Ex Parte Giraldi

Board of Patent Appeals and Interferences

Mar 31, 2005

09844989 (B.P.A.I. Mar. 31, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GERALD G. GIRALDI
____________
Appeal No. 2005-0765
Application No. 09/844,989
____________
ON BRIEF
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Before COHEN, PATE, and NASE, Administrative Patent Judges.
PATE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-22. We note that there is a
difference of opinion between the appellant and the examiner as to what claims remain
in the application and what claims are on appeal. The review of the record shows that
claims 3, 6, 9, 14 and 19 have not been cancelled. The examiner apparently states on
page 3 that these claims are still pending. The examiner has further included these
claims in the rejection in the examiner’s answer. Accordingly, we will consider claims 1-
22 as the claims subject to appeal.
Appeal No. 2005-0765
Application No. 09/844,989
2
The claimed invention is directed to a golf club with a toe end and a heel end
wherein the loft angle configuration continuously varies from a positive loft angle to a
negative loft angle. The golf club head further includes a non-metallic insert in at least a
portion of the face surface.
The claimed invention may be further understood with reference to the appealed
claims appended to the appellant’s brief.
The references of record relied upon by the examiner as evidence of
obviousness are:
MacKeil 5,098,103 Mar. 24, 1992
Viollaz et al. (Viollaz) 5,310,185 May 10, 1994
Turner 5,322,285 Jun. 21, 1994
Stuff 5,505,450 Apr. 9, 1996
Werner et al. (Werner) 6,319,150 Nov. 20, 2001
(filed May 25, 1999)
Claims 1-22 stand rejected under 35 U.S.C. § 103 as unpatentable over Stuff in
view of Turner and MacKeil.
Claims 10, 15, 20 and 21 stand rejected under 35 U.S.C. § 103 as unpatentable
over Stuff in view of Turner, MacKeil, Viollaz and Werner.
The details of these rejections can be had by reference to the examiner’s
answer. Appellant’s response to these rejections may be reviewed with reference to the
appeal brief.
Appeal No. 2005-0765
Application No. 09/844,989
3
OPINION
The following comprises our findings of fact with respect to the scope and
content of the prior art and the differences between the prior art and the claimed subject
matter. Stuff discloses a putter head comprising a putter body with a toe end 78, a heel
end 80, and a face surface 72. A non-metallic insert 73 is disposed in at least a portion
of the face surface. Stuff further discloses that several means such as resilient inserts
and non-parallel grooves, can be utilized together to impart corrective action to a golf
ball when struck. See col. 3, lines 55-58. Stuff does not disclose varying the loft angle
of the face surface from a positive loft angle to a negative loft angle as said face surface
extends from the heel end to the toe end.
Turner discloses a putter that has a compound face surface to compensate for
hits outside the sweet spot. The loft of the face surface varies from a closed toe area
with a greater loft to an open heel area with a lesser loft in the Figure 6 embodiment.
The transition in loft angles does not appear to be smooth. However, Turner teaches
varying the loft on the club face for the same reason that Stuff provides non-parallel
grooves, to modify the behavior of a golf ball when struck outside the sweet spot. Turner
does not disclose a resilient insert.
MacKeil also shows a golf club, this time with a constantly changing loft angle.
MacKeil indicates that this teaching is not applicable to a putter. We further note that
Appeal No. 2005-0765
Application No. 09/844,989
4
MacKeil teaches a constantly changing loft angle that avoids a concavity and is legal
under the rules of the USGA. MacKeil does not disclose a resilient insert.
Viollaz discloses a club head with an insert of carbon fiber or aramid fiber in
resin. The insert face is configured with a convex surface which ensures good ball
trajectory. Werner also shows a club face wherein the club face striking surface is
made thicker at the center where the bending stresses are greatest and which taper in
thickness to the outer edges of the face where the stresses are less. Alternatively,
similar center thickness increases can be attained using honeycombed or ribbed
structures as long as variations in wall thicknesses are maintained according to the
invention. For example, as shown in Figure 9, the individual walls 89A are varied in
length to permit a bulge portion 91 to be formed in the center portion of the club head.
The face skin 87 and the rear skin 88 also can be varied in thickness for changing
strength characteristics. See col. 6, lines 30-34.
From the above cited references we find that the level of skill in the golf clubhead
art is high, and sophisticated shapes and sophisticated materials are commonly used in
this art.
In our view, one of ordinary skill in the golf club art would not have found it
obvious to combine the applied references in the manner proposed by the examiner at
the time the invention was made, for the following reasons. First, Stuff, although
showing a resilient insert, uses a flat club face surface with parallel grooves rather than
Appeal No. 2005-0765
Application No. 09/844,989
5
club face loft angle for correction of mishit balls. While Turner does use loft as a
corrective for mishit putts, the loft angle is not smoothly variable across the putter face.
Turner shows three discrete areas, one with negative loft, one with positive loft and one
with no loft. If the loft angles of Turner were combined on the club of Stuff, no
continuously variable loft face would result. Finally, MacKeil actually teaches away from
using his club face with its loft angles on a putter. In two separate locations in Column
1, MacKeil states that his invention is not applicable to a putter. One of ordinary skill
following the express teaching of MacKeil would not combine MacKeil’s features with
the putters of Stuff or Turner.
The other applied references do not provide evidence that ameliorates the
shortcomings enumerated above. Accordingly, the rejections of claims 1-22 are
reversed.
REMAND
Regarding claims 17-22, the application on appeal is hereby remanded to the
examiner for consideration of the combined teachings of MacKeil and Werner. Unlike
claims 1-16, these claims are not directed to a putter only, and the teachings of MacKeil
with regard to club face geometry appear to be applicable to a club with a non-metallic
insert of laminate layers as disclosed by Werner. Note that Werner, for the reasons of
Appeal No. 2005-0765
Application No. 09/844,989
Page 6
strength and club feel varies the thickness of the insert along an imaginary, generally
horizontal line that runs down the face of the club.
In summary, the obviousness rejections of all claims on appeal are reversed. The
case is remanded to the examiner for consideration of the patentability of claims 17-22.
REVERSED AND REMANDED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
WILLIAM F. PATE, III ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
WFP/lbg
Appeal No. 2005-0765
Application No. 09/844,989
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