Ex Parte Ferris

Board of Patent Appeals and Interferences

Jul 22, 2008

11289564 (B.P.A.I. Jul. 22, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD D. FERRIS
____________

Appeal 2008-2908
Application 11/289,564
Technology Center 3700
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Decided: July 22, 2008
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Before DONALD E. ADAMS, ERIC GRIMES, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 1-3 and 5-7, the
only claims pending in this application. We have jurisdiction under 35
U.S.C. § 6(b).

Appeal 2008-2908
Application 11/289,564

INTRODUCTION
The claims are directed to a golf club grip. Claim 1 is illustrative:
1. A golf club grip for attachment to a golf club shaft wherein the
improvement comprises:
a lower section of said grip having a first diameter and a length of
approximately 4 to 6 inches, and an upper section of said grip having a
second diameter smaller than said first diameter and a length of
approximately 4 to 6 inches;
said lower section and said upper section each providing sufficient
gripping space to accommodate the upper and lower hands of a golfer; and
transitional section which tapers between and connects said lower and
upper sections.

The Examiner relies on the following prior art references to show
unpatentability:
Dagenais US 6,817,956 B1 Nov. 16, 2004
Shioda US 2005/0107181 A1 May 19, 2005

The rejection as presented by the Examiner is as follows:
1. Claims 1-3 and 5-7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Dagenais and Shioda.
We affirm.
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FINDINGS OF FACT
1. Dagenais teaches a golf club grip comprising an upper and lower grip,
wherein “the outer diameter of the upper grip portion is significantly less
than the outer diameter of the lower grip portion” (Dagenais Abstract).
2. Dagenais teaches that the upper grip has a “length from about 5 inches to
about 13 inches, and more preferably is the length of a conventional grip
(i.e., about 6 inches)” (Dagenais 2: 12-16).
3. Dagenais teaches that the lower grip “is approximately the same shaft
length as the upper grip portion . . . [or] if desired, the length of the lower
grip portion . . . can be extended significantly, i.e., to as much as two or
more times the length of the upper grip portion” (Dagenais 2: 33-38).
4. Dagenais teaches that the upper and lower grip portions can be separated
by a gap or can be “formed in a unitary manner” (Dagenais 1: 67 - 2: 6).
5. Dagenais teaches that “the upper grip portion . . . may be completely or
partially tapered” (Dagenais 2: 19-20). In this regard, Dagenais teaches that
“if no taper is employed with the upper grip portion . . . the outer diameter of
the upper grip portion . . . will preferably be within the range of about ¾-
inch to about 1 inch” (Dagenais 2: 25-28). Dagenais also teaches that “[i]f
desired, the lower grip portion . . . may also be tapered” (Dagenais 3: 16).
When tapered, the taper for the upper portion is “in the direction of a club
head” (Dagenais 2: 23) and the taper for the lower portion is “in the
direction moving away from the upper grip portion” (Dagenais 3: 18-19).
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6. Dagenais’ figure 4 is reproduced below:

“FIG. 4 generally depicts a preferred embodiment of a club grip 10 as a
cross sectional view taken vertically along the length of the shaft 20. As
illustrated in the figure, the upper grip portion 16 can be fairly conventional
and enclose the upper end of the shaft 20” (Dagenais 3: 27-31).
7. Shioda’s figures 9 and 17 are reproduced below:

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“FIG. 9 shows a putter shaft . . . illustrating another embodiment of a grip of
[Shioda’s] invention surrounding the putter shaft” (Shioda 2: ¶ 0022). “FIG
17 shows a putter shaft . . . illustrating another embodiment of a method a
[sic] gripping a putter shaft” (Shioda 2: ¶ 0027). “In FIG. 9, the
conventional portion 389a of the second part 389 is located intermediate the
first part 387 of the grip 385” (Shioda 3: ¶ 0054).

DISCUSSION
Claims 1-3 and 5-7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Dagenais and Shioda. Appellant
provides separate arguments for claims 2, 3, and 5. Accordingly, we limit
our discussion to claims 1, 2, 3, and 5. 37 C.F.R. § 41.37(c)(1)(vii). Claims
6 and 7 will stand or fall together with claim 1.

Claim 1:
Claim 1 is drawn to an improved golf club grip. The claimed grip is
for attachment to a golf club shaft. The claimed improvement comprises:
A grip wherein,
1. a lower section has a first diameter and a length of approximately 4
to 6 inches,
2. an upper section has a second diameter smaller than the first
diameter and a length of approximately 4 to 6 inches, and
3. a transitional section that tapers between and connects the lower
and upper sections.
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Claim 1 requires that the lower section and the upper section each
provide sufficient gripping space to accommodate the upper and lower hands
of a golfer.
Based on the combination of Dagenais and Shioda the Examiner
concludes that:
[I]t would have been obvious to modify the grip of Dagenais to
have a tapered transitional section connecting the lower and
upper section in order to make the transitional section
comfortable to a players [sic] hand by not having a stepped
transition when the player holds the grip at the transitional
section when carrying the club and in order to not have a stress
concentration point at the corner of a step change.

(Ans. 4.)
Appellant disagrees. According to Appellant, “Degenais [sic] does
not disclose a transitional section which tapers between and connects the
upper and lower sections of a grip” (App. Br. 6). Appellant asserts that
Shioda fails to make up for this deficiency (App. Br. 7). According to
Appellant, “[w]hile it is agreed that Shioda does show a grip as described in
the Office Action as having ‘different outer sized parts’, the subject straight
intermediate section, being non-tapered, does not ‘transition’” (id.). Further,
Appellant asserts that “there is nothing in Shioda or Dagenais which would
teach or motivate one of ordinary skill in the art to modify Dagenais to
include a tapered transitional section between its upper and lower grip”
(id. at 8).
In response, the Examiner finds that Dagenais teaches “how the lower
grip section transitions into the upper grip section” by teaching that a gap
may, or may not be present, between the grip sections and when there is no
gap between the grip sections the grip sections can be formed in a unitary
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manner (Ans. 7). We agree (FF 4). In addition, the Examiner finds that
Shioda’s
Figure 9 clearly shows a tapered section between the larger
thickness of protruding portion 389b and the thinner thickness
of conventional part 389a. The very end of protruding portion
389a tapers before meeting conventional part 389a. Because
389 is called a grip 389a and 389b also must be called a grip as
well.

(Ans. 7.) In sum, the Examiner finds that “there is [a] tapered transition
section between the largest thickness of portion 389b and portion 389a”
(Ans. 9). We find no error in the Examiner’s reasoning.
Dagenais teaches a golf club grip having an upper and lower portion
wherein there is no gap between the two portions (FF 4). In addition,
Dagenais teaches that both the upper and lower portions of the grip may be
tapered (FF 5). Shioda teaches a golf club grip having an upper and lower
portion wherein the upper portion tapers down to a smaller diameter and the
top of the lower portion is tapered up to a larger diameter (FF 7, particularly
FIG. 9). Accordingly, we find no error in the Examiner’s conclusion that it
would have been prima facie obvious to a person of ordinary skill in the art
to modify Dagenais’ golf club grip with the teachings of Shioda with
expected result of having a taper between the two portions to the grip. It is
proper to “take account of 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). See also id. at 1742 (“A person of ordinary
skill is also a person of ordinary creativity, not an automaton.”).
“[W]hen a patent claims a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
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field, the combination must do more than yield a predictable result.” KSR,
127 S. Ct. at 1740.
Accordingly, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Dagenais and Shioda.
Claims 6 and 7 fall together with claim 1.

Claim 2:
Claim 2 depends from and further limits the golf club grip of claim 1
to require that the first and second diameters are constant along the entire
length of each section.
Appellant asserts that the combination of references relied upon fails
to teach a grip wherein the first and second diameters are constant (App. Br.
7). We disagree.
Dagenais teaches an upper and lower grip that may or may not be
tapered (FF 4 and 5). When the grips are not tapered the diameter of each
section will be constant along the entire length of each section (FF 5). We
note, however, that this does not preclude a transitional section in the region
between the two grips (e.g., the region of Dagenais’ gap (FF 3)) wherein the
grip is tapered from one section to the other as taught by the combination of
references relied upon and discussed above.
Accordingly, we affirm the rejection of claim 2 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Dagenais and Shioda.

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Claim 3:
Claim 3 depends from and further limits the golf club grip of claim 1
to require that the grip includes a cap on an upper end of the upper section
and a shaft opening at a lower end of the lower section.
Appellant asserts that the grip taught by the combination of references
fails to “include a cap as called for in claim 3” (App. Br. 7). The Examiner
finds that Dagenais teaches “a cap on an upper end of an upper section in the
form of a[n] end of the upper section covering the upper end of the shaft
(Fig. 4)” (Ans. 4). We agree (FF 6).
Accordingly, we affirm the rejection of claim 3 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Dagenais and Shioda.

Claim 5:
Claim 5 depends from and further limits the golf club grip of claim 1
to require that each of the upper and lower sections extend approximately
half the length of the grip.
Appellant asserts that the combination of references relied upon fails
to teach a grip “formed of upper and lower sections which extend
approximately half the length of the grip as called for in claim 5” (App. Br.
7). We disagree.
Dagenais teaches that the upper grip has a “length from about 5 inches
to about 13 inches, and more preferably is the length of a conventional grip
(i.e., about 6 inches)” (FF 2). Dagenais teaches that the lower grip “is
approximately the same shaft length as the upper grip portion” (FF 3).
Accordingly, when the upper grip has a length, i.e., 6 inches, and the lower
grip has a length that is the same size as the upper grip, then each of the
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upper and lower sections of Dagenais’ grip will extend approximately half
the length of the grip.
Accordingly, we affirm the rejection of claim 5 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Dagenais and Shioda.

CONCLUSION
In summary, we affirm the rejection of record.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a).

AFFIRMED

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