2021001971 (P.T.A.B. Feb. 25, 2021)

Douglas Patton

Patent Trials and Appeals BoardFeb 25, 2021

2021001971 (P.T.A.B. Feb. 25, 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. 15/903,914 02/23/2018 Douglas Patton 104082.0003US1 1127 149344 7590 02/25/2021 Umberg Zipser LLP 1920 Main Street Suite 750 Irvine, CA 92614 EXAMINER VANDERVEEN, JEFFREY S ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 02/25/2021 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): patents@umbergzipser.com rdean@umbergzipser.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DOUGLAS PATTON Appeal 2021-001971 Application 15/903,914 Technology Center 3700 Before MICHAEL L. HOELTER, MICHAEL J. FITZPATRICK, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–14. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as the inventor Douglas Patton. Appeal Br. 1. Appeal 2021-001971 Application 15/903,914 2 CLAIMED SUBJECT MATTER The claims are directed to a golf club. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A golf club, comprising: a head having first and second through holes that extend through top and bottom surfaces of the head, and a hosel extending from the head, wherein the head comprises an opening at a face of the head that is configured to receive a removable face plate; wherein the first and second through holes are separated from one another by a dividing wall that forms a portion of a boundary of each of the first and second through holes; the face plate removably coupled to the head via a fastener that secures the face plate to the head while the fastener is engaged with the head, such that when the fastener is removed from the head, the face plate is disengaged from the face plate, and wherein the face plate is configured to be received within the opening at the face of the head such that the face plate is flush with a front exterior surface of the head; and wherein the head is configured to be coupled with a shaft via the hosel. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Whitley US 6,080,070 June 27, 2000 Tateno US 7,588,499 B2 Sept. 15, 2009 Roach US 2012/0258820 A1 Oct. 11, 2012 Beno US 9,855,474 B2 Jan. 2, 2018 REJECTIONS Claims 1–3, 6, and 8–14 are rejected under 35 U.S.C. § 103 as being unpatentable over Tateno in view of Jones and Roach. Appeal 2021-001971 Application 15/903,914 3 Claims 4 and 5 are rejected under 35 U.S.C. § 103 as being unpatentable over Tateno in view of Jones, Roach, and Whitley. Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable over Tateno in view of Jones, Roach, and Beno. OPINION The Examiner finds that Tateno teaches the majority of the features recited in claim 1, including “a head having first and second through holes . . . separated from one another by a dividing wall that forms a portion of a boundary of each of the first and second through holes.” Non-Final Act. 2. The Examiner acknowledges that “Tateno does not use a hosel to attach his shaft but [finds that] it is known in the art to use a hosel as disclosed by Jones,” and proposes modifying Tateno’s teachings accordingly. Id. The Examiner also acknowledges that “Tateno uses adhesive or caulking to fasten the face plate,” but finds that Roach teaches the use of a fastener to attach a face plate. Id. The Examiner reasons that it would have been obvious to further modify Tateno’s teachings to include a fastener, rather than adhesive, to attach its face plate to allow for easy replacement. Id. Appellant does not dispute the Examiner’s findings regarding Tateno, other than alleging that “Tateno . . . fails to contemplate first and second holes separated from one another by a dividing wall.” Appeal Br. 4. The Examiner cites Tateno’s void spaces 25 and as corresponding to the recited “first and second through holes” and bar 40 as corresponding to the recited “dividing wall.” Non-Final Act. 2. Tateno’s Figure 2A, reproduced below, illustrates void spaces 25 and bar 40. Appeal 2021-001971 Application 15/903,914 4 Figure 2A is “a plan view . . . of the putter head assembly” from Tateno. Tateno 2:25–26. Other than the general allegation noted above, Appellant offers no meaningful explanation as to why Tateno’s void spaces 25 are not “first and second through holes” as recited in the claim. Although Appellant states that “[a]s discussed above, Tateno contemplates a single void space that passes through upper and lower surfaces of the body” (Appeal Br. 4), the discussion above referenced by Appellant is simply a statement that “[a] void space (25) passes through an upper surface and a lower surface of the head main body (20)” (id. at 3). Appellant’s general allegations do not identify reversible error. As for the remaining findings and rationale, we note that Appellant does not dispute any finding or rationale related to Jones. Appellant contends that “Roach also fails to contemplate first and second holes that extend through top and bottom surfaces of the head and are separated by a Appeal 2021-001971 Application 15/903,914 5 dividing wall.” Appeal Br. 5. This, too, is unpersuasive of Examiner error because, as explained above, the Examiner finds that Tateno teaches the through holes and dividing wall. Appellant does not dispute any of the actual findings related to Roach relied on by the Examiner. Rather, Appellant contends that one skilled in the art would not have made the proposed modification to use a fastener in Tateno’s golf club. Appeal Br. 5–6. Appellant does not dispute the actual rationale relied on by the Examiner regarding the proposed modification based on Roach. Rather, Appellant contends that “there is no evidence in the prior art that such modification would be feasible or desirable due to the significant stress to which the face insert is subjected.” Appeal Br. 5. Tateno’s golf club, like that shown in Appellant’s drawings (see, e.g., Fig. 1), is a putter. Appellant offers no explanation as to why one skilled in the art would expect a putter to be subjected to significant stress as alleged. Further, the golf club depicted in Roach, which the Examiner relies on for the teaching of the fastener, is an iron. There should be no reasonable dispute, and the Examiner notes, that an iron is subjected to significantly higher stresses than a putter. Ans. 4. Appellant also alleges that “the proposed modification would likely change the principle of operation of the Tateno club” because “such modification would limit the points of contact of the face plate with the golf club body and likely reduce or inhibit the transfer of the hitting sensation from the face plate to the shaft.” Id. at 6 (emphasis added). Again, Appellant offers no reasonable explanation as to why this would change the principle of operation for Tateno’s putter, instead relying on general Appeal 2021-001971 Application 15/903,914 6 unsupported allegations. The Examiner responds that the rejection does not involve a bodily incorporation, but, rather, “merely substituting one known connecting means (that being adhesive) with another known connecting means (that being fasteners),” which “would have been obvious to provide adjustability and/or being easier to remove the work piece.” Ans. 5. Appellant’s contention that the references do not teach adhesives and fasteners as being equivalents is unavailing. Reply Br. 2. As noted above, the Examiner provides rationale (i.e., easier to remove), which Appellant does not rebut. We are not apprised of error in the Examiner’s decision to reject claim 1. Appellant does not provide separate argument for the patentability of dependent claims 2, 3, 6, and 8–14. Appeal Br. 6. Appellant does not separately address the rejections of dependent claims 4, 5, and 7. See id. at 6–7 (relying on the arguments presented with respect to claim 1). CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 6, 8–14 103 Tateno, Jones, Roach 1–3, 6, 8–14 4, 5 103 Tateno, Jones, Roach, Whitley 4, 5 7 103 Tateno, Jones, Roach, Beno 7 Overall Outcome 1–14 Appeal 2021-001971 Application 15/903,914 7 TIME PERIOD FOR RESPONSE 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