Ex Parte PEGG

Board of Patent Appeals and Interferences

Mar 13, 2003

09393374 (B.P.A.I. Mar. 13, 2003)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JEFFRY A. PEGG
__________
Appeal No. 2002-1163
Application 09/393,374
___________
HEARD: March 4, 2003
___________
Before ABRAMS, FRANKFORT, and NASE, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 14, all of the claims pending in
this application.
Appellant’s invention relates to a putter used in the game
of golf which may be placed in striking position on a golf green
Appeal No. 2002-1163
Application 09/393,374
2
adjacent the golf ball to be struck and remain standing in
striking position without external support so that the user may
view alignment of the putter face with respect to the cup, the
ball and topography of the green from positions removed from the
location of the putter. Claims 1 and 6 are representative of the
subject matter on appeal and a copy of those claims, as they
appear in the Appendix to appellant’s brief, is attached to this
decision.
The prior art references of record relied upon by the
examiner as evidence of obviousness of the claimed subject matter
are:
Richilano 4,173,343 Nov. 6, 1979
Evans 5,282,622 Feb. 1, 1994
Hannon et al. (Hannon) 5,290,035 Mar. 1, 1994
Turner 5,855,525 Jan. 5, 1999
Claims 1 through 14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Evans in view of Turner, Richilano and
Hannon. According to the examiner (answer, pages 4-5), Evans
addresses a self standing putter substantially as claimed except
that this patent does not show or disclose the specific
limitations for putter head weight, shaft weight, and grip
Appeal No. 2002-1163
Application 09/393,374
3
weight, as well as height, length, and width of the putter head
elements, namely the striking face and bottom face set forth in
the claims on appeal. To address the above-noted differences,
the examiner looks to Turner (col. 2) for a teaching of putter
heads in the weight range of 10-14 ounces and a putter shaft
weight of 4.1 ounces; Richilano (col. 2) for a teaching of a
putter weighing between 10½ to 18 ounces; and Hannon (col. 3) for
disclosure of a putter head having a weight of approximately 10
ounces (308 grams) and a shaft weight typically of about 3.5
ounces. The examiner then provides the following commentary:
[c]onsidering the collective teachings of Turner, Richilano
and Hannon, it is clear that the appellant’s claimed
dimensions for the putter are not novel. Given the
secondary teachings, it is clear that any number of weight
combinations for the shaft, grip and head are available to
the skilled artisan. The claimed structure of a free-
standing putter having either a generally flat foot surface
or concave foot surface that is wide enough to stabilize the
putter in a free standing configuration is also not novel,
as shown by the primary reference to Evans. To have
modified the Evans device to simply make use of dimensions
that are convenient and well-known for putters would have
been obvious to the skilled artisan at the time of the
invention, the motivation being to simply arrange the weight
of the putter in a manner that not only satisfies the
requirement that the Evans device be self-standing, but also
enables the putter to be balanced, a feature shown many
times over again to be desirable in the art. (See answer
pages 4-5)
Appeal No. 2002-1163
Application 09/393,374
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Reference is made to the examiner's answer (Paper No. 9,
re-mailed September 6, 2001) for the full reasoning in support of
the above-noted rejection and to appellant’s brief (Paper No. 8,
filed August 6, 2001) and reply brief (Paper No. 11, filed
October 1, 2001) for the arguments thereagainst.
OPINION
Our evaluation of the obviousness issues raised in this
appeal has included a careful assessment of appellant’s
specification and claims, the applied prior art, and the
respective positions advanced by appellant and the examiner. As
a consequence of our review, we have reached the conclusions
which follow.
Before addressing the examiner's rejection based on prior
art, we note that it is an essential prerequisite that the
claimed subject matter be fully understood. Accordingly, we
initially direct our attention to appellant’s independent claims
1 and 6 to derive an understanding of the scope and content
thereof.
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Application 09/393,374
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Independent claim 1 is directed to a putter comprising,
inter alia, a putter head having a mass of “about fourteen
ounces” and a shaft extending from the top surface of the putter
head. Claim 1 further defines the putter shaft as extending from
the top surface of the putter head at an angle of from “about 10°
to about 25°” from vertical and sets forth that the shaft and
grip thereon have “a combined mass of less than about three (3)
ounces.” Claim 6 is likewise directed to a putter comprising,
inter alia, a putter head having a mass of “about fourteen
ounces” and a shaft extending from the top surface of the putter
head. Claim 6 includes the added limitations that the putter
head defines a bottom face, a top face and a striking face, with
the striking face extending “about four inches in a substantially
horizontal plane to define a horizontal axis” and that the foot
surface of the putter lies in a plane substantially normal to the
vertical plane of the striking face and “defines an area of at
least about eight square inches.” It is significant to note that
neither of appellant’s independent claims before us on appeal
specifically sets forth that the putter is free standing or has
any such capability.
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Application 09/393,374
6
As our reviewing Court has indicated in Seattle Box Co.,
Inc. v. Industrial Crating & Packing, Inc, 731 F.2d 818, 826 221
USPQ 568, 574 (Fed. Cir. 1984), when words of degree are used in
the claims we must determine whether the specification provides
some standard for measuring the degree and whether one of
ordinary skill in the art would understand what is claimed when
read in light of the specification. Thus, in attempting to
discern what constitutes a putter head having a mass of "about
fourteen ounces," a striking face which “extends about four
inches,” a foot surface that defines an area of “at least about
eight square inches,” and a shaft extending from the top face of
the putter head at an angle of from “about 10° to about 25°,”
wherein the shaft and grip thereon have a combined mass of “less
than about three (3) ounces,” we have turned to appellant’s
specification to see if a standard for measuring the various
stated matters of degree are provided therein. However, after a
careful review, we find nothing in the specification to give us
guidance in clearly understanding the language in question.
While the specification, e.g., at pages 2 and 3, indicates
that the putter of the present invention is weighted, balanced
and aligned to provide a balanced pendulum motion and to permit
Appeal No. 2002-1163
Application 09/393,374
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the putter to remain free standing when the bottom face of the
putter is placed on the green in the striking position, the
remainder of the specification, e.g., at pages 4 through 7,
provides no clear indication of exactly how these results are to
be achieved, since the specification merely uses the same type of
open-ended language as appears in the claims presently on appeal.
For example, page 5 of the specification indicates that the
putter head (10) of Fig. 2 will remain free standing so long as
the mass of the head is “at least about fourteen (14) ounces and
the combined mass of the shaft and grip is less than about three
(3) ounces.” Page 6 indicates that in the preferred embodiment
the bottom face is flat and defines a foot surface that is “about
four (4) inches long” and of “about eight (8) square inches.”
At this point, we again note that the claims on appeal do
not require that the claimed putter be free standing or have that
capability. Thus, it is clear that a claimed putter having a
head weight of “about fourteen ounces,” a shaft and grip weight
of “less than about three (3) ounces,” a shaft extending from the
top surface of the head at an angle of “about 10° to about 25°”
from vertical, and having a foot surface area of “at least about
eight square inches” need not necessarily be free standing.
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Application 09/393,374
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Thus, given the open-ended nature of the claims on appeal and the
multiple terms of degree or ambiguous ranges set forth in each of
those claims, we have no basis for precisely determining the
metes and bounds of the claimed subject matter.
As examples of our difficulty in understanding the scope of
the presently claimed subject matter, we note that Turner (col.
2, lines 4-6) discloses a putter head having a weight of 12
ounces (i.e., 18 x 2/3), while Hannon discloses (col. 3, lines
35-38) a typical shaft weight for a putter of about 3.5 ounces.
When questioned at the oral hearing held on March 4, 2003,
appellant’s counsel was unable to say with any degree of
certainty whether these parameters associated with putters in the
prior art fell within the metes and bounds of the claims on
appeal. Given the ambiguity of the multiple ranges in the claims
on appeal and lack of any precise guidance in the specification,
we conclude that the scope and content of claims 1 and 6 are
indefinite. Since claims 2 through 5 on appeal depend from claim
1 and claims 7 through 14 depend from claim 6, they too suffer
from the same indefiniteness.
Appeal No. 2002-1163
Application 09/393,374
9
Under the provisions of 37 CFR 1.196(b), we enter the
following new ground of rejection against appellant’s claims 1
through 14:
Claims 1 through 14 are rejected under 35 U.S.C. § 112,
second paragraph, for the reasons explained above, as being
indefinite for failing to particularly point out and distinctly
claim that which appellant regards as the invention.
Turning to the examiner's rejection of the appealed claims
under 35 U.S.C. 103(a) based on Evans in view of Turner,
Richilano and Hannon, we again point out that the claims before
us contain unclear language which renders the subject matter
thereof indefinite for reasons stated supra as part of our new
rejection under 35 U.S.C. § 112, second paragraph. Accordingly,
we find that it is not possible to apply this prior art to these
claims in deciding the question of obviousness under 35 U.S.C.
§ 103 without resorting to considerable speculation and
conjecture as to the meaning of the questioned limitations in the
claims. This being the case, we are constrained to reverse the
examiner's rejection of claims 1 through 14 under 35 U.S.C.
103(a) in light of the holding in In re Steele, 305 F.2d 859,
Appeal No. 2002-1163
Application 09/393,374
1 As mere guidance to the examiner and appellant, we note
that it would appear that if the ambiguity of the multiple ranges
set forth in the claims on appeal were to be eliminated, i.e, by
reciting in claim 1 a self standing putter having a putter head
having “a mass of fourteen ounces” and a shaft and grip having a
combined mass of “less than three ounces,” and in claim 6 a self
standing putter having a putter head having “a mass of fourteen
ounces,” a striking face which “extends four inches in a
substantially horizontal plane,” and a foot surface on the putter
head which defines an area of “at least eight square inches,”
then the claims would define over the prior art currently applied
by the examiner, since that prior art provides no teaching or
suggestion for selecting the specific multiple parameters of
claims so amended. Further in that regard, it does not appear to
us that the examiner has even attempted to specifically address
the angle of the putter shaft in appellant’s claims in the
rejection set forth on appeal. As an additional point, we note
that the examiner’s apparent attempt to introduce a new ground of
rejection in the examiner’s answer (page 7) is entirely improper.
10
862, 134 USPQ 292, 295 (CCPA 1962). We hasten to add that this
reversal of the examiner's rejection is not based on the merits
of the rejection, but only on technical grounds relating to the
above-noted indefiniteness of the appealed claims.1
Based on the foregoing, the examiner's rejection under
35 U.S.C. § 103(a) of the appealed claims has been reversed for
technical reasons. A new ground of rejection of claims 1 through
14 under 35 U.S.C. § 112, second paragraph, has been added
pursuant to 37 CFR § 1.196(b).
Appeal No. 2002-1163
Application 09/393,374
11
This decision contains a new ground of rejection pursuant to
37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final rule
notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203 Off.
Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR
§ 1.196(b) provides that, “A new ground of rejection shall not be
considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that 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 proceedings (§ 1.197(c)) as to
the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 2002-1163
Application 09/393,374
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED, 37 CFR § 1.196(b)
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
CEF:pgg
Appeal No. 2002-1163
Application 09/393,374
13
Jack A. Kanz
502 So Cottonwood Drive
Richardson, TX 75080
Appeal No. 2002-1163
Application 09/393,374
14
Appendix
1. A putter comprising:
(a) a putter head having a mass of about fourteen ounces
defining a bottom face, a top face and a striking face which
extends in a substantially vertical plane from said bottom face
toward said top face and defines a horizontal axis; and
(b) a shaft extending from the top face of said putter
head at an angle of from about 10° to about 25° from vertical
with respect to said horizontal axis having a grip adjacent the
end opposite said putter head, said shaft and said grip having a
combined mass of less than about three (3) ounces.
6. A putter comprising:
(a) a putter head having a mass of about fourteen ounces
defining a bottom face, a top face and a striking face which
extends in a substantially vertical plane from said bottom face
toward said top face and extends about four inches in a
substantially horizontal plane to define a horizontal axis;
(b) a foot surface on said putter head which lies in a
plane substantially normal to the vertical plane of said striking
face and defines an area of at least about eight square inches;
and
(c) a shaft extending from the top face of said putter
head.