DETAILED ACTION
Priority
The priority chain reads that the 14/534,308 application is the parent, so that the current application 19/336,396 is a CON of 18/911,898 which is a CON of 18/170,659 which is a CON of 15/058,188 which is a CON of 14/534,308. 14/534,308 has a filing date of 11/6/14.
With that said, the specification between the application 14/534,308 changes with the 15/058,188 application (the 14 series application has 56 paragraphs, and the 15 series application has 61 paragraphs). Additional and new language in the 15 series application can be found at pars. [0004], [0005], [0037], [0046], and [0047]. As such, 15/058,188 should have been correctly listed as a CIP of parent application 14/534,308; and not a CON.
With that said, the additional material found in 15/058,188 does not change the priority of
the currently presented claims. All claims have a priority date of 11/6/14 based on parent
application 14/534,308.
Preliminary Amendment
A preliminary amendment was filed on 2/20/26. This office action is in response to that preliminary amendment.
35 USC § 112
For the claims, the Examiner construes “approximately” to be “10% of the stated value” according to applicant’s par. [0034].
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). Correction of the following is required: the channel extending through “most” of the grip as claimed in claim 26 requires proper antecedent basis in the specification.
Claim Objections
Claim 5, 14, and 23 are objected to because of the following informalities: Claims 5, 14, and 23 define claim views along a y-axis, and a x-axis. These relative axes are never defined within the claim as they relate to the golf club head. For purposes of examination, the Examiner will construe the “y-axis” to present a side view, and the “x-axis” to present a front view. The claim language should be amended to relate these axes to the exact structure of the golf club.
Claims 7, 16, and 24, and 30 define a claim with regards to a x-y plane. The imaginary x-y plane location with the structure and its orientation is never defined within the claim. The claim language should be amended to relate the x-y plane to the exact structure of the golf club.
Claim 17 claims that “the shaft center axis is affixed to the club face” (emphasis added). The Examiner fails to see how the shaft center axis can be affixed to the club face (unless it is affixed to the face via the head). It can be affixed to the club head, but not the face. Applicant should further clarify this language to overcome the objection.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8 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. Claim 1, line 7 claims “channel axis approximately coincided with the central axis”. Claim 1, line 11 claims “the shaft center axis and a ground line is approximately constant”. Claim 1, lines 16 claims “seeks approximately square”. However, the Examiner specifically construes “approximately” to be 10% of the stated value as noted above. There is no value stated in claim 1 for any of these limitations. As such, the language is indefinite. Claim 1 also now claims “a lie angle formed between the shaft center axis and a ground line is approximately constant regardless of a location that the club is grippable along the grip”. There are multiple problems with this limitation. First, the limitation presupposes that the golf club is vertical and being held at address so that a lie angle is actual created. However, this requirement is nowhere in claim 1. Second, applicant appears to be positively claim an imaginary “ground line”. The ground, and any imaginary line produced by it, is outside the scope of the claim. The Examiner can recommend that applicant amend the claim to use “configured to” the language to avoid positively claiming a “ground line”. Third, the actual angular orientation (i.e. in which direction lie angle is present) that creates the “lie angle” is never defined within the claim. For purposes of examination, the Examiner will construe the lie angle to be created by the “side angle” of the shaft (i.e. not a forward or reward press angle of the shaft).
Claim 3 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 3 claims that “the grip is approximately parallel to the club face”. However, the Examiner specifically construes “approximately” to be 10% of the stated value as noted above. There is no value stated in claim 3. As such, the language is indefinite.
Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 4 claims that the user does not need to “push the golf club to form the arc”. It is completely unclear from the claim what motion constitutes “push”. Restated, does this mean the user is “pushing” club out away from the body during the stroke or does it mean “pushing” forward a toe or heel end of the club face to square during the stroke? In summary, the term “push”, its requisite motion, and its context within the claim are indefinite.
Claims 7, 16, and 24, and 30 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. Claims 7, 16, and 24, and 30 claim “approximately the same” and “approximately constant”. However, the Examiner specifically construes “approximately” to be 10% of the stated value as noted above. There is no value stated in claims 7, 16, 24, and 30. As such, the language is indefinite.
Claims 9-17 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. Claim 9, lines 10-12 claims “the upper end is located approximate on one side of the grip, and the lower end is located approximately on the other side”. However, the Examiner specifically construes “approximately” to be 10% of the stated value as noted above. There is no value stated in claim 9. As such, the language is indefinite.
Claim 13 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 13 claims “seeks approximately square”. However, the Examiner specifically construes “approximately” to be 10% of the stated value as noted above. There is no value stated in claim 13 with regards to “square”. As such, the language is indefinite.
Claim 15 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 15 claims “approximately the same”. However, the Examiner specifically construes “approximately” to be 10% of the stated value as noted above. There is no value stated in claim 15. As such, the language is indefinite.
Claims 19-25 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. Claim 19, lines 11-12 claims “such that a lie angle of the golf club is approximately constant” However, the Examiner specifically construes “approximately” to be 10% of the stated value as noted above. There is no value stated in claim 19. As such, the language is indefinite. Claim 19 also now claims “a lie angle”. There are multiple problems with this limitation. First, the limitation presupposes that the golf club is vertical and being held at address so that a lie angle is created. However, this requirement is nowhere in the claims. Second, the actual angular orientation (i.e. in which direction lie angle is present) that creates the “lie angle” is never defined within the claim. For purposes of examination, the Examiner will construe the lie angle to be created by the “side angle” of the shaft (i.e. not a forward or reward press of the shaft).
Claims 21 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 21 claims “seeks approximately square”. However, the Examiner specifically construes “approximately” to be 10% of the stated value as noted above. There is no value stated in claim 21. As such, the claim is indefinite.
Claims 26-30 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 26 claims “the channel is angled…through most of the length of the grip”. However, “most” is a relative term which renders the claim indefinite. The term “most” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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 13 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. Claim 13 claims “wherein the golf club is adapted such that the club face at least one of: seeks approximately square or provides approximately zero torque with respect to the shaft, to an arc of stroke when the golf club contacts a golf ball”. However, claim 9, lines 6-7, from which 13 depends, already require the club head be “adapted such that the club faces seeks square”. 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.
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 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 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5, 7-11, 13-17 are rejected under 35 U.S.C. 103 as being unpatentable Sussich (US Pub. No. 2016/0096087 A1) in view of Kronogǎrd (herein “Kronogard”; WO Pub. No. 92/17247) and in further view of Hannon et al. (herein ”Hannon”; US Pat. No. 5,290,035).
Regarding claim 1, Sussich discloses a golf club comprising: a shaft connected to a grip at a first end of the shaft and to a club head at a second end of the shaft (Fig. 7 below), the club head comprising a club face configured to make contact with a golf ball (Fig. 7 below; noting this is functionally possible given the structure); wherein the first end of the shaft is disposed in a channel in the grip (Fig. 7 below; noting this is obvious), and wherein the channel runs within the grip and is dimensioned to secure the grip to the shaft (Fig. 7 below; noting this is obvious and well-known to a POSA), wherein the channel having a channel axis approximately coincided with the central axis of the shaft (Fig. 7 below; noting this is obvious; more specifically inherent), the channel comprising a circular cross section with respect to the channel axis (Fig. 2 and 7; noting the use of a circular shaft, as thus a corresponding circular channel within the grip, is well-known to a POSA). It is noted that Sussich does not specifically disclose that the channel is at an angle with respect to the grip such that a central axis of the shaft is not parallel to a central axis of the grip; wherein the channel having a channel axis approximately coincided with the central axis of the shaft but not with the central axis of the grip, wherein the channel is angled within the grip such that a lie angle formed between the shaft center axis and a ground line is approximately constant regardless of a location that the club is grippable along the grip, and wherein the central axis of the shaft intersects the central axis of the grip to form an angle between the central axis of the shaft and the central axis of the grip when the grip is secured to the shaft to be used by a player. However, Kronogard discloses a putter with a grip wherein the channel is at an angle with respect to the grip such that a central axis of the shaft is not parallel to a central axis of the grip (Fig. 10 below; noting obvious or inherent); wherein the channel having a channel axis approximately coincided with the central axis of the shaft but not with the central axis of the grip (Fig. 10 below; noting this is obvious or inherent), wherein the channel is angled within the grip such that a lie angle formed between the shaft center axis and a ground line is approximately constant regardless of a location that the club is grippable along the grip (Figs. 10, 7 and specifically 5 below; noting the Examiner assumes that the club is at address and the lie angle is the side angle; noting this language is functionally possible given structure as the lie angle of the head relative to the shaft and grip never change and when placed at address, the lie would also never change regardless of the gripping location), and wherein the central axis of the shaft intersects the central axis of the grip to form an angle between the central axis of the shaft and the central axis of the grip when the grip is secured to the shaft to be used by a player (Fig. 10 below). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Sussich to make the channel at an angle with respect to the grip such that a central axis of the shaft is not parallel to a central axis of the grip; wherein the channel having a channel axis approximately coincided with the central axis of the shaft but not with the central axis of the grip, wherein the channel is angled within the grip such that a lie angle formed between the shaft center axis and a ground line is approximately constant regardless of a location that the club is grippable along the grip, and wherein the central axis of the shaft intersects the central axis of the grip to form an angle between the central axis of the shaft and the central axis of the grip when the grip is secured to the shaft to be used by a player as taught by Kronogard because doing so would be combining prior art elements (a grip on a forward press putter and a grip that accommodates the angle of a forward press) according to known methods (a substitution of the grip off-axis channel as compared to the grip front face) to obtain predictable results (the continued ability to use a grip that is aligned with the front face, the grip being able to accommodate a forward press using an off-axis channel, see Kronogard: page 7, lines 5-7, and grip providing the user with a “convenient and relaxed grip” – see Kronogard: page 6, lines 37-38). Finally, it is noted that the combined Sussich and Kronogard do not specifically disclose that wherein the club face at least one of: seeks approximately square or has a reduced torque to square the club face, to an arc of stroke when the golf club contacts a golf ball. However, Sussich discloses the ability to distribute the weight the golf club as desired (par. [0047]-[0051]). In addition, Hannon disclose that the golf club is adapted such that the club face at least one of: seeks approximately square or has a reduced torque to square the club face, to an arc of stroke when the golf club contacts a golf ball (col. 2, lines 2-8 and col. 4, lines 41-53; noting it seeks square during the putting stroke as there is “no moment about the shaft axis”). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Sussich and Kronogard to make the golf club self-balancing and adapted such that the club face at least one of: seeks approximately square or provides approximately zero torque with respect to the shaft, to an arc of stroke when the golf club contacts a golf ball as taught by Hannon because doing so would be combining prior art elements (a putter that can have variable weighting and a putter that can be weighted to be face balanced) according to known methods (weight the putter to have a face balance) to yield predictable results (weighting the putter to have a face balance, the face seeking square during the putting stroke because there is no moment about the shaft axis).
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Regarding claim 2, the combined Sussich, Kronogard, and Hannon disclose that the lean of the shaft is a forward lean of the shaft with respect to the club face (Sussich: Fig. 7 above) wherein the grip is dimensioned such that a diameter of the channel accommodates the shaft inserted in the grip in a slanted manner (Kronogard: Fig. 10 above; noting this is obvious).
Regarding claim 3, the combined Sussich, Kronogard, and Hannon disclose that the angle between the center axis of the grip and the center axis of the shaft is offset (Kronogard: Fig. 10 above). It is noted that the combined Sussich, Kronogard, and Hannon do not specifically disclose that the angle between the center axis of the grip and the center axis of the shaft is offset such that the grip is approximately parallel to the club face of the golf club. However, regarding the grip and the club face being parallel, in keeping with the original disclosure of Sussich, if the Sussich and Kronogard were to be bodily incorporated, it would have been obvious to a POSA to actually align the front of the grip with the face (i.e. make parallel), because Sussich specifically requires the alignment so that “the user’s hands are positioned directly above the ball’s impact” (see Sussich: par. [0052]; see annotated combined drawing of the two references below) while also “rotating the grip somewhat in relation to the shaft so that the plan surface has a desired direction (i.e. flat as compared to the front face) (see Kronogard: page 6, lines 22-23). This bodily incorporation is exemplified in the combined Sussich and Kronogard: Fig. 7, reproduced below.
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Regarding claim 4, the combined Sussich, Kronogard, and Hannon disclose that the golf club is adapted such that the player does not need to push the golf club to form the arc of stroke when the golf club contacts the golf ball (noting this limitation is completely functional language that is possible given the combined structure; the Examiner also noting that this is obvious given the Hannon reference alone; the Examiner construing “push” to mean that the user does not have to push a heel or toe end of the face to be square).
Regarding claims 5 and 14, the combined Sussich, Kronogard, and Hannon disclose that the center axis of the channel is: (a) non-parallel to the center axis of the grip when viewed from a point on a y-axis (Kronogard: Fig. 10; a y-axis being the side view), (b) parallel to the center axis of the grip when viewed from a point on a x-axis (Kronogard: Fig. 5; noting the x-axis would be the front view); and (c) parallel to a major axis when viewed from a focal point of the grip (Kronogard: Fig. 10; noting this would be inherent in a top view of Fig. 10; albeit the top view is not shown; noting the Examiner construing “focal point” to be a grip center when viewed from the top).
Regarding claims 7 and 16, the combined Sussich, Kronogard, and Hannon disclose that an angle between a plane through the center axis of the shaft and a x-y plane remains approximately the same, and an angle between a plane through the center axis of the grip and the x-y plane remain approximately the same (see the Kronogard: Fig. 5 above; noting that the shaft and grip do not move with respect to the top of the putter head as all are in a fixed position; noting the x-y plane can simply be the top surface of the putter).
Regarding claim 8, it is noted that the combined Sussich, Kronogard, and Hannon do not specifically disclose that a front side of the grip aligns over the club face. However, regarding the grip and the club face being aligned, in keeping with the original disclosure of Sussich, if the Sussich and Kronogard were to be bodily incorporated, it would have been obvious to a POSA to actually align the front of the grip with the face, because Sussich specifically requires the alignment so that “the user’s hands are positioned directly above the ball’s impact” (see Sussich: par. [0052]; see annotated combined drawing of the two references below) while also “rotating the grip somewhat in relation to the shaft so that the plan surface has a desired direction (i.e. flat as compared to the front face) (see Kronogard: page 6, lines 22-23)(see rejection of claim 3 above).
Regarding claim 9, Sussich discloses a golf club comprising: a straight shaft having a shaft center axis (Fig. 7 above; noting a significant portion is straight as shown above, and a center axis is inherent); a grip at one end of the shaft, the grip having a grip center axis, the grip further comprising a channel configured to receive the shaft therein and having a channel center axis (Fig. 7 above; noting a grip center axis, channel and channel center axis is inherent and well-known to a POSA); a club head at another end of the shaft, the club head comprising a club face adapted to make contact with a golf ball (Fig. 7 above; noting “contact with a golf ball” is functionally possible given the structure), wherein the channel is configured to have upper and lower ends within the grip (Fig. 7 above; noting this is inherent), wherein the upper end is located approximately on one side of the grip, and the lower end is located approximately on the other side of the grip (Fig. 7 above; noting this is at least obvious based on a top and bottom end of the grip; i.e. the upper end is approximately on the upper side, the lower end is approximately on the bottom side of the grip; again, a POSA would readily understand that the channel extends up and into a grip; see Kronogard: Figs. 5-7 as evidence if there is any doubt as to how a shaft within a grip is connected). It is noted that Sussich does not specifically disclose that the grip center axis and the channel center axis are not parallel to one another; and the channel is angled with the grip to provide a forward lean of the shaft towards the club face. However, Kronogard discloses that the grip center axis and the channel center axis are not parallel to one another; and the channel is angled with the grip to provide a forward lean of the shaft towards the club face (Fig. 10 above; noting obvious or inherent; noting the latter language of providing a forward lean is functionally possible given the structure). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Sussich to make that the grip center axis and the channel center axis are not parallel to one another; and the channel is angled with the grip to provide a forward lean of the shaft towards the club face as taught by Kronogard because doing so would be combining prior art elements (a grip on a forward press putter and a grip that accommodates the angle of a forward press) according to known methods (a substitution of the grip off-axis channel as compared to the grip front face) to obtain predictable results (the continued ability to use a grip that is aligned with the front face, the grip being able to accommodate a forward press using an off-axis channel, see Kronogard: page 7, lines 5-7, and grip providing the user with a “convenient and relaxed grip” – see Kronogard: page 6, lines 37-38). Finally, it is noted that the combined Sussich and Kronogard do not specifically disclose that the golf club is adapted such that the club face seeks square when being swung and making contact with the golf ball. However, Sussich discloses the ability to distribute the weight the golf club as desired (par. [0047]-[0051]). In addition, Hannon disclose that the golf club is adapted such that the club face seeks square when being swung and making contact with the golf ball; (col. 2, lines 2-8 and col. 4, lines 41-53; noting it seeks square during the putting stroke as there is “no moment about the shaft axis”). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Sussich and Kronogard to make the golf club is adapted such that the club face seeks square when being swung and making contact with the golf ball as taught by Hannon because doing so would be combining prior art elements (a putter that can have variable weighting and a putter that can be weighted to be face balanced) according to known methods (weight the putter to have a face balance) to yield predictable results (weighting the putter to have a face balance, the face seeking square during the putting stroke because there is no moment about the shaft axis).
Regarding claim 10, the combined Sussich, Kronogard, and Hannon disclose that a back edge of a bottom of the grip providing an exit point of the shaft comprises an edge of the bottom of the grip that is furthest from the club face (see combined Sussich and Kronogard: Fig. 7 above; noting this would be obvious even if the front of the grip was not aligned with the face, i.e. it would be obvious based simply on the combination as given in claim 9 above).
Regarding claim 11, the combined Sussich, Kronogard, and Hannon disclose that a top of the shaft is at a front edge of the grip (see combined Sussich and Kronogard: Fig. 7 above; noting this would be obvious even if the front of the grip was not aligned with the face, i.e. it would be obvious based simply on the combination as given in claim 9 above).
Regarding claim 13, the combined Sussich, Kronogard, and Hannon disclose that the golf club is adapted such that the club face at least one of: seeks approximately square or provides approximately zero torque with respect to the shaft, to an arc of stroke when the golf club contacts a golf ball (Hannon: col. 2, lines 2-8 and col. 4, lines 41-53; noting it seeks square during the putting stroke as there is “no moment about the shaft axis”).
Regarding claim 15, the combined Sussich, Kronogard, and Hannon disclose that the orientation of the club face with respect to the golf ball remains approximately the same irrespective of the position along a longitudinal direction of the grip at which the player holds the club when swung (noting this limitation is completely functional language that is possible given the combined structure; the Examiner also noting that this is obvious given the Hannon reference alone and the invention is intended to remain square through impact and regardless of where the user grips the grip).
Regarding claim 17, the combined Sussich, Kronogard, and Hannon disclose that the shaft axis is affixed to the club head even though the channel center axis is not parallel to the club face (see combined Sussich: Fig. 7 above). It is noted that the combined Sussich, Kronogard, and Hannon do not specifically disclose that a front side of the grip aligns over the club face. However, regarding the grip and the club face being aligned, in keeping with the original disclosure of Sussich, if the Sussich and Kronogard were to be bodily incorporated, it would have been obvious to a POSA to actually align the front of the grip with the face, because Sussich specifically requires the alignment so that “the user’s hands are positioned directly above the ball’s impact” (see Sussich: par. [0052]; see annotated combined drawing of the two references below) while also “rotating the grip somewhat in relation to the shaft so that the plan surface has a desired direction (i.e. flat as compared to the front face) (see Kronogard: page 6, lines 22-23)(see rejection of claim 3 above).
Claims 12 and 18 are rejected under 35 U.S.C. 103 as being unpatentable Sussich (US Pub. No. 2016/0096087 A1) in view of Kronogǎrd (herein “Kronogard”; WO Pub. No. 92/17247) in view of Hannon et al. (herein ”Hannon”; US Pat. No. 5,290,035) and in further view of McLoughlin (US Pub. No. 2013/0130825 A1).
Regarding claim 12, the combined Sussich, Kronogard, and Hannon disclose that the grip has some cross section with respect to the grip center axis such that a first axis in the grip cross section and a second axis in the grip cross section are perpendicular to one another but have different dimensions from one another (Sussich: Fig. 7 and par. [0060]; specifically stating that it is “conical” or tapering in nature; see also Kronogard: Fig. 10 above; clearly showing that the distal end of the grip has a larger width than the proximate side). It is noted that the combined Sussich, Kronogard, and Hannon do not specifically disclose that the cross section is elliptical. However, McLoughlin disclose a similar style of grip (Fig. 3) wherein the grip has an elliptical cross section (Fig. 2A and par. [0059]). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combined Sussich, Kronogard, and Hannon to use an elliptical cross section grip as taught by McLoughlin because doing so would be combing prior art elements (using a grip that has some tapering shape and using a grip that has a tapering shape in the form of an elliptical) according to known methods (making the exterior of the grip in the form of an elliptical) to yield predicable solutions (making the grip exterior in the form of an elliptical and tapering shape, the elliptical and tapering shape known to work for golf head putters).
Regarding claim 18, it is noted that the combined Sussich, Kronogard, and Hannon do not specifically disclose that the grip comprising one of an elliptical cross section, a rectangular cross section, triangular cross section, a hexagonal cross section, a circular cross section, or a square cross section with respect to the channel axis. However, all of the combined Sussich, Kronogard, and Hannon disclose a grip that would have some inherent shape (see Sussich: Fig. 7, Kronogard: Fig. 10, and Hannon: Fig. 1, item 80). In addition, McLoughlin disclose a similar style of grip (Fig. 3) wherein the grip has an elliptical cross section (Fig. 2A and par. [0059]). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combined Sussich, Kronogard, and Hannon to use an elliptical cross section grip as taught by McLoughlin because doing so would be combing prior art elements (using a grip that has some tapering shape and using a grip that has a tapering shape in the form of an elliptical) according to known methods (making the exterior of the grip in the form of an elliptical) to yield predicable solutions (making the grip exterior in the form of an elliptical and tapering shape, the elliptical and tapering shape known to work for golf head putters).
Claims 19, 23-26, and 30 are rejected under 35 U.S.C. 103 as being unpatentable Sussich (US Pub. No. 2016/0096087 A1) in view of Kronogǎrd (herein “Kronogard”; WO Pub. No. 92/17247).
Regarding claim 19, Sussich discloses a golf club comprising: a straight shaft having a shaft center axis (Fig. 7 above; noting a significant portion is straight, and a center axis is inherent); a grip at one end of the shaft, the grip having a grip center axis, the grip further comprising a channel adapted to receive the shaft therein and having a channel center axis (Fig. 7 above; noting a grip center axis and channel center axis is inherent; again, noting a POSA would understand that a grip has a channel to accommodate a shaft; see Kronogard: Figs. 5-7 as evidence is there is any doubt); the channel of the grip adapted to be formed within the grip (Fig. 7 above; noting this is obvious as it receives the shaft); a club head at another end of the shaft and directly connected to the shaft, the club head comprising a club face adapted to make contact with a golf ball (Fig. 7 above; noting “contact with a golf ball” is functionally possible given the structure). It is noted that Sussich does not specifically disclose a channel that is non-parallel to the grip center axis, the channel formed with the grip at an angle with respect to an exterior surface of the grip, wherein the grip center axis and the channel center axis are not parallel to one another; and wherein the channel is angled within the grip so as to provide a lean of the shaft in a direction forward of the club face, and the channel center axis is angled such that a lie angle of the golf club is approximately constant regardless of a location that the golf club is grippable along the grip. However, Kronogard discloses a channel that is non-parallel to the grip center axis (Fig. 10 above), the channel formed with the grip at an angle with respect to an exterior surface of the grip (Fig. 10 above), wherein the grip center axis and the channel center axis are not parallel to one another (Fig. 10 above); and wherein the channel is angled within the grip so as to provide a lean of the shaft in a direction forward of the club face (Fig. 10 above; noting this is functionally possible given the structure), and the channel center axis is angled such that a lie angle of the golf club is approximately constant regardless of a location that the golf club is grippable along the grip (Fig. 7 and 5 above; noting the Examiner assumes that the club is at address and the lie angle is the side angle; noting this is functionally possible given the structure as the lie angle of head relative to the shaft and grip never change regardless of the gripping location). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Sussich to make a channel that is non-parallel to the grip center axis, the channel formed with the grip at an angle with respect to an exterior surface of the grip, wherein the grip center axis and the channel center axis are not parallel to one another; and wherein the channel is angled within the grip so as to provide a lean of the shaft in a direction forward of the club face, and the channel center axis is angled such that a lie angle of the golf club is approximately constant regardless of a location that the golf club is grippable along the grip as taught by Kronogard because doing so would be combining prior art elements (a grip on a forward press putter and a grip that accommodates the angle of a forward press) according to known methods (a substitution of the grip off-axis channel as compared to the grip front face) to obtain predictable results (the continued ability to use a grip that is aligned with the front face, the grip being able to accommodate a forward press using an off-axis channel, see Kronogard: page 7, lines 5-7, and grip providing the user with a “convenient and relaxed grip” – see Kronogard: page 6, lines 37-38).
Regarding claim 23, the combined Sussich and Kronogard disclose that the center axis of the channel is: (a) non-parallel to the center axis of the grip when viewed from a point on a y-axis (Kronogard: Fig. 10; a y-axis being the side view), (b) parallel to the center axis of the grip when viewed from a point on a x-axis (Kronogard: Fig. 5; noting the x-axis would be the front view); and (c) parallel to a major axis when viewed from a focal point of the grip (Kronogard: Fig. 10; noting this would be inherent in a top view of Fig. 10; albeit the top view is not shown; noting the Examiner construing “focal point” to be a grip center when viewed from the top).
Regarding claims 24 and 30, the combined Sussich and Kronogard disclose that an angle between a plane through the center axis of the shaft and a x-y plane remains approximately the same, and an angle between a plane through the center axis of the grip and the x-y plane remain approximately the same (see the Kronogard: Fig. 5 above; noting that the shaft and grip do not move with respect to the top of the putter head; noting the x-y plane can simply be the top surface of the putter).
Regarding claim 25, it is noted that the combined Sussich and Kronogard do not specifically disclose that a front side of the grip aligns over the club face. However, regarding the grip and the club face being parallel, in keeping with the original disclosure of Sussich, if the Sussich and Kronogard were to be bodily incorporated, it would have been obvious to a POSA to actually align the front of the grip with the face, because Sussich specifically requires the alignment so that “the user’s hands are positioned directly above the ball’s impact” (see Sussich: par. [0052]; see annotated combined drawing of the two references below) while also “rotating the grip somewhat in relation to the shaft so that the plan surface has a desired direction (i.e. flat as compared to the front face) (see Kronogard: page 6, lines 22-23)(see rejection of claim 3 above).
Regarding claim 26, Sussich discloses a golf club comprising: a shaft having a shaft center axis (Fig. 7 above; noting a significant portion is straight, and a center axis is inherent); a grip at one end of the shaft, the grip having a grip center axis, and a front edge of the grip, the grip further comprising a channel adapted to receive the shaft therein and having a channel center axis (Fig. 7 above; noting a grip center axis, front edge, and channel center axis is inherent); a club head at another end of the shaft and directly connected to the shaft, the club head comprising a club face adapted to make contact with a golf ball (Fig. 7 above; noting “contact with a golf ball” is functionally possible given the structure), and the front edge of the grip aligned with the club face (Fig. 7; noting the top front edge is aligned). It is noted that Sussich does not specifically disclose wherein the grip center axis and the channel center axis are not parallel to one another; and wherein the channel is angled within and through a most of the length of the grip. However, Kronogard discloses the grip center axis and the channel center axis are not parallel to one another (Fig. 10 above); and wherein the channel is angled within and through a portion of the length of the grip (Fig. 10 above). In addition, regarding the channel be through “most” of the grip, different embodiments Figs. 8, 9, and 11 adjacent Fig. 10 in Kronogard specifically show this. In addition, the Federal Circuit held in Boston Scientific Scimed, Inc. v. Cordis Corp, 554 F.3d 982 (Fed. Cir. 2009) that it does not take an inventive leap to combine side-by-side embodiments so using the angle of Fig. 10 to extend through almost an entire length of the grip as shown in Fig. 9 is obvious. Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Sussich to make the grip center axis and the channel center axis are not parallel to one another; and wherein the channel is angled within and through a portion of the length of the grip as taught by Kronogard because doing so would be combining prior art elements (a grip on a forward press putter and a grip that accommodates the angle of a forward press) according to known methods (a substitution of the grip off-axis channel as compared to the grip front face) to obtain predictable results (the continued ability to use a grip that is aligned with the front face, the grip being able to accommodate a forward press using an off-axis channel, see Kronogard: page 7, lines 5-7, and grip providing the user with a “convenient and relaxed grip” – see Kronogard: page 6, lines 37-38). In addition, it would have been obvious to a person of ordinary skill in the art at the time of filing that using a channel through most of the grip would not take a leap of inventiveness based on the other disclosed embodiments.
Claims 20, 22, 27 and 29 are rejected under 35 U.S.C. 103 as being unpatentable Sussich (US Pub. No. 2016/0096087 A1) in view of Kronogǎrd (herein “Kronogard”; WO Pub. No. 92/17247) and in further view of McLoughlin (US Pub. No. 2013/0130825 A1).
Regarding claim 20 and 27, the combined Sussich and Kronogard disclose that the grip has some cross section with respect to the grip center axis such that a first axis in the grip cross section and a second axis in the grip cross section are perpendicular to one another but have different dimensions from one another (Sussich: Fig. 7 and par. [0060]; specifically stating that it is “conical” or tapering in nature; see also Kronogard: Fig. 10 above; clearly showing that the distal end of the grip has a larger width than the proximate side). It is noted that the combined Sussich and Kronogard do not specifically disclose that the cross section is elliptical. However, McLoughlin disclose a similar style of grip (Fig. 3) wherein the grip has an elliptical cross section (Fig. 2A and par. [0059]). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combined Sussich and Kronogard to use an elliptical cross section grip as taught by McLoughlin because doing so would be combing prior art elements (using a grip that has some tapering shape and using a grip that has a tapering shape in the form of an elliptical) according to known methods (making the exterior of the grip in the form of an elliptical) to yield predicable solutions (making the grip exterior in the form of an elliptical and tapering shape, the elliptical and tapering shape known to work for golf head putters).
Regarding claims 22 and 29, the combined Sussich, Kronogard, and McLoughlin disclose that the grip is adapted to be sized and to include a width that accommodates the channel that is angled through a length of the grip (Kronogard: Fig. 10 or Fig. 9; noting the Examiner does not import any meaning into what constitutes the “length”; noting however under Boston Scientific Scimed, Inc. v. Cordis Corp, 554 F.3d 982 (Fed. Cir. 2009), it does not take an inventive leap to combine side-by-side embodiments so using the angle of Fig. 10 to extend through almost an entire length of the grip as shown in Fig. 9 is obvious).
Claims 21 and 28 are rejected under 35 U.S.C. 103 as being unpatentable Sussich (US Pub. No. 2016/0096087 A1) in view of Kronogǎrd (herein “Kronogard”; WO Pub. No. 92/17247) in view of McLoughlin (US Pub. No. 2013/0130825 A1) and in further view of Hannon et al. (herein ”Hannon”; US Pat. No. 5,290,035).
Regarding claims 21 and 28, it is noted that the combined Sussich, Kronogard, and McLoughlin do not specifically disclose that wherein the club face at least one of: seeks approximately square or has a reduced torque to square the club face, to an arc of stroke when the golf club contacts a golf ball. However, Sussich discloses the ability to distribute the weight the golf club as desired (par. [0047]-[0051]). In addition, Hannon disclose that the golf club is adapted such that the club face at least one of: seeks approximately square or has a reduced torque to square the club face, to an arc of stroke when the golf club contacts a golf ball (col. 2, lines 2-8 and col. 4, lines 41-53; noting it seeks square during the putting stroke as there is “no moment about the shaft axis”). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Sussich, Kronogard, and McLoughlin to make the golf club self-balancing and adapted such that the club face at least one of: seeks approximately square or provides approximately zero torque with respect to the shaft, to an arc of stroke when the golf club contacts a golf ball as taught by Hannon because doing so would be combining prior art elements (a putter that can have variable weighting and a putter that can be weighted to be face balanced) according to known methods (weight the putter to have a face balance) to yield predictable results (weighting the putter to have a face balance, the face seeking square during the putting stroke because there is no moment about the shaft axis).
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, 9, 19, and 26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 18, 39 of copending Application No. 18/170,659. The claims of the current application and the claims of the parent application generally claim the same subject matter with small and minor deviations in language.
This is a provisional nonstatutory double patenting rejection.
Conclusion
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/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
2/23/26