Ex Parte Lewis

Patent Trial and Appeal Board

Sep 9, 2016

11385069 (P.T.A.B. Sep. 9, 2016)

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.
11/385,069 03/21/2006 Wayne Lewis NMTECH15.CIP 2745
7590 09/09/2016
ROBERT W. BECKER & ASSOCIATES
Suite B
707 State Hwy 333
Tijeras, NM 87059-7507
EXAMINER
SULLIVAN, MATTHEW J
ART UNIT PAPER NUMBER
3677
MAIL DATE DELIVERY MODE
09/09/2016 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WAYNE LEWIS
____________

Appeal 2014-002469
Application 11/385,069
Technology Center 3600
____________

Before MICHELLE R. OSINSKI, ANNETTE R. REIMERS, and
THOMAS F. SMEGAL, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1,2
Wayne Lewis (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner’s decision to reject under 35 U.S.C. § 112, first paragraph, claims
1, 4–9, 13–16, and 18 for lack of written description3; under 35 U.S.C.
§ 112, second paragraph, claims 5 and 6 for indefiniteness; and under 35
U.S.C. § 103(a): (1) claims 1, 5, 13–16, and 18 as unpatentable over Jordy
(US 1,604,696; iss. Oct. 26, 1926) and Tiura (US 6,149,538; iss. Nov. 21,
2000), (2) claims 4 and 6 as unpatentable over Jordy, Tiura, and Smith (US
6,823,562 B1; iss. Nov. 30, 2004), (3) claim 7 as unpatentable over Jordy,
Tiura, and Yasui (US 6,226,836 B1; iss. May 8, 2001), and (4) claims 8 and
9 as unpatentable over Jordy, Tiura, and Bloom (US 6,506,128 B1; iss. Jan.
14, 2003). Claims 2, 3, 10–12, and 17 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).

1 Appellant submitted an Amendment to the claims, amending claim 1 in the
Response After Final Action. See Response After Final Act. 1–2 (filed
January 2, 2013). In the Advisory Action, the Examiner indicated that the
proposed amendment “[would] not be entered” because the proposed
amendment “[is] not deemed to place the application in better form for appeal
by materially reducing or simplifying the issues for appeal.” Advisory Act. 1
(mailed February 1, 2013). Appellant acknowledges that the proposed
amendment has not been entered. See Appeal Br. 3 (filed April 17, 2013)
(“Appellant filed a reply to the final rejection on January 2, 2013. An
Advisory Action maintaining the final rejection and refusing to enter the
response to the final rejection was mailed on February 1, 2013.”). The claim
set before us for review is the one submitted with the Appeal Brief. See
Appeal Br. 13–15, Claims App.
2 The Examiner presents the 112, first and second paragraph, rejections as
New Grounds of Rejection in the Answer. See Ans. 12–14 (mailed August
20, 2013).
3 The Examiner includes claim 17 in this ground of rejection. Claim 17 was
cancelled in an Amendment filed March 1, 2011.
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We AFFIRM.

CLAIMED SUBJECT MATTER
The claimed subject matter “relates to an auxiliary grip for an object,
especially for the shaft of an object.” Spec. 1:8–9, Fig. 1.
Claim 1, the sole independent claim on appeal, is representative of the
claimed subject matter and recites:
1. An auxiliary grip for a racket, a golf club, a baseball or
softball bat, a ski pole, or a fishing rod, comprising:
a single component in the form of a monolithic oversized
member that is adapted to be placed over a shaft of, or a shaft
provided for, a racket, a golf club, a baseball or softball bat, a ski
pole, or a fishing rod to form a new, oversized auxiliary handle
or grip therefor, wherein a portion of the shaft extends from an
end of said oversized member, further wherein said oversized
member has an outer surface that is not interrupted by any holes,
further wherein said oversized member has an elliptical cross-
sectional shape over the entire length thereof, further wherein
said monolithic oversized member comprises only a first portion
and a second portion, further wherein said first portion of said
oversized member has a constant cross-sectional area over its
entire length, all the way to a first end of said oversized member,
further wherein said second portion of said oversized member is
a linearly tapering portion having a cross-sectional area that
increases continuously in a direction away from said first portion
and all the way to a second, opposite end of said oversized
member, further wherein said second tapering portion is disposed
at an end of said oversized member that is remote from the end
from which a portion of the shaft extends, further wherein said
oversized member has a central axis that is parallel to and coaxial
with a central axis of the shaft, further wherein said oversized
member has a bore for accommodating the shaft, further wherein
said bore is coaxial with said central axis of said oversized
member, has a constant diameter over its entire length, and opens
out at said opposite first and second ends of said oversized
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member, further wherein the cross-sectional area of said first
portion of said oversized member has a first width to length ratio,
further wherein the cross-sectional area of said second portion of
said oversized member has a second width to length ratio, and
wherein said second width to length ratio of said second portion
is greater than said first width to length ratio of said first portion.

ANALYSIS

Written Description
Claims 1, 4–9, 13–16, and 18
In order to satisfy the written description requirement, “the
specification must describe an invention understandable to [a] skilled artisan
and show that the inventor actually invented the invention claimed.” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). “[T]he test for sufficiency is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date.” Id.
(citation omitted).
We agree with Appellant that the Specification at page 4 line 8 to
page 5 line 7 provides support for the limitation of the cross-sectional area of
the first portion of the oversized member having a first width to length ratio,
the cross-sectional area of the second portion of the oversized member
having a second width to length ratio, and the second width to length ratio of
the second portion being greater than the first width to length ratio of the
first portion, as called for in claim 1. See Reply Br. 2–3; see also Spec. Figs.
2A, 2B. Thus, Appellant’s disclosure reasonably conveys to those skilled in
the art that Appellant had possession of the subject matter now claimed as of
the filing date of the application. See Ariad, 598 F.3d at 1351.
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For the above reasons, we do not sustain the Examiner’s rejection of
claims 1, 4–9, 13–16, and 18 for lack of written description.
Indefiniteness4
Claims 5 and 6
Claim 1 recites the auxiliary grip including “a single component in the
form of a monolithic oversized member.” Appeal Br. 13, Claims App.
(emphasis added). Claim 5, which depends from claim 1, recites the
oversized member “comprises at least two parts . . . that fit together.” Id. at
14, Claims App. The Examiner determines that “[t]hese limitations appear
to be contradictory.” Ans. 14. The Examiner “assume[s] that the ‘two parts’
[of claim 5] are intended to constitute the first portion and second portion as
set forth in claim 1” and “a ‘monolithic’ part cannot be considered two
distinct or separate components.” Id. In support of this position, the
Examiner cites to various definitions of the term “monolithic” from the
Meriam Webster Dictionary. See id.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). Appellant’s
Specification describes that “[a]lthough in the embodiment illustrated in Fig.
1 the oversized member 21 is shown as a monolithic component, it would

4 The Examiner determines that “[c]laim 1 recites the limitation ‘said second
tapering portion’ in line 16. There is insufficient antecedent basis for this
limitation in the claim.” Ans. 14 (emphasis omitted). We disagree. Claim 1
recites “said second portion of said oversized member is a linearly tapering
portion.” Appeal Br. 13, Claims App. (emphasis added). This recitation
provides sufficient antecedent basis for “said second tapering portion.”
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also be conceivable to make the member 21 in two or more parts. Therefore,
a further embodiment of [Appellant’s] auxiliary grip is shown in Fig. 4.”
Spec. 5:16–19, Figs. 1, 4. Moreover, an ordinary and customary meaning of
the term “monolithic,” also found in the Merriam Webster Dictionary, which
is consistent with use of this term in the Specification, is: “2c : consisting of
or constituting a single unit.” Merriam Webster Dictionary,
http://www.merriam-webster.com/dictionary/monolithic (last visited Sept. 3,
2016); see also Ans. 14. Upon review of page 5, lines 16–19, and Figures 1
and 4 of the subject application, a skilled artisan would recognize that “two
parts” (i.e., half members 27) “fit together” in “a single unit.” See Final Act.
9; see also Ans. 9; Reply Br. 4; Spec. 5:21 – 6:5. In other words, half
members 27 of the subject application fitting together to form a single unit,
is a “monolithic” member.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner’s rejection of claims 5 and 6 for indefiniteness.
Obviousness over Jordy and Tiura
Claims 1, 5, 13–16, and 18
The Examiner finds that Jordy discloses the limitations of claim 1
substantially as claimed. See Final Act. 6–9. The Examiner relies on Tiura
for disclosing “a grip comprising a first portion and a second portion which
tapers linearly away from the first portion . . . comprising an elliptical cross
section of constant cross sectional area over the entire length that does not
have beveled ends.” Ans. 6 (citing Tiura, 7:55–68, 8:5–10, Figs. 9, 10); see
also Final Act. 5, 9; Advisory Act. 2 (citing Tiura, 8:5–10) (“Tiura
positively states that the ‘preferred handle shape of the embodiments shown
in figs. 9 and 10 is one with a generally ovoid or elliptical cross-section.’”).
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The Examiner concludes that it would have been obvious “to provide Jordy
with the features of Tiura such that the Jordy-Tiura combination would teach
a handle with an elliptical cross section without beveled ends because the
elliptical cross section would provide a structure which allows a user to
verify proper handle/grip alignment more easily.” Ans. 7; see also Final
Act. 9. The Examiner further concludes that it would have obvious
to provide the Jordy-Tiura combination with the second portion
having a second width to length ratio which is larger than the first
width to length ratio because Jordy is clearly concerned with a
user's hand/grip comfort and uses the shape of the second portion
to accommodate the user’s hand/grip comfort (see Jordy, lines
13-20, lines 77-78 and lines 81-100, see fig. 1 user’s hand
position) and altering the width to length ratio of the second
portion in the Jordy-Tiura combination would allow a designer
to properly customize the size and shape of the second portion
for the diverse variety of hand sizes and hand strengths
corresponding to the diverse variety of users, i.e., compare the
hand size and strength of an adult male with that of a juvenile
female.
Id. at 7–8.
Appellant contends that Jordy “merely discloses a standard golf grip”
and fails to disclose an “oversized” member as claimed. Appeal Br. 8. In
particular, Appellant contends that (1) “the term ‘oversized’ as used in
conjunction with [Appellant’s] oversized member 21 means that the member
21 is of a size that is larger than the size of a standard grip, clearly
contrasting with the standard grip of Jordy”; and (2) “the oversized member
21 [of the subject application] is to be placed over a shaft to thereby form a
new, oversized auxiliary grip for the object.” Id.; see also Spec. 3:19 – 4:3.
During prosecution before the USPTO, claim terms are to be given
their broadest reasonable meaning in their ordinary usage as they would be
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understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). At the outset,
Appellant does not direct us to any portion of the Specification that
explicitly or inherently describes the “size of a standard grip.” See e.g.,
Spec. 3:19–4:3. We agree with the Examiner that Appellant’s argument that
the term “oversized” is “of a size that is larger than the size of a standard
grip” “is not enough to determine the metes and bounds of [the term]
‘oversized’ because there is no commonly accepted size as to what
constitutes a standard sized grip” and that “the grip must exist in the range of
sizes that is graspable by the human hand, but there is no specific commonly
accepted common grip size as grips would likely exist in a range of sizes to
accommodate various user hand sizes.” Final Act. 5; see also Appeal Br. 8.5
As such, we agree with the Examiner that Appellant “has not provided
sufficient disclosure as to determine what would distinguish an ‘oversized’
grip from a standard grip.” Final Act. 5.
In this case, Jordy discloses “[o]ne of the objects of the invention is to
provide an improved reinforced and balanced golf-grip in the form of a
sheath or tube . . . which may be applied to the shaft of the club.” Jordy,
1:4–10 (emphasis added); see also id. at 1:1–3 (emphasis added) (“This
invention relates to grips for the handles or shafts of playing clubs.”). Jordy
further discloses:

5 The Examiner did not reject claim 1 under 35 U.S.C. § 112, second
paragraph, for indefiniteness concerning the term “oversized.” See Final Act.
6–9; see also Ans. 3–8, 12–14.
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the invention contemplates a grip having an enlarged integral
head portion which has the effect of steadying the club in the left
hand by providing a more natural and greater gripping surface
for the palm and fingers of the hand, and also preventing slipping
or turning of the shaft of the club after it has been grasped
preliminary to starting the back swing.
Jordy, 1:20–29 (emphasis added), Figs. 2, 3.
Appellant’s Specification describes that (1) it is “an object of the
present invention to provide an improved, oversized grip for objects that
provides a firmer grip, and facilitates a consistent hand position and better
control of the object” (Spec. 1:16–18; see also Appeal Br. 10); (2) “[t]he
auxiliary grip of the present application comprises an oversized member that
can be placed over the shaft of, or a shaft provided for, an object to form a
handle or grip for the object” (Spec. 2:15–17); and (3) “end 24 of the
member 21 that is remote from the object on which the auxiliary grip 20 is to
be provided has a greater cross-sectional area than does the remainder of the
member 21, with this enlarged portion being designated with the reference
numeral 25” (Spec. 4:11–14) (emphasis added). Similar, to the subject
invention, Jordy discloses a grip, having an enlarged end portion, which is to
be placed over a shaft to form a handle or grip for an object that provides for
better control of the object. Based on the foregoing, we agree with the
Examiner that Jordy discloses an “oversized” member. Final Act. 6; see
also Ans. 4.
Appellant contends that “the present invention comprises an
‘auxiliary’ grip. The term ‘auxiliary’ means ‘serving to supplement or
assist’ or ‘supplementary’ . . . Jordy provides only a single grip or handle
and NO auxiliary or supplemental grip.” Appeal Br. 8 (citing
www.merriam-webster.com).
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As discussed above, during prosecution before the USPTO, claim
terms are to be given their broadest reasonable meaning in their ordinary
usage as they would be understood by one of ordinary skill in the art, taking
into account whatever enlightenment by way of definitions or otherwise that
may be afforded by the written description. See In re Morris, 127 F.3d at
1054; In re Zletz, 893 F.2d at 321. Here, Appellant does not direct us to any
portion of the Specification that explicitly or inherently describes the term
“auxiliary” to mean “serving to supplement or assist” or “supplementary.”
See Spec. 1–6; see also Appeal Br. 8. We agree with the Examiner that
Appellant “appears to be arguing that the ‘auxiliary grip’ as claimed is
intended be used in concert with another grip” and that “[t]his is in
contradiction to the specification. The specification shows and discusses
only one grip over a shaft and not a grip over a grip.” Ans. 16; see also
Final Act. 4; Spec. 2:15–17 (emphasis added) (“[t]he auxiliary grip of the
present application comprises an oversized member that can be placed over
the shaft of, or a shaft provided for, an object to form a handle or grip for the
object.”). Under the broadest reasonable interpretation consistent with the
Specification, we agree with the Examiner that the term “auxiliary” “can be
interpreted as ‘used as a substitute.’” Ans. 16 (citing www.dictionary.com)
see also Final Act. 4. Further, Jordy discloses a grip that can “be used as a
substitute or replacement for a previous grip which has been removed.”
Ans. 16 (citing Jordy, 1:59–68). Based on the foregoing, we agree with the
Examiner that Jordy discloses an “auxiliary grip” member. Final Act. 4, 6;
see also Ans. 4, 16.
Appellant contends that Jordy fails to disclose an oversized member
that is “comprised of only a first portion and a second portion.” Appeal Br.
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8. According to Appellant, Jordy has a “tapered wall portion 3 at one end”
and “if as maintained by the Examiner, the ‘first portion’ of Jordy includes
the thinned wall portion 3, then of course this ‘first portion’ of Jordy does
not have a constant cross-sectional area over its entire length.” Id. at 8–9.
Appellant’s argument is not persuasive because nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also Final Act. 5.
At the outset, as pointed out by the Examiner, Jordy discloses that lower end
3 of sheath/tube 1 “is preferably beveled or tapered.” Jordy, 1:58–62
(emphasis added); see also Ans. 8. A reference disclosure is not limited
only to its preferred embodiments, but is available for all that it discloses
and suggests to one of ordinary skill in the art. In re Lamberti, 545 F.2d
747, 750 (CCPA 1976).
Here, the Examiner interprets “element 1 [of Jordy] as the first
portion” and “element 4 . . . ‘the enlarged head portion’ [of Jordy] . . . as the
second portion.” Ans. 17. Further, the Examiner proposes to modify Jordy
by replacing element 1 (i.e., the first portion) of Jordy with the elliptical
cross-section handle/grip portion of Tiura. See Ans. 7; see also Final Act. 9.
Additionally, the Examiner provides a reason with rational underpinnings to
modify Jordy with Tiura, namely, “the Jordy-Tiura combination would teach
a handle with an elliptical cross section without beveled ends because the
elliptical cross section would provide a structure which allows a user to
verify proper handle/grip alignment more easily.” Ans. 7; see also Final
Act. 9. We agree with the Examiner that Jordy as modified by Tiura (i.e., a
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handle/grip without a beveled first portion) would include a first portion
having “a constant cross-sectional area over its entire length.” See Ans. 8.
Appellant contends that “Tiura clearly does NOT teach [an ‘elliptical
cross section over its entire length,’] but instead explicitly discloses that the
handles of Figs. 9 and 10 are ‘round’!” Appeal Br. 9–10. However, as
pointed out by the Examiner, Tiura discloses “[t]he preferred handle shape
of the embodiments shown in FIGS. 9 and 10 is one with a generally ovoid
or elliptical cross-section as indicated by the butt end of the handle shown in
FIG. 10.” Tiura, 8:6–9 (emphasis added); see also Final Act. 5; Advisory
Act. 2; Ans. 6.
Appellant contends that the “specific definition of the ratio of the
cross-sectional areas of the first and second portions of [Appellant’s]
oversized member is a distinct structural limitation,” and not “simply an
obvious matter of design choice.” Appeal Br. 10; see also id. at 7.
Although the Examiner relies on design choice for the width to length
ratio differences of the first and second portions in the Final Action, in the
Answer, the Examiner relies on reasons with rational underpinnings for
modifying Jordy and Tiura to include the claimed width to length ratio
differences of the first and second portions. See Ans. 7–8. In the Reply
Brief, Appellant does not apprise us of error in the Examiner’s findings or
conclusions, and we therefore discern no basis for determining that the
Examiner’s findings and conclusions are unreasonable. See Reply Br. 1–4.
By not persuasively addressing the findings, Appellant has not shown error
in the findings or conclusions regarding obviousness. See In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992) (discussing how, if an examiner presents a
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prima facie case, “the burden of coming forward with evidence or argument
shifts to the applicant”).
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of independent claim 1 as unpatentable over Jordy and Tiura. As
for dependent claims 5, 13–16, and 18, these claims are not separately
argued by Appellant. See Appeal Br. 5–10. Consequently, we also sustain
the Examiner’s rejection of claims 5, 13–16, and 18 as unpatentable over
Jordy and Tiura. See 37 C.F.R. § 41.37(c)(1)(iv) (2015).
Obviousness over Jordy, Tiura and any of Smith, Yasui, and Bloom
Claims 4 and 6–9
Appellant does not apprise us of error in the Examiner’s combination
of Smith, Yasui, or Bloom with Jordy and Tiura other than to say that Smith,
Yasui, or Bloom do not correct the deficiencies of Jordy and Tiura. See
Appeal Br. 11. As we find no deficiency in the Examiner’s rejection of
independent claim 1 as unpatentable over Jordy and Tiura, for the reasons
discussed above, we likewise sustain the Examiner’s obviousness rejections
of claims 4 and 6–9. See 37 C.F.R. § 41.37(c)(1)(iv) (2015).

DECISION
We REVERSE the decision of the Examiner to reject claims 1, 4–9,
13–16, and 18 for lack of written description.
We REVERSE the decision of the Examiner to reject claims 5 and 6
for indefiniteness.
We AFFIRM the decision of the Examiner to reject claims 1, 4–9, 13–
16, and 18 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
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AFFIRMED