Ex Parte Fagot

Board of Patent Appeals and Interferences

Dec 29, 2008

10072429 (B.P.A.I. Dec. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JACQUES FAGOT
____________

Appeal 2007-2403
Application 10/072,429
Technology Center 3700
____________

Decided: December 29, 2008
____________

Before WILLIAM F. PATE III, MURRIEL E. CRAWFORD, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

WILLIAM F. PATE III, Administrative Patent Judge.

ON REQUEST FOR RECONSIDERATION

In our decision of April 25, 2008 we entered a new rejection of
claim 11 on the ground of indefiniteness under §112, second paragraph.
Appellant’s arguments in the Request convince us that we overlooked
the fact that Appellant had narrowly defined the expression “the volume
of all the recesses” to mean -the total volume of the recesses-. In view of
this definition in the Specification, we withdraw the rejection of claim
Appeal 2007-2403
Application 10/072,429

2
11 under §112, second paragraph, made pursuant to our authority under
37 C.F.R. § 41.50(b).
On page 3 of the request, Appellant asks for rehearing of our
decision that the subject matter of claims 1, 7, 8, 12, 15, and 16 were
obvious over various combinations of Peters in view of Besnard, JP7-
213656 and Fenton. Appellant’s argument misconstrues the jurisprudence
with respect to obviousness. As we noted in our decision, Peters provides
recognition in the art that the center of gravity of the club head should
vary upwardly from one iron to another in a set. (Decision 3:25-4:2).
Peters provides the teaching having to do with sets. Besnard teaches how
to vary the center of gravity by removing mass, i.e., providing a recess in
the upper portion of the peripheral edge or upper wall. (Decision 4:10,
11). While we acknowledge that no single reference, taken alone,
discloses all of “a set of golf club irons, each iron of said set having a
head … wherein a volume of said at least one recess inside said upper
wall varies from one iron to another within said set” (a single reference
containing this disclosure would make out an anticipation) we do insist
that each and every element in the claimed subject matter is disclosed in
the prior art. As we cogently summed up in our decision, “Peters
discloses what to do, i.e., move the center of gravity upwardly as the iron
number increases. Besnard discloses how to do it, by removing material
or providing recesses in the upper wall that surrounds the cavity on the
back of the iron.” (Decision 6:27-7:4).
Appeal 2007-2403
Application 10/072,429

3
To argue that these claim elements are nowhere disclosed in the prior art
is simply erroneous. And contrary to Appellant’s argument on page 4,
there is no difference between Appellant’s claimed subject matter and the
applied prior art taken collectively. We cautioned Appellant in our
decision from an individual attack on the references when the rejection is
based on a combination of references. (Decision 7:7-8). Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references. In
re Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d
413, 425 (CCPA 1981).
Thus, we reject Appellant’s argument on the bottom of page 4 that
is premised on Appellant’s erroneous claim that the prior art is lacking
elements of Appellant’s claimed subject matter. We emphatically state
that this is not the case.
We acknowledge the case law provided by Appellant on page 5 of
the decision. We further acknowledge that the obviousness analysis
requires consideration of the claims as a whole. This is exactly the
analysis the claims were given in this instance. All claim limitations
were considered, and Appellant utterly fails to point out a specific
element or limitation not found in the prior art. Once again, on page 6,
Appellant makes the claim that there is no suggestion for varying the
volume of a recess in an upper wall from one club to another within the
set. Here again, we reiterate that Peters when considered with Besnard
provides just such a teaching.
Appeal 2007-2403
Application 10/072,429

4
Appellant argues about the specific disclosure of Besnard on page 7.
Appellant makes the claim that Besnard does not disclose increasing mass in
the upper wall. Besnard states: “The gain in mass due to the provision of the
variable volume elongated recess 3….” This portion of the Besnard
disclosure clearly contemplates increasing and decreasing the mass in the
upper wall to raise and lower the center of gravity of the face of the club
head.
Besnard further teaches varying the number of recesses. Figures 3-7
show a single recess. Claim 16 teaches 2 or more recesses. Figures 9 and 10
teach 3 recesses. Figures 11 and 12 and the parts of Besnard pertaining
thereto teach varying the depth or profile of the recesses and presumably the
volume thereof. Since the number of recesses is variable and the depth or
profile of the individual recesses is variable, we concluded that Besnard
would have suggested changing the number of recesses, changing the depth
or profile of the recesses or doing both concurrently. This is merely taking
into account the inferences and creative steps that a person of ordinary skill
in the art would employ. See KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1741 (2007). By our count this makes three techniques taught by Besnard for
adjusting the center of gravity of the club head. Three techniques certainly
qualify as a finite number, and we are of the view that under the holding of
KSR, one of ordinary skill would find it obvious to try these three
predictable variations.1 Indeed, varying the size and number of recesses

1 Notwithstanding that Besnard discloses changing the center of gravity of a
club by providing a recess in the upper peripheral wall, the technique of
varying the amount of material in a region of a part for the purpose of
lightening the part, changing the balance of the part, redistributing mass in
Appeal 2007-2403
Application 10/072,429

5
given the explicit disclosure of Besnard is not seen as uniquely challenging
or difficult for one or ordinary skill. See Leapfrog Ent., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007). While we note that Appellant
argues that ways to redistribute club head material are legion, they are not
legion within the context of the teachings and suggestion of Besnard where
varying the number and depth or profile of the recesses is specifically taught.
With respect to claim 11, since Appellant has convinced us that the
claim is not indefinite within the purview of §112, we affirm the rejection of
the claim under § 103 as obvious over Peters in view of Besnard. Here
again, Peters teaches varying the centers of gravity of a set of irons and
Besnard discloses a technique for varying the center of gravity in a cavity
iron. As discussed above, changing the volume of the recesses is obvious
from the disclosure of Besnard.
Conclusion
Appellant’s arguments have convinced us that the rejection of claim
11 under §112, second paragraph, should be withdraw. We hereby withdraw
this rejection. As to the reconsideration requested for the obviousness

the part, changing the center of gravity of the part, or varying one of the
various moments of inertia of the part is a technique well known and long
practiced in the mechanical arts. Such removal is clearly within the ordinary
skill in the art and yields entirely predictable results. See, for example,
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1369 (Fed. Cir. 2006) (Indeed, we have repeatedly held that an
implicit motivation to combine exists not only when a suggestion may be
gleaned from the prior art as a whole, but when the "improvement" is
technology-independent and the combination of references results in a
product or process that is more desirable, for example because it is stronger,
cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.).
Appeal 2007-2403
Application 10/072,429

6
rejections, we have granted this request to the extent that we have
reconsidered our previous affirmance of the rejections, but we deny the
request with respect to making any changes thereto. Additionally, the
obviousness rejection of claim 11 is affirmed.

This is a final agency decision for purposes of judicial review.

RECONSIDERATION-GRANTED-IN-PART

PL: vsh

RODGER W PARKHURST
STEPTOE & JOHNSON LLP
1330 CONNECTICUT AVENUE N.W.
WASHINGTON DC 20036