Ex Parte Cheng

Board of Patent Appeals and Interferences

Dec 16, 2008

11285740 (B.P.A.I. Dec. 16, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL H. L. CHENG
____________

Appeal 2008-4773
Application 11/285,740
Technology Center 3700
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Decided: December 16, 2008
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Before ERIC GRIMES, RICHARD M. LEBOVITZ, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 36-38
and 40-46. Jurisdiction is under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
The claims are directed to a golf club shaft that comprises three
layers: an outer layer of a cloth in a resin, inner fiber reinforced layers, and
metal fibers between the outer and inner layers. According to the
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Application 11/285,740

Specification, a golf club with fiber reinforced resin layers and metal fibers
has increased “kick” and high elasticity (Spec. 2: 7-19).
Claims 36-38 and 40-46 stand rejected by the Examiner as follows:
1) Claims 36, 37, and 41-44 under 35 U.S.C. § 103(a) as obvious over
JP ‘522 (JP 62-69522, English translation, Sept. 27, 1994) and Noguchi (US
5,385,767, Jan. 31, 1995) (Ans. 4);
2) Claims 38 and 40 under 35 U.S.C. § 103(a) as obvious over JP
‘522, Noguchi, and JP ‘175 (JP 54-123175, Sept. 25, 1979) (Ans. 5);
3) Claim 45 under 35 U.S.C. § 103(a) as obvious over JP ‘522,
Noguchi, and Honma (US 5,049,422, Sept. 17, 1991) (Ans. 6); and
4) Claim 46 under 35 U.S.C. § 103(a) as obvious over JP ‘522,
Noguchi, and Hogan (US 5,308,062, May 3, 1994) (Ans. 5).
Claim 36 is the only independent claim on appeal and is
representative of the appealed subject matter. Claim 36 reads as follows:
36. A golf club shaft, comprising:
a plurality of fiber reinforced resin layers defining a tip, a
tip section, a main body section, a grip section, a butt and a
longitudinal axis;
an outer layer including a resin and a cloth within the
resin; and
a plurality of longitudinally extending metal fibers
located between the fiber reinforced resin layers and the outer
layer.
ISSUE ON APPEAL
Does Noguchi “teach away” from a golf club shaft with an outer layer
“including a resin and a cloth within the resin” as recited in claim 36?

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PRINCIPLES OF LAW
To establish obviousness, the following factors must be taken into
consideration: (a) the scope and contents of the prior art; (b) the differences
between the prior art and the claimed subject matter; (c) the level of skill in
the pertinent art; and (d) evidence of secondary considerations. Graham v.
John Deere, 383 U.S. 1, 17 (1966).
Although common sense directs one to look with care at a
patent application that claims as innovation the combination of
two known devices according to their established functions, it
can be important to identify a reason that would have prompted
a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does. This is so
because inventions in most, if not all, instances rely upon
building blocks long since uncovered, and claimed discoveries
almost of necessity will be combinations of what, in some
sense, is already known.

KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007).

For over a half century, the Court has held that a “patent for a
combination which only unites old elements with no change in
their respective functions . . . obviously withdraws what is
already known into the field of its monopoly and diminishes the
resources available to skillful men.” Great Atlantic & Pacific
Tea Co. v. Supermarket Equipment Corp., 340 U. S. 147, 152
(1950). This is a principal reason for declining to allow patents
for what is obvious. The combination of familiar elements
according to known methods is likely to be obvious when it
does no more than yield predictable results.
. . .

For the same reason, if a technique has been used to improve
one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same
way, using the technique is obvious unless its actual application
is beyond his or her skill. Sakraida and Anderson’s-Black Rock
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are illustrative—a court must ask whether the improvement is
more than the predictable use of prior art elements according to
their established functions.
KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. at 1739-1740.

A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. The degree of teaching away will of
course depend on the particular facts; in general, a reference
will teach away if it suggests that the line of development
flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.
. . .
. . . Although a reference that teaches away is a significant
factor to be considered in determining unobviousness, the
nature of the teaching is highly relevant, and must be weighed
in substance. A known or obvious composition does not
become patentable simply because it has been described as
somewhat inferior to some other product for the same use.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).

[C]ase law does not require that a particular combination must
be the preferred, or the most desirable, combination described
in the prior art in order to provide motivation for the current
invention. “[T]he question is whether there is something in the
prior art as a whole to suggest the desirability, and thus the
obviousness, of making the combination,” not whether there is
something in the prior art as a whole to suggest that the
combination is the most desirable combination available. See In
re Beattie, 974 F.2d at 1311 (internal quotation omitted;
emphasis added). . . . [A] finding that the prior art as a whole
suggests the desirability of a particular combination need not be
supported by a finding that the prior art suggests that the
combination claimed by the patent applicant is the preferred, or
most desirable, combination.
In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004).
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“[A] reference may teach away from a use when that use would render
the result inoperable.” In re ICON Health and Fitness Inc., 496 F.3d 1374,
1381 (Fed. Cir. 2007).
FINDINGS OF FACT (“FF”)
Scope and content of the prior art
In making an obviousness determination, we must first ascertain the
scope and content of the prior art. Graham v. John Deere Co., 383 U.S. at
17. The following numbered findings of fact (“FF”) summarize the prior art
relied upon by the Examiner in setting forth the basis of the rejection of
claim 36 and others (Ans. 4):
The JP ‘522 patent
1. JP ‘522 describes a golf club shaft comprising:
2. (1) multiple reinforcing layers made by impregnating synthetic resin in
reinforcing carbon fibers (“5a-5c”) (JP ‘522, ¶¶ 10, 20, 21, and Fig. 1;
Ans. 4);
3. (2) an outer layer covered with glass prepreg sheets made by
impregnating heat-curable resin in transparent glass fibers (“glass prepreg
sheet 8”) (JP ‘522, ¶¶ 11, 25, 32; Ans. 4); and
4. (3) a plurality of longitudinally parallel extending metal fibers (“metal
microwires 7”) between the carbon fiber reinforced layers and the outer
layer (‘JP ‘522, ¶¶ 10, 20, 21, and Fig. 1; Ans. 4).
5. Figure 1 of JP ‘522 shows the inner carbon fiber reinforced layers (5a to
5c), outer layer comprising resin and glass (8), and metal microwires (7)
between fiber reinforced layers (5a-5c) and outer layer (8).
The Noguchi patent
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6. In its description of the prior art, Noguchi states:
Recently, golf clubs provided with shafts made of fiber
reinforced synthetic resin or synthetic resin have been
developed, such as the one described in Japanese Utility Model
Laid-open No. 63-46169.
(Noguchi, at col. 1, ll. 12-16.)
7. Noguchi describes the outer layer 17 of conventional golf clubs as
comprising “fiber and matrix which become transparent after curing, for
example sheets of glass cloth.” (Noguchi, at col., 1, ll. 25-28.)
8. According to Noguchi, the “conventional club shaft as described above
has layers in good condition until the outer layer 17 is wound, but suffers
zigzag A or wrinkles B on the string member 15 or mesh fiber 19 which
forms the outer layer 17, after taping or curing.” (Noguchi, at col. 1, ll. 29-
33.)
9. Noguchi also states:
Another problem is sagging or whitening, which hides the
braiding pattern formed by the string member 15 . . . . In
addition, when the surface of the outer layer 17 is polished,
texture of the fiber 19 in the outer layer 17 can be seen
depending on the direction of light, which results in defective
appearance and sometimes declined strength.
(Noguchi, at col. 1, ll. 35-41.)
10. Noguchi asserts to have “studied the above problems for solution”,
found their cause, and to have provided a solution (Noguchi, at col. 1, ll. 44
to col. 2, l. 2).
Difference between the prior art and the claimed invention
Once the scope and content of the prior art has been determined, the
next step is to identify the differences between the prior art and the claimed
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invention. Graham, 383 U.S. at 17. The following numbered findings of fact
are pertinent to this issue:
11. Claim 36 is directed to a golf club shaft comprising three layers: (1) a
plurality of fiber reinforced resin layers; (2) an outer layer comprising “a
resin and a cloth within the resin”; and (3) “a plurality of longitudinally
extending metal fibers” between the (1) fiber reinforced layers and (2) outer
layer.
12. Appellant does not dispute the Examiner’s finding that JP ‘522
describes a golf club shaft having (1) a plurality of fiber reinforced layers
and (3) longitudinally extending metal fibers as in claim 36 (Ans. 4-5; FF2,
4, 11). See reinforcing layers 5a-5c and metal microwires 7, respectively, as
described in JP ‘522 (FF2, 4, 5).
13. The JP ‘522 patent, however, describes an outer layer with glass fibers
in resin (FF3), not “a resin and a cloth within the resin” as required by claim
36 (FF11). Thus, JP ‘522 does not disclose element (2) of claim 36.
Reason to combine the prior art
After ascertaining the differences between the prior art and the
claimed invention, the next step is to identify a reason why persons of
ordinary skill in the art would have been prompted to combine the prior art
to have made the claimed invention. KSR Int’l Co. v. Teleflex Inc., 127 S. Ct.
at 1741. The following finding, which is supported by the preponderance of
the evidence, is relevant to this determination:
14. “In view of the patent of Noguchi it would have been obvious to modify
the shaft of [JP ‘522] to have an outer layer including cloth in order to utilize
a structure for the glass fiber used in the market place for transparent resin
and glass layers” (Ans. 5).
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ANALYSIS
Claims 36-38 and 40-46
The difference between JP ‘522 and claim 36 is that JP ‘522 does not
describe an outer layer comprising “a resin and a cloth within the resin” as
required by the claim (FF12-13). However, an outer layer with the claimed
feature is described by Noguchi as existing in the prior art (FF7, i.e., “sheets
of glass cloth”). The Examiner finds that persons of ordinary skill in the art
would have had reason to utilize the prior art outer layer for its known utility
as a golf club shaft outer covering (FF14).
The Examiner’s reasoning is sound. “The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 127
S. Ct. at 1739. Thus, in making an obviousness determination, we “must ask
whether the improvement is more than the predictable use of prior art
elements according to their established functions. Id. at 1740. In this case,
the evidence supports the Examiner’s position that substituting the sheets of
glass cloth described in Noguchi for JP ‘522’s outer layer is a predictable
use of a prior art element for its established function.
Appellant states:
The Noguchi ‘767 patent is the only evidence in the present
record concerning an “outer layer including a resin and a cloth
within the resin” and the Noguchi ‘767 patent unambiguously
states that such an outer layer results in “zigzag,” “wrinkles,”
“sagging,” “whitening,” “defective appearance” and “declined
strength,” and that something else should be employed in its
place.
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(Reply Br. 6.) For this reason, Appellant contends that Noguchi “clearly
teaches away from the use of an outer layer including a cloth with a resin”
(App. Br. 7).
As a general principle, a “teaching away” from a claimed invention
must be considered when making an obviousness determination. See In re
Gurley, 27 F.3d at 553. “[I]n general, a reference will teach away if it
suggests that the line of development flowing from the reference’s
disclosure is unlikely to be productive of the result sought by the applicant.”
Id. Here, Appellant argues that Noguchi teaches away from the prior art
outer layer because Noguchi “unambiguously states . . . that something else
should be employed in its place” (Reply Br. 7).
The facts in this case do not appear to be in dispute. Noguchi states
that, when sheets of glass cloth are utilized as the outer layer for a golf club
shaft (FF6), problems may arise in its outer appearance. However, simply
because a composition is described as “inferior” in some respects does not
by itself constitute a teaching away from using it. In re Gurley, 27 F.3d at
553. In In re Gurley, the claimed invention was to a printed circuit board
having a substrate material “impregnated with epoxy.” The prior art
Yamaguchi reference taught that circuit boards having an epoxy-
impregnated fibrous substrate were inferior to circuit boards made with
polyester imide-resins. In re Gurley, 27 F.3d at 553. The court considered
Yamaguchi’s teaching but did not find it dispositive:
The facts in Gurley’s record are that this use of epoxy was
known, the structure of these circuit boards was known, and
epoxy had been used for Gurley’s purpose. We share Gurley’s
view that a person seeking to improve the art of flexible circuit
boards, on learning from Yamaguchi that epoxy was inferior to
polyester-imide resins, might well be led to search beyond
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epoxy for improved products. However, Yamaguchi also
teaches that epoxy is usable and has been used for Gurley's
purpose.
In re Gurley, 27 F.3d at 553.
The same rationale applies here. Impregnated glass sheet coverings
for golf club shafts were known in the art (FF7). Admittedly, they were
inferior under certain circumstances, but a finding that the prior art
suggested their combination with JP ‘522 “need not be supported by a
finding that the prior art suggests that the combination claimed by the patent
applicant is the preferred, or most desirable, combination.” In re Fulton,
391 F.3d at 1200 (emphases added). A teaching that a result would be
inferior or less desirable is not a teaching away unless the use “would render
the result inoperable.” In re ICON, 496 F.3d at 1381; see also, In re Gurley,
27 F.3d at 553.
For the foregoing reasons, we affirm the rejection of claim 36. Claims
37 and 41-44 fall with claim 36 because separate reasons for their
patentability were not provided. 37 C.F.R. § 41.37(c)(1)(vii).

Claims 38, 40, 45, and 46
Appellant did not identify any defect in the Examiner’s reasoning for
rejecting claims 38, 40, 45, and 46 over JP ‘522, Noguchi, and the
additionally cited prior art, but relied on the same arguments as for claim 36
(see App. Br. 11). As the Examiner provided a logical and fact-based
rationale for rejecting claims 38, 40, 45, and 56, we affirm the rejections for
the reasons stated by the Examiner.

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CONCLUSIONS OF LAW
The Examiner provided sound reason for concluding that the claimed
golf shaft was obvious over the combination of JP ‘522 and Noguchi. As
Noguchi does not “teach away” from a golf club shaft with an outer layer
“including a resin and a cloth within the resin” as recited in claim 36, we
affirm the obviousness rejection of claim 36. Different arguments were not
provided for claims 37, 38, and 40-46; thus, we affirm their rejection.

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

AFFIRMED

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