Ex Parte Stites et al

Patent Trial and Appeal Board

Sep 13, 2016

11125327 (P.T.A.B. Sep. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111125,327 05/10/2005
11370 7590
Banner & Witcoff, Ltd.
10 South Wacker Drive
Suite 3000
Chicago, IL 60606
09/15/2016
FIRST NAMED INVENTOR
John T. Stites
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.
007625.00426/05-0039 1740
EXAMINER
HUNTER, AL VIN A
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
09/15/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PT0-1137 O@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN T. STITES and GARY G. TAVARES
Appeal2014-003835
Application 11/125,327
Technology Center 3700
Before MICHAEL C. ASTORINO, MICHELLE R. OSINSKI, and
MATTHEWS. MEYERS, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
John T. Stites and Gary G. Tavares (Appellants) 1 appeal under 35
U.S.C. § 134 from the Examiner's final decision rejecting claims 53-80 and
83-88, which are all of the pending claims. An oral hearing was held
August 16, 2016. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the real party in interest as Nike, Inc. Appeal Br. 1.
Appeal2014-003835
Application 11/125,327
CLAIMED SUBJECT MATTER
Claims 53, 65, 71, 76, 78, and 80 are independent. Claim 53,
reproduced below, is illustrative of the claimed subject matter on appeal.
53. A wood-type golf club head, comprising:
a club head body having an overall club head
length dimension of at least 4.6 inches and an
overall club head breadth dimension of more than
4.5 inches, wherein a ratio of the overall club head
breadth dimension to the overall club head length
dimension is at least 0.94 and is less than 1, and
wherein the club head body has a volume of at least
380 cubic centimeters and less than 470 cubic
centimeters.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Murphy
Cackett
US 2003/0100381 Al
US 6,491,592 B2
REJECTIONS
May 29, 2003
Dec. 10, 2002
I. Claims 53-76, 78, and 83-87 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Murphy. Final Act. 2--4.
II. Claims 77, 79, 80, and 88 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Murphy and Cackett. Id. at 4--5.
OPINION
Rejection I
Independent claims 53, 65, 71, 76, and 78 recite a club head body of a
wood-type golf club head having, inter alia, an overall length dimension of
at least 4.6 inches, an overall breadth dimension of more than 4.5 inches, and
a ratio of overall club head breadth dimension to overall club head length
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Application 11/125,327
dimension of at least 0.94, but less than 1. Appeal Br. 28, 29, 30, 31, 32
(Claims App.). The Examiner concludes that Murphy renders the claimed
subject matter obvious. Final Act. 2--4.
A "claimed invention is rendered prima facie obvious by the teachings
of a prior art reference that discloses a range that touches the range recited in
the claim." In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997), citing In re
Malagari, 499 F.2d 1297, 1303 (CCPA 1974). In this case, the claimed
range for the overall length dimension of the club head body (i.e., at least 4.6
inches) overlaps the range for the overall length dimension of the club head
body disclosed in Murphy (i.e., 4.0 to 5.0 inches). See Final Act. 2; Murphy
§ 101.2
The claimed range for the overall breadth dimension of the club head
body (i.e., more than 4.5 inches) does not overlap the range for the overall
breadth dimension of the club head body disclosed in Murphy (i.e., 3.0 to
4.5 inches). See Final Act. 2; Murphy§ 101.3 However, "when the
difference between the claimed invention and the prior art is the range or
value of a particular variable, then a prima facie rejection is properly
established when the difference in the range or value is minor." Haynes
Int'!, Inc. v. Jessop Steel Co., 8 F.3d 1573, 1577 n.3 (Fed. Cir. 1993). Here,
the Examiner finds that "[a] breadth of greater than 4.5 inches would not
2 Although Murphy uses the terminology "width" to describe the dimension
of the club head extending from the toe section to the heel section, this
corresponds to the dimension of "length" as used in Appellants'
Specification and as illustrated in Figure IA.
3 Although Murphy uses the terminology "depth" to describe the dimension
of the club head extending from the striking plate portion to the rear section,
this corresponds to the dimension of "breadth" as used in Appellants'
Specification and as illustrated in Figure IB.
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Application 11/125,327
appear to perform any different from a breadth of 4.5 inches .... For
example, a breadth of 4.51 would be greater than 4.5[,] but it is not believed
that a difference this small would change the performance of the club head."
Final Act. 2. We agree. Indeed, in this case, the difference could not be
smaller. Therefore, the Examiner has presented a prima facie case of
obviousness as to the overall breadth dimension of the club head body. See
Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783 (Fed. Cir.
1985).
As to the ratio of the overall club head breadth dimension to the
overall club head length dimension being "at least 0.94" and "less than 1,"
the Examiner's position is that "[a]ssuming that the brea[d]th is 4.51 and the
length is 4.6, the ratio would be 0.98," and that one of ordinary skill in the
art would have used "the above dimensions in order to improve the
performance of the club head." Final Act. 2-3. The Examiner elaborates
that "it is known in the art to enlarge the club head by length and breadth."
Id. at 7; see also id. at 6 ("[S]tretching the club head to enlarge the sweet
spot and control stability has been well established in the art as for example
set forth by Cackett et al. (USPN 642832) and Kobayashi (USPN
4890840). ").
The Examiner assumes that one of ordinary skill in the art would be
motivated to use a particular value for the overall length dimension of the
club head body and simultaneously use a particular value for the overall
breadth dimension of the club head body. See Final Act. 2-3. As to why a
person of ordinary skill in the art would use those dimensions specifically,
the Examiner's position is that one would have been led to increase the
length and breadth of the club head to improve performance. Id. at 2-3, 6-7.
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Application 11/125,327
Although the Examiner may have explained why one of ordinary skill
in the art would be led to independently modify the overall club head
breadth dimension and to independently modify the overall club head length
dimension, the Examiner has not adequately explained why one of ordinary
skill in the art would have sought to simultaneously modify the club head
breadth dimension and club head length dimension to the very particular
dimensions which the Examiner has relied on to arrive at the claimed ratio.
We note that this is not a case where the claimed overall club head
breadth to overall club head length ratio is inherent or necessarily follows
from explicit teachings regarding overall club head breadth and overall club
head length in Murphy. The only example in which a particular overall club
head breadth (i.e., "most preferably 3.5 inches") and particular overall club
head length (i.e., "more preferably 4.4 inches") are both specified in Murphy
inherently results in a ratio of only 0.795, which is outside of the claimed
range for the breadth-to-length ratio. Murphy i-f 101.
Appellants argue that the Examiner has not adequately shown that
breadth-to-length ratio is a result-effective variable that one of ordinary skill
in the art would try to optimize. Appeal Br. 10. We agree. Before
concluding that the claimed breadth-to-length ratio is the product of a
routine optimization, it must be established that the functional relationship
between this ratio and performance of the club head was known in the art.
See, e.g., In re Antonie, 559 F.2d 618, 620 (CCPA 1977). Murphy does not
provide any teaching of a functional relationship between the breadth-to-
length ratio and club performance, and the Examiner has not cited any other
record evidence showing that the ratio of the club head breadth to club head
length is related to club performance. As such, the Examiner failed to
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establish by a preponderance of the evidence that one having ordinary skill
in the art would have found it obvious to adjust the breadth-to-length ratio to
provide desirable club performance.
As to the Examiner's explanation that even if Murphy does not
explicitly recite that the breadth-to-length ratio is a result-effective variable,
it "does in[]fact inherently show the ranges being result effective based on
the inertia values obtained" (Ans. 6), we cannot disagree that Murphy
contemplates a moment of inertia about the z-axis that ranges from 280 to
500 kg-mm2 (Murphy i-f 109) (which has some overlap with the claimed
moment of inertia about the z-axis ranging from 440 to 540 kg-mm2)
(Appeal Br., Claims App.). Murphy, however, fails to tie the change in
inertia values to changes in the club head breadth and club head length
specifically, as opposed to other changes in volume and/or mass of the club
head, for example, so as to adequately support that the ratio of club head
breadth to club head length is a result effective variable that affects the
moment of inertia.
For the foregoing reasons, we are persuaded that the Examiner erred
in concluding that Murphy renders obvious the subject matter of
independent claims 53, 65, 71, 76, and 78, and we do not sustain the
rejection of independent claims 53, 65, 71, 76, and 78, and claims 54---64,
66-70, 72-75, and 83-87 which depend therefrom, under 35 U.S.C. § 103(a)
as unpatentable over Murphy.
Rejection II
The Examiner rejects claims 77, 79, 80, and 88 under 35 U.S.C.
§ 103(a) as unpatentable over Murphy and Cackett. Final Act. 4--5. The
rejection of these claims relies on the Examiner's erroneous conclusion that
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Murphy renders obvious a wood-type golf club head comprising a club head
body having a breadth-to-length ratio of at least 0.94 and less than 1. The
Examiner does not explain how Cackett might cure this underlying
deficiency. Accordingly, we do not sustain the rejection of claims 77, 79,
80, and 88 under 35 U.S.C. § 103(a) as unpatentable over Murphy and
Cackett.
DECISION
The Examiner's decision to reject claims 53-80 and 83-88 under
35 U.S.C. § 103(a) is reversed
REVERSED
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