Ex Parte Clark et al

Patent Trial and Appeal Board

May 8, 2018

13315211 (P.T.A.B. May. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/315,211
51951 7590
The Luther Law Firm
8149 N 87th Place
Scottsdale, AZ 85258
12/08/2011
05/10/2018
FIRST NAMED INVENTOR
Dana A. Clark
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
DCWW-OlORD 7181
EXAMINER
LEGESSE, NINI F
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
05/10/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
bjl@lutherlaw.us
eem@lutherlaw.us
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANA A. CLARK and WINIFRED NABB SEWELL
Appeal2016-004983
Application 13/315,211
Technology Center 3700
Before PHILIP J. HOFFMANN, BRADLEY B. BAY AT, and
AMEE A. SHAH, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's rejection of claims 1-10. We have jurisdiction under 35 U.S.C.
§ 6(b ). Appellants appeared for an oral hearing before the Board on
April 26, 2018.
We AFFIRM-IN-PART.
According to Appellants, their invention is directed to a "golf aid
[that] has been found to be helpful in correcting the golfer's swing and in
1 According to Appellants, the real party in interest is the Applicant, Carl
Freudenberg KG. Appeal Br. 2.
Appeal2016-004983
Application 13/315,211
improving the short game and putting." Spec., Abstract. Claims 1 and 8-10
are the independent claims on appeal. Below, we reproduce claim 1 as
illustrative of the appealed claims.
1. A golf aid comprising
a) a compressible center shaped to fit comfortably
between a golfer's upper arm and torso;
b) a slippery fabric material covering over the
compressible center; and
c) the golf aid having a thickness of about 4--8 cm and
compressing to about 1-3 cm,
whereby the golfer must compress the golf aid in the
armpit to prevent slippage of the golf aid.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows: 2
I. claims 1, 2, 5, and 6 under U.S.C. § 102(b) as anticipated by
Ostrowski (US 5,522,757, iss. June 4, 1996);
II. claims 1, 5, and 6 underU.S.C. § 102(b) as anticipated by
Sneed (US 7,584,516 Bl, iss. Sept. 8, 2009);
III. claims 1-10 under U.S.C. § 103(a) as unpatentable over Baird
et al. (US 2008/0153615 Al, pub. June 26, 2008) (hereinafter
"Baird");
IV. claims 1, 2, 5, 7, and 8 under U.S.C. § 103(a) as unpatentable
over Latella (US 6, 17 6, 790 B 1, iss. Jan. 23, 2001) and
Ostrowski; and
2 In the Answer, the Examiner withdraws an indefiniteness rejection. See
Answer 2; see Non-Final Office Action mailed Feb. 14, 2014, 2.
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Application 13/315,211
V. claims 9 and 10 under U.S.C. § 103(a) as unpatentable over
Latella, Ostrowski, and Baird.
ANALYSIS
Rejection I
As set forth above, independent claim 1 recites, in relevant part, "the
golf aid having a thickness of about 4--8 cm and compressing to about 1-3
cm." Appeal Br., Claims App. (emphasis added). Claims 2, 5, and 6 depend
from claim 1. Id. Appellants argue that the rejection is in error because
"Ostrowski recites no compressed diameter or thickness," among other
reasons. Appeal Br. 14. Based on our review, we agree with Appellants,
and, thus, we do not sustain the rejection as anticipated by Ostrowski.
The Examiner does not establish that Ostrowski expressly discloses
the claimed compressed thickness of about 1-3 cm, by citing to any portion
of Ostrowski. See, e.g., Answer 2-3, 6-8. Rather, in response to
Appellants' argument, the Examiner explains that Ostrowski
teaches that the device is made of an inflatable balloon made of
thin, elastic material[,] such as rubber[,] in column 1 [,]
lines 44--4 7. This structure is known to be inherently
compressible. If one presses the device against a hard surface
exerting some force on the device, it will inherently compress to
some extent. Depending [on] the amount of force applied, the
device will compress relatively including the recited 1-3 cm
range.
Id. at 7. To establish inherency, there must be a "basis in fact and/or
technical reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the teachings of the
applied prior art." Ex parte Levy, 17 USPQ2d 1461, 1464 (BP AI 1990).
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This explanation amounts to conjecture on the Examiner's part, because the
Examiner does not present evidence or a line of reasoning adequate to
support the explanation, as it is not clear from Ostrowski's teachings that the
punch ball necessarily compresses to the claimed thickness.
Rejection II
As set forth above, independent claim 1 recites, in relevant part, "the
golf aid having a thickness of about 4--8 cm and compressing to about 1-3
cm." Appeal Br., Claims App. (emphasis added). Claims 5 and 6 depend
from claim 1. Id. Appellants argue that the rejection is in error because
Sneed does not recite the claimed compressed thickness, among other
reasons. Appeal Br. 15. Based on our review, we agree with Appellants,
and, thus, we do not sustain the rejection as anticipated by Sneed.
The Examiner does not establish that Sneed expressly discloses the
claimed compressed thickness of about 1-3 cm, by citing to any portion of
Sneed. See, e.g., Answer 3--4, 8-9. Rather, in response to Appellants'
argument, the Examiner explains that because Sneed's "device could have a
core that comprises multiple materials line [sic] cotton, feathers, down or
could also have an air inflatable bladder, it is clearly compressible and
depending on the squeezing force applied to the device the compressed
thickness as recited will inherently be obtained." Id. at 9. It is well settled
that "[i]nherency ... may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient." In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (citation omitted). The Examiner's explanation amounts to
conjecture on the Examiner's part, and the Examiner does not present
evidence or a line of reasoning adequate to support the explanation, as it is
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Application 13/315,211
not clear from Sneed's teachings that the punch ball will, in fact, compress
to the claimed thickness.
Rejection III
Claims 1-7, 9, and 10
As set forth above, independent claim 1 recites, in relevant part, "the
golf aid having a thickness of about 4--8 cm and compressing to about 1-3
cm." Appeal Br., Claims App. (emphasis added). Appellants argue that the
rejection is in error because Baird does not recite the claimed compressed
thickness, among other reasons. Appeal Br. 16. Based on our review, we
agree with Appellants, and, thus, we do not sustain the rejection.
The Examiner does not establish that Baird teaches the claimed
compressed thickness of about 1-3 cm, such as by citing any portion of
Ostrowski. See, e.g., Answer 4--5, 9-11. Further, the Examiner does not
respond to Appellants' argument regarding the claimed compressed
thickness. See id. at 9-11. Thus, the Examiner does not support adequately
claim l's rejection.
Claims 2-7 depend from claim 1, and, therefore, we do not sustain the
rejection of claims 2-7 for the same reasons we do not sustain claim l's
rejection. Appeal Br., Claims App. Independent claims 9 and 10 recite
similar recitation to those discussed above (see id.), and, thus, we do not
sustain the rejection of claims 9 and 10 for the same reasons we do not
sustain claim l's rejection.
Claim 8
Independent claim 8 does not require the compressed thickness, as is
recited in the other independent claims under appeal. See Appeal Br.,
Claims App. Independent claim 8 recites, in part, "providing a compressible
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golf aid with a slippery fabric material covering." Id. Appellants argue that
the rejection is in error because Baird does not disclose a slippery fabric
material covering, and the Examiner does not establish that it would have
been obvious to modify Baird to have a slippery fabric material covering.
Id. at 21-24. Based on our review, we agree with Appellants, and, thus, we
do not sustain the rejection.
With respect to the claimed slippery covering, the Examiner
determines the following:
Baird does not show the pads as having a "slippery" cover ... as
recited . . . . However, [a ]t the time the invention was made, it
would have been an obvious matter of design choice to a person
of ordinary skill in the art to provide a pad that is slippery ... [,]
because one of ordinary skill in the art would have expected
[Appellants'] invention to perform equally well with either the
simple pads as taught by Baird or the claimed recited features by
[Appellants,] because both devices perform the function of
assisting a golfer to acquiring a proper golf swing technique.
Answer 4--5; see also id. at 10. Even assuming we agree with the Examiner
that if Appellants' invention would be expected to perform equally well with
a slippery covering as with Baird's non-slippery covering, then it would
have been an obvious matter of design choice to substitute a slippery
covering for the non-slippery covering, the Examiner does not establish
adequately that the claimed device would, in fact, perform equally well with
a non-slippery covering. Appellants' Specification adequately explains the
advantage of using a slippery covering as compared to a non-slippery
covering. Specifically, Appellants explain that "[i]mportantly[,] the outer
material is intentionally slippery .... This slippery material contributes to
the instability of the golf aid. The golfer must continuous apply the proper
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muscle tension to keep the device in place during the course of the swing."
Spec. 4. Thus, we do not sustain the rejection.
Rejection IV
Claims 1, 2, 5, and 7
As set forth above, independent claim 1 recites, in relevant part, "the
golf aid having a thickness of about 4--8 cm and compressing to about 1-3
cm." Appeal Br., Claims App. (emphasis added). Claims 2, 5, and 7 depend
from claim 1. Id. Appellants argue that the rejection is in error because
neither Latella nor Ostrowski discloses the claimed compressed thickness.
Appeal Br. 18-19. Based on our review, we agree with Appellants, and,
thus, we do not sustain the rejection.
For the reasons set forth above, the Examiner's explanation regarding
Ostrowski's compressed thickness amounts to conjecture, as it is not clear
that Ostrowski is capable of being compressed to the claimed thickness.
Further, the Examiner does not appear to rely on Latella to disclose or render
obvious the claimed compressed thickness. Thus, the Examiner does not
support adequately the rejection of claims 1, 2, 5, and 7.
Claim 8
Of the arguments purportedly advanced by Appellants with respect to
independent claim 8, only the argument regarding the claimed "providing a
compressible golf aid with a slippery fabric material covering" is relevant.
See Appeal Br. 24--26. This is because, for example, claim 8 does not recite
an overall thickness of the golf aid, or a compressed thickness. See id.,
Claims App.
Appellants argue that the rejection is in error because neither Latella
nor Ostrowski discloses the claimed compressible golf aid. See, e.g., id.
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at 25. But, Appellants' concession that Ostrowski discloses a ball with
"negligible compression" is sufficient to demonstrate that the Examiner's
rejection is supported adequately. Id.
Appellants further argue that the rejection is in error because no
reference discloses the claimed slippery covering. Id. at 24--26. In the
Answer, however, the Examiner finds that "Ostrowski discloses ... [i]n
column 2[,] line[s] 29--30[,] ... that the cover of the device could be nylon
and this [is] considered as being [a] 'slippery' fabric." Answer 3. Further,
the Examiner finds that Appellants' Specification "disclose[s] that the
slippery material ... include[s] nylon." Id. at 7 (citing Spec. 4). In the
Appeal Brief, Appellants do not sufficiently rebut the Examiner's
adequately-supported finding that Ostrowski' s disclosure of a nylon cover
teaches the claimed slippery covering. Thus, we sustain the Examiner's
obviousness rejection of claim 8 based on Latella and Ostrowski.
Rejection V
Independent claims 9 and 10 each recite "providing two compressible
golf aids, ... each having a thickness of about 4--8 cm," and "compressing
the golf aids to about 1-3 cm to maintain them in place during [a] swing."
Appeal Br., Claims App. For the reasons set forth above, the Examiner does
not establish that any of Latella, Ostrowski, or Baird discloses the claimed
compressed thickness. Thus, for reasons similar to those discussed above,
we do not sustain the rejection of claims 9 and 10 based on Latella,
Ostrowski, and Baird.
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DECISION
We REVERSE the Examiner's anticipation rejection of claims 1, 2, 5,
and 6 based on Ostrowski.
We REVERSE the Examiner's anticipation rejection of claims 1, 5,
and 6 based on Sneed.
We REVERSE the Examiner's obviousness rejection of claims 1-10
based on Baird.
We REVERSE the Examiner's obviousness rejection of claims 1, 2, 5,
and 7 based on Latella and Ostrowski.
We AFFIRM the Examiner's obviousness rejection of claim 8 based
on Latella and Ostrowski
We REVERSE the Examiner's obviousness rejection of claims 9
and 10 based on Latella, Ostrowski, and Baird.
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-IN-PART
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