Ex Parte Keelan

Board of Patent Appeals and Interferences

Jul 29, 2004

08989320 (B.P.A.I. Jul. 29, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 45
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte REGIS T. KEELAN
____________
Appeal No. 2004-0285
Application No. 08/989,320
____________
ON BRIEF
____________
Before ABRAMS, FRANKFORT, and BAHR, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 10, 12,
22-24, 26, 30 and 31, which are all of the claims pending in this application.
We AFFIRM.
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Application No. 08/989,320
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BACKGROUND
The appellant's invention relates to a golf putter head. An understanding of the
invention can be derived from a reading of exemplary claim 10, which has been
reproduced below.
Claims 10, 12, 22-24, 26, 30 and 31 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bulla U. S. Patent No. 3,266,805, issued August 16, 1996.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejection, we make reference to the Answer
(Paper No. 40) for the examiner's reasoning in support of the rejection, and to the Brief
(Paper No. 39) and Reply Brief (Paper No. 41) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
The appellant explains that in the prior art metal was the traditional material of
choice for putter heads, and attempts were made to improve upon this construction by
providing an internal cavity to absorb energy from the impact of the head with the golf
ball to soften the impact and cause the ball to travel slower and with more accuracy.
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According to the appellant, this had the disadvantage of placing two discrete materials
adjacent to one another, which caused problems due to differing coefficients of
expansion, poor adhesion, and unpredictable transfer of forces at the interface of the
two materials. The appellant’s invention provides a composite golf club putter head
wherein metal is blended into a plastic base to form a composite material, which
purportedly overcomes the problems present in the prior art putters. See specification,
pages 1-3.
The invention is expressed in claim 10, the sole independent claim, in the
following manner:
A putter head with a striking face, comprising:
a body made from a uniformly blended composition of
plastic and metal, with the metal being all powder prior to
being uniformly blended with the plastic, the metal powder
being between fifty and ninety-five percent by weight of the
uniformly blended composition, and the striking face of the
finished putter having a minimum hardness of Shore A85.
The examiner has rejected this claim under 35 U.S.C. § 103(a) as being obvious
in view of the teachings of Bulla. In arriving at this conclusion the examiner has found
Bulla teaches mixing metal powder with plastic, and asserts that uniform mixing of
these ingredients is inherent in the disclosure. The examiner further asserts Bulla
discloses that the metal filler in the club varies from 25% to as much as 75%, which
overlaps the appellant’s claimed range, and that one of ordinary skill in the art would
have recognized that this teaching is applicable to putter heads as well as the other
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1No. 2001-1400, mailed September 26, 2001.
clubs in a set. With regard to the Shore hardness range, the examiner has taken the
position that the range has no upper limit and therefore would include virtually any
putter, since Shore A85 is relatively soft in comparison to known metals and plastic.
In expressing the foregoing views, the examiner has made reference to
statements made by a panel of the Board of Patent Appeals and Interferences in a prior
decision on this case in which the examiner’s rejection of an earlier version of claim 10
as being unpatentable over Bulla was sustained.1 The present claim 10 contains the
additional limitations that (1) the plastic and metal are “uniformly blended,” (2) the metal
filler is “all powder prior to being uniformly blended with the plastic,” and (3) the finished
putter has a “minimum hardness” of Shore A85.
The appellant has presented several arguments in opposition to the examiner's
conclusion of obviousness, none of which we find to be persuasive, for the reasons
explained below.
Bulla discloses a set of golf clubs, including a putter, in which the club heads are
made of a moldable plastic and a metal filler that can be “filaments, fillings, or of
powder form” (column 1, lines 63 to 67; column 4, line 18; emphasis added). This
being the case, the appellant’s argument that one of ordinary skill in the art would not
have been taught by Bulla to use a powdered metal material is incorrect. Further in this
regard, while Bulla states that a “suitable” plastic composition for club heads would
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2In re Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 70 (CCPA 1979).
comprise unwoven continuous metal filaments, contrary to the theme conveyed in the
appellant’s arguments (Brief, page 7), Bulla does not suggest that powdered metal is
unsuitable for use. Since all disclosures of the prior art, including unpreferred
embodiments, must be considered in determining obviousness,2 as we did in the earlier
decision, we agree with the examiner that the artisan also would have been taught by
Bulla to utilize powdered metal as well.
Further with regard to the metal powder, contrary to the discussion presented by
the appellant on pages 7-9 of the Brief, it is our view that Bulla does not teach that a
putter should not use all powder, for there is no basis for concluding that whatever form
is selected for the metal filler - whether filaments or powder - all of the metal is not in
the selected form, that is, all filaments or all powder. Thus, in the absence of evidence
to the contrary, we agree with the examiner that one of ordinary skill in the art would
have been taught by Bulla to utilize a single form of metal filler, that is, “all powder,” as
required by claim 10. We reach the same conclusion, based upon the same reasoning,
with regard to the limitations that the metal be all powder “prior to” being blended and
that it be “uniformly” blended with the plastic, for there simply is nothing in the reference
that would instruct the artisan to do otherwise.
With regard to the requirement that the metal powder be between 50 and 95 per
cent by weight of the composition, we stand by the position we set forth in the prior
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decision. Since a putter is a specialized club which is not used to drive the ball, it would
have been clear to one of ordinary skill in the art that Bulla’s disclosure concerning the
application of a shock wave to the ball to provide maximum striking force (column 1,
lines 50-56) would not be a consideration in the design of a putter. Nor do we believe
one of ordinary skill in the art would regard Bulla’s disclosure concerning the
relationship of the amount of metal filler to the slope of the club face as being
applicable to a putter, for the putter is not included in Bulla’s discussion of face angles,
but is presented as a separate item. What Bulla does teach with regard to the putter is
that it should have a “feel” (i.e., a weight of swing) corresponding to that of the other
clubs (column 3, lines 45-49), which in our view would have taught one of ordinary skill
in the art to provide for the putter a weight of powder in the mixture that falls within
Bulla’s disclosed range of 25-75 percent, disregarding, because it is a putter, the
proviso that the weight of metal be increased as the angle of the slope of the club face
increases. We find no basis in the Bulla disclosure for the appellant’s argument that
the reference teaches that the putter must have a weight of swing that matches the rest
of the clubs (Brief, page 10), and that the weight of metal in the filler should be
determined by measuring the shaft length of the other clubs (Brief, page 11), in view of
the fact that Bulla treats the putter separately (column 3, lines 45-49).
With regard to the declaration filed by the appellant (Paper No. 17), we repeat
the position we took in the prior decision, which is that the evidence does not compare
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the claimed invention to the closest prior art, that is, the Bulla putter, and therefore it
does not establish that the claimed 50-95% range of metal filler achieves unexpected
results relative to Bulla.
While we have carefully considered all of the arguments put forth by the
appellant in the Brief and the Reply Brief, they have not convinced us that Bulla fails to
establish a prima facie case of obviousness with regard to the subject matter recited in
claim 10. This being the case, we shall sustain the standing rejection of claim 10.
Furthermore, inasmuch as the appellant has chosen not to challenge with any
reasonable specificity before this Board the rejection of dependent claims 12, 22-24,
26, 30 and 31, they are grouped with independent claim 10, from which they depend,
and fall therewith. See 37 CFR § 1.192(c)(7) and Section 1206 of the Manual of Patent
Examining Procedure.
CONCLUSION
The rejection is sustained.
The decision of the examiner is affirmed.
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
NEA/lbg
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