Ex Parte Rife et alDownload PDFPatent Trial and Appeal BoardAug 30, 201814591898 (P.T.A.B. Aug. 30, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/591,898 7590 Nicholas J. Aquilino 235 Sweetbriar Drive Talent, OR 97540 01/07/2015 08/31/2018 FIRST NAMED INVENTOR Guerin D. Rife 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. GRJS 101 1408 EXAMINER KLAYMAN, AMIR ARIE ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 08/31/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GUERIN D. RIFE and JEFFERY D. SHEETS Appeal2017-010777 Application 14/591,898 Technology Center 3700 Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and BRANDON J. WARNER, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Guerin D. Rife and Jeffery D. Sheets ("Appellants") appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 14--16 under 35 U.S.C. § 103 as unpatentable over Stites et al. (US 5,935,020; iss. Aug. 10, 1999, hereinafter "Stites") and Rife (US 2009/0124410 Al; pub. May 14, 2009). 1 We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We AFFIRM. 1 Claims 1-13 are canceled. Br. (Claims App.). Appeal2017-010777 Application 14/591,898 THE CLAIMED SUBJECT MATTER Claim 14, the sole independent claim, is reproduced below and is representative of the claimed subject matter on appeal. 1. A driver type golf club head including a top crown, heel, toe, side surfaces, bottom sole, rear surface, a ball striking face between said top crown and said bottom sole, and a leading edge at the interface of said ball striking face and said bottom sole; said club head further characterized as having a low profile wherein a breadth, measured between said reading edge and said rear surface, to vertical height, measured between said top crown and said bottom sole, ratio is at least 2.0 to 1; and a bounce area on said bottom sole extending rearwardly from said leading edge at an angle of at least three degrees below said bottom sole. OPINION The Examiner finds that Stites teaches a golf club head including, inter alia, "a bounce area on said bottom sole extending rearward from said ball striking face having a downward angle from said face ( the area 76/42/88)[ ](Fig. 3; col. 5, lines 15+)." Final Act. 3. The Examiner acknowledges that "Stites does not disclose that [the] bounce angle is of at least 3 degrees." Id. However, the Examiner finds that "Rife discloses bounce angle (124/122) being 3 degree[s] and more (Figs. 1 and 5; paragraphs [0008]-[0010], [0014], [0032], and [0034])." Id. The Examiner determines that it would have been obvious "to form Stites' bounce angle as 3 degrees or more[,] as taught by Rife[,] for the reason that a skilled artisan would have been motivated by Rife's suggestion to form such golf club head that provides a metal wood golf club head with an improved, rigid bottom sole configuration having a reduced frictional surface." Id. The Examiner further points to improvements such as allowing the "club to be used from 2 Appeal2017-010777 Application 14/591,898 the fairway grass" and providing a "club that can be hit off of a ground surface without taking a divot." Id. at 3--4 (citing Rife ,r,r 12-17). Appellants argue that "Stites shows a driver with a low-profile configuration having similar overall dimensions and CG location to the golf club head of the present invention" and that Rife "discloses the use of a bounce on a typical driver golf club[,] but does not anticipate using a bounce structure on a low-profile club head having a low and rearward CG location of the type disclosed in the present invention." Br. 7-8. The failure of a single reference to anticipate is not demonstrative of error in reaching a conclusion of obviousness based on the combined teachings of multiple references. Appellants' argument is unpersuasive because it essentially attacks the cited references individually, rather than the rejection as articulated by the Examiner, which is based on the combination of Stites and Rife. See In re Keller, 642 F.2d 413,425 (CCPA 1981) (one cannot show nonobviousness by attacking references individually when the rejection is based on a combination of the references). As discussed supra, the Examiner relies on Stites for teaching a low profile golf club head having a bounce area on the sole and Rife for teaching a bounce angle of at least three degrees. Appellants' argument that Stites fails to disclose using bounce to reduce or eliminate detrimental gearing effect (Br. 7, 9) is not commensurate with the scope of claim 14, which does not require reducing or eliminating any detrimental gearing effects. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (noting that it is well established that limitations not appearing in the claims cannot be relied upon for patentability). Moreover, although the Examiner's stated reasoning for modifying Stites to have a bounce angle of 3 Appeal2017-010777 Application 14/591,898 at least three degrees is not based on reducing detrimental gearing effects, one of ordinary skill in the art may be prompted to do what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the modification to achieve the same advantage or result discovered by an applicant. See, e.g., In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (citing In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en bane) ("Although the motivation to combine here differs from that of the applicant, the motivation in the prior art to combine the references does not have to be identical to that of the applicant to establish obviousness.")). Appellants argue that the Examiner's proposed combination of Stites and Rife is deficient because "[t]here is no teaching in Stites that the club can be used with a bounce sole to hit a golf ball lying on the turf," and "there is no teaching in the Rife reference that bounce can be added to a low-profile club head structure." Br. 9. According to Appellants, the Examiner's proposed combination of Stites and Rife is based on impermissible hindsight reconstruction "using the teaching of the current application as a blueprint or construction manual." Id. at 9. These arguments are not convincing. To the extent that Appellants appear to insist on an explicit teaching, suggestion, or motivation in Stites or Rife for the Examiner's proposed modification, such an argument has been foreclosed by the Supreme Court. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,415,419 (2007) (stating that a rigid insistence on teaching, suggestion, or motivation is incompatible with its precedent concerning obviousness). Rather, the Court requires that we look to whether the Examiner has provided "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." 4 Appeal2017-010777 Application 14/591,898 In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). Moreover, simply that there are differences between two references is insufficient to make a prima facie case of obviousness impossible. See In re Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992). That is, simply because Rife does not discuss a low-profile club head does not preclude Rife from leading one of ordinary skill in the art to incorporate bounce into such a club head. Appellants' argument does not specifically address the Examiner's articulated reasoning for the proposed combination of references or persuasively explain why the reasoning lacks rational underpinnings. Final Act. 3; see also Ans. 5-7. Appellants also do not identify any knowledge relied on by the Examiner that was gleaned only from Appellants' disclosure and that was not otherwise within the level of ordinary skill in the art at the time of the invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) ("Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper."). Thus, Appellants' assertion that the Examiner relied on impermissible hindsight is unsupported. Br. 9. Appellants further argue that the claimed invention combines the best features of a low-profile club head having a low and rearward CG location with the best features of the bounce structure that squares the club head and striking face and eliminates any gearing effect that would occur with a low 5 Appeal2017-010777 Application 14/591,898 profile club head without a bounce sole when the club contacts the turf. This combination creates a club head with the positive ball striking features of the low profile/CG location to make it easier for golfers with ordinary skill to hit a golf ball longer and straighter from the fairway while at the same time eliminating the detrimental gearing effect of the club head by using the bounce effect of the combination against the grass or turf to square the club head and eliminate any gearing effect that results in detrimental effects to the flight of the golf ball. Id. at 8. Appellants assert that "this structure creates a new result not even considered in the prior art." Id. at 9. According to Appellants, "[t]he present invention has been the goal of golf design for many years, but has not been achieved until now." Id. at 12. These unsupported assertions are not persuasive because they are merely attorney argument, which cannot take the place of evidence in the record. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (stating that unsupported attorney argument as to unexpected results is entitled to little, if any, weight); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) ("It is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements in the specification does not suffice."). Here, Appellants present no factual evidence supporting the assertion that the purported functional advantages of the combination of club head features were new or unexpected results. Appellants also fail to present any evidence of the efforts and resources expended by Appellants or others in the golf industry in attempts to achieve this asserted "goal of golf design," so as to establish long-felt, unsolved need. See Railroad Dynamics, Inc. v. Stuki Co., 579 F. Supp. 353, 363 (E.D. Pa. 1983), aff'd 727 F.2d 1506 (Fed. Cir. 1984), cert. denied 105 U.S. 220 (1984). 6 Appeal2017-010777 Application 14/591,898 For the foregoing reasons, Appellants do not apprise us of error in the Examiner's conclusion that the combination of Stites and Rife renders obvious the subject matter of independent claim 14. We sustain the rejection of independent claim 14, and its dependent claims 15 and 16, for which Appellants rely on the same arguments (Br. 10), under 35 U.S.C. § 103 as unpatentable over Stites and Rife. DECISION The Examiner's decision to reject claims 14--16 under 35 U.S.C. § 103 as unpatentable over Stites and Rife 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). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation