Ex Parte Moore

Patent Trial and Appeal Board

Feb 1, 2017

12677238 (P.T.A.B. Feb. 1, 2017)

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.
12/677,238 12/02/2010 Simon Garry Moore 12-0031/NIKE1099 8849
113338 7590 02/03/2017
Quinn Law Group/NIKE, Inc.
21500 Haggerty Road
Ste 300
Northville, MI 48167
EXAMINER
MACARTHUR, VICTOR L
ART UNIT PAPER NUMBER
3658
NOTIFICATION DATE DELIVERY MODE
02/03/2017 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):
U S Docketing @ quinnlawgroup.com
abelknap@quinniplaw.com
nike_docketing @ cardinal-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SIMON GARRY MOORE
Appeal 2015-001812
Application 12/677,238
Technology Center 3600
Before: LYNNE H. BROWNE, JEFFREY A. STEPHENS, and GORDON
D. KINDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant1 appeals under 35 U.S.C. § 134 from a rejection of claims
26—36. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies the real party in interest as Nike, Inc., a company
organized under the laws of the State of Oregon. Appeal Br. 3.
Appeal 2015-001812
Application 12/677,238
CLAIMED SUBJECT MATTER
The claims are directed to an adjustable connector. Claim 26 is
reproduced below and illustrates the claimed subject matter:
26. An adjustable connector comprising:
a first part having a generally cylindrical body that
includes:
an external surface disposed about a first
longitudinal axis;
an internal surface disposed about a second
longitudinal axis and defining a first bore;
wherein the second longitudinal axis is disposed at an
angle relative to the first longitudinal axis; and
wherein the second longitudinal axis intersects the first
longitudinal axis at a point within the first bore;
a second part having a generally cylindrical body that
includes:
an external surface disposed about a third
longitudinal axis;
an internal surface disposed about a fourth
longitudinal axis and defining a second bore;
wherein the fourth longitudinal axis is disposed at
an angle relative to the third longitudinal axis; and
wherein the fourth longitudinal axis intersects the
third longitudinal axis at a point within the second bore; and
wherein the external surface of the first part is configured
to bear against the internal surface of the second part when the
first part is at least partially inserted into the second bore.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ingalls US 7,210,693 B2 May 1, 2007
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Application 12/677,238
REJECTIONS
The Examiner made the following rejections:
Claims 26—36 stand rejected on the ground of non-statutory
obviousness-type double patenting as being unpatentable over claim 1-30 of
U.S. Patent No. 8,182,357. Ans. 2.
Claims 26—36 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Ingalls. Ans. 2.
OPINION
Double Patenting Rejection
Appellant has not contested the double patenting rejection, and we
therefore summarily sustain the rejection.
Anticipation of Claims 26) 36
Appellant argues that the Examiner’s rejection “fails to specifically
address any claim limitation and provides little or no opportunity for the
applicant to understand and rebut the Examiner’s legal conclusion of
anticipation.” Appeal Br. 11. The Examiner’s Answer provides extensive
detail matching the claim limitations to the cited reference. Ans. 2—12.
Appellant’s Reply Brief does not challenge any of the Examiner’s findings
in connection with claims 26—28, 30, and 32—36. Reply Br. 3—11. We have
reviewed the Examiner’s findings and adopt them as our own. Although it is
preferred that the specificity required by In re Jung, 637 F.3d 1356 (Fed.
Cir. 2011), be provided earlier in the prosecution, we are not persuaded of
Examiner error for lack of specificity in connection with the rejection of
claims 26—36.
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Appeal 2015-001812
Application 12/677,238
Anticipation of Claims 29 and 31
Appellant argues separately against the rejection of claims 29 and 31.
Appeal Br. 12—14. Claim 29 depends from claims 28 and 26 and, in
pertinent part adds to claim 26 that “the first part is configured to receive a
shaft [of a golf club] within the first bore.” Appeal Br. 16 (Claims App.,
claims 28 and 29.) In similar fashion, claim 31 adds to claim 26 that “the
second part is configured to be inserted within an aperture defined by ... a
golf club head.” Appeal Br. 16 (Claims App., claims 30 and 31.)
Appellant’s Arguments
1. Appellant argues that claims 29 and 31 each place the claimed
adjustable connector “in a golf context as an integral component of a golf
club.” Appeal Br. 12. Given the number of nested bushings of various
kinds that may exist, the claims are specific in requiring nested bushings
suitable for a golf club head and shaft connection for which suitable
dimensions can be readily determined. Id. Appellant adds that Ingalls is
described only for use in automotive suspensions and provides bushings that
do not function as connectors because of the role played by the ball joints
that Ingalls’bushing assemblies support. Appeal Br. 13. Because Ingalls
does not teach a connector for a golf club head and shaft, it is only with prior
knowledge of Appellant’s invention and speculation that the Examiner can
take Ingalls’ bushing assembly out of its automotive context to use it for a
very different purpose. Id.
2. Appellant’s second argument in connection with claims 29 and
31 is that the Examiner has not laid an adequate predicate to raise the
presumption that Ingalls’ bushing would inherently perform all the functions
claimed in these claims. Appeal Br. 13—14. Specifically, Appellant argues
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Application 12/677,238
that the Examiner has not explained “how an adjustable connector for
connecting a golf club head or golf club shaft is substantially identical to an
automotive suspension bushing that is used to adjust the camber and caster
of a vehicle wheel by translating a load-bearing ball joint.” Id. Because the
foundation for the inherency doctrine was not properly laid, the fact that
Ingalls does not expressly teach an adjustable connector for a golf club shaft
and a golf club head means it cannot anticipate these claims. Id.
3. In connection with claims 29 and 31 Appellant’s Reply Brief
makes three points.2 First, Appellant’s Reply Brief argues that the Examiner
fails to give proper weight to the “configured to” clauses in claims 29 and
31. Reply Br. 4. Appellant argues that the phrases beginning with
“configured to” describe physical characteristics and attributes that
“specifically detail how aspects of the connector are physically designed to
interface [sic] with the recited golf club components.” Reply Br. 5—6.
4. Appellant’s second argument in his Reply Brief is that the
Examiner has erred in relying on a presumption of inherency to establish
missing structural limitations. Reply Br. 7. Appellant says that “[structural
design attributes, such as sizing or component arrangement, are considerably
unlike material properties for a given chemical composition,” and the
doctrine of inherency is not properly used for the former. Reply Br. 8.
5. Appellant’s third, and final, argument in his Reply Brief is that
to use the inherency doctrine “the [Ejxaminer must provide a reasonable
basis in fact and/or technical reasoning why the missing descriptive matter is
necessarily present in the thing described in the reference and that it would
2 As noted above, Appellant’s Reply does not address the rejection of claims
26-28, 30, and 32-36.
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Appeal 2015-001812
Application 12/677,238
be so recognized by persons of ordinary skill.” Reply Br. 8 (citation
omitted).
Discussion
We address Appellant’s arguments in turn.
Re Argument 1
Claims 29 and 31 describe a connector that is “configured to”
cooperate with either a golf club shaft or a golf club head. These limitations
are functional and do not affirmatively claim the golf club shaft or head.
The Examiner relied on In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997) (see
Ans. 5, 9, 19—20, 21—22) where the court found that inherency was properly
invoked when a Figure in the reference “ha[d] the same general shape” as
one of the figures in the application. Id. at 1478. So here, the bushing
structure shown in Ingalls’ Figures 2A—3D is of the “same general shape”, if
not the identical shape, as that shown in Appellant’s Figures 1 and 4—6. The
bushing assembly of Ingalls, if scaled to fit a golf club shaft and hosel,
would be capable of performing all the recited functions. Appellant has not
pointed to any of the claimed functions such a device could not perform.
Accordingly, we find no error in the Examiner’s use of inherency in
rejecting claims 29 and 31. Appellants also contend the Examiner is using
“prior knowledge” and “speculation” (Appeal Br. 13) in finding that Ingalls’
bushing assembly meets the claimed connector. Similar to an
“impermissible hindsight” argument, “prior knowledge” and “speculation”
are irrelevant to an anticipation rejection since anticipation is based upon
whether or not the cited reference describes the claimed invention.3
3 Anticipation of a claim under 35 U.S.C. § 102 occurs when each claimed
element and the claimed arrangement or combination of those elements is
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Application 12/677,238
Re Argument 2
As noted above, the Examiner’s Answer provides a complete
explanation of the correspondence between the affirmatively claimed
structure in claims 29 and 31 and Ingalls. Ans. 2-4, 7—8. Accordingly, the
Examiner has demonstrated substantial identity between the claimed
structures and Ingalls and so laid a proper foundation for invoking
inherency.
Re Argument 3
We agree with the Examiner that Ingalls discloses every affirmatively
claimed limitation of claims 29 and 31. The phrases in claims 29 and 31
following “configured to” are functional and statements of intended use.
Appellant argues, “These limitations extend beyond a mere intended use or
simply being ‘capable of;’ instead, they invoke specific design attributes.”
Reply Br. 6. But Appellant has not claimed or explained how the various
parts are configured, and we are not persuaded that the Examiner was wrong
in finding these phrases to be expressions of functional intended use.
Re Argument 4
As noted above, we agree with the Examiner that this case is governed
by In re Schreiber, supra. The “configured to” phrases are permissible in a
claim, but are functional. As such, they are anticipated by substantially
identical structures capable of performing the same functions. As discussed
above, we agree with the Examiner’s findings that the Ingalls bushing
assembly is substantially identical in structure to the connector of
disclosed, inherently or expressly, by a single prior art reference.
Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir.
2010).
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Application 12/677,238
Appellant’s claims 29 and 31 and capable of performing the claimed
functions. Appellant has provided no evidence to the contrary, and so we
are not persuaded of error.
Re Argument 5
Appellant argues that the Examiner has not established a factual basis
for applying inherency, stating that a device that is “capable of’ meeting the
claimed functions is nevertheless not “configured to” accomplish the
claimed functions. Schreiber governs our decision. Once the Examiner
finds, as he did properly in this case, that all structural features are found in
the reference and that the functions claimed are inherently present in the
reference, the burden shifts to the Appellant “to show that the prior art
structure did not inherently possess the functionally defined limitations of
his claimed apparatus.” In re Schreiber 128 F.3d at 1478. The Examiner
found, and we agree, that “Appellant has failed to point out any specific
structural feature present or lacking in the prior art connector which would
necessarily prevent [performance of the claimed functional intended use
with a] golf [club head and shaft].” Answer 18. Accordingly, we are not
persuaded the Examiner improperly found that Ingalls’ bushing assembly
inherently disclosed Appellant’s claimed connector.
DECISION
For the above reasons, the Examiner’s rejection of claims 26—36 is
affirmed.
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) (2012).
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Appeal 2015-001812
Application 12/677,238
AFFIRMED
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