Ex Parte McGuire et al

Patent Trial and Appeal Board

Mar 5, 2019

14263200 (P.T.A.B. Mar. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/263,200 04/28/2014
36032 7590 03/07/2019
THE GRIFFITH LAW FIRM, A P.C.
991C Lomas Santa Fe Drive
Suite 450
Solana Beach, CA 92075
FIRST NAMED INVENTOR
James E. McGuire JR.
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
entrotech 09-0004-CON 4374
EXAMINER
KIM, EUGENE LEE
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
03/07/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
lgriffith@griffithpc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES E. MCGUIRE JR. and ANDREW C. STRANGE
Appeal2017-001042
Application 14/263,200 1
Technology Center 3700
Before MICHAEL C. ASTORINO, KENNETH G. SCHOPPER, and
BRADLEY B. BAY AT, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellants appeal from the
Examiner's decision rejecting claims 3, 5, 9, 10, 12, 14--19, 23, and 31-35.2
We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to the Appellants, the real party in interest is entrotech, inc.
Appeal Br. 3.
2 Claims 1, 2, 4, 6-8, 11, 13, 20-22, 24--30, and 36-48 are cancelled.
Appeal Br., Claims App.
Appeal2017-001042
Application 14/263,200
STATEMENT OF THE CASE
Subject Matter on Appeal
The Appellants' invention generally relates to reinforced objects,
especially reinforced elongated objects, such as shaft-based sporting
implements (e.g., lacrosse and hockey sticks). Spec. ,r,r 2-3.
Claims 12, 18, and 19 are the independent claims on appeal.
Claim 12, reproduced below, is illustrative of the subject matter on appeal.
12. A reinforced object, comprising:
at least one structural layer comprising a carbon fiber-
reinforced composite material; and
at least one reinforcing rod that is at least partially
encapsulated within a layer of material positioned on or within
the at least one structural layer,
wherein the object is an elongated object, with the at least
one reinforcing rod longitudinally positioned essentially parallel
to a central axis thereof.
Rejections
In the Final Office Action, the Examiner made numerous prior art
rejections of the claims that were pending at that time. See Final Act. 3-23
(mailed Dec. 11, 2015). The Appellants filed an Amendment After Final on
April 27, 2016, which amended some claims and cancelled others. In an
Advisory Action, the Examiner entered the Amendment and indicated that
claims 3, 5, 9, 10, 12, 14--19, 23, and 31-35 were rejected. Adv. Act. 1,
Box 7, 15 (mailed May 17, 2016). As pointed out by the Appellants, "the
Examiner did not indicate in the Advisory Action how each individual
rejection would be impacted." Appeal Br. 5 (citing MPEP § 1206).
In the Answer, the Examiner stated, "any of the non-argued rejections
could have been rewritten as a [35 U.S.C. §] 103 rejection utilizing common
2
Appeal2017-001042
Application 14/263,200
well known materials or simple changes in the shape or size of the device."
Ans. 3. We understand this statement to indicate, among other things, that
some of the prior art rejections listed in the Final Office Action would have
needed to be rewritten to reflect and properly reject the amended claims.
And, we understand the Examiner to have withdrawn the prior art rejections
that were not rewritten in the Answer. As a corollary, we understand each of
the prior art rejections of claims 3, 5, 9, 10, 12, 14--19, 23, and 31-35 listed
in Answer to be either maintained from the Final Office Action - with the
understanding that the rejections may have been impacted by the entry of the
after final amendment- or be a new ground of rejection. See 37 C.F.R.
§ 4I.39(a). These prior art rejections include:
I. claims 3, 5, 9, 10, 12, 14--16, 18, 19, 23, and 31-35 under
35 U.S.C. § I02(b) as being anticipated by or, in the alternative, under
35 U.S.C. § I03(a) as being unpatentable over Meyer et al.
(US 2007/0049431 Al, pub. Mar. 1, 2007) ("Meyer") 3 (Ans. 7-15);
II. claim 17 under 35 U.S.C. § I03(a) as unpatentable over
Meyer and Retro Railgun (Retro Railgun by Haute Stick, (2000)
3 In the Answer, the Examiner rejects claim 2 under this ground of rejection,
specifically finding that "Meyer discloses a lacrosse stick." Ans. 8. Claim 2
is a cancelled claim. Appeal Br., Claims App. Claim 3 is a pending claim
and recites "wherein the object comprises a lacrosse stick or a hockey stick."
Id. We determine that the Examiner's rejection of claim 2 instead of claim 3
is a typographical error or minor oversight. Additionally, the Examiner
failed to include claim 31 in the statement of the rejection, but nonetheless
included claim 31 in the substance of the rejection, which we likewise
attribute to a typographical error or minor oversight. Ans. 7, 15. But see
Reply Br. 2-3, n.3-5 (The Appellants point to inconsistencies in the
Examiner's Answer concerning cancelled and rejected claims).
3
Appeal2017-001042
Application 14/263,200
http://www.hautestick.bigcartel.com/product/haute-stick)
("RetroRailgun") (Ans. 15-17);
III. claims 3, 5, 9, 10, 12, 14--16, 18, 19, 23, and 31-35 under
35 U.S.C. § I03(a) as being unpatentable over Blotteaux et al.
(US 2010/0323830 Al, pub. Dec. 23, 2010) ("Blotteaux"), York et al.
(US 2002/0037780 Al, pub. Mar. 28, 2002) ("York"), and Davis et al.
(US 2010/0240477 Al, pub. Sept. 23, 2010) ("Davis")4 (Ans. 17-29);
and
IV. claim 17 under 35 U.S.C. § I03(a) as unpatentable over
Blotteaux, York, Davis, and RetroRailgun (Ans. 29-30).
In the Final Office Action, the Examiner included a rejection under
the judicially created doctrine of obviousness-type double patenting. Final
Act. 23. The Examiner has not expressly withdrawn this ground of
rejection. Therefore, we understand that the Examiner to have maintained
the obviousness-type double patenting rejection. See 37 C.F.R.
§ 4I.39(a)(l); see also Reply Br. 2 n.2 ("The Examiner presumably
disregards the outstanding double patenting rejection because of Appellants'
earlier indication that a terminal disclaimer would be filed to obviate that
rejection upon an indication that all claims are otherwise allowable.").
Taking into account the cancelled claims in the Amendment After Final filed
on April 27, 2016, we understand the Examiner to reject,
V. claims 3, 5, 9, 10, 12, 14--19, 23, and 31-35 under the
judicially created doctrine of obviousness-type double patenting as
4 For similar reasons as those provided in footnote 3, we determine that the
Examiner rejected claims 3 and 31 under this ground of rejection. Ans. 22,
25-26.
4
Appeal2017-001042
Application 14/263,200
being unpatentable over claims 1-22 of McGuire, Jr. et al.
(US 8,747,261 B2, iss. June 10, 2014) ("McGuire").
ANALYSIS
Re} ections I and II
Independent claims 12, 18, and 19 recite, "wherein the object is an
elongated object, with the at least one reinforcing rod longitudinally
positioned essentially parallel to a central axis thereof." Appeal Br., Claims
App.
The Examiner's rejections of independent claims 12, 18, and 19 under
35 U.S.C. § 102(b) as being anticipated by or, in the alternative, under
35 U.S.C. § 103(a) as being unpatentable over Meyer rely on a finding that
Meyer's shaft 15 and round hollow tube 16 correspond to the claimed
"elongated object" and "at least one reinforcing rod," respectively. 5 See
Ans. 6-8; Meyer ,r 33, Fig. 9. The Examiner's position is that Meyer's
round hollow tube 16 is longitudinally positioned essentially parallel to shaft
15's central axis. See Ans. 6-8.
The Appellants argue that "Meyer does not teach or suggest anything
other than conventional reinforcement along - not essentially parallel to - a
central axis" because "Meyer's 'hollow tube' is aligned concentric with the
central axis of the shafts therein." Appeal Br. 17. The Appellants' argument
. .
1s persuasive.
5 The Examiner finds that Meyer's skin 5 corresponds to the claimed "at
least one structural layer." Ans. 7.
5
Appeal2017-001042
Application 14/263,200
The Specification describes:
Reinforcement of objects according to the invention comprises
positioning of at least one reinforcing rod on (preferably exterior
to) or within at least one structural layer of the object. As used
herein, the term "structural layer" refers to a layer required for
use of the object for its intended purpose, as opposed to those
layers imparting primarily aesthetic or other non-essential
properties to the object. At least one reinforcing rod is
longitudinally positioned essentially parallel to a central axis of
the object.
In contrast to general placement of conventional
reinforcing ribs or stiffening rods along a central axis within the
hollow cavity internal to structural layer(s) of certain shaft-based
sporting implements, reinforcing rods according to the present
invention are positioned at least on or within a structural layer of
the object, preferably at a location prone to impact (i.e., at a
location radially extending from an outer surface of the object
prone to impact to the center of the object). In an exemplary
embodiment, at least one reinforcing rod is positioned at least on
or within a structural layer at a comer of the object.
Spec. ,r,r 60-61 (underlining added); see also Appeal Br. 15-16. Upon
reading the foregoing description, one of ordinary skill in the art would
understand that the term "essentially parallel," as recited in the independent
claims, does not include a general placement of conventional reinforcing ribs
or stiffening rods along a central axis within the hollow cavity internal to a
structural layer( s ).
Meyer's reinforcing rod 16 is positioned along a central axis within
the hollow cavity internal to a structural layer (skin 5). See Ans. 7. Upon
reading the term "essentially parallel" in light of the Specification, we do not
agree with the Examiner's position that Meyer's round hollow tube 16 is
longitudinally positioned "essentially parallel" to shaft 15 's central axis.
6
Appeal2017-001042
Application 14/263,200
Thus, we do not sustain the Examiner's rejections of independent
claims 12, 18, and 19, and dependent claims 3, 5, 9, 10, 14--16, 23, and 31-
35, as being anticipated by or, in the alternative, unpatentable over Meyer.
The Examiner's rejection of claim 17 (which depends on claim 12) is based
on Meyer and RetroRailgun and relies on the same erroneous finding as
discussed above. Thus, we do not sustain the Examiner's rejection of
claim 17.
Re} ections III and IV
The Appellants argue that "the [Final] Office Action does not address
'at least one reinforcing rod that is at least partially encapsulated within a
layer of material positioned on or within the at least one structural layer'
recited in claim 12." Appeal Br. 13. This recitation requires three
structures, namely: "at least one reinforcing rod," "a layer of material," and
"at least one structural layer."
The Examiner finds that Blotteaux teaches "a composite shaft, but
does not clearly disclose the use of a reinforcing member." Ans. 18. The
Examiner finds Davis teaches "a carbon fiber reinforced composite material"
and modifies Blotteaux's composite shaft in view of this teaching. See id. at
19, 21. This modification does not result in "at least one reinforcing rod that
is at least partially encapsulated within a layer of material positioned on or
within the at least one structural layer," as recited in claim 12. The
Examiner relies on York to teach a reinforcing member. See id. at 19-20
(citing York, Figs. 1-15, ,r,r 39-42, 51 ). The Examiner determines, "[i]t
would have been obvious to one of ordinary skill in the art ... to have
utilized the reinforcement member (fig 6 item 524) as shown by York with
7
Appeal2017-001042
Application 14/263,200
the device in order to give the user a more sturdy and robust shaft." Id. at
21.
We understand the Examiner's rejection to rely on Blotteaux and
Davis to teach the claimed "at least one structural layer" and on York to
teach a "reinforcing member." However, the Examiner's rejection does not
account for the recited "layer of material" of claim 12. Thus, we do not
sustain the Examiner's rejection of claim 12, and dependent claims 3, 5, 9,
10, 12, 14--16, 23, and 31-35 as unpatentable overBlotteaux, York, and
Davis.
Independent claim 18, recites "at least one reinforcing rod that is at
least partially encapsulated within a layer of rigid material positioned on or
within the at least one structural layer." Appeal Br., Claim App. The
Examiner's rejection of claim 18 appears to rely on the findings and
reasoning presented for the rejection of independent claim 12. 6 The
Examiner additionally finds that "York discloses a rigid material ( fig 1-9,
paragraph 26, 30)." Ans. 24. We are unclear what material of York the
Examiner is identifying as a "rigid material." Thus, we do not sustain the
Examiner's rejection of claim 18 as unpatentable over Blotteaux, York, and
Davis.
Independent claim 19, recites "at least one reinforcing rod positioned
on the at least one structural layer with a bonding layer disposed
therebetween ... wherein the bonding layer comprises a rigid material."
6 The Examiner references claim 1 in rejecting claim 18 (Ans. 24). In light
of the fact that claim 1 is a cancelled claim and the Examiner references
prior arguments made for claim 12 in addressing the Appellants' argument
for claim 18 (id. at 35), we understand the reference to claim 1 rather than
claim 12 to be a typographical error or minor oversight.
8
Appeal2017-001042
Application 14/263,200
Appeal Br., Claim App. The Examiner's rejection of claim 19 relies on the
findings and reasoning presented for the rejection of independent claim 12.
Ans. 24, 35. The Examiner finds that "[t]he material surrounding the
reinforcing member would inherently be rigid as it forms the shaft body (fig
1-6)." Id. at 24. It is not clear which reference the Examiner is citing to, and
we are unclear what material the Examiner is identifying as a "bonding layer
compris[ing] a rigid material." Thus, we do not sustain the Examiner's
rejection of claim 19 as unpatentable over Blotteaux, York, and Davis.
The Examiner's rejection of claim 17 (which depends on claim 12) is
based on Blotteaux, York, Davis, and RetroRailgun relies on the same
erroneous finding as discussed above. Also, we note that this rejection is not
cured at least because that Examiner's reasoning does not include a further
modification of Blotteaux's shaft. See Ans. 30. Thus, we do not sustain the
Examiner's rejection of claim 1 7.
Rejection V
The Appellants do not substantively address the obviousness-type
double patenting rejection, but do indicate that "a terminal disclaimer will be
filed to obviate that rejection upon an indication that all claims in the present
application are otherwise allowable." Appeal Br. 5, n.1; see Reply Br. 7,
n.9.
Thus, we summarily sustain the Examiner's rejection of claims 3, 5, 9,
10, 12, 14--19, 23, and 31-35 under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims 1-22
of McGuire.
9
Appeal2017-001042
Application 14/263,200
DECISION
We REVERSE the Examiner's decision rejecting:
claims 3, 5, 9, 10, 12, 14--16, 18, 19, 23, and 31-35 under
35 U.S.C. § 102(b) as being anticipated by or, in the alternative, under
35 U.S.C. § 103(a) as being unpatentable over Meyer (Rejection I);
claim 17 under 35 U.S.C. § 103(a) as unpatentable over Meyer
and RetroRailgun (Rejection II);
claims 3, 5, 9, 10, 12, 14--16, 18, 19, 23, and 31-35 under
35 U.S.C. § 103(a) as being unpatentable over Blotteaux, York, and
Davis (Rejection III); and
claim 17 under 35 U.S.C. § 103(a) as unpatentable over
Blotteaux, York, Davis, and RetroRailgun (Rejection IV).
We SUMMARILY AFFIRM the Examiner's decision rejecting
claims 3, 5, 9, 10, 12, 14--19, 23, and 31-35 under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claims 1-22 of McGuire (Rejection V).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
10