2021001021 (P.T.A.B. Feb. 11, 2021)

Andrew Oman

Patent Trials and Appeals BoardFeb 11, 2021

2021001021 (P.T.A.B. Feb. 11, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/249,382 08/27/2016 Andrew Oman 46921-0003001 1960 26191 7590 02/11/2021 FISH & RICHARDSON P.C. (TC) PO BOX 1022 MINNEAPOLIS, MN 55440-1022 EXAMINER GLENN, CHRISTOPHER A. ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 02/11/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): PATDOCTC@fr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ANDREW OMAN ____________ Appeal 2021-001021 Application 15/249,382 Technology Center 3700 ____________ Before STEFAN STAICOVICI, EDWARD A. BROWN, and WILLIAM A. CAPP, Administrative Patent Judges. Opinion for the Board filed by STAICOVICI, Administrative Patent Judge Opinion Concurring filed by CAPP, Administrative Patent Judge STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE. Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Non-Final Office Action (dated Oct. 28, 2019, hereinafter “Final Act.”) rejecting claims 1–21 and 41–68. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The inventor, Andrew Oman, is identified as the real party in interest in Appellant’s Appeal Brief (filed June 1, 2020, hereinafter “Appeal Br.”). Appeal Br. 1. Appeal 2021-001021 Application 15/249,382 2 SUMMARY OF DECISION We AFFIRM IN PART. INVENTION Appellant’s invention relates to a hockey stick. Spec., para. 2. Claims 1, 44, and 68 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A hockey stick, comprising: a shaft that includes an upper portion, a lower portion, and a transition portion disposed between the upper portion and the lower portion, the upper portion including an upper end, wherein a line that is tangent to the upper end is non-linear with the lower portion and is substantially parallel with the lower portion, and wherein a midpoint of the shaft along a length dimension of the shaft is included in at least one of the lower portion and the transition portion; and a blade that extends from the lower portion of the shaft; wherein, when the hockey stick is viewed from a viewing position with the blade generally extending toward the viewing position, the lower portion of the shaft is offset in a lateral direction from the upper portion of the shaft, the offset in the lateral direction provided by the transition portion of the shaft. REJECTIONS I. The Examiner rejects claims 1–5, 10–21, 41–48, 50, and 53–68 under 35 U.S.C. § 103 as being unpatentable over Ubriaco2 and Thomas.3 2 Ubriaco, US 5,853,338, issued Dec. 29, 1998. 3 Thomas, US 4,795,153, issued Jan. 3, 1989. Appeal 2021-001021 Application 15/249,382 3 II. The Examiner rejects claims 6, 7, 9, 49, and 52 under 35 U.S.C. § 103 as being unpatentable over Ubriaco, Thomas, and Dolan.4 III. The Examiner rejects claims 8 and 51 under 35 U.S.C. § 103 as being unpatentable over Ubriaco, Thomas, and Curtis.5 IV. The Examiner rejects claim 1 under 35 U.S.C. § 103 as being unpatentable over Ubriaco and Curtis. V. The Examiner rejects claims 44 and 68 under 35 U.S.C. § 103 as being unpatentable over Ubriaco, Curtis, and Thomas. VI. The Examiner rejects claim 1 under 35 U.S.C. § 103 as being unpatentable over Ubriaco and Borgen.6 VII. The Examiner rejects claims 44 and 68 under 35 U.S.C. § 103 as being unpatentable over Ubriaco, Borgen, and Thomas. ANALYSIS Rejection I The Examiner finds Ubriaco discloses most of the limitations of independent claims 1, 44, and 68 including inter alia, an offset in a lateral direction between upper and lower portions of hockey stick shaft 12, wherein the offset is provided in transition region 24, but can also be located further upwards on shaft 12. Non-Final Act. 3, 14, 24 (citing Ubriaco, col. 4, ll. 9–27, 34–43 (“the offset portion 24 can be moved further up on the shaft 12,” “the offset could be moved upwardly on the shaft approximately 5 [inches]”), Figs. 1, 5–7). 4 Dolan et al., US 5,456,463, issued Oct. 10, 1995. 5 Curtis, US 4,544,157, issued Oct. 1, 1985. 6 Borgen, US 4,629,190, issued Dec. 16, 1986. Appeal 2021-001021 Application 15/249,382 4 In regards to each of independent claims 1, 44, and 68, the Examiner finds that “Ubriaco does not teach a midpoint of the shaft along a length dimension of the shaft . . . in at least one of the lower portion and the transition portion.” Non-Final Act. 4, 14, 24. As to independent claim 44, the Examiner further finds that Ubriaco also does not teach that “the upper backhand sidewall of the upper portion is positioned further in the forehand direction than both the blade and the lower forehand sidewall of the lower portion.” Id. at 14–15. Likewise, in regards to independent claim 68, the Examiner finds that Ubriaco also does not teach “that an upper hand gripping region is located in the upper end and a lower hand gripping region is located in at least one of the lower portion (30) and the transition portion (22), and the upper backhand sidewall of the upper end is positioned further in the forehand direction than both the blade and the lower forehand sidewall of the lower portion.” Id. at 24–25. Nonetheless, the Examiner finds that Thomas discloses “a midpoint of the shaft along a length dimension of the shaft . . . in at least one of the lower portion . . . [30] and the transition portion (22).” Id. at 4 (citing Thomas, Figs. 1–10). The Examiner also finds that Thomas discloses that “the upper backhand sidewall of the upper portion is positioned further in the forehand direction than both the blade and the lower forehand sidewall of the lower portion,” as per claim 44. Id. at 15. Furthermore, with respect to independent claim 68, the Examiner finds that Thomas discloses an upper hand gripping region [that] is located in the upper end and a lower hand gripping region [that] is located in at least one of the lower portion (30) and the transition portion (22), and the upper backhand sidewall of the upper end is positioned further in the forehand direction than both the blade and the lower forehand sidewall of the lower portion. Appeal 2021-001021 Application 15/249,382 5 Id. at 24–25. Thus, with respect to each of independent claims 1 and 44, the Examiner determines that it would have been obvious for a person of ordinary skill in the art to provide Ubriaco with a midpoint of the shaft along a length dimension of the shaft . . . included in at least one of the lower portion and the transition portion as taught by Thomas as a means of interconnecting a lower shaft portion and an upper shaft portion using an intermediate portion such that the upper/handle portion is offset from the lower shaft portion. Id. at 4, 15 (citing Thomas, col. 2, ll. 60–68). In regards to independent claim 68, the Examiner concludes that it would have been obvious for a person of ordinary skill in the art to provide the modified Ubriaco with the upper backhand sidewall of the upper end . . . positioned further in the forehand direction than both the blade and the lower forehand sidewall of the lower portion as taught by Thomas as a means of interconnecting a lower shaft portion and an upper shaft portion using an intermediate portion such that the upper/handle portion is offset from the lower shaft portion. Id. at 25 (citing Thomas, col. 2, ll. 60–68). Additionally, for each of independent claims 1, 44, and 68, the Examiner also determines that modifying Ubriaco’s hockey stick, as per Thomas’ golf putter, constitutes a means of using known work in one field of endeavor (shafts for sporting implements) prompting variations of it . . . [as per each of independent claims 1, 44, and 68] 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. Appeal 2021-001021 Application 15/249,382 6 Id. at 4, 15, 25 (citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415–421 (2007)). Claims 1–21 and 41–43 In response to the Examiner’s rejection of independent claim 1, Appellant argues that because Ubriaco expresses a preference to position offset 24 closest to blade 14, the Examiner relies on impermissible hindsight to modify Ubriaco’s hockey stick to move offset or bend 24 “upward near a middle region of the hockey stick [shaft] based on the different configuration of Thomas’ golf putter ‘as a means of interconnecting a lower shaft portion and an upper shaft portion using an intermediate portion such that the upper/handle portion is offset from the lower shaft portion.’” Appeal Br. 4 (citing Ubriaco, col. 2, ll. 48–50; Thomas, col. 2, ll. 60–68). According to Appellant, “a skilled artisan would have plainly recognized . . . that Ubriaco’s original design already achieved the solution for ‘interconnecting’ that the Examiner alleged to be the underlying ‘motivation’ for modifying Ubriaco.” Id. at 5. It is well established that “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In other words, the mere fact that elements can be combined is not, in itself, a reason to combine them. Rather, an obviousness rejection further must adequately explain the reasoning by which those findings support the Examiner’s conclusion of obviousness. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–30 (Fed. Cir. 2009). In this case, the rejection simply fails to meet this required standard. Appeal 2021-001021 Application 15/249,382 7 The reason proffered by the Examiner to modify Ubriaco’s hockey stick shaft to have a midpoint in at least one of the lower portion and the transition portion, based on Thomas’ golf putter, that is, to move offset or bend 24 upwards near a middle region of Ubriaco’s hockey stick shaft, is already adequately performed by Ubriaco’s hockey stick. That is, Ubriaco already includes offset or bend 24 for “interconnecting a lower shaft portion and an upper shaft portion using an intermediate portion such that the upper/handle portion is offset from the lower shaft portion,” and, thus, there would be no reason to relocate it near a middle region of Ubriaco’s hockey stick shaft 12. See Ubriaco, Figs. 6, 7; Non-Final Act. 4. In order to better understand, we illustrate below Figure 7 of Ubriaco, as annotated by the Board: The Board’s annotated Figure 7 of Ubriaco illustrates a hockey stick having a blade 14 and a shaft 12 with transition portion 24 interconnecting an upper portion and a lower portion. The Examiner has not provided any findings that Ubriaco recognized a problem with locating offset or bend 24 near blade 14 for “interconnecting a lower shaft portion and an upper shaft portion . . . such that the upper/handle portion is offset from the lower shaft portion,” as called for by independent claim 1. Stated differently, the Examiner has not adequately explained why a skilled artisan would relocate offset or bend 24 from the Appeal 2021-001021 Application 15/249,382 8 location near blade 14, illustrated above in the Board’s annotated Figure 7 of Ubriaco, to a middle region of Ubriaco’s hockey stick shaft. See also Appeal Br. 5 (“[T]he Examiner provides no evidence Ubriaco’s original design somehow lacks these benefits that the Examiner proffers as purportedly motivating the proposed modification.”). We appreciate the Examiner’s position that “Ubriaco also teaches an alternative embodiment [of] moving the offset [24] upward on the shaft.” Examiner’s Answer (dated Sept. 22, 2020, hereinafter “Ans.”) 5 (citing Ubriaco, col. 4, ll. 34–44). However, the Examiner fails to adequately explain why a skilled artisan, based on this teaching, would move offset or bend 24 upwards near a middle region of Ubriaco’s hockey stick shaft, as per Thomas’ golf putter. As discussed supra, Ubriaco already discloses offset or bend 24 for “interconnecting a lower shaft portion and an upper shaft portion using an intermediate portion such that the upper/handle portion is offset from the lower shaft portion.” Thus, it is not clear why a skilled artisan would relocate offset or bend 24 near a middle region of hockey stick shaft 12, as per Thomas’ golf putter, to achieve the same result. Just because Ubriaco’s hockey stick shaft could be modified to move offset or bend 24 upwards near a middle region of shaft 12 is not, in itself, a reason to make the modification. Without a persuasive articulated rationale based on rational underpinnings for modifying Ubriaco’s hockey stick shaft, as per Thomas’ golf putter, the Examiner’s rejection appears to be the result of hindsight analysis. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Furthermore, we appreciate the Examiner’s position that shortening shaft 12 of Ubriaco’s hockey stick may also result in “a midpoint of the shaft . . . [being] in at least one of the lower portion and the transition portion.” Appeal 2021-001021 Application 15/249,382 9 Ans. 13. However, Ubriaco discloses that based on “Official Rules” the shaft length can be no more than about 63 inches. Ubriaco, col. 2, ll. 3–4, col. 3, ll. 65–67. As such, shortening of Ubriaco’s shaft 12 would result in a very short shaft 12, and the Examiner does not adequately explain how such a modification would affect the use of the resulting shaft in a hockey stick. We are also not persuaded by the Examiner’s mere reliance on KSR to conclude that modifying Ubriaco’s hockey stick shaft, as per Thomas’ golf putter, would have been obvious to a skilled artisan. See Non-Final Act. 4. Such a determination offers no explanation for why a skilled artisan would modify Ubriaco’s hockey stick shaft, as per Thomas’ golf putter, in the claimed manner. Conclusory statements, even based on KSR, are not enough to satisfy the Examiner’s obligation to provide reasoned explanation why a person of ordinary skill in the art would modify the prior art references to create the claimed invention. In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017). “Even under [the] ‘expansive and flexible’ obviousness analysis [of KSR], we must guard against ‘hindsight bias’ and ‘ex post reasoning.’” St. Jude Med., Inc. v. Access Closure, Inc., 729 F.3d 1369, 1381 (Fed. Cir. 2013) (citation omitted). The Examiner’s mere reliance on KSR does not satisfy such a standard. Moreover, the Examiner does not adequately explain why a skilled artisan would move Ubriaco’s offset or bend 24 upwards near a middle region of shaft 12 when Ubriaco’s explicitly states that “the offset [24] is positioned where it can be located closest to the blade.” Ubriaco, Abstract. Lastly, we are not persuaded by the Examiner’s alternative position that Thomas “is sufficient to reject claim 1 . . . under 35 USC 102 (where the claim recitation of ‘a hockey stick’ is directed to intended use of the claimed Appeal 2021-001021 Application 15/249,382 10 apparatus).” Ans. 14; see also Reply Br. 4. Such a rejection has not been presented and, thus, is not part of the instant appeal. In conclusion, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. § 103 of independent claim 1, and its dependent claims 2–21 and 41–43, as unpatentable over Ubriaco and Thomas. Claims 44–68 Appellant responds to the Examiner’s rejection of independent claim 44 by noting that nothing in Ubriaco or Thomas discloses a hockey stick with the lower portion of the shaft being laterally offset in the backhand direction from the upper portion of the shaft due to the transition portion of the shaft “such that the upper backhand sidewall of the upper portion is positioned further in the forehand direction than both the blade and the lower forehand sidewall of the lower portion.” Appeal Br. 20 (citing Declaration of Mike Mountain Filed under 37 C.F.R. § 1.132 on March 27, 2020 (hereinafter “Mountain Decl.”), para. 19). Appellant makes the same argument regarding the rejection of independent claim 68. Id. at 22 (citing Mountain Decl., para. 20). In response to the rejection of both independent claims 44 and 68, the Examiner shifts position in the Answer in finding that Ubriaco, rather than Thomas, discloses the disputed limitation noted above. Compare Non-Final Act. 14–15 with, Ans. 19 (citing Ubriaco, col. 4, ll. 9–27, Figs. 1, 5–7). The Examiner notes that Appellant’s Specification does not define the limitations “a forehand direction” and “a backhand direction,” and, thus, such limitations “do not structurally distinguish the claimed apparatus from the prior art of Ubriaco” because “the recited limitations are directed to Appeal 2021-001021 Application 15/249,382 11 placement of a user’s hand on the hockey stick.” Ans. 19–20. Therefore, according to the Examiner, “Ubriaco is fully capable of ‘a forehand direction’ and ‘a backhand direction’ based on the placement of a user’s hand on” Ubriaco’s hockey stick.” Id. at 19. In a first instance, we do not agree with the Examiner’s position because independent claim 44 explicitly recites “a blade . . . that has a curvature to define a forehand direction and a backhand direction.” Appeal Br. 31 (Claims App.) (emphasis added). Similarly, independent claim 68 recites “a blade . . . with a blade curvature that defines a forehand direction and a backhand direction.” Id. at 31 (emphasis added). Appellant is correct that a skilled artisan would understand that “[t]he ‘forehand’ and ‘backhand’ directions, as recited by the claims, exist even when no player is holding the stick because these directions are defined according to the curvature of the blade of the stick.” Reply Br. 4. We agree with Appellant that these directions are “known throughout the industry, and especially to skilled artisans,” as evidenced by Ubriaco, which discloses blade 12 as having forehand curve 16 and backhand curve 18. See id.; Ubriaco, col. 3, ll. 47– 48, Fig. 2. As such, in light of the Examiner’s construction of the limitations “a forehand direction” and “a backhand direction,” the Examiner’s findings fail to properly consider the curvature of the Ubriaco’s blade 14, and, thus, the Examiner’s rejection does not provide a factual basis to allow a skilled artisan to determine that Ubriaco’s hockey stick shaft, as modified by Thomas, has “the upper backhand sidewall of the upper portion [or upper end] . . . positioned further in the forehand direction than both the blade and the lower forehand sidewall of the lower portion,” as recited by claims 44 Appeal 2021-001021 Application 15/249,382 12 and 68, respectively. Hence, the Examiner’s legal conclusion of obviousness is not supported by sufficient factual evidence, and thus, cannot stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that “[t]he legal conclusion of obviousness must be supported by facts. Where the legal conclusion is not supported by facts it cannot stand.”). In a second instance, in regards to the Examiner’s reasoning to modify Ubriaco’s hockey stick shaft, as per Thomas’ golf putter, presented in the Non-Final Action, we note once more that Ubriaco already discloses offset or bend 24 for “interconnecting a lower shaft portion and an upper shaft portion using an intermediate portion such that the upper/handle portion is offset from the lower shaft portion,” as illustrated above in the Board’s annotated Figure 7 of Ubriaco. Thus, it is not clear why a skilled artisan would relocate offset or bend 24 near a middle region of hockey stick shaft 12, as per Thomas’ golf putter, to achieve the same result. See Non- Final Act. 15, 25. Lastly, as discussed supra in the rejection of independent claim 1, we do not support the Examiner’s position that mere reliance on KSR (see id.) to conclude obviousness satisfies the Examiner’s obligation to provide reasoned explanation why a skilled artisan would modify Ubriaco’s hockey stick shaft, as per Thomas’ golf putter, to create the claimed invention. In conclusion, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. § 103 of independent claims 44 and 68, and dependent claims 45–67, as unpatentable over Ubriaco and Thomas. Appeal 2021-001021 Application 15/249,382 13 Rejections II and III The Examiner’s use of the disclosures of Dolan and Curtis does not remedy the deficiency of the Ubriaco and Thomas combination discussed supra. See Non-Final Act. 25–32. Therefore, for the same reasons discussed above, we do not sustain the rejections under 35 U.S.C. § 103 of claims 6, 7, 9, 49, and 52 as unpatentable over Ubriaco, Thomas, and Dolan and of claims 8 and 51 as unpatentable over Ubriaco, Thomas, and Curtis. Rejection IV The Examiner finds Ubriaco discloses most of the limitations of independent claim 1 including, inter alia, an offset in a lateral direction between upper and lower portions of hockey stick shaft 12, wherein the offset is provided in transition region 24, but can also be located further upwards on shaft 12. Non-Final Act. 33 (citing Ubriaco, col. 4, ll. 9–27, 34– 43). The Examiner further finds that although “Ubriaco does not teach a midpoint of the shaft along a length dimension of the shaft . . . in at least one of the lower portion and the transition portion,” nonetheless, Curtis’ midpoint 43, 60 satisfies such a feature. Id. at 33–34 (citing Curtis, col. 4, ll. 46–59, col. 5, ll. 24–38, Figs. 1, 5). Thus, the Examiner determines that it would have been obvious for a person of ordinary skill in the art to provide Ubriaco with a midpoint of the shaft along a length dimension of the shaft . . . included in at least one of the lower portion and the transition portion as taught by Curtis as a means of allowing a hockey player’s hand to be in a more natural position, thus reducing pressure and strain on his wrist and making the stick much easier to handle, and allowing for more control because the player can determine how far up or down the shaft his hand is simply by feeling the curve in the shaft. Appeal 2021-001021 Application 15/249,382 14 Id. at 34 (citing Curtis, col. 4, ll. 46–59). Appellant argues that the Examiner’s rejection illustrates “cherry picking” of various teachings from Ubriaco and Curtis without taking into consideration “the stated preferences of these references.” Appeal Br. 12 (citing Mountain Decl., paras. 14–16). Appellant contends that Ubriaco’s regular hockey stick has a different configuration than Curtis’ goalie hockey stick and addresses different problems as Ubriaco discloses a lateral offset, whereas offset 43 in Curtis’ hockey stick allows upper portion C of the shaft to line up with heel 18 of blade 12. Id. at 13–14 (citing Curtis, Figs. 1, 3, annotated Fig. 2; Mountain Decl., para. 14). As such, Appellant contends that a skilled artisan “would have recognized that the modification of Ubriaco, as per Curtis, “to create a new hockey stick configuration including the lateral offset (‘offset 24’) of Ubriaco’s hockey stick would defy Curtis’[] teachings that upper portions of the stick and portions near the heel of the blade lie in the same plane.” Id. at 15 (citing Curtis, col. 4, ll. 22–33; Mountain Decl., paras. 15, 16) (emphasis added). In other words, Appellant asserts that a person of ordinary skill in the art would not modify Ubriaco’s hockey stick shaft, as per Curtis, because “Curtis’ design is designed to improve a goalie stick to achieve the features and performance of a regular hockey stick, which were already achieved by Ubriaco’s original solution without the [Examiner’s] proposed modifications.” Id. at 14 (citing Mountain Curtis, col. 4, ll. 22–33, Decl., para. 15). Moreover, Appellant explicitly notes that the Examiner ignored “Ubriaco’s stated preference that the ‘offset or bend’ of the hockey stick should be located ‘closest to the blade.’” Id. at 15. Appeal 2021-001021 Application 15/249,382 15 We are not persuaded because Appellant cannot show nonobviousness by attacking Ubriaco and Curtis individually when the rejection as articulated by the Examiner is based on a combination of Ubriaco and Curtis. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Nonobviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. [Each reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.”). In this case, the Examiner is not modifying Ubriaco’s hockey stick shaft to include Curtis’ offset 43 such that upper and lower portions of the shaft line up. Rather, the Examiner is modifying the location of Ubriaco’s offset or bend 24 to a midpoint portion of the hockey stick shaft 12, as per the location of Curtis’ offset 43. See Ans. 17 (“The prior art of Curtis is used to teach the claim recitation of ‘a midpoint of the shaft along a length dimension of the shaft is included in at least one of the lower portion and the transition portion.’”) (emphasis omitted). Furthermore, the Supreme Court, in KSR, has provided guidance when addressing a concern about picking and choosing. For over a half century, the Court has held that a “patent for a combination which only unites old elements with no change in their respective functions ... obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men.” Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152– 153, 71 S.Ct. 127, 95 L.Ed. 162 (1950). This is a principal reason for declining to allow patents for what is obvious. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. Appeal 2021-001021 Application 15/249,382 16 KSR, 550 U.S. at 415–16. Here, Ubriaco discloses a hockey stick shaft having an offset or bend 24 in a lateral direction between upper and lower portions of the hockey stick shaft 12. See Ubriaco, Figs. 6, 7. Curtis discloses a hockey stick shaft having an offset 43 located at a midpoint portion of the hockey stick shaft. Curtis, Fig. 2. As such, when combining the teachings of Ubriaco and Curtis, it would have been obvious to a skilled artisan to move Ubriaco’s offset or bend 24 to a midpoint portion of the hockey stick shaft 12, as taught by Curtis, in order to provide the same advantages disclosed by Curtis to Ubriaco’s hockey stick. That is, allowing the wrist of the player “to be in a more natural position” to reduce pressure and strain on the wrist, and, hence, to permit easier handling of the stick. Curtis, col. 4, ll. 46–51. Also, to improve control by simply allowing the player to feel the curve in the shaft to determine how far up or down the shaft his hand is. Id. at col. 4, ll. 51–54. Thus, the reasoning of the Examiner to move Ubriaco’s offset or bend 24 to a midpoint portion of the hockey stick shaft 12, as taught by Curtis, relies on Curtis’ explicit disclosure that the resulting advantages are the result of offset 43 being positioned at a midpoint portion of the hockey stick shaft. Compare Non- Final Act. 34 with, Curtis, col. 4, ll. 46–54. We appreciate that Ubriaco discloses a preference for locating offset 24 at a position “closest to the blade.” See Ubriaco, col. 2, ll. 48–50. We also appreciate that such a design “results in the cupping of the puck by the blade,” which in turn “results in reduced deflection, thus making it easier to receive a pass, give a pass, stick handle, and shoot.” See id., col. 4, ll. 22– 27; see also Mountain Decl., paras. 15, 16. However, to the extent it is Appellant’s position, “[a] reference does not teach away … if it merely Appeal 2021-001021 Application 15/249,382 17 expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009). “The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.” Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000). In this case, although we appreciate that moving Ubriaco’s offset or bend 24 to a midpoint portion of the hockey stick shaft 12, as taught by Curtis, might make it more difficult “to receive a pass, give a pass, stick handle, and shoot,” such a modification will simultaneously provide the advantages disclosed by Curtis and discussed supra. Appellant has not adequately weighed the benefit of having offset or bend 24 located near blade 14, as taught by Ubriaco, or at a midpoint portion of the hockey stick shaft 12, as taught by Curtis, against one another. Accordingly, for the foregoing reasons, we sustain the rejection under 35 U.S.C. § 103 of claim 1 as unpatentable over Ubriaco and Curtis. Rejection V The Examiner finds that the combined teachings of Ubriaco and Curtis do not disclose that “the upper backhand sidewall of the upper portion [or upper end] is positioned further in the forehand direction than both the blade and the lower forehand sidewall of the lower portion.” Non-Final Act. 35, 38. Nonetheless, the Examiner finds that Thomas teaches these Appeal 2021-001021 Application 15/249,382 18 limitations and concludes that it have been obvious for a person of ordinary skill in the art to provide Ubriaco [and Curtis] with the upper backhand sidewall of the upper portion [or upper end] . . . positioned further in the forehand direction than both the blade and the lower forehand sidewall of the lower portion as taught by Thomas as a means of interconnecting a lower shaft portion and an upper shaft portion using an intermediate portion such that the upper/handle portion is offset from the lower shaft portion. Id. at 36, 39 (citing Thomas, col. 2, ll. 60–68). Similar to the rejection of independent claim 1 discussed supra in Rejection I, the Examiner also relies on KSR to conclude that combining the teachings of Ubriaco, Curtis, and Thomas would have been obvious to a person of ordinary skill in the art. Id. at 36–37, 39. In addition to the arguments discussed supra in Rejection IV, which we did not find persuasive, Appellant further argues against the Examiner’s rejection of independent claims 44 and 68 by incorporating the arguments discussed above in the rejection of these claims based upon the combined teachings of Ubraico and Thomas, i.e., Rejection I. See Appeal Br. 21, 23. We are persuaded by Appellant’s arguments for the same reasons discussed supra in Rejection I. First, because the Examiner’s findings fail to consider the limitations “a forehand direction” and “a backhand direction, and, thus, fail to consider the curvature of Ubriaco’s blade 14, the Examiner’s rejection of independent claims 44 and 68 does not provide a factual basis to indicate that Ubriaco’s hockey stick shaft, as modified by Curtis and Thomas, includes “the upper backhand sidewall of the upper portion [or upper end] . . . positioned further in the forehand direction than both the blade and the lower forehand sidewall of the lower portion.” Appeal 2021-001021 Application 15/249,382 19 Hence, the Examiner’s legal conclusion of obviousness is not supported by sufficient factual evidence, and thus, cannot stand. Second, because Ubriaco already discloses offset or bend 24 for “interconnecting a lower shaft portion and an upper shaft portion using an intermediate portion such that the upper/handle portion is offset from the lower shaft portion,” it is not clear why a skilled artisan would make the modification to the hockey stick shaft of Ubriaco and Curtis, as per Thomas’ golf putter, to achieve the same result. See Non-Final Act. 15, 25. Third, we do not support the position that mere reliance on KSR to conclude obviousness satisfies the Examiner’s obligation to provide reasoned explanation why a skilled artisan would modify the hockey stick shaft of Ubriaco and Curtis, as per Thomas’ golf putter, to create the claimed invention of independent claims 44 and 68. In conclusion, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. § 103 of independent claims 44 and 68 as unpatentable over Ubriaco, Curtis, and Thomas. Rejection VI The Examiner finds Ubriaco discloses most of the limitations of independent claim 1 including, inter alia, an offset in a lateral direction between upper and lower portions of hockey stick shaft 12, wherein the offset is provided in transition region 24, but can also be located further upwards on shaft 12. Non-Final Act. 39–40 (citing Ubriaco, col. 4, ll. 9–27, Figs. 1, 5–7). The Examiner further finds that although “Ubriaco does not teach a midpoint of the shaft along a length dimension of the shaft . . . in at least one of the lower portion and the transition portion,” nonetheless, Borgen discloses “a midpoint [34] . . . of the shaft along a length dimension Appeal 2021-001021 Application 15/249,382 20 of the shaft . . . in at least one of the lower portion and the transition portion.” Id. at 33–34 (citing Borgen, col. Col. 2, ll. 49–61). Thus, the Examiner determines that it would have been obvious for a person of ordinary skill in the art to provide Ubriaco with a midpoint of the shaft along a length dimension of the shaft . . . included in at least one of the lower portion and the transition portion as taught by Borgen as a means of providing a hockey stick shaft with a bend in the shaft between the top end of shaft and the heel of the blade of the hockey stick. Id. at 41 (citing Borgen, col. 2, ll. 49–61). Appellant argues that “the Examiner resorted to [impermissible] hindsight” because “the Examiner failed to identify any reason why a person of ordinary skill would have motivated to implement the proposed modification to Ubriaco’s hockey stick.” Appeal Br. 17. According to Appellant, “the Examiner merely recites a purported structural feature [of Borgen] as purported motivation” and such “[m]ere identification of purported structural features . . . is not a substitute for the legally required articulated motivation for a person of skill to modify Ubriaco.” Id. “[R]ejections on obviousness grounds [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d at 988 (cited with approval in KSR, 550 U.S. at 418). In this case, the Examiner’s conclusion that “provid[ing] Ubriaco with a midpoint of the shaft along a length dimension of the shaft . . . in at least one of the lower portion and the transition portion as taught by Borgen” would have been obvious to a skilled artisan in order to “provid[e] a hockey stick shaft with a bend in the shaft between the top end of shaft and the heel of the blade of the hockey stick” lacks rational underpinning. See Appeal 2021-001021 Application 15/249,382 21 Non-Final Act. 41. The Examiner has not provided any factual basis to indicate that modifying the location of Ubriaco’s offset or bend 24 to a midpoint portion of shaft 12 would result in a bent hockey stick shaft, as per Borgen. Similarly, no factual basis of record exists to indicate that modifying Ubriaco’s shaft 12 to include a bent, as taught by Borgen, would result in Ubriaco’s hockey stick shaft having offset or bend 24 located at a midpoint portion of shaft 12. We agree with Appellant that the Examiner does not adequately explain how to modify Ubriaco “based on the concave curve of Borgen’s stick” to obtain “a midpoint of the shaft along a length dimension of the shaft . . . in at least one of the lower portion and the transition portion.” Reply Brief 2–3 (citing Mountain Decl., para. 18). Accordingly, for the foregoing reasons, the Examiner’s conclusion of obviousness lacks rational underpinnings. Therefore, we do not sustain the rejection under 35 U.S.C. § 103 of claim 1 as unpatentable over Ubriaco and Borgen. Rejection VII The Examiner finds that the combined teachings of Ubriaco and Borgen do not disclose that “the upper backhand sidewall of the upper portion [or upper end] is positioned further in the forehand direction than both the blade and the lower forehand sidewall of the lower portion.” Non- Final Act. 42, 44–45. Nonetheless, the Examiner finds that Thomas teaches these limitations and concludes that it have been obvious for a person of ordinary skill in the art to provide Ubriaco [and Curtis] with the upper backhand sidewall of the upper portion [or upper end] . . . positioned further in the forehand direction than both the blade and the lower Appeal 2021-001021 Application 15/249,382 22 forehand sidewall of the lower portion as taught by Thomas as a means of interconnecting a lower shaft portion and an upper shaft portion using an intermediate portion such that the upper/handle portion is offset from the lower shaft portion. Id. at 43, 45 (citing Thomas, col. 2, ll. 60–68). Similar to the rejection of independent claim 1 discussed supra in Rejection I, the Examiner also relies on KSR to conclude that combining the teachings of Ubriaco, Borgen, and Thomas would have been obvious to a person of ordinary skill in the art. Id. at 43, 45–46. In addition to the arguments discussed supra in Rejection VI, which we did not find persuasive, Appellant further argues against the Examiner’s rejection of independent claims 44 and 68 by incorporating the arguments discussed above in the rejection of these claims based upon the combined teachings of Ubriaco and Thomas. See Appeal Br. 21, 23. We are persuaded by Appellant’s arguments for the same reasons discussed supra. First, because the Examiner’s findings fail to consider the limitations “a forehand direction” and “a backhand direction,” and, thus, fail to consider the curvature of Ubriaco’s blade 14, the Examiner’s rejection of independent claims 44 and 68 does not provide a factual basis to indicate that Ubriaco’s hockey stick shaft, as modified by Borgen and Thomas, includes “the upper backhand sidewall of the upper portion [or upper end] . . . positioned further in the forehand direction than both the blade and the lower forehand sidewall of the lower portion.” Hence, the Examiner’s legal conclusion of obviousness is not supported by sufficient factual evidence, and thus, cannot stand. Second, because Ubriaco already discloses offset or bend 24 for “interconnecting a lower shaft portion and an upper shaft portion using an intermediate portion such that the upper/handle portion is offset Appeal 2021-001021 Application 15/249,382 23 from the lower shaft portion,” it is not clear why a skilled artisan would make the modification to the hockey stick of Ubriaco and Borgen, as per Thomas’ golf putter, to achieve the same result. See Non-Final Act. 43, 45. Third, we do not support the position that mere reliance on KSR to conclude obviousness satisfies the Examiner’s obligation to provide reasoned explanation why a skilled artisan would modify the hockey stick shaft of Ubriaco and Borgen, as per Thomas’ golf putter, to create the claimed invention of independent claims 44 and 68. In conclusion, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. § 103 of independent claims 44 and 68 as unpatentable over Ubriaco, Borgen, and Thomas. CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 10–21, 41–48, 50, 53–68 103 Ubriaco, Thomas 1–5, 10–21, 41–48, 50, 53–68 6, 7, 9, 49, 52 103 Ubriaco, Thomas, Dolan 6, 7, 9, 49, 52 8, 51 103 Ubriaco, Thomas, Curtis 8, 51 1 103 Ubriaco, Curtis 1 44, 68 103 Ubriaco, Curtis, Thomas 44, 68 1 103 Ubriaco, Borgen 1 Appeal 2021-001021 Application 15/249,382 24 44, 68 Ubriaco, Borgen, Thomas 44, 68 Overall Outcome 1 2–21, 41–68 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART Appeal 2021-001021 Application 15/249,382 25 CAPP, Administrative Patent Judge, concurring I concur in the result reached by the majority. However, I write separately to comment on the merits of the Examiner’s rejections of claims 44 and 68 over Ubriaco, Curtis, and Thomas; and of claims 44 and 68 over Ubriaco, Borgen, and Thomas. I agree fully with the majority that Thomas fails to disclose a blade that is laterally offset from the shaft in the backhand direction. However, sports implements that have a shaft/handle and a blade that defines a forehand and a backhand direction and where the blade is offset from the shaft in the backhand direction are well known and have been used, at least in the sport of golf, for decades. As just one example, Ping has marketed and sold golf putters with offset heads for a half-century or more. Such prior art, which I consider to be analogous art to the instant application, could have and should have been easily uncovered by the Examiner. However, the Board enters a new ground of rejection at its discretion, and no inference should be drawn from a failure to exercise that discretion. See 37 C.F.R. § 41.50(b); see also Manual of Patent Examining Procedure (MPEP) § 1213.02. In the event that prosecution of this application continues after resolution of this appeal, I leave it to the Examiner whether to find additional art showing a sports equipment blade that is offset from the shaft in the backhand direction.