Ex Parte Rife et al

Patent Trial and Appeal Board

Aug 30, 2018

14591898 (P.T.A.B. Aug. 30, 2018)

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