2020003070 (P.T.A.B. Dec. 21, 2020)

Eric Burch

Patent Trials and Appeals BoardDec 21, 2020

2020003070 (P.T.A.B. Dec. 21, 2020)

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. 15/639,303 06/30/2017 Eric Burch 510025-CON 9350 53609 7590 12/21/2020 REINHART BOERNER VAN DEUREN P.C. 2215 PERRYGREEN WAY ROCKFORD, IL 61107 EXAMINER BLAU, STEPHEN LUTHER ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 12/21/2020 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): RockMail@reinhartlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ERIC BURCH ____________ Appeal 2020-003070 Application 15/639,303 Technology Center 3700 ____________ Before STEFAN STAICOVICI, JEREMY M. PLENZLER, and BRANDON J. WARNER, Administrative Patent Judges. 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 Final Office Action (dated Dec. 17, 2018, hereinafter “Final Act.”) rejecting claims 21–36.2 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. Club Conex LLC is identified as the real party in interest in Appellant’s Appeal Brief (filed Oct. 4, 2019, hereinafter “Appeal Br.”). Appeal Br. 2. 2 Claims 1–20 are canceled and claims 37–40 are withdrawn. Appeal Br. 2. Appeal 2020-003070 Application 15/639,303 2 SUMMARY OF DECISION We REVERSE and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). INVENTION Appellant’s invention relates to “connectors for interchangeable golf club heads and golf club shafts.” Spec. para. 2. Claims 21 and 29 are independent. Claim 21 is illustrative of the claimed invention and reads as follows: 21. A universal connector system for connecting a golf club head having a hosel and a golf club shaft, the connector comprising: a first member having a head portion and a body portion and having a bore for receiving a terminal end of a shaft, the first member formed as a single piece, and wherein the first member defines an axial upper most extent of the universal connector system; at least one second member, the at least one second member having a head portion and a body portion, the body portion configured to mate with the hosel, wherein the at least one second member is matable with the first member to connect the golf club head to the golf club shaft, the at least one second member formed as a single piece; wherein the first member includes a first anti-rotational member in the form of a plurality of downwardly facing teeth and the at least one second member includes a second anti- rotational member in the form of a plurality of upwardly facing teeth formed on the head portion thereof, the first and second anti-rotational members engageable with one another to prevent relative rotation of the first member relative to the second member about a longitudinal axis of the connector, the first and second anti-rotational members forming a mating interface which is exposed on an exterior radially outer facing surface of the universal connector system; and Appeal 2020-003070 Application 15/639,303 3 wherein the at least one second member includes a third anti-rotational member formed on the body portion of the at least one second member axially below the second anti- rotational member, the third anti-rotational member configured to mate with an anti-rotational member of the golf club head to prevent relative rotation of the second member relative to the head, wherein the first member includes a threaded bore for receipt of a one-piece mounting screw which abuts an exterior of the club head and threads directly into the first member to axially bias the first member into the second member. REJECTION3 The Examiner rejects claims 21–36 under 35 U.S.C. § 103 as being unpatentable over Bennett4 and Boyd.5 ANALYSIS Independent claims 21 requires, inter alia, “a first member . . . formed as a single piece.” Appeal Br., Claims App. 1. Similarly, independent claim 29 recites “a single piece first member.” Id. at 3. The Examiner finds Bennett discloses many of the limitations of independent claims 21 and 29, but “lacks the first member [452, 458] formed as a single piece.” Final Act. 3–4 (citing Bennett, col. 27, l. 59–col. 28, l. 3, col. 28, ll. 28–42, Figs. 56, 57). Nonetheless, the Examiner finds that “Boyd discloses the first member (200) formed as a single piece.” Id. at 3 The Examiner has withdrawn the rejection of claims 24 and 32 under 35 U.S.C. § 112(b) as being indefinite. See Examiner’s Answer (dated Jan. 22, 2020, hereinafter “Ans.”) 6–7; see also Advisory Action (dated July 1, 2019) 1. 4 Bennett et al., US 8,235,837 B2, issued Aug. 7, 2012. 5 Boyd et al., US 9,050,506 B2, issued June 9, 2015. Appeal 2020-003070 Application 15/639,303 4 5 (citing Boyd, Fig. 6B). Thus, the Examiner concludes that it would have been obvious for a person of ordinary skill in the art “to have the first member being a single piece in order to simplify the assembly of a club and/or to form a permanently fixed length club.” Id. The Examiner explains that “[o]ne skilled in the art also makes permanent length clubs with single piece first and second members as described in the rejection.” Id. at 6 (citing In re Larson, 340 F.2d 965, 968 (CCPA 1965)). Appellant argues that the Examiner’s modification “render[s] Bennett unsatisfactory for its intended purpose of providing customized fitting of a golf club” as fastener extension 458 would be part of shaft sleeve 452. Appeal Br. 7. According to Appellant, the Examiner’s modification “would remove the capability of providing multiple fastener extensions [458] for purposes of varying swing weight adjustment and overall head weight adjustment.” Id.; see also Reply Brief (dated Mar. 17, 2020, hereinafter “Reply Br.”) 6. Moreover, Appellant asserts “that the Examiner has thus erred in concluding such a modification is mere design choice, because Bennett specifically perceives a need for keeping sleeve 452 and fastener extension 458 separable.” Appeal Br. 8; see also Reply Br. 8. Appellant explains that, because the Examiner’s “modification renders Bennett unsatisfactory for its purpose of providing interchangeability,” the “modification would not result from mere ‘Engineering Choice.’” Reply Br. 9–10. The Examiner disagrees with Appellant’s position because, according to the Examiner, Bennett discloses an embodiment in which customized fitting of a golf club is provided by having different lengths for extension member 451, regardless of whether intermediate fastener extension 458 is Appeal 2020-003070 Application 15/639,303 5 present. Ans. 7 (citing Bennett, col. 28, ll. 12–27, 43–52, Figs. 54, 56, 57). The Examiner further notes that such a golf club can “be further modified in head weight by having different materials for an intermediate fastener extension 458.” Id. at 7–8 (citing Bennett, col. 28, ll. 54–61). The Examiner asserts that if a “player is satisfied with the characteristics of the club . . . the player does not desire any changes to the club intentionally or inadvertently,” and, thus, “[i]t would be obvious to have a permanent club with a permanent length and permanent head weight that a player is content with,” which is taught by Boyd. Id. at 8 (emphasis added). Thus, the Examiner explains that [b]ecause it is known to have connections between shafts and heads that are constructed to not change the club length or head weight as taught by Boyd . . . combining the shaft sleeve (452) and the intermediate fastener extension (458) of Bennett into a first member formed of a single piece to form a permanently fixed length club with respect to the shaft and head connection would be an obvious modification. Id. at 9. Bennett discloses a customized shaft system for a golf club including an elongate shaft 454, a shaft sleeve 452, an extension member 451, a fastener extension 458, and a fastener 459, which together “provide[] interchangeability between a shaft [454] and a club head [453].” Bennett, col. 3, ll. 49–50, col. 6, ll. 41–43, Fig. 56, 57 (emphasis added). Bennett further discloses adjusting the length of the golf club by providing a plurality of extension members 451 having lengths between about 0.125 inches and about 3.0 inches and adjusting swing weight and overall head weight by providing a plurality of fastener extensions 458. Id., col. 28, ll. 23–27, 54– 58, Figs. 56, 57. As such, by making Bennett’s shaft sleeve 452 and fastener Appeal 2020-003070 Application 15/639,303 6 extension 458 one piece, as per the Examiner’s modification, we agree with Appellant that Bennett’s capability of varying swing weight adjustment and overall head weight adjustment would be lost. See Reply Br. 6. Even though we appreciate that, in light of Boyd’s disclosure, combining shaft sleeve 452 and the fastener extension 458 of Bennett into a single piece could have been accomplished by a skilled artisan (see Ans. 9, 12), nonetheless, we note that the “mere fact that the prior art could be so modified would not have made the modification obvious unless the prior art suggested the desirability of the modification.” In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (emphasis added). If the modification renders the prior art device “inoperable for its intended purpose,” then a prima facie case of obviousness has not been established. Id. Here, forming Bennett’s shaft sleeve 452 and fastener extension 458 as a single piece would reduce the interchangeability between shaft 454 and a club head 453 and, also, reduce the ability to customize the golf club by eliminating Bennett’s capability of varying swing weight adjustment and overall head weight adjustment. Thus, in light of Bennett’s object and purpose—to provide an interchangeable and customizable shaft system for a golf club—it would not have been obvious to a person of ordinary skill to modify Bennett to form shaft sleeve 452 and fastener extension 458 as a single piece “to have a permanent club with a permanent length and a permanent head weight” (see Ans. 8), because such a modification would not have maintained Bennett’s purpose of customization and interchangeability. Furthermore, the Examiner does not adequately explain how after a player is satisfied with the customized club length, swing weight, and head weight, forming Bennett’s shaft sleeve 452 and fastener extension 458 as a Appeal 2020-003070 Application 15/639,303 7 single piece would “simplify the assembly of a club” (see Final Act. 5 (emphasis added)). See Ans. 10. For example, it is not clear how golf club assembly is simplified when after customization is complete, a skilled artisan would need to provide for an extra step forming Bennett’s shaft sleeve 452 and fastener extension 458 as a single piece, rather than just assembling the golf club using separate shaft sleeve 452, customized extension member 451, and customized fastener extension 458. Moreover, we note that because the length of Bennett’s golf club is determined by extension members 451 having varying lengths between about 0.125 inches and about 3.0 inches, forming Bennett’s shaft sleeve 452 and fastener extension 458 as a single piece would not result in a “permanently fixed length,” as the Examiner reasons. See Final Act. 5 (emphasis added). In other words, the length of Bennett’s golf club can be varied regardless of whether shaft sleeve 452 and fastener extension 458 constitute a single piece or separate pieces. Lastly, we note that a proposed change that results in different structure and function may not be an obvious design choice. See In re Gal, 980 F.2d 717, 719–20 (Fed. Cir. 1992) (custom logic cells had different structure and purpose than prior art logic cells and thus were not a design choice). Here, the Examiner’s modification of Bennett’s golf club “to have a permanent club with a permanent length and [a] permanent head weight” (see Ans. 8) is different from Bennett’s object and purpose, namely, to provide an interchangeable and customizable shaft system for a golf club. In conclusion, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. § 103 of claims 21–36 as unpatentable over Bennett and Boyd. Appeal 2020-003070 Application 15/639,303 8 NEW GROUND OF REJECTION Claims 21–24 and 29–32 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Bennett. In regards to independent claim 21, Bennett discloses a universal connector 450 to connect golf club head 453 with hosel 457, and golf shaft 454, including single-piece first member 452 (shaft sleeve) defining an axial upper most extent of universal connector 450 having a head portion with bore 462 for receiving shaft 454, a body portion 460, and first anti-rotational member 464 (tangs) in the form of a plurality of downwardly extending teeth (tangs).6 Bennett, col. 27, l. 59–col. 28, l. 11, Fig. 56. Bennett further discloses at least one single-piece second member 451 (extension member) having a head portion with second anti-rotational member 465 (notches) in the form of a plurality of upwardly extending teeth (material between notches 465) and a body portion configured to mate with hosel 457, wherein first member 452 (shaft sleeve) is matable with at least one second member 451 (extension member) and first anti-rotational member 464 (tangs) engages second anti-rotational member 465 (notches) to connect golf club head 453 to golf club shaft 454 and form a mating interface exposed on a exterior radially outer surface of the connector. Id., col. 28, ll. 12–15, 34– 35, 39–41, Figs. 56, 57. Furthermore, Bennett discloses that the at least one second member 451 (extension member) includes third anti-rotational member 467 (tangs) 6 Although ferrule 455 sits on top of first member 452 (shaft sleeve), ferrule 455 is not part of universal connector 450 because it does not connect golf club head 453 with golf shaft 454, but merely provides a smooth transition between the top of hosel 457 and shaft 454. Appeal 2020-003070 Application 15/639,303 9 formed on the body portion axially below second anti-rotational member 465 (notches) for mating with anti-rotational member 470 (notches) of golf club head 453 to prevent relative rotation of at least one second member 451 (extension member) and golf club head 453. Id., col. 28, ll. 35–42 (“In the assembled interchangeable shaft system 450, tangs 464 of shaft sleeve 452 are engaged with notches 465 of extension member 451 and tangs 467 of extension member 451 are engaged with notches 470 of hosel 457.”), Fig. 56. Lastly, Bennett discloses mounting screw 459 (fastener) that abuts an exterior of golf club head 453, and, when fastener extension 458 is not employed, threads directly into a threaded bore of first member 452 (shaft sleeve) such that tightening of mounting screw 459 (fastener) axially biases first member 452 (shaft sleeve) and at least one single piece second member 451 (extension member) together. Id., col. 28, ll. 43–45, 52–54 (“It should be appreciated that a fastener having sufficient length to engage shaft sleeve 452 may be used rather than incorporating the intermediate fastener extension 458.”), Fig. 57. As to claim 22, Bennett discloses that the plurality of downwardly extending teeth (tangs) 464 are located (formed) at an axial extent of the head portion of first member 452 (shaft sleeve). Bennett, Fig. 56. With regards to claim 23, Bennett discloses that the plurality of upwardly extending teeth (material between notches) 465 are located at an axial extent of the head portion of second member 451 (extension). Id. In regards to independent claim 29, Bennett discloses a universal connector to connect golf club head 453 with hosel 457 and golf shaft 454 Appeal 2020-003070 Application 15/639,303 10 including, single-piece first member 452 (shaft sleeve)7 configured for connection to shaft 454 and having first anti-rotational member 464 (tangs) and at least one single-piece second member 451 (extension member) configured to mate with hosel 457 and having second anti-rotational member 465 (notches). Bennett, col. 27, l. 59–col. 28, l. 42, Fig. 56. Bennett further discloses that first anti-rotational member 464 (tangs) engages second anti- rotational member 465 (notches) to connect golf club head 453 to golf club shaft 454 and form a mating interface exposed on a exterior radially outer surface of the connector. Id., col. 28, ll. 34–35, 39–41, Fig. 56. Furthermore, Bennett discloses mounting screw 459 (fastener) that extends through a portion of golf club head 453, and, when fastener extension 458 is not employed, threads directly into a threaded bore of first member 452 (shaft sleeve) such that tightening of mounting screw 459 (fastener) axially biases first member 452 (shaft sleeve) and at least one single piece second member 451 (extension member) together. Id., col. 28, ll. 43–45, 52–54 (“It should be appreciated that a fastener having sufficient length to engage shaft sleeve 452 may be used rather than incorporating the intermediate fastener extension 458.”), Fig. 57. As to claim 30, Bennett discloses that first anti-rotational member 464 of first member 452 (shaft sleeve) constitutes a plurality of downwardly extending teeth (tangs) formed at an axial extent of a head portion of first member 452 (shaft sleeve). Bennett, col. 28, ll. 3–6, 9–11, 32–33, Fig. 56. With regards to claim 31, Bennett discloses that second anti-rotational member 465 of at least one second member 451 (extension member) 7 Parenthetical nomenclature refers to Bennett. Appeal 2020-003070 Application 15/639,303 11 constitutes a plurality of upwardly extending teeth (material between notches 465) formed at an axial extent of a head portion of at least one second member 451 (extension member). Bennett, col. 28, ll. 34–35, Fig. 56. With respect to claims 24 and 32, Bennett discloses that first anti- rotational member 464 (tangs) is sized to complement and engage second anti-rotational member 465 (notches) to connect golf club head 453 to golf club shaft 454. Id., col. 28, ll. 28–31, 34. In other words, Bennett’s tangs 464 (downwardly extending teeth) are received within notches 465 (spaces formed between upwardly extending teeth) to prevent relative rotation between first member 452 (shaft sleeve) and at least one second member 451 (extension member). Although we decline to reject every claim under our discretionary authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does not mean the remaining claims are patentable. Rather, we merely leave the patentability determination of these claims to the Examiner. See MPEP § 1213.02. CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground of Rejection 21–36 103 Bennett, Boyd 21–36 21–23, 29–31 102(a)(1) Bennett 21–24, 29–32 Overall outcome 21–36 21–24, 29–32 Appeal 2020-003070 Application 15/639,303 12 This Decision contains a new ground 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 [E]xaminer, in which event the prosecution will be remanded to the [E]xaminer. 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 [E]xaminer, overcomes the new ground of rejection designated in the decision. Should the [E]xaminer 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. MPEP § 1214.01. Appeal 2020-003070 Application 15/639,303 13 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). REVERSED; 37 C.F.R. § 41.50(b)