Ex Parte Van Nguyen et alDownload PDFPatent Trial and Appeal BoardJan 30, 201814012838 (P.T.A.B. Jan. 30, 2018) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/012,838 08/28/2013 Thu Van Nguyen VANNGU-55222 5482 26252 7590 KELLY & KELLEY, LLP 6320 CANOGA AVENUE SUITE 1650 WOODLAND HILLS, CA 91367 EXAMINER GRAHAM, MARK S ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 01/31/2018 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 THU VAN NGUYEN, CHI-HUNG LEE and RENQIN ZHANG Appeal 2016-008416 Application 14/012,838 Technology Center 3700 Before STEVEN D.A. McCARTHY, JEFFREY A. STEPHENS and PAUL J. KORNICZKY, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE 2 At least one of the Appellants’ claims being twice-rejected, the 3 Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision 4 rejecting claims 9-11, 13—15 and 17—23. Claims 1—8, 12 and 16 are 5 cancelled.2 We have jurisdiction under 35 U.S.C. § 6(b). 1 The first-named inventor identifies himself as the real party in interest. (See Appellant’s Brief, dated November 9, 2015, at 2). 2 The appeal is from a non-final Office Action, mailed June 15, 2015. Claims 1, 2, 4—8, 12 and 16 were cancelled in an Amendment, dated September 9, 2015. Claim 3 was cancelled in an Amendment, dated June 5, 2015. 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Appeal 2016-008416 Application 14/012,838 We sustain the Examiner’s rejection under 35 U.S.C. § 103 of claims 9—11, 15, 17—20 and 23 as being unpatentable over Van Nguyen and Watari; of claims 14 and 22 as being unpatentable over Van Nguyen, Watari and Chang; and of claims 13 and 21 as being unpatentable over Van Nguyen, Watari and Chauvin. (See Examiner’s Answer, mailed July 20, 2016 (“Ans.”), at 3-5). We do not sustain the Examiner’s rejection under § 103 of claims 9-11, 13, 15, 17—21 and 23 as being unpatentable over Van Nguyen and Chauvin; and of claims 14 and 22 as being unpatentable over Van Nguyen, Chauvin and Chang. (See Ans. 2 & 3). THE CLAIMED SUBJECT MATTER The Appellants’ Specification teaches that baseball and softball bats traditionally were made from wood. Wooden bats suffered from a number of problems, however. These problems included the risk of breaking or splintering. (See Spec, para. 3). In order to address this problem, manufacturers began making bats for use in softball and amateur baseball from metals or composite materials. (See Spec., para. 4). One problem with bats made from metals is that metal bats vibrate when a portion of the bat outside so-called “sweet spots” strike a ball; and that metal bats emit undesired ringing sounds when striking balls. (See Spec., para. 12). Other problems associated with bats made from metals or composite materials is that struck balls come off metal bats faster than off wooden bats, creating a potential for injuries. As a result, rulemaking bodies have limited the permissible coefficients of restitution of bats so as to limit the performance of metal or composite bats to that of wooden bats. (See 2 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 Appeal 2016-008416 Application 14/012,838 Spec., paras. 14 & 15). The appealed claims are directed to multi- component bats that are relatively simple to manufacture and that address known problems with conventional metal or composite bats. (See Spec., para. 17). Claims 9 and 18 are independent. Claim 9 is illustrative: 9. A baseball or softball bat manufactured by a process comprising the steps: providing a bat barrel having a first open end, a second open end generally opposite the first open end, and a threaded inner connection region defined by an inner surface of the bat barrel; providing an interconnecting member having generally an outer surface configuration substantially matching the inner surface of the bat barrel defining the inner connection region, and threads adapted to engage the threads of the inner connection region; attaching a handle to the interconnecting member, including the step of inserting a first end of the handle into an opening of the interconnecting member; inserting the handle through the bat barrel to position the interconnecting member within the bat barrel with the remainder of the handle extending outwardly from the bat barrel; and threadedly attaching the interconnecting member to the inner connection region of the bat barrel. ISSUES The Appellants’ arguments do not appear to distinguish between the limitations of independent claim 9 and those of independent claim 18; or between the limitations of claim 9 and those of any of the dependent claims Therefore, claim 9 is representative for purposes of the rejections over Van Nguyen and Watari. Furthermore, the Appellants do not separately argue 3 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 Appeal 2016-008416 Application 14/012,838 the rejections of claims 14 and 22 over Van Nguyen, Watari and Chang; or the rejection of claim 13 and 21 over Van Nguyen, Watari and Chauvin, separately from the rejection of claim 9 over Van Nguyen and Watari.3 Therefore, we will sustain those rejections if the Examiner’s findings and reasoning with respect to the patentability of claim 9 survive the Appellants’ arguments. The Appellants present declarations executed by the named inventors, Thu Van Nguyen, Chi-Hung Lee and Renqin Zhang. These declarations testify to the problems the named inventors sought to address with the claimed subject matter; and offer reasons why the claimed subject matter would not have been obvious from the combined teachings of Van Nguyen and Chauvin. Because we do not sustain the rejection of independent claims 9 and 18 under § 103(a) as being unpatentable over Van Nguyen and Chauvin, we will not address the declarations further. We address two issues: First, would the subject matter of representative claim 9 have been obvious from the combined teachings of Van Nguyen and Chauvin? Second, would the subject matter of representative claim 9 have been obvious from the combined teachings of Van Nguyen and Watari? 3 The Appellants either quote or paraphrase limitations of dependent claims 15—17 and 23 in a paragraph spanning pages 7 and 8 of the Appeal Brief, dated November 9, 2015; and deny that Van Nguyen teaches limitations of dependent claims 13 and 21 in half a sentence near the bottom of page 7 of the Reply Brief, dated September 7, 2016. Neither statement constitutes a persuasive separate argument for the patentability of any dependent claim. 4 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Appeal 2016-008416 Application 14/012,838 FINDINGS OF FACT The record supports the following findings of fact (“FF”) by a preponderance of the evidence. Van Nguyen 1. Van Nguyen describes a multicomponent bat 20 for use in baseball or softball. (See Van Nguyen, col. 3,11. 30-32). The bat 20 has a hollow handle shell portion 22; and a bat barrel including an elongate hollow barrel shell portion 24 and an intermediate tapered section 26. (See Van Nguyen, col. 3,11. 33—38 & Figs. 1—4). As depicted in Figure 4, the bat barrel defines first and second open ends, with the first open end defined within an annular lip 60 at one end of the barrel shell portion 24; and the second open end 38 opening at an axially-opposed end of the intermediate tapered section 26. (See Van Nguyen, col. 4,11. 8—14; & col. 5,11. 13—15). 2. The handle shell portion 22 has a tapered (that is, flared) end portion 32 with external threads 40. The intermediate tapered section 26 of the bat barrel includes internal threads 42. (See Van Nguyen, col. 4,11. 8—14 & Figs. 3 & 4). As depicted in Figures 2-4, the tapered end portion 32 of the handle shell portion 22 has generally an outer surface configuration substantially matching the inner surface of the threaded section of the intermediate tapered section 26 of the bat barrel. The external threads 40 of the tapered end portion 32 of the handle shell portion 22 are adapted to engage the internal threads of the threaded section of the intermediate tapered section 26 of the bat barrel. (See Van Nguyen, col. 4,11. 15—20; & Figs. 2-4). 5 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 Appeal 2016-008416 Application 14/012,838 3. Van Nguyen describes method steps for assembling the multicomponent bat 20. These steps include inserting the handle shell portion 22 into the bat barrel through the first open end in the barrel shell portion 24; positioning the tapered end portion 32 of the handle shell portion 22 within the intermediate tapered section 26 of the bat barrel, with the remainder of the handle extending outwardly from the bat barrel; and threadedly attaching the tapered end portion 32 of the handle shell portion 22 to the threaded section of the intermediate tapered section 26 of the bat barrel. (See Van Nguyen, col. 4,11. 27—39 & Fig. 4). Chauvin 4. Chauvin describes a two-piece ball bat 10 including a barrel 12 and a handle 24. (See Chauvin, paras. 20 & 22; & Fig. 1). The barrel 12 has an open distal end 16. (See Chauvin, para. 20; & Fig. 2). In addition, the proximal portion of the barrel 12 defines a barrel taper segment 20 having an open proximal end 14. (See Chauvin, paras. 20 & 21; & Fig. 2). 5. Chauvin addresses problems of shock attenuation, feel and flexibility of a two-piece metal bat by connecting a barrel portion and a handle portion with a flexible joint. (See Chauvin, paras. 2 & 3). For example, an embodiment depicted in Figure 4A uses a universal joint to connect the barrel 12 and the handle 24. The universal joint includes a connection member 50. The connection member 50 is pivotably coupled to the barrel taper segment 20 at the open proximal end 14 by means of an axle or pin 52; and pivotably coupled to the handle 24 by another pin 52. 6 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Appeal 2016-008416 Application 14/012,838 Watari 6. Watari describes a ball bat IB including a handle 3 and a barrel 5 joined together through a connector 7B. (See Watari, col. 2,11. 51—53). 7. As depicted in Figure 6, and as suggested in Figure 2, the barrel 5 includes a pipe-shaped body part 5a and a tapered part 5b. The body part 5a has an open end 5c. The tapered part 5b tapers down toward an open end 13 axially-opposite the open end 5c. (See Watari, col. 2,11. 61 & 62; & col. 3,11. 5-8). 8. As depicted in Figure 6, a barrel joint lib defined in the interior of the tapered part 5b includes a first, smaller-diameter cylindrical bore 17 adjacent the open end 13; and a second, larger-diameter cylindrical bore 19 axially inward of the first cylindrical bore 17. The first and second cylindrical bores 17,19 are separated by an annular shoulder stop 21. The first cylindrical bore 77 has an internal thread 39. (See Watari, col. 3,11. 9-24; & col. 5,1. 65-col. 6,1. 3). 9. The handle 3 flares toward a handle joint 9 where the handle is joined to the connector 7B. (See Watari, col. 2,1. 66 — col. 3,1. 2 & Fig. 6). 10. The connector 7B is generally cylindrical in shape. As depicted in Figure 6, the exterior contour of the connector 7B includes a first, smaller- diameter cylindrical surface portion 27B designed to fit into the first cylindrical bore 7 7 of the barrel 5; and a second, larger-diameter cylindrical surface portion 29 designed to fit into the second cylindrical bore 19 of the barrel. The first and second cylindrical surface portions 27B, 29 are separated by an annular shoulder stop 31 designed to abut against the annular shoulder stop 21 separating the first and second cylindrical bores 77, 19. (See Watari, col. 3,11. 28—30 & 40-55). The first cylindrical surface 7 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Appeal 2016-008416 Application 14/012,838 portion 27B has an external thread 41 for engagement with the internal thread 39 of the first cylindrical bore 17. (See Watari, col. 5,1. 65 — col. 6, 1. 6). 11. The connector 7B has a flared channel 25 for receiving the handle joint 9 of the handle 3. During assembly, the handle joint 9 is inserted into the opening or channel 25; and a portion 7c of the connector 7B is crimped over an end of the handle joint 9 to affix the connector 7B to the handle 3. (See Watari, col. 3,11. 31—39 & Fig. 6). 12. During assembly, the handle 3 is inserted into the barrel 5 through the open end 5c (see Watari, col. 6,11. 7—10) until the shoulder stops 21, 31 abut (see Watari, col. 3,11. 52—55). As indicated by Figure 6, this step positions the connector 7B within the tapered part 5b of the barrel 5, with the remainder of the handle 3 extending outwardly from the barrel through the open end 13. The connector 7B is then threadedly attached to the barrel joint lib by means of the mating threads 39, 41. (See Watari, col. 6,11. 4—6). 13. The Appellants point out that Watari teaches the use of an additional outer fastener 33 including a lock nut 33b that abuts against a terminal end face 13a of the barrel 5 after the handle 3 and the barrel are joined. (See App. Br. 16; see also Watari, col. 3,1. 61 — col. 4,1. 3). Absent the mating threads 39, 41, as in the embodiment depicted in Figure 2, the outer fastener 33 cooperates with the terminal end face 13a of the barrel 5, and with the abutting shoulder stops 21, 31, to secure the handle 3 against axial movement relative to the barrel. (See Watari, col. 4,11. 39-49). In the embodiment depicted in Figure 6, where the handle 3 is joined to the barrel 5 by the mating threads 39, 41, the “lock nut 33b is engaged with the thread 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 Appeal 2016-008416 Application 14/012,838 33a [on the exterior of the handle 3 merely] to provide an effect of double nuts.” (Watari, col. 6,11. 4—6). 14. Watari teaches that the connector 7B may be integral with the handle 3. (See Watari, col. 8,1. 9). This suggests that the combination of the handle 3 and the connector 7B is interchangeable with an integral part incorporating the pertinent structures of both. ANALYSIS First Issue The Examiner has not proven that the subject matter of claim 9 or claim 18 would have been obvious from the teachings of Van Nguyen and Chauvin. Claims 9 and 18 are product-by-process claims. “If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985). The Examiner correctly finds that Van Nguyen describes a bat that would be the same as a bat manufactured by the process recited in either claim 9 or claim 18, excluding the steps of: providing an interconnecting member having generally an outer surface configuration substantially matching the inner surface of the bat barrel defining the inner connection region, and threads adapted to engage the threads of the inner connection region; [and] attaching a handle to the interconnecting member, including the step of inserting a first end of the handle into an opening of the interconnecting member, as recited in claim 9; or the steps of: providing an interconnecting member having generally conical outer surface configuration substantially matching the 9 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 Appeal 2016-008416 Application 14/012,838 inner surface of the bat barrel defining the inner connection region, and threads adapted to engage threads of the inner connection region; [and] attaching a handle to the interconnecting member, as recited in claim 18. (See Ans. 2; see also FF 1—3). The Examiner addresses this deficiency by citing the teachings of Chauvin relating to the embodiment depicted in Figure 4 of Chauvin. Figure 4A of Chauvin depicts a bat in which the barrel is coupled to the handle by means of a universal joint to provide both shock attenuation, and a desirable flexibility and “feel,” to the bat as a whole. (See FF 4 & 5). The Examiner finds that a connection member 50 of the universal joint corresponds to the interconnection member recited in claims 9 and 18 (see Ans. 3 & 4); and that Chauvin thereby teaches connecting the barrel and handle of a bat using a separate interconnecting member (see Ans. 5). The Examiner concludes that: The ordinarily skilled artisan would clearly understand that Chauvin’s teaching would be applicable to flexible or non- flexible bat connections and would have seen fit to apply such a teaching to Van Nguyen if it was desired to manufacture the bat from more component parts prior to final assembly to simplify the formation process of the constituent parts. (Ans. 5). As the Appellants point out, Chauvin teaches the use of a universal joint to improve the flexibility and “feel” of the bat. (See Appellant’s Brief, dated November 9, 2015 (“App. Br.”), at 10; see also FF 5). The claimed subject matter uses a more rigid threaded connection to join the barrel and handle. The Examiner has not persuasively explained why the teachings of Chauvin would have suggested, for example, separating an interconnection member from the tapered first end 32 of Van Nguyen’s handle portion 22 10 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Appeal 2016-008416 Application 14/012,838 without a reasonable expectation that doing so would have improved the flexibility of feel of the bat. (See App. Br. 12). We do not sustain the Examiner’s rejection of claims 9-11, 13, 15, 17—21 and 23 under § 103 as being unpatentable over Van Nguyen and Chauvin. With respect to claims 14 and 22, the Examiner cites Chang as demonstrating that “it is known in the art to provide the grip and knob portion of the bat handle as a single combined ‘sheath’ 30.” (Ans. 3). This finding does not remedy the deficiencies in the teachings of Van Nguyen and Chauvin as applied to independent claims 9 and 18. For the same reasons, we do not sustain the rejection of claims 14 and 22 under § 103 as being unpatentable over Van Nguyen, Chauvin and Chang. Second Issue As noted earlier, the Examiner correctly finds that Van Nguyen describes a bat that would have been the same as a bat manufactured by the process recited in representative claim 9, excluding the steps of: providing an interconnecting member having generally an outer surface configuration substantially matching the inner surface of the bat barrel defining the inner connection region, and threads adapted to engage the threads of the inner connection region; [and] attaching a handle to the interconnecting member, including the step of inserting a first end of the handle into an opening of the interconnecting member. Watari would have suggested that the combination of a connector affixed to a handle for use in joining the handle to the barrel of a bat would have been interchangeable with a handle having an integral handle joint for use in joining the handle to the barrel. (See FF 14). In view of this suggestion, it 11 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Appeal 2016-008416 Application 14/012,838 would have been obvious to substitute the combination of a connector affixed to a handle, such as was described by Watari, for the threaded handle shell portion 22 described by Van Nguyen, to join the handle to the barrel of a bat. The substitution would have yielded a bat satisfying the limitations of claims 9 and 18. The Appellants point out that Watari teaches the use of a threaded outer fastener 33 that abuts against the terminal end face 13a of Watari’s barrel 5. (See App. Br. 16; see also FF 13). The Appellants argue that omitting this outer fastener, while retaining its function, would have been non-obvious. (See App. Br. 16). The argument is not persuasive for two reasons. First, representative claim 9 is open-ended. The Appellants do not point out any limitation of claim 9 that would exclude the presence of an outer fastener such as that described by Watari. Hence, claim 9 does not omit this feature. Even if claim 9 did exclude a bat having such an outer fastener, the function of the outer fastener is merely to “provide an effect of double nuts.” (Watari, col. 6,11. 4—6; see also FF 13). Van Nguyen described a bat in which a single thread adequately joined the handle to the barrel. One of ordinary skill in the art would have had reason to omit the outer fastener, as well as the additional assembly step of affixing the outer fastener to the handle, to simplify manufacture; and Van Nguyen would have provided a reasonable expectation that a threaded joint would successfully join the handle and the barrel without the effect of double nuts. Therefore, we sustain the rejection of claims 9—11, 15, 17—20 and 23 under § 103(a) as being unpatentable over Van Nguyen and Watari. Because the Appellants have not presented a persuasive separate argument for the patentability of the remaining claims on appeal, we also sustain the 12 1 2 3 4 5 6 7 8 9 10 11 12 Appeal 2016-008416 Application 14/012,838 rejections of claims 14 and 22 under § 103(a) as being unpatentable over Van Nguyen, Watari and Chang; and of claim 13 and 21 under § 103(a) as being unpatentable over Van Nguyen, Watari and Chauvin. DECISION We AFFIRM the Examiner’s decision rejecting claims 9—11, 13—15 and 17—23. 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). AFFIRMED 13 Copy with citationCopy as parenthetical citation