Ex Parte Sosin

Board of Patent Appeals and Interferences

May 19, 2009

11401619 (B.P.A.I. May. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HOWARD B. SOSIN
____________

Appeal 2008-4791
Application 11/401,619
Technology Center 3700
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Decided: May 19, 20091
____________

Before TONI R. SCHEINER, LORA M. GREEN, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the Examiner’s final rejection of
claim 21. Jurisdiction for this appeal is under 35 U.S.C. § 6(b). We affirm.

1 The two-month time period for filing an appeal or commencing a civil
action, as provided for in 37 C.F.R. § 1.304, begins to run from the decided
date shown on this page of the decision. The time period does not run from
the Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-4791
Application 11/401,619

STATEMENT OF THE CASE
Claim 21, the only pending claim, is drawn to a golf club with a single
design loft, a non-zero bounce angle, and a shaft that forms a non-zero lean
angle with the hosel of greater than 3 and less than 10 degrees. According to
the Specification, the purpose of the non-zero lean angle is to adjust the
club’s design loft to a golfer’s stance, swing characteristics, and location of
the hands when addressing the ball (Spec. 2-6).
Claim 21 stands rejected by the Examiner as follows:
• under 35 U.S.C. § 103(a) as obvious in view of Koehler (US
5,301,944, Apr. 12, 1994), Muldoon US 5,421,098, Jun. 6, 1995), and
D’Amico (US 5,536,012, Jul 16, 1996) (Ans. 6);
• under 35 U.S.C. § 103(a) as obvious in view of Gilbert (US
5,800,281, Sep. 1, 1998), Muldoon, and D’Amico (Ans. 7);
• under 35 U.S.C. § 103(a) as obvious in view of Mertens (US
6,093,113, Jul 25, 2000), Muldoon, and D’Amico (Ans. 7);
• under 35 U.S.C. § 103(a) as obvious in view of Thompson (US
3,961,796, Jun. 8, 1976), Hirose (US 5,564,991, Oct. 15, 1996), and Koehler
(Ans. 8);
• under 35 U.S.C. § 103(a) as obvious in view of Adams (US
5,971,866, Oct. 26, 1999), D’Amico, and Gilbert (Ans. 9); and
• under 35 U.S.C. § 103(a) as obvious in view of Baxstrom (US
4,915,387, Apr. 10, 1990), Adams, and Gilbert (Ans. 10).
A declaration under 37 C.F.R. § 1.132 by Jerrett Garner, John B.
Hoeflich, and J. Rodney Loesch (“Declaration” or “Dec.”), executed on
October 11, 2006, was provided by Appellant in support of certain
arguments.
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Claim 21 reads as follows:
21. An iron-type golf club comprising:
a head having a face with a single design loft and a sole
with a non-zero bounce angle, wherein design loft and bounce
are related to one another in that, when the head is positioned at
its design loft with respect to a vertical plane, the sole achieves
its bounce angle with respect to a horizontal plane;
a single straight hosel; and
a single straight shaft connected to the head via the hosel,
the connection arranged so that the shaft forms a non-zero lean
angle, which non-zero lean angle is greater than 3 and less than
10 degrees, with vertical when the head is positioned at its
design loft and bounce angle.

OBVIOUSNESS OVER MULDOON AND OTHERS
Claim 21 stands rejected under 35 U.S.C. § 103(a) as obvious in view
of Koehler, Muldoon, and D’Amico (Ans. 6).
Claim 21 stands rejected under 35 U.S.C. § 103(a) as obvious in view
of Gilbert, Muldoon, and D’Amico (Ans. 7).
Claims 21 stands rejected under 35 U.S.C. § 103(a) as obvious in
view of Mertens, Muldoon, and D’Amico (Ans. 7).

Statement of the Issue
Has Appellant demonstrated that the Examiner erred in concluding
that it would have been obvious in view of Muldoon and others to have
produced a golf club as in claim 21 with a lean angle of greater than 3 and
less than 10 degrees, a single design loft, and non-zero bounce?
Principles of Law
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
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(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966).
As held by the Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, (2007), the “combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” Moreover, when “a patent ‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the combination is
obvious.” Id. at 417 (quoting Sakraida v. AG Pro, Inc., 425 U.S. 273, 282,
(1976). The relevant question is “whether the improvement is more than the
predictable use of prior art elements according to their established
functions.” Id.
“[A] reference may teach away from a use when that use would render
the result inoperable.” In re ICON Health and Fitness Inc., 496 F.3d 1374,
1381 (Fed. Cir. 2007).
[C]ase law does not require that a particular combination must
be the preferred, or the most desirable, combination described
in the prior art in order to provide motivation for the current
invention. “[T]he question is whether there is something in the
prior art as a whole to suggest the desirability, and thus the
obviousness, of making the combination,” not whether there is
something in the prior art as a whole to suggest that the
combination is the most desirable combination available. See In
re Beattie, 974 F.2d at 1311 (internal quotation omitted;
emphasis added). . . . [A] finding that the prior art as a whole
suggests the desirability of a particular combination need not be
supported by a finding that the prior art suggests that the
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combination claimed by the patent applicant is the preferred, or
most desirable, combination.
In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004).

Facts
Scope and content of the prior art
In making an obviousness determination, we must first ascertain the
scope and content of the prior art. Graham v. John Deere Co., 383 U.S. at
17. The following numbered findings and conclusions of fact (“FF”)
summarize the prior art relied upon by the Examiner in setting forth the basis
of the rejections:

The Muldoon patent
1. According to Muldoon, there are two characteristics of a golf club that
must be addressed when personalizing the club to a player’s height and
stance (col. 1, ll. 17-26).
2. These are the “lie angle” and the “loft angle” (col. 1, ll. 24-45).
3. The lie angle
is the angle between the center line of the hosel bore and the
ground line. This angle is determined at a point tangent to the
center line of the base of the golf club head. The lie angle is
important because if, for example, the club’s sole is angled
upward when the club head impacts the ball, the face of the
club head will be aimed to the left of the medial line of the
fairway. Naturally, the ball will travel in this left-of-center
direction because that is the direction in which it is aimed. On
the other hand, if the club’s sole is angled in a downward
direction, the opposite effect will be obtained. Specifically, the
face of the golf club head faces to the right and, accordingly,
the travel of the ball will go to the right of the medial line of the
fairway.
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(Col. 1, ll. 28-42.)
4. The loft angle
is the backward slant of the face of a golf club head. The
greater the angle, the greater the loft of the ball after being
struck by the club. While the loft of clubs often determines
their angle in a conventional way, for example, a “six iron” has
a greater loft than a “five iron”, these degrees are not absolute.
One golfer may use a “six iron” to achieve a certain degree of
loft of the ball, whereas another golfer, using the same club,
may achieve a different degree of loft. This is because the grip
and stance of golfers differs such that upon impact of the club
face on the ball, the loft angle may be different from one golfer
to the other. Accordingly, this angle too must be personalized
to meet the particular habits of the individual golfer.
(Col. 1. ll. 45-59.)
5. Muldoon describes an “apparatus for determining the preferred or ‘ideal’
loft and lie of a golfer’s club and for adjusting the club head so that its
angles of loft and lie are equivalent to the determined ideal values” (col. 2,
ll. 32-36).
6. The apparatus comprises a fitting gauge to determine the ideal loft and lie
values (col. 2, ll. 37-47) and
7. a shaft manipulating tool which is attached to the club hosel used to
adjust the club’s loft and lie by “gentle bending” of the shaft (col. 3, ll. 3-25;
col. 4, 56-62; col. 7, ll. 22-37).
8. Muldoon Figures 3 and 4, reproduced below, show the manipulating tool
42 attached to the club hosel. As the tool 42 is shifted in direction, the club
shaft is adjusted (col. 4, l. 56 to col. 5, l. 6).

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Figures 3 and 4, reproduced above, show the manipulating tool 42
attached to the club hosel as it bends the club shaft.
9. Appellant admits2 that Muldoon shows a club with a “lean” of 3-10
degrees (Reply Br. 8).
10. Appellant admits that Muldoon shows a club with a single design loft
(Reply Br. 8).

The Koehler patent
11. Koehler describes a golf club with a positive bounce angle (col. 1, ll. 8-
9).
12. The “bounce” of a club can have a “positive” or “negative” value (col.
1, ll. 20-56).
13. “Typically, the sole portion of a wedge is designed with bounce – that
is, a downward or descending angle between the leading edge where the face
meets the sole and the lowest point on the sole” (col. 1, ll. 28-31).

2 While Appellant makes the general statement that “[t]here is simply no
teaching or suggestion of a club with such a lean angle [of greater than 3 and
less than 10 degrees] in the cited references” (Reply Br. 11), the Table on
page 8 of the Reply Brief expressly states that Muldoon “shows” the claimed
limitation of “3-10 degrees.”
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14.
The function of bounce is to help the club rebound off the
surface on which the golf ball lies. To look at it another way,
bounce is to help prevent the leading edge of the club face from
digging into the surface on which the golf ball lies, with the
resultant loss of force and control. . . . With a positive bounce
angle, the resultant force will urge the club head upward to
create a “bounce” off the surface. This action helps prevent the
face of the club head digging into the turf with the resulting
muffed shot and huge divot torn asunder.
(Col. 1, ll. 57 to col. 2, l. 5).
15. Koehler describes designing a club with positive bounce angles to
provide better and improved playability (col. 2, ll. 25-40).
16. Koehler does not describe a golf club with a lean angle (Dec. ¶ 21).
17. Appellant admits that Koehler shows a single design loft (Reply Br. 8).

The D’Amico patent
18. D’Amico describes an “apparatus for enabling a golfer to assume the
proper stance, clubface alignment and angle of attack in addressing the ball”
(col. 3, ll. 48-54).
19. D’Amico does not describe a golf club with a lean angle (Dec. ¶ 24).
20. Appellant admits that D’Amico shows a single design loft (Reply Br. 8).

The Gilbert patent
21. Gilbert describes a golf club with a bounce surface (col. 1, l. 30).
“Generally, it is preferred that the positive bounce angle increase for the
amount of loft in the club. Therefore, the long irons that have little loft
should have a smaller positive bounce angle and the short irons that have
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substantially more loft should have a larger positive bounce angle” (col. 1, ll.
36-41).
22. “The bounce surface is also angled from the ground by a bounce angle.
It is preferred that the bounce angle increases from zero degrees to a positive
angle according to the amount of loft in the club” (col. 1, ll. 53-59).
23. Gilbert does not describe a golf club with a lean angle (Dec. 21).
24. Appellant admits that Gilbert shows a single design loft (Reply Br. 8).

The Mertens patent
25. Mertens states that “[c]onventional wedges, when used to play a ball out
of a hazard, rely on the bounce configuration of the sole to facilitate
contacting the sand and to prevent the leading edge of the club from digging
into the hazard, i.e., sand, too deeply (col. 1, ll. 49-53).
26. Mertens describes a golf club with an improved sole that maintains the
bounce angle B (col. 6, l. 50 to col. 7, l. 14).
27. Mertens does not describe a golf club with a lean angle (Dec. 21).
28. Appellant admits that Mertens shows a single design loft (Reply Br. 8).

The Specification
29. The Specification states:
As is commonly known in field of golf club design, there are
three basic geometrical design parameters for golf clubs,
namely, loft, length and lie. All conventional sets of golf clubs
employ a range of each of these parameters in order to provide
an assortment of clubs that can be used for various golf shots.
(Spec. 1: 7-10.)
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30. According to the Specification, all golf club manufacturers produce golf
clubs with a design loft, which is the angle at which the club face should
strike the ball (Spec. 2: 13-14).
31. However, because every golfer has a different stance, the Specification
states that “the design loft of the club is not necessarily the effective loft that
the ball sees when struck by the club” (Spec. 2: 20-21).
32. The Specification states:
When the club is oriented at its design loft, the lean angle of the
club is the angle between (i) a projection of the centerline of the
shaft onto a vertical plane, the plane being along an intended
line of play and (ii) a vertical line in such vertical plane. The
lean angle of a typical golf club usually is not specified by the
manufacturer but in most cases a lean angle of 0 degrees can be
inferred. According to the present invention, the lean angle
may be adjusted in a positive or negative direction based upon
one or more of a number of different swing characteristics. The
method of the present invention comprises determining the
design loft and tailoring the lean angle of the club based upon
such selections and a swing characteristic of the golfer.
(Spec. 5: 13-20).
33. The Specification teaches that the lean angle may be tailored by “any
number of conventional methods” (Spec. 14: 1-2).
34. For example, the club can be manufactured with a particular lean angle
or the “hosel can be manipulated or bent using conventional methods to alter
the lean angle” (id. at 14: 5-7).

Differences between the prior art and the claimed invention
Once the scope and content of the prior art has been determined, the
next step is to identify the differences between the prior art and the claimed
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invention. Graham, 383 U.S. at 17. The following numbered facts are
pertinent to this issue:
35. Claim 21 is drawn to an iron-type golf club with a single design loft, a
non-zero bounce, and a “non-zero lean angle” which is “greater than 3 and
less than 10 degrees.”
36. The club has a single straight hosel and a single straight shaft.
37. Each of Koehler, D’Amico, Gilbert, and Mertens show a golf club
having a single design loft (FF17, 20, 24, 28) as does the golf club of claim
21.
38. Muldoon does not state that its golf club has a non-zero bounce angle as
recited in claim 21. However, each of Koehler (FF11-15) and Gilbert
(FF21-22) teach that it was conventional to have a golf club with a bounce.
39. Neither Koehler, D’Amico, Gilbert, nor Mertens shows a golf club with
a “non-zero lean angle” which is “greater than 3 and less than 10 degrees” as
recited in claim 21.
Level of skill in the art
40. Persons of ordinary skill in the art of golf club design were familiar with
loft angle and bounce, recognized these as design features which affect golf
club performance, and were capable of selecting a desired loft and bounce,
depending on the particular golfer’s needs (FF4, 11-15, 21, 22, 25, 26, 29,
30, & 34; Dec. ¶¶ 11-12).
Analysis
The Muldoon patent teaches that it was known to personalize a golf
club to a player’s height and stance by adjusting the lie and loft angles of the
club (FF1-4). Muldoon describes gently bending the shaft of a club to adjust
its lie and loft angles (FF5-8). It is not challenged by Appellant that such
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“bending” would result in a change in the club lean angle as defined by
Appellant in his Specification, and, in fact, Appellant admits that Muldoon
“shows” a lean angle that meets the claimed limitation of a “non-zero lean
angle . . . greater than 3 and less than 10 degrees” (FF9).
While Muldoon apparently does not disclose or show a golf club with
a non-zero bounce, the Examiner provided evidence that such characteristic
was known in the art to affect a club’s performance and was a conventional
design parameter (FF11-15, 21, 22, 25, 26; Dec. ¶ 10). Persons of ordinary
skill in the art would therefore have been prompted to produce Muldoon’s
club with a single design loft and non-zero bounce as claimed for the
advantages that would be well known to golf club designers. In utilizing a
single design loft and non-zero bounce in Muldoon’s golf club, Appellant
has combined known golf club features for their established function with a
predictable result. See KSR, at 416. For the foregoing reasons, we are
persuaded that claim 21 is prima facie obvious.
Although Appellant contends that the Examiner “does not even try to
argue that any of the cited references teach or suggest a lean angle of
‘between 3 and 10 degrees’ as is recited in” claim 21 (App. Br. 8 and 12),
Appellant admits that Muldoon “shows” the claimed lean angle (FF9).
Therefore, combining Muldoon’s teaching about the advantages of adjusting
the golf club shaft to match a golfer’s height and stance with either of
Koehler, D’Amico, Gilbert, or Mertens would result in a golf club having a
lean angle within the claimed range of 3-10 degrees. While it may be true
that Appellant was the first to have articulated a name and definition for
“lean”, Muldoon expressly teaches bending the shaft in such a manner that
would change the club’s lean as defined in Appellant’s Specification.
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Appellant argues that Muldoon teaches “bending the hosel of a
previously manufactured club” (App. Br. 9), not “manufacturing the club
head with the appropriate lean angle, rather than trying to capture it later by
bending” (id. at 11.)
We discern no language in claim 21 that would require the club to
have been manufactured with a lean angle, rather than imparting a lean to it
post-manufacture. There are also no words in the claim that would foreclose
the claimed lean angle of “between 3 and 10 degrees” from being achieved
by bending as taught by Muldoon. In fact, Appellant in his own
Specification states that the lean angle may be achieved by bending the hosel
(FF33-34) – just as described in the Muldoon patent.
Claim 21 also requires the golf club to have “a single straight shaft.”
Appellant contends that “Muldoon teaches bending a club in order to adjust
the shaft, and therefore teaches away” from this limitation (Reply Br. 5).
Muldoon’s Figures 3 and 4, reproduced above (FF8), do not show a
bent shaft. The manipulating tool appears to bend the club shaft at the point
where the hosel fits into the head 18. A definition of “single straight shaft”
has not been provided that would serve to distinguish it from Muldoon’s
club. Appellant asserts that the Examiner does not “appreciate the value” of
the claimed “single, straight shaft” (Reply Br. 14), but there is insufficient
evidence that Muldoon lacks this feature. Moreover, the fact that Appellant
expressly teaches in his Specification that a lean angle can be achieved by
bending the shaft, militates against the conclusion that club constructed in
this way would not possess a “straight shaft” as required by claim 21.
It is stated in the Declaration that bending the hosel, as taught by
Muldoon, “alters the center of mass, stresses the metal, and can otherwise
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distort head properties” of a golf club (Dec. ¶ 26). Furthermore, each of the
declarants testify: “I can confidently state that bending an iron-type golf club
more than a degree or two seriously weakens the hosel and frequently results
in a broken club” (id.).
Despite these strong statements in the Declaration, and reiterated in
the Appeal Brief (App. Br. 11), the Specification expressly acknowledges
that the “hosel can be manipulated or bent . . . to alter the lean angle”
(FF34). Thus, even despite the alleged problems associated with hosel
bending, Appellant still considered this method acceptable for achieving a
desired lean angle. Nonetheless, claim 21 does not require the shaft to
possess a particular degree of strength; therefore declarants attempt to
distinguish the prior art over a feature which does not appear in the claims.
In sum, while we have considered declarants’ testimony, we find it
outweighed by the evidence in their own Specification and that of Muldoon.
The Examiner made certain statements in the Answer that Muldoon
was relied upon only to the extent of its teaching the golfers use clubs
differently because of differences in stance and grip (Ans. 6, 23). Appellant
contends that the Examiner is selecting certain teachings in Muldoon, while
ignoring others (Reply Br. 5).
It is certainly correct that, in responding to Appellant’s arguments, the
Examiner at one point characterized Muldoon’s teaching as to bending as
unnecessary for the rejection (Ans. 24). However, our task is to decide the
merits of the rejection based on the facts in the prior art, not the accuracy of
isolated statements made by the Examiner. In this case, by Appellant’s own
admission the ordinary skilled worker would have understood Muldoon to
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teach that the shaft can be bent “if desired” (Dec. ¶ 25) and that such
bending would meet the claimed limitation of 3 to 10 degrees (FF9).
As to the arguments concerning the D’Amico patent, we agree with
Appellant that D’Amico is concerned with adjusting a golfer’s stance and
would not have reasonably suggested modifying a golf club’s lean angle
(App. Br. 8-9; Dec. ¶¶ 23-24). Nonetheless, this aspect is clearly taught in
the Muldoon patent.
Appellant further contends that D’Amico teaches away from the
claimed invention because “his invention is intended to improve a golfer’s
stance with ‘minimal modification of a golfer’s equipment’ (column 4, lines
3-4 of D’Amico; see paragraphs 23-24 of Declaration)” (App. Br. 9).
Appellant misapprehends what it means to “teach away” from a
claimed invention. A reference is said to “teach away” from a use when that
use would result in an inoperable product. In re ICON, 496 F.3d at 1381.
There is no evidence that modifying a golf club as described by Muldoon,
rather than adjusting only the golfer’s stance, would lead to an inoperable
club. The question is not whether the suggested combination is the most
desirable combination available, but whether there is something in the prior
art to have suggested its desirability. In Fulton, 391 F.3d at 1200. As there
is explicit reason to have utilized Muldoon’s method, we conclude that
persons of ordinary skill in the art would have considered the result obvious
– even if Appellant is correct that such modification would not have been the
most desirable combination available in view of D’Amico’s disclosure.
Appellant distinguishes claim 21 from the Koehler, Gilbert, and
Mertens patents because the latter describe clubs with no lean and multiple
bounce surfaces (Dec. ¶ 21; reply Br. 9). However, as explained in the
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background section of the Specification, bounce angle is a recognized
parameter that guides golf club design (Spec. 2:28-29; Dec. ¶¶ 11-12).
Accordingly, choosing a desired bounce angle would have been considered
commensurate with the level of ordinary skill in the art (FF40).

OBVIOUSNESS OVER THOMPSON, HIROSE, AND KOEHLER
Claim 21 stands rejected under 35 U.S.C. § 103(a) as obvious in view
of Thompson, Hirose, and Koehler (Ans. 8).
The Examiner finds that
Thompson discloses an iron-type golf club having a head with a
sole, a single design loft (Fig. 2), a single straight hosel for
connection to a shaft (Figs. 1-2), a connection arranged so that
the shaft forms a non-zero lean angle with the vertical when the
head rests on its sole in the form of when the head is rested
along the bottom on the sole (Fig. 2), the non-zero lean angle
being greater than 3 degrees in the form about 6 degrees (Fig.
2), and when a head rests on its sole an impact face is
positioned at its designed loft (Fig. 2).
(Ans. 8-9.)
Statement of the Issue
The only issue in dispute in this rejection is whether Appellant has
demonstrated that the Examiner erred in finding that Thompson describes a
golf club with a non-zero lean angle which meets the limitations of claim 21.
Facts
41. The declarants testify that the figures “pointed to by the Patent
Examiner” would not “allow a rigorous determination of whether a lean
angle is intended” and that there is “no discussion” in Thompson “that
would suggest anything other than a standard, zero-lean golf club is
intended” (Dec. ¶ 28).
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42. Based on their “extensive” experience in the industry, the declarants
“represent that a golf club designer or manufacturer of ordinary skill in the
art would not understand . . . Figure 2 of Thompson to depict a golf club
with a non-zero lean angle” (id.).
Analysis
In this case, given the three declarants combined experience in golf
club manufacture, design, and professional play (Dec. ¶¶ 1-3), we give
considerable weight to their testimony that the ordinary skilled golf club
designer would not have understood Thompson to depict a non-zero lean
golf club. The Examiner has not identified any factual basis for doubting the
expert testimony, and we decline to substitute our judgment.
We acknowledge that a previous Board decision (Appeal No. 2005-
2680, decided Feb. 10, 2006) concluded that Thompson’s Figure 2 depicted
a shaft disposed at a non-zero lean angle, but that decision was based on a
different claim and different record than the one before us now. Moreover,
as discussed in Appellant’s Reply Brief, the claim at issue in this appeal
addresses certain deficiencies identified in the earlier Decision (Reply Br.
14-17).

OBVIOUSNESS OVER ADAMS AND OTHERS
Claims 21 stands rejected under 35 U.S.C. § 103(a) as obvious in
view of Adams, D’Amico, and Gilbert (Ans. 9).
Claims 21 stands rejected under 35 U.S.C. § 103(a) as obvious in
view of Baxstrom, Adams, and Gilbert (Ans. 10).
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Statement of the Issue
Has Appellant demonstrated that the Examiner erred in concluding
that a person of ordinary skill in the art would have been prompted to
produce a golf club with a non-zero lean angle and a single design loft in
view of the teachings of Adams, D’Amico, Gilbert, and Baxstrom?
Facts
43. Adams describes a golf club with a multi-level sole configuration that
may be placed on a ground supporting surface to produce one of three
different loft angle positions (col. 1, l. 65 to col. 2, l. 6; col. 2, ll. 29-31).
44. Appellant does not dispute that Examiner’s findings that Adams’ golf
club is depicted with a non-zero lean angle (Ans. 10-11).
Analysis
It is not disputed that Adams describes a multi-loft golf club with a
non-zero lean angle (FF43-44). The Examiner reasons that it would have
been obvious to produce a golf club with a single design loft and non-zero
lean for the advantages of a lean hosel (Ans. 10) and “in order to have the
head flat on the ground when addressing a ball yet gave the shaft leaning
from the vertical when the players hands are not directly over the ball in a
vertical plane” (id. at 11).
Appellant contends that
Gilbert nor Adams discusses any ‘advantages of a lean hosel’ –
it is only the teachings of the present invention that describe
any advantages of a lean angle. Adams’ stated objective is a
club which can provide ‘a variety of loft configurations,’ in
response to the rule that a golfer may carry no more than 14
clubs . . . The fact that a lean hosel is depicted is a simple
consequence of the fact that if a club is designed to be used at a
plurality of loft angles, the hosel will necessarily make a
plurality of angles with the ground.
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Appeal 2008-4791
Application 11/401,619

(App. Br. 15.)
Appellant has the better argument. In view of the lack of explanation
in Adams as to why a non-zero lean angle is advantageous, the evidence
does not support the Examiner’s conclusion that persons of ordinary skill in
the art would have been prompted to utilize a non-zero lean angle in a golf
club with a single design loft as in claim 21.

CONCLUSIONS OF LAW
Appellant has not demonstrated that the Examiner erred in concluding
that it would have been obvious in view of Muldoon and others to have
produced a golf club as in claim 21 with a lean angle of greater than 3 and
less than 10 degrees, a single design loft, and non-zero bounce.
Appellant has demonstrated, however, that the Examiner erred in
finding that Thompson describes a golf club with a non-zero lean angle as in
claim 21.
Finally, Appellant has also demonstrated that the Examiner erred in
concluding that a person of ordinary skill in the art would have been
prompted to produce a golf club with a non-zero lean angle and a single
design loft in view of the teachings of Adams, D’Amico, Gilbert, and
Baxstrom.

SUMMARY
The obviousness rejections of claim 21 in view of Koehler, Muldoon,
and D’Amico; Gilbert, Muldoon, and D’Amico; and Mertens, Muldoon, and
D’Amico are affirmed.
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Appeal 2008-4791
Application 11/401,619

The obviousness rejections of claim 21 in view of Thompson, Hirose,
and Koehler; Adams, D’Amico, and Gilbert; and Baxstrom, Adams, and
Gilbert are reversed.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

Ssc:

CHOATE, HALL & STEWART LLP
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