Ex Parte Breier et al

Patent Trial and Appeal Board

Jan 22, 2015

12335695 (P.T.A.B. Jan. 22, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOSHUA G. BREIER, CHARLES E. GOLDEN, and
SCOTT A. RICE
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Appeal 2012-011871
Application 12/335,695
Technology Center 3700
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Before: EDWARD A. BROWN, MICHAEL L. HOELTER, and
JAMES J. MAYBERRY, Administrative Patent Judges.

MAYBERRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Joshua G. Breier, Charles E. Golden, and Scott A. Rice (Appellants)1
appeal under 35 U.S.C. § 134 from a rejection of claims 1–8 and 23–27. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify Acushnet Company, a fully owned subsidiary of
Fortune Brands, Inc., as the real party in interest. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to a two piece golf club head construction.
Claims 1 and 23 are independent claims. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A golf club head, comprising:
a first part comprising between about 50% to about 90%
of a face and between about 20% and about 40% of a body;
a second part comprising a remainder of the club head;
a single weld line operatively connecting the first part
and the second part, wherein the two parts comprise a
substantially complete club head.
Appeal Br. A-1, Claims App. 2

REJECTION
Claims 1–8 and 23–27 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kumamoto (US 7,549,933 B2, issued June 23,
2009), Helmstetter (US 6,739,983 B2, issued May 25, 2004), and Meyer
(US 2006/0019770 A1, published Jan. 26, 2006). Ans. 4.

ANALYSIS
Obviousness Rejection over Kumamoto, Helmstetter, and Meyer
Claims 1–3, 5–8, 23, and 25–27
Appellants argue claims 1–3, 5–8, 23, and 25–27 as a group. See
Appeal Br. 8–9. We select independent claim 1 as representative. See 37
C.F.R. § 41.37(c)(1)(vii) (2011). Claims 2, 3, 5–8, 23, and 25–27 stand or
fall with claim 1.

2 Appellants restart numbering the Claims Appendix of their Appeal Brief at
“A–1.”
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Claim 1 recites a golf club head comprising “a first part” and a
“second part” and “a single weld line operatively connecting the first part
and the second part, wherein the two parts comprise a substantially complete
club head.” Appeal Br. A-1, Claims App. In rejecting claim 1, the
Examiner finds that Kumamoto discloses a golf club head with a first part
and second part as recited in claim 1. Ans. 4–5. The Examiner further finds
that “Kumamoto discloses a single line connecting the two parts but does not
disclose the second part being metallic or welded.” Id. at 5. The Examiner
finds that “[Helmstetter] discloses a club head having a second part made of
a composite material but notes that magnesium, aluminum, or tin may be
used as substitutes.” Id. The Examiner determines that “[o]ne having
ordinary skill in the art would have found it obvious to substitute
magnesium, aluminum, or tin for a composite material, as taught by
[Helmstetter] because they are low density materials.” Id.
The Examiner further finds that Helmstetter fails to disclose that the
parts of the club head are welded. Ans. 5. The Examiner finds that “Meyer
discloses a club head having two portions wherein brazing is used to attach
the parts.” Id. The Examiner determines that “[o]ne having ordinary skill in
the art would have found it obvious to use braze welding, as taught by
Meyer, in order to join two parts made of different materials.” Id.
Appellants argue that Kumamoto teaches away from the combination
proposed by the Examiner. Appeal Br. 8. Specifically, Appellants reference
the following disclosure in Kumamoto as teaching away:
All-metal structures are however headache for the
designers because design freedom is less, and it is difficult to
optimize the weight distribution, the position of the center of
gravity, etc., while increasing the head volume at the same time.
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Appeal Br. 8 (quoting Kumamoto, col. 1, ll. 23–27. Appellants emphasize
that “the purpose of Kumamoto’s invention is to avoid all metal golf club
heads while mimicking the sound of an all metal golf club head at impact.”
Appeal Br. 9. As such, “any attempt to modify Kumamoto by substituting
the metal component of Helmstetter for the fiber resin component M2 [of
Kumamoto] to form an all metal head . . . would be improper.” Id.
“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.” In re Haruna, 249 F.3d
1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc.,
192 F.3d 1353, 1360 (Fed. Cir. 1999)) (emphasis added). We find that
Kumamoto, read as a whole, does not teach away from the Examiner’s
proposed combination. Tellingly, the paragraph in Kumamoto that precedes
the paragraph quoted by Appellants states that all-metal wood-type golf club
heads represents the “mainstream of structures.” Kumamoto, col. 1, ll. 16–
22. Given that Kumamoto discloses that most of the wood-type golf heads
have an all metal construction, one of ordinary skill in the art would not be
lead in a direction divergent from modifying Kumamoto’s composite golf
club head to arrive at an all metal golf club head. As the Examiner correctly
finds, “[t]hough making the entire club head out of metal would have been
difficult, this does not amount to the second part not being able to be made
of metal, which [Helmstetter] was used to show.” Ans. 7 (emphasis added);
cf. Baxter Int’l, Inc. v. McGaw, Inc., 149 F.3d 1321, 1328 (Fed. Cir. 1998)
(“There is nothing in the . . . [d]evice to suggest to one of skill in the art that
a similar device under radial compression with a pre-slit septum was unlikely
to work.”) (emphasis added). The single statement in Kumamoto cited by
Appellants is insufficient to divert one of ordinary skill in the art from an all
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metal club head—as the Supreme Court has made clear, “a person of
ordinary skill is . . . not an automaton.” KSR v. Teleflex, 550 U.S. 398, 421
(2007).
For the reasons above, we sustain the Examiner’s rejection of claim 1
under 35 U.S.C. § 103(a) as being unpatentable over Kumamoto,
Helmstetter, and Meyer. Claims 2, 3, 5–8, 23, and 25–27 fall with claim 1.

Obviousness Rejection over Kumamoto, Helmstetter, and Meyer
Claims 4 and 24
Dependent claims 4 and 24, which depend from independent claims 1
and 23, respectively, each recite “wherein the single weld line passes along a
transition between the face and the sole.” Appeal Br. A-1, A-3, Claims App.
Appellants argue that “[t]he face and sole of Kumamoto, and in particular
the area encompassing the transition of the face and sole, are made from a
single piece of metal material.” Appeal Br. 10. Appellants argue that the
Examiner’s rejection “ignores the plain language of the claims,” which
requires the weld line to “‘pass[] along a transition between the face and the
sole.’” Id. (quoting Appellants’ Response to Final Action, dated Nov. 28,
2011). That is, because the face and sole are a single piece, there are not two
pieces to join together, so a weld line cannot pass along the transition
between the two pieces. See id.
In response, the Examiner states that emphasis should be placed on
the language “passing along” in claims 4 and 24. Ans. 8. The Examiner
finds that “a weld line would pass along the two points where elements 9
[the face] and 10 [the sole] meet[].” Id. at 9 (emphasis added). That is, “the
weld line would pass along a transition of the face and sole in addition to the
perimeters of the face and sole.” Id. In reply, Appellants argue that,
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contrary to the Examiner’s interpretation, “a weld line that passes along the
transition between the face and sole does not merely pass on the bordering
area of the face and sole.” Reply Br. 9–10.
We find Appellants’ argument unpersuasive. The plain language of
claims 4 and 24 states that the “weld line passes along a transition.” Appeal
Br. A-1, A-3, Claims App. The recited “transition” is the transition between
the “face and the sole.” Id. The Examiner correctly interprets claims 4 and
24 to require that the weld line passes along at least a single point of this
transition. The Examiner then finds that Kumamoto, as modified by the
proposed combination, discloses such a configuration, as the weld line
would pass along a point at the edge of the interface, or “transition,”
between the face and sole. Ans. 7–9.
Appellants’ argument suggests that they interpret claims 4 and 24 to
require the weld line to pass along the entire transition, or interface, between
the face and sole of the club head. See Reply Br. 9–10. The claims, as
currently drafted, are not so limiting.3
For the reasons above, we sustain the Examiner’s rejection of
dependent claims 4 and 24 under 35 U.S.C. § 103(a) as being unpatentable
over Kumamoto, Helmstetter, and Meyer.

3 Appellants may clarify the claim scope should this application be further
prosecuted. See e.g., In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989) (“An
essential purpose of patent examination is to fashion claims that are precise,
clear, correct, and unambiguous. Only in this way can uncertainties of claim
scope be removed, as much as possible, during the administrative process.”).
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DECISION
For the above reasons, we AFFIRM the Examiner’s rejection of
claims 1–8 and 23–27 under 35 U.S.C. § 103(a) as being unpatentable over
Kumamoto, Helmstetter, and Meyer.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED
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