DUNLOP SPORTS CO. LTD.

Patent Trials and Appeals Board

Jun 30, 2020

15611111 - (D) (P.T.A.B. Jun. 30, 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.
15/611,111 06/01/2017 Keith F. DOLEZEL 176866 2618
91258 7590 06/30/2020
OLIFF PLC
P.O. Box 320850
Alexandria, VA 22320-4850
EXAMINER
PASSANITI, SEBASTIANO
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
06/30/2020 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):
OfficeAction91258@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEITH F. DOLEZEL
Appeal 2020-000172
Application 15/611,111
Technology Center 3700
Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK,
Administrative Patent Judges.
HILL, 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 1–20. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

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 Dunlop Sports Co.
Ltd. Br. 1.
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Application 15/611,111

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BACKGROUND
Appellant’s invention relates to a golf club head indicia and method of
generating the same. Claims 1 and 10 are independent. Claim 1, reproduced
below, illustrates the claimed invention, with certain limitations italicized:
1. A golf club head comprising:
a striking face;
a bottom portion secured to, and extending rearward of,
the striking face; and
a top portion secured to, and extending rearward of, the
striking face, the top portion comprising a substrate layer and a
sealant layer disposed on the substrate layer, a roughened region
defining visually identifiable indicia being included within only
the sealant layer.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Sano US 2002/0183133 A1 Dec. 5, 2002
Bingle US 2015/0022994 A1 Jan. 22, 2015
Trahan US 2016/0067558 A1 Mar. 10, 2016
Dolezel US 2016/0129321 A1 May 12, 2016
REJECTIONS
I. Claims 1–9 stand rejected under 35 U.S.C. § 103 as
unpatentable over Sano, Dolezel, and Bingle. Final Act. 6.
II. Claims 10–20 stand rejected under 35 U.S.C. § 103 as
unpatentable over Sano, Dolezel, Bingle, and Trahan. Final Act. 10.
OPINION
Rejection I; Obviousness -- Claims 1–9
The Examiner finds that Sano discloses many of the limitations of the
golf club head of claim 1, including a top portion having a substrate and a
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sealant layer on the substrate. Final Act. 6–7. The Examiner further finds
that Sano does not disclose a visual identifiable indicia, but Dolezel
discloses a visually identifiable indicia on the top of a golf club head. Id. at
7. The Examiner concludes that it would have been obvious to modify
Sano’s device to include a suitable indicia on the top surface to help a golfer
align the club head with an intended target. Id. The Examiner finds that,
although Dolezel does not disclose that the indicia is only within the sealant
layer, Bingle discloses an indicia in a single layer. Id. at 8. The Examiner
concludes that it would have been obvious to modify Sano to form a
roughened surface within a single layer – i.e., only within the top, sealant
layer – to keep the substrate intact, while enabling the indicia to remain
visible. Id.
Claims 1–3 and 7–9
Appellant argues claims 1–3 and 7–9 as a group. Br. 6–10. We select
independent claim 1 as representative. Claims 2, 3, and 7–9 stand or fall
with claim 1.
Appellant takes issue with the Examiner’s finding that it is known to
apply indicia only in a sealant layer. Br. 6. Specifically, Appellant asserts
that Dolezel does not specify which layer has the indicia. Id. Appellant
asserts, moreover, that because Sano’s clear coat layer protects the substrate,
one of ordinary skill in the art would not sand-blast this protective coating
and remove the protection it provides. Br. 7. According to Appellant, based
on the thickness of Sano’s coating, there is no suggestion in the art that “a
clear coat is both capable of abrasion without deleteriously affecting its
function and capable of being abraded in a manner to adequately and
permanently bear indicia.” Br. 8.
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The Examiner responds that Dolezel is only cited for the location of
the indicia, i.e., on the top of the club head. Ans. 9. The Examiner notes
that Bingle, which Appellant does not address, was relied on for a roughened
surface only in the sealant layer. Id. We agree.
Appellant does not explain why the Examiner’s proposed combination
of references, which includes Bingle, fails to suggest a region “defining
visually identifiable indicia being included within only the sealant layer.”
Specifically, the Examiner cites to paragraphs 68–74 and Figures 26–31 of
Bingle as teaching an indicia only within the sealant layer. Final Act. 5. In
these cited paragraphs, Bingle discloses “indicia 18' being defined by the
creation of one or more lines through the basecoat 32b', such as by laser
etching.” Bingle ¶ 70. Bingle discloses that “the indicia . . . may be defined
to a depth that is less than the overall thickness of [the basecoat 32b].” Id. ¶
75. Given that Sano’s coating thickness range of 25 to 90 microns is within
Appellant’s disclosed thickness range of 20 to 200 microns (Spec. ¶ 27), and
Bingle provides indicia in a coating that is less than the overall thickness of
the coating, we are not persuaded that Sano’s coating could not be partially
abraded, as taught by Bingle, to maintain the protecting function of its
sealant while providing an indicia. Further, it is unclear to us why a skilled
artisan would not find partial removal of a top sealant coat of a club head
obvious in light of these combined teachings. For these reasons, we are not
persuaded that the Examiner erred in finding that it was known to apply an
indicia only in a sealant layer.
Having considered all of Appellant’s arguments, we are not apprised
of Examiner error, and we sustain the rejection of claim 1. Claims 2, 3, and
7–9 fall with claim 1.
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Claims 4 and 5
The Examiner finds that the claimed height and average surface
roughness of the roughened region is “an obvious matter of choice in the
design scheme.” Final Act. 8–9.
Appellant argues that the claimed sealant layer thickness of claim 4
and the claimed surface roughness of claim 5 “are not arbitrary” and provide
particular benefits. Br. 10. According to Appellant, the Examiner’s position
that these values are a “design choice” is improper. Id.
The Examiner responds that Appellant has not explained the criticality
of the claimed features, and only states that they provide “the ability to
renew, modify, or remove the indicia when practicing the media blasting
procedure.” Ans. 11.
The Examiner has the better position. Claim 4 requires that “the
sealant layer comprises a thickness, t, and the roughened region comprises a
maximum height Ry [that] is no greater than 0.6 x t,” and claim 5 requires
that “the roughened region comprises an average surface roughness, Ra, no
less than 10 μm.” Spec. ¶ 27. This roughened region is applied to a coating
having a thickness of from 2–20 microns. Id. These “preferential
parameters enable the particular benefits of . . . indicia formed in this
manner may be renewed, modified, or removed.” Id. Sano discloses a clear
coat thickness of between about 20 micron and 50 micron (Sano, Table 1),
which lies within the claimed range. Bingle discloses removal of material to
“less than the overall thickness” (Bingle ¶ 75) and discloses that the material
can be “selectively thinned” (Bingle ¶ 80). Thus, the combined teachings of
the references disclose a thickness within the claimed range and roughening
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less than the entirety, which would appear to be within the claimed
roughness range.
The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other
variable within the claims. These cases have consistently held
that in such a situation, the applicant must show that the
particular range is critical, generally by showing that the claimed
range achieves unexpected results relative to the prior art range.
In re Woodruff, 919 F. 2d 1575, 1578 (Fed. Cir. 1990) (citations
omitted)(emphasis added). Given Sano’s coating thickness range and
Bingle’s selective thinning, absent a showing that the claimed height Ry and
the surface roughness Ra are critical or achieve unexpected results, we do
not find error with the Examiner’s position of obviousness. We sustain the
rejection of claims 4 and 5.
Claim 6
The Examiner finds that hollow wood-type club heads are well-known
in the club head art for saving weight and to increase the sweet spot, and are
disclosed in paragraph 145 of Dolezel. Final Act. 9; see also Ans. 11.
Appellant asserts that the Examiner has not provided evidence that a
hollow-type golf club head with indicia in the sealant layer on the top of the
club head was well-known. Br. 9.
We are not apprised of Examiner error. Dolezel discloses that,
although the disclosed indicia features are directed to the top of putter-type
club heads, they “may be similarly applied to, and be similarly advantageous
in, wood-type club heads, hollow-type club heads,” etc. Dolezel ¶ 145; see
also Ans. 11. Thus, a preponderance of the evidence supports the
Examiner’s position that it would have been obvious to apply indicia in a
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single sealant layer to the top of a hollow-type golf club head. We sustain
the rejection of claim 6.
Rejection II; Obviousness – Claims 10–20
For claims 10–20, the Examiner makes similar findings regarding the
disclosures of Sano, Dolezel, and Bingle, and relies on similar reasoning to
combine these references. Final Act. 10–12. The Examiner additionally
relies on Trahan to disclose masking to protect regions. Id. at 11 (citing
Trahan ¶ 26).
Claims 10, 15, 16, 19, and 20
Appellant argues claims 10, 15, 16, 19, and 20 as a group. Br. 6–10.
We select independent claim 10 as representative. Claims 15, 16, 19, and 20
stand or fall with claim 10.
Appellant “submits that claim 10 is patentable for reasons similar to
claim 1.” Br. 9.
For the same reasons that we are unpersuaded of Examiner error in
claim 1, we also sustain the Examiner’s rejection of claim 10. Claims 15,
16, 19, and 20 fall with claim 10.
Claims 11–13
The Examiner finds that using the claimed (1) glass beads, (2) blast
pressure, and (3) MOH Hardness of the media, achieves a desired indicia
appearance, which is printed matter deserving no patentable weight. Final
Act. 11. The Examiner states that the claimed region is not considered to
distinguish over the prior art, because there exists no new and non-obvious
functional relationship to the substrate. Id. (citing MPEP 2112.01 (III); In re
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Ngai, 70 USPQ2d 1862 (Fed. Cir. 2004); In re Gulack, 217 USPQ 410 (Fed.
Cir. 1983); and In re Miller, 164 USPQ 46 (CCPA 1969)).
The Examiner’s position that the indicia is printed matter is
misplaced. Claims 11–13 are not directed to the content of information
recorded in a substrate, but rather to how the indicia is created. The
Examiner has not adequately established that the claimed method, when
properly given patentable weight, would have been obvious.
For these reasons, we do not sustain the rejection of claims 11–13.
Claim 14
Claim 14 requires that “the portion [of the golf club head] comprises
the top portion of the golf club head.” The Examiner finds that Dolezel
includes “indicia on the top or crown surface of the club head.” Final Act.
11; see also Ans. 11. Appellant argues that “it is certainly not known to
include a roughened region within a top portion of a golf club as claimed.”
Br. 9.
Appellant’s argument is not persuasive. Dolezel discloses “to
enhance visibility of the top surface of the alignment feature 411, indicia 415
is preferably applied thereto for purposes of generating visual contrast.”
Dolezel ¶ 120; see also Ans. 11. Dolezel also discloses that the “indicia may
comprise a media-blasted region (e.g. sand-blasted region) … known to alter
the appearance of the top surface 411(c) of the alignment feature 411.” Id.
Thus, as the Examiner correctly finds, the prior art discloses that the portion
of the club head in which the appearance is altered (roughened region) is the
top portion.
For this reason, we sustain the rejection of claim 14.
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Claims 17 and 18
Claim 17 requires that “the sealant layer comprises a thickness, t, and
a roughened region of the sealant layer comprises a maximum height Ry
such that Ry is no greater than 0.6 x t after media blasting the portion.”
Claim 18 requires that “a roughened region of the sealant layer comprises an
average surface roughness, Ra, no less than l0μm after media blasting the
portion.”
For the reasons discussed above regarding claims 4 and 5, the
Examiner has the better position on this issue. Specifically, claim 17
includes the same limitations as claim 4, and claim 18 includes the same
limitations as claim 5. As discussed above, absent a showing that the
claimed Ry height and the Ra surface roughness are critical or achieve
unexpected results, we are not apprised of Examiner error. See In re
Woodruff, 919 F. 2d at 1578.
For these reasons, we sustain the rejection of claims 17 and 18.
CONCLUSION
The Examiner’s rejections are affirmed as to claims 1–10 and 14–20,
and are reversed as to claims 11–13.
More specifically,
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–9 103 Sano, Dolezel, Bingle 1–9
10–20 103 Sano, Dolezel, Bingle,
Trahan
10, 14–20 11–13
Overall
Outcome:
1–10, 14–20 11–13
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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 IN PART