Ex Parte Dionne

Board of Patent Appeals and Interferences

Jan 23, 2003

09349306 (B.P.A.I. Jan. 23, 2003)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte PATRICE DIONNE
__________
Appeal No. 2002-1198
Application 09/349,306
___________
ON BRIEF
___________
Before FRANKFORT, STAAB, and BAHR, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 and 4, which are all of the claims
remaining in this application.
As set forth on page 1 of the specification, appellant’s
invention relates to the game of golf and, more particularly, to
a method of chipping around the green. That method involves
selecting a golf club having an elongate shaft, having a club
head that is disposed at a substantially one hundred degree angle
Appeal No. 2002-1198
Application 09/349,306
2
relative to the elongate shaft, and having a lofted club face;
maintaining the golf club in a substantially vertical plane by
first and second hands of a golfer standing in an erect posture
and facing a target hole; with a golf ball positioned near a
preselected foot of the golfer on an exterior side thereof; and
executing a chip shot by swinging the club head with a motion and
with a force substantially equal to a motion and force used to
perform an underhand toss of a golf ball toward the target golf
hole. In the paragraph bridging pages 4 and 5 of the
specification, appellant defines what is meant by a golfer
“standing erect” or being in an erect posture, i.e, that “said
golfer does not bend over at the waist, nor does said golfer bend
his or her knees;” in addition, “the golfer’s head is not bent
downwardly to look at the ball and . . . the golfer does not lean
to either side.” Independent claim 1 is representative of the
subject matter on appeal and a copy of that claim may be found in
the Appendix to appellant’s brief.
The prior art references relied upon by the examiner in
rejecting the appealed claims are:
White 5,830,082 Nov. 3, 1998
Shiraishi 5,890,971 Apr. 6, 1999
Williams 5,976,025 Nov. 2, 1999
Gidney 6,039,657 Mar. 21, 2000
(filed Jan. 15, 1998)
Appeal No. 2002-1198
Application 09/349,306
1 As noted on page 3 of the examiner’s answer, the rejection
based on the Hedges patent (US 6,068,562) made in Paper No. 9 has
been withdrawn by the examiner.
3
Claim 1 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Williams in view of White and Gidney.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Williams in view of White and Gidney as applied
to claim 1 above, and further in view of Shiraishi.1
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and appellant
regarding those rejections, we make reference to the final
rejection (Paper No. 11, mailed June 20, 2001) and examiner's
answer (Paper No. 14, mailed October 10, 2001) for the reasoning
in support of the rejections, and to appellant’s brief (Paper No.
13, filed July 30, 2001) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellant and the examiner. As a consequence of
our review, we have made the determinations which follow.
Appeal No. 2002-1198
Application 09/349,306
4
Looking first at the examiner’s rejection of claim 1 under
35 U.S.C. § 103(a) based on the combined teachings of Williams,
White and Gidney, we note that Williams discloses a golf putter
having an elongate shaft (16) and a putter head (4) that is
equipped with three ball-striking surfaces (13, 34 and 36). As
noted in column 1, lines 37-57, the Williams putter can be used
by either right-handed or left-handed golfers, employing either a
stance facing the target or a stance facing perpendicular to the
ball roll path, thereby allowing a golfer to experiment with
different stances and, with the benefit of such experimentation,
permitting the golfer to adopt the stance and stroke that is most
comfortable and productive. Figures 7, 8, 10 and 11 show golfers
using the putter of Williams in a non-conventional stance facing
the target golf hole, while Figures 13 and 14 show golfers using
the putter in conventional stances facing perpendicular to the
ball roll path.
The examiner’s position that Williams “clearly teaches that
the golfer can choose an appropriate posture, including a fully
erect stance” (answer, pages 7-8), and that Williams (Figs. 8 and
10) “disclose that the golfer stands in ‘erect’ posture” (final
rejection, page 5), is unsupported by the teachings of that
reference. Nothing in the Williams patent teaches or suggests a
Appeal No. 2002-1198
Application 09/349,306
5
“fully erect posture” as required in appellant’s claims 1 and 4
on appeal. Contrary to the examiner’s assertions, Figures 8 and
10 of Williams do not show the golfer in an “erect” posture.
Webster’s New World Dictionary, Second College Edition, Prentice
Hall Press, 1986, defines “erect” as meaning “1. Not bending or
leaning; straight up; upright; vertical.” This definition is
consistent with that provided by appellant in the paragraph
bridging pages 4 and 5 of the specification of the present
application, wherein appellant notes that the golfer of Figure 1
is “standing erect,” i.e., the golfer does not bend over at the
waist, does not bend his or her knees, and, in addition, that the
golfer’s head is not bent downwardly to look at the ball and the
golfer does not lean to either side. Thus, with this
understanding, it is clear that Williams does not teach, suggest
or show a golfer in a “fully erect posture.” Moreover, as
conceded by the examiner (final rejection, page 3), Williams
fails to teach or suggest anything regarding a “chip shot,” which
golf shot is the central focus of appellant’s method claims on
appeal.
Independent claim 1 on appeal further requires the step of
performing said steps [i.e., those set forth in the
claim for making a chip shot] with a golf club head disposed
at a substantially one hundred degree angle relative to said
Appeal No. 2002-1198
Application 09/349,306
6
elongate shaft so that a sole of said club head is
substantially parallel to the ground at the moment of impact
of the club head against the ball and so that said shaft is
positioned at an angle of about ten degrees relative to an
imaginary line that is perpendicular to a putting surface.

The examiner’s determination (final rejection, page 3; answer,
page 4) that Williams discloses a golf club having the required
structure and performing the required steps, is without merit.
The golf putter of Williams is not configured as required in
appellant’s claim 1 on appeal when the toe ball-striking surface
(13) therein is used by the golfer standing in a position facing
the target golf hole as seen in either Figures 7 and 8, or
Figures 10 and 11 of Williams. As is apparent from Figures 9 and
12, the shaft (16) of the club in Williams is not oriented “so
that said shaft is positioned at an angle of about ten degrees
relative to an imaginary line that is perpendicular to a putting
surface,” as set forth in claim 1 on appeal. Figures 8 and 9, or
Figures 11 and 12 of Williams clearly show the shaft (16) of the
club positioned at 90° to the putting surface, i.e., aligned with
an imaginary line that is perpendicular to the putting surface.
Regarding White, we observe that this patent discloses a
golf chipper club having an elongate shaft (18) with two gripping
portions (16, 17) and a lofted head having a loft angle of
between about 25 degrees and 45 degrees. As is readily apparent
Appeal No. 2002-1198
Application 09/349,306
7
from viewing Figures 1 and 2 of White, this patent teaches that
the golfer is in a conventional stance facing perpendicular to
the ball roll path when executing a chip shot and in a posture
with head and shoulders bent downwardly toward the ball, not
“standing in a fully erect posture and facing a target golf
hole,” as required in claim 1 on appeal.
As for Gidney, this patent addresses a golf putter (Fig. 5b)
that may have an elongate shaft (570) and two gripping areas
(550, 560), wherein the club is used by a golfer standing in an
erect posture during putting and in a stance facing the target
golf hole. The ball striking face (118) of the club head may be
provided with a loft of between 0 and 10 degrees (col. 4, lines
56-57). However, as urged by appellant (brief, pages 5-6), it
does not appear that the club of Gidney (Fig. 5b) is configured
as required in claim 1 on appeal, i.e., “with a golf club head
disposed at a substantially one hundred degree angle relative to
said elongate shaft . . . so that said shaft is positioned at an
angle of about ten degrees relative to an imaginary line that is
perpendicular to a putting surface.”
The examiner has asserted that it would have been obvious to
one having ordinary skill in the art at the time the invention
was made “to have utilized the teachings as taught by White and
Appeal No. 2002-1198
Application 09/349,306
8
Gidney in the Williams method of making a shot to improve a
golfer’s performance and the training of a golfer for making a
chip shot” (final rejection, page 4). Like appellant, we see no
basis in the applied references for any such modification of “the
Williams method” and consider that the examiner has engaged in a
hindsight reconstruction of appellant’s claimed method by
impermissibly utilizing appellant’s own disclosure and claims as
a target to be hit by invention-guided manipulation of the
disparate references (brief, pages 5 and 7). In that regard, we
note, as our court of review indicated in In re Fritch, 972 F.2d
1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992), that it is
impermissible to use the claimed invention as an instruction
manual or "template" in attempting to piece together isolated
disclosures and teachings of the prior art so that the claimed
invention is rendered obvious.
In light of the foregoing, it is our determination that the
examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) as being
unpatentable over Williams in view of White and Gidney will not
be sustained.
Turning now to the examiner’s rejection of claim 4 under
35 U.S.C. § 103(a) as being unpatentable over Williams, White,
Gidney and Shiraishi, we have reviewed the Shiraishi patent but
Appeal No. 2002-1198
Application 09/349,306
9
find nothing therein which would provide for, or otherwise render
obvious, that which we have found above to be lacking in the
examiner’s asserted combination of Williams, White and Gidney.
Thus, the examiner’s rejection of dependent claim 4 under
35 U.S.C. § 103(a) as being unpatentable over Williams, White,
Gidney and Shiraishi will also not be sustained.
It follows from the foregoing that the decision of the
examiner rejecting claims 1 and 4 of the present application
under 35 U.S.C. § 103(a) is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JENNIFER D. BAHR )
Administrative Patent Judge )
CEF:pgg
Appeal No. 2002-1198
Application 09/349,306
10
Smith & Hopen PA
15950 Bay Vista Drive
Suite 220
Clearwater, FL 33760