Ex Parte Penton

Board of Patent Appeals and Interferences

Nov 30, 2009

11225497 (B.P.A.I. Nov. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HUGH V. PENTON
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Appeal 2009-008899
Application 11/225,497
Technology Center 3700
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Decided: November 30, 2009
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Before: WILLIAM F. PATE III, JENNIFER D. BAHR and STEFAN
STAICOVICI, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 9-11. App. Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).

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The claimed subject matter is directed to a golf club having a pitch-
mark repair tool. Claim 9, reproduced below, is representative of the
subject matter on appeal.
9. In combination:
a golf club including a shaft having a hollow
interior, a ball striking head located at one end of the
shaft, a grip surrounding the opposite end of the shaft,
and a vent hole formed through the grip of said shaft to
communicate with hollow interior thereof; and
a pitch-mark repair tool to be attached to the grip
at the opposite end of said shaft without having to alter
said grip, said pitch-mark repair tool comprising:
a base located against said grip, said base having a
plurality of earth leveling prongs projecting therefrom;
a screw extending through each of said base, said
grip, and said vent hole, said screw having a set of screw
threads running continuously therealong by which to hold
said base against said grip; and
an end cap detachably connected to said base to
enclose said plurality of prongs therewithin.

THE EVIDENCE
The Examiner relies upon the following evidence:
Rhodes
Fox
Britton
Luna
US 5,163,685
US 5,351,949
US 5,779,558
US 6,244,356 B1
Nov. 17, 1992
Oct. 4, 1994
Jul. 14, 1998
Jun. 12, 2001

THE REJECTIONS
Claims 9 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rhodes, Fox and Luna. Ans. 4.
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Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rhodes, Fox, Luna and Britton. Ans. 6.

ISSUE
Regarding claim 9, Appellant contends that the combination of
Rhodes, Fox and Luna, regardless of the order applied by the Examiner, fails
to teach or suggest a golf club having a shaft, a grip and a vent hole, with “a
pitch-mark repair tool to be attached to said grip at the opposite end of said
shaft without having to alter said grip” and “a screw extending through each
of said base, said grip, and said vent hole.” App. Br. 4; Reply Br. 1-4. In
support of this position Appellant contends that the teachings of Luna
require the butt end of the grip and the vent hole to be cut off in order to
accommodate Luna’s device. App. Br. 4; Reply Br 3. Appellant’s
arguments regarding claim 11 are based upon the same premise, that since
there is no vent hole remaining following the deconstruction of the butt end
of the golf club, the Examiner’s proposed combination cannot possibly teach
or suggest the claimed screw having threads “by which to enable said screw
to penetrate said base, said grip, and said vent hole.” App. Br. 6-7. Claim
10 is argued based solely upon its dependence from claim 9. Thus, the sole
issue for our consideration is whether Appellant has established that the
Examiner erred in concluding that the subject matter of claims 9 and 11
would have been obvious because the combination of Rhodes, Fox and Luna
fails to teach or suggest “a pitch-mark repair tool to be attached to said grip
at the opposite end of said shaft without having to alter said grip” and “a
screw extending through each of said base, said grip, and said vent hole.”

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FINDINGS OF FACT
We find that the following enumerated facts are supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Rhodes discloses a gripping aid (abutment member 10 with an attached
cylindrical connection member 20) that may be attached to the handle
of a golf club. Col. 2, ll. 39-40. The gripping aid is releasably secured
to the club 30 by a screw 27 that extends through a hole 28 in the closed
end 24 of a connection member 20. After passing through hole 28, the
screw 27 is screwed into the pilot hole 34 conventionally found in the
butt end 32 of golf grips 31. Col. 3, ll. 18-19, col. 3, l. 67 – col. 4, l. 4.
2. Fox discloses a putter-mountable holder for a golf ball position marker.
Col. 1, ll. 6-9, 30-34. The holder 14 is mounted on the end of putter
grip 10 and its central aperture 16 in alignment with air vent hole 12 by
means of self tapping tapered threaded flat head screws 18. Col. 2, ll.
42-45; col. 3, ll. 11-12; figs. 1, 6.
3. A primary problem Appellant was faced with was attaching a pitch-
mark repair tool to the grip of a golf club “without having to alter the
golf club or damage the grip.” Spec. 2, paras. [0005], [0006].
4. To solve the perceived problem, Appellants employed a “special-
purpose fastener (e.g., a screw)…inserted through the base and the grip
for receipt through the existing vent hole of the grip… to securely
attach the base [of the pitch mark tool] to the grip over the shaft [of the
club].” Spec. 3, para. [0006].
5. Luna discloses a golf club (fig. 4) including a shaft 30 having a hollow
interior (fig. 3), a ball striking head located at one end of the shaft
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(within the hand of the user in fig. 4) and a grip 43 surrounding the
opposite end of the shaft 30. Col. 1, ll. 62-63; col. 3, l. 2. The shaft has
a hole formed through the grip of the shaft to communicate with the
hollow interior thereof. Col. 2, l. 67, fig. 3.
6. Luna further discloses a pitch-mark repair tool 10 to be attached to the
grip 43, by insertion of a skirt 20 within the open end of the shaft 30.
Col. 2, ll. 66-67.
7. Luna further discloses that the pitch-mark repair tool comprises a body
12 (“a base”) located proximate the grip 43 and having a plurality of
earth leveling prongs 14 extending therefrom. Col. 2, ll. 27-29.
8. Luna further discloses that a threaded bolt 18 extends through a hole 11
in the body 12, the open end of the shaft 30 and the grip 43. Fig. 3.
The bolt 18 is used to draw a nut 22 and plug portion 26 toward the
body 12 in order to wedge skirt portions 35 of skirt 20 outward against
the interior of shaft 30, thereby engaging the tool 10 and shaft 30. Col.
3, ll. 20-25.
9. Luna further discloses a cap 24 to fit over the prongs 14 detachably
connected to the body 12. Col. 3, ll. 41-48; figs. 1, 2.
10. Luna demonstrates that it is known in the art that the internal diameters
of golf club shafts vary. A tubular sleeve 40 may be included to
accommodate larger diameter shafts. Col. 3, ll. 28-32.
11. Luna suggests that other attachment means may be used within the
scope of the invention. Col. 3, ll. 32-33.
12. Luna does not specifically refer to the opening in the shaft 30 as a “vent
hole.”
13. Luna does not teach locating the body 12 “against” the grip 43. See
e.g., fig. 3.
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14. Luna does not teach using a “screw” in place of bolt 18 as recited in
claim 9, or, more specifically, a screw having “a pointed tip and a
tapered body” as recited in claim 11.
15. Britton demonstrates that it was known in the art to combine a ball-
mark repair tool 34 with a ball-marker-holding recess 48a, 48b on the
end of a golf club grip 30. Col. 4, ll. 11-14, 47-49.

PRINCIPLES OF LAW
A determination of obviousness involves two steps. First is construing
the claim, a question of law, followed by a comparison of the construed
claim to the prior art. This comparison process involves fact-finding. Key
Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 714 (Fed. Cir. 1998)
(citations omitted). During examination of a patent application, pending
claims are given their broadest reasonable construction consistent with the
specification. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
The examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. The key to supporting any prima
facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious. The Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) noted that the analysis supporting a rejection under 35 U.S.C.§ 103
should be made explicit. The Federal Circuit has stated that “rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
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441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at
418.
The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.
KSR, 550 U.S. at 416. A prima facie conclusion of obviousness may be
supported by a showing that the claims are directed to a process, machine,
manufacture, or composition of matter already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, and such modification yields a predictable result. See Id. (citing
United States v. Adams, 383 U.S. 39, 40 (1966)). The Court further stated
that, “if a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR, 550 U.S. at 417. When
considering obviousness of a combination of known elements, the operative
question is thus “whether the improvement is more than the predictable use
of prior-art elements according to their established functions.” Id.

ANALYSIS
Initially we note that it is the combined teachings of the references
that are relevant in an obviousness analysis. See In re Keller, 642 F.2d 413,
425 (CCPA 1981). Unlike the examiner, we do not consider the order in
which prior art is applied in a rejection to be significant. See, e.g., In re
Bush, 296 F.2d 491, 496 (CCPA 1961).
Luna discloses the basic structure of the pitch mark repair tool placed
on a golf club as recited in claim 9. Facts 5-9. The fact that Luna does not
specifically refer to the open end of the shaft as a “vent hole” (Fact 12) does
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not establish that it is unreasonable to interpret it as a “vent hole.” Since the
open end of Luna’s grip vents the interior of the shaft to the atmosphere it is
reasonable to construe it as the claimed “vent hole.” Appellant cites to
column 2, line 64 through column 3, line 2 of Luna as support for the
contention that Luna requires cutting off the vent hole in the end of the grip.
App. Br. 4-5. There is no support for Appellant’s contention in the cited
portion of Luna. While, in Figure 3, Luna depicts a golf club having an
opening that extends the entire diameter of the shaft, Luna does not mention
that any alterations to the grip of the golf club are necessary to attach the
pitch mark repair tool. To the contrary, Luna suggests instead modifying the
pitch mark repair tool to accommodate for differences in golf clubs. See
Fact 10.
Appellant recognizes that golf clubs having vent holes were known in
the art. See Fact 3 and 4. Fox and Rhodes also demonstrate this. Facts 1
and 2. Rhodes further demonstrates that it was known in the art to utilize
these holes in combination with a screw to attach a device to the handle end
of a golf club. Fact 1. Fox additionally demonstrates that tapered screws
were also known in the art for attaching devices to the handle end of a golf
club. Fact 2. The fact that Luna does not expressly describe a screw as one
particular alternate attachment means (Fact 14) does not establish that using
a screw in place of the bolt would not have been obvious.
What a reference teaches or suggests must be examined in the context
of the knowledge, skill, and reasoning ability of a skilled artisan. What a
reference teaches a person of ordinary skill is not limited to what a reference
specifically “talks about” or what is specifically “mentioned” or “written” in
the reference. Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380
(Fed. Cir. 2005). “A person of ordinary skill is also a person of ordinary
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creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007). Attaching Luna’s device with an alternate attachment means, as
expressly suggested by Luna, by inserting a known type of screw in a
location where it is known to place screws amounts to nothing more than the
predictable use of prior art elements according to their established functions,
and would have been obvious to one having ordinary skill in the art. Luna is
silent regarding the specific relationship between the grip and the tool.
However, Luna’s tool body is depicted as proximate the grip as opposed to
“against” it, as called for in claim 9. Fact 13. This arrangement results from
a particular combination of the insertion depth of the tool, the opening size
of the shaft and the extents of the grip. Selecting the appropriate dimensions
for these features amounts to a matter of design choice and does not create a
patentable distinction between the claimed invention and the prior art. See
e.g., In re Rice, 341 F.2d 309, 314 (CCPA 1965).
Appellant does not contest any of the Examiner findings regarding
Britton. App. Br. 7; See Fact 15.

CONCLUSION
Appellant has not established that the Examiner erred in concluding
that the subject matter of claims 9 and 11 would have been obvious because
the combination of Rhodes, Fox and Luna fails to teach or suggest “a pitch-
mark repair tool to be attached to said grip at the opposite end of said shaft
without having to alter said grip” and “a screw extending through each of
said base, said grip, and said vent hole.”
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DECISION
For the above reasons, the Examiner’s rejections of claims 9-11 are
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

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