95000378 (P.T.A.B. Jun. 14, 2016)

Ex Parte 7344450 et al

Patent Trial and Appeal BoardJun 14, 2016

95000378 (P.T.A.B. Jun. 14, 2016)

UNITED STATES PATENT AND TRADEMARKOFFICE 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 06/14/2016 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 06/14/2016 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 REQUEST FOR REHEARING Appeal 2012-006542 Reexamination Control 95/000,378 Patent 7,344,450 B2 2 Third Party Requester Taylor Made Golf Company, Inc. (hereinafter “Requester”) requests rehearing of our Decision on Remand mailed September 25, 2015 (hereinafter “Decision”), in which we affirmed the Examiner’s refusal to reject claims 8, 9, 12, and 13. (Third Party Requester Taylor Made Golf Company, Inc.’s Request for Rehearing under 37 C.F.R. § 41.79 filed October 23, 2015, hereinafter “Request” at 1.) Requester contends that: 1. The Board misapprehended or overlooked the disclosure of the ’450 patent in applying its construction of “press fitting” to the prior art, misconstruing press fitting to require a degree of interference that precludes the ability to readily adjust weights on a golf club head. 2. The Board misapprehended or overlooked the fact that Parente teaches weights that are attached to a press-fitted or latched member of a club head, thereby disclosing as much as the ’450 Patent in terms of the limitations recited in claims 8, 9, 12 and 13, which is all that the law requires. 3. The Board misapprehended or overlooked the fact that it would have been obvious to a person skilled in the art to use some degree of press fitting in a golf club head, as taught by Reynolds Jr., to make screws or other threaded adjustable weight members, such as those in Parente or Glover, more secure. 4. The Board misapprehended or overlooked the law in requiring Taylor Made to provide “evidence” of its common sense obviousness argument, and overlooked Taylor Made’s detailed explanation of why it would have been obvious to a person skilled in the art to press fit weights to a golf club head both in view of the admission of the Patent Owner’s expert that “screws can work loose,” the disclosure of the use of press fitting in golf club heads in Reynolds Jr., and the common knowledge of press fitting as a means of attachment. Appeal 2012-006542 Reexamination Control 95/000,378 Patent 7,344,450 B2 3 (Request 4.) We discuss each point in turn. 1. Degree of Press Fitting Requester contends that in the Decision, we overlooked that Parente teaches that press fitting is not limited to manufacturing processes that join parts by disclosing an interlocking (press-fitted) sole plate that releasably holds the sole plate in position as screws are secured. (Request 5, citing Parente, col. 4, ll. 36-38.) Thus, Requester argues that there are different degrees of press fitting that are well known to persons skilled in the art. Id. Requester again points to Application of Dulberg, 289 F.2d 522 (C.C.P.A. 1961) as evidence that the degree of press fitting required would have been within the knowledge of one of ordinary skill in the art. (Request 5-6.) Requester additionally argues that the ’450 Patent itself does not describe the degree of press fitting used, although the ’450 Patent contemplates that the press-fitted port cover is readily removed by the user to allow for the adjustment of weights. (Request 6-7.) We did not misapprehend or overlook the disclosure of Parente or Dulberg as alleged by Requester. In the Decision, we expressly noted the disclosure of Parente with respect to the sole plate as well as Dulberg, and explained that while each provided evidence that press fitting was known, there was insufficient reasoning to support using press fitting for adjustable weight attachment. (Decision 7-9.) While different degrees of press fitting may be known, as we explained, because Parente used a different mechanism for weight attachment, we had not been directed to sufficient Appeal 2012-006542 Reexamination Control 95/000,378 Patent 7,344,450 B2 4 evidence that adjustable weight attachment through press fitting would have been a suitable alternative in view of the particular requirements of adjustable weighting in golf clubs. (Decision 8-9.) While we acknowledge that Dulberg provides evidence that press fitting was common knowledge, as we previously explained, it is instructive that none of the cited prior art related to adjustable weighting in golf clubs, which utilize press fitting in other contexts, utilize press fitting as means of attachment for weights. Thus, although the ’450 Patent does not provide any particular description of the degree of press fitting required for the port cover (’450 Patent, col. 4, ll. 40-42), as we stated in the Decision, there is insufficient reasoning to apply press fitting to adjustable weighting in golf clubs. 2. Parente’s Disclosure Requester contends that the Board misapprehended or overlooked that Parente discloses press-fitted weights. (Request 7-10.) We addressed similar arguments in the Decision on Request for Rehearing mailed April 30, 2013, pages 5-6 addressing Requester’s Request for Rehearing filed September 27, 2012, pages 13-15. The Federal Circuit decision did not alter our analysis in that regard. As a result, we decline to revisit this issue in the current decision. 3. Reynolds, Jr. Requester contends that the Board misapprehended or overlooked that it would have been obvious to substitute Reynolds Jr.’s “press-fitted weight Appeal 2012-006542 Reexamination Control 95/000,378 Patent 7,344,450 B2 5 inserts” for the screws or other members used in Parente or Glover, arguing that because the weights of Reynolds Jr. need to be drawn into position, there is an implication that there is frictional interference between the two parts. (Request 10-11.) We previously addressed the contention that Reynolds, Jr. discloses press-fitted weights, concluding that the “snug fit” disclosed in Reynolds, Jr. does not constitute a press-fitted weight. (Decision on Appeal mailed August 30, 2012, 20-24; Decision on Request for Rehearing mailed April 30, 2013, 7.) As a result, we decline to revisit this issue in the current decision. 4. Common Sense/Obviousness Requester contends that the Board misapprehended or overlooked the law in requiring evidence supporting a common sense argument, and in determining that there was insufficient reasoning offered for modifying the screws of Parente with press-fitted weights, the Board overlooked certain testimony of Patent Owner’s expert Mr. Piotrowski, who stated that “screws can work loose.” (Request 11-13, quoting Piotrowski Declaration, para. 69.) We disagree with Requester that we misapprehended the law related to common sense. We did not state that evidence is always required to support a rationale relying on common sense. Rather, our position was that given the facts of this particular case and what one of ordinary skill in the art would have understood from the prior art regarding the particular application of press-fitted attachment versus other types of attachment in adjustable weights for golf clubs, it was insufficient to rely solely on a general Appeal 2012-006542 Reexamination Control 95/000,378 Patent 7,344,450 B2 6 allegation of common sense to support a case of obviousness. (Decision 6-8.) As to the portion of Requester’s argument relying on the Piotrowski Declaration, requests for rehearing are governed by the standard set forth in 37 C.F.R. § 41.79(b), which reads: (b)(1) The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked in rendering the Board’s opinion reflecting its decision. Arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs are not permitted in the request for rehearing except as permitted by paragraphs (b)(2) and (b)(3) of this section. (2) Upon a showing of good cause, appellant and/or respondent may present a new argument based upon a recent relevant decision of either the Board or a Federal Court. (3) New arguments responding to a new ground of rejection made pursuant to § 41.77(b) are permitted. In the instant case, Requester has advanced a new argument in relying on aspects of the Piotrowski Declaration not previously relied on to support a conclusion of obviousness. Such an argument is not permitted under 37 C.F.R. § 41.79(b).1 As a result, Requester’s arguments pertaining to the discussion of sufficient rational underpinnings as related to common sense and the 1 This argument appears to be contrary to those made previously by Requester that it was common knowledge that the frictional engagement of screws maintains the screws in place during the application of forces as a golf club is swung and strikes golf balls. (Requester’s Request for Rehearing filed September 27, 2012, pages 14-15.) Appeal 2012-006542 Reexamination Control 95/000,378 Patent 7,344,450 B2 7 statement made by Mr. Piotrowski do not persuade us that we misapprehended or overlooked any points in the Decision. Thus, we decline to make any changes to the outcome of the Decision affirming the Examiner’s decisions not to adopt the proposed rejections of claims 8, 9, 12, and 13. DENIED 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, 48th Floor Los Angeles, CA 90071