2021000863 (P.T.A.B. Feb. 11, 2021)

Andrew Oman

Patent Trials and Appeals BoardFeb 11, 2021

2021000863 (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. 14/931,024 11/03/2015 Andrew Oman 46921-0002001 8757 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 2021-000863 Application 14/931,024 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, 3, 5–9, 11–20, and 22. 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 2021-000863 Application 14/931,024 2 SUMMARY OF DECISION We AFFIRM IN PART. INVENTION Appellant’s invention relates to a hockey stick. Spec., para. 1. Claims 1, 17, and 20 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 middle portion between the upper portion and the lower portion, wherein the upper portion transitions to the middle portion via a first curve, and wherein the middle portion transitions to the lower portion via a second curve; and a blade that extends from the lower portion and that has a curvature to define a forehand direction and a backhand direction; 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 laterally offset in the backhand direction from the upper portion of the shaft, the offset in the backhand direction provided by the first curve, the middle portion of the shaft, and the second curve, and wherein the upper portion is nonlinear with, and substantially parallel to, 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, the second curve, the middle portion, and the first curve. Appeal 2021-000863 Application 14/931,024 3 REJECTIONS I. The Examiner rejects claim 17 under 35 U.S.C. § 112(b) as being indefinite. II. The Examiner rejects claims 1, 3, 5–9, 11–13, 17–20, and 22 under 35 U.S.C. § 103 as being unpatentable over Ubriaco2 and Thomas.3 III. The Examiner rejects claims 14 and 15 under 35 U.S.C. § 103 as being unpatentable over Ubriaco, Thomas, and Tucker.4 IV. The Examiner rejects claim 16 under 35 U.S.C. § 103 as being unpatentable over Ubriaco, Thomas, and Evanochko.5 V. The Examiner rejects claims 1 and 17 under 35 U.S.C. § 103 as being unpatentable over Ubriaco and Curtis6. VI. The Examiner rejects claim 20 under 35 U.S.C. § 103 as being unpatentable over Ubriaco, Curtis, and Thomas. VII. The Examiner rejects claims 1 and 17 under 35 U.S.C. § 103 as being unpatentable over Ubriaco and Borgen.7 VIII. The Examiner rejects claim 20 under 35 U.S.C. § 103 as being unpatentable over Ubriaco, Borgen, and Thomas. 2 Ubriaco, US 5,853,338, issued Dec. 29, 1998. 3 Thomas, US 4,795,153, issued Jan. 3, 1989. 4 Tucker, Sr., US 6,500,079 Bl, issued Dec. 31, 2002. 5 Evanochko, US 6,364,792 Bl, issued Apr. 2, 2002. 6 Curtis, US 4,544,157, issued Oct. 1, 1985 7 Borgen, US 4,629,190, issued Dec. 16, 1986. Appeal 2021-000863 Application 14/931,024 4 ANALYSIS Rejection I The Examiner finds that “because the term ‘substantially’ is defined to mean ‘to great or significant extent; for the most part,’” the phrase “substantially parallel” is indefinite. Non-Final Act. 2–3 (emphasis omitted); see also Examiner’s Answer (dated Sept. 17, 2020, hereinafter “Ans.”) 16–17. Appellant argues “that the claim term ‘substantially’ is not indefinite merely because it is a relative term.” Appeal Br. 24. According to Appellant, a skilled artisan “when reading the claims in the full context of the original [S]pecification, would have recognized when the upper portion of a one-piece hockey stick ‘is nonlinear with, and substantially parallel to, the lower portion’ of that hockey stick.” Appeal Br. 24 (citing Declaration of Mike Mountain Filed under 37 C.F.R. § 1.132 on March 27, 2020 (hereinafter “Mountain Decl.”), para. 20). The term “substantial” is often used as a modifier to imply “approximate” rather than “perfect.” See Playtex Prods., Inc. v. Proctor and Gamble Co., 400 F.3d 901, 907 (Fed. Cir. 2005). “Words of approximation, such as ‘generally’ and ‘substantially,’ are descriptive terms commonly used in patent claims ‘to avoid a strict numerical boundary to the specified parameter.’” See Playtex Prods., Inc. v. Proctor and Gamble Co., 400 F.3d 901, 907 (Fed. Cir. 2005). Here, Appellant’s Specification describes “longitudinal axis 200 of the upper portion 128” as “substantially parallel and nonlinear with a longitudinal axis 202 of the lower portion 132” when “axes 200 and 202 do not intersect.” Spec. para. 38. The Specification also describes axes 200 and 202 as intersecting at an angle in a range of about 0 Appeal 2021-000863 Application 14/931,024 5 to about 45, 30, 20, 10, or 5 degrees. Id. As such, a skilled artisan would understand from Appellant’s Specification that Appellant has used “substantially” as a term of approximation to mean mostly or usually and to allow some deviation from a specified parameter, i.e., intersecting angle of axes 200 and 202. Therefore, a skilled artisan would understand what is claimed when claim 17 is read in light of Appellant’s Specification. Accordingly, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. § 112(b) of claim 17 as being indefinite. Rejection II With respect to independent claims 1, 17, and 20, the Examiner finds Ubriaco discloses a hockey stick 10 including, inter alia, blade 14 and shaft 12 having an upper portion, a lower portion, and middle portion 24, wherein the upper portion transitions via a first curve to the middle portion and the middle portion transitions via a second curve to the lower portion. Non- Final Act. 3–4 (citing Ubriaco, col. 4, ll. 9–27, Figs. 1–13), 9–12. Reproduced below is the Examiner’s annotated Figure 7 of Ubriaco: The Examiner’s annotated Figure 7 of Ubriaco illustrates a hockey stick including blade 14 and shaft 12 having a middle portion 24 and first and second curves. Id. at 6. Appeal 2021-000863 Application 14/931,024 6 In regards to each of independent claims 1 and 17, 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, the second curve, the middle portion, and the first curve.” Non-Final Act. 4, 10. As to independent claim 20, the Examiner finds that “Ubriaco does not teach the middle portion includes a midpoint of the shaft along a length dimension, and the upper portion is positioned further in the forehand direction than both the blade and the lower portion.” Id. at 12. Nonetheless, in regards to independent claims 1 and 17, 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 (26), the second curve, the middle portion (22), and the first curve.” Id. at 4, 10 (citing Thomas, col. 2, ll. 38–41, Figs. 1–10). Furthermore, with respect to independent claim 20, the Examiner finds that Thomas also discloses that “the middle portion (22) includes a midpoint of the shaft along a length dimension of the shaft, and the upper portion (18) is positioned further in the forehand direction than both the blade (34) and the lower portion (30).” Id. at 12. Thus, with respect to each of independent claims 1 and 17, 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, the second curve, the middle portion, and the first curve 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. Appeal 2021-000863 Application 14/931,024 7 Id. at 4–5, 10 (citing Thomas, col. 2, ll. 60–68). In regards to independent claim 20, the Examiner concludes that it would have been obvious for a person of ordinary skill in the art: to provide Ubriaco with the middle portion [that] includes a midpoint of the shaft along a length dimension of the shaft, and the upper portion is positioned further in the forehand direction than both the blade and 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 12 (citing Thomas, col. 2, ll. 60–68). Additionally, for each of independent claims 1, 17, and 20, 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, 17, and 20] 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. Id. at 5, 10, 12–13 (citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415– 421 (2007)). Claims 1, 3, 5–9, 11–16, 18, and 19 In response to the Examiner’s rejection of independent claim 1, Appellant argues that because Ubriaco expresses a preference to position middle portion 24 (offset) closest to blade 14, the Examiner relies on impermissible hindsight to modify Ubriaco’s hockey stick to move middle portion 24 (offset) “upward near a middle region of the hockey stick based Appeal 2021-000863 Application 14/931,024 8 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 (citing Mountain Decl., para.8). 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 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. The reason proffered by the Examiner to modify Ubriaco’s shaft 12 to have a midpoint in at least one of the lower portion, the second curve, the middle portion, and the first curve, as per Thomas’ golf putter, that is, to move middle portion 24 (offset) upwards near a middle region of Ubriaco’s shaft 12, is already adequately performed by Ubriaco’s hockey stick. That is, Ubriaco already includes middle portion 24 (offset) 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,” Appeal 2021-000863 Application 14/931,024 9 and, thus, there would be no reason to relocate it near a middle region of Ubriaco’s hockey stick shaft. 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 middle portion 24 (offset) interconnecting an upper portion and a lower portion. The Examiner has not provided any findings that Ubriaco recognized a problem with locating middle portion 24 (offset) 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 middle portion 24 (offset) from the 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. 4 (“[T]he Office Action 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 upward on the shaft.” Ans. 5 (citing Ubriaco, col. 4, ll. 34–44). However, the Examiner fails to Appeal 2021-000863 Application 14/931,024 10 adequately explain why based on this teaching a skilled artisan would move middle portion 24 (offset) upwards near a middle region of Ubriaco’s hockey stick shaft, as per Thomas’ golf putter. As discussed supra, Ubriaco already discloses middle portion 24 (offset) 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 make the modification to Ubriaco’s hockey stick shaft, as per Thomas’ golf putter, to achieve the same result. Just because Ubriaco’s hockey stick shaft could be modified to move middle portion 24 (offset) 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, the second curve, the middle portion, and the first curve.” Ans. 12. 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 Appeal 2021-000863 Application 14/931,024 11 putter, would have been obvious to a skilled artisan. See Non-Final Act. 5. 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 middle portion 24 (offset) 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 apparatus).” Ans. 8, 13–14; 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 3, 5–9, 11–16, 18, and 19 as unpatentable over Ubriaco and Thomas. Appeal 2021-000863 Application 14/931,024 12 Claims 17 and 22 Like independent claim 1, independent claim 17 also recites the limitation “wherein a midpoint of the shaft along a length dimension of the shaft is included in at least one of the lower portion, the second curve, the middle portion, and the first curve.” Appeal Br. 30 (Claims App.). As noted above, the Examiner makes the same findings and applies the same reasoning to combine the teachings of Ubriaco and Thomas in the rejection of both independent claims 1 and 17. See Non-Final Act. 3–5, 9– 10. Therefore, we agree with Appellant that for the same reasons discussed supra in the rejection of independent claim 1, the Examiner fails to articulate a sufficient reason, with rational underpinnings, why, in the absence of hindsight gleaned improperly from Appellant’s underlying disclosure, a skilled artisan would have modified Ubriaco’s hockey stick shaft, as per Thomas’ golf putter, to arrive at the subject matter of independent claim 17. See Appeal Br. 20 (“[F]or the reasons described above with respect to claim 1 (incorporated herein by reference), the Examiner's proposed theory for modifying Ubriaco’s hockey stick (based upon Thomas’[] golf putter) relies upon multiple legal and factual errors.”). Accordingly, we also do not sustain the rejection under 35 U.S.C. § 103 of independent claim 17, and its dependent claim 22, as unpatentable over Ubriaco and Thomas. Claim 20 Appellant responds to the Examiner’s rejection of independent claim 20 by noting that: Appeal 2021-000863 Application 14/931,024 13 nothing in Ubriaco or Thomas discloses a hockey stick wherein “the lower portion of the shaft is laterally offset in the backhand direction from the upper portion of the shaft due to-the first curve, the middle portion of the shaft, and the second curve such that the upper portion is positioned further in the forehand direction than both the blade and the lower portion, and wherein the upper portion is nonlinear with, and substantially parallel to, the lower portion.” Appeal Br. 25 (citing Mountain Decl., paras. 7–13, 21) (emphasis added). In response, the Examiner “note[s] that the claim recitation of ‘a forehand direction and the backhand direction’ does not structurally distinguish the claimed apparatus from the prior art of Ubriaco and is directed to placement of a user’s hand on the shaft of the sporting implement.” Ans. 17 (emphasis omitted). In a first instance, we do not agree with the Examiner’s position because independent claim 20 explicitly recites “a blade . . . that has a curvature to define a forehand direction and a backhand direction.” Appeal Br. 30 (Claims App.) (emphasis added). We agree with Appellant that a skilled artisan would understand that “[t]he ‘forehand’ and ‘backhand’ directions, as recited by the claim[], 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 Appeal 2021-000863 Application 14/931,024 14 to consider the curvature of the Ubriaco’s blade 14, and, thus, the Examiner’s rejection does not provide a factual basis to indicate that Ubriaco’s hockey stick, as modified by Thomas, discloses “the upper portion is positioned further in the forehand direction than both the blade and the lower portion,” as recited by claim 20. 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, such that “the upper portion is positioned further in the forehand direction than both the blade and the lower portion,” we note once more that Ubriaco already discloses middle portion 24 (offset) 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 middle portion 24 (offset) near a middle region of hockey stick shaft 12, as per Thomas’ golf putter, to achieve the same result. See Non-Final Act. 12. 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. at 12–13) to conclude obviousness satisfies the Examiner’s obligation to provide reasoned explanation why a skilled artisan would modify Ubriaco’s Appeal 2021-000863 Application 14/931,024 15 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 claim 20 as unpatentable over Ubriaco and Thomas. Rejections III and IV The Examiner’s use of the disclosures of Tucker and Evanochko does not remedy the deficiency of the Ubriaco and Thomas combination discussed supra. See Non-Final Act. 13–15. Therefore, for the same reasons discussed above, we do not sustain the rejections under 35 U.S.C. § 103 of claims 14 as unpatentable over Ubriaco, Thomas, and Tucker and of claim 16 as unpatentable over Ubriaco, Thomas, and Evanochko. Rejection V The Examiner finds Ubriaco discloses a hockey stick 10 including, inter alia, blade 14 and shaft 12 having an upper portion, a lower portion, and middle portion 24, wherein the upper portion transitions via a first curve to the middle portion and the middle portion transitions via a second curve to the lower portion. Non-Final Act. 16–18 (citing Ubriaco, col. 4, ll. 9–27, Figs. 1–13); see also Examiner’s annotated Figure 7 of Ubriaco reproduced above. 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, the second curve, the middle portion, and the first curve,” nonetheless, Curtis’ midpoint 43, 60 satisfies such a feature. Id. at 17, 18 (citing Curtis, col. 4, ll. 46–59, col. 5, ll. 24–38, Figs. 1, 5). Thus, in Appeal 2021-000863 Application 14/931,024 16 regards to independent claims 1 and 17, 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, the second curve, the middle portion, and the first curve 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. Id. (citing Curtis, col. 4, ll. 46–59). With respect to the rejection of claim 1, 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. 11 (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 12–13 (citing Curtis, Figs. 1, 3, annotated Fig. 2; Mountain Decl., para. 14). As such, Appellant asserts 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). In other words, Appellant asserts that a person of ordinary skill in the art would not Appeal 2021-000863 Application 14/931,024 17 modify Ubriaco’s hockey, 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 16. Finally, as to the rejection of independent claim 17, Appellant relies on the same arguments discussed supra. Id. at 20. We are not persuaded because Appellant’s arguments are not commensurate with the Examiner’s rejection. 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 middle portion 24 (offset) to a midpoint region of the hockey stick shaft 12, as per the location of Curtis’ offset 43. Furthermore, the Supreme Court, in KSR, has provided guidance when addressing a concern about picking and choosing. Appeal 2021-000863 Application 14/931,024 18 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. KSR, 550 U.S. at 415–16. Here, Ubriaco discloses a hockey stick shaft having a middle portion 24 (offset) 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 region 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 middle portion 24 (offset) to a midpoint region of the hockey stick shaft, 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 middle portion 24 (offset) to a midpoint portion of the hockey stick shaft, as taught by Curtis, relies on Curtis’ explicit disclosure that the resulting advantages are the result of offset 43 Appeal 2021-000863 Application 14/931,024 19 being positioned at a midpoint region of the hockey stick shaft. Compare Non-Final Act. 17–18 with, Curtis, col. 4, ll. 46–54. We appreciate that Ubriaco discloses a preference for locating middle portion 24 (offset) 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, “[a] reference does not teach away … if it merely 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 middle portion 24 (offset) to a midpoint region 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 middle portion 24 (offset) 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. Appeal 2021-000863 Application 14/931,024 20 In conclusion, for the foregoing reasons, we sustain the rejection under 35 U.S.C. § 103 of independent claims 1 and 17 as unpatentable over Ubriaco and Curtis. Rejection VI The Examiner finds that the combined teachings of Ubriaco and Curtis do not disclose that “the upper portion is positioned further in the forehand direction than both the blade and the lower portion.” Non-Final Act. 20. Nonetheless, the Examiner finds that Thomas teaches this limitation and concludes that it would have been obvious for a person of ordinary skill in the art: to provide Ubriaco [and Curtis] with the upper portion . . . positioned further in the forehand direction than both the blade and 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. (citing Thomas, col. 2, ll. 60–68). Similar to the rejection of independent claim 1 discussed supra in Rejection II, 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 20– 21. In addition to the arguments discussed supra in Rejection V, which we did not find persuasive, Appellant further argues against the Examiner’s rejection of independent claim 20 by incorporating the arguments discussed above in the rejection of independent claim 1 based upon the combined teachings of Ubriaco and Thomas, i.e., Rejection II. See Appeal Br. 26. Appeal 2021-000863 Application 14/931,024 21 We are persuaded by Appellant’s arguments for the same reasons discussed supra in Rejection II. 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 claim 20 does not provide a factual basis to indicate that Ubriaco’s hockey stick shaft, as modified by Curtis and Thomas, includes “the upper portion is positioned further in the forehand direction than both the blade and 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 middle portion 24 (offset) 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. 12. 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 claim 20. In conclusion, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. § 103 of independent claim 20 as unpatentable over Ubriaco, Curtis, and Thomas. Appeal 2021-000863 Application 14/931,024 22 Rejection VII The Examiner finds Ubriaco discloses a hockey stick 10 including, inter alia, blade 14 and shaft 12 having an upper portion, a lower portion, and middle portion 24 (offset), wherein the upper portion transitions via a first curve to the middle portion and the middle portion transitions via a second curve to the lower portion. Non-Final Act. 21–23 (citing Ubriaco, col. 4, ll. 9–27, Figs. 1–13); see also Examiner’s annotated Figure 7 of Ubriaco reproduced above. The Examiner further 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, the second curve, the middle portion, and the first curve.” Id. at 22, 23. Nonetheless, the Examiner finds Borgen discloses “a midpoint [34] . . . of the shaft along a length dimension of the shaft . . . in at least one of the lower portion, the second curve, the middle portion, and the first curve.” Id. at 22, 23 (citing Borgen, 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, the second curve, the middle portion, and the first curve 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 22, 23 (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. 16. According to Appeal 2021-000863 Application 14/931,024 23 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. at 17. “[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 [the] shaft and the heel of the blade of the hockey stick” lacks rational underpinning. See Non-Final Act. 22. The Examiner has not provided any factual basis to indicate that modifying the location of Ubriaco’s middle portion 24 (offset) 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 middle portion 24 (offset) 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 . . . included in at least one of the lower portion, the second curve, the middle portion, and the first curve.” Reply Brief 2–3 (citing Mountain Decl., para. 18). Appeal 2021-000863 Application 14/931,024 24 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 claims 1 and 17 as unpatentable over Ubriaco and Borgen. Rejection VIII The Examiner finds that the combined teachings of Ubriaco and Borgen do not disclose that “the upper portion is positioned further in the forehand direction than both the blade and the lower portion.” Non-Final Act. 24. Nonetheless, the Examiner finds that Thomas teaches this limitation and concludes that it have been obvious for a person of ordinary skill in the art: to provide Ubriaco [and Borgen] with the upper portion . . . positioned further in the forehand direction than both the blade and 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. (citing Thomas, col. 2, ll. 60–68). Similar to the rejection of independent claim 1 discussed supra in Rejection II, 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 25. Appellant argues against the Examiner’s rejection of independent claims 44 and 68 by incorporating the arguments discussed above in the rejection of independent claim 1 based upon Ubriaco and Thomas. See Appeal Br. 26. Appeal 2021-000863 Application 14/931,024 25 In addition to the arguments discussed supra in Rejection VII, which we did not find persuasive, Appellant further argues against the Examiner’s rejection of independent claim 20 by incorporating the arguments discussed above in the rejection of independent claim 1 based upon the combined teachings of Ubriaco and Thomas. See Appeal Br. 26. We are persuaded by Appellant’s arguments for the same reasons discussed supra in Rejection II. 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 claim 20 does not provide a factual basis to indicate that Ubriaco’s hockey stick shaft, as modified by Borgen and Thomas, includes “the upper portion is positioned further in the forehand direction than both the blade and 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 middle portion 24 (offset) 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 Borgen, as per Thomas’ golf putter, to achieve the same result. See Non-Final Act. 12. 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 claim 20. Appeal 2021-000863 Application 14/931,024 26 In conclusion, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. § 103 of independent claim 20 as unpatentable over Ubriaco, Borgen, and Thomas. CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 17 112(b) Indefiniteness 17 1, 3, 5–9, 11–13, 17– 20, 22 103 Ubriaco, Thomas 1, 3, 5–9, 11– 13, 17–20, 22 14, 15 103 Ubriaco, Thomas, Tucker 14, 15 16 103 Ubriaco, Thomas, Evanochko 16 1, 17 103 Ubriaco, Curtis 1, 17 20 103 Ubriaco, Curtis, Thomas 20 1, 17 103 Ubriaco, Borgen 1, 17 20 Ubriaco, Borgen, Thomas 20 Overall Outcome 1, 17 3, 5–9, 11–16, 18–20, 22 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 2021-000863 Application 14/931,024 27 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 rejection of claim 20 over Ubriaco, Curtis, 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.