Ex Parte 7344450 et al

Patent Trial and Appeal Board

Sep 24, 2015

95000378 (P.T.A.B. Sep. 24, 2015)

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.
95/000,378 10/09/2008 7344450 0EKM-136247 8212
50086 7590 09/25/2015
LAW OFFICE OF DAVID H. JUDSON
15950 DALLAS PARKWAY
SUITE 225
DALLAS, TX 75248
EXAMINER
WEHNER, CARY ELLEN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/25/2015 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
____________

Taylor Made Golf Company, Inc.
Requester and Cross-Appellant

v.

Dogleg Right Corporation
Patent Owner and Appellant
____________

Appeal 2012-006542
Reexamination Control 95/000,378
Patent 7,344,450 B2
Technology Center 3900
____________

Before JENNIFER D. BAHR, JEFFREY B. ROBERTSON, and
DANIEL S. SONG, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON REMAND
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On August 30, 2012, the Board issued a decision (hereinafter
“Decision”), affirming the Examiner’s rejection of claims 1-7, 10, 11, and
14-18, and affirming the Examiner’s decision not to reject claims 4, 8, 9, 12,
and 13 in United States Patent 7,344,450 B2 (hereinafter “the ’450 Patent”).
On September 27, 2012, Third Party Requester Taylor Made Golf Company,
Inc., requested rehearing (filed September 27, 2012, hereinafter “Req.
Rh’g”) of the Board’s Decision with respect to claims 8, 9, 12, and 13. The
Board granted-in-part Requester’s Request for Rehearing with respect to
claim construction, but declined to reverse the Examiner’s decision not to
reject claims 8, 9, 12, and 13. (Decision on Request for Rehearing, April 30,
2013.) Requester appealed the Board’s decision to the Court of Appeals for
the Federal Circuit, which vacated the Board’s Decision with respect to
claims 8, 9, 12, and 13, and remanded the case to the Board for further
proceedings. In re Taylor Made Golf Company, LLC., 589 Fed. Appx. 967,
972 (Fed. Cir. 2014).
Specifically, the Federal Circuit stated:
The Board's determination of non-obviousness as to
claims 8, 9, 12, and 13 is vacated, and the matter is remanded to
the Board. On remand, the Board should consider the
disclosure of the prior art in the context of the background
knowledge that would have been possessed by a person of
ordinary skill in the art at the time of the invention, and further
expand upon the grounds for its decision-making.
Id.
For ease of reference, the grounds of rejection relevant to this decision
are:
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III. Claims 8, 9, 12, and 13 under 35 U.S.C. § 103(a) as obvious over
Parente (U.S. Patent 5,911,638, issued June 15, 1999) in view of
Glover (U.S. Patent 3,652,094, issued March 28, 1972);
V. Claims 8 and 12 under 35 U.S.C. § 103(a) as obvious over Parente
in view of Glover and Reynolds Jr. (U.S. Patent 5,746,664, issued
May 5, 1998);
VI. Claims 8, 9, 12, and 13 under 35 U.S.C. § 103(a) as obvious over
Parente in view of Glover, Ellingham (U.S. Patent 1,518,316,
issued December 9, 1924), Ahn (U.S. Patent 6,015,354, issued
January 18, 2000), Sillers (US 2002/0128089 A1, published
September 12, 2002), and Dammen (WO 01/66199 A1, published
September 13, 2001); and
VII. Claims 8 and 12 under 35 U.S.C. § 103(a) as obvious over Parente
in view of Glover, Ellingham, Ahn, Sillers, Dammen, and Reynolds
Jr.
(See Decision 5.)
We take further guidance from our reviewing court in the following
passages, where the court stated:
“There is no question here that press fitting as a means of attachment
was common knowledge at the time of the invention. Parente, Reynolds,
and the patentee's own evidence, all of which were before the Board,
confirm the fact that press fitting was well known in the art.” Taylor Made,
589 Fed. Appx. at 970;
“Given that the common knowledge of press fitting was before the
Board, it was error for the Board to fail to consider whether a person of
ordinary skill in the art would be motivated to combine press fitting with the
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prior art (which, as the Board found, disclosed every other limitation of the
’450 Patent) to arrive at the claimed invention.” Id. at 971; and
“[N]either the Examiner nor the Board considered the record evidence
before it that press fitting was common knowledge at the time of the
invention and was disclosed even in the specific prior art references
considered by the Board.” Id.

REPRESENTATIVE CLAIMS
For convenience, we reproduce claims 1 and 8, which are illustrative
of the appealed subject matter, reads as follows:
1. A method for adjusting a center of gravity of a golf
club head after its manufacture, the golf club including a head
comprising a hollow shell having a plurality of thin walls that
collectively form a club head, the club head including a face for
striking a golf ball, a heel portion, a toe portion, a back portion
and a sole and having an original center of gravity prior to
addition of any weights, the club head further including a
plurality of user-attachable and detachable, discrete weights
arranged on the shell at spaced-apart locations, the method
comprising:
hitting golf balls with the club with the plurality of
weights detachably secured to the shell in a first arrangement,
in which the plurality of weights are positioned in at least two
locations other than the sole, permitting movement of the center
of gravity of the club head from the location of the original
center of gravity toward the club face, wherein the sole is
formed of one or more substantially planar surfaces at the
bottom of the club head facing downwardly; and
after hitting golf balls with the club, forming a second
arrangement with the plurality of weights detachably secured to
the shell, the second arrangement moving the golf club head
center of gravity forward of the original center of gravity in the
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general direction of a first axis extending between the face and
back portion of the head and in the general direction of a
second axis extending between the heel and the toe portions.

8. The method of claim 1, wherein the step of forming
the second arrangement with the plurality of weights further
comprises press fitting at least one of the plurality of weights to
the shell.

(PO App. Br. 25-26 Claims App’x.)

DISCUSSION
As detailed above, the rejections proposed by Requester are all based
on Parente as the primary reference. Parente discloses weights in the form
of screws or other threaded members, which are easily adjustable by the
user. (See Decision 8, 16, and 18, FF1, 3, 4, 9, and 10.) Thus, the question
before us is whether it would have been obvious to one of ordinary skill in
the art to modify the club head of Parente to substitute the screws or
threaded members that are used as weights with press fitted weights, since
press fitting is a common and well known means of attachment.
In this regard, we reiterate that “‘press fit’ is ‘an interference fit
formed by pressing, or forcing one component into another’,” consistent
with its plain and ordinary meaning. (Rh’g Dec. 3-4, quoting Decision 22;
see also Declaration of Peter Piotrowski dated July 2, 2009, Para. 69, 70.)
In the Decision, we stated further that “the ’450 Patent does not contain any
particular requirement that the weights be user attachable and detachable in
any particular manner, i.e., without the use of a tool, that would require a
special definition of ‘press fitting.’” (Decision 22.) The court agreed with
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the Board’s construction of the term “press fit.” Taylor Made, 589 Fed.
Appx. at 970.
Thus, we consider whether one of ordinary skill in the art would have
considered press fitting as a means of attaching the weights of Parente,
where Parente discloses that the weights are easily adjusted. (See Decision
8, FF1-FF3.)
As part of the evidence relied on by our reviewing court for support
that press fitting as a means of attachment is common knowledge, the court
pointed to In re Dulberg, 289 F.2d 522 (1961). Taylor Made, 589 Fed.
Appx. at 971. At issue in Dulberg, was whether a press fitted cap disclosed
in a Peterson reference, was removable. Dulberg, 289 F.2d at 523. The
Appellant in Dulberg had argued that in a press fit, the parts fit so tightly,
that they are not removable. Id. The court in Dulberg held that making
Peterson’s press fitted cap removable would have been obvious if desirable
for any reason. Id.
The court in Taylor Made also pointed to the disclosure of Parente and
Reynolds, Jr. as providing evidence that press fitting was known in the
context of golf clubs. 589 Fed. Appx. at 971. After further consideration in
view of this evidence, we conclude that it is insufficient to support a
conclusion of obviousness.
Specifically, Reynolds, Jr. discloses: “The weight may be altered
during manufacturing by introducing different press-fit substances into the
body of the putter head, or the user may alter the weight by exchanging
different removable weights within the putter head and putter handle.” (Col.
2, ll. 35-39.) Thus, while Reynolds, Jr. is consistent with Dulberg in
establishing that press fitting is known, Reynolds, Jr. distinguishes between
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press fit weighting, which is applied during the manufacturing process, and
removable weighting, which may be altered by the user. (See Pitrowski
Decl., para. 75.) Accordingly, in considering Reynolds, Jr. for alternative
means of attaching weights that are easily adjustable by the user consistent
with the disclosure and purpose of Parente (FF1-FF3), one of ordinary skill
in the art would not have considered the portion of Reynolds, Jr. discussing
how weights may be attached during manufacturing, but rather would have
considered Reynolds, Jr. in light of the removable weight attachment means
for golf club heads expressly described therein.
In addition, Parente discloses that the “sole plate 12 is secured in a
machined recess in the body in which it has an interference or interlocking
fit,” where the “interlocking formations are provided for releasably holding
the sole plate in position.” (Col. 3, ll. 2-4, col. 4, ll. 36-38.) As with
Reynolds, Jr., Parente is consistent with Dulberg in establishing that press
fitting is well known. However, similar to Reynolds, Jr., Parente does not
disclose press fitting for use in an adjustable weighting system, but rather
discloses screws in order to provide the adjustable weighting. (FF1-FF4.)
Therefore, we are of the opinion that one of ordinary skill in the art would
not have modified the adjustable weighting system in Parente to use press
fitting as a means of attachment.
That is, notwithstanding the fact that press fitting as a means of
attachment was well known even in the context of materials fastened to golf
club heads, neither Parente nor Reynolds, Jr., both of which disclose press
fitting and adjustable weights in golf club heads, apply press fitting as a
means of attachment for adjustable weights in golf club heads. Absent
impermissible hindsight, there is insufficient reasoning to support the
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position that using press fitted weights in the golf club heads of Parente
would have been obvious to one of ordinary skill in the art.
We also have considered Requester’s proposed rationale that it would
have been obvious to press fit weights if it were desirable for any reason to
make the weights more secure. (Req. Rh’g 18.) Specifically, Requester
contends that it would have been obvious to apply Reynolds, Jr. to a driver,
and make the weights slightly larger and utilize a press fit in order to make
the weights more secure, because a driver is “swung at great velocity and
presents a serious risk of injury if a weight comes flying off.” (Req. Rh’g
18.) As further explained below, Requester’s reasoning is not supported by
sufficient rational underpinnings. KSR Int’l. Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007), quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(“‘[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.’”)
We note again that the rejections of claims, 8, 9, 12, and 13 are based
on Parente as a primary reference. The weighting mechanisms in Parente
are screws, which are easily adjustable by the user. (Decision, FF2, 3.) We
have not been directed to any evidence of record that there is a deficiency in
the screw based adjustable weighting system disclosed in Parente or that
press fitting the weights would have been a suitable alternative for the screw
based adjustable weighting system disclosed in Parente. If anything, the
modification proposed by Requester would have resulted in greater
uncertainty over whether the slightly larger weights, which would be
sufficiently loose to allow the weights to be removed and adjusted by the
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user in accordance with the teachings and objective of Parente, would still be
secure when a driver club is swung, especially when compared to the screw
based adjustable weighting system disclosed in Parente.
For all the reasons expressed in our previous decisions and further
expanded upon above, we affirm the Examiner’s decision not to adopt the
rejections of claims 8, 9, 12, and 13 and we decline to enter a new ground of
rejection over claims 8, 9, 12, and 13 in view of the evidence of recored.
We incorporate by reference our earlier decisions to the extent such is
deemed necessary with the additional views expressed herein. In sum:
We affirm the Examiner's decision not to reject claims 4, 8, 9, 12, and
13.
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
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appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 7, July 2008).

AFFIRMED

Appeal 2012-006542
Reexamination Control 95/000,378
Patent 7,344,450 B2

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PATENT OWNER:
LAW OFFICE OF DAVID H. JUDSON
15950 DALLAS PARKWAY, SUITE 225
DALLAS, TX 75248

THIRD-PARTY REQUESTER:
SHEPPARD, MULLIN, RICHTER & HAMPTON, LLP
333 SOUTH HOPE STREET, 48
TH
FLOOR
LOS ANGELES, CA 90071