Ex Parte Olsen

Board of Patent Appeals and Interferences

Dec 6, 2007

10736477 (B.P.A.I. Dec. 6, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES L. OLSEN
____________

Appeal 2007-4026
Application 10/736,477
Technology Center 3711
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Decided: December 6, 2007
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Before THOMAS A. WALTZ, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

WALTZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Primary Examiner’s final rejection of claims 1-5 and 7, and the new ground
of rejection of claim 6.1 Claims 1-7 are the only claims pending in this
application. We have jurisdiction pursuant to 35 U.S.C. § 6(b).
According to Appellant, the invention is directed to a golf tee
accessory for positioning a golf ball at a predetermined height comprising a

1 We note that the Final Office Action dated June 8, 2006, inadvertently
omitted claim 6 from the rejection (Br. 1-2). The Examiner has remedied
this omission by making a new ground of rejection for claim 6 in the Answer
(Ans. 2-3; Reply Br. 1).
Appeal 2007-4026
Application 10/736,477

conventional golf tee with a hollow, cylindrical sleeve member mounted on
and surrounding the upper portion of the tee shaft, where the diameter of the
sleeve member is not greater than the diameter of the cup for receiving the
golf ball at the top of the tee (Br. 2-3). Independent claim 1 is illustrative of
the invention and a copy of this claim is reproduced below:
1. A golf tee-accessory assembly for positioning a golf ball at a
predetermined height, comprising:

a) a golf tee, the golf tee having upper and lower ends and a shaft of
substantially uniform diameter connecting the ends, the upper end having a
cup of a substantially uniform diameter for receiving a golf ball, the lower
end being tapered for insertion into a ground surface; and

b) a hollow, cylindrical sleeve member mounted on and surrounding
an upper portion of the shaft of the tee, the sleeve member having along its
entire length a diameter greater than that of said shaft but not greater than
said diameter of said cup and wall thickness providing, at the lower end of
the sleeve member, a ground-engaging surface surrounding the shaft of the
tee for limiting the depth by which the lower end of the tee’s shaft penetrates
the ground.

The Examiner has relied on the following prior art references as
evidence of obviousness:
Rosetta 5,186,455 Feb. 16, 1993
Lewis 5,571,055 Nov. 5, 1996
Dorfman 6,679,792 B1 Jan. 20, 2004

ISSUES ON APPEAL
Claims 1-4 and 7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Rosetta (Ans. 3).
Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Rosetta in view of Dorfman (Ans. 4).
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Application 10/736,477

Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Rosetta in view of Lewis (Ans. 2 and 4).2
Appellant contends that the Examiner has offered no evidence of a
suggestion or motivation to modify the collar of Rosetta to meet the claimed
limitation of “a diameter less than that of the cup of the tee,” but only relies
on “the knowledge generally available to one of ordinary skill in the art”
(Br. 6). Appellant further contends that the Examiner has not supported this
statement or offered any convincing line of reasoning (Br. 6-7).
Appellant contends that the modification suggested by the Examiner
would impair and ultimately render the collar of Rosetta unsatisfactory for
its intended purpose, namely to protect the tee (Br. 8).
Appellant also presents arguments for the dependent claims 2-6 (Br.
9-10; Reply Br. 2).
The Examiner contends that the suggestion or motivation to modify
the collar disclosed by Rosetta would be general knowledge of one of
ordinary skill in the art, namely that making the collar a smaller size would
provide a less obtrusive member that is easier to carry and transport (Ans. 5
and 7).

2 We note that the rejection of claims 1-5 and 7 under § 112, first paragraph,
has been withdrawn by the Examiner (Ans. 3). The Examiner states that
upon reconsideration and in view of Appellant’s remarks the language
previously objected to “is now seen as being definite” (id.). Since the
original rejection was made for failure to comply with the written
description requirement of the first paragraph of § 112, we presume that the
Examiner inadvertently used the word “definite,” which is a requirement of
the second paragraph, but meant that the claims now meet the requirements
of the first paragraph (Final Office Action dated June 8, 2006, page 2).
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The Examiner also contends that it is well settled that a mere
difference in size or proportions would have been within the ordinary skill in
the art, absent a showing of criticality (Ans. 5-7).
The Examiner further contends that modifying the collar disclosed by
Rosetta would not keep it from its intended purpose (Ans. 7-8).
Accordingly, we determine that the issues presented from the record
in this appeal are as follows: (1) Has Appellant established that the
Examiner failed to identify a convincing reason for modifying the collar of
Rosetta; and (2) Has Appellant established that modification of the collar
disclosed by Rosetta would result in a collar unsatisfactory for its intended
purpose?
We determine that the Examiner has established a prima facie case of
obviousness in view of the reference evidence, which prima facie case has
not been adequately rebutted by Appellant’s arguments. Therefore, we
AFFIRM all grounds of rejection presented in this appeal essentially for the
reasons stated in the Answer, as well as those reasons set forth below.
OPINION
We determine the following Factual Findings (FF) from the record in
this appeal:
(1) Rosetta discloses a conventional tee, including upper and lower
ends and a shaft of substantially uniform diameter connecting the
ends, the upper end having a cup of substantially uniform diameter
for receiving a golf ball, with the lower end being tapered for
insertion into the ground (Ans. 3; Rosetta, Fig. 1; col. 2, ll. 32-34,
and 37-38);
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Application 10/736,477

(2) Rosetta discloses a hollow cylindrical sleeve that surrounds the
upper portion of the tee, where the sleeve has a diameter greater
than the tee shaft, and provides a ground-engaging surface for
limiting the depth that the tee may be inserted into the ground
(Ans. 3; Rosetta, Figs. 1 and 3; col. 1, ll. 4-8, 58-62; col. 2, ll. 9-
11; and col. 3, ll. 1-6);
(3) Dorfman teaches that it was known in the art to use biodegradable
material for golf tees to enhance disintegration in the natural
environment (Ans. 4; Dorfman, Abstract; col. 1, ll. 8-26, 46-47;
and col. 4, ll. 1-3); and
(4) Lewis discloses golf tee assemblies with features limiting the
depth that the tee can be inserted into the ground, including
multiple variations of the tee assembly for different depths and
golf clubs, color coded for easy identification (Ans. 4-5; Lewis,
Abstract; col. 3, ll. 57-58; and col. 5, ll. 66-67).
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations. See Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966). “[A]nalysis [of
whether the subject matter of a claim is obvious] need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex, Inc., 127
S. Ct. 1727, 1740-41 (2007), quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006). “[I]t is well established that patent drawings do not define the
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precise proportions of the elements and may not be relied on to show
particular sizes if the specification is completely silent on the issue.”
Nystrom v. Trex Co., 374 F.3d 1105, 1116-17 (Fed. Cir. 2004). Where the
only difference between the claimed subject matter and the prior art are
dimensions, these limitations cannot be the basis for patentability unless
applicants show that the chosen dimensions are critical. See In re Woodruff,
919 F.2d 1575, 1578 (Fed. Cir. 1996), citing Gardner v. TEC Sys., Inc., 725
F.2d 1338, 1349 (Fed. Cir. 1984).
Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that the Examiner has established a
prima facie case of obviousness, which prima facie case has not been
adequately rebutted by Appellant’s arguments. As correctly stated by the
Examiner (Ans. 5), we determine that Rosetta discloses a golf tee assembly
as recited in claim 1 on appeal, with the only difference being the perceived
size of the collar or sleeve as disclosed by Rosetta (see FF (1) and (2) listed
above). However, we determine that Appellant is relying on the perceived
size of the sleeve or collar of Rosetta in relation to the cup of the tee (Br. 8).
There is no evidence on this record that the disclosure of Rosetta teaches that
the drawings or figures are to scale, nor does Appellant point to any
disclosure in Rosetta that teaches the size relationship of the collar or sleeve
to the cup of the tee. Therefore, it is inappropriate for Appellant to rely on
the Figures of Rosetta to distinguish the size of the sleeve or collar in this
reference from the claimed subject matter. Furthermore, even assuming
arguendo that the collar or sleeve taught by Rosetta differs in size from the
claimed sleeve, this difference in size cannot be the basis for patentability in
the absence of a showing of criticality. We note that Appellant has not
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alleged nor shown any evidence of criticality, such as unexpected results.
Finally, we also note that the Examiner has identified a reason for any
difference in size between the prior art and claimed sleeves (Ans. 5 and 7),
which reason has not been adequately rebutted by Appellant (Br. 7).
Appellant’s argument that modifying the collar or sleeve of Rosetta
would render it unsatisfactory for its intended purpose (Br. 8) is not
persuasive for the following reasons. First, as discussed above, Appellant
cannot rely on the relative dimensions of the Figures disclosed by Rosetta
without evidence that these Figures were drawn to scale or have some other
relationship disclosed or suggested by the reference. Second, as correctly
argued by the Examiner (Ans. 7-8), even if the size of the sleeve or collar in
Rosetta is larger than the claimed sleeve, modifying the sleeve to a slightly
smaller size would still protect the tee from breakage, with this function
dependent also on the material used for the inner and outer layers of the
collar. This position is supported by Rosetta, who teaches that the length of
the collar, as well as the thickness of the layers forming the collar, can be
varied or adjusted, thus suggesting larger or smaller collars or sleeves
(Rosetta, col. 3, ll. 4-6 and 30-36).
With regard to Appellant’s arguments for the patentability of claims
2-4 (Br. 9), we adopt the Examiner’s response at page 4 of the Answer.
With regard to the argument for claim 5 (Br. 9-10), we determine that
Dorfman clearly suggests making any tee part from biodegradable plastics
for the benefit of the environment (see FF (3) listed above). With regard to
the argument for claim 6 (Reply Br. 2), we determine that Lewis clearly
suggests using color coding for tees with different structure depending on
the depth the tees can be inserted into the ground, and Rosetta teaches the
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similar use of various tee assemblies depending on the depth the tees can be
inserted into the ground (see FF (4) listed above and Rosetta, col. 3, ll. 4-6).
Therefore, we determine that color-coding the various tee assemblies
disclosed by Rosetta would have been well within the ordinary skill in this
art.
For the foregoing reasons and those stated in the Answer, we affirm
all grounds of rejection presented in this appeal. The decision of the
Examiner 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)(1)(iv).
AFFIRMED

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