Ex parte Berg

Board of Patent Appeals and Interferences

May 21, 1999

08613792 (B.P.A.I. May. 21, 1999)

Application for patent filed March 1, 1996.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JEROME S. BERG
_____________
Appeal No. 98-2520
Application 08/613,7921
______________
ON BRIEF
_______________
Before FRANKFORT, McQUADE and BAHR, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 98-2520
Application 08/613,792
Claim 29 was amended subsequent to the final rejection 2
in a paper filed February 18, 1998 (Paper No. 10).
2
This is a decision on appeal from the examiner's
final rejection of claims 1 through 4, 6 through 27 and 29. 2
Claim 5
has been canceled. Claim 28 stands objected to, but has been
indicated by the examiner to be allowable if rewritten in
independent form.
Appellant's invention is directed to a lightweight
shaft of composite construction, a golf club which utilizes
said lightweight shaft, and a method of making said light-
weight shaft. Claims 1, 17, 23, 24, 25 and 29 are representa-
tive of the subject matter on appeal and copies of those
claims appear in the Appendix to appellant's brief.
The prior art references relied upon by the examiner
in rejecting the appealed claims are:
Roy 4,889,575 Dec. 26, 1989
Noguchi 5,385,767 Jan. 31, 1995
Kusumoto 5,427,373 June 27, 1995
Akatsuka et al. (Akatsuka) 5,437,450 Aug. 1, 1995
Appeal No. 98-2520
Application 08/613,792
3
Nagamoto et al. (Nagamoto) 5,454,563 Oct. 3, 1995
Billings 5,547,189 Aug. 20, 1996
(filed July 20,
1994)
Claims 1 through 4, 6 through 10, 12 through 14, 17
through 19 and 21 through 24 stand rejected under 35 U.S.C. §
103 as being unpatentable over Billings in view of Kusumoto
and Akatsuka.
Claims 11 and 20 stand rejected under 35 U.S.C. §
103 as being unpatentable over Billings in view of Kusumoto
and Akatsuka as applied above and further in view of Noguchi.
Claim 15 stands rejected under 35 U.S.C. § 103 as
being unpatentable over Billings in view of Kusumoto and
Akatsuka as applied above and further in view of Roy.
Claim 16 stands rejected under 35 U.S.C. § 103 as
being unpatentable over Billings in view of Kusumoto and
Akatsuka as applied above and further in view of Nagamoto.
Appeal No. 98-2520
Application 08/613,792
4
Claim 25 stands rejected under 35 U.S.C. § 103 as
being unpatentable over Roy in view of Billings, Kusumoto and
Akatsuka.
Claims 26 and 27 stand rejected under 35 U.S.C. §
103 as being unpatentable over Roy in view of Billings,
Kusumoto and Akatsuka as applied above and further in view of
Nagamoto.
Claim 29 stands rejected under 35 U.S.C. § 103 as
also being unpatentable over Roy in view of Billings, Kusumoto
and Akatsuka as applied above and further in view of Nagamoto.
Reference is made to the examiner’s answer (Paper
No. 15, mailed July 17, 1998) for the examiner's reasoning in
support of the above-noted rejections and to the appeal brief
(Paper No. 14, filed May 28, 1998) for appellant's arguments
thereagainst.
OPINION
Appeal No. 98-2520
Application 08/613,792
5
Our evaluation of the obviousness issues raised in
this appeal has included a careful assessment of appellant's
specification and claims, the applied prior art references,
and the respective positions advanced by appellant and the
examiner. As a consequence of our review, we have come to the
conclusion, for the reasons which follow, that the examiner's
rejections of the appealed claims under 35 U.S.C. § 103 are
not well founded and, therefore, will not be sustained.
Turning first to the examiner's rejection of claims
1 through 4, 6 through 10, 12 through 14, 17 through 19 and 21
through 24 under 35 U.S.C. § 103 as being unpatentable over
Billings in view of Kusumoto and Akatsuka, we note that while
Billings discloses a golf club wherein the shaft may be made
of a composite material (col. 4, lines 59-63) and also
provided with a
lightweight filler material located within an opening in the
club body at or adjacent the tip end thereof (col. 5, lines
26-31), Billings makes no mention of the specific manner of
Appeal No. 98-2520
Application 08/613,792
6
construction for the composite shaft therein and provides no
teaching or suggestion concerning any defined layered shaft
structure like that set forth in the claims before us on
appeal. Kusumoto and Akatsuka each disclose golf club shafts
having a layered composite construction and, as noted by the
examiner, disclose individual layers therein that are the same
as or similar to certain of the individual layers used in
appellant’s claimed lightweight shaft and golf club. However,
what each of the references relied upon by the examiner lacks
is any teaching, suggestion or incentive for combining the
particular types of reinforcing layers set forth in the claims
on appeal in the particular sequence claimed so as to arrive
at a lightweight shaft or golf club like that defined in
appellant’s claims on appeal.
Like appellant (brief, page 11), it is our opinion
that the examiner has used the claimed invention as a guide or
blueprint to piece together various disparate aspects of the
Billings, Kusumoto and Akatsuka patents in an attempt to
arrive
Appeal No. 98-2520
Application 08/613,792
7
at the claimed subject matter. In this regard, we consider
that the examiner’s proposed modifications of the golf club
shaft in Billings to have the particular layers claimed by
appellant arranged in the particular sequence claimed are
based on hindsight reconstruction of the claimed subject
matter using appellant’s own teachings and disclosure. For
that reason, we refuse to sustain the examiner’s rejection of
claims 1 through 4, 6 through 10, 12 through 14, 17 through 19
and 21 through 24 under 35 U.S.C. § 103 as being unpatentable
over Billings in view of Kusumoto and Akatsuka.
Nor shall we sustain any of the examiner’s other
rejections under 35 U.S.C. § 103. We have carefully reviewed
the patents to Noguchi, Roy and Nagamoto applied by the
examiner in those other rejections, but find nothing therein
which would provide for the teachings and/or suggestions which
we have already determined to be lacking in the examiner’s
stated combination of Billings, Kusumoto and Akatsuka.
Moreover, we generally share appellant’s view that each of the
additional rejections posited by the examiner is also based on
Appeal No. 98-2520
Application 08/613,792
8
impermissible hindsight derived from appellant’s own
disclosure and not on the fair teachings or suggestions of the
prior art itself as such would have been understood by one of
ordinary skill in the art at the time of appellant’s
invention.
It is well settled that a rejection based on § 103
must rest on a factual basis, with the facts being interpreted
without hindsight reconstruction of the invention from the
prior art. In making this evaluation, the examiner has the
initial duty of supplying the factual basis for the rejection
he advances. He may not, because he doubts that the invention
is patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in the factual
basis. See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173,
178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968).
Appellant's brief, at pages 12 through 14, makes
reference to a declaration by David Hallford (copy attached to
the brief as Exhibit A), which declaration purports to
Appeal No. 98-2520
Application 08/613,792
9
establish commercial success of the claimed invention.
However, in view of our disposition of the obviousness
rejections noted above, we find no need to review this
declaration.
As should be apparent from the foregoing, we have
refused to sustain any of the rejections before us on appeal.
Thus the decision of the examiner rejecting claims 1 through
4, 6 through 27 and 29 of the present application is
reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
JOHN P. McQUADE ) APPEALS AND
Appeal No. 98-2520
Application 08/613,792
10
Administrative Patent Judge )
INTERFERENCES
)
)
)
JENNIFER BAHR )
Administrative Patent Judge )
CEF:psb
Appeal No. 98-2520
Application 08/613,792
11
J. Bruce Hoofnagle
Patent Department TW199
The Black & Decker Corporation
701 East Joppa Road
Towson, MD 21286