Joseph Sliepka

Patent Trials and Appeals Board

Feb 2, 2022

2021003804 (P.T.A.B. Feb. 2, 2022)

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. 16/733,198 01/02/2020 Joseph M. Sliepka D7707CIP 1036 27851 7590 02/02/2022 BENJAMIN A. ADLER 8011 CANDLE LANE HOUSTON, TX 77071 EXAMINER PENG, RAYSHUN K. ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 02/02/2022 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): Ben@adlerandassociates.com Colleen@adlerandassociates.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEPH M. SLIEPKA Appeal 2021-003804 Application 16/733,198 Technology Center 3700 Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. GREENHUT, 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, 4-13, 16-21 and 24-26. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant does not identify the real party in interest. Appeal 2021-003804 Application 16/733,198 2 CLAIMED SUBJECT MATTER The claims are directed to a grip for a handle on a golf club. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A grip device for a golf club, comprising: a hollow member with a substantially cylindrical body comprising an outer surface, a bore that defines an inner surface therein and a length extending between a proximal open end and a distal open end, and a slit therethrough to the bore along the length of the hollow member; said inner surface comprising a plurality of nub-like protuberances uniformly disposed thereon to grip the handle when placed thereon and said outer surface and said inner surface each with a perimeter that tapers along the length of the hollow member from the proximal open end to the distal open end to securely and removably receive a golf club handle therein. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Williams US 5,611,533 Mar. 18, 1997 Rickon US 8,602,925 B1 Dec. 10, 2013 Matzie US 2002/0132678 A1 Sept. 19, 2002 Han US 2008/0161123 A1 July 3, 2008 REJECTIONS Claims 1, 6-13, and 18-20 are rejected under 35 U.S.C. § 103 as being unpatentable over Han and Rickon. Final Act. 2. Claims 4 and 17 are rejected under 35 U.S.C. § 103 as being unpatentable over Han, Rickon, and Williams. Final Act. 9. Claims 5, 16, 21, and 24-26 are rejected under 35 U.S.C. § 103 as being unpatentable over Han, Rickon, and Matzie. Final Act. 10. Appeal 2021-003804 Application 16/733,198 3 OPINION Claims 1, 6-13, and 18-20 are argued as a group (Appeal Br. 6-11), for which claim 1 is representative. 37 C.F.R. § 41.37(c)(1)(iv). Claims 5, 16, 21, and 24-26 are argued as a group but the Arguments set forth are the same as those set forth regarding claim 1. Appeal Br. 11-15. Claims 4 and 17 are not separately argued. The Examiner relied on Han as disclosing the basic subject matter of claim 1 but without the recited slit and inner protuberances, for which the Examiner relied on Rickon. Final Act. 2-4. Appellant contends that the Examiner’s proposed modification would run against the intended purpose of Han because Han does not teach or suggest that the grip is removable. Appeal Br. 8-9. According to Appellant, in order to effectuate the Rickon’s removable purpose, Han’s adhesive must be removed which runs counter to Han’s intended purpose. Appeal Br. 10. First, Appellant points to no concrete evidence that permanence is a necessary, or even desirable, characteristic of Han’s grip. Ans. 4. As the Examiner points out, Han recognizes golf club grips can be damaged which implies they may need to be replaced. Ans. 4 (citing Han para. 5). Second, Han does not provide sufficient detail or discussion regarding the selected adhesive to ascertain its degree of permanence. Nor does Han provide any indication that the particular adhesive chosen is so critical to Han’s device replacing it would run counter to Han’s intended purpose. As the Examiner points out, there is nothing in the record to indicate that grips relying on significant levels of friction due to nodules or protuberances, such as those of Rickon, would not perform equally well for the purpose of grip adherence in Han. Han’s stated purpose is providing a “golf club grip that can be easily Appeal 2021-003804 Application 16/733,198 4 and quickly interconnected with the shaft of the club.” Han Para. 7. There is nothing about the Examiner’s proposed substitution of one form of interconnection for another that runs counter to such purpose. CONCLUSION The Examiner’s rejections are AFFIRMED. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 6-13, 18- 20 103 Han, Rickon 1, 6-13, 18- 20 4, 17 103 Han, Rickon, Williams 4, 17 5, 16, 21, 24-26 103 Han, Rickon, Matzie 5, 16, 21, 24-26 Overall Outcome 1, 4-13, 16- 21, 24-26 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