Ex Parte MooreDownload PDFPatent Trial and Appeal BoardJan 31, 201713594278 (P.T.A.B. Jan. 31, 2017) Copy Citation 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. 13/594,278 08/24/2012 Simon Garry Moore 12-0031US33 / NIKE1100 6734 113338 7590 02/02/2017 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 02/02/2017 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): amb@quinnlawgroup.com U S Docketing @ quinnlawgroup.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 2015-001253 Application 13/594,278 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 1—31. 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. 4. Appeal 2015-001253 Application 13/594,278 CLAIMED SUBJECT MATTER The claims are directed to an adjustable connector. Claims 1, 11, 18, 22, 25, and 31 are independent. Claim 1, reproduced below, illustrates the claimed subject matter: 1. An adjustable connector to connect a golf club head and a golf club shaft, the adjustable connector comprising: a first part having an outer wall configured to be inserted into a hosel of a golf club head and configured to rotate inside the hosel between a first plurality of rotational positions, said first part having a first internal inclined bore; and a second part configured to be coupled to a shaft and having an outer wall received in said first internal inclined bore, said second part being rotatable inside said first internal inclined bore between a second plurality of rotational positions, said second part having a second internal inclined bore configured to receive the shaft. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Ingalls US 4,420,272 Dec. 13, 1983 REJECTIONS The Examiner makes the following rejections: Claims 1—31 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Ingalls or, in the alternative, under 35 U.S.C. § 103(a) as being unpatentable over Ingalls. 2 Appeal 2015-001253 Application 13/594,278 OPINION The Anticipation Rejection — Claim 1 The Examiner rejects all the pending claims as anticipated by Ingalls. Appellant argues the anticipation rejection of claims 1—31 as a group. Appeal Br. 15—20. We select claim 1 as representative, and claims 2—31 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Appellant makes additional arguments in connection with claims 7—21 and 25—31, selecting claim 25 as representative; these arguments are discussed below. Ingalls discloses a bushing assembly with adjustable eccentricity, which may find utility in mounting ball joints (Ingalls 1:21—25) but also “in any of the uses . . . which specify the use of an eccentric bushing.” Id. at 2:16—19. “In operation, variable eccentricity bushing 10 of the instant invention may be employed in any number of uses in which bushings having nonconcentric bores are desirable.” Id. at 4:16—19. The Examiner finds (with functional language related to intended use italicized and underlined, and with the corresponding parts of Ingalls in bold): Ingalls discloses an adjustable connector to connect a golf club head and a golf club shaft. the adjustable connector comprising: a first part (12) having an outer wall (outer wall of 12) configured (by cylindrical outer shape of 12) to be inserted into a hosel of a golf club head and configured (by cylindrical outer shape) to rotate inside the hosel between a first plurality of rotational positions (in that the cylindrical outer shape of 12 allows for rotation in any bore that it is inserted to), said first part having a first internal inclined bore (bore 14 has a skewed/inclined angle that is not shown in the figure 3 embodiment but is described in col. 2, 11. 50-53 and in the abstract statement "eccentric i.e., offset and/or skewed relative to the axis around which the outer surface of the 3 Appeal 2015-001253 Application 13/594,278 outer body is generated". Alternatively, yet another embodiment has an incline taper that reads on the claim that is not shown but is described in col. 2,11. 57-59); and a second part (20) configured (20 is configured with an opening 22 that is capable of receiving a shaft therein) to be couvled to a shaft and having an outer wall (outer wall of 20) received in said first internal inclined bore, said second part being rotatable inside said first internal inclined bore between a second plurality of rotational positions (any number of rational positions of 20 relative to 12 and within 12), said second part having a second internal inclined bore (bore 22 which has centerline D that is inclined/skewed relative to either of A and/or C ) configured (by the space in 22 that is capable of receiving a shaft) to receive the shaft. Ans. 2—3. The Examiner finds that Ingalls discloses all of the Appellant’s claimed structure {id.) and concludes that, accordingly, Ingalls must be presumed inherently capable of performing the functions italicized above. Id. at 3. Addressing claim 25, the Examiner finds that all of the claimed structure of claim 25 is suggested by the prior art, and, therefore, a presumption that the structure was inherently capable of performing the functions claimed is properly inferred. Id. at 27. The Examiner notes that the Appellant did not affirmatively claim a connector in combination with a golf club beyond mere intended use. Id. at 27—28. Accordingly, even if Ingalls could be cabined to the automotive art, that fact would not prevent it from anticipating the claimed invention. Id. Appellant’s Arguments The Appeal Brief first argues the Examiner fails to identify where the art explicitly or inherently teaches an adjustable connector for a golf club and shaft. Appeal Br. 16—18. In support, Appellant points to the “configured to ...” language in claim 1 (italicized above) and asserts this 4 Appeal 2015-001253 Application 13/594,278 language positively recites how the adjustable connector directly connects a golf club head and shaft. Appeal Br. 17. Next, Appellant points to the preamble, saying that given the number of nested bushings that exist, the intended use to join golf club components breathes life and meaning to the claimed structure. Id. Finally, Appellant points to the Ingalls reference as a passive positioner of components that requires a ball joint before the entire bushing and ball joint assembly can be considered a connector. Id. at 17—18. The Appeal Briefs second argument is that the Examiner has not laid out the factual predicate to give rise to a presumption that the Ingalls bushing assembly is inherently configured to perform the functions in the italicized parts of claim 1. Id. at 18. Specifically, the Examiner has not shown that the affirmatively claimed limitations of claim 1 are found in Ingalls because Ingalls’ bushing assembly is intended for a “vastly different utility” from Appellant’s. Id. Accordingly, Ingalls does not teach that the ‘“first part [has] an outer wall configured to be inserted into a hosel of a golf club head,’ and the ‘second part [is] configured to be coupled to a shaft . . . said second part having a second internal inclined bore configured to receive the shaft.’” Id. at 19, quoting claim 1. Appellant argues claim 25 separately, selecting it as representative of claims 7—21 and 26—31. Id. at 19. Appellant argues that claim 25 requires relative rotation of the connector’s first and second parts to change first and second angular relationships between a golf club head and shaft. Appeal Br. 19. These requirements are different from Ingalls’ bushing assembly because the Ingalls’ bushing assembly only serves to align the parts, and a ball joint is needed to complete the connector. Id. at 20. Moreover, because the Ingalls’ adjustable assemblies are intended to be used in pairs, in use 5 Appeal 2015-001253 Application 13/594,278 they are “rotationally invariant” and so would not be capable of use as a connector between a golf club head and shaft. Id. Appellant’s Reply Brief makes three arguments against the Examiner’s anticipation rejection of all the claims.2 First, Appellant argues that the Examiner improperly deemed “certain structural attributes as merely functional intended uses.” Reply Br. 3. Appellant states that the italicized language describes “physical characteristics and attributes” of the elements that precede “configured to.” Id. at 5. “These limitations extend beyond a mere intended use or simply being ‘capable of;’ instead they invoke specific design attributes.” Id. at 6. Therefore, the Examiner should not have used the inherency doctrine. Id. at 7. Second, the Reply Brief repeats the inherency arguments made in the Appeal Brief at page 18. Specifically, Appellant argues that the Examiner erred in applying the inherency doctrine to establish structural limitations missing from Ingalls. Id. at 7—8. Appellant urges that “the Examiner has erred simply by relying on the notion of presumed inherency to establish missing structural limitations.” Id. at 7. Appellant supports this by arguing that presumed inherency is appropriate only when used to establish characteristics of a claimed composition or characteristics of how a device behaves in operation. Id. “Structural design attributes, such as sizing or component arrangement, are considerably unlike material properties for a given chemical composition.” Id. at 8. Finally in the Reply Brief, Appellant argues that the Examiner failed to provide a factual basis for concluding that the inherent features of Ingalls 2 Appellant’s Reply Brief does not separately address claim 25 and those grouped with it. 6 Appeal 2015-001253 Application 13/594,278 are necessarily present and would be so recognized by those of ordinary skill in the art. Reply Br. 8—9. Appellant challenges the sufficiency of the Examiner’s reliance on the conformation of Ingalls “simply because the outer surface is cylindrical, and further because it includes an opening.” Id. at 9. Appellant argues “the Answer attempts to blur the line between something being affirmatively ‘configured to’ fit in a certain way, and something possibly being ‘capable of the same. Id. Discussion We agree with the Examiner that Ingalls discloses every affirmatively claimed limitation of claim 1. The phrases in claim 1 in italics above are functional and statements of intended use. Appellant has stated forcefully that his claims cover a device with an outer wall that is “configured to . . .” and an inclined bore “configured to . . . .” Reply Br. 5—6. But Appellant has never stated how the various parts are configured. The Examiner relied on In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997) where the court found that inherency was properly invoked when a figure in the reference “had the same general shape” as one of the figures in the application. Id. at 1478. So here, the bushing structure shown in Ingalls’ Figures 1—5 is of the “same general shape,” if not the identical shape, as that shown in Appellant’s Figures 1, 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 claim 1. Appellant’s next argument — that inherency is not properly used “to establish missing structural limitations” (Reply Br. 7) — is not persuasive in 7 Appeal 2015-001253 Application 13/594,278 view of the holding in Schreiber, as discussed above. Moreover, Appellant has failed to identify any “missing structural limitations” (id.) other than the functional requirements set forth in italics in claim 1, above. Accordingly, we are not persuaded that the Examiner used inherency to find structural features not otherwise present in the prior art and so to reject claim 1 improperly. Finally, 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 the prior art structure did not inherently possess the functionally defined limitations in his claimed apparatus.” Schreiber, 128 F.3d at 1478. The Examiner found, and we agree, that “Appellant fails even to point out any specific structural feature claimed or unclaimed that is present or lacking in the prior art connector that would prevent performance of the claimed functional intended use with a golf club head and shaft.” Answer 27. Accordingly, we are not persuaded the Examiner improperly found that Ingalls’ bushing Assembly inherently disclosed appellant’s claimed connector. In view of the foregoing, we find no error in the rejection of claim 1. The Anticipation Rejection — Claim 25 Appellant made the same arguments as above in connection with claims 7—21 and 25—31. Appeal Br. 19. We find those arguments not 8 Appeal 2015-001253 Application 13/594,278 persuasive for the reasons discussed above. Appellant also made additional arguments in connection with claims 7—21 and 25—31, arguing them as a group with claim 25 selected as representative. Id. Claims 7—21 and 26—31 stand or fall with claim 25. 37 C.F.R. § 41.37(c)(l)(iv). Claim 25 is similar to claim 1 with variation in some of the functional language. The Examiner made detailed findings demonstrating the correspondence between Ingalls and structural features of claim 25. Appellant does not dispute them, and we adopt them as our own. Appeal Br. 19—20; see also Final Act. 11 (“[Appellant] fails to identify a single structural difference much less explain in any detail how such a difference would necessarily prevent performance of the claimed function/property.”) Appellant argues in favor of claim 25 that Ingalls’ device is limited to steering knuckles in motor vehicles and, “[d]ue to its rotationally invariant nature, . . . does not expressly or inherently provide an ability to change a first and/or second angular relationship between a golf club head and a golf club shaft.” Appeal Br. 20. Appellant argues that Ingalls’ bushing assemblies are not “connections” because of the way they are used. Appeal Br. 19 —20. The Specification provides a broad definition of “connector” (Spec. 136), and Ingalls’ bushing assemblies unquestionably fit this definition. In addition, the Examiner notes that Ingalls cannot be limited to the automotive arts because Appellant has “fail[ed] to claim [the adjusting structure in] combination with a golf club beyond mere intended use.” Ans. 27—28. “Since [A]ppellanf s golf club head and shaft is [sic] claimed in the merely functional intended use manner, [A]ppellant bears the burden of proving the Ingalls prior art incapable of the function.” Id. at 28. Appellant’s Reply 9 Appeal 2015-001253 Application 13/594,278 Brief makes no effort to demonstrate that Ingalls is in some way incapable of performing the intended use with a golf club head and shaft. See Ans. 27. Accordingly, we have not been persuaded the Examiner erred in rejecting claim 25 as anticipated by Ingalls. Alternative Rejection as Obvious in view of Ingalls In the alternative, the Examiner rejects claims 1—31 as obvious over Ingalls. Because we find that claims 1—31 are anticipated by Ingalls, we do not separately address the alternative rejection of these claims under 35 U.S.C. § 103(a). In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (anticipation is the epitome or ultimate of obviousness). We, therefore, sustain the obviousness rejection of claims 1—31. DECISION For the above reasons, the Examiner’s rejection of claims 1—31 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). AFFIRMED 10 Copy with citationCopy as parenthetical citation