Ex Parte Ferris

Board of Patent Appeals and Interferences

Aug 10, 2011

10895098 (B.P.A.I. Aug. 10, 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.
10/895,098 07/21/2004 Richard D. Ferris FERR-005 5778
21884 7590 08/11/2011
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
EXAMINER
BLAU, STEPHEN LUTHER
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
08/11/2011 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 RICHARD D. FERRIS
__________

Appeal 2010-003835
Application 10/895,098
Technology Center 3700
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
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STATEMENT OF THE CASE
The claims on appeal read as follows:
1. A golf club including a club head having a ball striking face lying in a
first plane and a shaft having an upper end and a lower end connected to the
club head, wherein the improvement comprises:

an elongated handle having an upper edge and a lower edge associated
with said shaft; and said upper edge of said handle including alignment
indicia thereon, defined by a first alignment line in the direction
perpendicular to the first plane of said ball striking face indicating the
direction of a target and a second alignment line on said upper edge of said
handle, said second alignment line being perpendicular to said first
alignment line, parallel to said first plane of said ball striking face indicating
the direction of the plane of the ball striking face; and wherein said first
alignment line and said second alignment line intersect to form four angles.

2. The golf club of claim 1 wherein said upper edge of said handle is
further defined by a flat upper surface.

3. The golf club of claim 1 wherein said handle extends at least half of the
overall length of the golf club from said club head to said upper end of said
shaft.

4. The golf club of claim 1 wherein the first alignment line is longer than
the second alignment line.

5. The golf club head of claim 1 wherein the first alignment line and second
alignment line intersect to form a cross.

6. A putter type golf club head including a club head having a ball striking
face lying in a first plane and a shaft having an upper end and a lower end
connected to the club head, wherein the improvement comprises:
an elongated handle having an upper edge and a lower edge, said
handle being attached to said shaft and having a generally oval, cross-
sectional shape which is constant along the entire handle between said upper
edge and said lower edge;
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said generally oval, cross-sectional shape of said elongated handle
including a first rounded front edge and a second rounded rearward edge
which are parallel to one another along their entire length; and
said shaft lying in a plane parallel to said front edge and located closer
to said front edge than said rearward edge.

7. A putter type golf club head according to claim 6, wherein said handle
being further defined by said first rounded forward edge having a first radius
and a second rounded rearward edge having a second smaller radius.

8. A putter type golf club according to claim 6 wherein said upper edge
of said handle includes alignment indicia thereon, defined by at least a first
alignment line in a direction perpendicular to the first plane of said ball
striking face and a second alignment line on said upper edge of said handle,
said second alignment line being perpendicular to said first alignment
line, parallel to said first plane of said ball striking face; and wherein said
first alignment line and said second alignment line intersect to form four
angles.

Cited References

The Examiner relies on the following prior art references:

Ferris US 6,723,001 B2 Apr. 20, 2004
Radakovich US 5,152,533 Oct. 6, 1992
Eberle US 5,779,559 Jul. 14, 1998
Dishner, Jr. US 4,426,083 Jan. 17, 1984
Bloom, Jr. US 6,506,128 B1 Jan. 14, 2003
Cacicedo US 6,511,386 B1 Jan. 28, 2003
Takeuchi US 5,058,891 Oct. 22,1991
Engfer et al. US 5,749,792 May 12, 1998
Thomas US 2002/0160849 A1 Oct. 31, 2002
Harris, Jr. US 4,960,279 Oct. 2, 1990
Ho GB 2256371 A Sep. 12, 1992
Long US 4,693,478 Sep. 15, 1987

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Random House Dictionary, Revised Edition, 1975, page 698-definition of
„intersect‟.

Grounds of Rejection
1. Claims 1-8 stand rejected under the doctrine of obviousness-type
double patenting over claims 1-5 of U.S. Patent No. 6,723,001 in
view of Engfer.
2. Claims 1-5 stand provisionally rejected under the doctrine of
obviousness-type double patenting over Application No.
10/765,106.
3. Claims 1-2 and 5 are rejected under 35 U.S.C. § 103 over
Radakovich in view of Ho.
4. Claim 3 is rejected under 35 U.S.C. § 103 over Radakovich in
view of Ho, and further in view of Dishner or Eberle.
5. Claim 4 is rejected under 35 U.S.C. § 103 over Radakovich in
view of Ho and Bloom.
6. Claims 6-7 are rejected under 35 U.S.C. § 103 over Cacicedo in
view of Bloom and Engfer.
7. Claim 8 is rejected under 35 U.S.C. § 103 over Cacicedo in view
of Bloom, Engfer, Radakovich and Ho.
8. Claims 1-2 and 5 are rejected under 35 U.S.C. § 103 over
Radakovich and Takeuchi.
9. Claim 3 is rejected under 35 U.S.C. § 103 over Radakovich in
view of Takeuchi, Eberle and Dishner.
10. Claim 4 is rejected under 35 U.S.C. § 103 over Radakovich in
view of Takeuchi and Bloom.
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11. Claim 8 is rejected under 35 U.S.C. § 103 over Cacicedo in view
of Bloom, Engfer, Radakovich and Takeuchi.
12. Claims 1-2 and 5 are rejected under 35 U.S.C. § 103 over
Radakovich and Long, Thomas or Harris.

FINDINGS OF FACT
The findings of fact are set forth in the Answer dated Oct. 10, 2007 at
pages 5-32 and the Answer dated Oct. 15, 2009 at pages 3-9. We adopt the
Examiner‟s fact finding as our own except with respect to rejections 6 and 7.

Discussion
1. Claims 1-8 stand rejected under the doctrine of obviousness-type
double patenting over claims 1-5 of U.S. Patent No. 6,723,001 in
view of Engfer.

ISSUE
The Examiner concludes that the claims of U.S. Patent No. 6,723,001
include each element claimed except “first and second rounded edges being
parallel to one another along [ ] their entire length.” (Ans. 5.) The
Examiner relies on Engfer for this teaching. (See id.)
Appellant argues that the rejection is improper because the pending
claims include an alignment system and are not concerned with the club
shape described in the „001 patent. (See App. Br. 7.)
The issue is: Does the cited prior art support the Examiner‟s rejection
of the claims for obviousness type double patenting?

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PRINCIPLES OF LAW
Obviousness-type double patenting entails a two-step analysis. First,
the allegedly conflicting claims are construed and, second, the difference(s)
between the claims are considered to determine whether the claims are
patentably distinct. See Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955,
968 (Fed. Cir. 2001). “A later patent claim is not patentably distinct from an
earlier patent claim if the later claim is obvious over, or anticipated by, the
earlier claim.” Id.

ANALYSIS
Appellant argues that the rejection is improper because the pending
claims include an alignment system and are not concerned with the club
shape described in the „001 patent. (See App. Br. 7.) We are not persuaded.
The „001 patent claims 4 and 5 recite alignment indicia on a flat upper
surface of a golf club forming a cross-hair. Thus, we agree with the
Examiner that the pending claims including an alignment indicia are obvious
variants of the „001 patent‟s claims in view of Engfer.
The obviousness-type double patenting rejection is affirmed.

2. Claims 1-5 stand provisionally rejected under the doctrine of
obviousness-type double patenting over Application No.
10/765,106.
According to USPTO records Application No. 10/765,106 is now
abandoned. Therefore the above provisional obviousness-type double
patenting rejection is moot.
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3. Claims 1-2 and 5 stand rejected under 35 U.S.C. § 103 over
Radakovich in view of Ho.

PRINCIPLES OF LAW
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).

ANALYSIS
We agree with the Examiner‟s fact finding, statement of the rejection
and responses to Appellant‟s arguments as set forth in the Answer and find
the Examiner has set forth a prima facie case of obviousness on the evidence
of record. We provide the following additional comment.
Appellant argues that Radakovich lacks the claimed alignment indicia
and there is no reason to combine Radakovich with the curved surface of
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Ho. (See App. Br. 8.) Appellant argues that “Ho‟s leveling system is not
analogous to Radakovich‟s sighting system.” (Id. at 9.)
We are not persuaded. Radakovich provides indicia to improve
alignment and control of the club face which is attached to the golf club
shaft. (See Radakovich, col 1, ll. 35-37 and col. 2, ll. 11-24.) Ho provides a
guiding device for alignment of the golf club with the ball. Ho, page 1, ll.
15-17. The alignment device of Ho forms a cross with four angles. Both
indicia are analogous in that they provide for a golfer‟s alignment of the club
with the ball. We agree with the Examiner that it would have been obvious
to one of ordinary skill in the art, in view of Ho, to modify Radakovich‟s
alignment device to include two alignment lines “intersecting to form four
angles and a cross” (Answer 7) in order for the alignment lines to be more
visible. The rejection is affirmed.

4. Claim 3 is rejected under 35 U.S.C. § 103 over Radakovich in
view of Ho, and further in view of Dishner or Eberle.
Claim 3 is directed to a golf club “wherein said handle extends at least
half of the overall length of the golf club from said club head to said upper
end of said shaft.”
Radakovitch and Ho are discussed above. Dishner and Eberle each
disclose that a golf club wherein the handle extends at least half of the
overall length of the golf club from the club head to the upper end of the
shaft is known in the art. We find the Examiner has set forth a prima facie
case of obviousness on the evidence of record. “The combination of familiar
elements according to known methods is likely to be obvious when it does
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no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007).
Appellant does not traverse the Examiner‟s prima facie case in the
Brief, and the rejection is affirmed.

5. Claim 4 is rejected under 35 U.S.C. § 103 over Radakovich in
view of Ho and Bloom.
Claim 4 is directed to a golf club “wherein the first alignment line is
longer than the second alignment line.”
The Examiner relies on Radakovich and Ho for the reasons discussed
and additionally relies on Bloom for the disclosure of an oval golf club
handle. (See Ans. 8-9; Bloom, Fig. 3A.) Appellant argues that Radakovich
and Ho fail to disclose “intersecting lines wherein one is longer than the
other.” (App. Br. 10.)
We conclude that it would have been obvious to one of ordinary skill
in the art to modify the alignment indicia of Ho to fit the oval golf club
handle of Bloom such that the first alignment line is longer than the second
alignment line in order to fit the oval shape of the golf club. (See Ans. 8-9.)
The Federal Circuit held that, where the only difference between the prior art
and the claims was a recitation of relative dimensions of the claimed device
and a device having the claimed relative dimensions would not perform
differently than the prior art device, the claimed device was not patentably
distinct from the prior art device. See In Gardner v. TEC Systems, Inc., 725
F.2d 1338, 1348 (Fed. Cir. 1984). Here, the cross-shaped alignment indicia
made obvious by the prior art would function the same regardless of the
relative lengths of the two intersecting lines.
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The rejection is affirmed.

6. Claims 6-7 are rejected under 35 U.S.C. § 103 over Cacicedo in
view of Bloom and Engfer.
Cacicedo discloses an oval hand grip for a golf club with the shaft
closer to the front edge than the rearward edge of the club. (See Ans. 9;
Cacicedo, Figs. 10, 17.) The handle and hand grip of Cacicedo is tapered
(Figs 10 and 12) and Cacicedo also describes its handle attachment as a
“generally tapered cone shape” (col. 4, ll. 39-40). Thus elongated handle of
Cacicedo does not include a first rounded front edge and a second rounded
rearward edge which are parallel to one another along their entire length.
Bloom discloses a putter with an oval golf handle which is tapered (see id.;
Bloom, Fig. 3A and 4A). “Engfer discloses a handle having an external
shape being the same for substantially the entire length of the handle.” (Ans.
10.)
Appellant argues that “[n]one of the cited references disclose the
claimed handle shape” and the front and rear edges of the handles of Bloom
and Cacicedo are not parallel. (App. Br. 11.) We are persuaded and find that
the Examiner has not presented evidence to support a prima facie case of
obviousness. The Examiner has not provided a reason why or indicated how
one of ordinary skill in the art would have modified the tapered handles of
Cacicedo and Bloom with their attendant advantages and substitute them
with a handle grip including a first rounded front edge and a second rounded
rearward edge which are parallel to one another along their entire length,
according to Engfer, Fig. 4. In view of the above, the rejection is reversed.

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7. Claim 8 is rejected under 35 U.S.C. § 103 over Cacicedo in view
of Bloom, Engfer, Radakovich and Ho.
Claim 8 is directed to the “putter type golf club according to claim 6
wherein said upper edge of said handle includes alignment indicia thereon,
defined by at least a first alignment line in a direction perpendicular to the
first plane of said ball striking face and a second alignment line on said
upper edge of said handle, said second alignment line being perpendicular to
said first alignment line, parallel to said first plane of said ball striking face;
and wherein said first alignment line and said second alignment line intersect
to form four angles.”
This rejection adds the alignment indicia of Radakovich and Ho to the
putter of Cacicedo, Bloom and Engfer discussed herein in Rejection 6.
For the reasons discussed herein under rejection 6 we have found that
the combination of Cacicedo, Bloom and Engfer does not suggest a handle
as claimed, and rejection 7 is reversed.

8. Claims 1-2 and 5 are rejected under 35 U.S.C. § 103 over
Radakovich and Takeuchi.
“Radakovich lacks a first alignment line and second alignment line
intersecting to form four angles and a cross.” (Ans. 12.) The Examiner
relies on Takeuchi to make up for this deficiency. Takeuchi discloses a flat
surface of a grip with indicia lines that do not completely extend into the
center. The Examiner finds that it would have been obvious to one of
ordinary skill in the art to have the indicia cover the entire surface of the
length, width and center of the flat surface of the grip, by extending the
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indicia lines in the center to form four angles and a cross, in order for the
alignment indicia to be more visible. (See App. Br. 12-13.)
Appellant argues that Takeuchi is for fitting the grip on the club shaft
and has nothing to do with the sighting device of Radakovich. (See App. Br.
12.) Appellant argues that modifying Radakovich with Takeuchi would
destroy the function of Radakovich (See id. at 15.) Appellant argues that
Takeuchi does not teach intersecting lines in the indicia. (See id. at 14.) We
are not convinced by Appellant‟s argument.
Both Radakovich and Takeuchi are concerned with alignment indicia
on the end of a golf club. While it is acknowledged that the indicia of
Radakovich serves as a sighting alignment device and that of Takeuchi
serves as a grip alignment device, we find that it was well known in the art
to include either such alignment device on the butt end of a golf club handle
and that it would have been obvious to modify one type of alignment indicia
for the other as both involve the same principles. We also conclude that it
would have been obvious to size the alignment indicia to the full size of the
club handle as proposed by the Examiner such that the alignment lines of
Takeuchi intersect forming four angles and a cross. The Federal Circuit held
that, where the only difference between the prior art and the claims was a
recitation of relative dimensions of the claimed device and a device having
the claimed relative dimensions would not perform differently than the prior
art device, the claimed device was not patentably distinct from the prior art
device. See In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 1348 (Fed.
Cir. 1984). Such is the case here.
The rejection is affirmed.

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9. Claim 3 is rejected under 35 U.S.C. § 103 over Radakovich in
view of Takeuchi, Eberle and Dishner.
The combination of Radakovich and Takeuchi are discussed herein.
Dishner and Eberle each disclose that a golf club wherein the handle extends
at least half of the overall length of the golf club from the club head to the
upper end of the shaft is known in the art. We find the Examiner has set
forth a prima facie case of obviousness on the evidence of record. “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Appellant does not traverse this rejection in the Appeal Brief and the
rejection is affirmed.

10. Claim 4 is rejected under 35 U.S.C. § 103 over Radakovich in
view of Takeuchi and Bloom.
The Examiner relies on Radakovich and Takeuchi for the reasons
discussed and additionally relies on Bloom for the disclosure of an oval golf
club handle. Fig 3A. Appellant argues that “Radakovich and Takeuchi fail
to show or teach intersecting lines wherein one is longer than the other.”
(App. Br. 16.)
We conclude that it would have been obvious to one of ordinary skill
in the art to modify the alignment indicia of Takeuchi to fit the oval golf
club handle of Bloom such that wherein the first alignment line is longer
than the second alignment line. The Federal Circuit held that, where the
only difference between the prior art and the claims was a recitation of
relative dimensions of the claimed device and a device having the claimed
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relative dimensions would not perform differently than the prior art device,
the claimed device was not patentably distinct from the prior art device. See
In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 1348 (Fed. Cir. 1984).
The rejection is affirmed.

11. Claim 8 is rejected under 35 U.S.C. §103 over Cacicedo in view
of Bloom, Engfer, Radakovich and Takeuchi.
Each of Cacicedo, Bloom, Engfer, Radakovich and Takeuchi are
relied on as discussed herein in rejections 6-8. For the reasons discussed
herein under rejection 6 we have found that the combination of Cacicedo,
Bloom and Engfer does not suggest a handle as claimed, and rejection 11 is
reversed.

12. Claims 1-2 and 5 are rejected under 35 U.S.C. § 103 over
Radakovich and Long, Thomas or Harris.
Appellant argues that none of Long, Thomas or Harris disclose
intersecting lines on the butt end of a handle as they disclose lines on the
head of a putter. (See App. Br. 19.) We agree with Appellant and do not
find that it would have been obvious to modify an alignment indicia on the
butt end of a handle as in Radakovich with alignment indicia from the head
of a putter.
This rejection is reversed.

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CONCLUSION OF LAW
The cited references and the Examiner‟s analysis supports the
Examiner‟s obviousness rejections, except for rejections 6, 7, 11 and 12
which are reversed. Rejection 2 is moot.

TIME PERIOD
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

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