Ex Parte Sorenson

Board of Patent Appeals and Interferences

Mar 8, 2011

11462415 (B.P.A.I. Mar. 8, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES W. SORENSON
____________

Appeal 2009-011022
Application 11/462,415
Technology Center 3700
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Before: LINDA E. HORNER, JOHN C. KERINS, and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
James W. Sorenson (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1, 4, 19, and 20. Claims
2, 3, 5-18, 21, and 22 have been withdrawn from consideration. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
THE INVENTION
Appellant’s claimed invention is a golf club driver. Spec. 2, para.
[0008]. Claim 1, reproduced below, is representative of the subject matter
on appeal.
1. A golf club driver comprising:
a substantially hollow club head; and
a shaft, said shaft comprising a butt end and a tip end;
wherein said club head is coupled to said shaft at said tip
end; and
wherein a ratio of a weight of said club head to a weight
of said shaft comprises a range of approximately 1.2 to less
than 1.4.
THE REJECTION
Appellant seeks review of the rejection of claims 1, 4, 19, and 20
under 35 U.S.C. § 103(a) as being unpatentable over Moore (US 5,797,807;
issued August 25, 1998), Rumble (US 4,431,187; issued February 14, 1984)
and Huiskamp (US 6,364,787 B1; issued April 2, 2002).
CONTENTIONS AND ISSUES
The Examiner’s conclusion that the subject matter of claims 1 and 19
would have been obvious over Moore, Rumble, and Huiskamp is based on a
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claim construction that claims 1 and 19 do not call for the shaft to be made
from one integral piece or the butt end of the shaft to be defined by the upper
end of the grip portion. Ans. 5-7, 12-15
Appellant argues that claims 1 and 19 call for the shaft to be “an
integral shaft” and for the butt end of the shaft to be defined by the upper
end of the grip portion, so that any extension of the golf club that is above
the grip is not part of the shaft. App. Br. 11; Reply Br. 1-2. Based on this
claim construction, Appellant asserts that the proposed combination does not
disclose a shaft as called for in claims 1 and 19, and that the rationale for the
proposed combination is insufficient. App. Br. 10-15; Reply Br. 1-4.
The issues presented by this appeal are:
Do claims 1 and 19 call for the shaft to be formed as an integral shaft
and for the butt end of the shaft to be defined by the upper end of the grip
portion?
Is the proposed combination based upon a sufficient reason with a
rational underpinning to explain why a person of ordinary skill in the art
would have modified Moore, Rumble, and Huiskamp to reach the subject
matter of claims 1 and 19?
ANALYSIS
Claim Construction
We agree with the Examiner’s interpretation that claims 1 and 19 do
not call for the shaft to be formed as an integral shaft and for butt end of the
shaft to be defined by the upper end of the grip portion. See Ans. 12-15.
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Independent claims 1 and 19 are directed to golf club drivers that
include a shaft having a butt end and a tip end that is coupled to the club
head. Claims 1 and 19 do not recite that the shaft is integrally formed into a
single member or recite a grip portion and, consequently, also do not recite
that the butt end of the shaft is defined by the upper end of the grip portion.
Appellant’s Specification describes an embodiment of a driver 100
having a shaft 120 and a grip 130. Spec. 3, para. [0010]. Appellant’s
Specification describes that the shaft may be: hollow, made of steel or a steel
alloy, comprised of a plurality of sections, of various weights, and of various
weight ratios to the club head. Spec. 3-4, paras. [0010]-[0012]. Thus,
Appellant’s Specification describes that the shaft can be made of more than
one section and does not describe that that the butt end of the shaft is defined
by the upper end of the grip portion. Spec. passim.
Giving claims 1 and 19 the broadest reasonable interpretation
consistent with Appellant’s Specification, the shaft can be made either as a
single integral shaft or can be made of multiple sections2 and the butt end of
the shaft is not defined as terminating at the upper end of the grip portion.

2 We note that Huiskamp discloses that “the extension may even be in the
form of a continuation of the shaft of the golf club itself beyond its normal
end and beyond the gripping surface thereof.” Huiskamp, col. 2, ll. 50-52.
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Rejection of claims 1, 4, and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Moore, Rumble and Huiskamp
Appellant argues claims 1, 4, and 20 as a group. App. Br. 12-16. We
select claim 1 as the representative claim, and claims 4 and 20 stand or fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner has addressed each of Appellant’s arguments. See Ans.
11-20. We agree with the Examiner, adopt that reasoning as our own, and
provide the following supplemental explanation.
Appellant argues that Rumble’s teaching that golf clubs shafts must be
lighter and stiffer to impart the more kinetic energy to the golf ball teaches
away from the subject matter of claim 1, which calls for increasing the
weight of the shaft to be closer to the weight of the club head thus imparting
less kinetic energy to the golf ball. App. Br. 12-13 (citing for support to
Rumble and the Declaration of James Sorenson).
We agree that Rumble discloses that a lighter, stiffer shaft improves
the kinetic energy transferred to the ball (see Rumble, col. 1, ll. 24-28);
however, we disagree that such disclosure teaches away from the proposed
combination.
Both Appellant’s briefs and the Declaration of Joseph Sorenson fail to
distinguish between the weight of the shaft and the swing weight of the
shaft. The grip is the pivot point of the shaft, and the weight below the pivot
point is the swing weight of the shaft. Huiskamp, col. 6, ll. 2-16. Thus, the
shaft has a total weight, and a swing weight (the weight of the shaft below
the pivot point). In a club having a shaft that terminates at the grip, the
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swing weight and the total weight of the shaft are the same because there is
no portion of the shaft above the grip.
Appellant’s argument is premised on the interpretation that claim 1
calls for a shaft having a butt end that terminates at the grip, so that the total
weight and swing weight of the shaft are the same. However, as explained
in our claim construction, supra, claim 1 does not call for the shaft to
terminate at the upper end of the grip. In other words, the shaft may
continue past the grip, placing some of the shaft’s weight above the pivot
point. Thus, the golf club driver of claim 1 may be embodied as a shaft
having a weighted extension that continues above the grip that would
decrease the swing weight of the shaft, increase the moment of inertia, and
thus increase club head velocity. Huiskamp, col. 2, ll. 23-28, 49-52; col. 6,
ll. 2-11; figs. 1, 1A, 2.
We fail to see how Rumble’s disclosure that a lighter, stiffer shaft
improves the kinetic energy transferred to the ball would have led a person
of ordinary skill in the art in a direction divergent from the proposed
combination which increases club head velocity.
Similarly, Appellant contends that the Examiner’s rationale for
combining Moore and Rumble is incorrect because claim 1 calls for a
heavier shaft weight, and that the references teach away from heavier golf
clubs in general and heavier shafts in particular. App. Br. 13-14; Reply
Br. 1-4. As with the previous argument, these arguments are based upon
Appellant’s mistaken claim construction that claim 1 calls for a shaft having
a butt end that terminates at the grip. Further, contrary to Appellant’s
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contention, the Examiner’s rationale is not in error simply because it does
not match the rationale used by Appellant. The rationale for the proposed
combination may be directed to problems other than those addressed by
Appellant. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007)
(“Under the correct analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed.”)
Appellant also argues that the Examiner used a two-step process to
arrive at the proposed combination. App. Br. 14. As the Examiner correctly
points out, the number of steps involved in the proposed combination is not
the relevant question; rather, the question is whether the combination would
have been obvious to a person having ordinary skill in the art. See Ans. 19;
see also KSR, 550 U.S. at 420. As such, we sustain the rejection of claim 1.
Claims 4 and 20 fall with claim 1.
Rejection of claim 19 under 35 U.S.C. § 103(a) as being unpatentable over
Moore, Rumble and Huiskamp
Appellant further argues that Huiskamp’s extension is not part of the
shaft as called for in claim 19, and for that reason Huiskamp is not properly
combinable with Rumble. App. Br. 11. We are unpersuaded by this
argument because, as explained in our claim construction, supra, claim 19
does not call for the shaft to be formed as an integral shaft or for the butt end
of the shaft to terminate at the upper end of the grip portion. Further,
Huiskamp discloses that its extension can be a continuation of the shaft
above the grip portion. See infra n.3.
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Appellant also argues that the claimed subject matter results in a golf
club having a decreased swing velocity, which is contrary to the teaching of
the references. Our explanation regarding claim 1, supra, is equally
applicable to the rejection of claim 19. As such, we sustain the rejection of
claim 19.
CONCLUSIONS
Claims 1 and 19 do not call for the shaft to be formed as an integral
shaft or for the butt end of the shaft to be defined by the upper end of the
grip portion.
The proposed combination is based upon a sufficient reason with a
rational underpinning to explain why a person of ordinary skill in the art
would have modified Moore, Rumble, and Huiskamp to reach the subject
matter of claims 1 and 19.
DECISION
The decision of the Examiner to reject claims 1, 4, 19, and 20 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)(1)(iv).

AFFIRMED

nlk

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P.O. BOX 2938
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