Lytle, Michael F.Download PDFPatent Trials and Appeals BoardNov 1, 201914095326 - (D) (P.T.A.B. Nov. 1, 2019) 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. 14/095,326 12/03/2013 Michael F. Lytle MFL-101 8261 7590 11/01/2019 Nicholas J. Aquilino 235 Sweetbriar Drive Talent, OR 97540 EXAMINER BLAU, STEPHEN LUTHER ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 11/01/2019 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 MICHAEL F. LYTLE Appeal 2019-001848 Application 14/095,326 Technology Center 3700 Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 29–40. 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 the inventor, Michael F. Lytle. Br. 1. Appeal 2019-001848 Application 14/095,326 2 CLAIMED SUBJECT MATTER The claims are directed to a balanced set of iron type golf clubs. Claim 29, reproduced below with emphasis added, is illustrative of the claimed subject matter: 29. A set of a plurality of at least a combination of three golf clubs of progressive lofts that are matched to provide identical swing characteristics; each of the golf clubs including a club head, a shaft and a grip at the upper end of said shaft; each club being further defined by the shaft having an equal length; the club having an identical swing weight, an identical grip weight and an identical club head weight; each club head being further defined as having a front surface with a ball striking face, heel, toe, bottom sole, upper surface and a rear surface; each club head of the combination characterized by having an essentially identically located center of gravity defined by an intersection of a horizontal X-axis, a vertical Y-axis, and a posterior Z-axis located behind and equidistant from the ball striking face for each club in said combination; said Z-axis remaining constant in relation to the ball striking face as the loft changes. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Hull US 4,679,791 July 14, 1987 Horgen US 4,784,390 Nov. 15, 1988 Davis US 5,228,688 July 20, 1993 Nicolette US 7,207,900 B2 Apr. 24, 2007 Sugimoto “Sugimoto ’023” US 7,235,023 B2 June 26, 2007 Sugimoto “Sugimoto ’243” JP 2001-198243 A July 24, 2001 Appeal 2019-001848 Application 14/095,326 3 REJECTIONS2 I. Claims 35–40 are rejected under 35 U.S.C. § 112(b) as indefinite. II. Claims 29, 30, 32, 35, 36, and 38 are rejected under 35 U.S.C. § 103 as unpatentable over Horgen, Hull, Davis, Sugimoto ’243, and Sugimoto ’023. III. Claims 31, 33, 34, 37, 39 and 40 are rejected under 35 U.S.C. § 103 as unpatentable over Horgen, Hull, Davis, Sugimoto ’243, Sugimoto ’023, and Nicolette. IV. Claims 29 and 35 are rejected under 35 U.S.C. § 103 as unpatentable over Horgen, Hull, Davis, and Sugimoto ’243. OPINION Rejection I - Indefiniteness The Examiner finds that claims 35, 38, and 40 recite a set of clubs having at least two combinations of clubs with each combination having a minimum of three clubs, and that “each club [is] further defined by the shaft having an equal length, each club having an identical swing weight, an identical grip weight and an identical head weight,” and “[b]ased on Table 1 th[is] is true of each club in a combination but not of the set.” Final Act. 8. 2 A rejection of claims 29–40 under 35 U.S.C. § 112(a), as failing to comply with the enablement requirement, is withdrawn in the Answer. See Ans. 14– 15. The Examiner also has several objections to the Specification and drawings, most of which are withdrawn in the Answer. See Answer 12–13. As to any objection that is not specifically withdrawn, it is a petitionable matter, not an appealable matter, and thus is not within the jurisdiction of the Board. See In re Mindick, 371 F.2d 892, 894 (CCPA 1967). Appeal 2019-001848 Application 14/095,326 4 Thus, the Examiner finds that what is recited in claims 35, 38, and 40 does not comport with what is disclosed in Table 1. Although the Examiner correctly finds that Appellant’s Table 1 shows that each club of the combination is within the tolerance for maintaining essentially identical characteristics, but not each club of the set, as required by each of claims 35, 38, and 40, this difference does not make the claims indefinite. That is, the Examiner appears to understand what is meant by the claim, but merely considers that the claim is not supported by Table 1. As the scope of claims 35, 38, and 40 is clear, we do not sustain the Examiner’s rejection of claims 35, 38, and 40, and claims 36, 37, and 39 depending therefrom as indefinite. Rejection II – Obviousness – Claims 29, 30, 32, 35, 36, and 38 Appellant argues for the patentability of claims 29, 30, 32, 35, 36, and 38, as a group. Br. 16. We select claim 29 as representative of the group, and claims 30, 32, 35, 36, and 38 stand or fall with claim 29. The Examiner finds that Horgen discloses many of the limitations of the set of golf clubs recited in claim 29, including the clubs of the set being “matched to provide identical swing characteristics in the form of all irons having the same length, same overall weight, same swing weight, and the same lie with the only difference being their loft.” Final Act. 9 (citing Horgen, 4:57–64; Fig. 7). The Examiner relies on Hull to teach a combination of clubs that have a same grip, and relies on Davis to teach a combination of clubs having the same shaft length and identical swing weight, and considers a modification of Horgen to include these features to have been obvious in order to minimize design costs. Id. at 10–11. The Appeal 2019-001848 Application 14/095,326 5 Examiner finds that Horgen does not disclose that each head of the combination has an essentially identically located center of gravity defined by the intersection of a horizontal X-axis, a vertical Y-axis and posterior Z- axis, the center of gravity located behind and equidistant from the ball striking face for each club in the combination. Id. at 10. To remedy this deficiency, the Examiner turns to Sugimoto ’243 and Sugimoto ’023. Specifically, the Examiner finds that Sugimoto ’243 discloses a set of golf clubs “having an essentially identically located center of gravity defined by the intersection of the vertical Y-axis and posterior Z-axis … the center of gravity located behind and equidistant from the ball striking face for each club in the combination.” Final Act. 12. The Examiner determines that it would have been obvious to modify Horgen’s set of clubs to have an essentially identically located center of gravity defined by the intersection of the vertical Y-axis and posterior Z-axis and have the center of gravity located behind and equidistant from the ball striking face for each club in the combination “to prevent a ball from having too high of a trajectory for a club in the set.” Id. The Examiner finds that Sugimoto ’023 discloses a set of heads where each head of the combination has “an essentially identically located center of gravity defined by the intersection of the horizontal X-axis, a set having the X-axis located on a centerline of the face.” Id. at 12−13. The Examiner concludes that “it would have been obvious to modify the set of irons of Horgen … to use a known X-axis location of a center of gravity for an iron head which is used in the market place and would have a reasonable expectation of success to one skilled in the art.” Id. Appeal 2019-001848 Application 14/095,326 6 Teaching Away Appellant argues that “Horgen teaches away from Appellant’s invention since the CG of the Horgen club head must necessarily be located at a different place since Horgen shows different size heads with obvious different weights.” Br. 18. Specifically, according to Appellant, because Figures 4 and 5 of Horgen show club heads of “different sizes, these heads cannot be the same weight.” Id. The Examiner responds that each of Horgen’s club heads will have a center of gravity, and that one of ordinary skill in the art would know how to locate a center of gravity. Ans. 24. The Examiner notes that Sugimoto ’243 and Sugimoto ’023 “disclose a suitable location for the X, Y, and Z locations” for a set of clubs and provide a reason for having the center of gravity at a particular location. Id. We do not agree with Appellant that Horgen teaches away from the arrangement recited in claim 29. A reference teaches away from a claimed invention when a person of ordinary skill, “upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Horgen describes an embodiment of a set of golf clubs in which “all of the irons are of the same length, the same overall weight, the same swing weight, and the same lie. The only difference [] is their loft.” Horgen, 4:58–64, Fig. 7; see also Final Act. 9. Given that Horgen discloses a set of clubs that differ only in “their loft,” Appellant does not explain adequately why such a disclosure would discourage a person of ordinary skill in the art from a set of clubs that has an essentially identically located center of gravity. Appeal 2019-001848 Application 14/095,326 7 Hull, Center of Gravity Appellant argues that Hull “does not define the CG as the intersection of the X, Y and Z axes, as defined in [claim 29]. Rather Hull addresses the CG of the entire club, not just the club head, including the grip and shaft using only 2 axes.” Br. 19. According to Appellant Hull discloses using “the X-axis and [] the Z-axis,” but does not suggest “Appellant’s unique CG location that is behind and equidistant from the face at the intersection of the X, Y and Z axes.” Br. 19–22. In response, the Examiner notes that “Hull was not used to teach a CG location,” Sugimoto ’243 and Sugimoto ’023 were. Ans. 26. According to the Examiner, “Appellant is arguing each reference independent[ly] of the other references used in the rejection.” Ans. 27. Appellant’s argument is unavailing because the Examiner relies on Sugimoto ’243 and Sugimoto ’023 to teach the CG as the intersection of the X, Y and Z axes. See Final Act. 11–13. Thus, we agree with the Examiner that Appellant’s contention that the clubs in Hull lack such a center of gravity amounts to an attack on the references individually when the rejection is based on the combination of their teaching. Davis, CG Location Appellant argues that Davis does not disclose “a CG located equidistant from the face as defined by the appellant’s application.” Br. 23. Appellant asserts moreover that the use of the term “generally” in Davis “indicates the CG is not in the same location.” Br. 26. In response, the Examiner notes that “Davis was not used to teach a center of gravity, CG, located equidistant from the ball striking face. JP Appeal 2019-001848 Application 14/095,326 8 2001-198243 was used to teach this for a set of heads in a combination of clubs.” Ans. 27. The Examiner states, “Appellant is arguing each reference independent of the other references used in the rejection.” Ans. 28. Appellant’s argument is unavailing because the Examiner relies on Sugimoto ’243 to teach the CG equidistant from the face.3 See Final Act. 12. Thus, Appellant’s contention that the clubs in Davis lack such a center of gravity amounts to an attack on the references individually when the rejection is based on the combination of the teachings of all the references relied upon by the Examiner. Sugimoto ’243, Distance Varies Appellant argues: In [Sugimoto ’243], the CG distance from the face is represented by A1-An. It can be seen in Figures A, B and C that the distance from the face is significantly greater on the less lofted iron shown in A than the distance from the face shown in C. Looking at the table presented in [Sugimoto ’243], the difference in the CG location is verified since then “A” values, the distance from the face, varies between 7.0 mm to 5.2 mm, a 3 Although the Examiner is correct in characterizing this attack on Davis as an attack on the individual teachings of the cited references rather than an argument against the proposed combination of teachings, we note the Examiner states, with respect to Davis, “Davis discloses a plurality of at least a combination of three golf clubs in the form of a subset of irons of progressive loft where each club as the same head weight, the same shaft length (Abstract), and a head center of mass generally the same and below the center of the face (Col. 9, Lns. 40-43).” Final Act. 11. We understand this finding to support the Examiner’s proposed combination of the teachings of Sugimoto ’243 and Sugimoto ’023 with those of Davis and Horgen. Appeal 2019-001848 Application 14/095,326 9 significant differential as compared to the relative thin overall club face thickness. Br. 26. Thus, Appellant argues that the center of gravity in Sugimoto ’243 varies by an amount not permitted by the limitations of claim 29. Appellant contends that this is true for another reason. Specifically, Appellant also asserts that the CG of Sugimoto ’243 “moves vertically with each loft change of the club heads … and cannot be readable on Appellant’s limitation calling for an ‘essentially identically located CG’ and specifically the Appellant’s identical Y-axis.” Br. 27. According to Appellant, the variation in Sugimoto ’243 is “approximately 11 mm, a more substantial difference from Appellant’s variable of just over 3 mm,” because Sugimoto ’243 combines the tolerances of more than one (X, Y, Z) parameter, whereas only one tolerance applies to the claimed CG. Id. In this regard, Appellant states, “Appellant’s tolerance is based on the intersection point of all three axes and therefore only one tolerance applies. Thus, it can be seen Appellant’s [‘]identically located’ CG is considerably closer than the CG location of the [CG in Sugimoto ’243],” Id. Appellant also contends that Sugimoto ’243 discloses a range of CG values across the set of clubs, and “a range is not ‘identically located.’” Br. 27–28. In response, the Examiner finds that “Appellant has used a large variation for the location of the center of gravity … plus or minus 0.125 inches from its reference point (0.15 inches posterior the face (Z), aligned center line to the face (X), and a vertical height between .5 inches to .9 inches from the bottom of the head (Y)).” Ans. 31–32 (citing Spec. 6:4–9). The Examiner notes that in Sugimoto ’243, “value ‘A’ is the same [as] the Appeal 2019-001848 Application 14/095,326 10 distance along the Z-axis and in the direction to the rear from the face as shown in figure 9,” and has a value “from -5.2 mm for a SW to -7.0 mm for a 3 iron,” which is within the variation that the Specification discloses is “essentially identical/same located center of gravity.” Ans. 32. For the Y-axis location, the Examiner finds that Sugimoto ’243 calculates the Y-axis location “from the bottom of the sole or each head . . . between .5 inches to .9 inches from the bottom of the head allowing each heads location in the Y-axis to be within -3.175 mm to+ 3.175 mm from this reference point location.” Ans. 33. As to the claim limitation “essentially identically located,” the Examiner disagrees with Appellant’s assertion that claim 29 permits the application a tolerance to only one distance (variation) because the Specification discloses variation “along the X, Y, and Z axes.” Ans. 34. The Examiner has the better position. Appellant’s Specification discloses that “[t]he X, Y and Z axes may vary plus or minus 0.125 inches from its reference point.” Spec. 6:8–9. We agree with the Examiner that this is a large variation for each axis that can be considered to define an “essentially identically located enter of gravity” as recited in claim 29. That a distance along each axis varies is consistent with Appellant’s Table 1, which discloses nine values for “CG Z Axis” ranging from -0.11 to -0.19 inches, a difference of 0.08 inches or 2.032 mm. Spec. 11 (Table 1). Appellant’s Table 1 also discloses nine values for “CG Y Axis” ranging from 0.64 to 0.72 inches, a difference of 0.08 inches or 2.032 mm. Table 1 also discloses nine values for “CG X Axis” ranging from 0.03 to 0.05, a difference of 0.02 inches or 0.508 mm. Thus, distances along each of the X, Y, and Z axes are able to vary by plus or minus 0.125 inches, i.e. + 3.175 Appeal 2019-001848 Application 14/095,326 11 mm to -3.175mm (6.35 mm variation). Consequently, the broadest reasonable interpretation of the phrase “essentially identically located” in claim 29 allows for the above-noted tolerance to be applied to each of the X, Y, and Z axes. Sugimoto ’243 discloses A values (depth A is the perpendicular length “from a center-of-gravity point of the head of an iron golf club to the face surface”) that is, Z-axis values (see Sugimoto ¶ 7), ranging from 5.2 mm to 7.0 mm, a difference of 1.8 mm. Sugimoto, ¶ 25 (Table 1). Sugimoto ’243 also discloses B values (height B is the height “from the aforementioned horizontal surface in the reference state of the club . . . at which the aforementioned altitude and the aforementioned face surface cross”) that is, values from which the Y-axis values are obtained (see Sugimoto ¶ 7; see also Enclosures 1 and 2 attached to the Final Action), ranging from 18.6 to 20.7 mm, a difference of 2.1 mm. Sugimoto, ¶ 25 (Table 1). Sugimoto ’243 similar to the present application, has Y and Z axes that vary within the range of plus or minus 0.125 inches from its reference point. Namely, the Sugimoto ’243 Z-axis range of 1.8 mm is less than the range of 2.032 mm in Appellant’s Table 1 and is much less than “plus or minus 0.125 inches (3.175 mm)” or a difference of 6.35 mm. The Sugimoto ’243 Y-axis range of 2.1 mm is similar to Appellant’s range of 2.032 mm, and much less than 6.35 mm. Even Sugimoto ’243’s combined tolerance of 1.8 and 2.1, which is 3.9 mm, is within the disclosed range of 6.35 mm. Contrary to Appellant’s contention that Sugimoto ’243 discloses CG’s only for some claims, but not the whole set (Br. 27–28), Sugimoto ’243’s tolerance is not only for “adjoining clubs,” but is for clubs #3 to SW in Appeal 2019-001848 Application 14/095,326 12 Table 1. See Sugimoto ’243, Table 1. Thus, Sugimoto ’243 teaches that the disclosed tolerance extends over the entire range of ten clubs for Table 1. Moreover, given that the Specification discloses that “[t]he range of parameters” includes “the vertical center of gravity between 0.50 inches and 0.90 inches, and the horizontal center of gravity 0.125 inches from the centerline of the ball striking face, and the anterior/posterior center of gravity 0.125 inches from its reference point of 0.15 inches behind the striking face” (Spec. 3:10–20), Appellant’s assertion that “a range is not ‘identically located’” (Br. 28) is unavailing. We are not apprised of error in the Examiner’s interpretation of the term “essentially identically located center of gravity,” based on the broadest reasonable interpretation of this term consistent with the Specification. Sugimoto ’023, CG Location Appellant argues that Sugimoto ’023 discloses different CG locations “for the long, middle and short irons.” Br. 28 (citing Sugimoto ’023, 8:43– 51). According to Appellant, although “Sugimoto [’023] discloses the CG is located on the horizontal X-axis,” Sugimoto ’023 does not suggest that “the CG is located at an essentially identically located position behind the striking face at an intersection of the X, Y and Z axes.” Id. The Examiner responds that the combined teachings of Sugimoto ’243 and Sugimoto ’023 were relied upon for the X, Y, and Z axes. Ans. 36. The Examiner finds that for the X-axis, Sugimoto ’023 “suggests having all the long, middle and short irons being at the centerline plus or minus 3 mm which would meet the condition of the center of mass being aligned with the Appeal 2019-001848 Application 14/095,326 13 centerline of the face plus or minus 3.125 mm (plus or minus .125 inch).” Id. Appellant’s argument is not persuasive. As the Examiner correctly finds, Sugimoto ’243 already discloses Y-axis and Z-axis values, but is silent as to X-axis values, and the Examiner only relies on Sugimoto ’023 for X- axis values. Specifically, the Examiner starts with the Y and Z values of Sugimoto ’243 and applies the known X-axis location values in the device of Horgen to yield the predictable result of increased carry. Final Act. 13; see also Sugimoto ’023, 11:43–46 (“the long carry can be obtained in all the number of the irons while keeping the strength. In other words, it is possible to confirm an advantage of the present invention.”). Here, Sugimoto ’023 discloses that for “the long iron, the horizontal distance Xi is . . . preferably between -3 and 0 mm. In the middle iron, the horizontal distance Xi is … preferably between -1 and +1 mm. In the short iron, the horizontal distance Xi is . . . preferably between 0 and +3 mm.” Sugimoto ’023, 6:40–7:11; see also Final Act. 13. Thus, as the Examiner correctly finds, each of the long, middle, and short irons vary within the tolerance of plus or minus 0.125 inches, and thus have an “essentially identical” X-axis position consistent with the Specification. See Ans. 36. That is, consistent with the Specification, “a horizontal distance Xi along the hitting face F between a face center FC and the center Z” (Sugimoto ’023, 5:42–43; Fig. 6) “is located at the centerline of the club face . . . [which] may vary plus or minus 0.125 inches from its reference point.” Spec. 6:6–9; Fig. 5. Any difference between long, middle, and short irons in Sugimoto ’023 is within the disclosed tolerance. Appellant does not apprise us of error on this point. Appeal 2019-001848 Application 14/095,326 14 No Reasonable Expectation of Success Appellant argues that the Examiner has not shown that “based on the prior arts’ teachings and any other technical directions a person of ordinary skill would have had a reasonable expectation of success in combining the prior art with a finite number of choices and without the need for experimentation.” Br. 36. Appellant’s argument on this point is unavailing. Both Sugimoto ’243 and Sugimoto ’023 evidence that one of ordinary skill in the art would have been able to select a set of clubs having essentially identical axis locations.4 “Obviousness does not require absolute predictability of success.” In re O'Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416–417 (2007) (“if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Appellant does not provide persuasive technical reasoning why modifying Horgen to have a CG as taught by Sugimoto ’243 and Sugimoto ’023 would have been beyond the abilities of one of ordinary skill in the art. Hindsight Appellant argues that “the prior art does not offer any teaching or technical guidance that a person of ordinary skill could combine . . . that 4 Davis also addresses this characteristic generally, stating, “since the vertical height 66 is the same for all irons, the face presented to the ball . . . will be the same regardless of the number of the iron[, and t]he center of mass stays generally the same and below the center of the face.” Davis, 9:37–43. Appeal 2019-001848 Application 14/095,326 15 would end up with Appellant’s claimed set of golf clubs. To contend otherwise can only be explained as a classic ‘hindsight’ conclusion.” Br. 35–36. The Examiner responds that the rejection is proper “as long as there is proper motivation which the Examiner believes there is.” Ans. 38. The Examiner has the better position on this point. Both Sugimoto ’243 and Sugimoto ’023 provide guidance as to how to locate the center of gravity and why its location is important. We reproduce Figures 1(A), (B), and (C) of Sugimoto ’243 below. Figures 1(A), (B), and (C) show cross-sections of three golf club irons. Sugimoto ’243 ¶ 11. As seen in these Figures, the center of gravity G is behind the ball striking face as claimed and is based on the intersection of the Y-axis (B) and the Z-axis (A). Final Act. 12. Sugimoto ’243 discloses that “[t]he center of gravity depth (Al–An) and height of center of gravity (Bl–Bn) of each iron golf club (2a-2c)” is chosen to prevent the “ball from going up too high with the golf club of highest gage. Difference of flying Appeal 2019-001848 Application 14/095,326 16 distance between gages is equalized.” Sugimoto ’243, Abstract. The Examiner’s finding that Sugimoto ’243 provides a specific center of gravity for the purpose of preventing a ball from having too high of a trajectory is supported by a preponderance of the evidence, and, based on this purpose, the Examiner’s reasoning for modifying Horgen to include such a center of gravity is supported by rational underpinning. Sugimoto ’243 does not disclose an X-axis location, and the Examiner relies on Sugimoto ’023 for this feature. See Final Act. 12–13. Sugimoto ’023 chooses the X-axis location so that “an iron type golf club set [] can obtain the longest carry in each number of irons while maintaining a durability.” Sugimoto ’023, 1:11–13; 1:54–2:24 “SUMMARY OF THE INVENTION.” Thus, the Examiner’s finding that one of ordinary skill in the art would have a reasonable expectation of success of using Sugimoto ’023’s specific X-axis location for a center of gravity for the purpose of increasing ball carry is supported by a preponderance of the evidence, and, based on this purpose, the Examiner’s reasoning for modifying Horgen to include such a center of gravity is supported by rational underpinning. Accordingly, we do not agree that the Examiner’s rejection is based on impermissible hindsight. Defined Reference Points Appellant argues that “the present invention does not use traditional reference points,” and that the Examiner’s comparison is improper because the Examiner has not established reference points. Br. 39. “[T]he comparison must be made in three axes to represent the true or actual CG and this requires first defining the reference points that each axis is Appeal 2019-001848 Application 14/095,326 17 measured from.” Id. According to Appellant depending on the reference point, a different center of gravity will be obtained. Br. 40–43. Appellant contends that none of the references “shows or suggests the location of the CG equidistant from the face as presented in the claims of the appealed application.” Br. 44–45. Appellant’s argument is not persuasive. The Examiner relies on Sugimoto ’243 and Sugimoto ’023 to establish a center of gravity. As seen in Figures 1(A), (B), and (C) of Sugimoto ’243, above, the reference point is the sweet spot P on the face of the club. Specifically, Sugimoto ’243 discloses that in the reference state of the club, the club head is placed on the horizontal surface, and the lie angle and loft angle are “set up to the sweet spot at which the aforementioned altitude and the aforementioned face surface cross.” Sugimoto ’243 ¶ 7. From sweet spot P, the height B, which determines the Y-axis (see Examiner’s Enclosures (1) and (2), Y=B-W), and the depth A, which is the Z-axis, as measured from the face of the club are determined. This provides a center of gravity G behind and equidistant from the ball striking face. Similarly, Sugimoto ’023 discloses that “in the standard state where the head 2 is mounted on the horizontal plane at the specified lie angle and loft angle, a horizontal distance Xi along the hitting face F [is] between a face center FC and the center Z [sweet spot, SS].” Sugimoto ’023, 5:40–43; Fig. 7; see also Final Act. 12–13. Similar to Sugimoto ’243, Sugimoto ’023 discloses the center of gravity behind the ball striking face (see Sugimoto ’023), and thus, the combination would result in the center of gravity as claimed. Thus, although no single reference discloses the CG, the Examiner relies on the combined teachings of Sugimoto ’243 and Sugimoto ’023, which both define the CG with respect Appeal 2019-001848 Application 14/095,326 18 to the sweet spot. A preponderance of the evidence supports the Examiner’s position that the combined references teach that each club head of a set has an essentially identically located center of gravity defined by an intersection of a horizontal X-axis, a vertical Y-axis, and a posterior Z-axis located behind and equidistant from the ball striking face for each club in the set. We have considered all of Appellant’s arguments for the patentability of claim 29. However, we sustain the Examiner’s rejection of claim 29 as unpatentable over Horgen, Hull, Davis, Sugimoto ’243, and Sugimoto ’023. Claims 30, 32, 35, 26, and 38 fall with claim 29. Rejection III – Obviousness – Claims 31, 33, 34, 37, 39, and 40 Each of claims 31, 33, 34, 37, 39, and 40 recites, inter alia, “a rear weight … and a cavity in said rear weight.” The Examiner finds that Nicolette discloses a rear weight and a cavity in the rear weight, and considers that it would have been obvious to include the same in Horgen “to have a weight adjustment feature on a head,” or alternatively, “to use an alternate design to place weight on the lower portion of the rear surface of a head as compared JP 2001-198243.” Final Act. 14. Appellant argues that “Nicolette’s patent is about add-on weight adjustment pieces that are separate from the body of the clubs. The club head of the present invention does not utilize a weight adjustment member. In contrast, the club’s mass is entirely within the head without the need for an adjustment member.” Br. 29. According to Appellant, “one of ordinary skill in the art would not look to [] Nicolette . . . The technology is totally different.” Id. Appeal 2019-001848 Application 14/095,326 19 Appellant’s argument does not apprise us of Examiner error because, rather than addressing the Examiner’s proposed combination wherein only Nicolette’s broad teaching of a rear weight and cavity are included in Horgen, the argument depends on a bodily incorporation of a weight adjustment member in the cavity of Nicolette in the arrangement disclosed by Horgen, and there is no requirement that the teachings of the cited references be able to be bodily incorporated. See In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). Rather, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. Assuming, arguendo, that an integrally formed as opposed to add-on weight is indeed necessary, Appellant makes no assertion that making an integral weighted club would have been beyond the level of ordinary skill in the art. We sustain the rejection of claims 31, 33, 34, 37, 39, and 40 as unpatentable over Horgen, Hull, Davis, Sugimoto ’243, Sugimoto ’023, and Nicolette. Rejection IV – Obviousness – Claims 29 and 35 The Examiner makes an alternative rejection of claims 29 and 35 finding that these claims “are able to be read that it is the posterior Z axis located behind and equidistant from the ball striking face for each club instead of the center of gravity.” Final Act. 14. Appellant does not include this ground of rejection in the “SUMMARY OF THE GROUNDS OF REJECTION TO BE REVIEWED Appeal 2019-001848 Application 14/095,326 20 UPON APPEAL.” Br. 7. The Examiner does not list this rejection in the “WITHDRAWN REJECTIONS” section of the Answer. Ans. 12–15. Thus, for the purposes of the Appeal, this rejection stands, and Appellant waived any argument on this issue. Accordingly, we summarily affirm the rejection of claims 29 and 35 as unpatentable over Horgen, Hull, Davis, and Sugimoto ’243. CONCLUSION We reverse the Examiner’s rejection of claims 35–40 as indefinite. We affirm the Examiner’s rejection of claims 29, 30, 32, 35, 36, and 38 as unpatentable over Horgen, Hull, Davis, Sugimoto ’243, and Sugimoto ’023. We affirm the Examiner’s rejection of claims 31, 33, 34, 37, 39 and 40 as unpatentable over Horgen, Hull, Davis, Sugimoto ’243, Sugimoto ’023, and Nicolette. We affirm the Examiner’s rejection of claims 29 and 35 as unpatentable over Horgen, Hull, Davis, and Sugimoto ’243. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C § Basis Affirmed Reversed 35–40 112(b) Indefinite 35–40 29, 30, 32, 35, 36, 38 103 Horgen, Hull, Davis, Sugimoto ’243, Sugimoto ’023 29, 30, 32, 35, 36, 38 31, 33, 34, 37, 39, 40 103 Horgen, Hull, Davis, Sugimoto ’243, 31, 33, 34, 37, 39, 40 Appeal 2019-001848 Application 14/095,326 21 Claims Rejected 35 U.S.C § Basis Affirmed Reversed Sugimoto ’023, Nicolette 29, 35 103 Horgen, Hull, Davis, Sugimoto ’243 29, 35 Overall Outcome 29–40 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation