Dunlop Sports Company Limited

Patent Trials and Appeals Board

Oct 28, 2021

2021002423 (P.T.A.B. Oct. 28, 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.
14/455,254 08/08/2014 Michael J. Kline CLEVE-006A 2147
7663 7590 10/28/2021
STETINA BRUNDA GARRED & BRUCKER
75 ENTERPRISE, SUITE 250
ALISO VIEJO, CA 92656
EXAMINER
STANCZAK, MATTHEW BRIAN
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
10/28/2021 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MICHAEL J. KLINE and DENISE L. SALVUCCI
__________

Appeal 2021-002423
Application 14/455,254
Technology Center 3700
__________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner’s final rejection of claims 1–10 and 12–18. Final Act. 1 (Office
Action Summary); Appeal Br. 1, 3. Claim 11 has been withdrawn from
consideration and claims 19 and 20 have been canceled. See Claims App.
We have jurisdiction under 35 U.S.C. § 6(b). For the reasons explained
below, we AFFIRM the Examiner’s rejection and designate our affirmance
of independent claim 1 (and hence its dependent claims) as a NEW
GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “Sumitomo
Rubber Industries, Ltd.” Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The disclosed subject matter “pertains generally to golf clubs and,
more particularly, to a tape based weighting system which, when applied to
a golf club head, effectively maintains the appearance of the branding
indicia on the rear face thereof.” Spec. ¶ 2. System claims 1 and 18 are
independent. Claim 1 is illustrative of the claims on appeal and is
reproduced below.
1. An iron-type golf club head weighting system,
comprising:
an iron-type golf club head having a sole oriented in a
lengthwise direction and an exterior rear surface including a
plurality of predefined, prescribed regions on the exterior rear
surface which are at least partially defined by a visual line of
demarcation on the exterior rear surface and are on only a portion
of the exterior rear surface, each predefined, prescribed region
intended to represent different center of gravity adjustments
when a weight is removably applied to the exterior rear surface,
each predefined, prescribed region being of a first prescribed size
and shape comprising a lengthwise section oriented generally
parallel to the lengthwise direction of the sole, the iron-type golf
club head including first branding indicia thereon within at least
a portion of the plurality of predefined, prescribed regions of the
exterior rear surface; and
a weighted tape segment having a lengthwise section and
including second branding indicia thereon, the second branding
indicia having a lengthwise orientation parallel to the lengthwise
section of the weighted tape segment, the weighted tape segment
being of a second prescribed size and shape substantially the
same as the first prescribed size and shape of the plurality of
predefined, prescribed regions, with the weighted tape segment
being removably applied to the exterior rear surface so as to at
least partially cover one of the plurality of predefined, prescribed
regions and at least partially obscure the first branding indicia
while presenting the second branding indicia in at least partial
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substitution for the at least partially obscured first branding
indicia.
REFERENCES

Name Reference Date
Takeda US 6,290,609 B1 Sept. 18, 2001
Best US 2003/0203763 A1 Oct. 30, 2003
Kanazawa2 JP 2006-158935 A June 22, 2006

THE REJECTION ON APPEAL3
Claims 1–10 and 12–184 are rejected under 35 U.S.C. § 103 as
unpatentable over Takeda, Kanazawa, and Best. Final Act. 3.
ANALYSIS
Appellant states that “[t]he patentability of dependent claims 2–5, 12,
and 13–15 stand or fall with the patentability of independent Claim 1.”
Appeal Br. 8. However, claim 12, which depends from claim 1, is
separately argued. See Appeal Br. 24. Further, Appellant presents separate
arguments for each of claims 6–10 and 16–18. See Appeal Br. 21–28.
Accordingly, we select claims 1, 6–10, 12, and 16–18 for individual review,

2 The Examiner provides a machine-generated English-language translation
from the Japanese Patent Office. All citations to Kanazawa hereinafter will
be to this English-language translation.
3 In the Final Office Action, claims 1 and 18 were additionally objected to
for informalities. Final Act. 2. However, these objections are rendered
moot in view of the corrections made in an After-Final Amendment that was
entered. See Adv. Act. 1–2; Appeal Br. 3.
4 The Examiner lists claims 1–18 as being rejected in the statement of the
rejection. Final Act. 3. However, as indicated above, claim 11 has been
withdrawn from further consideration. See Final Act. 1; Appeal Br. 3.
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with claims 2–5 and 13–15 standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Claim 1
The Examiner primarily relies on Takeda for disclosing many of the
limitations of claim 1, and particularly the addition of weights to a golf club
head for “fine adjustment of the weight balance, moment of inertia and the
like of a head.” Takeda Abstract; see also Final Act. 3–4. However, the
Examiner acknowledges that “Takeda does not specifically disclose the use
of weighted tape” or that the club head includes a “first branding indicia
thereon” with the “weighted tape segment including second branding
indicia thereon.” 5 Final Act. 4. Addressing the use of tape, the Examiner
states, “Kanazawa discloses stick on weight tape” with indicia printed
thereon. Final Act. 5; see also Kanazawa ¶ 58 (the “printing or marking . . .
may be provided on the balance material 201 as shown in FIG. 13”). Best is
employed for disclosing the use of “brand indicia on the rear face of an
iron.” Final Act. 5. The Examiner provides a reason for their combination
(see Final Act. 5) and, as regarding the printed matter, the Examiner states,
“the use of branding indicia is merely ornamentation and also provides no
functional relationship to at least the weight tape.” Final Act. 6; see also
Ans. 9.
Appellant characterizes the Examiner’s rejection as “fail[ing] to
present a prima facie case of obviousness,” “making hypothetical
suppositions and substitutions,” and “misapplying case precedent.” Appeal

5 However, the Examiner notes that “Takeda discloses a different
embodiment that utilizes pressure sensitive adhesion (Fig. 12 and col. 7,
lines 9–11).” Final Act. 5.
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Br. 9. Appellant begins by discussing the problem addressed, which
involves professional golf players fine-tuning their clubs, wherein the
players “may apply lead tape to the exterior rear surface of the iron-type golf
club, thereby covering the manufacturer’s branding indicia.” Appeal Br. 12;
see also Reply Br. 6–8. Appellant’s solution involves applying branding to
the weight tape itself, and orientating the tape to the club so that the tape’s
branding indicia is visible should the club’s branding indicia be covered.
See Appeal Br. 12–13; Reply Br. 6–9. By doing this, Appellant identifies
“three nonobvious functions.” Appeal Br. 13; see also Reply Br. 9–11. The
first being “a visual cue for where to locate a weighted tape segment with
branding indicia thereon,” the second being “an orienting function, to enable
a branded weighted tape segment to display the branding indicia in a
preferred orientation,” and the third being “a visual cue for recommended
center of gravity adjustments when a weight is removably applied to the
exterior rear surface.” Appeal Bar. 13; see also Reply Br. 9–11.
Regarding the problem addressed, our reviewing court has held that it
is not necessary for the prior art to serve the same purpose as that disclosed
in Appellant’s Specification in order to support the conclusion that the
claimed subject matter would have been obvious. See In re Lintner, 458
F.2d 1013, 1016 (CCPA 1972); see also Unwired Planet, LLC v. Google
Inc., 841 F.3d 995, 1003 (Fed. Cir. 2016); In re Heck, 699 F.2d 1331, 1333
(Fed. Cir. 1983) (“The use of patents as references is not limited to what the
patentees describe as their own inventions or to the problems with which
they are concerned. They are part of the literature of the art, relevant for all
they contain.” (citation omitted)). Consequently, Appellant’s attempt to
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distinguish the claim language based on the problem solved is not persuasive
of Examiner error.
Appellant further contends that “[t]he Examiner admits in the FOA
that the cited art ‘does not specifically disclose’ numerous claim limitations”
and identifies them in “Table 1 below.” Appeal Br. 14; see also Reply Br.
11–13. However, as regarding the listed claim 1 limitations, the Examiner
only stated that “Takeda does not specifically disclose” such limitations, not
that the “cited art” (Takeda included) fails to teach or suggest such
limitations. Final Act. 4. In effect, Appellant is arguing the art individually
and/or not responding to the Examiner’s rejection, which is not persuasive of
Examiner error.
Appellant next contends, “[t]he ‘holes’ of Takeda are not on the
‘exterior rear surface’ as are the claimed ‘plurality of predefined, prescribed
regions’” recited in claim 1. Appeal Br. 16; see also Reply Br. 13–16. The
Examiner, on the other hand, states, “[t]he Examiner’s position is that if the
surface can be seen by the user and it is on the rear of the club head, it is in
fact the ‘exterior rear surface.’” Ans. 7. “Furthermore,” according to the
Examiner, “Takeda specifically discloses the use of weights on a ‘rear face’
as more narrowly interpreted by appellant (see Figs. 11 and 14).” Ans. 7;
see also Takeda Abstract. The Examiner has the better position. Appellant
presents no persuasive reason why Takeda’s exposed “bottom surface 15 of
the recess 14” (Takeda 4:26), as depicted in Appellant’s replication of
Takeda’s Figure 10 (see Appeal Br. 16; Reply Br. 14), cannot be said to be
an “exterior rear surface” as recited.
Regarding the recited “plurality of predefined, prescribed regions”
located on the exterior rear surface of the club, the Examiner referenced “the
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holes for the weights, items 32” as teaching this limitation. Final Act. 3; see
also Ans. 7. Regarding such “holes,” Appellant states, “the regions they
define necessarily reside far below the exterior rear surface, element 10
(‘rear face’).” Appeal Br. 16; see also Reply Br. 14. Appellant does not
explain how the hole’s depth (Takeda is silent on this point) bears any
relationship as to whether or not the variously aligned holes themselves,
nevertheless, teach the limitation “plurality of predefined, prescribed
regions.” See also Final Act. 3 (referencing Takeda Figs. 9, 10).
Appellant also contends that because Takeda’s weights “are
‘embedded’ in the golf club head . . . [t]he weights of Takeda are thus not
‘removably applied to the exterior rear surface’” as recited. Appeal Br. 16
(referencing Takeda 5:67); see also Reply Br. 16. Indeed, the Examiner
relies on Takeda for this “removably applied” limitation. See Final Act. 3;
Ans. 7–8. Takeda teaches that “[w]hen striking a ball with the above-
structured head . . . the balance weights 31A, 31B are disposed in the above-
mentioned manner in the recess 14 on the rear face 10 of the head 1.”
Takeda 6:29–34. Takeda continues stating “the weight balance of the head 1
can be freely adjusted, through the combination of the balance weights.”
Takeda 6:34–35. However, Takeda is unclear as to how the balance weights
might be removable from their respective recess for adjustability purposes
while avoiding such separation during the impact that occurs “[w]hen
striking a ball.” Hence, it is just as likely that once Takeda’s weights are
“embedded” within the club (Takeda 5:67), they remain in place, but that
more weights can be installed if desired.
The Examiner tries to explain that “‘removably applied’ [is]
functionally possible,” but without explaining how such removability would
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occur in Takeda. Final Act. 3 (referencing Takeda 6:41–46); see also id. at 4
(referencing Takeda 6:34–36). Alternatively, the Examiner states, “Takeda
also makes obvious the use of pressure sensitive adhesion (see col. 7, lines
9-11). Surely this type of weight would be removably applied (i.e. pressure
sensitive adhesion is readily known in the art as double sided tape).” Ans. 8.
However, it is not altogether clear that a weight applied with an adhesive
strong enough to withstand “striking a ball” (Takeda 6:29), also permits the
weight to be removed. Takeda is silent in the matter stating only that the
weights are attached “by applying pressure or through bonding.” 6 Takeda
7:10–11.
Thus, and based on the record presented, the Examiner has not fully
explained how, and upon what articulated reasoning with rational
underpinning, Takeda renders this “removably applied” subject matter
obvious, without resorting to “speculation, unfounded assumptions or
hindsight reconstruction.” In re Warner, 379 F.2d 1011, 1017 (CCPA
1967); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
However, despite the above, the reference to Kanazawa teaches such
removability in no uncertain terms. Kanazawa teaches: (1) “if the applied

6 We note that this description of applying pressure and bonding relates to
Figures 12 and 13, a different embodiment than that of Figures 9 and 10,
which relates to the above discussion concerning “freely adjusted.” See
Takeda 5:59–6:54, 6:66–7:22. To that end, the Examiner does not explain
why a skilled artisan would combine the teachings of both embodiments.
Final Act. 3–4. See In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (“[T]he
[prior art] reference must clearly and unequivocally disclose the claimed
[invention] or direct those skilled in the art to the [invention] without any
need for picking, choosing, and combining various disclosures not directly
related to each other by the teachings of the cited reference.”).
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balance material is too heavy or too light, . . . it is necessary to peel off the
balance material to be stuck and to reattach the balance material” (Kanazawa
¶ 45); (2) “a test is performed to peel off the sub-balance material
corresponding to an excessive amount, thereby facilitating fine adjustment”
(Kanazawa ¶ 46); (3) “FIG. 10 b is a view showing a state in which the
balance material 240 is stuck to a golf club and the sub-balance material 241
is peeled off and the sub-balance material is finely adjusted” (Kanazawa
¶ 48); and, (4) “the weight of the sub-balance material 241 – 246 can be
adjusted by 0.5 g only by peeling the sub-balance materials 1 –2 one by one”
(Kanazawa ¶ 50). Thus Kanazawa, in addition to disclosing “stick on
weight tape” (Final Act. 5) as discussed above, additionally discloses that
such weighted tape can be removably applied to the exterior surface of a
club head for fine adjustment. For these reasons, in light of Kanazawa, we
conclude it would have been obvious to make the tape “removably applied”
to facilitate fine adjustments as discussed above. However, because our
reasoning differs from or supplements that of the Examiner’s, we designate
our affirmance on this point as a new ground of rejection under 37 C.F.R. §
41.50(b), in order to provide Appellant with a fair opportunity to respond.
Appellant additionally contends that Takeda “cannot ‘at least partially
cover at least one of the plurality of predefined, prescribed regions’ as
claimed in claim 1.” Appeal Br. 16; see also Reply Br. 16. However, as
Takeda’s corresponding “predefined, prescribed regions” are considered to
be the “holes” in Takeda’s rear face (see above and Takeda Figs. 9, 10),
Appellant does not explain how such “holes” are not at least partially
covered by the weights “embedded” therein. See Takeda 5:67.
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Appellant further challenges the attempt “to ‘embed’ such tape in
small and/or deep ‘holes’ below an exterior surface” and that doing so
“would be quite challenging if even possible.” Appeal Br. 16; see also
Reply Br. 15–16. However, and as noted above, Takeda is silent as to the
actual depth of the holes depicted in Takeda’s figures, but we do agree that
Takeda teaches that weights are “embedded” therein, and that after
installation, the weights are “nearly flush with the bottom surface 15.”
Takeda 5:67–6:2. Likewise, Appellant’s Specification is silent as to the
depth of the recited “predefined, prescribed regions,” only stating that “the
predefined region 210 is recessed or elevated” (Spec. ¶ 29) and that the
weighted tape segment “may be applied . . . to cover the branding indicia
215A and/or reside on or within one or more of the predefined regions
210A, 210B, 210C” (Spec. ¶ 35 (italics added)). Appellant does not
adequately explain how weighted tape can be applied within Appellant’s
regions, but not within Takeda’s regions. Accordingly, Appellant’s
contention is not persuasive of Examiner error.
Appellant also addresses the claim 1 limitation pertaining to the
plurality of predefined, prescribed regions “which are at least partially
defined by a visual line of demarcation on the exterior rear surface” of the
club. See Appeal Br. 17; see also Reply Br. 17–18. It is noted, however that
the upper holes in Takeda’s Figure 9 readily depict a visual line of
demarcation on the exterior rear surface of the club, i.e., bottom surface 15.
Regarding such reliance on this figure for disclosing a linear demarcation,
our reviewing court has stated, “we did not mean that things patent drawings
show clearly are to be disregarded.” In re Mraz, 455 F.2d 1069, 1072
(CCPA 1972). The Examiner, however, relies on it being “obvious to try”
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such an orientation (Final Act. 4) without possibly realizing that Takeda
already depicts such an orientation. Thus, we do not fault the Examiner for
relying on the teachings of Takeda to render this “visual line of
demarcation” limitation obvious but, similar to the above, because our
reasoning differs from or supplements that of the Examiner’s, we designate
our affirmance on this point as a new ground of rejection under 37 C.F.R.
§ 41.50(b), in order to provide Appellant with a fair opportunity to respond.
Appellant further addresses Takeda’s lack of any teaching of a weight
having “‘first branding indicia’ as claimed in claim 1.” Appeal Br. 17; see
also Reply Br. 10 (“Takeda does not show branding indicia on its weights”).
Additionally, Appellant references another Takeda embodiment (i.e., Figs.
12–14) stating, “Takeda does not teach to place [substantially] branding
indicia on these weights.” Appeal Br. 18. However, the Examiner does not
rely on Takeda for teaching such “branding” limitations. Instead, the
Examiner relies on Kanazawa and Best for such teachings. See Final Act. 5.
Thus, Appellant’s focus on Takeda to rebut such teachings is indicative that
Appellant is not arguing the Examiner’s rejection as well as arguing the art
individually. To be clear, Appellant does not dispute that indicia is readily
depicted on Kanazawa’s weighted tape (see Kanazawa Fig. 13) and on
Best’s club head (see Best Fig. 1).
Appellant also attempts to distinguish Kanazawa stating “[w]hile it
may be true that Kanazawa discloses weight values printed on the heart-
shaped weights of Fig. 13, such values do not comprise ‘branding indicia.’”
Appeal Br. 19. Again, Appellant’s focus is misplaced since Best, not
Kanazawa, was relied upon for disclosing the use of “brand indicia on the
rear face of an iron.” Final Act. 5.
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Appellant further seeks to distinguish Kanazawa stating “[m]oreover,
Kanazawa does not disclose a ‘predefined, prescribed’ region in which the
hearts are to be placed.” Appeal Br. 20; see also Reply Br. 19. However, as
repeatedly noted above, the Examiner relied on Takeda for such “predefined,
prescribed” teachings, not Kanazawa. Final Act. 3. Appellant’s additional
argument that “Kanazawa does not disclose an ‘iron-type golf club head’ as
claimed” (Appeal Br. 20) is equally unpersuasive because the Examiner
relied on both Takeda and Best to teach an iron club. See Final Act. 3, 5.
Further, Appellant does not direct us to any passage in Kanazawa indicating
that its clubs are wood-type only, or that Kanazawa’s teachings are not
equally applicable to iron-type clubs as well. Instead, Kanazawa is more
generic in nature disclosing that its “balance material is bonded to a portion
of a golf club.” Kanazawa ¶ 9. Thus, Kanazawa discloses golf clubs in
general and does not restrict such teachings to only wood-type golf clubs,
which Appellant contends.
Appellant also argues that “Kanazawa thus stands for the proposition
that its weights can be applied in any infinite number of orientations.”
Appeal Br. 21. Stated another way, Appellant contends, “Kanazawa does
not disclose . . . placement of its hearts ‘in only one orientation.’” Reply Br.
19. However, claim 1 does not require the weighted tape be applied in only
one direction, and no other. Instead, claim 1 recites “predefined, prescribed
regions” that are “oriented generally parallel to the lengthwise direction of
the sole.” Italics added. As to the orientation of the tape when applied to
the club, claim 1 merely recites that the tape be “applied to the exterior rear
surface so as to at least partially cover one of the plurality of predefined,
prescribed regions.” This does not mandate that the tape be oriented in any
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one particular manner, but instead only that the tape “partially cover one of
the plurality of predefined, prescribed regions.” Thus, Appellant does not
explain how Kanazawa’s teachings might be in conflict with the limitations
of claim 1.
Appellant further objects to the Examiner’s finding that the recited
indicia relates “to ornamentation only which ha[s] no mechanical function
[and] cannot be relied upon to patentably distinguish the claimed invention
from the prior art.” Final Act. 5; see also Appeal Br. 21, 22, 25, 28–38.
Here, Appellant argues claims 1, 6, 16, 17, and 18 as a group. Because
Appellant argues these claims as a group, we (again) select claim 1 for
review, with the remaining claims standing or falling (on this particular
issue) with claim 1.
In attempting to distinguish the Examiner’s findings, Appellant
references the MPEP and a particular Board Decision wherein, as per
Appellant, the Board held that “the shape . . . is important because it results
in a product which is distinct from the reference product.” Appeal Br. 29
(citations omitted). However, even presuming this prior Board Decision is
binding in the present situation, claim 1 does not recite use of any particular
indicia and, as regarding a particular shape of the underlying tape, claim 1
merely requires the “weighted tape segment being of a second prescribed
size and shape substantially the same as the first prescribed size and shape of
the plurality of predefined, prescribed regions.” See also Reply Br. 3–5, 7.
To be clear, the aforesaid recited “first prescribed size and shape” merely
states that “each predefined, prescribed region being of a first prescribed size
and shape comprising a lengthwise section oriented generally parallel to the
lengthwise direction of the sole.” Hence, no particular shape is recited in
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claim 1 (other than it having a length) contrary to the situation expressed in
the above Board Decision that a distinction can be made since “the shape . . .
is important because it results in a product which is distinct from the
reference product.” Here, Appellant does not explain how the shape of the
indicia or the tape is important. Consequently, Appellant’s contentions are
not persuasive of Examiner error on this point.
Appellant further “disputes the Examiner’s finding that the claimed
‘branding indicia’ comprises ‘ornamentation only’ with no mechanical
function.” Appeal Br. 30. This is because, as per Appellant, “the
specification clearly teaches and shows, ‘branding indicia’ refers to a
‘brand.’” Appeal Br. 30. As support, Appellant replicates paragraph 30 of
Appellant’s Specification which discusses how “branding indicia 215 may
comprise a logo, brand name, or any other form of indicia” suitable to
convey such data as “the manufacturer of the golf club head.” Appeal Br.
30. In other words, branding indicia is a “form of indicia” used to convey
information. This is consistent with the definitions of “branding” and
“brand” proffered by Appellant. See Appeal Br. 31. To be clear, Appellant
emphasizes that “[i]n conclusion, the term ‘branding indicia,’ as used in the
claims, is more than ‘ornamentation only.’ As properly interpreted,
‘branding indicia’ means a distinctive mark or indication comprising a brand
capable of identifying the manufacturer of the golf club” or other data.
Appeal Br. 32. The Examiner does not dispute that “branding indicia”
conveys data or information, and Appellant does not dispute that the indicia
depicted in Kanazawa, or the branding depicted in Best, likewise convey
data or information, similar to that recited in claim 1.
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Appellant further challenges the Examiner’s finding that “it has been
held that no patentable weight is given to printed matter absent a new and
unobvious functional relationship between the printed matter and the
substrate.” Final Act. 7 (citation omitted); see also Appeal Br. 32.
Appellant, thereafter, seeks to explain that the recited branding indicia is
functionally or structurally related to the underlying substrate. See Appeal
Br. 33–34; see also Reply Br. 22–32. Here, Appellant explains that the
recited branding indicia “are claimed for the function of what they
communicate – a golf club brand.” Appeal Br. 34; see also Reply Br. 24–
26. Again, Appellant is simply acknowledging a conveyance of information,
and Appellant does not explain how the conveyance of such data by the
indicia located thereon is functionally or structurally related to the
underlying substrate. Our reviewing court and its predecessor have long
recognized a distinction between printed matter bearing some functional
relationship with its substrate and printed matter “whose primary purpose is
the conveying of intelligence to a reader,” granting only the former
patentable significance. In re Jones, 373 F. 2d 1007, 1012 (CCPA 1967)
accord In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004.)
Appellant attempts to provide three distinctions on this point, the first
being that the Examiner “construed the term ‘substrate’ narrowly” by
focusing on only the tape, and not also the underling golf club. Appeal Br.
34 (“the exterior rear surface of the golf club head, in combination with the
weighted tape segment, are more appropriately viewed as the ‘substrate’”);
see also Reply Br. 26–28. However, even expanding the scope of the
underlying substrate as desired by Appellant, such expansion still does not
create a functional or structural relationship between the indicia and the
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substrate. Second, Appellant contends that the Examiner erred when
concluding that the claimed branding indicia provides no mechanical
function. See Appeal Br. 35; see also Reply Br. 30. Instead, as per
Appellant, “the branding indicia of the claimed invention provide[s] the
mechanical function of enabling weighted tape segments to be applied over
the original, ‘first branding indicia,’ thus providing a weighting function,
while simultaneously presenting the second branding indicia on the exterior
rear surface of the club head.” Appeal Br. 35. However, the “weighting
function” referenced by Appellant occurs as a result of applying a weighted
tape, regardless of the branding indicia on the tape. Again, we are not
persuaded of Examiner error on this point. Third, Appellant contends, “the
Examiner appears, without citing legal authority, to take a diminished view
of the functionality of the claimed branding indicia, in comparison with non-
branding indicia in the cited art.” Appeal Br. 35. This contention regarding
“a diminished view” is based upon the Examiner stating “the use of the
actual weight value indicia printed on Kanazawa would be more functionally
and structurally tied to the actual weight then (sic) branding indicia, as
claimed, would be.” Appeal Br. 35–36 (referencing Final Act. 13). On this
point, Appellant does not explain how providing a manufacturer’s brand on
a tape is “more functionally and structurally tied to the actual weight” than
Kanazawa’s indicia would be, which provides the user with the actual
weight of the tape, not just a brand. See Kanazawa Fig. 13. Appellant is not
persuasive of Examiner error on this point.
Lastly, we note Appellant’s argument that “[t]he Examiner
misinterprets the teachings of the prior art, and uses the claims as a
‘roadmap’ to engage in impermissible ‘hindsight bias’ combinations.”
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Appeal Br. 15 (bolding omitted). See also Reply Br. 11, 13. However, in
view of the above, we find that the Examiner’s rejection of claim 1 is based
on sound technical reasoning, as well as evidence disclosed in the cited prior
art, rather than improper hindsight reconstruction, as alleged.
Accordingly, and based on the above reasons, we are not persuaded the
Examiner erred in rejecting claim 1, or claims 2–5 and 13–15 which stand or
fall with claim 1. See above.
Claim 6
Claim 6 depends directly from claim 1, and further recites first and
second branding indicia which are “substantially identical” to each other.
Appellant contends “‘branding indicia’ . . . means a distinctive mark or
indication comprising a brand capable of identifying the manufacturer of the
golf club.” Appeal Br. 21. Appellant does not challenge the Examiner’s
reliance on Best for disclosing a brand, or on Kanazawa for disclosing
identical indicia on tape. See Final Act. 7 (referencing Best Fig. 1,
Kanazawa Fig. 13). Nor does Appellant challenge the Examiner’s stated
reason for their combination with Takeda. See Final Act. 5, 7. Instead,
Appellant contends that the cited art “fails to teach . . . branding indicia that
is ‘at least partially obscured’ by the weighted tape segment,” a requirement
of parent claim 1. Appeal Br. 21. However, Appellant does not explain how
the stacking of successive weight tapes one upon the other, as shown in
Figures 10 and 11 of Kanazawa, would fail to “at least partially obscure[]”
the indicia (or Best’s brand) on the underneath tape/exterior iron surface
(which would occur when the marked tape illustrated in Figure 13 of
Kanazawa is utilized). In other words, Appellant does not explain how this
covering over of the underneath indicia would not have been at least
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suggested to a skilled person upon viewing the layering or accrual of
multiple tapes as illustrated in Kanazawa, while also aware of Best’s use of
branding as indicia.
Appellant additionally addresses the Examiner’s reference to
Appellant’s branding indicia as “ornamentation only” such that it has “no
mechanical function” and as such, “cannot be relied upon to patentably
distinguish the claimed invention from the prior art.” Appeal Br. 22
(referencing Final Act. 7). This matter has been discussed above and,
needless to say, Appellant’s contention is not persuasive for reasons already
provided.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claim 6 as being obvious in view of Takeda,
Kanazawa, and Best. See Final Act. 7. We sustain its rejection.
Claim 7
Claim 7 also depends directly from claim 1, and further recites a
weighted tape segment that is applied in a manner “to substantially cover the
first branding indicia.” Appellant replicates certain figures from Takeda
stating that “[t]hey do not disclose a weighted tape segment.” Appeal Br.
22. However, Takeda was not relied upon for teaching a weighted tape
segment, Kanazawa was. See Final Act. 5 (“Kanazawa discloses stick on
weight tape”).
Appellant further references figures from Takeda stating “[t]hey do
not disclose first branding indicia on an exterior rear surface of a golf club
head.” Appeal Br. 22. However, Takeda was not relied upon for teaching
either indicia or branding indicia, Kanazawa and Best were. See Final Act. 5
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(noting Kanazawa’s “hearts with weight values printed on them” and Best’s
disclosure of “using brand indicia on the rear face of an iron”).
Accordingly, and based on the record presented, Appellant appears to
be arguing the art individually and as such, Appellant’s contention that
Takeda’s figures “cannot possibly teach or suggest a weighted tape segment
covering first branding indicia” is not persuasive of Examiner error. Appeal
Br. 22. We sustain the Examiner’s rejection of claim 7.
Claim 8
Claim 8 depends from claim 7. Appellant relies on arguments
presented above with respect to parent claim 1 regarding the scope of the
claim term “exterior rear surface.” Appeal Br. 23; see also Reply Br. 20.
Appellant’s contentions are not persuasive for reasons already expressed.
We sustain the Examiner’s rejection of claim 8.
Claim 9
Claim 9 depends directly from claim 1 and, according to Appellant,
“[t]he Examiner rejected claim 9, in substance, on the same basis as claim 7
was rejected.” Appeal Br. 23. Accordingly, Appellant “incorporates by
reference the same arguments . . . made above with respect to claim 7.”
Appeal Br. 23. Appellant’s arguments are not persuasive for the reasons
already expressed. We sustain the Examiner’s rejection of claim 9.
Claim 10
Claim 10 depends directly from claim 1. Appellant relies on
arguments presented for claim 1 as a basis for the allowability of claim 10.
See Appeal Br. 24; see also Reply Br. 21. Appellant’s contentions are not
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persuasive for the reasons provided above. We sustain the rejection of claim
10.
Claim 12
Claim 12 depends from claim 1. Appellant contends that Kanazawa’s
heart-shaped weights are not applied so as “to be arranged in [a]
complimentary fashion to a similarly sized heat-shaped predefined,
prescribed, region on the exterior rear surface of the golf club head.” Appeal
Br. 24; see also Reply Br. 21. First, Appellant does not explain how
Kanazawa fails to disclose additional weights added in a complementary
fashion when Kanazawa clearly illustrates multiple heart-shaped weights all
applied, one upon the other, in the same orientation. See Kanazawa Figs. 10,
11. Second, regarding the teaching of similarly sized predefined, prescribed
regions, the Examiner relied on Takeda for this, not Kanazawa. See Final
Act. 3 (referencing Takeda Figs. 9, 10 and “holes for the weights, items
32”).
Additionally, Appellant contends that “none of the cited art teaches
applying branding indicia to the weights disclosed therein.” Appeal Br. 24.
However, Appellant does not dispute that Kanazawa teaches the application
of indicia to the tape, which is applied to a golf club, nor does Appellant
dispute that Best teaches the application of branding to a golf club. Thus,
Appellant does not explain how the Examiner’s reason for their combination
(i.e., “use of a known technique . . . to improve a similar product . . . in the
same way”) is faulty. Final Act. 5.
Accordingly, and based on the above reasons, we are not persuaded
the Examiner erred in rejecting claim 12, which was rejected under the
combination of Takeda, Kanazawa, and Best. See Appeal Br. 9.
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Claim 16
Claim 16 indirectly depends from claim 1. Appellant contends that
“Best fails to disclose application of weighted tape[] segments comprising
second branding indicia substantially similar to the first branding indicia.”
Appeal Br. 24. However, the Examiner relied on Kanazawa in combination
with Best for such teachings, not Best alone. See Final Act. 9–10. Further,
and in addition to our analysis above with respect to claim 1, Appellant does
not explain how Figure 13 of Kanazawa fails to disclose the use of
“substantially similar” indicia on the weighted tape. Accordingly, we are
not persuaded of Examiner error. We sustain the Examiner’s rejection of
claim 16.
Claim 17
Claim 17 depends from claim 16 and further recites that “one of the
plurality of weighted tape segments comprises a top most weighted tape
segment” and also that “the second branding indicia on the top most
weighted tape segment is substantially visible.” The Examiner primarily
relies on Kanazawa for teaching this limitation (Best teaching use of
“branding indicia”). See Final Act. 10 (referencing Kanazawa Figs. 10, 13).
Rather than indicate how Kanazawa fails to teach this limitation, Appellant
instead contends that because of the stacking depicted in Kanazawa, “Fig. 10
would show only the weight of the top most weight” and not “communicate
the entire weight applied.” Appeal Br. 25; see also Reply Br. 22. However,
providing the “entire weight applied” is not a limitation required by claim
17. As such, Appellant is arguing an unclaimed feature, which is not
persuasive of Examiner error.
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Accordingly, and based on the record presented (including that
involving ultimate parent claim 1), we are not persuaded the Examiner erred
in rejecting claim 17 as being obvious over Takeda, Kanazawa, and Best.
We sustain the rejection of claim 17.
Claim 18
First, it is noted that the two limitations discussed above with respect
to claim 1 that resulted in a new ground of rejection (i.e., “removably
applied” and “visual line of demarcation”) are lacking in independent claim
18. Hence, no new ground of rejection, and all that that entails, is applicable
to claim 18 (which has no dependent claims).
Regarding independent claim 18, Appellant repeats arguments
directed to the recited “exterior rear surface,” which is allegedly lacking in
Takeda. We disagree with Appellant for the reasons already provided.
Appellant also contends that “Kanazawa fails to disclose that its hearts
can be applied in only one direction.” Appeal Br. 27. To be clear, claim 18
does not recite that the tape can be applied in only one direction, instead,
claim 18 recites that “the weighted tape segment is capable of application
. . . in only one orientation in order for . . . the weighted tape segment to be
arranged in a complimentary fashion relative to the . . . predefined,
prescribed region.” This actual limitation is not the same as a tape only
being applied in one direction as stated above. Regardless, Appellant does
not explain how Kanazawa fails to disclose multiple tapes applied in a
complementary fashion as depicted in Figures 10 and 11 of this reference.
See also our discussion of claim 12 above.
Appellant further contends that Kanazawa “shows its hearts applied to
a wood-type golf club,” not an iron. Appeal Br. 27. However, this argument
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is unpersuasive because the Examiner relied on both Takeda and Best to
teach an iron club. See Final Act. 11, 12. See also our discussion on this
point with respect to claim 1 above.
Appellant also addresses the recited limitation of a “predefined,
prescribed region” contending that Kanazawa does not teach this. Appeal
Br. 27. However, similar to our discussion with respect to claim 1 above,
the Examiner relied on Takeda for such teaching, not Kanazawa. See Final
Act. 11.
Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claim 18.
For the above reasons, and based on the record presented, we sustain
the Examiner’s decision rejecting claims 1–10 and 12–18. However, in
some instances noted above, our reasoning regarding independent claim 1
differs from or supplements that of the Examiner’s. Accordingly, we
designate our affirmance of the Examiner’s rejection of claim 1 (and hence
also dependent claims 2–10 and 12–17) as a new ground of rejection under
37 C.F.R. § 41.50(b), to provide Appellant with a fair opportunity to
respond.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed New
Ground
1–10, 12–
18
103 Takeda,
Kanazawa,
Best
1–10, 12–
18
1–10, 12–17

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FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)