Ex Parte Sander

Patent Trial and Appeal Board

Jun 23, 2017

13015412 (P.T.A.B. Jun. 23, 2017)

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.
13/015,412 01/27/2011 Raymond J. Sander 007625.01457/09-1049 2569
147029 7590 06/27/2017
BANNER & WITCOFF, LTD.
TEN SOUTH WACKER DRIVE
SUITE 3000
CHICAGO, IL 60606
EXAMINER
STANCZAK, MATTHEW BRIAN
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
06/27/2017 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):
PTO-147029 @bannerwitcoff.com
paulj @ karsten.com
maryjom@karsten.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAYMOND J. SANDER
Appeal 2015-007875
Application 13/015,412
Technology Center 3700
Before EDWARD A. BROWN, JAMES P. CALVE, and
BRANDON J. WARNER, Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 8—12, 14, 15, 17—19, 21, 22, 24, 25, and 38—48. Appeal Br. 2.
Claims 2, 4, 5, 7, and 26—37 have been cancelled. Id. Claims 3, 6, 13, 16,
20, and 23 have been withdrawn.1 Id. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION of claims 1, 8-12, 14, 15, 17-19, 21, 22, 24, 25, and 38^8,
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 In response to the Examiner’s Election/Restriction Requirement (mailed
May 28, 2013), Appellant selected Species 5 (Fig. 22) and Species A (Fig. 3)
(filed August 27, 2013).
Appeal 2015-007875
Application 13/015,412
CLAIMED SUBJECT MATTER
Claims 1,11, and 19 are independent. Claim 1 is reproduced below.
1. A head for a ball striking device, comprising:
a face having a ball striking surface configured for striking a
ball;
a body connected to the face, the body having a sole member
extending rearward from a bottom edge of the face, the sole member
having a sole surface configured to confront a playing surface and a
thickness defined between the sole surface and an opposite surface of
the sole member, the body further having a heel and a toe;
an elongated channel located in the sole surface of the body
adjacent to the bottom edge of the face, the channel being recessed
from the sole surface and being defined by a first end located on the
sole surface, a second end located on the sole surface, two edges
extending along at least a portion of the bottom edge of the face and
being spaced rearwardly from the bottom edge by a spacing portion,
and two opposed side walls extending inwardly from the edges of the
channel, wherein the first end is more proximate to the heel than to a
centerline of the body, and wherein the second end is more proximate
to the toe than to the centerline of the body, wherein the side walls of
the channel are both generally parallel to a plane of the face when
viewed in cross-section, and wherein the edges of the channel are
generally parallel to the bottom edge of the face; and
a flexible polymer insert connected to the body and mounted
within the channel,
wherein the channel is configured to influence an impact of a
ball on the face by flexing in response to the impact, such that some of
a force of the impact is transferred through the spacing portion to the
channel, causing the body to flex at the channel, and wherein the
channel has a depth of recession from the sole surf ace that is no more
than half the thickness of the sole member.
REJECTIONS
Claims 1, 8—12, 14, 15, 17—19, 21, 22, 24, 25, and 38-48 are rejected
under 35U.S.C. § 112, first paragraph, for failing to comply with the
enablement requirement.
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Appeal 2015-007875
Application 13/015,412
Claims 38-43 are rejected under 35 U.S.C. § 112, first paragraph, for
failing to comply with the written description requirement.
Claims 1, 8—12, 14, 15, 17—19, 21, 22, 24, 25, and 38-48 are rejected
under 35 U.S.C. § 112, second paragraph, as being indefinite.
Claims 1, 8, 10-12, 14, 15, 17—19, 21, 22, 24, 25, and 38—48 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Hamada (US
6,086,485, iss. July 11, 2000) and Kusumoto (JP 2000-153008A, pub. June
6, 2000).
Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hamada, Kusumoto, and Hou (US 2007/0026961 Al, pub. Feb. 1, 2007).
ANALYSIS
Claims 1, 8-12, 14, 15, 17-19, 21, 22, 24, 25, and 38-48
for failing to comply with the enablement requirement
The Examiner determined that the Specification does not enable a
channel with a depth that is no more than half the thickness of the sole
member or first peripheral wall as recited in independent claims 1,11, and
19. Final Act. 4. The Examiner found that the drawings do not enable this
limitation because the Specification discloses the drawings as not drawn to
scale. Id. (citing Spec. 120). The Examiner also found that Figure 6 does
not support this limitation because it is directed to a nonelected species. Id.
Appellant argues that Figure 5 of the Specification enables a skilled
artisan to make and use the claimed subject matter by showing the depth of
channel as slightly less than half the thickness of the sole member. Appeal
Br. 7, 9, 10. Appellant also argues that Figure 6 supports this limitation by
showing a significantly lower depth of channel than Figure 5. Id. at 7—8.
Appellant argues that the drawings may be relied on. Id. at 8.
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Application 13/015,412
“The enablement requirement is satisfied when one skilled in the art,
after reading the specification, could practice the claimed invention without
undue experimentation.” AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244
(Fed. Cir. 2003) (quoting In re Wands, 858 F.2d 731, 736—37 (Fed. Cir.
1988)); see Auto. Techs. Int’l, Inc. v. BMW ofN. Am., Inc., 501 F.3d 1274,
1282 (Fed. Cir. 2007); MPEP § 2164.08 (9th ed., rev. 7, Nov. 2015) (“The
Federal Circuit has repeatedly held that ‘the specification must teach those
skilled in the art how to make and use the full scope of the claimed invention
without “undue experimentation;”” “what is well-known is best omitted”
(internal citations omitted)).
“Whether undue experimentation is required ‘is not a single, simple
factual determination, but rather is a conclusion reached by weighing many
factual considerations.’” Streck, Inc. v. Research & Diagnostic Sys., Inc.,
665 F.3d 1269, 1288 (Fed. Cir. 2012) (citation omitted).2 Without such a
factual inquiry by the Examiner, however, we cannot sustain this rejection.3
2 Factors to consider in determining if undue experimentation is required are:
(1) the quantity of experimentation needed, (2) the amount of direction or
guidance presented, (3) the presence or absence of working examples,
(4) the nature of the invention, (5) the state of the prior art, (6) the level of
ordinary skill in the art, (7) the predictability or unpredictability of the art,
and (8) the breadth of the claims. See Wands, 858 F.2d at 737; see also
MPEP § 2164.01(a), Undue Experimentation Factors.
3 Whether an inventor has “possession” of claimed subject matter as of the
filing date of the application (Ans. 18) is relevant to the written description
requirement, not the enablement requirement. Ariad Pharmaceuticals, Inc.
v. Eli Lilly and Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (“although written
description and enablement often rise and fall together, requiring a written
description of the invention plays a vital role in curtailing claims that do not
require undue experimentation to make and use, and thus satisfy enablement,
but that have not been invented, and thus cannot be described”).
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Appeal 2015-007875
Application 13/015,412
Claims 38—43 for lack of written description
The Examiner found that the Specification does not provide a written
description of the details of the channel as compared to the face grooves, as
recited in claims 3 8—43. Final Act. 4—5. The Examiner found that Figures 2
and 3 cannot be relied on to show these features because the Specification
does not disclose the drawings as being drawn to scale. Id. at 5.
Appellant argues that these features are shown clearly in the drawings,
as illustrated by a comparison of Figures 2 and 3, which show that both ends
of the channel extend beyond the ends of the face grooves. Appeal Br. 10—
11. Appellant argues that the Examiner does not contradict the fact that the
figures depict the exact configuration that is claimed. Id. at 11. Appellant
also argues that just because the Specification discloses that the drawings are
not necessarily drawn to scale does not mean that the drawings are definitely
not drawn to scale, and it is indisputable that the application as filed depicts
a configuration exactly as recited in claims 3 8-43 where “the length of the
channel is longer than the face grooves.” Id. at 12.
Under proper circumstances, drawings alone may provide a written
description of an invention as required by 35 U.S.C. § 112, first paragraph.
E.g., Cooper Cameron Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d
1317, 1322 (Fed. Cir. 2002). However, “absent any written description in
the specification of quantitative values, arguments based on measurement of
a drawing are of little value.” In re Wright, 569 F.2d 1124, 1127 (CCPA
1977). In addition, “patent drawings do not define the precise proportions of
the elements and may not be relied on to show particular sizes if the
specification is completely silent on the issue.” Hockerson-Halberstadt, Inc.
v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000).
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Appeal 2015-007875
Application 13/015,412
Because the Specification does not disclose dimensions of grooves
121 or elongated channel 140, or that the drawings are to scale, the figures
cannot be relied to disclose the channel and face groove relative lengths.
Appellant’s Figures 2 and 3 are provided below.
FIG. 3
Figure 2 is a front view, and Figure 3 is a bottom view, of head 102.
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Application 13/015,412
A comparison of the front view of head 102 (Figure 2) to the bottom
view of head 102 (Figure 3), reproduced above, demonstrates that Figures 2
and 3 are not drawn to the same scale. The scale and dimensions of head
102 are larger in Figure 3 than in Figure 2.4 Therefore, these figures cannot
provide a written description of the relative lengths of the channel and face
grooves, as recited in claims 38—43, even if each figure individually is drawn
to scale, which there is no indication is the case. See Spec. 19, 20.
To remedy this disparity in scale, Appellant modifies Figure 3 to have
a scale that is similar to that of Figure 2. See Appeal Br. 10-11. Appellant’s
modification of the scale of Figure 3 and comparison to Figure 2 appears in
the Appeal Brief and is reproduced below. See id. at 11.
4 Figures 2 and 3, which are reproduced above, are electronic copies of the
original drawings as filed on January 27, 2011.
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Application 13/015,412
The drawings above appear in the Appeal Brief to provide Appellant’s
contention that Figures 2 and 3 of the original disclosure show a channel that
is longer than the face grooves of the club head. Id. at 11. To make this
comparison, however, Appellant reduced the scale of Figure 3 to correspond
more closely to the width of head 102 in Figure 2. Figure 3 also was rotated
clockwise in Appellant’s modified version above as shown by the change in
the location of element 148 from the original Figure 3. See Ans. 17—18.
Because the written description does not indicate that Figures 2 and 3,
or any of the drawings for that matter, are drawn to scale, the drawings
cannot be relied upon to show relative proportions or particular sizes of the
head or any other feature of head 102 including horizontal grooves 121 and
elongated channel 140. In fact, the Specification advises that “the attached
drawings are not necessarily drawn to scale.” Spec. 120; Final Act. 5.
Consistent with this description, the drawings are drawn to different scales
in the original disclosure. Even if individual drawings were disclosed as
being drawn to scale, Figures 2 and 3 are drawn to different scales from each
other, even though Figure 3 is a bottom view of Figure 2. See Spec. 119.
Absent any supporting written description, they cannot be relied upon to
disclose the relative sizes of the channel and face grooves just by comparing
a length of face grooves 121 in Figure 2 to a length of channel 140 in Figure
3, as Appellant has done. Appeal Br. 11. Nor does Appellant’s alteration of
the scale of Figure 3 to match more closely to that of Figure 2 allow such a
comparison at least because neither Figure 2 nor Figure 3 is disclosed to be
drawn to scale. Thus, the relative sizes and proportions of the channel and
face grooves in those figures cannot be determined from those drawings.
Ans. 17—18. Thus, we sustain the rejection of claims 38—43.
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Appeal 2015-007875
Application 13/015,412
Claims 1, 8-12, 14, 15, 17-19, 21, 22, 24, 25, and 38-48
as being indefinite
The Examiner determined that the limitation in independent claims 1,
11, and 19 related to the channel depth compared to the thickness of the sole
renders those claims indefinite. Final Act. 5. The Examiner found that
Appellant cannot rely on Figure 5 to disclose this limitation because the
Specification does not disclose that the drawings are drawn to scale. Id.
The Examiner determined that the claims should be rejected under the first
and second paragraphs of 35 U.S.C. § 112 if there is a lack of enablement.
Ans. 18—19 (citing In re Moore, 439 F.2d 1232, 1236 (CCPA 1971)).
Appellant argues that the Examiner has restated the same basis used
for the enablement rejection of these claims and does not identify what claim
elements are unclear or imprecise. Appeal Br. 12.
The Examiner has not provided sufficient evidence or reasoning that a
skilled artisan would not understand the scope of the claims, which recite the
channel depth is no more than half the thickness of the sole member. The
basis for the rejection is a finding that the Specification does not disclose the
channel depth or sole thickness, and a determination that the claims should
be rejected under both the first and second paragraphs of § 112 when there is
an enablement issue. Final Act. 5—6; Ans. 18—19 (citing In re Moore).
Moore holds that claims first must be determined to be definite and to
describe subject matter with precision and particularity. In re Moore, 439
F.2d 1232, 1235 (CCPA 1971). Once it is determined that the subject matter
has been claimed with particularity and definiteness, then a determination is
made as to whether the claims are enabled and supported by a written
description. Id.
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Application 13/015,412
In either case, however, if the enabling disclosure of a specification is
not commensurate in scope with the subject matter encompassed by a claim,
that fact does not render the claim indefinite or not in compliance with the
second paragraph of 35 U.S.C. § 112. In re Borkowski, 422 F.2d 904, 909
(CCPA 1970); MPEP § 2174 (rev. 7, Nov. 2015). Thus, we do not sustain
the rejection of claims 1, 8—12, 14, 15, 17—19, 21, 22, 24, 25, and 38-48.
NEW GROUND OF REJECTION
Essentially for the same reasons that we sustain the rejection of claims
38-43 under 35 U.S.C. § 112, first paragraph, for lack of written description,
we enter a new ground of rejection of claims 1, 8—12, 14, 15, 17—19, 21, 22,
24, 25, and 38-48 under 35 U.S.C. § 112, first paragraph, for lack of written
description of the channel depth in independent claims 1,11, and 19.5
Appellant relies on Figures 5, 5A, 6, 6A, and 18 to purportedly disclose this
feature, as illustrated by Appellant’s annotations on a portion of Figure 5,
which is reproduced below. Appeal Br. 3—5, 7—10; Reply Br. 5—7.
5 Claim 11 recites that “the channel has a depth of recession from the outer
surface of the first peripheral wall that is no more than half the thickness of
the first peripheral wall.” Claim 19 recites that “the channel has a depth of
recession of the trough from the sole surface that is smaller than a distance
of the trough from a surface on the rear side of the body that is nearest to the
trough.”
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Appeal 2015-007875
Application 13/015,412
The drawing reproduced above from the Appeal Brief illustrates
Appellant’s contentions that Figure 5 discloses the claimed channel depth
with “the depth of the channel illustrated as being approximately (slightly
less than) half the thickness of the sole member, with the horizontal broken
line illustrating the depth of the channel or trough thereof.” Appeal Br. 7.
Because, as discussed above, the Specification does not disclose that
the drawings are drawn to scale, Appellant cannot rely on Figure 5 or any of
the other drawings to disclose the depth of the channel relative to the sole
thickness, or to any other feature of the golf club head. The drawings cannot
be measured to determine the sizes and proportions of features therein such
as the channel and sole thickness, as Appellant has done. There is no basis
for Appellant to assert that the features illustrated in Figure 5 or any other
drawing are drawn to the same scale such that their relative proportions and
sizes may be determined by measuring the features or comparing the size of
one feature to the other feature in a drawing as Appellant has done.
Moreover, even if the drawings were drawn to scale, we would not be
persuaded by Appellant’s arguments because channel 140 also is illustrated
as being oriented at an angle to bottom/outer surface 135 of sole 131. Thus,
its depth is greater than the distance of line segment A or B above and thus
is more than half the thickness of the sole member, which is represented by
either of those line segments under Appellant’s contentions. Appeal Br. 7.
Prior Art Rejections
In view of our entry of a new ground of rejection of all claims for lack
of a written description of the channel depth, we do not decide whether the
prior art discloses or renders obvious this undisclosed feature. See Appeal
Br. 14—19.
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Appeal 2015-007875
Application 13/015,412
DECISION
We reverse the rejection of claims 1, 8—12, 14, 15, 17—19, 21, 22, 24,
25, and 38—48 under 35 U.S.C. § 112, first paragraph, for failing to comply
with the enablement requirement.
We affirm the rejection of claims 38-43 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.
We reverse the rejection of claims 1, 8—12, 14, 15, 17—19, 21, 22, 24,
25, and 38—48 under 35 U.S.C. § 112, second paragraph, for indefmiteness.
We do not reach the Examiner’s rejections of claims 1, 8—12, 14, 15,
17-19, 21, 22, 24, 25, and 38—48 under 35 U.S.C. § 103(a).
As provided supra, we enter a NEW GROUND OF REJECTION:
Claims 1, 8—12, 14, 15, 17—19, 21, 22, 24, 25, and 38-48 are rejected
under 35 U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement.
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejections of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
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Application 13/015,412
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the Examiner, in which event the proceeding will be
remanded to the Examiner....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record....
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b)
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