Thompson, Garth

Patent Trials and Appeals Board

Mar 26, 2020

15223354 - (D) (P.T.A.B. Mar. 26, 2020)

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.
15/223,354 07/29/2016 Garth Thompson 2481.1001 9319
21171 7590 03/26/2020
STAAS & HALSEY LLP
SUITE 700
1201 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
PENG, RAYSHUN K.
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
03/26/2020 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):
ptomail@s-n-h.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARTH THOMPSON
Appeal 2019-002283
Application 15/223,354
Technology Center 3700

Before WILLIAM A. CAPP, JEREMY M. PLENZLER, and
BRENT M. DOUGAL, Administrative Patent Judges.

DOUGAL, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection of claims 1–9 under 35 U.S.C. § 103 as unpatentable
over Sgroi (US 2015/0104251 A1, pub. Apr. 16, 2015) in view of Wu (US
2004/0134304 A1, pub. July 15, 2004). See Final Act. 2. 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 Garth Thompson.
Appeal Br. 1.
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Application 15/223,354
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CLAIMED SUBJECT MATTER
The claims are directed to a lacrosse stick head mounting system.
Claims 1 and 7 are independent. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A lacrosse stick head comprising:
a first wedge surface of a base and an oblique wedged end
cap and a head longitudinal axis, the oblique wedged end cap
disposed proximate to the first wedge surface, and the head
longitudinal axis substantially coaxial with a head base
longitudinal axis; and
a head assembly comprising the lacrosse stick head and
the oblique wedged end cap inserted into a handle with a fastener
passing through a throat of the lacrosse stick head and
substantially coaxial with the head longitudinal axis.
OPINION
Claims 1–3, 5, 6
Appellant argues the rejection of claims 1–3, 5, and 6 together. We
select independent claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv)
(2017) (permitting the Board to select a single claim to decide the appeal as
to a single ground of rejection of a group of claims argued together).
The Examiner finds that Sgroi’s lacrosse stick teaches all of the
features of claim 1, except for “a wedge surface of a base and an oblique
wedged end cap and a fastener substantially coaxial with the head
longitudinal axis.” Final Act. 3. The Examiner finds that Wu teaches this
type of “connection means” and determines that it would be obvious to
substitute “equivalent component[s],” or “one connection means for
another.” Id. at 3–4, 7. The Examiner further determines that Wu’s
connection means would “provide a more secure connection.” Id. at 3.
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Appellant argues that Sgroi already “allows for a secure connection
without any movement,” and thus there is no reason to replace Sgroi’s
connection with that of Wu. Appeal Br. 4. In the rejection, the Examiner
cited In re Fout, 675 F.2d 297 (CCPA 1982) for the proposition that “an
express suggestion [in the art] to substitute one equivalent component or
process for another is not necessary to render such substitution obvious.”
Final Act. 4. Appellant’s argument takes the opposite position of this case
law, implying that the Examiner needs a better reason for the combination,
while not addressing it.
The fact that the prior art may already perform adequately does not
preclude a skilled artisan from seeking to improve upon it. See Dystar
Textilfarben GmBH & Co, v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed.
Cir. 2006) (the desire to enhance commercial opportunities by improving a
product or process is universal—and even common-sensical). Further, the
Supreme Court has instructed that “when a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
predictable result.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)
(citing United States v. Adams, 383 U.S. 39, 50–51 (1966)). Appellant does
not identify that the claimed combination of elements does “more than yield
a predictable result.”
For these reasons we are not informed of error in the Examiner’s
rejection.
Appellant also argues that Sgroi teaches away from modification with
Wu when Sgroi “notes that, with respect to a sheet metal screw inserted
through the hole of the lacrosse head and threaded into the hole on the
aluminum pole for tightening, various implements can become loose during
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Application 15/223,354
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normal use.” Appeal Br. 5. Appellant asserts that contrary to Sgroi’s
teachings, “Wu uses a sheet metal screw inserted through the hole of the
lacrosse head and threaded into the hole on the aluminum pole for
tightening.” Id. Though Appellant makes this assertion, Appellant does not
identify where Wu teaches such a configuration or provide any further
explanation concerning Wu.
Our review of Wu does not reveal that it functions in this manner. For
example, we have found no disclosure of a sheet metal screw, or any screw
that is “threaded into the hole on the aluminum pole.” Rather, as can be seen
in the Figures, Wu teaches a screw 90 threaded into tightening up means 60
and the tightening up means moves radially to secure itself to the pole. Wu
¶¶ 18, 24, Figs. 1–4. Thus, we are not informed of error in the Examiner’s
rejection.
Appellant also argues that modifying Sgroi with the teachings of Wu
“would change the principle of operation of Sgroi.” Appeal Br. 5.
Appellant argues that Sgroi’s “principle of operation” is the inclusion of a
hole in a sidewall to connect the lacrosse head to the pole in contrast to Wu
that “has a through hole 76 axially extended through the head 71 and the
shank 72.” Id. at 5–6. Though Appellant identifies that Sgroi teaches a hole
in the sidewall, Appellant provides no discussion of why this teaching rises
to the level of Sgroi’s “principle of operation.”
In the Final Office Action the Examiner identified “the basic principle
of operation” as “securing two pieces together.” Final Act. 9. The
Examiner further determined that Sgroi and Wu “simply differ in where the
screw is inserted” and thus “the principle of operation remains the same.”
Id. Appellant does not address this determination by the Examiner nor do
they provide any analysis of why these determinations are incorrect.
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As Appellant does not show why the Examiner’s determinations
concerning Sgroi’s “principle of operation” are incorrect and does not show
why locating a screw in the sidewall is Sgroi’s “principle of operation,” we
are not informed of error in the Examiner’s rejection.

Claim 4
Claim 4 depends from claim 1 and requires:
wherein contact between the first wedge surface and the oblique
wedged end cap can be repositioned relative to each other to
create an offset relative to an axial position of the first wedge
surface and the oblique wedged end cap that resists rotation of
the lacrosse stick head about the handle longitudinal axis.
The Examiner found that the features of claim 4 are taught by Wu as
“by tightening and loosening the screw, the device would move in axial
direction and therefore [the first wedge surface and the oblique wedged end
cap] would be repositioned relative to each other” creating an offset. Final
Act. 5.
Appellant argues that claim 4 requires a change in “contact” not just
relative movement between the two wedged surfaces. Appeal Br. 7. To
show that Wu does not teach the claimed change in contact, Appellant
quotes Wu paragraph 25. Id. at 5. However, rather than show a difference
between the claimed invention and Wu, the first sentence of this paragraph
shows that Wu functions in the manner required by claim 4. Wu states that
“after the beveled guide face 81 has been closely attached to the beveled
guide face 75, the tightening up device 80 and the locating device 70 are
radially forced against the inside wall of the bicycle handlebar T.” Wu ¶ 25.
Thus, the change in contact (Wu’s beveled guide face 81 and beveled guide
face 75 force are closely attached) create an offset to thereby resist rotation.
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Thus, we are not informed of error in the Examiner’s rejection.

Claims 7–9
Appellant argues the rejection of claims 7–9 together. We select
independent claim 7 as representative. Appellant repeats the arguments
made with respect to claim 1 for the patentability of independent claim 7.
Appeal Br. 8–12. We find the arguments unconvincing for similar reasons
to those discussed above.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1–9 103 Sgroi, Wu 1–9

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