Ex Parte 7854667 et al

Patent Trial and Appeal Board

May 30, 2014

95002052 (P.T.A.B. May. 30, 2014)

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.
95/002,052 07/20/2012 7854667 0EKM-168547 1031
27353 7590 05/30/2014
MELVIN K. SILVERMAN & ASSOCS.
1000 West McNab Road, Suite 308
Pompano Beach, FL 33069
EXAMINER
GRAHAM, MATTHEW C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
05/30/2014 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.
Third Party Requester

v.

TRIPLE TEE GOLF, INC.
Patent Owner/Appellant
____________________

Appeal 2014-002459
Reexamination Control 95/002,052
US Patent No. 7,854,667 B2
1

Technology Center 3900
____________________
Before: STEVEN D.A. McCARTHY, DANIEL S. SONG, and
BRETT C. MARTIN, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1
Issued to John P. Gillig on December 21, 2010 (hereinafter referred to as
the '667 patent).
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US Patent No. 7,854,667 B2

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STATEMENT OF THE CASE
Patent Owner/Appellant appeals under 35 U.S.C. §§ 134(b) and 315
from the Examiner’s rejections of claims 1-18. We have jurisdiction under
35 U.S.C. §§ 134 and 315.
We AFFIRM.

THE INVENTION
Patent Owner's invention is directed generally to "a system of
selectably varying the center of gravity and distribution of weighting in a
void space in the head of a golf club." Spec., col. 1, ll. 21-23. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. In a virtual X, Y, Z orthonormal coordinate system in
which a sole portion of a golf club is substantially congruent
with a bottom-most XY plane thereof, in which a face plate of
said club intersects a forward-most XZ plane of said system,
and in which a heel and hosel side of said club intersects a YZ
plane thereof substantially at an origin of said coordinate
system, and further in which an increase in X-axis value
corresponds to a direction of a toe of said club, an increase Y-
axis value corresponds in direction to a rear of said club, and an
increase in Z-axis value corresponds to an increase in height
above said bottommost XY plane, a golf club adjustment
system, comprising:
(a) a club head having a void space behind said face plate
of said club and above said sole portion thereof, said void space
substantially conformal in geometry and volume to that of said
club head; and
(b) two selectable golfer replaceable weighting elements
in which at least one weighting element thereof is not
contiguous to any part of said face plate in which a selected
coordinate value upon the Y-axis in any one of said weighting
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elements does not equal a selected coordinate value of Y of at
least a second one of said weighting elements, and at least one
selected weighting element is not contiguous with any inner
surface of said void space, said selectable elements comprising
any two of:
(i) a weighting element secured substantially within said
void space between a lower Y, lower Z coordinate, to increase
backspin, to a higher Y, higher Z coordinate to decrease
backspin;
(ii) a weighting element secured substantially within said
void space between a lower Z coordinate, to increase trajectory,
to a higher Z-coordinate to decrease trajectory4; or
(iii) a weighting element secured substantially within said
void space at a lower X-coordinate, to compensate for hook, to
a higher X-coordinate to compensate for slice.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Dammen WO 01/66199 A1 Sep. 13, 2001

THE REJECTIONS ON APPEAL
The Examiner made the following rejections:
1. Claims 1, 2, 5-8, 12, and 15-18 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Dammen. RAN 2.
2. Claims 3, 4, 9-11, 13, and 14 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Dammen. Id.

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ANALYSIS
Only those arguments actually made by the appellant(s) have been
considered and arguments that the parties did not make are deemed to be
waived. See 37 C.F.R. § 41.67(c)(1)(vii).
Claim Interpretation
Patent Owner couches the main issue in this appeal as a disagreement
over the proper interpretation of the claims, or as the Patent Owner refers to
it, "the adjustability issue." App. Br. 1; see also App. Br. 2-15. According
to the Patent Owner, the claims, "in clear and unequivocal language, set
forth that the adjustability within the axes is necessary to satisfy one or more
particular weighting strategies." App. Br. 2. Patent Owner then goes on to
cite several passages, all of which notably refer to a "weighting element
secured substantially within said void space." Id (emphasis added). Patent
Owner further argues that "[i]t is not possible to have a 'golf club adjustment
system' without the capability for adjustment along all respective
coordinates and combinations thereof that define the system." App. Br. 3.
We find this to be a mischaracterization of the Examiner's rejection
which explicitly incorporates by reference the proposed rejection as initially
set forth by Requester in its Request for Inter Partes Reexamination. See
RAN 2. Requester's original rejection proposal with regard to Dammen
clearly explains how Dammen's weights are adjustable in both the Y and Z
directions. See Request for Inter Partes Reexamination of U.S. Patent No.
7,855,667 dated July 20, 2012, pp. 32-34 and Exh. D-1. As Requester points
out, Dammen teaches that "[t]he length of the screw weight 7 is shorter than
the length of the tubular sleeve, so as to allow it to be screwed back and
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forth in the tubular sleeve as desired." Dammen, 4:21-23. Requester further
notes that "the screw weights 7 may be placed at any position between the
ends of the tubular sleeves 1." Request for Inter Partes Reexamination at
33. Dammen also discloses that "[t]he tubular sleeve or sleeves … are
positioned at an angle up towards the centre 4 of the striking surface (front
face)." Dammen, 4:14-17; fig. 1; see also Exh. D-1. Thus, as the positions
of the screw weights of Dammen are adjusted along the Y axis, their
positions along the Z axis are also simultaneously adjusted.
While Dammen may not teach adjustability into the Z3 region as
depicted both in the Requester's marked up figures of Dammen as well as
Patent Owner's figures, this point is moot because the claims do not require
adjustability across the entire range of the various axes within the void
space. All that is required is "a lower Z coordinate" and a "higher Z-
coordinate." Dammen discloses a lower Z coordinate when the weights are
further from the striking surface, and a higher Z coordinate when the weights
are closer to the striking surface. See Dammen, fig. 1.
While the above findings and discussion with respect to Dammen
establish a sufficient basis for affirming the Examiner's rejection, as
explained further below to address Patent Owner's arguments, the claims
actually do not require adjustability. As Requester correctly points out,
"[t]he claims contain no requirement of a capability of moving or adjusting a
weighting element along or within the claimed range." Resp. Br. 7. As
noted above, the claims specifically require that the weighting element be
"secured" within the void space. Accordingly, even if Dammen were to
teach no adjustment whatsoever, which as noted supra is not the case, such a
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prior art teaching of a weighting element secured at a fixed point within the
claimed range would be sufficient for anticipation.
Appellant further argues that the claims should be interpreted to
require weight adjustability because, for example, the claims recite "user
replaceable weighting elements for adjusting said center of gravity," such as
is recited in claim 17. Similar language regarding replaceability is found in
claims 1 and 8 as well. Replaceability, however, is not the same as
adjustability. The weights disclosed in Dammen are screws that may be
removed and replaced, which meets the actual limitation. See, e.g., Dammen
p. 4, ll. 19-25. Again, though not required by the claims as written, the
weights of Dammen may also be adjusted within the sleeves to adjust the
center of gravity. Dammen's replaceability alone adjusts the center of
gravity in that the club has a different center of gravity with weights than it
does without weights. It also may have a different center of gravity if one
set of weights is replaced with a different set of weights. The only
adjustment referred to in the context of replaceability is that of adjusting the
entire club. Dammen's user-replaceable weights accomplish this claimed
feature.
Throughout its brief, Patent Owner refers to the Specification as
explaining how the invention is intended to cover adjustable weights. See,
e.g., App. Br. 9. While we agree that the Specification describes at length
the proposed adjustability, nothing in the claim language specifically
requires adjustability. Furthermore, as Requester points out, the
Specification also refers to embodiments where the weights are not
adjustable. See Resp. Br. 7.
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The PTO applies to verbiage of the proposed claims the broadest
reasonable meaning of the words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in applicant’s specification. In re Morris,
127 F.3d 1048, 1054-55 (Fed. Cir. 1997). Reading a claim in light of the
specification, to thereby interpret limitations explicitly recited in the claim,
is a quite different thing from reading limitations of the specification into a
claim, to thereby narrow the scope of the claim by implicitly adding
disclosed limitations which have no express basis in the claim. In re Prater,
415 F.2d 1393, 1404-05, (CCPA 1969). Although the claims are interpreted
in light of the specification, limitations from the specification are not read
into the claims. In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993). In this
instance, we conclude that finding the type of adjustability asserted by
Patent Owner in the claim language would amount to improperly importing
a limitation from the Specification into the claims.
Patent Owner next argues that the "Examiner mistakenly asserts that
the limitation 'any two of…' a volumetric weighting strategy can be
anticipated by prior art showing the existence of only two of the three
possible strategies." App. Br. 8. We agree with the Examiner on this point.
The claims may state three options, but the claims also only explicitly
require the presence of two of the three options. Thus it is proper for the
Examiner to find the claim as not requiring the third option relating to
positioning along the X-axis. Again, the mere recitation of three possible
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options does not require the presence of all three when Patent Owner has
claimed that there need only be two of the three present.
Further to this point, Patent Owner asserts the right to be his or her
own lexicographer. App. Br. 9. Patent Owner, however, points to no terms
in the claims that are allegedly defined in a manner that is against ordinary
and customary meaning and points to no support in the Specification for any
such definitions. A mere recitation of case law on this point without any
application to the facts at hand does not persuade us of error in the
Examiner's interpretation of the claims.
Patent Owner additionally argues that Dammen's void space "has no
functional or operational relationship to the weighting sleeves." App.
Br. 14. The claims, however, require no functional relationship between the
two. The claims only require the presence of a void space and that the
weighting element be located within that void space, which Dammen clearly
teaches. See, e.g., Dammen Fig. 1. Patent Owner asserts that "Dammen in
fact teaches away from co-action between the sleeves and the other volume
of the club head," but fails to point out where such co-action is actually
required by the claims. App. Br. 14. We agree with Requester that "[t]he
claims lack any limitation that requires a cooperative or functional
interaction between the void space and any other claim limitation." Resp.
Br. 16.
The remainder of Patent Owner's arguments also asserts the necessity
of adjustability in order to anticipate or render obvious the claims. See App.
Br. 10-13, 15-19. Having already rejected the notion that the claims require
such adjustability, we also do not find these arguments persuasive.
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Accordingly, we affirm the Examiner's rejection of the claims as anticipated
by Dammen.
Obviousness
Patent Owner argues that the system disclosed in Dammen "renders
impossible the generation of a comprehensive hook/slice strategy." App.
Br. 19. As with the anticipation rejections, this assertion of the need for a
"strategy" again points to adjustability, which is disclosed in Dammen, and
nonetheless not required by the claims. Further, as Requester points out,
[t]o the extent that placing a weight at the claimed location(s)
results in certain ball flight characteristics, the prior art
inherently anticipates to the extent it teaches placement of a
weight at the same location(s), even if the prior art does not
explicitly recognize or explain the resulting ball flight
characteristics.
Resp. Br. 18.
Requester states that claim 9, the only dependent claim argued, “lacks
any limitation directed to weighting elements positioned along the X-axis."
Resp. Br. 20. Accordingly, the argument with respect to claim 9 is not
commensurate with the scope of the claim. As such we do not find Patent
Owner's arguments persuasive and affirm the Examiner's obviousness
rejections.
DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claims 1, 2, 5-8, 12, and 15-18 as anticipated by Dammen; and claims 3, 4,
9-11, 13, and 14 as unpatentable over Dammen.
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Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

Melvin K. Silverman & Assocs.
1000 West McNab Road, Suite 308
Pompano Beach, FL 33069

Third Party Requester:

Gary A. Clark
Sheppard Mullen Richter & Hampton, LLP
12275 El Camino Real, Suite 200
San Diego, CA 92130