Ex Parte BAN et al

Patent Trial and Appeal Board

Aug 23, 2016

13050392 (P.T.A.B. Aug. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/050,392 03/17/2011
23373 7590 08/25/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
WataruBAN
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Ql23601 2583
EXAMINER
STANCZAK, MATTHEW BRIAN
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
08/25/2016 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WAT ARU BAN and MASAOMI HIRUT A
Appeal2014-009448
Application 13/050,392
Technology Center 3700
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
ARTHUR M. PESLAK, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Wataru Ban and Masaomi Hirota (Appellants) 1 appeal under 35
U.S.C. § 134(a) from the Examiner's Final decision rejecting claims 2 and
5-9. 2 We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The Appeal Brief identifies Bridgestone Sports Co., LTD as the real party
in interest. Br. 2.
2 The Amendment Under 3 7 C.F .R. § 1.116 filed on March 18, 2014,
includes proposed amendments to cancel claims 3, 4, 10-13, and 16-18, and
amend claims 2 and 8. The Advisory Action dated March 26, 2014 indicates
that the amendments will be entered for purposes of appeal. Accordingly,
claims 2 and 5-9 are on appeal, and claims 14 and 15 are withdrawn from
consideration. Br. 5, 9-10 (Claims App.).
Appeal2014-009448
Application 13/050,392
CLAIMED SUBJECT MATTER
Claim 8, reproduced below, is representative of the claimed subject
matter:
8. A golf club head comprising:
a plurality of scorelines are formed in a face surface
thereof;
a first fine groove formed in the face surface to extend
parallel to the scorelines; and
a second fine groove formed in the face surface to intersect
with said first fine groove,
wherein said first fine groove is deeper than said second
fine groove, and
wherein said second fine groove is formed from an edge
of the scoreline.
Br. 9--10 (Claims App.).
REJECTION
Claims 2 and 5-9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Mizoo et al. (JP 2007-319344, pub. Dec. 13, 2007,
hereinafter "Mizoo") and Saegusa et al. (JP 2007-301017, pub. Nov. 22,
2007, hereinafter "Saegusa"). 3, 4
ANALYSIS
Appellants state that claims 2, 5-7, and 9 stand or fall with claim 8.
Br. 5. We select claim 8 to decide the appeal as to the ground of rejection,
and claims 2, 5-7, and 9 stand or fall with claim 8. See 37 C.F.R.
§ 41.37(c)(l)(iv).
3 The rejection of claims 4 and 16 under this ground of rejection is moot.
Final Act. 4---6.
4 The rejection of claims 3 and 11-13 under 35 U.S.C. § 103(a) as
unpatentable over Mizoo and Golden (US 2009/0318243 Al, pub. Dec. 24,
2009) is moot.
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Appeal2014-009448
Application 13/050,392
The Examiner finds Mizoo discloses a golf club head comprising
scorelines 16 formed in the face surface, and first fine groove 1 7 extending
parallel to scorelines 16. Final Act. 5 (citing Mizoo, Fig. 1 ). The Examiner
also finds Mizoo discloses that first fine groove 17 has a depth of 2 to 300
µm. Id. (citing Mizoo i-fi-1 7, 14 ). 5 The Examiner finds Mizoo does not
disclose a second fine groove formed in the face surface to intersect with
first fine groove 17. Id.
The Examiner finds Saegusa discloses a golf club head including
second fine groove 34a formed in the face surface with a depth of 5 to 50
µm. Final Act. 5 (citing Saegusa i-f 39; Figs. 2, 4 ). 6
The Examiner concludes that it would have been obvious, in view of
Saegusa, to modify Mizoo' s golf club head to comprise a second fine groove
formed in the face surface to intersect with the first fine groove, with the
first fine groove being deeper than the second fine groove. Final Act. 5.
The Examiner reasons that the modification would use a known technique
("using smaller and shallower grooves perpendicular to the scorelines") to
improve a similar product ("a golf club having smaller and deeper grooves
in between the scorelines") in the same way ("using smaller and shallower
grooves perpendicular to the smaller and deeper grooves in between the
scorelines in order to further help eliminate and dissipate grass, moisture,
and dirt from the impact region"). Id. at 5---6 (citing Saegusa i-f 15).
Appellants contend that Mizoo and Saegusa each merely disclose a
golf club having fine grooves of the same depth in addition to scorelines,
and do not teach using two different depths in the fine grooves in a single
5 The Examiner references a machine translation of Mizoo. Final Act. 5.
6 The Examiner references a machine translation of Saegusa. Final Act. 5.
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Appeal2014-009448
Application 13/050,392
club. Br. 5. Appellants also contend neither Mizoo nor Saegusa teaches or
suggests two types of fine grooves. Id. at 7. According to Appellants,
Mizoo and Saegusa not only fail to suggest the concept of different depths of
two types of fine grooves, but also fail to suggest a fine groove as a water
channel for draining water that collects in another fine groove. Id.
Appellants contend that "the claimed second fine groove can function
as a water channel for draining water which collects in the first fine groove,"
which can sustain an effect of increasing the amount of back spin on a golf
ball by the first fine groove. Br. 6. According to Appellants, sustaining this
effect "prevents a decrease in the amount of back spin in, for example, rainy
weather." Id. Appellants also contend that "[u]pon forming the second fine
groove from the edge of the scoreline, the scoreline and the second fine
groove communicate with each other," and "water in the second fine groove
can drain into the scoreline, thereby making it possible to further improve
the drainage performance of the first fine groove." Id. Appellants contend
the first fine groove is made deeper than the second fine groove to allow a
ball to more satisfactorily bite into the face surface, which can increase the
amount of back spin. Id. at 7.
Appellants' contentions are not persuasive. Mizoo discloses forming
minute ridges ("fine bumps 1 7") and associated troughs 21 on face 11 of
golf club head 10. See Mizoo, Abstract; Fig. 1, 2. Figures 1 and 2 of Mizoo
show troughs 21 extending parallel to face line slots 16. Mizoo discloses
that the golf club head structure addresses the problem of obtaining the
desired backspin in wet golfing conditions, or when grass adheres to the
face. Id. at Abstract; ,-r 6.
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Appeal2014-009448
Application 13/050,392
Saegusa discloses a golf club head including a first set of grooves and
a second set of grooves to address the problem of effectively removing
moisture interposed between the golf ball and the face plane of the golf club
head. See Saegusa, Abstract. Figure 4 of Saegusa shows that second groove
34a "is formed from an edge of the scoreline [32a]," as claimed.
Accordingly, both Mizoo and Saegusa teach to combine scorelines
and fine grooves for draining water from the face surface of a golf club head.
Mizoo teaches troughs 21 oriented parallel to face line slots 16 (score lines),
and Saegusa teaches second grooves 34a oriented to intersect first grooves
32a (scorelines). Saegusa's second grooves 34a communicate with first
grooves 32a to enable water in second grooves 34a to drain into first grooves
32a, thereby further improving the drainage performance of first grooves
32a. The Examiner notes that both Mizoo and Saegusa teach fine grooves
that channel water and debris away from the score lines for increased back
spin. Ans. 5 (citing Mizoo i-f 6; Saegusa i-f 18). Appellants do not apprise us
of any error in the Examiner's findings in relation to Mizoo or Saegusa.
Regarding the limitation in claim 8 that "said first fine groove is
deeper than said second fine groove," Mizoo discloses that troughs 21 can
have a depth of 2-300 µm (Mizoo i-f 15), and Saegusa discloses that second
slots 34a can have a depth h2 of 5-50 µm (Saegusa, Abstract; Fig. 4). The
Examiner reasons that one of ordinary skill in the art would have picked
values within the respective ranges of Mizoo and Saegusa that would make
the first fine groove deeper than the second fine groove. Ans. 5. Appellants
do not apprise us of any error in the Examiner's reasoning.
Accordingly, the Examiner finds that the combination of Mizoo and
Saegusa discloses all limitations of claim 8, and also articulates a rationale
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Appeal2014-009448
Application 13/050,392
for combining the teachings of Saegusa and Mizoo to result in the claimed
golf club head. See Final Act. 5-6. However, Appellants' contentions
effectively address Mizoo and Saegusa separately. Non-obviousness cannot
be established by attacking references individually where the rejection is
based upon the combined teachings of a combination of references. See In
re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Whether or not any
particular limitation is missing from a single reference is, therefore,
irrelevant. Appellants' contentions do not address the Examiner's findings
and reasoning as to what Mizoo and Saegusa disclose or suggest in
combination, and, thus, do not apprise us of any error in the Examiner's
findings or articulated reasoning.
To the extent Appellants may be contending that the claimed golf club
head has unexpectedly improved properties, or properties not possessed by
the prior art, Appellants must present objective evidence to show that the
properties are unexpected as compared to the closest prior art. See In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("[W]hen
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art."); In re
Wood, 582 F.2d 638, 642 (CCPA 1978) (objective evidence is needed to
establish unexpected results). Appellants do not, however, provide any
objective evidence showing that the claimed gold club head including
scorelines, a first fine groove, and a second fine groove provide any
unexpected results.
Accordingly, we sustain the rejection of claims 2 and 5-9 as
unpatentable over Mizoo and Saegusa.
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Appeal2014-009448
Application 13/050,392
DECISION
We affirm the rejection of claims 2 and 5-9.
No time period for taking any subsequent action in connection with
this appeal may be extended according to 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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