DETAILED ACTION
This Office action is responsive to communication received 11/06/2025 – application papers received, including Power of Attorney and IDS; 03/05/2026 – Petition to Make Special.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continuation Data
This application is a CON of 18/385,970 11/01/2023 PAT 12485324 which is a CON of 18/224,853 07/21/2023 PAT 11839800 which claims benefit of 63/443,494 02/06/2023 and is a CIP of 18/115,222 02/28/2023 PAT 11707655 which claims benefit of 63/389,561 07/15/2022 and claims benefit of 63/443,494 02/06/2023 and said 18/224,853 07/21/2023 is a CIP of 17/988,585 11/16/2022 PAT 11779820 which is a CON of 17/841,893 06/16/2022 PAT 11806590 which is a CON of 17/685,546 03/03/2022 PAT 11400352 which claims benefit of 63/276,981 11/08/2021 and is a CIP of 17/528,402 11/17/2021 PAT 11426641 and is a CIP of 17/682,476 02/28/2022 PAT 12194349 which is a CON of 17/099,362 11/16/2020 PAT 11291890 which is a CON of 16/820,136 03/16/2020 PAT 10874919.
Decision on Petition
The petition to make special under 37 CFR 1.102(c), received 03/05/2026, has been GRANTED. See the decision, mailed 04/17/2026.
Drawings
The drawings were received on 11/06/2025. These drawings are acceptable.
Status of Claims
Claims 1-20 are pending.
Claim Objections - minor
Claim 15 is objected to because of the following informalities:
In line 10, “a” (first occurrence) should be deleted. Appropriate correction is required.
FOLLOWING IS AN ACTION ON THE MERITS:
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,485,324. Although the claims at issue are not identical, they are not patentably distinct from each other because the differences are considered minor phrasing differences and/or an obvious rearrangement of the claimed features among the claims and/or are differences that are obvious and well known in the art.
Here, the claims of the ‘324 patent are, on one hand, more specific than the instant claims. Specifically, the claims of the ‘324 patent further require “wherein a distance between the first port and the toe portion edge is less than a distance between the second port and the toe portion edge, wherein a diameter of the second port is substantially greater than a diameter of the first port, and wherein a maximum distance between the face portion and the back wall portion at a location below the ledge portion is greater than a maximum distance between the face portion and the back wall portion at a location above the ledge portion”. With respect to the remaining claim limitations, the claims of the ‘324 patent encompass substantially all of the limitations of the instant claims, with the differences explained, below:
As to independent claim 1, see claims 3 and 7, which depend from claim 1, of the ‘324 patent. As to claim 2, see claim 1 of the ‘324 patent.
As to claim 3, see claim 1 of the ‘324 patent.
As to claim 4, although the claims of the ‘324 patent do not require “wherein the port is proximate to the at least one rib portion”, the modification of the claimed invention of the ‘324 patent to include this feature would have involved an obvious rearrangement of parts, as relocating the port would have enabled the skilled artisan to selectively move the location of the port to either accommodate an entryway into the interior of the club head or to accommodate a mass portion. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).
As to claim 5, see claim 3, which depends from claim 1 of the ‘324 patent.
As to claim 6, see claim 1 of the ‘324 patent, which requires the port to be located above the ledge portion. As the ledge portion separates the upper back wall portion from the lower back wall portion, it may be inferred that the port is on the upper back wall portion.
As to claim 7, see claim 6 of the ‘324 patent.
As to independent claim 8, see claims 9 and 10, which depend from claim 8 of the ‘324 patent. The claimed “badge” of the ‘324 patent encompasses the now-claimed “cover portion”.
As to claim 9, see claim 8 of the ‘324 patent.
As to claim 10, see claim 8 of the ‘324 patent.
As to claim 11, see at least claims 16 and 20, which depend from claim 15 of the ‘324 patent. As to claim 12, see claim 15 of the ‘324 patent.
As to claim 13, see claim 19 of the ‘324 patent.
As to claim 14, see claim 14, which depends from claim 8 of the ‘324 patent.
As to independent claim 15, see claims 16 and 20, which depend from claim 15, of the ‘324 patent.
As to claims 16 and 17, the claimed location of the port is merely an obvious variation over the location(s) recited in the ‘324 patent (as in claims 1, 12 and 15 of the ‘324 patent). The modification of the claimed invention of the ‘324 patent to include the now-claimed port locations would have involved an obvious rearrangement of parts, as relocating the port would have enabled the skilled artisan to selectively move the location of the port to either accommodate an entryway into the interior of the club head or to accommodate a mass portion. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).
As to claim 18, see claim 16 of the ‘324 patent.
As to claims 19 and 20, see claim 19 of the ‘324 patent.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,839,800. Although the claims at issue are not identical, they are not patentably distinct from each other because the differences are considered minor phrasing differences and/or an obvious rearrangement of the claimed features among the claims and/or are differences that are obvious and well known in the art.
Here, the claims of the ‘800 patent are, on one hand, more specific than the instant claims. Specifically, the claims of the ‘800 patent further require “wherein the back wall portion comprises a recessed portion, wherein an opening of the first port is in the recessed portion, and wherein the recessed portion is configured to receive the cover portion”. With respect to the remaining claim limitations, the claims of the ‘800 patent encompass substantially all of the limitations of the instant claims, with the differences explained, below:
As to independent claim 1, see claim 7, which depends from claim 1, of the ‘800 patent. As to claim 2, see claim 1 of the ‘800 patent.
As to claim 3, see claim 1 of the ‘800 patent.
As to claim 4, although the claims of the ‘800 patent do not require “wherein the port is proximate to the at least one rib portion”, the modification of the claimed invention of the ‘800 patent to include this feature would have involved an obvious rearrangement of parts, as relocating the port would have enabled the skilled artisan to selectively move the location of the port to either accommodate an entryway into the interior of the club head or to accommodate a mass portion. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).
As to claim 5, see claim 3, which depends from claim 1 of the ‘800 patent.
As to claim 6, see claim 1 of the ‘800 patent, which requires the port to be located above the ledge portion. As the ledge portion separates the upper back wall portion from the lower back wall portion, it may be inferred that the port is on the upper back wall portion.
As to claim 7, see claim 6 of the ‘800 patent.
As to independent claim 8, see claim 9, which depends from claim 8 of the ‘800 patent.
As to claims 9 and 10, see at least claims 6 and 19 of the ‘800 patent. The modification of the claimed invention of the ‘800 patent to include these features would have involved an obvious rearrangement of parts, as relocating the mass portion would have enabled the skilled artisan to selectively move the location of the mass portion to alter the weight distribution of the club head. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).
As to claim 11, see at least claim 3 of the ‘800 patent. As to claim 12, see any one of claims 1, 8 and 15 of the ‘800 patent, wherein a second port is located above the ledge portion (i.e., on an upper wall portion) and provides access to the interior of the club head.
As to claim 13, see claims 5, 12 or 19 of the ‘800 patent.
As to claim 14, see claim 13 of the ‘800 patent.
Claims 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,839,800 in view of USPN 8,262,495 to Stites.
As to independent claim 15, the claims of the ‘800 patent lack a shaft and a grip. Stites teaches the usual and customary arrangement of attaching a golf club head to a shaft at one end along with attaching a grip at the opposite end of the shaft in order for a golfer to swing the club head (i.e., see FIG. 2 in Stites). In view of the teaching in Stites, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the claimed device of the ‘800 patent by incorporating and attaching a shaft and a grip to the claimed golf club head in order to enable a user to swing the golf club head to strike a golf ball.
As to claim 16, see claim 18 of the ‘800 patent.
As to claim 17, see claim 20, which depends from claim 15 of the ‘800 patent. Although the claims of the ‘800 patent do not require “wherein the port is below the at least one rib portion”, the modification of the claimed invention of the ‘800 patent to include this feature would have involved an obvious rearrangement of parts, as relocating the port would have enabled the skilled artisan to selectively move the location of the port to either accommodate an entryway into the interior of the club head or to accommodate a mass portion. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).
As to claim 18, see claim 17 of the ‘800 patent.
As to claims 19 and 20, see claim 19 of the ‘800 patent.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. In Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009), the Federal Circuit offered additional instruction as to the need for an explicit analysis. The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.
"[T]he analysis that "should be made explicit" refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis. . . . Under the flexible inquiry set forth by the Supreme Court, the district court therefore erred by failing to take account of 'the inferences and creative steps,' or even routine steps, that an inventor would employ and by failing to find a motivation to combine related pieces from the prior art." Ball Aerosol, 555 F.3d at 993, 89 USPQ2d at 1877.
The Federal Circuit’s directive in Ball Aerosol was addressed to a lower court, but it applies to Office personnel as well. When setting forth a rejection, Office personnel are to continue to make appropriate findings of fact as explained in MPEP § 2141 and § 2143, and must provide a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art at the time of the invention. This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.
I. EXEMPLARY RATIONALES
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
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 1-13 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 10,029,159 to Parsons et al (hereinafter referred to as “Parsons (‘159)”) in view of US PUBS 2014/0302944 to Roach et al (hereinafter referred to as “Roach”) and also in view of US PUBS 2019/0143183 to Parsons et al (hereinafter referred to as “Parsons (‘183)”).
As to claim 1, Parsons (‘159) includes a golf club head (100) comprising: a body portion (110; FIG. 14) comprising an interior portion (700; FIG. 18), an exterior portion (FIG. 14), a port (1830; 1835; FIG. 18) connecting the interior portion (700) and the exterior portion, a toe portion (140) with a toe portion edge, a heel portion (150) with a heel portion edge, a top portion (180) with a top portion edge, a sole portion (190) with a sole portion edge, a front portion (160), and a back portion (170) with a back wall portion (FIGS. 34-35), the back wall portion comprising: a lower back wall portion (3416) extending from the sole portion edge (3390) toward the top portion edge (3380); an upper back wall portion (3412) extending from the top portion edge (3380) toward the sole portion edge (3390); a ledge portion (3414) extending between the lower back wall portion (3416) and the upper back wall portion (3412); a face portion (162) coupled to the front portion; a filler material (i.e., col. 11, lines 34-38) at least partially filling the interior portion (700) of the body portion; a mass portion (i.e., col. 3, line 53; col. 4, line 57; element 124; FIG. 2) coupled to the body portion; wherein a distance between the mass portion (124) and the toe portion edge is less than a distance between the mass portion and the heel portion edge (i.e., see FIG. 10).
Parsons (‘159) does not explicitly disclose “and at least one rib portion on the upper back wall portion extending from the ledge portion toward the top portion edge”. Roach shows it to be old in the art to provide an iron-type golf club head with at least one rib (i.e., truss members 12; FIG. 1) extending between a ledge portion and a top portion. The truss members (12) serve to provide added rigidity to the club head and to fine tune the vibration characteristics of the club head (i.e., see paragraphs [0060] – [0069]). In view of the teaching in Roach, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Parsons (‘159) by including at least one rib on the upper back wall portion extending from the ledge portion toward the top portion edge in order to provide increased structural support to the club head while also serving to adjust the vibration damping characteristics of the club head. Here, the proposed modification of Parsons (‘159) would have involved the use of a known technique (i.e., using at least one rib between a ledge portion and a top portion edge for structural enhancement and added control of vibration, as taught by Roach) to improve similar devices (i.e., each of Parsons (‘159) and Roach are directed to iron-type golf club heads) in the same way. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Parsons (‘159) also lacks an explicit teaching of “a cover portion coupled to the body portion to cover the port”. Here, Parsons (‘183) shows it to be old in the art to include a badge or cover portion to cover one or more ports in the body portion, and wherein the badge or cover portion may include identifying information provided by the manufacturer (i.e., see paragraph [0160]). In view of the publication to Parsons (‘183), it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Parsons (‘159) by incorporating a cover portion coupled to the body portion to cover the port in order to provide a more aesthetically-pleasing back wall and to enable the manufacturer to more readily include any desired indicia, text or color to the club head body. Here, the proposed modification of Parsons (‘159) would have involved the use of a known technique (i.e., using a cover on the body portion to cover the ports and provide a substrate for text, symbols or logos, as taught by Parsons (‘183)) to improve similar devices (i.e., each of Parsons (‘159) and Parsons (‘183) are directed to iron-type golf club heads) in the same way. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
As to claim 2, Parsons (‘159) shows the port is above the ledge portion. Note how port (3522; FIG. 36) is above the ledge portion (3414) in FIG. 36.
As to claim 3, Parsons (‘159) shows the port is below the ledge portion. Note how port (3535; FIG. 36) is below the ledge portion (3414) in FIG. 36.
As to claim 4, although Parsons (‘159), as modified by Roach does not explicitly disclose that “the port is proximate to the at least one rib portion”, note that Roach does reveal that the truss member (12), which serves as the claimed “at least one rib”, may be arranged and located to provide the necessary vibration tuning and strengthening of the perimeter body (i.e., see paragraphs [0063], [0065] and [0067]). In addition, note that Parsons (‘159) shows that ports may be arranged proximate the ledge portion between the toe portion edge and the heel portion edge (i.e., see ports 3531, 3532, 3533, 3534 and 3535; FIG. 36), with any or all of the ports being usable to house a weight (i.e., see col. 6, line 62 through col. 8, line 9). Here, the arrangement of the port in the golf club head of Parsons (‘159) to have been located proximate the rib portion would have involved an obvious rearrangement of parts, as the skilled artisan, before the effective filing date of the claimed invention, would have found it obvious to locate the port based upon the desired weight distribution of the golf club head. See MPEP 2144.04: In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).
As to claim 5, Parsons (‘183) shows it to be obvious to manufacture the badge or cover from any one of a number of different materials, which may be different than at least one of a material of the body portion, the material of the mass portion, or the filler material. See paragraph [0160] in Parsons (‘183).
As to claim 6, Parsons (‘159) shows the port is on the upper back wall portion. Note that ports (1421, 1422, 1423, 1424) in FIG. 14 are shown as being disposed on the upper back wall portion.
As to claim 7, Parsons (‘159) shows a perimeter mass portion on the body portion extending from a location at or proximate to the toe portion to a location at or proximate to the heel portion edge. Here, FIG. 32 shows an elongated mass portion (3130) located along the perimeter on the body portion.
As to claim 8, Parsons (‘159) includes a golf club head (100) comprising: a body portion (110; FIG. 14) comprising an interior portion (700; FIG. 18), an exterior portion (FIG. 14), a toe portion (140) with a toe portion edge, a heel portion (150) with a heel portion edge, a top portion (180) with a top portion edge, a sole portion (190) with a sole portion edge, and a perimeter mass portion extending from a location at or proximate to the toe portion to a location at or proximate to the heel portion edge (i.e., FIG. 32 shows an elongated mass portion (3130) on the body portion), a front portion (160) having a face portion (162) coupled to the front portion, and a back portion (170) with a back wall portion (FIGS. 34-35), the back wall portion comprising: a lower back wall portion (3416) extending from the sole portion edge (3390) toward the top portion edge (3380); an upper back wall portion (3412) extending from the top portion edge (3380) toward the sole portion edge (3390); a filler material (i.e., col. 11, lines 34-38) at least partially filling the interior portion (700) of the body portion; an opening (1830; 1835; FIG. 18) connecting the interior portion (700) and the exterior portion.
Parsons (‘159) does not explicitly disclose “and at least one rib portion on the upper back wall portion extending from a location at or proximate to the lower back wall portion toward the top portion edge”. Roach shows it to be old in the art to provide an iron-type golf club head with at least one rib (i.e., truss members 12; FIG. 1) extending between a ledge portion and a top portion. The truss members (12) serve to provide added rigidity to the club head and to fine tune the vibration characteristics of the club head (i.e., see paragraphs [0060] – [0069]). In view of the teaching in Roach, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Parsons (‘159) by including at least one rib on the upper back wall portion extending from a location at or proximate to the lower back wall portion toward the top portion edge in order to provide increased structural support to the club head while also serving to adjust the vibration damping characteristics of the club head. Here, the proposed modification of Parsons (‘159) would have involved the use of a known technique (i.e., using at least one rib between a ledge portion and a top portion edge for structural enhancement and added control of vibration, as taught by Roach) to improve similar devices (i.e., each of Parsons (‘159) and Roach are directed to iron-type golf club heads) in the same way. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Parsons (‘159) also lacks an explicit teaching of “a cover portion coupled to the body portion to cover the opening”. Here, Parsons (‘183) shows it to be old in the art to include a badge or cover portion to cover one or more ports in the body portion, and wherein the badge or cover portion may include identifying information provided by the manufacturer (i.e., see paragraph [0160]). In view of the publication to Parsons (‘183), it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Parsons (‘159) by incorporating a cover portion coupled to the body portion to cover the port in order to provide a more aesthetically-pleasing back wall and to enable the manufacturer to more readily include any desired indicia, text or color to the club head body. Here, the proposed modification of Parsons (‘159) would have involved the use of a known technique (i.e., using a cover on the body portion to cover the ports and provide a substrate for text, symbols or logos, as taught by Parsons (‘183)) to improve similar devices (i.e., each of Parsons (‘159) and Parsons (‘183) are directed to iron-type golf club heads) in the same way. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Parsons (‘159) does not explicitly disclose “wherein a distance between the opening and the toe portion edge is less than a distance between the at least one rib portion and the toe portion edge”. Note that Roach does reveal that the truss member (12), which serves as the claimed “at least one rib”, may be arranged and located to provide the necessary vibration tuning and strengthening of the perimeter body (i.e., see paragraphs [0063], [0065] and [0067]). In addition, note that Parsons (‘159) shows that openings or ports may be arranged proximate the lower back wall portion between the toe portion edge and the heel portion edge (i.e., see ports 3531, 3532, 3533, 3534 and 3535; FIG. 36), with any or all of the openings or ports being usable to house a weight (i.e., see col. 6, line 62 through col. 8, line 9). Here, the arrangement of the openings or ports in the golf club head of Parsons (‘159) to have been located less of a distance to the toe portion edge than a distance between the at least one rib portion and the toe portion edge would have involved an obvious rearrangement of parts, as the skilled artisan, before the effective filing date of the claimed invention, would have found it obvious to locate the openings or ports based upon the desired weight distribution of the golf club head. See MPEP 2144.04: In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).
As to claim 9, Parsons (‘159) shows a mass portion (i.e., col. 3, line 53; col. 4, line 57; element 124; FIG. 2) coupled to the body portion; wherein a distance between the mass portion (124) and the toe portion edge is less than a distance between the mass portion and the heel portion edge (i.e., see FIG. 10).
As to claim 10, note mass portion (3130; FIG. 32) in Parsons (‘159). As modified by Roach, which teaches a rib portion extending from a ledge portion towards a top portion edge, this mass portion (3130) would be located between the at least one rib portion and the sole portion edge.
As to claim 11, Parsons (‘183) shows it to be obvious to manufacture the badge or cover from any one of a number of different materials, which may be different than at least one of a material of the body portion, the material of the mass portion, or the filler material. See paragraph [0160] in Parsons (‘183).
As to claim 12, Parsons (‘159) shows the opening is on the upper back wall portion. Note that openings or ports (1421, 1422, 1423, 1424) in FIG. 14 are shown as being disposed on the upper back wall portion.
As to claim 13, Parsons (‘159) shows a perimeter mass portion on the body portion extending from a location at or proximate to the toe portion to a location at or proximate to the heel portion edge. Here, FIG. 32 shows an elongated mass portion (3130) along the perimeter on the body portion.
As to claim 15, Parsons (‘159) shows a golf club comprising: a shaft having a first end and a second end opposite the first end; a grip coupled to the first end of the shaft; and a golf club head coupled to the second end of the shaft (i.e., col. 4, lines 7-12). Parsons (‘159) includes a golf club head (100) comprising: a body portion (110; FIG. 14) comprising an interior portion (700; FIG. 18), an exterior portion (FIG. 14), a port (1830; 1835; FIG. 18) connecting the interior portion (700) and the exterior portion, a toe portion (140) with a toe portion edge, a heel portion (150) with a heel portion edge, a top portion (180) with a top portion edge, a sole portion (190) with a sole portion edge, a front portion (160), and a back portion (170) with a back wall portion (FIGS. 34-35), the back wall portion comprising: an outwardly extending ledge portion (3414) extending from a location at or proximate to the toe portion edge to a location at or proximate to the heel portion edge; and a filler material (i.e., col. 11, lines 34-38) at least partially filling the interior portion (700) of the body portion.
Parsons (‘159) does not explicitly disclose “at least one rib portion extending from the ledge portion toward the top portion edge”. Roach shows it to be old in the art to provide an iron-type golf club head with at least one rib (i.e., truss members 12; FIG. 1) extending between a ledge portion and a top portion. The truss members (12) serve to provide added rigidity to the club head and to fine tune the vibration characteristics of the club head (i.e., see paragraphs [0060] – [0069]). In view of the teaching in Roach, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Parsons (‘159) by including at least one rib extending from the ledge portion toward the top portion edge in order to provide increased structural support to the club head while also serving to adjust the vibration damping characteristics of the club head. Here, the proposed modification of Parsons (‘159) would have involved the use of a known technique (i.e., using at least one rib between a ledge portion and a top portion edge for structural enhancement and added control of vibration, as taught by Roach) to improve similar devices (i.e., each of Parsons (‘159) and Roach are directed to iron-type golf club heads) in the same way. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Parsons (‘159) also lacks an explicit teaching of “a cover portion coupled to the body portion to cover the port”. Here, Parsons (‘183) shows it to be old in the art to include a badge or cover portion to cover one or more ports in the body portion, and wherein the badge or cover portion may include identifying information provided by the manufacturer (i.e., see paragraph [0160]). In view of the publication to Parsons (‘183), it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Parsons (‘159) by incorporating a cover portion coupled to the body portion to cover the port in order to provide a more aesthetically-pleasing back wall and to enable the manufacturer to more readily include any desired indicia, text or color to the club head body. Here, the proposed modification of Parsons (‘159) would have involved the use of a known technique (i.e., using a cover on the body portion to cover the ports and provide a substrate for text, symbols or logos, as taught by Parsons (‘183)) to improve similar devices (i.e., each of Parsons (‘159) and Parsons (‘183) are directed to iron-type golf club heads) in the same way. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Parsons does not explicitly disclose “wherein the port is located between the at least one rib portion and the toe portion edge”. Note that Roach does reveal that the truss member (12), which serves as the claimed “at least one rib” may be arranged and located to provide the necessary vibration tuning and strengthening of the perimeter body (i.e., see paragraphs [0063], [0065] and [0067]). In addition, note that Parsons (‘159) shows that ports may be arranged proximate the ledge portion between the toe portion edge and the heel portion edge (i.e., see ports 3531, 3532, 3533, 3534 and 3535; FIG. 36), with any or all of the ports being usable to house a weight (i.e., see col. 6, line 62 through col. 8, line 9). Here, the arrangement of the port in the golf club head of Parsons (‘159) to have been located between the at least one rib portion and the toe portion edge would have involved an obvious rearrangement of parts, as the skilled artisan, before the effective filing date of the claimed invention, would have found it obvious to locate the port based upon the desired weight distribution of the golf club head. See MPEP 2144.04: In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).
As to claim 16, Parsons (‘159) shows the port is above a horizontal midplane of the body portion. Note how port (3522; FIG. 36) is above the horizontal portion, which is shown at (4120) in FIG. 34.
As to claim 17, Parsons (‘159) does not explicitly disclose that “the port is below the at least one rib portion”. Note that Roach does reveal that the truss member (12), which serves as the claimed “at least one rib” may be arranged and located to provide the necessary vibration tuning and strengthening of the perimeter body (i.e., see paragraphs [0063], [0065] and [0067]). In addition, note that Parsons (‘159) shows that ports may be arranged proximate the ledge portion between the toe portion edge and the heel portion edge (i.e., see ports 3531, 3532, 3533, 3534 and 3535; FIG. 36), with any or all of the ports being usable to house a weight (i.e., see col. 6, line 62 through col. 8, line 9). Here, the arrangement of the port in the golf club head of Parsons (‘159) to have been located below the at least one rib portion would have involved an obvious rearrangement of parts, as the skilled artisan, before the effective filing date of the claimed invention, would have found it obvious to locate the port based upon the desired weight distribution of the golf club head. See MPEP 2144.04: In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).
As to claim 18, Parsons (‘183) shows it to be obvious to manufacture the badge or cover from any one of a number of different materials, which may be different than at least one of a material of the body portion, the material of the mass portion, or the filler material. See paragraph [0160] in Parsons (‘183).
As to claim 19, Parsons (‘159) shows a mass portion coupled to the body portion and located below a horizontal midplane of the body portion. See mass portions (3331, 3332, 3330, 3334, 3335) below the horizontal midplane (4120), as shown in FIG. 34.
As to claim 20, Parsons (‘159) shows a perimeter mass portion on the body portion extending from a location at or proximate to the toe portion to a location at or proximate to the heel portion edge. Here, FIG. 32 shows an elongated mass portion (3130) along the perimeter on the body portion.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over USPN 10,029,159 to Parsons et al (hereinafter referred to as “Parsons (‘159)”) in view of US PUBS 2014/0302944 to Roach et al (hereinafter referred to as “Roach”) and also in view of US PUBS 2019/0143183 to Parsons et al (hereinafter referred to as “Parsons (‘183)”) and also in view of USPN D554,217 to Ruggiero et al (hereinafter referred to as “Ruggiero”).
As to claim 14, Parsons (‘159) shows a ledge portion (3414) extending between the lower back wall portion (3416) and the upper back wall portion (3412). However, Parsons (‘159), as modified by Roach and Parsons (‘183), lacks the further limitations “a first ledge portion extending from a location at or proximate to the toe portion edge in an upwardly inclined orientation toward the heel portion edge, and a second ledge portion extending from a location at or proximate to the heel portion edge in an upwardly inclined orientation toward the toe portion edge”. The shape of the ledge clearly affects the shape of the recessed cavity portion to the rear of the striking face, which in turn clearly affects the weight distribution of the club head, as already acknowledged by Parson (‘159) in col. 28, line 53 through col. 29, line 45. Here, Ruggiero shows it to be old in the art to provide a cavity-back iron-type golf club head with a ledge portion that includes inclined ledge portions extending from each of the toe portion edge and the heel portion edge. See annotated FIG. 1 in Ruggiero, which shows a cavity-back club head design having a ledge or shelf portion inclined from each of the toe and heel ends and along with rib portions extending from the ledge portion towards the top portion edge.
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In view of the above reasoning and the showing in Ruggiero of a ledge portion with an inclined orientation, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Parsons (‘159) by incorporating a first ledge portion extending from a location at or proximate to the toe portion edge in an upwardly inclined orientation toward the heel portion edge, and a second ledge portion extending from a location at or proximate to the heel portion edge in an upwardly inclined orientation toward the toe portion edge, with there being a reasonable expectation of success that the placement and design of the ledge portion would have affected the weight distribution of the club head.
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ruggiero (‘218) shows an alternative arrangement of a ledge portion to the rear of an iron-type club head;
Note FIG. 2 in Hasebe, which shows a curved ledge portion defining the upper recessed portion of the club head cavity.
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711
Prosecution Insights