Ex Parte Cassoni

Board of Patent Appeals and Interferences

Mar 26, 2012

10815202 (B.P.A.I. Mar. 26, 2012)

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.
10/815,202 03/31/2004 Robert P. Cassoni 527.1001DIV 9504
23280 7590 03/27/2012
Davidson, Davidson & Kappel, LLC
485 7th Avenue
14th Floor
New York, NY 10018
EXAMINER
YEAGLEY, DANIEL S
ART UNIT PAPER NUMBER
3611
MAIL DATE DELIVERY MODE
03/27/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte ROBERT CASSONI
________________

Appeal 2009-013425
Application 10/815,202
Technology Center 3600
________________

Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY and
KEN B. BARRETT, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s 2
final decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C. 3
§ 6(b).4

1 The Appellant identifies the real party in interest as Cassoni Golf
LLC.
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We sustain the rejection of claims 1, 3-5, 8, 9, 11 and 12 under 35 1
U.S.C. § 103(a) as being unpatentable over Pitkanen (US 5,454,576, issued 2
Oct. 3, 1995) and Dula (US 5,738,261, issued Apr. 14, 1998); and the 3
rejection of claims 2, 6, 7, 10 and 13 under § 103(a) as being unpatentable 4
over Pitkanen, Dula and Underwood (US 2,577,290, issued Dec. 4, 1951). 5
We do not sustain the rejection of claims 14-20 under § 103(a) as being 6
unpatentable over Dula and Underwood. 7
Claims 1, 9, 14 and 20 are independent claims. Claim 1 recites: 8
1. A golf club carrier comprising: 9
a carrier body having a first side and a 10
second side; 11
a golf bag having a back, front, bottom and 12
top and being supported by the carrier body on the 13
first side for holding a plurality of golf clubs, the 14
carrier body supporting the back and the bottom, 15
the top being open for access to golf clubs in the 16
golf bag; 17
two wheels connected to the carrier body 18
and extending from the carrier body on the second 19
side; 20
a handle connected to the carrier body for 21
permitting a person to move the carrier; 22
a hitching device connected to the carrier 23
body for connecting to another hitching device on 24
a golf cart, at least a portion of the hitching device 25
extending from the first side at the bottom of the 26
golf bag. 27
28
ISSUES 29
The Appellant argues the rejections of claims 1, 5, 8 and 9 as a group 30
(see App. Br. 5-6); the rejections of claims 3 and 11 as a group (see App. Br. 31
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6); and the rejections of claims 4 and 12 as a group (see id.) We select the 1
first listed claim of each group as being representative of the group. In 2
addition, the Appellant argues the rejections of claims 2, 6, 7, 10 and 13 as a 3
group (see App. Br. 6-7). We select claims 2 and 6 as representative. 4
Finally, the Appellant argues the rejection of claims 14-20 separately from 5
the rejection of claim 1. (see App. Br. 6-7). Only issues and findings of fact 6
contested by the Appellant will be addressed. See Ex Parte Frye, 94 7
USPQ2d 1072, 1075-76 (BPAI 2010). 8
This appeal turns on three issues: 9
First, do the evidence and technical reasoning underlying 10
the rejection of claim 1 provide some rational underpinning for 11
the conclusion that a golf club carrier including a hitching 12
device connected to carrier body for connecting to another 13
hitching device on a golf cart would have been obvious? (App. 14
Br. 5-6; Reply Br. 2-3). 15
Second, do the evidence and technical reasoning 16
underlying the rejections of claims 2 and 6 provide some 17
rational underpinning for the conclusion that the subject matter 18
of those claims would have been obvious? (App. Br. 6-7; 19
Reply Br. 4). 20
Third, do the evidence and technical reasoning 21
underlying the rejection of claims 14 and 20 provide some 22
rational underpinning for the conclusion that a golf club carrier 23
including two wheels extending from a second side of the 24
carrier body would have been obvious? (App. Br. 7; Reply Br. 25
4). 26
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FINDINGS OF FACT 1
The record supports the following findings of fact (“FF”) by a 2
preponderance of the evidence. 3
1. The Appellant admits in the Specification that: 4
Motorized golf cars capable of carrying two 5
golfers and having a golf bag bay for carrying the 6
golfers[’] golf bags and typically having electric or 7
internal-combustion motors, are also known. 8
. . . Some courses even require such [cars] to speed 9
golf play. 10
(Spec., para. [0005]). 11
2. Pitkanen teaches the use of a two-wheeled foldable golf cart 12
which may be collapsed for placement in the trunk of a car or in a motorized 13
golf car. (See Pitkanen, col. 1, ll. 11-15 and 19-22). 14
3. Underwood identifies as one object of Underwood’s invention 15
“the provision of a cart arranged to receive securely a golf bag for 16
transportation over the course, but which may be collapsed for storage in the 17
rear of an automobile or the luggage compartment thereof, or in any other 18
location where space is at a premium.” (Underwood, col. 1, ll. 15-21). 19
4. Dula teaches that it was common practice to use a vehicle hitch 20
to secure a pool cart to the bumper of a vehicle used to travel to a pool site. 21
(Dula, col. 1, ll. 30-34). “In most types of pool cart hitches, the pool cart is 22
supported at the rear of the vehicle in a generally vertical orientation leaving 23
room in the truck bed for transporting other materials such as chemicals and 24
equipment.” (Dula, col. 1, ll. 34-38). 25
5. We adopt and incorporate by reference the Examiner’s findings 26
at page 3, line 9 through page 4, line 5 of the Answer (starting at “Pitkanen 27
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shows . . .” and ending at “. . . about the other hitching device.”). (See also 1
Pitkanen, col. 2, l. 66 – col. 3, l. 33 and figs. 1, 4 and 5). 2
6. Dula describes a conventional pool cart 11 for carrying pool 3
servicing supplies; a conventional pick-up truck 12 having a rear bumper 13; 4
and a cart hitch 10 for securing the pool cart 11 to the rear bumper 13 of the 5
truck 12. (Dula, col. 3, ll. 19-29 and fig. 1). 6
7. Bolts 13, 40 and 41 cooperate to secure and stabilize Dula’s cart 7
hitch 10 to the bumper 13 of the truck. (See Dula, col. 6, ll. 49-53). 8
8. Dula’s cart hitch 10 includes a front plate 36, a base plate 34 9
and a saddle plate 46 defining a channel for receiving a lower tube 21 of the 10
pool cart 11. The cart hitch 10 also includes a pair of lever-actuated latch 11
arms 31, 51 having notches 32, 38 for receiving and engaging an upper tube 12
20 of the pool cart 11 to secure the pool cart 11 to the bumper 13. (Dula, 13
col. 3, ll. 30-33; id., col. 3, l. 43 – col. 4, l. 4). 14
9. We adopt and incorporate by reference the Examiner’s findings 15
in the Answer at page 5, lines 1-4 (starting at “Underwood as stated above 16
. . .” and ending at “. . . with respect to the carrier body (column 3).” ) and at 17
page 5, lines 19-22 (starting at “Underwood shows a carrier . . . and ending 18
at “. . . (column 3) as claimed.”). (See also Pitkanen, col. 2, l. 66 – col. 3, l. 19
33 and figs. 1, 4 and 5). 20
21
ANALYSIS 22
First Issue 23
The Examiner concludes that it would have been obvious “to have 24
modified the carrier of Pitkanen utilizing a securing hitch device such as 25
suggested by [the] Dula carrier, in order to extend the use of [the] Pitkanen 26
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carrier and provide a hitching means to secure the carrier of Pitkanen to a 1
vehicle to provide for easy transporting of the carrier.” (Ans. 4). 2 2
Furthermore, the Examiner’s reasoning underlying the rejection of claims 4 3
and 12 includes the conclusion that reversal of the cart hitch 10 as described 4
by Dula, such that a golf bag carrier mounted a hitch including a channel and 5
a pair of notched, lever-actuated latch arms for receiving upper and lower 6
tube fastened to a vehicle, would have been within the level of ordinary skill 7
in the art. (See Ans. 8, citing In re Einstein, 46 F.2d 373, 374 (CCPA 8
1931)). The Appellant challenges this reasoning as based solely on 9
hindsight. (Reply Br. 2-3). The Appellant also argues that “one of ordinary 10
skill in the art would not have looked to the device of Dula for use with the 11
Pitkanen golf cart device, as Dula requires an upper tube and lower tube on 12
the Dula pool cart for hitching, which Pitkanen does not have.” (App. Br. 5-13
6). 14
The Examiner’s reasoning in support of the conclusion of obviousness 15
has at least some rational underpinning in the teachings of Pitkanen and 16
Dula. The Appellant admits in the Specification that some golf courses 17
require the use of golf cars. (FF 1). Pitkanen teaches that golf pull carts 18
may be transported both manually and by a motorized vehicle such as a golf 19
car. (FF 2). Dula teaches that a cart may be transported either within a 20
motorized vehicle or on a hitch attached to the exterior of the vehicle. (FF 21
4). At the very least, providing a golf pull cart with a hitch for hitching the 22

2 We find it unnecessary to rely on the Examiner’s finding that
Pitkanen’s U-shaped foot member 53 is inherently a hitching device in order
to sustain the rejection of representative claim 1. (See, e.g., FF 5). We rely
on the Examiner’s reasoning as expressed on page 4, lines 6-12 of the
Answer.
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cart to the exterior of a vehicle would have extended the use of the cart by 1
permitting the cart to be used both on courses where golf cars were required 2
and on other courses where no golf cars were required. Hitching the cart to 3
the exterior of the vehicle would have freed space within the vehicle for 4
carrying other equipment or supplies. 5
Furthermore, the Examiner’s proposal to reverse the two hitching 6
devices has some rational underpinning. “When there is a design need or 7
market pressure to solve a problem and there are a finite number of 8
identified, predictable solutions, a person of ordinary skill has good reason 9
to pursue the known options within his or her technical grasp.” KSR Int’l, 10
Inc. v. Teleflex, Inc., 550 U.S. 398, 421 (2007). One of ordinary skill in the 11
art would have had reason, from the teachings of Pitkanen and Dula, to 12
provide a hitch for hitching a cart to the exterior of a vehicle. Such a hitch 13
necessarily would have included a complementary hitching structure affixed 14
to the vehicle and the cart or carrier. This would have led to a design need 15
to provide a first hitching device affixed to either the cart or the vehicle for 16
engagement with a complementary second hitching device affixed to the 17
other of the cart and the vehicle. 18
Dula teaches affixing a first hitching device including a channel and a 19
pair of notched, lever-actuated latch arms 31, 51 to a vehicle for engagement 20
with a pair of tubes on a cart or carrier body. (FF 8). The teachings of Dula 21
would have provided one of ordinary skill in the art reason to adopt a similar 22
hitching device. 23
The one of ordinary skill in the art would have had the problem of 24
choosing which of two possible options, the vehicle or the cart, would 25
receive a hitching device having a structure similar to that described by 26
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Dula. One alternatively might have affixed the first hitching device to the 1
cart for engagement with a second hitching device including a pair of bars or 2
tubes mounted on the vehicle. Taking into account “the modifications that 3
one skilled in the art would make to a device borrowed from the prior art,” 4
In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007), 5
one of ordinary skill in the art also would have had reason to position a first 6
hitching device having a channel and a pair of notched, lever-actuated latch 7
arms of the type described by Dula on a cart for engagement with a pair of 8
bars or tubes mounted on a vehicle. 9
The Appellant provides no persuasive reason why the implementation 10
of either alternative would have been beyond the level of ordinary skill in 11
the art or would have produced unpredictable results. The Appellant’s 12
assertion that “the hitch of Dula seems to work in only one direction due to 13
the latch and the dual bar nature of the hitch and it is not understood how the 14
hitch of Dula would function in reverse” (Reply Br. 3) is not persuasive. 15
The Appellant does not explain why a person exercising merely ordinary 16
skill could not reasonably expect a hitching device similar to that described 17
by Dula to operate if coupled to bars or tubes mounted on a vehicle. 18
Therefore, one of ordinary skill in the art would have had reason to connect 19
a first hitching device having a channel and a pair of notched, lever-actuated 20
latch arms of the type described by Dula to a cart or carrier for engagement 21
with a pair of bars or tubes mounted on a vehicle. We sustain the rejection 22
of claims 1, 5, 8 and 9 under § 103(a) as being unpatentable over Pitkanen 23
and Dula. 24
The Appellant argues the patentability of claims 4 and 12 separately 25
from the rejection of claim 1. The Appellant does not appear to argue that a 26
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first hitching device including a pair of notched, lever-actuated latch arms of 1
the type described by Dula, if affixed to a carrier body, would have lacked a 2
mount claw as recited in claims 4 and 12. (See App. Br. 6; Reply Br. 3; see 3
also Ans. 8). We sustain the rejection of claims 4 and 12 under § 103(a) as 4
being unpatentable over Pitkanen and Dula. 5
The Examiner finds that Pitkanen’s foot member 53 defines a foot 6
surface as recited in claims 3 and 11. (Ans. 7). The Appellant does not 7
appear to contest this finding. (See App. Br. 6; Reply Br. 3). We sustain the 8
rejection of claims 3 and 11 under § 103(a) as being unpatentable over 9
Pitkanen and Dula. 10
11
Second Issue 12
Claim 2 recites a golf club carrier “wherein the wheels are retractable 13
and further comprising a spring connected to the wheel for assisting in 14
retracting the wheels.” Claim 6 recites a golf club carrier “wherein the axis 15
of the wheels is movable via a handle.” The Examiner reasons that it would 16
have been obvious: 17
to have further modified the modified carrier of 18
Pitkanen as modified by the hitching device of 19
Dula with spring biased retractable wheels and 20
latchable handle to more easily control the 21
actuation of the retractable wheels of Pitkanen 22
carrier utilizing a single movement handle for an 23
actuating member to manipulate the wheels to an 24
extended locked position as taught by Underwood 25
(column 1). 26
(Ans. 5). 27
The Appellant’s arguments at pages 6-7 of the Appeal Brief and page 28
4 of the Reply Brief are not persuasive. The Examiner proposes to modify 29
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the cart or carrier described by Pitkanen. Therefore, the Appellant’s 1
argument relating to modification of the pool cart described in Dula does not 2
address the rejection as framed by the Examiner. The Appellant does not 3
address the Examiner’s reasoning that the application of the teachings of 4
Underwood to the cart or carrier described by Pitkanen would have 5
permitted a user to control and actuate the retractable wheels of the carrier 6
more easily. We sustain the rejection of claims 2, 6, 7, 10 and 13 under 7
§ 103(a) as being unpatentable over Pitkanen, Dula and Underwood. 8
9
Third Issue 10
Independent claims 14 and 20 recite a carrier including “two wheels 11
connected to the carrier body and extending from the second side.” The 12
Examiner reasons that it would have been obvious “to have modified the 13
wheels of Dula carrier with rearward mounted movable wheels that are 14
collapsible via a handle actuation such as suggested by Underwood to 15
provide a carrier that is substantially more compact for storage as taught by 16
Underwood.” (Ans. 6). The Appellant correctly points out that the 17
Examiner has not explained how a cart of the type described by Dula 18
modified to include wheels extending from a second (rearward) side of the 19
cart would have been more compact than Dula’s cart unmodified. (See 20
Reply Br. 4). Since the Examiner has not articulated a persuasive reason 21
why one of ordinary skill in the art might have modified Dula’s cart in the 22
fashion claimed, we do not sustain the rejection of claims 14-20 under 23
§ 103(a) as being unpatentable over Dula and Underwood. 24
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DECISION 1
We AFFIRM the Examiner’s decision rejecting claims 1-13. 2
We REVERSE the Examiner’s decision rejecting claims 14-20. 3
No time period for taking any subsequent action in connection with 4
this appeal may be extended under 37 C.F.R. § 1.136(a) (2007). 5
6
AFFIRMED-IN-PART 7
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Klh 11