Ex Parte Barelmann et al

Board of Patent Appeals and Interferences

Jul 30, 2010

11377101 (B.P.A.I. Jul. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL R. BARELMANN and SCOTT E. FOLCK
____________

Appeal 2009-008113
Application 11/377,101
Technology Center 3700
____________

Before: LINDA E. HORNER, JENNIFER D. BAHR, and
STEVEN D.A. MCCARTHY, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Daniel R. Barelmann et al. (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-5 and 21-30,
which are all of the pending claims. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
THE INVENTION
Appellants’ claimed invention relates to a golf club shaft carrying a
decal. Spec. 1, para. [0002]. Claim 1, reproduced below, is representative
of the subject matter on appeal.
1. A golf club shaft, comprising:
a tubular member of a prescribed longitudinal length, the
tubular member having a butt end, a tip end, and a tapered
portion therebetween;
a paint layer provided along a majority of the length of
the tubular member, wherein the paint layer is comprised of a
first color; and
a heat-transfer decal affixed to the paint layer and
circumferentially surrounding the tubular member, the decal
having a length between about 5% to about 90% of the
longitudinal length of the tubular member, the decal having a
width that varies along at least a portion of the decal length,
including a first width measured at a first tubular member
location and a second width measured at a second tubular
member location spaced apart from the first tubular member
location, the first and second widths being between about 0% to
about 20% greater than the tubular member’s outer
circumference at the corresponding first and second tubular
member locations;
wherein the decal comprises a second color extending
laterally 360 degrees about the tubular member, and wherein
the second color is different from the first color.

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THE REJECTION
Appellants seek our review of the Examiner’s rejection of claims 1-5
and 21-30 under 35 U.S.C. § 103(a) as unpatentable over Haas
(US 2004/0178533 A1; published September 16, 2004), Kametani (Japanese
Patent Application No. 11-206936; published August 3, 1999), Kuntze
(European Patent Application No. 0 433 843 A2; published June 26, 1991),
Kawamura (Japanese Patent Application No. 05-161727; published June 29,
1993), and Ashby (US 4,304,620; published December 8, 1981).
ISSUES
Appellants argue claims 1-5 and 21-30 as a group. App. Br. 3-11;
Reply Br. 5-8. We select claim 1 as the representative claim, and claims 2-5
and 21-30 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). The
issues presented for our consideration is whether the subject matter of claim
1 would have been obvious to one having ordinary skill in the art at the time
the invention was made in view of the prior art?
ANALYSIS
In support of the contention that claim 1 would not have been obvious
in view of the prior art, Appellants argue: 1) Haas is not analogous art,
2) elements are missing from the proposed combination, 3) the Examiner’s
rationale is inadequate, 4) Kuntze teaches away from the proposed
combination, and 5) the probative value of secondary considerations
outweighs the probative value of the Examiner’s evidence. We address
these arguments in turn.
1. Analogous Art
Appellants argue that Haas, as an untapered hockey stick having a
rectangular cross section, is not analogous to the claimed golf club, and that
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a person of ordinary skill in the art, incorporating a heat transfer decal for
use on a golf club shaft, would not look to a hockey stick. App. Br. 4.
A reference is reasonably pertinent if, even though it may be in
a different field from that of the inventor's endeavor, it is one
which, because of the matter with which it deals, logically
would have commended itself to an inventor's attention in
considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed.
Cir. 1992). In other words, “familiar items may have obvious
uses beyond their primary purposes.”
In re ICON Health & Fitness, Inc, 496 F.3d 1374, 1379-80 (Fed. Cir. 2007)
(quoting KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 402 (2007)). The
general problem facing Appellants was how to simply label a golf club shaft
and to provide for a multi-color design. Spec. 1-2, para. [0004]-[0006].
Haas discloses a method of simply labeling a hockey stick using a
decal over a painted shaft. In particular, the shaft 105 of Haas’s hockey
stick 100 is provided a single layer of paint before a heat transfer decal is
applied. Haas 4-5, paras. [0047]-[0048]. Thus, Haas discloses a simple
method to decorate a shaft. While Appellants note the different cross-
sectional shape and lack of tapering in Haas’s shaft (App. Br. 4), we fail to
see, and Appellants fail to explain, why one having ordinary skill in the art
would have found the rectangular cross section and lack of taper of Haas’s
hockey stick shaft render its other attributes inapplicable to a tubular,
tapered shaft such as called for in claim 1. We find a person of ordinary
skill in the art, seeking to determine how to label a golf club shaft to provide
for multi-color design would look to Haas’s method of decorating a hockey
stick shaft. Thus, Haas is analogous art to Appellants’ claimed golf club
shaft.

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2. Missing Elements
Appellants make several arguments that the references, taken
individually, do not disclose all the elements of claim 1. App. Br. 3-8. Each
of these arguments attacks a reference by identifying an element the
reference does not teach, while ignoring that the rejection relies on a
combination of the references to disclose the combination of claimed
elements. For example, Appellants allege that Haas’s hockey stick is not
tubular, and lacks a painted layer along the majority of the length of the
tubular member. App. Br. 4-5. However, the Examiner found that Kuntze
discloses a tubular golf club shaft, and that Kawamura discloses a painted
layer along the majority of the length of a tubular member, and relied on
these teachings to modify Haas’s hockey stick. Ans. 4-6.
In another example, Appellants argue that Kuntze discloses a
decorative layer rather than a heat transfer decal as claimed. App. Br. 5-6.
The Examiner’s finding, however, relies on Kuntze’s teaching regarding the
shape of the decorative layer to modify the shape of the heat transfer decal
of Haas. Ans. 15. In other words, the rejection does not rely upon Kuntze to
teach a heat transfer decal, but rather relies on Kuntze to teach the shape
used to modify the heat transfer decal of Haas. For that reason, Appellants’
argument that Kuntze is not a heat transfer decal fails to persuade us of error
in the rejection.
Appellants’ individual attacks on the references fail to address the
findings of the rejection, and are not persuasive of error in the rejection of
claim 1. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re
Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show
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nonobviousness by attacking references individually where . . . the rejections
are based on combinations of references.”).
3. Rationale
First, Appellants argue, “the Examiner has failed to identify a single
example of a teaching, suggestion, or motivation to combine the various
references.” App. Br. 8-10. This argument is foreclosed by KSR, in which
the Court rejected the rigid requirement of a teaching, suggestion, or
motivation to combine known elements in order to show obviousness. KSR,
550 U.S. at 418-19. The Court noted that an obviousness analysis “need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” Id. at 418.
Second, in the Reply Brief, Appellants cite to KSR and state that
rejections based on obviousness cannot be sustained by conclusory
statements. Reply Br. 5. We agree with the general proposition that
rejections based on obviousness cannot be sustained by conclusory
statements. KSR, 550 U.S. at 418. However, the Examiner articulated a
reason with rational underpinning for each of the five modifications (Ans. 4-
6), and in contesting these rationales, Appellants do not specifically
challenge any one particular rationale provided, nor otherwise explain why
the Examiner’s rationales are conclusory. An assertion that the rationale is
invalid because it is conclusory, without an accompanying explanation of
why that is true, fails to persuade us that rationale is in error.
The proposed combination is based upon a sufficient reason with a
rational underpinning to explain why a person of ordinary skill in the art
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would have modified the device of Haas to reach the subject matter of
claim 1.
4. Teaching Away
Appellants contend that Kuntze teaches away from a heat transfer
decal that is less than the longitudinal length of the tubular member (i.e., 5 to
90 percent of the longitudinal length), as called for in claim 1, because
Kuntze discloses a decorative layer that covers the entire longitudinal length
of the shaft. App. Br. 9; Reply Br. 6-7.
Kuntze discloses a decorative layer that covers the entire length of the
tubular member. Kuntze, 3:22-24. However, Kuntze does not criticize,
discredit, or otherwise discourage a decorative layer covering less than the
entire length of the tubular member. Kuntze, passim. We fail to see, and
Appellants have failed to adequately explain, how Kuntze’s disclosure of a
decorative layer covering the entire length of a tubular member, without
mention of a decorative layer covering less than the entire length, would lead
a person of ordinary skill in the art in a direction divergent from that chosen
by Appellants (i.e., a decal of about 5 to about 90 percent of the longitudinal
length). In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (“A reference
may be said to teach away when a person of ordinary skill, upon reading the
reference would be led in a direction divergent from the path that was taken
by the applicant.” (citation omitted)). Kuntze’s disclosure of a decorative
layer that covers the entire surface of a tubular member (golf club shaft)
does not teach away from a heat transfer decal that is about 5 to about 90
percent of the longitudinal length of the tubular member as called for in
claim 1.

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5. Secondary Considerations
Evidence of secondary considerations, such as that presented by the
Appellant, must be considered in route to a determination of
obviousness/non-obviousness under 35 U.S.C. § 103. Appellants assert
there was a long-felt, but unsolved need for a golf club shaft that
incorporates two or more colors without the increased manufacturing costs.
App. Br. 10.
Establishing long-felt need requires objective evidence that an art-
recognized problem existed in the art for a long period of time without
solution. Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir.
1988); Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d
1376, 1379 (Fed. Cir. 1983). This can be accomplished, for example, by the
testimony of experts in the industry, or publications and the like, which
speak to the duration and extent of the problem, and of the substantial effort
and resources which had been expended during that time in attempts to solve
the problem. See R.R. Dynamics, Inc. v. A. Stucki Co., 579 F. Supp. 353,
367 (E.D. Pa. 1983), aff'd, 727 F.2d 1506 (Fed. Cir. 1984). Establishing
long-felt need also requires objective evidence that the invention satisfies the
long-felt need. In re Cavanagh, 436 F.2d 491, 496 (CCPA 1971). This can
be demonstrated, for example, by evidence establishing commercial success
and that the industry purchased the claimed invention because it satisfied the
long-felt need. See W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1555 (Fed. Cir. 1983).
Appellants have not provided persuasive objective evidence to
establish that an art-recognized problem existed in the art for a long period
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of time without solution and have not provided persuasive objective
evidence to establish that the claimed invention satisfies that long-felt need.
The Crocker declaration does not contain adequate objective evidence
related to the long-felt need assertion. Declaration of Steven Crocker
(“Crocker Decl.”), passim.2 Appellants’ argument that there was a long-felt
but unsolved need is unpersuasive because it is not a substitute for evidence.
In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (appellant’s arguments do
not take the place of evidence).
Appellants also assert the secondary consideration of copying. App.
Br. 10-11; Reply Br. 7-8. Mr. Crocker, a registered patent attorney and
employee of the assignee of this application, attests that “[a]fter the release
of Taylor Made’s 360XD Driver, at least four companies [Cleveland Golf,
Adams Golf, Tour Edge, and Tommy Armour] began to manufacture golf
club shafts incorporating features of the claimed invention,” including a
“nearly identical” heat-transfer decal. Crocker Decl. 1-2, paras. 4-12. The
Declaration is supported by photographs of a golf club manufactured by
each of the four companies. Crocker Decl. Exhibits B-E. Each photograph
shows a small portion of the grip and a portion of the shaft, with the tip end
and club head not visible. Id.
Even if accepted as true, Mr. Crocker’s declaration does not establish
that the alleged copies are identical to the claimed product. For example,
from the photographs it cannot be determined if the decal: is affixed to the
paint layer of the tubular member, circumferentially surrounds the tubular
member (only one side of the club is visible), or has a length of 5 to 90

2 We refer to page 3 of the Declaration submitted with the October 10, 2007
corrected Appeal Brief.
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percent of the longitudinal length of the tubular member as required by
claim 1 (the entire longitudinal length is not visible). Id. Nor does Mr.
Crocker’s attestation that the decal is “nearly identical” provide sufficient
detail to make this determination. Because the declaration has not
established that the alleged copies are identical, it is not persuasive evidence
of copying. Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 317 (Fed.
Cir. 1985) (Alleged copying is not persuasive of nonobviousness when the
copy is not identical to the claimed product.).
Even if Appellants had established that the alleged copies were
identical, Appellants have still not established copying.
Not every competing product that arguably falls within the
scope of a patent is evidence of copying. Otherwise every
infringement suit would automatically confirm the
nonobviousness of the patent. Rather, copying requires the
replication of a specific product. This may be demonstrated
either through internal documents, see Akamai Techs., Inc. v.
Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1196-97
(Fed. Cir. 2003); direct evidence such as disassembling a
patented prototype, photographing its features, and using the
photograph as a blueprint to build a virtually identical replica,
see Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d
1272, 1285 (Fed.Cir.2000); or access to, and substantial
similarity to, the patented product (as opposed to the patent),
Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1027
(Fed. Cir. 1985), overruled on other grounds by, Midwest
Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1359
(Fed. Cir. 1999) (en banc).
Iron Grip Barbell Co., v. York Barbell Co., 392 F.3d 1317, 1325 (Fed. Cir.
2004). Appellants have made no such showing here.
Appellants’ evidence of secondary considerations does not establish
long-felt, but unresolved need or copying.

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CONCLUSION
Evaluating and weighing the evidence relied upon by the Examiner,
and the objective evidence of nonobviousness provided by Appellants, we
conclude the subject matter of claim 1 would have been obvious to one
having ordinary skill in the art at the time the invention was made in view of
the prior art. Claims 2-5 and 21-30 fall with claim 1.
DECISION
We AFFIRM the Examiner’s decision to reject claims 1-5 and 21-30.
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) (2007).

AFFIRMED

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