Ex Parte Endres

Board of Patent Appeals and Interferences

Aug 30, 2011

10857093 (B.P.A.I. Aug. 30, 2011)

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.
10/857,093 05/28/2004 William Endres 1361048-2001 2306
20999 7590 08/30/2011
FROMMER LAWRENCE & HAUG
745 FIFTH AVENUE- 10TH FL.
NEW YORK, NY 10151
EXAMINER
LEGESSE, NINI F
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
08/30/2011 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 WILLIAM G. ENDRES
____________________

Appeal 2010-002270
Application 10/857,093
Technology Center 3700
____________________

Before STEFAN STAICOVICI, FRED A. SILVERBERG, and
EDWARD A. BROWN, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-002270
Application 10/857,093

2
William G. Endres (Appellant) appeals under 35 U.S.C. § 134(a) from
the rejection of claims 1-13. (App. Br. 2.) We have jurisdiction under 35
U.S.C. § 6(b). We AFFIRM-IN-PART.
The claimed invention is directed to an enhanced golf club for golf-
swing training; a golf-swing training device; and a method for golf-swing
training. Independent claim 1, reproduced below with emphasis added, is
representative of the appealed subject matter:
1. An enhanced golf club, for use by a golfer,
for golf-swing training, comprising:
a golf club including a head coupled to a
shaft; and
a training device that attaches to the golf
club and that signals the beginning of deceleration
of the club head following acceleration during the
forward motion of a golf swing.

Independent claim 5 is directed to a golf-swing training device and
recites "a unidirectional motion switch" and "a signaling source, connected
by the unidirectional motion switch, for signaling to the golfer the beginning
of deceleration of the club head following acceleration during the forward
motion of a golf swing." Independent claim 13 is directed to a method for
golf-swing training and recites "providing a golf-swing training device that
… signals the beginning of deceleration of the club head following
acceleration during the forward motion of a golf club swing."

Appeal 2010-002270
Application 10/857,093

3
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1-5, 7-9, and 11-13 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Conley (US 5,082,283; issued Jan. 21, 1992).
2. Claims 6 and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Conley.

ISSUES
The following issues have been raised in this appeal:
1. Whether the Examiner erred in finding that Conley discloses "a
training device that … signals the beginning of deceleration of the club head
following acceleration during the forward motion of a golf swing," as recited
in claim 1.
2. Whether the Examiner erred in finding that Conley discloses a
unidirectional motion switch as recited in claim 5.

ANALYSIS
Rejection of claims 1-5, 7-9, and 11-13 as anticipated by Conley
Claim 1 recites "a training device that attaches to the golf club and
that signals the beginning of deceleration of the club head following
acceleration during the forward motion of a golf swing." The Examiner
found Conley discloses a golf club including a training device that meets all
of the structural limitations of claim 1. (Ans. 3, 5.)
Appellant does not challenge the Examiner's finding that Conley
meets all of the structural limitations of claim 1, but contends that Conley's
Appeal 2010-002270
Application 10/857,093

4
device cannot meet functional limitations of the claim. Particularly,
Appellant contends that Conley discloses a signaling mechanism that signals
when a user makes a high-acceleration, jerky movement with a golf club that
exceeds a predetermined (positive or negative) acceleration-threshold value,
and is disabled when the velocity of the golf club approaches a proper golf-
ball-striking velocity. (App. Br. 4-5; Reply Br. 5.) Appellant contends that
for the user to be signaled by Conley's signaling mechanism, "the high-
acceleration, jerky movement needs to occur during a backswing, or at the
beginning or ending of a forward gold swing, when the golf-swing velocity
is not high enough to approach proper golf-ball-striking speed." (App. Br.
4-5; Reply Br. 7.) Further, Appellant contends that during a typical golf
swing, the centrifugal force is strongest when the swing is at a maximum
velocity, near the midpoint of the swing, and "during a typical golf swing,
Conley's device cannot signal to a user near the midpoint of a golf swing."
(App. Br. 5; Reply Br. 7) Appellant contends the claimed device "signals a
different event to a user during a different portion of a golf swing. Conley's
device signals high-acceleration movements, whereas the claimed device
signals when acceleration is near zero." (App. Br. 6.) Appellant further
contends "the bending element utilized by Conley's device cannot be used to
signal the beginning of deceleration following [acceleration]." (Reply Br.
6.) We do not find Appellant's contentions persuasive.
Conley's swing training device includes an axial sensor shaft 2; a
contact block 1 adjacent one end of the axial sensor shaft 2; and a lateral
sensor shaft 15 connected to an opposite end of the axial sensor shaft 2 by a
spring 5 and having a mass 6 on a free end thereof. (Conley, col. 3, ll. 14-
Appeal 2010-002270
Application 10/857,093

5
38; Figs. 1 and 2.) The lateral sensor shaft 15 is suspended between contact
blocks 7 and 8 which are electrically connected to a sound generator 23
(signaling device). (Conley, col. 3, ll. 51-54; Figs. 1 and 2.) Conley
discloses that the signaling device can be triggered to alert the golfer that a
swing error has been detected at various phases of the golf swing. (Conley,
col. 4, ll. 47-59.) During the takeaway or backswing phase, if the motion of
the swing is too sudden or jerky, the lateral force sensor will be activated by
the mass 6 shifting and causing the lateral sensor shaft 15 to contact the
contact block 7 or 8. (Conley, col. 4, l. 59 – col. 5, l. 46.) As the golf club
moves forward through the downswing phase, centrifugal force increases to
the point at which the axial sensor shaft 2 separates from the contact block 1,
disabling the circuit. (Conley, col. 5, ll. 52-58.) If the downswing does not
reach a sufficient speed to deactivate the axial force sensor, the golfer's wrist
rotation will cause the lateral sensor shaft 15 to contact the contact block 7
or 8, activating the sound generator 23. (Conley, col. 5, ll. 58-65.) As the
golf club moves forward through the follow through phase, centrifugal force
decreases, causing the axial sensor shaft 2 to reconnect with the contact
block 1. (Conley, col. 5, l. 66 – col. 6, l. 1.) If deceleration of the golf club
is not smooth during the follow through, the lateral sensor shaft 15 will
contact the contact block 7 or 8, activating the sound generator 23. (Conley,
col. 6, ll. 1-15.)
A patent applicant is free to recite features of an apparatus either
structurally or functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA
1971) ("[T]here is nothing intrinsically wrong with [defining something by
what it does rather than what it is] in drafting patent claims."). "Yet,
Appeal 2010-002270
Application 10/857,093

6
choosing to define an element functionally, i.e., by what it does, carries with
it a risk." In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (citation
omitted.) As stated in Swinehart, 439 F.2d at 213:
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
As discussed supra, Appellant acknowledges that Conley's device can
signal during a forward golf swing. However, Appellant appears to contend
the recitation "the beginning of deceleration of the club head following
acceleration during the forward motion of a golf swing" means the training
device signals "near the midpoint" of the forward motion of a "typical golf
swing" at which the golf club velocity is at a maximum. Claim 1 does not
recite that the beginning of deceleration of the club head occurs at a
particular point in a typical golf swing, but only that it "[follows]
acceleration during the forward motion of a golf swing." We decline to
import limitations of any particular embodiment into the claim. See
Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004) (" [A] particular embodiment appearing in the written description may
not be read into a claim when the claim language is broader than the
embodiment."). For Conley's device, during the forward motion of a golf
swing, while the golf club is accelerating, the axial sensor shaft 2 will
separate from the contact block 1 when the golf club velocity becomes
sufficiently high. Once this separation occurs, if a high-deceleration
movement then occurs in the swing, that is, a sudden decrease in the golf
Appeal 2010-002270
Application 10/857,093

7
club's velocity, the axial sensor shaft 2 will reconnect with the contact block
1, and the lateral sensor shaft 15 will contact the contact block 7 or 8,
thereby activating the signaling device. As such, Conley's device is capable
of "[signaling] the beginning of deceleration of the club head following
acceleration during the forward motion of a golf swing."
Where the Patent Office has reason to believe that a claimed
functional limitation is an inherent characteristic of the prior art, the burden
shifts to Appellant to show that the prior art does not possess that
characteristic. See In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977)
(quoting In re Swinehart, 439 F.2d at 212-13). The Examiner articulated a
reasonable basis for finding that the recited functional limitations for the
training device are an inherent characteristic of Conley's device. In
response, Appellant has not presented any persuasive argument or objective
evidence to show that Conley's device does not possess the claimed
functional characteristics with respect to signaling. Hence, we sustain the
Examiner's anticipation rejection of claim 1, as well as claims 2-4, which
depend from claim 1, and which are not separately argued.
As to independent claim 5, the Examiner found Conley discloses a
"unidirectional motion switch 22." (Ans. 3.) Conley discloses
[t]he master power switch 22 is preferably mounted in
the area of the club grip 12 for easy reach during normal
use of the club. The master power switch 22 could be a
momentary contact switch, activated only when the user's
hands are correct position on the club grip 12, or a toggle
type switch that stays in either the "on", or "off" position.
(Conley, col. 4, ll. 40-46.) The Examiner's finding that Conley discloses a
unidirectional motion switch is not supported by a preponderance of the
Appeal 2010-002270
Application 10/857,093

8
evidence. (Reply Br. 6.) Firstly, Conley does not describe the master power
switch 22 as a "motion switch," but rather that it is activated by the user's
hands. In addition, we agree with Appellant that Conley's lateral sensor
shaft 15 and contact blocks 7, 8 comprise a bidirectional switch, not a
unidirectional switch. Accordingly, we do not sustain the Examiner's
anticipation rejection of claim 5, as well as claims 7-9, 11, and 12, which
depend from claim 5.
Appellant acknowledges that independent claim 13 recites similar
limitations as those recited in claim 1, but does not argue specific limitations
of claim 13 separately. (App. Br. 7-8; Reply Br. 9.) As discussed supra, we
find no deficiency in the Examiner's anticipation rejection of claim 1. Thus,
we also sustain the anticipation rejection of claim 13.

Rejection of claims 6 and 10 as being unpatentable over Conley
Claims 6 and 10 depend from claim 5. The Examiner concluded that
the subject matter recited in claims 6 and 10 would have been obvious in
view of Conley. (Ans. 4.) However, the Examiner's obviousness rejection
of claims 6 and 10 fails to remedy the deficiencies of the Examiner's reliance
on Conley with respect to claim 5 discussed supra. Thus, we do not sustain
the obviousness rejection of claims 6 and 10.

CONCLUSION
1. The Examiner did not err in finding that Conley discloses "a
training device that … signals the beginning of deceleration of the club head
Appeal 2010-002270
Application 10/857,093

9
following acceleration during the forward motion of a golf swing," as recited
in claim 1.
2. The Examiner erred in finding that Conley discloses a
unidirectional motion switch as recited in claim 5.

DECISION
1. A. The rejection of claims 1-4 and 13 as anticipated by Conley
is AFFIRMED.
B. The rejection of claims 5, 7-9, 11, and 12 as anticipated by
Conley is REVERSED.
2. The rejection of claims 6 and 10 as being unpatentable over
Conley is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN PART

mls