Ex Parte ONUKI et alDownload PDFPatent Trials and Appeals BoardMay 28, 201914947635 - (D) (P.T.A.B. May. 28, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/947,635 11/20/2015 2292 7590 05/30/2019 BIRCH STEW ART KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East Falls Church, VA 22042-1248 FIRST NAMED INVENTOR Masahide ONUKI 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. 0229- l 480PUS 1 9668 EXAMINER PIERCE, WILLIAM M ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 05/30/2019 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): mailroom@bskb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASAHIDE ONUKI and YUKI MOTOKA WA Appeal2018-006199 Application 14/947,635 Technology Center 3700 Before STEFAN STAICOVICI, JEREMY M. PLENZLER, and SEAN P. O'HANLON, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner's Decision rejecting claims 1-3 and 5-13. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM and designate a NEW GROUND OF REJECTION in accordance with 37 C.F.R. § 41.50(b). Appeal2018-006199 Application 14/947,635 CLAIMED SUBJECT MATTER Claims 1 and 12 are independent. Claims 2, 3, and 5-11 depend from claim 1 and claim 13 depends from claim 12. Claim 1 is reproduced below: 1. A golf club head comprising: a face portion having a club face for hitting a ball, wherein the face portion has a layered structure compnsmg: a surficial layer for contacting with a ball made of a metal material, and having a thickness between 0.1 mm to 1.0 mm; an intermediate elastic layer composed of a material having a Young's modulus no greater than 1 GPa and disposed internally of the surficial layer; and a back support layer made of a metal material disposed inside the intermediate elastic layer, wherein in a front view of the club head, the intermediate elastic layer includes a center of the club face, and wherein an edge surface of the intermediate elastic layer is at least partially exposed at the outer surface of the club head. REJECTIONS 1. Claims 1-3 and 5-13 are rejected under 35 U.S.C. § 112(a), as failing to comply with the enablement requirement. 1 2. Claims 1-3 and 5-13 are rejected under 35 U.S.C. § 112(a), as failing to comply with the written description requirement. 1 The Examiner provides an enablement rejection for claims 1-3 and 5-13 based on limitations found in independent claims 1 and 12 (Final Act. 5), and a separate enablement rejection for additional limitations found in claims 10 and 11 (id. at 2--4). 2 Appeal2018-006199 Application 14/947,635 3. Claims 1-3 and 5-13 are rejected under 35 U.S.C. § I03(a) as being unpatentable over Wright (US 7,086,961 B2, issued Aug. 8, 2006) and Snyder (US 2010/0087269 Al, published Apr. 8, 2010). 2 OPINION Written Description Claims 1 and 12 recite that the face portion of the golf club head has an intermediate elastic layer composed of "a material having a Young's modulus no greater than 1 GPa." The Examiner rejects claims 1 and 12, as well as claims 3---6 and 12-20 depending therefrom, under 35 U.S.C. § 112(a), as failing to comply with the written description requirement. Final Act. 5 ( explaining that "a range from O to 1 GP a ... is [not] disclosed"). "The test for the sufficiency of the written description '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."' Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 682 (Fed. Cir. 2015) (quoting Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane)). The Examiner has the initial burden of presenting evidence of reasons why persons skilled in the art would not recognize, in the disclosure, a description of the invention defined by the claims. In re Wertheim, 541 F .2d 257, 263 (CCP A 197 6). That burden is met when the Examiner points out that the claim reads on embodiments outside the scope of the original written description. Id. That burden is also met when the written description reflects that the invention is 2 Although listed in the rejection, claim 4 is no longer pending, as it was cancelled in the amendment submitted on February 27, 2017. 3 Appeal2018-006199 Application 14/947,635 no broader than what is disclosed in the specification, such as distinguishing over the broader disclosure. See Tronzo v. Biomet, Inc., 156 F .3d 1154, 1159 (Fed. Cir. 1998). The initial burden has been met in this case. As noted above, the Examiner explains that the claims read on embodiments outside the scope of the written description, and Appellant's Specification makes clear that "it is desirable that the Young's modulus ... is set in a range of not less than 10 MPa, more preferably not less than 50 MPa, still more preferably not less than 140 MPa." Spec. 11-12. Appellant does not respond in any meaningful way to this rejection. See Appeal Br. 8 (simply alleging that "the present application adequately discloses and enables 'a material having a Young's modulus no greater than 1 GPa"' without further explanation). 3 Accordingly, we are not apprised of Examiner error, and sustain the Examiner's decision to reject claims 1-3 and 5-13 under 35 U.S.C. § 112(a), as failing to comply with the written description requirement. Enablement The Examiner additionally rejects claims 1-3 and 5-13 under 35 U.S.C. § 112(a), as failing to comply with the enablement requirement. Final Act. 5. This rejection is also based on the recitation in claims 1 and 12 that the face portion of the golf club head has an intermediate elastic layer composed of "a material having a Young's modulus no greater than 1 GP a," discussed above with respect to the written description rejection. The claimed invention must be enabled so that any person skilled in the art can make and use the invention without undue experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). 3 Appellant did not file a Reply Brief. 4 Appeal2018-006199 Application 14/947,635 When rejecting a claim for lack of enablement, the Examiner bears the initial burden of setting forth a reasonable explanation as to why the scope of protection provided by the claim is not enabled adequately. In re Wright, 999 F.2d 1557, 1561---62 (Fed. Cir. 1993). The Examiner makes no attempt to explain why it would require undue experimentation for one of ordinary skill in the art to make and/or use the invention. Final Act. 5; Ans. 8. For example, the Examiner does not address any of the Wands factors. See Wands, 858 F.2d at 737. Accordingly, we do not sustain the Examiner's decision to reject claims 1-3 and 5-13 as lacking enablement based on the Young's Modulus value range recited in claims 1 and 12. The Examiner additionally rejects claims 10 and 11 as failing to comply with the enablement requirement. Final Act. 2--4. Claim 10 depends from claim 1 and recites that "a natural frequency fc in a primary mode of the club head when supported or fixed at the center of the club face is 800 to 1600 Hz." Claim 11 also depends from claim 1 and recites that a ratio feg/fc is 1.0 to 1.3, wherein fc is a natural frequency in a primary mode of the club head when supported or fixed at the center of the club face, and feg is a natural frequency in a primary mode of the club head when supported or fixed at a position in a peripheral edge portion of the club face. The Examiner explains that undue experimentation is required to make and use the invention recited in claims 10 and 11 because the number of variables affecting the natural frequency is great and the resulting experimentation required is unreasonable. See Final Act. 3. Appellant does not dispute the Examiner's characterization of the difficulty one skilled in the art would face when attempting to create a golf 5 Appeal2018-006199 Application 14/947,635 club head with the natural frequency features recited in claims 10 and 11. Rather, Appellant faults the Examiner for not analyzing the Wands factors in detail. Appeal Br. 7. The extent of the explanation provided by Appellant as to the experimentation required is a general statement that "the present specification, on pages 18 and 19, explains the procedure for producing the claimed natural frequency, which includes 'changing the Young's modulus and/or the thickness of the intermediate elastic layer 9. "' Id. The portion of the Specification cited by Appellant simply states that "natural frequency can be obtained by a modal analysis on the club head," provides a generic test set-up ("a position in the club face is supported or fixed" when vibrating the club head to obtain an eigenmode) and finite element analysis ( obtaining an eigenmode using a computer model/simulation), generally, as options for that modal analysis, and notes that "the natural frequency in a primary mode of the club head 1 is adjusted by mainly changing the Young's modulus and/ or the thickness of the intermediate elastic layer 9." Spec. 18-19. In the Answer, the Examiner responds to Appellant's contentions, including a response to Appellant's request for a more detailed explanation. See Ans. 2-7. The Examiner explains that Appellant "does not show how one skilled in the art would ... know ... where to start making a club head" because of the large number of "factors [that] are known variables that will have an effect on the natural frequency of the club head." Id. at 4. The Examiner explains that such factors include, for example, "whether to configure [the club head] as a putter, an iron or a drive type head ... what materials, what shapes, whether the club were hollow or solid, how the hosel is to be shaped or attached and so forth." Id. Based on this explanation, the Examiner determines that "[ o ]ne skilled in the art would have to build an[] 6 Appeal2018-006199 Application 14/947,635 infinite number of clubs and test them by some undefined test to determine if they meet the claim," which "is clearly unreasonable." Id. Appellant does not address that explanation. Based on the record before us, the Examiner has met the initial burden to explain why it would require undue experimentation for one of ordinary skill in the art to make and/ or use the invention. Without further response from Appellant, we are not apprised of Examiner error, and sustain the Examiner's decision to reject claims 10 and 11 under 35 U.S.C. § 112(a), as failing to comply with the enablement requirement. Obviousness Appellant argues claims 1-3 and 5-13 as a group. Appeal Br. 8-11. We select claim 1 as representative. Claims 2, 3, and 5-13 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds, and Appellant does not dispute, that Wright teaches the majority of the features recited in claim 1, but "does not disclose thicknesses or Young's modulus values." Final Act. 5 (internal quotations omitted). The Examiner explains that it would have been "obvious to have selected a thick[n]ess between .1- 1 [.]0mm ... and a Young's modulus between 10 MPa-lGPa" as "an obvious matter of selecting a material suitable to obtain the desired performance characteristics of the golf club." Id. Simply stated, the Examiner reasons that "[t]o have selected the thickness range and elasticity no greater than 1 GP A would have been obvious in order to adjust the performance of the club head as desired as a matter of design choice." Id. at 6. In the Answer, the Examiner additionally asserts routine optimization (Ans. 9-10), and also explains that "[a]djusting the materials, size and shape 7 Appeal2018-006199 Application 14/947,635 to achieve a preferred performance is known in golf as shown in appellant's fig. 6 to achieve a 'suitable feedback' desired" (id. at 14). The Examiner cites Snyder as evidence of known parameters affecting the feel of a club upon impact with a golf ball. Id.; see also Final Act. 7. Appellant disputes that selection of these parameters is simply design choice. Appeal Br. 10. Appellant's contentions are based on an understanding that the sole basis for the rejection is "that the claimed thickness range and elasticity would be obvious as a matter of design choice." Id. Appellant did not file a Reply Brief, and, therefore, did not address the Examiner's determination that these are result effective variables that would have been obvious via routine optimization. Notably, however, there is no finding made by the Examiner that the value of the Young's modulus for the intermediate elastic layer is a result-effective variable. See In re Antonie, 559 F .2d 618, 621 (CCP A 1977). We agree with the Examiner that the values for the thickness of the surficial layer, as well as the Young's modulus value for the intermediate elastic layer, would have been obvious to one skilled in the art in view of the combined teachings of Wright and Snyder. Because we provide additional explanation below and provide additional evidence to support that explanation, we designate our affirmance as a new ground of rejection. Wright and Snyder both recognize that "feel" (i.e., vibration propagation) is an important parameter in golf club design, and the use of inserts with varying geometries and materials can control the "feel." See, e.g., Wright, 1 :21-24; Snyder ,r,r 6-7, 85-89. Wright explains, for example, that "[t]his frequency response, and if desired other relevant characteristics of the insert, may be specified a priori by proper selection of plate 102, 8 Appeal2018-006199 Application 14/947,635 damper 104, and mass 106." Wright, 3:9-12. Like Wright, Snyder includes an insert for a putter have "a surficial layer for contacting with a ball" (metal plate 1720) and "an intermediate elastic layer" (polymer material 1730). Snyder ,r,r 85-86. Snyder explains that "[t]his combination of metal and polymer materials on the ball striking face may provide improved performance of the golf club including softer feel, increased spin rate, more true roll, a more metallic ball striking sound, etc." Id. ,r 86. One skilled in the art would have found it obvious to vary the parameters of the corresponding layers in Wright based on the teachings from Snyder noted above in order to achieve the improved performance noted in both Wright and Snyder. Although Wright does not provide much guidance as to the particular thickness of its plate 102, Snyder provides guidance as to the parameter values for the thickness of front plate portion, such as 1 millimeter to 4 millimeters (id. ,r 85), the lower end of which matches the upper limit of 1 millimeter recited in the claim. Snyder also provides various examples of the type of polymeric material for its intermediate layer, such as polyurethanes (id. ,r 140). Wright, itself, provides the same example for the material of its damper 104. See Wright, 4:28-30 ("Damper 104 may include, for example, a sheet of damping material such as ... polyurethane."). Polyurethanes are known to have a modulus of elasticity within the range recited in the claim (i.e., less than 1 GPa). See MatWeb Material Property Data, 9 Appeal2018-006199 Application 14/947,635 http://matweb.com/ search/DataSheet.aspx?MatGUID=2fe7 82a31 c4 b4bed9 8 4b49651762b086 (last visited May 21, 2019). Based on the combined teachings of Wright and Snyder, we are persuaded that one skilled in the art would have found it obvious to have "a thickness between 0.1 mm to 1.0 mm" for Wright's plate 102 and "a Young's modulus no greater than 1 GPa" for Wright's damper 104 in order to achieve a desired "feel" for the golf club. Accordingly, we sustain the Examiner's decision to reject claims 1-3 and 5-13 as unpatentable under 35 U.S.C. § 103, but designate that affirmance as a new ground of rejection. DECISION We AFFIRM the Examiner's decision to reject claims 1-3 and 5-13 under 35 U.S.C. § 112(a), as failing to comply with the written description requirement. We REVERSE the Examiner's decision to reject claims 1-3 and 5-13 under 35 U.S.C. § 112(a), as failing to comply with the enablement requirement. We AFFIRM the Examiner's decision to reject claims 10 and 11 under 35 U.S.C. § 112(a), as failing to comply with the enablement requirement. We AFFIRM the Examiner's decision to reject claims 1-3 and 5-13 as unpatentable under 35 U.S.C. § 103. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 4I.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM 10 Appeal2018-006199 Application 14/947,635 THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds 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 proceeding will be remanded to the examiner. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure§ 1214.01. AFFIRMED; 37 C.F.R. § 4I.50(b) 11 Copy with citationCopy as parenthetical citation