Long, Keenan et al.

Patent Trials and Appeals Board

Oct 31, 2019

14918513 - (D) (P.T.A.B. Oct. 31, 2019)

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.
14/918,513 10/20/2015 Keenan Long 113507-8110.US00 6346
34055 7590 10/31/2019
PERKINS COIE LLP - LOS GENERAL
POST OFFICE BOX 1247
SEATTLE, WA 98111-1247
EXAMINER
GRAHAM, MARK S
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
10/31/2019 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KEENAN LONG and
GRANT DOUGLAS

Appeal 2019-002147
Application 14/918,513
Technology Center 3700
____________

Before MICHAEL L. HOELTER, MICHAEL J. FITZPATRICK, and
FREDERICK C. LANEY, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–8, 10, 11, 13, 21, and 23–25.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Easton
Diamond Sports, LLC.” Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The disclosed subject matter generally relates to “[b]aseball and
softball bats [that] have conventionally included a knob at the end of the bat
handle primarily to reduce the risk of the bat being thrown from a player's
hands during a swing.” Spec. ¶ 1. Apparatus claims 1, 8, 21, 23, and 24 are
independent. Claim 1 is illustrative of the claims on appeal and is
reproduced below.
1. A sporting-good implement, comprising:
a body including a handle region;
a knob at a distal end of the handle region; and
a grip including:
a knob portion positioned only over the knob; and
a handle portion integral with the knob portion,
extending from the knob portion, and positioned over at least a
portion of the handle region;
wherein at least a portion of the handle portion has
a higher hardness than at least a portion of the knob portion.
EVIDENCE

Name Reference Date
Zimmerman US 1,165,484 Dec. 28, 1915
Kelsey US 5,624,114 April 29, 1997
Kou US 2009/0075747 A1 Mar. 19, 2009
REJECTIONS
Claims 1, 2, 6–8, 10, 11, 13, 21, and 23–25 are rejected under 35
U.S.C. § 103 as unpatentable over Kelsey and Kou.2
Claims 4 and 5 are rejected under 35 U.S.C. § 103 as unpatentable
over Kelsey, Kou, and Zimmerman.

2 The Examiner also lists dependent claim 22, but claim 22 was canceled.
See Appeal Br. 26 (Claims Appendix); Ans. 4.
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ANALYSIS
The rejection of claims 1, 2, 6–8, 10, 11, 13, 21, and 23–25
as unpatentable over Kelsey and Kou
Appellant argues claims 1, 2, 6–8, 10, 11, 13, 21, and 23–25 together.
See Appeal Br. 14–22. We select claim 1 for review, with the remaining
claims standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner primarily relies on the teachings of Kelsey, including
the disclosure of a “knob portion of the grip 4” and a “handle portion 5” that
“extends from the knob.” Non-Final Act. 4. However, although Kelsey
provides a hardness value of “sleeve 4” (Kelsey 4:65–67), “Kelsey does not
give [the] . . . particular hardness” of handle portion 5 (which “may be made
of leather or a synthetic material (Col. 4, line 26)).” Non-Final Act. 4.
Hence, Kelsey fails to expressly teach the limitation, “wherein at least a
portion of the handle portion has a higher hardness than at least a portion of
the knob portion.”
On this point, the Examiner relies on Kou for teaching that “it is
known to provide grips on sporting good implements including bats, ¶1, 2,
with different hardnesses in different regions.” Non-Final Act. 4.
Particularly, the Examiner relies on Kou for specifically teaching “that the
hardness at the knob end of the grip is less than that of the more distal
portion of the grip as per claims 8 and 10 of Kou.”3 Non-Final Act. 4.
Accordingly, the Examiner reasons that one skilled in the art “knowing

3 The Examiner finds that “Kou also makes clear throughout his disclosure
that the ordinarily skilled artisan may choose different grip hardnesses on
different portions of his grip depending on user preference.” Non-Final Act.
4; see also Kou ¶¶ 6 (“there still exists a need for a hand grip that provides a
variable hardness range over the grip”), 8 (“there are at least three sections
or zones of varying hardness values”).
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Kelsey’s desire for a relatively cushioned knob grip portion 4 to have made
this portion softer than other portions of the grip.” Non-Final Act. 4. The
Examiner also states, “Kou teaches that using varied hardnesses in the grip
gives the advantages of providing a good grip.” Non-Final Act. 4; see also
Kou ¶ 23 (addressing “proper grip feel”).
Appellant provides a discussion regarding a prima facie case of
obviousness (see Appeal Br. 8–10); of both Kelsey and Kou (see Appeal Br.
10–12); and a recap of the Examiner’s rejection (see Appeal Br. 12–14).
Thereafter, Appellant contends, “[i]t would not have been obvious to
modify Kelsey to include different hardnesses in different regions.”
Appeal Br. 15. Appellant argues that the claimed arrangement “provides
enhanced safety . . . while also maintaining proper feel for the upper hand on
the handle portion.” Kelsey, on the other hand, “does not teach different
hardnesses,” and “Kou discloses a grip for a straight golf club handle” (i.e.,
“Kou’s golf club does not have a knob”). Appeal Br. 15; see also Reply Br.
3 (“[t]he Examiner fails to provide an articulated reason to modify
Kelsey with Kou”), 5.
As noted above, the Examiner already acknowledges that Kelsey fails
to disclose the hardness of the handle portion, and thus relies on Kou for
teaching different hardnesses at different portions of a grip. See Non-Final
Act. 4. Regarding Kou disclosing a grip for a golf club, the Examiner
identifies where Kou also specifically discloses many types of grips
“including without limitation . . . bats (baseball or softball)” and that “it
should be immediately apparent that the present disclosure is applicable to
other grips as well.” Kou ¶ 2 (referenced at Non-Final Act. 4 and Ans. 5).
Regarding the issue of a knob lacking on Kou’s golf club, “the examiner
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notes that it is Kelsey, not Kou, which discloses the grip on a baseball bat
comprising a knob portion 4.” Ans. 6; see also Non-Final Act. 4. Further,
the Examiner’s reason for the combination, as noted above, is to “provid[e] a
good grip” and to also allow “a user to easily identify locations of changes in
hardness . . . of the grip to maximize [] responsiveness and effectiveness
when swinging the implement with the grip.” Non-Final Act. 4–5; Ans. 5.
Appellant does not make clear how these motives fail to provide articulated
reasoning with rational underpinning that support the conclusion of
obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Accordingly,
Appellant’s contentions above are not persuasive of Examiner error.
Appellant also contends that “[t]o assume that Kou’s handle grip can
apply to a ball bat is hindsight” (Appeal Br. 15; see also Reply Br. 6) but
this assertion is wholly undermined by Kou’s express statement that its
teachings (as noted above) can apply to baseball, softball, or other grips as
well. See Kou ¶ 2.
Appellant further contends, “Kou has nothing to do with making an
upper or knob end of a device softer.” Appeal Br. 16. However, as the
Examiner pointed out, claims 8 and 10 of Kou recite different hardnesses for
the knob portion and the handle portion. See Non-Final Act. 4; Ans. 5.
Claim 8 recites a knob Shore hardness range having lower values than the
range recited in claim 10 pertaining to the handle portion.4 In view of such

4 To be clear, claim 8 (pertaining to the knob portion) recites a range of
“from approximately 55 to approximately 40 Shore A” whereas claim 10
(pertaining to the handle portion) recites a range of “approximately 60 to
approximately 45 Shore A.” Hence, the values for the knob portion trend
lower (i.e., softer) than those for the handle portion.
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teachings, Appellant’s argument that “Kou has nothing to do with making an
upper or knob end of a device softer” is not persuasive. Appeal Br. 16.
Appellant also contends, “[t]here is no explanation in Kou of how a
ball bat would implement Kou's technology.” Appeal Br. 16; see also Reply
Br. 6. First, Appellant’s claim 1 itself does not address the manner by which
the product is made and thus this argument is inapposite. Regardless, Kou
identifies Figure 9 as disclosing “one-half of a compression mold used in
making the grip according to the present disclosure.” Kou
¶ 18. Appellant does not explain how it is beyond the ability of a skilled
person to merely change the shape of Kou’s compression slots 48 in mold 50
(see Kou ¶ 35; Fig. 9) so as to accommodate bats instead of golf clubs.
Appellant also contends, “[i]t would not have been obvious to
modify Kelsey’s sleeve and grip to be integral,” and, instead, the
Examiner is relying “on speculation and impermissible hindsight.” Appeal
Br. 17; see also Reply Br. 2. To be clear, the Examiner states, “[r]egarding
the integral limitation added to claims 1, 8, and 21, Kelsey uses separable
portions to form his grip 4, 5. However, as disclosed by Kou it is known in
the art to use an integral knob and handle portion.” Non-Final Act. 5; see
also Ans. 7. The Examiner supports this finding by stating, “it is well
established that making a known device integral is not an unobvious step for
the ordinarily skilled artisan, In re Larson, 340 F.2d 965, 968, 144 USPQ
347, 349 (CCPA 1965).” Ans. 7. The Examiner’s understanding is further
confirmed by the Supreme Court which, when addressing a similar situation
in Howard v. Detroit Stove Works, 150 U.S. 164, 170 (1893), stated that a
prior art grate was “cast in two pieces, while the [claimed invention] . . . is
cast in one piece. This does not involve patentable invention.” In view of
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such guidance from our reviewing courts concerning the making of a single
part from two previously separated pieces, we are not persuaded the
Examiner erred in concluding that it is obvious to make a known device
integral.
Appellant further argues that “[i]f Kelsey's sleeve (4) was integral
with the grip (5), Kelsey's sleeve (4) would no longer be operable for its
intended purpose–to stack the sleeve along the length of a handle.” Appeal
Br. 19; see also Reply Br. 2. Indeed, Kelsey addresses allowing a user to
“choke-up” on the bat (see Kelsey 2:29–30; 3:12–15), but Kelsey also
provides a different purpose, i.e., “to protect the batter’s hand from shock
and vibrations and to provide improved gripping characteristics.” Kelsey
4:30–32. Appellant does not explain how the modification suggested by the
Examiner would no longer be able to protect the batter’s hand as described.
When there are multiple factors to consider, “[t]he fact that the motivating
benefit comes at the expense of another benefit, however, should not nullify
its use as a basis to modify the disclosure of one reference with the teachings
of another.” Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8
(Fed. Cir. 2000). Regardless, such a modified grip as suggested by the
Examiner does not preclude a user from still “chocking-up” on the bat while,
at the same time, still allowing the batter’s hand to be protected from shock
incurred as a result of gripping elsewhere along the handle (i.e., not abutting
the knob). We thus agree with the Examiner’s finding that “making the
knob portion 4 integral with handle portion 5 does not make Kelsey’s grip
inoperable for its intended purpose.” Ans. 7. Accordingly, Appellant’s
contention is not persuasive of Examiner error.
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Appellant further contends that the Examiner’s combined sleeve
“would not be installable on a bat.” Appeal Br. 19. On this point, the
Examiner states “no evidence has been provided to support appellant’s
assertion that grip portion 5 is not stretchable to fit over and past an end
knob.” Ans. 7. The Examiner clarifies that “numerous known synthetic grip
materials such as urethane for example are stretchable” so as to fit over the
knob. Ans. 7; see also Kelsey 4:25–26 (stating that grip 5 “can be made of
leather or suitable synthetic material”); Kou ¶ 25 (the various zones are
“made from an elastomeric material”). In view of such teachings,
Appellant’s argument is not persuasive that the modified sleeve “would not
be installable on a bat.” Appeal Br. 19. This is especially the case given
that Kou teaches an integral grip for use on bats. See Kou ¶ 2 and its various
Figures.
Appellant also argues, “[t]he Examiner mischaracterizes Kelsey’s
separate grip (5) and sleeve (4) as a ‘grip structure.’” Reply Br. 3.
Appellant identifies the portion of Kelsey relied upon by the Examiner (i.e.,
“Col. 2, lines 20-22 and Col. 4 line 24”) but contends, “the cited passages do
not suggest any intent to form a ‘grip structure.’” Reply Br. 3. More
specifically, Appellant contends, “[r]ather, the cited passages merely refer to
prior-art bat-grip technology, not to any intent to combine the separate
sleeve (4) and grip (5) as a ‘grip structure.’” Reply Br. 3. First, Appellant
does not explain how the Examiner erred in referring to components 4 and 5,
both of which assist the user in gripping the bat, as a “grip structure.”
Second, regarding their combination, and whether such combination would
have been obvious, see Larson and Howard above.
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Appellant further argues that the Examiner “mischaracterizes Kou’s
golf club grip as a ‘two part grip.’” Reply Br. 3. Appellant contends
“Kou teaches a single grip.” Reply Br. 3. In reality, Kou discloses a single
grip having different sections or zones therein. See Kou ¶ 8 (“there are at
least three sections or zones of varying hardness values”). Accordingly, we
do not fault the Examiner for addressing Kou as a single grip having
different zones.
In summation, these and Appellant’s further arguments directed to
purposes of intended use, as well as contending that the Examiner relied on
speculation or hindsight, are not persuasive of Examiner error. See Appeal
Br. 19–21; see also Ans. 7–8. Accordingly, we sustain the Examiner’s
rejection of claims 1, 2, 6–8, 10, 11, 13, 21, and 23–25 as being unpatentable
over Kelsey and Kou.
The rejection of claims 4 and 5
as unpatentable over Kelsey, Kou, and Zimmerman
Appellant does not present arguments for claims 4 and 5 separate
from those considered above. See Appeal Br. 22. Accordingly, we are not
persuaded the Examiner erred in finding claims 4 and 5 obvious over
Kelsey, Kou, and Zimmerman.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1, 2, 6–8,
10, 11, 13,
21, 23–25
§ 103 Kelsey, Kou  1, 2, 6–8, 10,
11, 13, 21, 23–
25

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
4, 5 § 103 Kelsey, Kou,
Zimmerman 
4, 5
Overall
Outcome
1, 2, 4–8, 10,
11, 13, 21, 23–
25

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