Lytle, Michael F.

Patent Trials and Appeals Board

Nov 1, 2019

14095326 - (D) (P.T.A.B. Nov. 1, 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.
14/095,326 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.
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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

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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).
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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
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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.

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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.
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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
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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.
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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
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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
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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
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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
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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.

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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.
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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
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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
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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
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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.
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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
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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

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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