11846370 (P.T.A.B. Aug. 22, 2013)

Ex Parte Stites et al

Patent Trial and Appeal BoardAug 22, 2013

11846370 (P.T.A.B. Aug. 22, 2013)

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. 11/846,370 08/28/2007 John Thomas Stites 007625.00941 1276 11370 7590 11/07/2013 Banner & Witcoff, Ltd. 10 South Wacker Drive Suite 3000 Chicago, IL 60606 EXAMINER BLAU, STEPHEN LUTHER ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 11/07/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOHN THOMAS STITES, GARY G. TAVARES, JAMES S. THOMAS, and DAVID N. FRANKLIN ____________ Appeal 2011-010854 Application 11/846,370 Technology Center 3700 ____________ Before JAMES P. CALVE, JILL D. HILL, and JEREMY M. PLENZLER, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Appellants have requested a rehearing (“Request”) under 37 C.F.R. § 41.52 asking us to reconsider our August 22, 2013 decision (“Decision”). Requests for Rehearing are limited to matters overlooked or misapprehended by a Panel in rendering a decision. See 37 C.F.R. § 41.52. In the Decision, we affirmed prior art rejections of claims 1, 3-6, 9-18, and 21-30. Appeal 2011-010854 Application 11/846,370 2 Appellants argue first that none of the references of record disclose, teach, or suggest a cylindrical chamber that extends beyond the rotation- inhibiting structure and toward the securing structure at the second end. Request 2. Appellants also argue that even if Rigby, Wettlaufer ‘556, and Chai disclose a relocation of rotational inhibiting structures, the combination of Masatake and those references does not disclose a cylindrical chamber that extends beyond the rotation-inhibiting structures. Id. These arguments do not persuade us that we overlooked or misapprehended any point argued on appeal because the proposed modification of Masatake would result in the rotation-inhibiting structure 12A being placed at the opening of the club head. Decision 4. The cylindrical interior chamber 13 of main body 12 as shown in Figures 1-3 would extend toward the second end (bottom surface 14) and beyond the rotation-inhibiting structure as modified. Appellants’ arguments amount to an individual attack on the references where the Examiner has relied on the combined teachings of the references. Appellants assert that the Reply Brief stated that the location of the rotation inhibiting structure is not a critical element and that the Decision takes this statement out of context. Request 2-3. This argument does not persuade us that we overlooked or misapprehended any point that was argued on appeal. Appellants did not present argument or evidence of the criticality of this feature to rebut the obviousness determination. Finally, Appellants argue that the Examiner’s “conclusion regarding the relocation of the rotation-inhibiting structures does not provide explicit analysis and a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art and that the Examiner has utilized improper hindsight.” Request 3. In particular, Appeal 2011-010854 Application 11/846,370 3 Appellants argue that “none of Masatake, Rigby, Wettlaufer '556, or Chai disclose, teach, or suggest any need to ‘better see the connections of the rotation-inhibiting structure’” and “the application of record does not disclose, teach, or suggest the need to ‘better see the connections of the rotation-inhibiting structure.’” Request 3. These arguments do not persuade us that we overlooked or misapprehended any point argued on appeal. It is well-settled that the reason for combining teachings of references does not have to come from express teachings of the references, and the Examiner’s reason for combining teachings of different references does not have to be the same as an inventor’s reason for making a claimed device. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-19, 420 (2007) (it is error to look “only to the problem the patentee was trying to solve”); In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (“skilled artisan need not be motivated to combine [the prior art] for the same reason contemplated by [the inventor].”) (citation omitted). DECISION Appellants’ Request has been granted to the extent that we have reconsidered our Decision in light of the arguments in Appellants’ Request, but is denied with respect to our making any modification to the Decision. Upon reconsideration, the prior art rejections of claims 1, 3-6, 9-18, and 21- 30 are 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)(1)(iv). DENIED mls