Ex Parte O

Patent Trial and Appeal Board

Sep 27, 2017

13286129 (P.T.A.B. Sep. 27, 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.
13/286,129 10/31/2011 James Paul O'Sullivan SR. 400085-20000 2355
25570 7590 09/29/2017
Roberts Mlotkowski Safran Cole & Calderon, P.C.
7918 Jones Branch Drive
Suite 500
McLean, VA 22102
EXAMINER
WONG, STEVEN B
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
09/29/2017 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):
lgallaugher@rmsc2.com
docketing@rmsc2.com
dbeltran @ rmsc2. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES PAUL O’SULLIVAN, SR.
Appeal 2015-007350
Application 13/286,129
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and
LYNNE H. BROWNE, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
James Paul O’Sullivan, Sr. (Appellant) appeals under 35 U.S.C. § 134
from the rejection of claim 33. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter new grounds of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
Appeal 2015-007350
Application 13/286,129
CLAIMED SUBJECT MATTER
Sole claim 33 is reproduced below with emphasis added:
33. A golf tee comprising a long lasting combination of a golf
tee and a force absorbing member in the form of a washer;
said golf tee comprising a disc-shaped head and a flat
bottom surface including a golf support means exclusively
within said head and a flat bottom surface substantially parallel
to the top surface of said head, said golf tee further comprising a
shaft extending below said head and having a constant diameter
which is smaller than that of said head, said shaft being integrally
attached to said head and terminating in a ground inserting end;
said washer comprising a resilient member disposed on
said shaft and located in close proximity to said bottom surface
of said head, said washer having an outer diameter greater than
its thickness and the thickness of said head but less than the
diameter of a golf ball when the same is compressed during the
drive off the tee, thereby protecting said head from the impact of
a golf club striking a ball on said head and having a resistance to
force which is sufficient to prevent the face of a golf club striking
a ball on said head from harming said head.
Strong
Ayoub
Blais
PRIOR ART
US 5,672,122 Sept. 30, 1997
US 5,759,119 June 2, 1998
US 2009/0088274 A1 Apr. 2, 2009
REJECTIONS
I. Claim 33 stands rejected under 35 U.S.C. § 102(b) as anticipated by,
or alternatively under 35 U.S.C. § 103(a) as unpatentable over
Strong.1
1 As noted by Appellant, it is not entirely clear on what ground claim 33 is
rejected. See Appeal Br. 4. Appellant assumes that the claim is rejected as
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Application 13/286,129
II. Claim 33 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Strong, Ayoub, and Blais.
DISCUSSION
New Grounds of Rejection
Rejection under 35 U.S.C. $ 112, first paragraph
Claim 33 is rejected under 35 U.S.C. § 112, first paragraph as failing
to comply with the written description requirement.
“[T]he test for [written description] 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.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc). “[T]he purpose of the written description
requirement is to ‘ensure that the scope of the right to exclude, as set forth in
the claims, does not overreach the scope of the inventor’s contribution to the
field of art as described in the patent specification.”’ Id. at 1353—54
(quoting Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345 (Fed. Cir. 2000)).
The Specification describes the outer diameter of the washer in
paragraph 36 stating:
The member surrounding the shaft is positioned below the ball
support end and has an outer diameter less than that of a golf ball
but large enough and located so as to protect the support end from
impact from a golf club strike after a golf ball has been struck
from the tee.
anticipated by Strong, or alternatively as unpatentable over Strong. We
adopt Appellant’s understanding as our own.
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Application 13/286,129
Spec. 136 (emphasis added). This description, which refers to a golf ball
rather than a compressed golf ball, is repeated in paragraphs 13, 14, 27, 34,
and 35. None of these paragraphs describe the outside diameter of the
washer as being less than the compressed diameter of the golf ball during the
drive off the tee, as called for by claim 33. Although a ball diameter is
shown in the Figure, as there is no indication that ball 20 is compressed, it is
not clear whether the diameter of washer 16 is less than the diameter of a
compressed golf ball. Moreover, there is no indication that the Figure is
drawn to scale or is in fact a particularly accurate depiction of the claimed
invention. For example, it would appear from the drawing that the hole in
the washer is offset from the center of the washer because the distance
between the wall of the opening in the washer through which the tee passes
and the outer diameter of the washer is greater on the left side of the
illustration than on the right side. However, one skilled in the art would not
have understood Appellant to have possession of a washer with hole that is
offset from the center of the washer from the drawing alone. Similarly,
given the nature of the drawing, (which also appears to show the golf ball
sitting off-center on the tee) one skilled in the art would not have reasonably
concluded that Appellant had possession of a washer having an outer
diameter smaller than the compressed diameter of a golf ball during the
drive off the tee from the Figure either. Although, drawings may be used to
provide support under § 112, first paragraph (Vas-Cath Inc. v. Mahurkar,
935 F. 2d 1555, 1565 (Fed. Cir. 1991)), this case is more similar to In re
Olson, 212 F. 2d 590, 591—92 (CCPA 1954) (affirming a rejection based on
improperly inserting the limitation “equally spaced”) than it is to In re
Heinle, 342 F. 2d 1001, 1007 (CCPA 1965) (reversing a rejection (of claims
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Application 13/286,129
3 and 6) based on inserting a limitation that one part was “approximately
one-fourth” the size of another).
Accordingly, we find that the original Specification including the
original Drawing does not provide support for the invention as now claimed.
Rejection under 35U.S.C. $ 112, second paragraph
Claim 33 is rejected under 35U.S.C. § 112, second paragraph as
failing to particularly point out and distinctly claim the subject matter which
the inventor regards as the invention.
It is well settled that “even if a claim term’s definition can be reduced
to words, the claim is still indefinite if a person of ordinary skill in the art
cannot translate the definition into meaningfully precise claim scope.”
Halliburton Energy Services, Inc. v. M-ILLC, 514 F.3d 1244, 1251 (Fed.
Cir. 2008). While patentees are allowed to claim their inventions broadly,
they must do so in a way that distinctly identifies the boundaries of their
claims. Id. at 1253. Claim 33 defines the outer diameter of the washer as
“less than the diameter of a golf ball when the same is compressed during
the drive off the tee.” Appeal Br. 3 (Claims App.). This definition does not
distinctly identity the boundaries of claim 33 because it is unclear what the
diameter of a golf ball is when it is compressed during the drive off the tee.
Although, the Specification states that “an approximate compression
point where a professional golfer would be expected to compress a ball
during a drive off the tee” is shown by dotted line 22 in the Figure (Spec. 1
35), Appellant does not identify, nor do we discern, where the Specification
indicates what the compressed diameter of a golf ball during the drive off the
tee is or how it can be determined. Furthermore, the amount of compression
which a golf ball undergoes during drive off the tee depends on many factors
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Application 13/286,129
such as compression rating of the golf ball, the angle at which the ball is hit,
and the force with which it is hit. See Get In The Hole.com, http://get-in-the-
hole.com/understanding-the-golf-ball-compression-chart (last visited
September 21, 2017). Thus, there are a countless number of washer outer
diameters which could potentially be less than the diameter of a golf ball
when compressed during drive off the tee.
Moreover, the same washer could have a diameter greater than the
diameter of a golf ball when compressed during drive off the tee when one
player uses it and a diameter lees than the diameter of a golf ball when
compressed during drive off the tee when a different user uses the tee. For
example a low compression (i.e. soft) golf ball hit by an amateur player with
a slow swing might have a much smaller diameter during drive off the tee
than a high compression (i.e. hard) golf ball hit by a professional player with
a fast swing. See Golf Info Guide.com, http://golf-info-guide.com/golf-
tips/equipment-choices/golf-ball-compression-chart-and-rank (last visited
September 21, 2017) (“It stands to reason that a softer ball will compress
more than a high-compression ball, right?”).
Furthermore, patent drawings not designated as being drawn to scale
cannot be relied upon to define precise proportions of elements if the
Specification is completely silent on the issue. Hockerson-Halberstadt, Inc.
v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000). Thus, the
dotted line 22 in the Figure does not provide the precision needed for a
potential infringer to determine the metes and bounds of this claim language.
For these reasons, the limitation at issue is indefinite.
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Appeal 2015-007350
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Rejections I and II
Having determined that claim 33 is indefinite, we cannot sustain the
rejections of these claims under 35 U.S.C. §§ 102(b) and 103(a) because to
do so would require speculation as to the scope of the claims. See In re
Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred
in affirming an anticipation rejection of indefinite claims); In re Steele, 305
F.2d 859, 862—63 (CCPA 1962) (Holding that the Board erred in affirming a
rejection of indefinite claims under 35 U.S.C. § 103(a)).
DECISION
The Examiner’s rejections of claim 33 are REVERSED.
We enter NEW GROUNDS OF REJECTION for claim 33 under
35 U.S.C. § 112, first and second paragraphs.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the
Appellant, within two months from the date of the decision,
must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal
as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
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Application 13/286,129
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
REVERSED
37 C.F.R. $ 41.50(b)
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