Ex Parte Pegg

Board of Patent Appeals and Interferences

Sep 26, 2008

10734883 (B.P.A.I. Sep. 26, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JEFFRY A. PEGG
__________

Appeal 2008-3479
Application 10/734,883
Technology Center 3700
__________

Decided: September 26, 2008
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a putter,
which the Examiner has rejected as obvious. We have jurisdiction under 35
U.S.C. § 6(b). We reverse.

Appeal 2008-3479
Application 10/734,883

BACKGROUND
The Specification discloses “putters which, when placed in striking
position, have a vertical center of mass which lies within the horizontal
length of a preferred striking surface on the face of the putter so that the
mass of the putter is substantially balanced with regard to the vertical axis of
the putter head” (Spec. 1).
DISCUSSION
1. CLAIMS
Claims 1-8 are pending and on appeal. Claims 1 and 6 are the only
independent claims and read as follows:
1. A putter comprising:
(a) a putter head having a first mass and defining a
bottom face, a top face and a striking face which defines a horizontal axis
and which extends in a substantially vertical plane from said bottom face
toward said top face and extends at least about four inches in a plane
substantially parallel with said horizontal axis to define a preferred striking
area approximately centrally located on said striking face and extending a
distance of approximately one inch in each direction horizontally from the
horizontal mid-point of said striking face; and
(b) a shaft having a second mass and extending from
the top face of said putter at an angle of from about 8º to about 25º from
vertical with respect to said horizontal axis supporting a grip on the end
thereof remote from said putter head and aligned so that the vertical center
of mass of the putter lies within the horizontal length of said preferred
striking area.

6. A putter comprising;
(a) a putter head having a toe end, a heel end, a
bottom face, a top face and a striking face which defines a preferred striking
area approximately centrally located on said striking face and extending
approximately one inch in each direction horizontally from the horizontal
midpoint of said striking face;
2
Appeal 2008-3479
Application 10/734,883

(b) a shaft extending from said top face of said putter
head at a position between said horizontal midpoint and said toe end at an
angle of from about 8º to about 25º from vertical wherein said putter head
and said shaft are arranged and weighted to align the vertical center of mass
thereof within the horizontal length of said preferred striking area.

Thus, both of the independent claims (and therefore all of the pending
claims) require the claimed putter to have a shaft that extends from the top
of the putter head “at an angle of from about 8° to about 25° from vertical”
and to have a vertical center of mass that lies within a preferred striking area
that extends approximately one inch in each direction from the horizontal
midpoint of the striking face of the putter head.
2. OBVIOUSNESS: KITABAYASHI AND CHANDLER
Claims 1-4, 6, and 7 stand rejected under 35 U.S.C. § 103 as obvious
in view of Kitabayashi1 and Chandler2 (Ans. 4). The Examiner finds that
Kitabayashi discloses a putter having a shaft that extends from the putter
head at an angle of 23.5° from vertical but does not disclose that the vertical
center of mass lies within the preferred length of the striking area (id.).
The Examiner finds that Chandler “discloses a putter having a putter
head and a shaft with grip wherein the vertical center of mass lies within the
preferred length of the striking area” (id. at 5), and concludes that “[o]ne
having ordinary skill in the art would have found it obvious to have the
vertical center of mass within the preferred striking area, as taught by

1 Kitabayashi, JP 2003-117033, published April 22, 2003. Our citations are
to the English-language translation of record.
2 Chandler, III, U.S. Patent 6,152,832, issued Nov. 28, 2000.
3
Appeal 2008-3479
Application 10/734,883

Chandler, III, in order to promote natural pendulum movement of the arm”
(id.).
Appellant argues that “[n]othing in Kitabayashi discloses or suggests
that the components of the putter must be arranged so that the vertical center
of mass of the entire putter lies within the horizontal length of the preferred
striking area” (App. Br. 14). Appellant argues that replacing Kitabayashi’s
shaft with Chandler’s shaft would produce a putter lacking the angled shaft
recited in the instant claims, and would “destroy the mode of operation of
the Kitabayashi putter” (id. at 15). Appellant also argues that the
rejection is based solely on the Examiner’s assumptions . . . that
inclined but vertically mass balanced shafts could be substituted
for non-vertically mass balanced shafts because Chandler
shows a vertically aligned shaft. . . . The sole basis for making
such assumption is the Examiner’s belief that the prior art could
be modified to produce the invention even though there is no
such teaching or suggestion in the art.
(Id. at 19.)
We agree with Appellant that the Examiner has not adequately
established that Kitabayashi and Chandler would have made obvious the
putter defined by independent claims 1 and 6. Kitabayashi discloses a putter
having a shaft at an angle of 23.5° from vertical, apparently because this is
the angle at which the Earth’s axis of rotation is tilted. See Kitabayashi,
¶0005 (“[T]his invention is named an ‘axis putter’ . . . in order to express
having made shaft inclination of a putter into the include angle of 23.5
degrees as well as the earth’s rotation axis tilt.”). The Examiner does not
point to any disclosure in Kitabayashi that the angle of the shaft has any
functional significance.
4
Appeal 2008-3479
Application 10/734,883

Chandler discloses a “putter for use with a one-handed, modified,
croquet-style putting stroke” (Chandler, abstract), “in which the player
stands with both feet on one side of the target line and faces the target” (id.
at col. 2, ll. 11-12). Chandler’s putter comprises a putter head, a connector
portion connected to the putter head, a straight portion connected to the
connector portion, and a grip at the end of the straight portion (id. at Fig. 3).
Chandler teaches that the straight portion must have a length of at
least eighteen inches and must diverge at least 10° from the vertical plane of
the target line; both properties are required to comply with the rules of golf
(id. at col. 10, ll. 37-48). Chandler teaches that the connector portion can be
no more than five inches long (id. at col. 10, ll. 38-39) but it “may be of any
acceptable configuration” (id. at col. 7, ll. 4-5).
Chandler teaches that the putter is designed such that the center of
mass of the putter head is vertically aligned with the putter’s grip in the
normal address position (id. at col. 8, ll. 45-47). Because the shaft of the
putter is not vertically symmetrical, “the weight of shaft 30 will cause
Cg, putter [i.e., the center of mass of the putter overall] to be located leftward
and higher than Cg, head [i.e., the center of mass of the putter head]” when
viewed from the front (id. at col. 8, ll. 55-58). Chandler teaches, however,
that “putter head 20 can be designed so that Cg, putter is substantially vertically
aligned with the geometric center of face 22 of putter head 20” (id. at col. 8,
ll. 59-61).
Chandler states that the modified croquet-style stroke allowed by the
disclosed putter is more effective than a traditional putting stroke because
“the player may simultaneously address the putt and execute the stroke from
5
Appeal 2008-3479
Application 10/734,883

a position that permits both eyes to focus on the target” (id. at col. 2, ll. 14-
16).
Chandler also discloses that “to execute a stroke with a path along the
target line . . . using a traditional putting stance and stroke requires a
complex combination of multi-axis rotational movements” (id. at col. 3, ll.
19-22). Chandler’s putter, by contrast, “is balanced such that the center of
the putter face naturally hangs substantially directly below the player’s
shoulder joint. This balance, along with the one-handed stroke, allows the
player to swing the putter around only one pivot point, his or her shoulder
joint, in a single plane that contains the intended target line.” (Id. at col. 4,
l. 64 to col. 5, l. 2.)
Chandler teaches that “[w]hen swinging the [disclosed] putter, the
player swings his or her arm in a natural manner similar to the manner in
which the arms swing while walking. This type of pendulum motion within
a plane containing the target line maximizes the chances that the putter face
will be aligned perfectly with the target line at impact.” (Id. at col. 5, ll. 5-
10.)
We agree with Appellant that the Examiner has not adequately shown
that the putter of the appealed claims would have been obvious in view of
Kitabayashi and Chandler. Kitabayashi discloses a putter having the angled
shaft recited in the claims, but does not disclose that the precise angle of the
shaft has any functional significance. Chandler discloses a putter having an
overall vertical center of mass that can be (but does not have to be) aligned
with the center of the face of the putter head. Chandler also states that the
6
Appeal 2008-3479
Application 10/734,883

disclosed putter can be used with a pendulum motion similar to swinging
one’s arms while walking, which allows for a more accurate stroke.
Chandler does not, however, state that it is by virtue of having the
vertical center of mass of the overall putter aligned with the center of the
putter face that the putter can be used with a natural pendulum movement of
the arm. Rather, the ability to use a natural pendulum movement appears to
be a consequence of the features of the putter overall, which, combined,
allow the putter to be used with a one-handed croquet-style stroke. This
conclusion is strengthened by Chandler’s disclosure that having the vertical
center of mass of the overall putter aligned with the center of the putter face
is not a necessary feature of the disclosed putter. See Chandler, col. 8, ll.
52-58, and claim 1.
Therefore, we do not agree with the Examiner’s conclusion that a
person of ordinary skill in the art would have considered it obvious to
modify Kitabayashi’s putter in such a way as to put the vertical center of
mass within the preferred striking area “in order to promote natural
pendulum movement of the arm” (Ans. 5). The Examiner has provided no
other rationale for why those skilled in the art would have combined the
recited properties of the putters disclosed by Kitabayashi and Chandler, such
that a putter within the scope of claims 1 and 6 would have resulted.
While the analysis under 35 U.S.C. § 103 allows flexibility in
determining whether a claimed invention would have been obvious, KSR
Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741 (2007), it still requires
showing that “there was an apparent reason to combine the known elements
in the fashion claimed by the patent at issue.” Id. “We must still be careful
7
Appeal 2008-3479
Application 10/734,883

not to allow hindsight reconstruction of references to reach the claimed
invention without any explanation as to how or why the references would be
combined to produce the claimed invention.” Innogenetics, N.V. v. Abbott
Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008).
We conclude that the Examiner has not made out a prima facie case
that the product of independent claims 1 and 6 would have been obvious to a
person of ordinary skill in the art based on Kitabayashi and Chandler.
Claims 2-4 and 7 depend on either claim 1 or claim 6 and therefore
incorporate their limitations. We reverse the rejection of claims 1-4, 6, and
7 under 35 U.S.C. § 103 based on Kitabayashi and Chandler.
2. OBVIOUSNESS: KITABAYASHI, CHANDLER, AND REDMAN
Claims 5 and 8 stand rejected under 35 U.S.C. § 103 as obvious in
view of Kitabayashi, Chandler and Redman.3 The Examiner relies on
Kitabayashi and Chandler as discussed above, and cites Redman for
suggesting a marker on the top face of the putter head, as recited in claims 5
and 8 (Ans. 5).
For the reasons discussed above, we conclude that the Examiner has
not adequately shown that the putter defined by the independent claims
would have been obvious based on Kitabayashi and Chandler. The
Examiner’s reliance on Redman to meet the limitations of dependent claims
does not remedy the deficiency in the combination of Kitabayashi and
Chandler. We therefore reverse the rejection of claims 5 and 8 for the
reasons discussed above with respect to claims 1-4, 6, and 7.

3 Redman, U.S. Patent 1,631,504, issued June 7, 1927.
8
Appeal 2008-3479
Application 10/734,883

2. OBVIOUSNESS: REDMAN AND CHANDLER
Claim 1 stands rejected under 35 U.S.C. § 103 as obvious in view of
Redman and Chandler (Ans. 6). The Examiner finds that Redman teaches a
putter having a shaft extending from the putter head “at an angle of 65
degrees (25 degrees from a vertical axis with respect to the horizontal axis)”
but does not disclose that the vertical center of mass lies in the preferred
striking area (Ans. 6).
The Examiner finds that Chandler “discloses a putter having a putter
head and a shaft with grip wherein the vertical center of mass lies within the
preferred length of the striking area” (id. at 6), and concludes that “[o]ne
having ordinary skill in the art would have found it obvious to have the
vertical center of mass within the preferred striking area, as taught by
Chandler, III, in order to reduce twisting and to promote natural pendulum
movement of the arm” (id.).
We will reverse this rejection. The Examiner relies on the same
reasoning as a basis for combining Redman and Chandler as he relied on for
combining Kitabayashi and Chandler. For the reasons discussed above, we
conclude that the Examiner has not adequately established that a person of
ordinary skill in the art would have considered it obvious to modify
Redman’s putter in such a way as to put the vertical center of mass within
the preferred striking area “in order to reduce twisting and to promote
natural pendulum movement of the arm” (Ans. 6).
Since the Examiner has not provided any other reason for combining
the recited properties of the putters disclosed by Redman and Chandler, such
that a putter within the scope of claim 1 would have resulted, he has not
9
Appeal 2008-3479
Application 10/734,883

shown prima facie obviousness. The rejection of claim 1 under 35 U.S.C.
§ 103 based on Redman and Chandler is reversed.

SUMMARY
We reverse all of the rejections on appeal.

REVERSED

Ssc:

JACK A. KANZ
502 SO. COTTONWOOD DRIVE
RICHARDSON, TX 75080
10