Ex Parte Sano

Board of Patent Appeals and Interferences

Mar 9, 2006

10208870 (B.P.A.I. Mar. 9, 2006)

The opinion in support of the decision being entered today was not written for publication
and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YOSHINORI SANO

____________

Appeal No. 2006-0241
Application No. 10/208,870
____________

HEARD: February 23, 2006
____________

Before CAROFF, WARREN, and OWENS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal is from a rejection of claims 1 and 3-13, which are all of the pending
claims.
THE INVENTION
The appellant claims a golf club head having, on a metallic surface of a basal body
of the golf club head, a multilayer coating through which the metallic surface is visible.
Claim 1 is illustrative:

1. A golf club head comprising
a basal body having a metallic surface and a multilayer coating provided on the
metallic surface, wherein
the multilayer coating comprises
a clear first layer disposed on the metallic surface,
a colored clear second layer disposed on the clear first layer, and
an iridescent third layer formed on the colored clear second layer by applying an
iridescent paint comprising a solvent, a transparent colorless synthetic resin and an
iridescent
material, the iridescent material in the iridescent third layer dispersed to maintain a certain
degree of transparence of the iridescent third layer, whereby
the metallic surface of the basal body is visible through the multilayer coating.

THE REFERENCES

Bradstreet et al. (Bradstreet) 2,908,502 Oct. 13, 1959
Molitor 4,204,684 May 27, 1980
Baum 5,338,024 Aug. 16, 1994
Meckel 6,196,936 Mar. 6, 2001
THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1, 3-8 and 10-
13 over Leon in view of Bradstreet and Molitor; claim 9 over Leon in view of Bradstreet,
Molitor and Baum; claims 1, 3-8 and 11-13 over Meckel in view of Bradstreet and Molitor;
and claim 9 over Meckel in view of Bradstreet, Molitor and Baum. Claims 1-4 and 7 stand
provisionally rejected under the judicially created doctrine of obviousness-type double
patenting over claim 1 of copending application no. 10/123,110.

OPINION
We affirm the provisional obviousness-type double patenting rejection and reverse
the rejections under 35 U.S.C. § 103.
Provisional obviousness-type
Appeal No. 2006-0241
Application No. 10/208,870

3

double patenting rejection

The appellant acknowledges the provisional obviousness-type double patenting
rejection (brief, page 6), but does not challenge that rejection. Accordingly, we summarily
affirm the provisional obviousness-type double patenting rejection.
Rejections under 35 U.S.C. § 103
We need to address only claim 1, which is the sole independent claim.1
The appellant’s claim 1 requires that a metallic surface of a basal body of a golf club
head is coated with a multilayer coating comprising a clear first layer on the metallic
surface, a colored clear second layer on the clear first layer, and an iridescent third layer
on the colored clear second layer, wherein the metallic surface of the basal body is visible
through the multilayer coating.

1 The examiner does not rely upon Baum for any disclosure that remedies the
deficiency in the references applied to claim 1.
Rejection over Leon in view of
Bradstreet and Molitor

Leon discloses a golf club iron having on its rear face a recessed portion filled with
a polymeric material that absorbs shock and adjusts the swing weight of the club (col. 3,
Appeal No. 2006-0241
Application No. 10/208,870

4
lines 9-17). The polymeric material is a UV resin primer having thereon a UV curable
acrylate top coat (col. 4, lines 56-66). The UV curable acrylates can have any color or
degree of gloss (col. 5, lines 2-4).
Bradstreet discloses golf clubs having, on the face of an iron or putter, or the heel
and sole plates of a wood, a flame sprayed coating of a non-brittle oxide ceramic material
to provide a
long lasting finish (col. 1, lines 39-41; col. 2, lines 9-16
and 22-24; col. 4, lines 6-8). When the ceramic material is crypto crystalline titanium oxide
the coating is almost black, and when the coating material is alumina the coating is white
(col. 2, lines 9-14; col. 3, lines 9-10).
Molitor discloses a golf club wood having a head comprised of a lamination of layers
with different characteristics such that the head has high impact resistance, dimensional
stability, high durability, structural integrity and the same density as a persimmon wood
head (abstract; col. 1, lines 29-37). The layers may be of different colors and, for
decorative effect, may be pigmented with flaky pigments that can be metallic flakes which
generally are oriented parallel to the surface and provide a reflective three-dimensional
effect (col. 1, lines 58-59; col. 5, line 64 - col. 6, line 6).
The examiner argues that “it would have been obvious in view of Leon to one
having ordinary skill in the art to fabricate the golf club with any multi-layer coating to
achieve any desirable surface finish including transparent multi-layer coating” (answer,
Appeal No. 2006-0241
Application No. 10/208,870

5
page 4). The examiner does not support that argument with evidence. The examiner
relies upon mere speculation, and such speculation is not a sufficient
basis for a prima facie case of obviousness. See In re Warner, 379
F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389
U.S. 1057 (1968); In re Sporck, 301 F.2d 686, 690, 133 USPQ 360,
364 (CCPA 1962).
The examiner argues that “the court found that matters related to ornamentation
only which have no mechanical function cannot be relied upon to patentably distinguish the
claimed invention from the prior art. See In re Seid, 161,[sic] F.2d 229, 73 USPQ 431
(CCPA 1947)” (answer, page 4). The court subsequently stated that “[n]ecessarily it is
facts appearing in the record, rather than prior decisions in and of themselves, which must
support the legal conclusion of obviousness under 35 USC 103.” In re Cofer, 354 F.2d
664, 667, 148 USPQ 268, 271 (CCPA 1966). The examiner has not explained how the
applied references themselves would have fairly suggested, to one of ordinary skill in the
art, a golf club head with a metallic surface having thereon a
multilayer coating through which the metallic surface is visible.
We therefore conclude that the examiner has not carried the
burden of establishing a prima facie case of obviousness of the
appellant’s claimed invention over Leon and the references applied
therewith.
Rejection over Meckel in view of
Appeal No. 2006-0241
Application No. 10/208,870

6
Bradstreet and Molitor

Meckel discloses that some golf club manufacturers coat a
titanium golf club head with a three layer coating of primer,
pigmented coating and clear overcoat (col. 1, lines 36-39).
Meckel does not disclose that the golf club head can be
visible through the pigmented coating, and the examiner provides no
evidence or reasoning which shows that the applied prior art would
have fairly suggested, to one of ordinary skill in the art, a
pigmented coating which provides such visibility.
The examiner, therefore, has not established a prima facie
case of obviousness of the appellant’s claimed invention over
Meckel and the references applied therewith.
DECISION
The provisional rejection of claims 1-4 and 7 under the
judicially created doctrine of obviousness-type double patenting
over claim 1 of copending application no. 10/123,110 is affirmed.
The rejections under 35 U.S.C. § 103 of claims 1, 3-8 and 10-13
over Leon in view of Bradstreet and Molitor, claim 9 over Leon in
view of Bradstreet, Molitor and Baum, claims 1, 3-8 and 11-13 over
Meckel in view of Bradstreet and Molitor, and claim 9 over Meckel
in view of Bradstreet, Molitor and Baum, are reversed.
Appeal No. 2006-0241
Application No. 10/208,870

7
AFFIRMED-IN-PART

Appeal No. 2006-0241
Application No. 10/208,870

8
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART

MARC L. CAROFF )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )

BIRCH STEWART KOLASCH & BIRCH PO BOX 747 ALLS CHURCH, VA 22040-0747 F

TJO/jrg

Comment [jvn1]: Type or Paste
Address