S.C. 112 for claims 1-20 of this application as the shaft markers/alignment aids of the independent claims are not supported.
Claim Rejections - 35 USC § 103
3. 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 of this title, 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.
4. Claims 1-3 and 6-7 rejected under 35 U.S.C. 103 as being unpatentable over Schweigert et al. (US Pub. No. 2023/0044263) in view of Mills (US Pat. No. 3,749,408) and further in view of Weeks (US Pat. No. 5,564,990).
With respect to claim 1, Schweigert teaches a golf club comprising: a shaft 3248; and a golf club head 3200 coupled to the shaft 3248, the golf club head comprising: a body portion 3210 comprising a toe portion 3230, a heel portion 3240, a front portion 3250, a rear portion 3260, a top portion 3270, and a sole portion 3280, the front portion 3250 comprising a face 3255 portion defining a loft angle of the golf club head (paragraph [0133]; Fig.’s 32-39); a hosel 3245 (i.e. portion of hosel indicated by reference item 3245) at the top portion 3270, the hosel 3245 slanted in a forward direction toward the front portion 3250 and in a heel-ward direction (paragraph [0136]-[0138]; Fig.’s 36-39); a hosel portion 3247 coupled to the hosel 3245 and attached to the shaft 3248, the hosel portion 3247 imparting a forward shaft lean angle to the shaft 3248 (paragraph [0135]-[0138]; Fig.’s 36-39).
Schweigert et al. teaches wherein the hosel 3245 comprises a hosel base portion connected with the hosel stem portion 3247, but fails to expressly teach wherein the hosel base portion comprises a bore that couples with the hosel stem portion 3247 as claimed. However, analogous art reference Mills teaches that it is known to provide a heel-wardly slanted hosel bore 28 that couples with hosel stem portion 24 to attach to shaft 30 (column 2, lines 46-63). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to structure the slanted hosel base portion of Schweigert et al. with the hosel bore taught by Mills. The rationale to combine is to attach the shaft to the body using a known connection arrangement. Moreover, with the hosel stem portion being positioned within the bore, a strong and durable connection is maintained. The proposed modification has a reasonable expectation of success as Schweigert et al. contemplates the use of a hosel bore to attach the shaft (paragraph [0133]). Examiner considers the combined teachings of Schweigert and Mills to teach wherein the hosel bore slants towards a forward face portion since Schweigert expressly teaches the hosel base portion and stem to slant towards the forward face.
Schweigert does not expressly teach first and second shaft markers as claimed. However, analogous art reference Weeks teaches the following features to be known in the art: a first shaft marker 26 at the heel portion and lying in a first vertical plane that is perpendicular to a center longitudinal plane of a body portion, the center longitudinal plane bisecting the body portion to define a toe portion and a heel portion; and a second shaft marker 28 at the heel portion and spaced apart from the first shaft marker by a distance greater than or equal to a diameter of the shaft (column 4, lines 4-7; Fig.’s 1, 4), the second shaft marker 3535 lying in a second vertical plane that is perpendicular to the center longitudinal plane (Fig. 4). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to add the alignment markers of Weeks to Schweigert. The rationale to combine is to provide an alignment aid that helps golfers with proper viewing alignment. Examiner notes the combination of Weeks and Schweigert, as one ordinary skill in the art would teach wherein the first and second vertical planes will be non-perpendicular to the center longitudinal plane because Schweigert teaches a forward and heel-ward shaft lean. Admittedly, Weeks teaches wherein its markers extend to a region proximate the outer top edge of the top surface of the heel portion (Fig. 4), as opposed to partially defining this area as claimed. However, per MPEP 2111.05, if a new and unobvious functional relationship between the printed matter and the substrate does not exist, USPTO personnel need not give patentable weight to the printed matter. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004). Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability …. the critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate. In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983). Here, assuming arguendo, that the printed matter and substrate (i.e. golf club) have a functional relationship, examiner does not consider the printed matter to have an unobvious functional relationship in view of the teachings of Weeks. Both Weeks and applicant’s invention teach wherein the markers are intended to provide a golfer with the view that the shaft is between the markers when the golfer is properly aligned/set up. This critical functional feature exists whether the markers extend merely near the heel edge as taught in weeks or all the way to the heel edge. Nothing in applicant’s specification suggests an unobvious functional improvement is achieved when the mark/alignment line extends all the way to the heel’s edge. There is not a new and unobvious functional relationship between the marking/alignment aid and the golf club head. As such, no patentable weight is given to the claimed printed matter.
Per MPEP 2114 - a claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). If a prior art structure is inherently capable of performing the intended use as recited, then it shifts the burden to applicant to establish that the prior art does not possess the characteristic relied on. See In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Here, the combination of Schweigert and Weeks provides a golf club with alignment markers such that the shaft appears to be located between the first shaft marker and the second shaft marker from a vantage point of an individual positioned over the golf club head at an address position to strike a golf ball, the address position being a position where the shaft forms a lie angle relative to a ground plane of the body portion while the face portion is maintained at the loft angle and the shaft is maintained at the forward shaft lean angle, the ground plane being perpendicular to the center longitudinal plane.
With respect to claim 2, Schweigert teaches the shaft 3248 comprising a shaft axis 3648, and wherein the hosel portion 3247 is configured to direct the shaft axis 3648 toe-ward relative to a center of gravity 3610 of the golf club head 3200 (Fig.’s 36-37; paragraphs [0136]-[0137]).
With respect to claim 3, Schweigert teaches wherein the shaft 3248 comprising a shaft axis 3648 that is collinear with a center longitudinal axis of the hosel portion 3247 (Fig.’s 36-37). Examiner considers the combined teachings of Schweigert and Mills to teach wherein the shaft axis 3648 is collinear with a bore axis of the hosel bore. See e.g. Fig. 1-2 of Mills showing the hosel bore to be collinear with a longitudinal axis of shaft 30. See also Fig.’s 36-37 of Schweigert showing the hosel base portion being collinear with shaft axis 3648. The rationale to combine is the same as stated above.
With respect to claim 6, per MPEP 2144.04, matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. See In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). The claimed third and fourth markers are expressly taught to be directed towards ornamentation – See applicant’s specification at paragraph [00108] teaching third and fourth markers to be a “design aesthetic” and providing an “appealing visual effect”. As such, the third and fourth markers are considered an obvious aesthetic design choice based on the designer’s preference in view of MPEP 2144.04 - In re Seid.
Moreover, the third and fourth marks are directed to printed matter. Per MPEP 2111.05, If a new and unobvious functional relationship between the printed matter and the substrate does not exist, USPTO personnel need not give patentable weight to the printed matter. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004). Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability …. the critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate. In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983). Here, the printed matter and substrate (i.e. golf club) do not depend upon each other in a functional manner. The specification expressly teaches embodiments where proper alignment of the golf club can occur without the third and fourth marks, using only first and second marks. These third and fourth marks are geared towards “design aesthetic” and providing an “appealing visual effect” (paragraph [00108]), not providing functionality. There is not a new and unobvious functional relationship between the third and fourth marks and the golf club head. As such, no patentable weight is given to the claimed printed matter.
With respect to claim 7, examiner reiterates the rationale set forth in claim 6 rendering the claimed third and fourth markers unpatentable for being directed to printed matter that does not have a new and unobvious functional relationship with the substrate.
5. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Schweigert et al. (US Pub. No. 2023/0044263) in view of Mills (US Pat. No. 3,749,408) and further in view of Weeks (US Pat. No. 5,564,990) and even further in view of Sood (US Pub. No. 2025/0099819) and ADMITTED PRIOR ART.
With respect to claim 4, the golf club of Schweigert, which teaches a forward leaning shaft paragraph ([0135]-[0138]; Fig.’s 36-39), inherently comprises a lie angle, loft angle, and forward shaft lean angle, but fails to expressly disclose these numeric values. Analogous art reference Sood teaches the following to be known in the art: a lie angle is greater than or equal to sixty (60) degrees and less than or equal to eighty (80) degrees, and the forward shaft lean angle is greater than zero (0) degrees and less than or equal to five (5) degrees (paragraph [0051]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to select lie angle and forward shaft lean values as taught by Sood. The rationale to combine is to easily induce end over end rolling of the ball and produce a substantially face neutral balance profile. Regarding the claimed loft, it is ADMITTED PRIOR ART that having a putter with a loft angle greater than or equal to three (3) degrees and less than or equal to seven (7) degrees is old and well known in the art. A person ordinary skill in the art, at the time of applicant’s effective filing, would have found it obvious to select a loft value between 3 and 7 degrees to avoid making the ball airborne, while also promoting an end over end rolling of the ball. The common knowledge or well-known in the art statement is taken to be admitted prior art because applicant either failed to traverse the examiner’s assertion of official notice or that the traverse was inadequate. See MPEP 2144.03.
6. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Schweigert et al. (US Pub. No. 2023/0044263) in view of Mills (US Pat. No. 3,749,408) and further in view of Weeks (US Pat. No. 5,564,990) and even further in view of Parsons et al. (US Pub. No. 2023/0405422).
With respect to claim 5, Schweigert does not expressly teach first and second face thicknesses as claimed. However, analogous art reference Parsons et al. teaches the following to be known in the art: a face portion comprises a first face thickness 1240 greater than or equal to 0.035 inch (0.889 mm) and less than or equal to 0.055 inch (1.397 mm) and a second face thickness 1260 greater than or equal to 0.035 inch (0.889 mm) and less than or equal to 0.045 inch (1.143 mm) (paragraph [0040]; Fig. 12). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to modify the face portion of Schweigert to have the face thicknesses of Parsons et al. The rationale to combine is to provide grooves that promote normalization of ball speed and produce a consistent roll distance [0040]. The proposed modification has a reasonable expectation of success as the primary functionality of Schweigert will not be frustrated.
7. Claims 8-9 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Weeks (US Pat. No. 5,564,990) in view of Sood (US Pub. No. 2025/0099819), or in the alternative, in further view of Bland (US Pat. No. 5,688,189).
With Respect to claim 8, Weeks teaches a golf club head 10 comprising: a body portion comprising a toe portion 16, a heel portion 14, a front portion, a rear portion, a top portion, and a sole portion; a face portion 12 at the front portion, the face portion inherently defining a loft angle of the golf club head (column 3, lines 9-18); a hosel portion 20 configured receive a shaft 32; an alignment aid 26/28 at a top surface of the heel portion and extending linearly near an outer top edge of the top surface (column 3, lines 34-43, 66-67; column 4, lines 1-12).
Weeks does not expressly teach wherein the hosel portion imparts a forward shaft lean to the shaft. However, analogous art reference Sood teaches that it is known to impart a forward shaft lean to a shaft using a hosel portion (Fig. 5; paragraph [0051]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to impart forward lean to the shaft for the expected purpose of imparting end over end rolling near impact, avoiding unwanted skidding of the ball. The proposed modification has a reasonable expectation of success as the primary purpose of Weeks is not frustrated by the combination.
The combination of Weeks and Sood is considered to teach wherein the alignment aid 26/28 indicates if an address position for striking a golf ball 34 is established based on a visual relationship between the alignment aid 26/28 and the shaft 32, the address position being a position where the loft angle and the forward shaft lean angle are maintained at predetermined angular values to preserve an effective loft angle of the golf club head, the effective loft angle corresponding to an angular difference between the loft angle and the forward shaft lean angle. See Weeks at column 4, lines 1-12; See also MPEP 2114 - In re Schreiber.
Admittedly, the alignment aids of Weeks extend near an outer top edge of the top surface, but not up to the outer edge and defining a portion of the outer top edge of the top surface as claimed. Moreover, the alignment aids are substantially parallel to the face portion as opposed to being non-parallel as claimed.
The combination of Weeks and Sood et al. would produce a golf club head that produces alignment aids 26/28 that are non-parallel to the face. Weeks expressly teaches that the alignment aid lines 26/28 are positioned such that in a “technically correct golfer-to-putter-to ball arrangement”, the “inner edges of the first and second markings are in an overlapping relationship with the exterior of the club shaft” (column 4, lines 1-5). Crucially, “The important aspect of the markings is that a parallel relationship between the markings and the shaft is perceived by a golfer when the golf and the club are correctly positioned” (column 4, lines 8-12). Imparting forward shaft lean will change the viewpoint of the shaft at address such that the shaft will not look in parallel relationship with the face (i.e. as shown in Fig. 4). The shaft, at an address position, will be visually unaligned with the face. Thus, when positioning the markers in a parallel relationship with the shaft, which is an express teaching of Weeks, lines 26/28 will be non-parallel. Moreover, the claimed printed matter does not have a new unobvious relationship with its substrate. See MPEP 2111.05. That is to say, examiner concedes the alignment marks have a functional relationship with the substrate since they are positioned in a unique manner with respect to the club head to provide alignment guidance to the golfer, however, the alignment marks do not have a new and unobvious relationship with the substrate. Weeks clearly teaches that it is known to position alignment marks in parallel arrangement outlining an outer diameter of the golf club shaft for purposes of providing alignment guidance to a golfer. Whether these lines are parallel with the face, or non-parallel, in each instance, the golfer is being given visual information of proper alignment of the shaft/putter at address position. The claim, moreover, encompasses a scope that includes lines that are angled merely .01 degrees from parallel with the face. No appreciable functional difference would when the line is parallel to the face, or offset by .01 degrees. Similarly, whether the line extends entirely to the heel edge or proximate thereto, there is no appreciable non-obvious functional difference. Both Weeks and applicant’s invention teach wherein the markers are intended to provide a golfer with the view that the shaft is between the markers when the golfer is properly aligned/set up. This critical functional feature exists whether the markers extend merely near the heel edge as taught in weeks or all the way to the heel edge.
As such, in view of MPEP 2111.05, the relationship between the claimed alignment aid and the golf club surface is not a new and unobvious functional relationship, and is not afforded patentable weight. If a new and nonobvious functional relationship between the printed matter and the substrate does exist, the examiner should give patentable weight to printed matter. See In re Lowry; In re Ngai; In re Gulack. MPEP 2111.05.
In the alternative, examiner cites to analogous art reference Bland for its teaching of an alignment aid that extends to an outer top edge of a top surface of a heel portion wherein the alignment aid defines a portion of the outer top edge of the top surface (Fig. 8 – alignment aid 69 defining a portion of an outer edge of the heel portion top surface). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to extend the alignment aid entirely to the outer top edge. The rationale to combine is to use a known alignment aid feature for the expected result of providing visual confirmation to the golfer.
With respect to claim 9, Weeks as modified above provides a putter wherein the shaft forms a lie angle relative to a ground plane (inherent), wherein the lie angle of the shaft is maintained at a predetermined angular value at the address position (i.e. the angular value does not change since the shaft, hosel and club head are integrally connected, and is thus considered to be a predetermined angular value).
With respect to claims 12-13, per MPEP 2144.04, matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. See In re Seid. The claimed “additional alignment aid” elements, ostensibly the third and fourth markers, which are expressly taught to be directed towards ornamentation – See applicant’s specification at paragraph [00108] teaching third and fourth markers to be a “design aesthetic” and providing an “appealing visual effect”. As such, the third and fourth markers are considered an obvious aesthetic design choice based on the designer’s preference in view of MPEP 2144.04 - In re Seid.
Moreover, the “additional alignment aid” elements are directed to printed matter. Per MPEP 2111.05, If a new and unobvious functional relationship between the printed matter and the substrate does not exist, USPTO personnel need not give patentable weight to the printed matter. See In re Lowry; In re Ngai. Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability …. the critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate. In re Gulack. Here, the printed matter and substrate (i.e. golf club) do not functionally depend upon each other. The specification expressly teaches embodiments where proper alignment of the golf club can occur without the third and fourth marks, using only the first and second marks. The additional alignment aid (i.e. third and fourth marks) are geared towards “design aesthetic” and providing an “appealing visual effect” (paragraph [00108]), not providing functionality. There is not a new and unobvious functional relationship between the third and fourth marks and the golf club head. As such, no patentable weight is given to the claimed printed matter.
8. Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Weeks (US Pat. No. 5,564,990) in view of Sood (US Pub. No. 2025/0099819), or in the alternative, in further view of Bland (US Pat. No. 5,688,189), and even further in view of ADMITTED PRIOR ART.
With respect to claim 10, Sood, cited above for the forward shaft lean, teaches wherein the forward shaft lean angle is greater than zero (0) degrees and less than or equal to five (5) degrees (Fig. 5; paragraph [0051]). The rationale to combine is the same as stated above.
Regarding the claimed loft, it is ADMITTED PRIOR ART that having a putter with a loft angle greater than or equal to three (3) degrees and less than or equal to seven (7) degrees is old and well known in the art. A person ordinary skill in the art, at the time of applicant’s effective filing, would have found it obvious to select a loft value between 3 and 7 degrees to avoid making the ball airborne, while also promoting an end over end rolling of the ball. Since effective loft angle is the loft of the club minus the forward shaft lean (See applicant’s specification at paragraph [00103]), the modified golf club has an effective loft angle is greater than or equal to one (1) degree and less than or equal to five (5) degrees. For example, at forward lean angle of 3 degrees (taught by Sood), and loft of 6 degrees (ADMITTED PRIOR ART), the effective loft is 3 degrees. The common knowledge or well-known in the art statement is taken to be admitted prior art because applicant either failed to traverse the examiner’s assertion of official notice or that the traverse was inadequate. See MPEP 2144.03.
9. Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Weeks (US Pat. No. 5,564,990) in view of Sood (US Pub. No. 2025/0099819), or in the alternative, in further view of Bland (US Pat. No. 5,688,189), and even further in view of Miyashita (US Des. Pat. No D434,094).
With respect to claim 11, Weeks teaches wherein the alignment aid extends across the heel portion up a center portion of the top surface, but does not expressly teach wherein the alignment aid extends to an inner top edge of the top surface of the heel portion. However, analogous art reference Miyashita teaches this feature to be known in the art: Fig.’s 1-2 showing linear alignment aid mark extending to an inner top edge of the top surface of the heel portion. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to incorporate a top inner edge of the heel portion of the golf club of Weeks as taught by Miyashita. The rationale to combine is to provide an easier angle for the golfer to see the alignment aid, particularly for those that don’t stand particularly close to the ball at address.
Miyashita does not expressly teach wherein the alignment aid defines a portion of the inner top edge of the top surface as claimed. However, per MPEP 2111.05, if a new and unobvious functional relationship between the printed matter and the substrate does not exist, USPTO personnel need not give patentable weight to the printed matter. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004). Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability …. the critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate. In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983). Here, assuming arguendo, that the printed matter and substrate (i.e. golf club) have a functional relationship, examiner does not consider the printed matter to have an unobvious functional relationship with the substrate (i.e. top edge). Both the applied art and applicant’s invention teach wherein the markers are intended to provide a golfer with the view that the shaft is between the markers when the golfer is properly aligned/set up. This critical functional feature exists whether the markers extend merely near the inner top edge or all the way to the heel edge.
10. Claims 14-17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Weeks (US Pat. No. 5,564,990) in view of Sood (US Pub. No. 2025/0099819), or in the alternative, in further view of Bland (US Pat. No. 5,688,189).
With respect to claim 14, Weeks teaches a golf club head 10 comprising: a front portion having a face portion 12; a hosel portion 20 configured receive to couple to shaft 32; a heel portion having a shaft alignment aid 26/28 for the shaft 32 to indicate an address position for the face portion 12 to strike a golf ball 34 (column 3, lines 34-43, 66-67; column 4, lines 1-12), wherein the shaft alignment aid 26/28 is located at a top surface of the heel portion.
Weeks does not expressly teach wherein the hosel portion forms a shaft lean relative to the front portion. However, analogous art reference Sood teaches that it is known for a hosel portion to form a forward shaft lean to a shaft (Fig. 5; paragraph [0051]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to impart forward lean to the shaft for the expected purpose of imparting end over end rolling near impact, avoiding unwanted skidding of the ball. The proposed modification has a reasonable expectation of success as the primary purpose of Weeks is not frustrated by the combination.
The combination of Weeks and Sood is considered to teach wherein the shaft alignment aid for the shaft indicates an address position for the face portion to strike a golf ball based on the shaft lean angle. See Weeks at column 4, lines 1-12; See also MPEP 2114 - In re Schreiber.
Admittedly, Weeks teaches wherein its markers extend to a region proximate the outer top edge of the top surface of the heel portion (Fig. 4), as opposed to partially defining this area as claimed. However, per MPEP 2111.05, if a new and unobvious functional relationship between the printed matter and the substrate does not exist, USPTO personnel need not give patentable weight to the printed matter. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004). Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability …. the critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate. In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983). Here, assuming arguendo, that the printed matter and substrate (i.e. golf club) have a functional relationship, examiner does not consider the printed matter to have an unobvious functional relationship in view of the teachings of Weeks. Both Weeks and applicant’s invention teach wherein the markers are intended to provide a golfer with the view that the shaft is between the markers when the golfer is properly aligned/set up. This critical functional feature exists whether the markers extend merely near the heel edge as taught in weeks or all the way to the heel edge. Nothing in applicant’s specification suggests an unobvious functional improvement is achieved when the mark/alignment line extends all the way to the heel’s edge. There is not a new and unobvious functional relationship between the marking/alignment aid and the golf club head. As such, no patentable weight is given to the claimed printed matter.
In the alternative, examiner cites to analogous art reference Bland for its teaching of an alignment aid that extends to an outer top edge of a top surface of a heel portion wherein the alignment aid defines a portion of the outer top edge of the top surface (Fig. 8 – alignment aid 69 defining a portion of an outer edge of the heel portion top surface). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to extend the alignment aid entirely to the outer top edge. The rationale to combine is to use a known alignment aid feature for the expected result of providing visual confirmation to the golfer.
With respect to claim 15, Weeks teaches wherein the shaft alignment aid comprises a first shaft marker 26 and a second shaft marker 28 configured to provide positive visual feedback such that the address position is established by adjusting the position of the golf club head until the shaft appears to be located between at least a portion of the first shaft marker 26 and at least a portion of the second shaft marker 28 from a vantage point of an individual positioned over the golf club head at the address position. See Weeks at column 4, lines 1-12; See also MPEP 2114 - In re Schreiber
With respect to claim 16, Weeks teaches wherein the shaft alignment aid comprises at least one shaft marker 30 configured to provide negative visual feedback such that the address position is achieved by adjusting the position of the golf club head until at least a portion of the at least one shaft marker is visually obstructed by the shaft from a vantage point of an individual positioned over the golf club head at the address position. See Weeks at column 4, lines 13-16; See also MPEP 2114 - In re Schreiber
With respect to claim 17, Weeks teaches wherein the shaft alignment aid comprises parallel shaft markers, as opposed to a single shaft marker, wherein the parallel shaft markers 26, 28 are configured to provide positive visual feedback such that the address position is achieved by adjusting the position of the golf club head until the shaft markers are visible on both sides of the shaft from a vantage point of an individual positioned over the golf club head at the address position. See Weeks at column 4, lines 1-12; See also MPEP 2114 - In re Schreiber
Regarding the limitation that the mark is a single mark, this limitation is considered to be directed towards printed matter that does not have a new unobvious relationship with its substrate. See MPEP 2111.05. That is to say, examiner concedes the alignment mark has a functional relationship with the substrate since it is positioned in a unique manner with respect to the club head to provide alignment guidance to the golfer, however, the specific content of the alignment mark (i.e. single mark vs parallel marks) does provide a new and unobvious relationship with the substrate. Weeks clearly teaches that it is known to position alignment marks outlining an outer diameter of the golf club shaft for purposes of providing alignment guidance to a golfer. Whether these lines are a single mark or two marks, in each instance, the golfer is being given visual information of proper alignment of the shaft/putter at address position. As such, in view of MPEP 2111.05, the relationship between the claimed alignment aid and the golf club surface is not a new and unobvious functional relationship, and is not afforded patentable weight – from MPEP 2111.05 - If a new and nonobvious functional relationship between the printed matter and the substrate does exist, the examiner should give patentable weight to printed matter. See In re Lowry; In re Ngai; In re Gulack.
With respect to claim 19, Weeks teaches wherein the shaft alignment aid is configured as at least one straight line 26, 28. Weeks teaches these lines to be parallel to the face portion, as opposed to being non-parallel as claimed. However, examiner submits alternative rejections:
First, the combination of Weeks and Sood et al. would produce a golf club head that produces alignment aids 26/28 that are non-parallel to the face. Weeks expressly teaches that the alignment aid lines 26/28 are positioned such that in a “technically correct golfer-to-putter-to ball arrangement”, the “inner edges of the first and second markings are in an overlapping relationship with the exterior of the club shaft” (column 4, lines 1-5). Crucially, “The important aspect of the markings is that a parallel relationship between the markings and the shaft is perceived by a golfer when the golf and the club are correctly positioned” (column 4, lines 8-12). Imparting forward shaft lean will change the viewpoint of the shaft at address such that the shaft will not look in parallel relationship with the face (i.e. as shown in Fig. 4). The shaft, at an address position, will be visually unaligned with the face. Thus, when positioning the markers in a parallel relationship with the shaft, which is an express teaching of Weeks, lines 26/28 will be non-parallel.
Secondly, the limitation is considered to be directed towards printed matter that does not have a new unobvious relationship with its substrate. See MPEP 2111.05. That is to say, examiner concedes the alignment marks have a functional relationship with the substrate since they are positioned in a unique manner with respect to the club head to provide alignment guidance to the golfer, however, the alignment marks do not have a new and unobvious relationship with the substrate. Weeks clearly teaches that it is known to position alignment marks in parallel arrangement outlining an outer diameter of the golf club shaft for purposes of providing alignment guidance to a golfer. Whether these lines are parallel with the face, or non-parallel, in each instance, the golfer is being given visual information of proper alignment of the shaft/putter at address position. The claim, moreover, encompasses a scope that includes lines that are angled merely .01 degrees from parallel with the face. No appreciable functional difference would when the line is parallel to the face, or offset by .01 degrees. As such, in view of MPEP 2111.05, the relationship between the claimed alignment aid and the golf club surface is not a new and unobvious functional relationship, and is not afforded patentable weight. If a new and nonobvious functional relationship between the printed matter and the substrate does exist, the examiner should give patentable weight to printed matter. See In re Lowry; In re Ngai; In re Gulack. MPEP 2111.05.
11. Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Weeks (US Pat. No. 5,564,990) in view of Sood (US Pub. No. 2025/0099819), or in the alternative, in further view of Bland (US Pat. No. 5,688,189), and even further in view of Miyashita (US Des. Pat. No D434,094).
With respect to claim 18, Weeks teaches wherein the shaft alignment aid extends linearly across the heel portion from an inner portion of the heel towards an outer top edge of the heel portion. Admittedly, the linear alignment aid is not diagonally extending, and does not extend from an inner top edge towards an outer top edge of the heel. Analogous art reference Miyashita teaches the feature of a linear alignment aid extending from an inner top edge to towards an outer top edge is known in the art: Fig.’s 1-2 showing linear alignment aid mark extending to an inner top edge of the top surface of the heel portion. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to incorporate a top inner edge of the heel portion of the golf club of Weeks as taught by Miyashita. The rationale to combine is to provide an easier angle for the golfer to see the alignment aid, particularly for those that don’t stand particularly close to the ball at address.
Weeks teaches the lines to be parallel to the face portion, as opposed to being diagonally extending as claimed. However, examiner submits alternative rejections:
First, the combination of Weeks and Sood et al. would produce a golf club head that produces alignment aids 26/28 that would extend diagonally. Weeks expressly teaches that the alignment aid lines 26/28 are positioned such that in a “technically correct golfer-to-putter-to ball arrangement”, the “inner edges of the first and second markings are in an overlapping relationship with the exterior of the club shaft” (column 4, lines 1-5). Crucially, “The important aspect of the markings is that a parallel relationship between the markings and the shaft is perceived by a golfer when the golf and the club are correctly positioned” (column 4, lines 8-12). Imparting forward shaft lean will change the viewpoint of the shaft at address such that the shaft will not look in parallel relationship with the face (i.e. as shown in Fig. 4). The shaft, at an address position, will be visually unaligned with the face. Thus, when positioning the markers in a parallel relationship with the shaft, which is an express teaching of Weeks, lines 26/28 will be non-parallel.
Secondly, the limitation is considered to be directed towards printed matter that does not have a new unobvious relationship with its substrate. See MPEP 2111.05. That is to say, examiner concedes the alignment marks have a functional relationship with the substrate since they are positioned in a unique manner with respect to the club head to provide alignment guidance to the golfer, however, the alignment marks do not have a new and unobvious relationship with the substrate. Weeks clearly teaches that it is known to position alignment marks in parallel arrangement outlining an outer diameter of the golf club shaft for purposes of providing alignment guidance to a golfer. Whether these lines are parallel with the face, or diagonally extending, in each instance, the golfer is being given visual information of proper alignment of the shaft/putter at address position. The claim, moreover, encompasses a scope that includes lines that are angled merely .01 degrees from parallel with the face. No appreciable functional difference would when the line is parallel to the face, or offset by .01 degrees. As such, in view of MPEP 2111.05, the relationship between the claimed alignment aid and the golf club surface is not a new and unobvious functional relationship, and is not afforded patentable weight. If a new and nonobvious functional relationship between the printed matter and the substrate does exist, the examiner should give patentable weight to printed matter. See In re Lowry; In re Ngai; In re Gulack. MPEP 2111.05
Weeks in view of Miyashita, moreover, fails to expressly teach wherein the shaft alignment aids extends from an inner top edge to an outer top edge. However, the difference in the printed matter provided by Weeks + Miyashita and the claimed printed matter is considered to be obvious in view of In re Gulack - MPEP 2111.05. Both Weeks and applicant’s invention teach wherein the markers are intended to provide a golfer with the view that the shaft is between the markers when the golfer is properly aligned/set up. This critical functional feature exists whether the markers extend merely near the heel edge towards an inner top edge as taught in Weeks + Miyashita or all the way to the heel edge from the inner top edge. Nothing in applicant’s specification suggests an unobvious functional improvement is achieved when the mark/alignment line extends all the way as claimed. There is not a new and unobvious functional relationship between the marking/alignment aid and the golf club head. As such, no patentable weight is given to the claimed printed matter.
12. Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Weeks (US Pat. No. 5,564,990) in view of Sood (US Pub. No. 2025/0099819), or in the alternative, in further view of Bland (US Pat. No. 5,688,189), and further in view of Parsons et al. (US Pub. No. 2023/0405422).
With respect to claim 20, Weeks does not expressly teach first and second face thicknesses as claimed. However, analogous art reference Parsons et al. teaches the following to be known in the art: a face portion comprises a first face thickness 1240 greater than or equal to 0.035 inch (0.889 mm) and less than or equal to 0.055 inch (1.397 mm) and a second face thickness 1260 greater than or equal to 0.035 inch (0.889 mm) and less than or equal to 0.045 inch (1.143 mm) (paragraph [0040]; Fig. 12). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to modify the face portion of Weeks to have the face thicknesses of Parsons et al. The rationale to combine is to provide grooves that promote normalization of ball speed and produce a consistent roll distance [0040]. The proposed modification has a reasonable expectation of success as the primary functionality of Weeks will not be frustrated.
Response to Arguments
13. Applicant's arguments filed 1/29/26 have been fully considered but they are not persuasive.
Applicant argues that Parsons et al. (US Pub. No. 2023/0405422) is not prior art because the present application claims priority to 18/241633. Examiner respectfully disagrees. The priority claim is a continuation-in-part. As set forth above, application 18/241633 fails to teach the claimed markers, alignment aids of the independent claims. Thus, the present application does not have priority to 18/241633.
Conclusion
14. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 MICHAEL DAVID DENNIS whose telephone number is (571)270-3538. The examiner can normally be reached M-F 8:00 am - 5:00 pm.
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/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711