Ex Parte Goldsmith et al

Board of Patent Appeals and Interferences

May 18, 2012

11600581 (B.P.A.I. May. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte EDWARD MICHAEL GOLDSMITH and CITRA IE
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Appeal 2010-005518
Application 11/600,581
Technology Center 3700
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Before: JENNIFER D. BAHR, LINDA E. HORNER, and
STEVEN D.A. MCCARTHY, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005518
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STATEMENT OF THE CASE
Edward Michael Goldsmith and Citra Ie (Appellants) appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-17. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A hockey stick shaft extending from a lower end configured
to be joined to a hockey stick blade to an upper end, said
shaft comprising:
an inner core having four faces including a blade face,
wherein the four faces are defined by four longitudinally
extending edges;
the shaft having four longitudinally extending sections,
with
a first longitudinally extending section extending
upward from the lower end;
a second longitudinally extending section above and
immediately adjacent to the first section;
a third longitudinally extending section above and
immediately adjacent to the second section; and
a fourth longitudinally extending section above and
immediately adjacent to the third section, wherein the
fourth section includes the upper end of the shaft;
wherein the hockey stick shaft further comprises four
reinforced corner pieces that are non-uniformly applied to one
or more of the four longitudinally extending edges so as to form
recessed areas on one or more of the four faces, wherein said
recessed areas vary in magnitude as they extend along the
longitudinal length of the shaft.

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Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Evernden US 2,023,728 Dec. 10, 1935
Tiitola US 2003/0008734 A1 Jan. 9, 2003
Lussier US 2005/0215365 A1 Sep. 29, 2005

Rejections
The Examiner rejected claims 1-5, 7-12, and 14-17 under 35 U.S.C.
§ 103(a) as unpatentable over Tiitola (Fig. 12 embodiment) and Lussier.
The Examiner rejected claims 6 and 13 under 35 U.S.C. § 103(a) as
unpatentable over Evernden, Tiitola, and Lussier.
OPINION
Obviousness Based on Tiitola and Lussier
In contesting the rejection of claims 1-5, 7-12, and 14-17 as
unpatentable over Tiitola and Lussier, Appellants state that all of the claims
stand or fall together. App. Br. 17. In accordance with 37 C.F.R.
§ 41.37(c)(1)(vii), we select claim 1 as representative.
The issues raised in the appeal of this rejection are:
(1) Does Tiitola (embodiment of figure 12) describe a hockey stick shaft
having reinforced corner pieces that are raised relative to the four
faces of the shaft, so as to form recessed areas on one or more of the
faces? See App. Br. 20-24; Ans. 4.
(2) Would the combined teachings of Tiitola and Lussier have prompted a
person of ordinary skill in the art to apply corner reinforcements in a
non-uniform manner, such that the recessed areas vary in magnitude
as they extend along the longitudinal length of the shaft, as called for
in claim 1?
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Tiitola teaches that the oval shape of known composite shafts
manufactured by winding reinforcing fibers around a mandrel or lightweight
core have not gained popularity among players, who prefer conventional
sticks having rectangular shafts. Para. [0003]. In order to achieve the
structural advantages of a composite shaft formed by winding around a
mandrel or lightweight core while preserving “an outer profile of a
substantially rectangular cross-sectional shape,” Tiitola discloses a hockey
stick shaft including an innermost first body part 1, comprised of binding
material and reinforcing fibers 2 running at angles in relation to the
longitudinal direction of the shaft formed into an oval cross-sectional shape
by winding the fibers around a lightweight core or mandrel, or by placing a
braided or otherwise pre-manufactured reinforcement sock onto the
lightweight core or mandrel, and a second outermost body part 4 comprised
of binding material and reinforcing fibers 5 running parallel with the
longitudinal direction of the shaft. Paras. [0005], [0032], [0038], [0039].
The outermost second body part 4 has an outer surface 6 profile that is
rectangular with rounded corners 9a-9d, thus corresponding to the shape of a
conventional wooden stick that players have found acceptable. Para. [0033].
Tiitola discloses forming the second body part 4 by making bundles of
reinforcing fibers impregnated in binding material into two symmetrical
halves 4a, 4b, and then arranging the halves onto the wound first body part 1
and placing the entity into a mold 16, which is closed so as to press halves
4a, 4b against the first body part. Para. [0040]; figs. 5, 6. The structure is
then hardened by heating. Id. Tiitola discloses an alternative method for
manufacturing the shaft in which the halves of the second body part 4 are
formed by pultrusion. Para. [0041]; fig. 7. In the pultrusion method,
reinforcing fibers 12a-12i are pulled from reels 11 through a basin 13
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containing binding material and then into a mold 18, which shapes the fibers
into the desired cross-sectional shape. Id.
Tiitola discloses an embodiment of the shaft in which at least one
layer of reinforcing fabric 30, in the form of a pre-manufactured sock-like
material containing aramid fibers, for example, is “arranged substantially
entirely onto the body part,” thereby protecting the longitudinal
reinforcement fibers 5 against blows and improving the transverse strength
of the shaft. Para. [0044]; fig. 11. Tiitola also discloses an alternative
solution in which “outer reinforcements 31 are arranged only at the corners
9a-9d to enhance the impact resistance of the corners.” Para. [0044]; fig. 12.
According to Tiitola, “reinforcements 30, 31 may be conveniently placed
into the shaft structure in connection with pultrusion, for example.
Alternatively, the reinforcement fabrics of the reinforcements 30, 31 may be
arranged into the mould halves at the same time with the other reinforcement
blanks, before the binding material is injected.” Para. [0044].
Tiitola’s figure 12 clearly and unequivocally depicts the corner
reinforcements 31 located on the outer surface 6 of the second body part,
forming raised corners and defining relatively recessed areas on the four
faces between the corner reinforcements 31. The figure 12 embodiment is
described in connection with the figure 11 embodiment, in which a pre-
manufactured sock-like material is “arranged substantially entirely onto the
body part,” but as having outer reinforcements arranged only at the corners.
Appellants argue that the Examiner has misinterpreted what Tiitola
describes as a “schematic drawing in Fig. 12.” Reply Br. 1; Tiitola, para.
[0025] (stating “FIGS. 11 and 12 are schematic views of possible cross-
sections of a shaft of the invention.”). According to Appellants, the
Examiner’s rejection treats “an intermediate step in the construction process
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as the final product.” Reply Br. 1. Appellants focus on Tiitola’s description
of a shaft with a “substantially rectangular” outer profile or a “rectangular”
profile with “rounded corners” like a conventional hockey stick that players
have found to be good, and depiction of molds having substantially
rectangular shapes, and allege that Tiitola teaches away from a shaft outer
profile having proud corners and intermediate recessed areas. Reply Br. 1-
18; App. Br. 21-24.
The Examiner, on the other hand, contends that the drawings of
Tiitola depicting the mold are simplified figures only, and do not show the
particular detail relevant to the figure 12 construction. Ans. 7 (referencing
Tiitola, para. [0040] with respect to the drawings being simplified); see also
Tiitola, paras. [0020], [0023], [0028] (describing figures 6, 9, and 20,
depicting mold halves, as schematic).
Having carefully considered the arguments of the Examiner and
Appellants in support of their respective positions with respect to whether
the corner reinforcements 31 of the figure 12 embodiment described by
Tiitola are raised relative to the four faces of the outer surface 6 of the
second body part 4, in light of our findings above with respect to Tiitola’s
teachings, we agree with the Examiner that the shaft of Tiitola’s figure 12
embodiment comprises reinforced corner pieces 31 that are raised relative to
the four faces of the shaft, so as to form recessed areas on one or more of the
faces. As we found above, Tiitola’s figure 12 clearly and unequivocally
depicts the corner reinforcements 31 located on the outer surface 6 of the
second body part, forming raised corners and defining relatively recessed
areas on the four faces between the corner reinforcements 31. Tiitola’s
figure 12 embodiment is described in connection with the figure 11
embodiment, in which a pre-manufactured sock-like material is “arranged
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substantially entirely onto the body part,” but as having outer reinforcements
arranged only at the corners. Figure 12 does not depict an interim step in the
construction process as Appellants contend, but, rather, is a schematic view
of a possible cross-section of a shaft of the invention. Para. [0025].
Further, we find no inconsistency between the depiction of raised
corner reinforcements in figure 12, on the one hand, and Tiitola’s description
of the outer profile of the shaft as “substantially rectangular” or
“rectangular” with “rounded corners” and depiction of mold cavities that
appear to be substantially rectangular with rounded corners in figures 6, 9,
and 20, for example, on the other hand. Tiitola is concerned with providing
a shaft having a substantially rectangular cross section with tangible corners,
even if rounded, as contrasted with an oval cross section having no
identifiable corners. See para. [0003]. The provision of raised corner
reinforcements on an otherwise rectangular outer profile with rounded
corners would not defeat Tiitola’s objective of providing a shaft having an
outer surface profile that corresponds to the shape of a conventional wooden
stick that players have found acceptable. See para. [0033]; see also para.
[0010] (stating “[a]n advantage of the shaft of the invention is that the outer
surface of its cross-sectional profile is similar in shape as conventional
shafts”). To the extent that the mold cavity shapes depicted in Tiitola’s
figures 6, 9, and 20 (none of which is explicitly associated with the figure 12
embodiment) would be insufficient for producing the structure shown in
figure 12, a person of ordinary skill in the art would have appreciated that
molds having such simplified shapes would not be applicable to the figure
12 embodiment. See Ans. 7.
Lussier teaches that “[e]ach part of the hockey stick has different
functions and is submitted to specific applied forces.” Para. [0029]. In
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order to target these different functions and provide a hockey stick shaft
adapted to withstand the specific applied forces in different parts thereof,
Lussier teaches providing varying degrees of reinforcement, in the form of a
reinforcement rib having a depth, height and width that may be varied along
the length of the shaft in accordance with the desired localized properties.
Para. [0037].
The Examiner correctly determined that these teachings of Lussier
would have prompted a person of ordinary skill in the art “to have added
more or less reinforcement to the corner areas of Tiitola’s Fig. 12
embodiment as well so as to target localized properties in the shaft thus
resulting in recessed areas of varying magnitude along the length of the
shaft.” Ans. 8. In other words, the combined teachings of Tiitola and
Lussier would have prompted a person of ordinary skill in the art to apply
corner reinforcements in a non-uniform manner, such that the recessed areas
vary in magnitude as they extend along the longitudinal length of the shaft,
as called for in claim 1.
For the above reasons, we conclude that the Examiner did not err in
concluding that Tiitola and Lussier render obvious the subject matter of
claim 1. We sustain the rejection of claim 1 and of claims 2-5, 7-12, and 14-
17, which fall with claim 1, as unpatentable over Tiitola and Lussier.
Obviousness Based on Evernden, Tiitola, and Lussier
In contesting this rejection, Appellants state that claims 6 and 13 stand
or fall together. App. Br. 17. We select claim 6 as representative.
37 C.F.R. § 41.37(c)(1)(vii).
The Examiner determined that it would have been obvious to
reinforce Evernden’s wood hockey stick in the manner disclosed by Tiitola
in view of Lussier to make it stronger in selected areas. Ans. 6.
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Appellants argue that Tiitola does not teach the use of reinforcements
31 on anything other than a molded composite fiber reinforced plastic shaft,
and assert that the purpose of the reinforcements is to protect the
longitudinal reinforcing fibers 5 against blows and to improve the transverse
strength of the shaft, neither of which is a consideration in a solid wood
hockey stick such as that of Evernden. App. Br. 27. Appellants’ arguments
are not convincing. The stated objective of Tiitola’s corner reinforcements
31 “to enhance the impact resistance of the corners” (para. [0044]) applies as
well to a hockey stick comprising a wood core. As explicitly pointed out by
Tiitola, the corners of a hockey stick shaft are “the most critical area of the
shaft, because they are subject to impacts during the game.” Para. [0003].
Appellants argue that “[a]pplying the teachings of Tiitola to Evernden
would result in a first body part [1] made of wood and a second body part
[4] having an external surface of a traditional hockey stick shaft.” App. Br.
27. This is essentially a reiteration of the argument that Tiitola does not
disclose corner reinforcements 31 that are raised relative to the four faces of
the shaft, so as to form recessed areas on one or more of the faces. This
argument is not convincing, for the reasons discussed above in relation to the
rejection of claim 1.
Finally, Appellants argue that “the inclusion of protruding or intruding
ribs within a face of a solid wood shaft would be contrary to Lussier” in that
it would weaken, rather than reinforce, the shaft, making the ribs susceptible
to splintering and breakage. App. Br. 28. This argument is not convincing,
because it is not directed to the combination proposed by the Examiner. The
Examiner does not propose providing protruding or intruding ribs in the
wood of Evernden’s shaft. Rather, the Examiner proposes to reinforce the
corners of Evernden’s shaft with fiber composite material in a non-uniform
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manner, to make it stronger in selected areas, in accordance with the
teachings of Tiitola and Lussier. Ans. 6, 9.
The Examiner did not err in concluding that Evernden, Tiitola, and
Lussier render obvious the subject matter of claim 6. We sustain the
rejection of claim 6 and of claim 13, which falls with claim 6, as
unpatentable over Evernden, Tiitola, and Lussier.
DECISION
The Examiner’s decision rejecting claims 1-17 is affirmed.
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

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