Ex Parte Sorenson

Board of Patent Appeals and Interferences

Feb 12, 2009

10998909 (B.P.A.I. Feb. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_________________

Ex parte JAMES W. SORENSON
Appellant
_________________
Appeal 2008-6116
Application 10/998,909
Technology Center 3700
_________________
Decided1: February 12, 2009
_________________

Before JAMESON LEE, SALLY GARDNER LANE, and MICHAEL P.
TIERNEY, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge LANE.

Opinion Dissenting-In-Part filed by Administrative Patent Judge LEE.

LANE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-6116
Application 10/998,909

2
The appeal, under 35 U.S.C. § 134, is from a Final Rejection of claims
1-8, 10-12, 14-30, and 32-37. Claims 9, 13, and 31 have been canceled
(App. Br. 4). We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
The real party in interest is said to be Appellant James W. Sorenson
(App. Br. 2).
Appellant’s specification is directed to a golf putter.
The Examiner relied on the following US patents:
Name Number Date
Dalton 4,138,117 Feb. 6, 1979
Kobayashi 4,871,174 Oct. 3, 1989
Granelli 5,630,766 May 20, 1997
Johnson 5,630,766 Nov. 8, 2005

The Examiner rejected claims 1-12, 14, 15, 17-30, and 32-372 under
35 U.S.C. § 103(a) over Granelli, Dalton, and Johnson. Appellant argues for
the patentability of claims 1- 3, 5, 6, 20-22, 25, 26, and 37 separately. We
review only the rejections of the claims that Appellant argues separately.
See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner also rejected claim 16 under 35 U.S.C. § 103(a) over
Dalton, Johnson, Granelli, and Kobayashi.
II. FINDINGS OF FACT

2 The Examiner cited claims 1-15 and 17-37 in the rejection under 35 U.S.C.
§ 103(a) over Dalton, Johnson, and Granelli (Ans. 3), but claims 9, 13, and
31 have been canceled (see Amendment received Dec. 20, 2006).
Appeal 2008-6116
Application 10/998,909

3
The record supports the following findings of fact, as well as any
other findings of fact set forth in this opinion, by at least a preponderance of
the evidence.
1. Appellant’s claim 1 recites:
A golf putter comprising:
a shaft;
a substantially hollow, longitudinal body, said body
comprising a front segment, a rear segment, and a horizontal
axis;
means for receiving said shaft, said means located at an
end of said rear segment distal from said front segment;
a ball striking surface attached to said front segment; and
a weighted mass within said body;
wherein a portion of said shaft in proximity to said means
for receiving said shaft leans toward said front segment;
and further wherein said shaft comprises a first bend
directing said shaft towards an axis perpendicular to said
horizontal axis and towards a lateral side of said body.

(App. Br. 18, Claims Appx.).
2. Appellant’s claim 21 recites:
A putter club head comprising:
a substantially hollow, longitudinal body, said body
comprising a front segment, a rear segment, and a horizontal
axis;
means for receiving a shaft, said means located in
proximity to said rear segment;
a ball striking surface located in proximity to said front
segment; and
a weighted mass within said body.

(App. Br. 20; Claims Appx.).

3. Appellant’s claim 37 recites:
Appeal 2008-6116
Application 10/998,909

4
A golf putter comprising:
a shaft;
a substantially hollow, longitudinal body, said body
comprising a front segment, a rear segment, and a horizontal
axis;
a hole in said body for receiving said shaft, said hole
located in proximity to said rear segment;
a ball striking surface located in proximity to said front
segment; and
a weighted mass within said front segment adjacent to
said striking surface;
wherein said shaft proximate to said hole forms an angle
with said body such that said shaft proximate to said hole leans
toward said front segment;
wherein said body is substantially oval at a cross section
perpendicular to the horizontal axis;
and wherein a bend in said shaft orients said shaft
perpendicularly to said horizontal axis of said body and towards
a lateral side of said body; and
further wherein said weighted mass comprises
approximately 25% to 35% of said body by length.

(App. Br. 22; Claims Appx.).

4. Figure 1a of Appellant’s specification is reproduced below.

Appeal 2008-6116
Application 10/998,909

5
Figure 1a depicts a putter head with a body (15), including a front segment
(20) and rear segment (30), and a striking surface (25). (Spec. ¶¶ [0012] and
[0013]).
5. Figure 4 of Appellant’s specification is reproduced below.

Figure 4 depicts a sideview of the putter (Spec. ¶ [0008]) with passageway
37, which coincides with hole 35 (depicted in Figure 1a) and receives shaft
40. (Spec. ¶ [0012]).
6. Figure 4 of Dalton is reproduced below:

Appeal 2008-6116
Application 10/998,909

6
Figure 4 depicts a golf putter head with a “connector member 5” for
connecting a shaft (Dalton col. 2, ll. 63-64), a “striker member 9,” and “a
cavity 19 in the underside immediately behind the striker face 15a” (id. col.
3, ll. 62-63).
7. Dalton teaches that “[t]he cavity 19 will naturally influence the
weight and balance of the putter, but it has been found to also influence the
rebound characteristic of the putter.” (Dalton col. 3, ll. 63-66).
8. Figure 1 of Granelli is reproduced below.

Figure 1 depicts a golf putter with “a shaft 12, a neck 14, and a club head
16,” (Granelli col. 3, ll. 8-9), as well as “a striking face 22, [and] a rear wall
26 opposite the striking face 22. . . .” (id. col. 3, ll. 66-67).

Appeal 2008-6116
Application 10/998,909

7
9. Figure 2b of Granelli is reproduced below.

Figure 2b “is a top plan view of the club head and shaft where the neck is
angular and the upper end of the neck is closer to the heel end edge [40] of
the club head.” (Granelli col. 2, ll. 65-67).
10. Appellant’s claim 16 recites:
The golf putter according to claim 1,
wherein said means for receiving said shaft is
substantially perpendicular to said horizontal axis of said body;
wherein said first bend is proximate to said means for
receiving said shaft and causes said shaft to lean towards said
ball striking surface; and
further wherein said shaft comprises a second bend, said
second bend orienting said shaft perpendicularly to said
horizontal axis, and said second bend further causing said shaft
to lean towards a lateral side of said body.

(App. Br. 19; Claims Appx.)

Appeal 2008-6116
Application 10/998,909

8
11. Figure 1 of Kobayashi is reproduced below.

Figure 1 depicts a golf putter with a “hosel3 portion 15 of the shaft 16.”
(Kobayashi col. 2, ll. 50-51).
III. PRINCIPLES OF LAW
“During examination, ‘claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re American Academy of
Sci. Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004).
“Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at issue are to
be ascertained; and the level of ordinary skill in the pertinent art resolved.

3 We understand a “hosel” to be a “socket in the head of golf club into which
the shaft is inserted.” Webster’s Third New International Dictionary, 1093
(1971).
Appeal 2008-6116
Application 10/998,909

9
Against this background, the obviousness or nonobviousness of the subject
matter is determined.” Graham v. John Deere Co., of Kansas City, 383 U.S.
1, 17-18 (1966).
IV. OBJECTION TO DRAWINGS
The Examiner objected to Figure 3 and 6 under 37 C.F.R. § 1.83(a).
We review only rejections of claims. See 35 C.F.R. § 134(a).
Requirements made by the Examiner that are not subject to appeal are
petitionable to the Director under 37 C.F.R. § 1.181(a) (1).
V. REJECTIONS OF CLAIMS 1-12, 14, 15, 17-30, AND 32-37
UNDER 35 U.S.C. § 103(A) OVER GRANELLI, DALTON, AND
JOHNSON

Appellant’s claim 1 recites a golf putter comprising a shaft and a
body. (FF4 1). The body of the golf putter includes a means for receiving
the shaft, “located at an end of said rear segment of the body, distal from the
front segment. (FF 1). Similarly, the golf putters recited in Appellant’s
independent claims 21 and 37 include a body with a means or hole for
receiving the shaft “located in proximity to said rear segment.” (FFs 2 and
3).
Does the prior art cited by the Examiner teach a means for receiving a
shaft “located at an end of said rear segment distal from said front segment”
or “located in proximity to said rear segment,” as claimed?
The Examiner found that Dalton teaches that a “shaft receiving means
5 is located distal [from] said front segment 9a. . . .” (Ans. 3). The
Examiner noted further that

4 Finding of Fact.
Appeal 2008-6116
Application 10/998,909

10
"an end", as recited by the claim is very different from "the
end". "An end" which is not defined or claimed is open and
broad to interpretation. Here "an end" can be any location on
one side or another of an element. There is nothing in the claim
that requires the interpretation that "an end" is at some, for lack
of better words, termination point on [an] element recited or, as
it appears to be appellant's belief, the heel portion of the club
head. Here Dalton clearly shows the shaft "located at an end of
said rear segment", 6a, "distal["] from said front segment.
Nothing in the claim positively defines where [an] "end of said
rear segment" is located with respect to the other recited
elements. This lack of any limitation defining "an end of said
rear" segment allows for the examiner to give it is broadest
reasonable interpretation.

(Ans. 7).
We disagree that Dalton teaches a “means for receiving said shaft,
said means located at an end of said rear segment distal from said front
segment.” (FF 1). The Examiner has not persuaded us that one of skill in
the art would consider the receiving means in Dalton (see FF 6) to be in any
“end” of the body of the putter head. Instead, as Appellant noted, “Dalton
illustrates that the shaft receiving means is in the middle of the body, not at
either end of the body.” (Reply Br. 2). The broadest reasonable
interpretation of the claims, see Am. Acad., 367 F.3d at 1364, does not
provide for receiving the shaft in the middle of the body.
We note that Granelli may demonstrate the claimed positioning of the
means for receiving a shaft (see FF 8). Since the Examiner did not rely upon
Granelli for teaching the claimed positioning, we will not speculate on
whether the claimed golf putter would have been obvious over the
positioning taught in Granelli combined with the other prior art.
Appeal 2008-6116
Application 10/998,909

11
The Examiner has not shown that Dalton teaches a “means for
receiving said shaft, said means located at an end of said rear segment distal
from said front segment” or “located in proximity to said rear segment” or
that those of skill in the art would find this element of the claimed golf
putters to be obvious. See Graham, 383 U.S. at 17-18. Accordingly, the
Examiner erred in rejecting claims 1, 21, and 37, and the claims that depend
on them, under 35 U.S.C. § 103(a).
VI. REJECTION OF CLAIM 16 UNDER 35 U.S.C. § 103(A) OVER
DALTON, JOHNSON, GRANELLI, AND KOBAYASHI

Appellant’s claim 16 recites a golf putter with a shaft that comprises
“a second bend, said second bend orienting said shaft perpendicularly to said
horizontal axis, and said second bend further causing said shaft to lean
towards a lateral side of said body.” (FF 10).
The Examiner found that “Kobayashi clearly [shows] a perpendicular
means for receiving the shaft that ‘causes the shaft to lean towards said ball
striking surface’ as best shown in his fig. 1. Like Granelli that teaches in fig.
1 at 70 a second bend that orients the shaft perpendicular to said horizontal
axis, Kobayahi teaches a second bend at 15 to prevent shaft rotation (col. 3,
ln. 28).” (Ans. 11).
Though Kobayashi teaches a golf putter with two bends in the shaft,
neither of these bends orients the shaft perpendicular to the horizontal axis
of the putter body and also causes the shaft to lean towards the lateral side of
the body. (FF 11). Even Granelli, which depicts a shaft that leans towards
the lateral side of the body, does not appear to accomplish this position by
bending, but by turning the shaft in its receiving hole. Thus, in addition to
Appeal 2008-6116
Application 10/998,909

12
the lack of a teaching in Dalton of a means for receiving a shaft “located at
an end of said rear segment distal from said from segment,” as recited in
claim 1, from which claim 16 depends, Kobayashi does not teach a shaft
with two bends as claimed. Accordingly, the Examiner erred in rejecting
claim 16 over the combination of Dalton, Johnson, Granelli, and Kobayashi
under 35 U.S.C. § 103(a). See Graham, 383 U.S. at 17-18.
VII. ORDER
Upon consideration of the record and for the reasons given,
the Examiner’s rejection of claims 1-12, 14, 15, 17-30, and 32-37
under 35 U.S.C. § 103(a) over Dalton, Grinelli, and Johnson is REVERSED;
and
the Examiner’s rejection of claim 16 under 35 U.S.C. § 103(a) over
Dalton, Grinelli, Johnson, and Kobayashi is REVERSED.

REVERSED

Appeal 2008-6116
Application 10/998,909

13
LEE, Administrative Patent Judge. Dissenting-In-Part

I would affirm the obviousness rejection of claim 21 over Granelli,
Dalton, and Johnson, because Dalton discloses each and every feature of
claim 21. Anticipation is the epitome of obviousness. In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974). Claim 21 reads as follows:
21. A putter club head comprising:

a substantially hollow, longitudinal body, said body
comprising a front segment, a rear segment, and a horizontal
axis;

means for receiving a shaft, said means located in
proximity to said rear segment;

a ball striking surface located in proximity to said front
segment; and

a weighted mass within said body.

During prosecution, claim terms are given their broadest reasonable
interpretation. In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004). The
broadest reasonable interpretation rule recognizes that before a patent is
granted the claims are readily amended as a part of the examination process,
and that an applicant has the opportunity and responsibility to remove any
ambiguity in claim meaning by making an amendment. Id.
The claim does not specify the relative size of the front segment as
compared to the size of the rear segment. The claim does not require a
middle section of the body which is outside the range of both the front
segment and the rear segment. Absent those restrictions, the front segment
Appeal 2008-6116
Application 10/998,909

14
need only be forward of the rear segment and the rear segment need only be
rearward of the front segment, and there need not be any middle segment
between the two. Claim 21 reads on the putter head construction of Dalton.
The longitudinal structure shown in Figure 3 of Dalton has a front
segment extending towards and including the hitting surface 15a. The front
segment does not include the portion beneath the area to which connector 5
is attached and extending to the rear thereof. The longitudinal structure has
a rear segment starting where the front segment ends and extending all the
way to the rear end of the longitudinal body. The connector 5 as a receiving
means is located in proximity to the rear segment because it is within the
rear segment. The ball striking surface 15a is located in proximity to the
front segment of the body because it is within the front segment.
As for the weighted mass limitation, Figure 4 of Dalton shows a solid
structure within the body of the head, which defines the rear wall of cavity
19 within the head body and which connects the two sidewalls of the body.
It is reasonably deemed a weighted mass. And the longitudinal body
inherently has a horizontal axis transverse to its longitudinal axis.
Even if “rear segment” is narrowly interpreted such that it can include
only something within the rear half or even less of the longitudinal body,
connector 5 in Dalton’s Figure 3 is still located “in proximity to” that rear
segment, since the Applicant’s specification does not specifically define the
limits of what constitutes “in proximity to” the rear segment. Applying the
broadest reasonable interpretation rule for claim construction during patent
examination, I find that all elements of claim 21 are met by the embodiment
shown in Figures 3 and 4 of Dalton.

Appeal 2008-6116
Application 10/998,909

15

rvb

Schwegman, Lundberg & Woessner, P.A.
P.O. Box 2938
Minneapolis, MN 55402