Wilson Sporting Goods Co.

Patent Trials and Appeals Board

Jul 20, 2020

13946246 - (D) (P.T.A.B. Jul. 20, 2020)

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.
13/946,246 07/19/2013 Robert T. Kapheim WR-0253-US-NP 8795
90487 7590 07/20/2020
Amer Sports Americas
1 Prudential Plaza
130 East Randolph Street, Suite 600
Chicago, IL 60601
EXAMINER
PENG, RAYSHUN K.
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
07/20/2020 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 ROBERT T. KAPHEIM, SCOTT M. DOYLE, and
TERRI R. GRAHAM
____________

Appeal 2019-006335
Application 13/946,246
Technology Center 3700
____________

Before STEFAN STAICOVICI, MICHAEL J. FITZPATRICK, and
BRANDON J. WARNER, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Oct. 25, 2018, hereinafter “Final
Act.”) rejecting claims 1–12 and 14–26.2 We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Wilson Sporting Goods Co. is identified as the real party
in interest in Appellant’s Appeal Brief (filed Jan. 28, 2019, hereinafter
“Appeal Br.”). Appeal Br. 5.
2 Claim 13 is canceled. Appeal Br. 42 (Claims App.).
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SUMMARY OF DECISION
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).

INVENTION
Appellant’s invention is directed to a sports paddle. Spec. para. 1.
Claims 1, 15, and 20 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A sports paddle comprising:
a head portion having a head size within the range
of 70 to 100 square inches and including at least one core
layer positioned between first and second planar face
plates, the first and second face plates having first and
second outer surfaces, respectively, the head portion
defining a plurality of through-head portion holes
extending from the first outer surface to the second outer
surface and a plurality of grooves extending into the first
and second face plates, the plurality of grooves extending
between the plurality of through-head portion holes, the
plurality of grooves being spaced apart from the plurality
of through-head portion holes, the grooves being
elongate with each having a length and a width, and the
length of the grooves being greater than the width of the
grooves; and
a handle portion coupled to the head portion.

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REJECTIONS

I. The Examiner rejects claims 1, 6, 10–12, 14, and 26 under 35
U.S.C. § 103 as being unpatentable over Gazzara,3 Naret,4
Davis,5 and Pauly.6
II. The Examiner rejects claim 2 under 35 U.S.C. § 103 as being
unpatentable over Gazzara, Naret, Davis, Pauly, and Paddleball
Galaxy Technology.7
III. The Examiner rejects claim 3 under 35 U.S.C. § 103 as being
unpatentable over Gazzara, Naret, Davis, Pauly, and Platform
Tennis Rules.8
IV. The Examiner rejects claims 4 and 19 under 35 U.S.C. § 103 as
being unpatentable over Gazzara, Naret, Davis, Pauly, and
Paddleball Galaxy Specification.9
V. The Examiner rejects claims 5 and 7 under 35 U.S.C. § 103 as
being unpatentable over Gazzara, Naret, Davis, Pauly,
Paddleball Galaxy Specification, and Cole.10

3 Gazzara et al., US 8,371,968 B2, issued Feb. 12, 2013.
4 Naret, US 4,262,903, issued Apr. 21, 1981.
5 Davis et al., US 5,464,210, issued Nov. 7, 1995.
6 Pauly, US Des. 150,805, issued Aug. 31, 1948.
7https://web.archive.org/web/20120326180045/http://
www.paddleballgalaxy.com/PG/product/VikPadOZ425.html, “Technology”
tab, March 26, 2012.
8https://web.archive.org/web/20120812000832/http://
www.platformtennis.org/mt/Rules_of_Platform_Tennis.html, June 2011.
9https://web.archive.org/web/20120326180045/http://
www.paddleballgalaxy.com/PG/product/VikPadOZ425.html, “Description”
tab, March 26, 2012.
10 Cole et al., US 2010/0093459 A1, issued Apr. 15, 2010.
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VI. The Examiner rejects claim 8 under 35 U.S.C. § 103 as being
unpatentable over Gazzara, Naret, Davis, Pauly, Paddleball
Galaxy Specification, and Gordos.11
VII. The Examiner rejects claim 9 under 35 U.S.C. § 103 as being
unpatentable over Gazzara, Naret, Davis, Pauly, Paddleball
Galaxy Specification, and Raymond.12
VIII. The Examiner rejects claims 15–18 under 35 U.S.C. § 103 as
being unpatentable over Gazzara, Naret, and Paddleball Galaxy
Technology.
IX. The Examiner rejects claims 20, 21, 23, and 24 under 35 U.S.C.
§ 103 as being unpatentable over Gazzara, Paddleball Galaxy
Technology, Naret, and Davis.
X. The Examiner rejects claim 22 under 35 U.S.C. § 103 as being
unpatentable over Gazzara, Paddleball Galaxy Technology,
Naret, Davis, and Platform Tennis Rules.
XI. The Examiner rejects claim 25 under 35 U.S.C. § 103 as being
unpatentable over Gazzara, Paddleball Galaxy Technology,
Naret, Davis, and Paddleball Galaxy Specification.

ANALYSIS
Rejection I
Claims 1, 6, 12, 14, and 26
Appellant does not present arguments for the patentability of claims 6,
12, 14, and 26 apart from claim 1. See Appeal Br. 11–16. Therefore, in

11 Gordos, US 4,065,133, issued Dec. 27, 1977.
12 Raymond, US 6,048,277, issued Apr. 11, 2000.
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accordance with 37 C.F.R. § 41.37(c)(1)(iv), we select claim 1 as the
representative claim on which to decide the appeal of the rejection of these
claims, with claims 6, 12, 14, and 26 standing or falling with claim 1.
The Examiner finds Gazzara discloses a sports paddle including, inter
alia, head portion 12 having a core layer sandwiched between first and
second face plates 121A, 121B and through-holes 23, and handle portion 11.
Final Act. 2 (citing Gazzara, col. 3, ll. 1–3, Fig. 6). However, the Examiner
finds that
Gazzara does not teach having a head size within the range of
70 to100 square inches and a plurality of grooves extending
into the first and second face plates, the plurality of grooves
extending between the plurality of through-head portion holes,
the plurality of grooves being spaced apart from the plurality of
through-head portion holes, the grooves being elongate with
each having a length and a width, and the length of the grooves
being greater than the width of the grooves.

Id. at 2–3. Nonetheless, the Examiner finds (1) Davis discloses a tennis
racquet head size in the range of 70–100 square inches; (2) Naret discloses a
paddle racquet having a plurality of grooves 21 extending between a
plurality of through-holes 23; and (3) Pauly discloses elongate grooves
having a length greater than a width. Id. at 3 (citing Davis, col. 1, ll. 62–63;
Naret, Fig. 2; Pauly, Fig. 1). The Examiner concludes that it would have
been obvious for a person of ordinary skill in the art to modify Gazzara’s
sports paddle to have a head size in the range of 70–100 square inches, as
taught by Davis, to include grooves, as taught by Naret, and to make such
grooves have an elongated shape, as taught by Pauly, in order to increase the
surface area of the sports paddle, and, thus, provide for increased control
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over the ball. Id. at 4–5 (citing Davis, col. 2, ll. 45–50; Naret, col. 2, ll. 13–
24).
Appellant argues that neither Gazzara nor Naret teaches a plurality of
“grooves” that extend into first and second face plates and between through-
head portion holes; Naret fails to disclose a plurality of elongate grooves
having a length greater than a width; and Pauly does not disclose whether its
bat includes a core and, moreover, “is devoid of any disclosure of any hole,
groove, indentation or recess of any kind.” Appeal Br. 13–15.
We are not persuaded by such arguments because Appellant cannot
show nonobviousness by attacking Gazzara, Naret, and Pauly individually
when the rejection as articulated by the Examiner is based on a combination
of Gazzara, Naret, Davis, and Pauly. See In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references. [Each reference] must be read, not
in isolation, but for what it fairly teaches in combination with the prior art as
a whole.”). Here, the Examiner employs Gazzara to disclose a sports paddle
including head portion 12 having a core layer sandwiched between first and
second face plates 121A, 121B and through-holes 23. See Gazzara, Fig. 3.
The Examiner then turns to Naret to disclose a plurality of circular textured
indentations 21, i.e., “grooves,” extending into surfaces 16, 17 and between
through-holes 23. See Naret, Fig. 2. Thus, in a first instance, a skilled
artisan would understand that the combined teachings of Gazzara and Naret
discloses a sports paddle including head portion 12 having a core layer
sandwiched between first and second face plates 121A, 121B and circular
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grooves extending into first and second face plates 121A, 121B and between
through-holes 23.
The Examiner then turns to Pauly to disclose a bat, i.e., paddle, having
elongated shapes with a length greater than a width thereon. See Pauly, Fig.
1. Thus, in a second instance, we agree with the Examiner’s position that
modifying the circular grooves of the sports paddle of Gazzara and Naret to
have an elongate shape with a length greater than a width, according to
Pauly, “would have been obvious to one of ordinary skill [in the art] . . . as a
matter of design for the groove shape.” Ans. 4. Appellant’s Specification
does not indicate any significance of the “elongate” shape of the claimed
grooves. See Spec. para. 32 (“[T]he grooves 50 can be formed . . . in a
variety of different, shapes, and lengths to define a variety of different
groove patterns.”); see also In re Kuhle, 526 F.2d 553, 555 (CCPA 1975)
(use of claimed feature solves no stated problem and presents no unexpected
result and “would be an obvious matter of design choice within the skill of
the art” (citing Graham v. John Deere Co., 383 U.S. 1 (1966) and In re
Gazda, 219 F. 2d 449 (1955))). As such, in light of the Specification’s
description of “grooves” as circular “elongate channels or recesses” or a
dictionary definition of “grooves” “as ‘a long, narrow cut or indentation in a
surface,’” it is not clear why a skilled artisan would not reasonably construe
the circular elongated textured indentations of Gazzara, as modified by Naret
and Pauly, to constitute the claimed “grooves.” See Spec. paras. 27, 31, 32;
Reply Brief (filed June 11, 2019, hereinafter “Reply Br.”) 4, 6.
Furthermore, Appellant’s conclusory assertion that there is no
motivation to combine the teachings of Gazzara, Naret, and Pauly (see
Appeal Br. 14) ignores and fails to point out error in the rationale provided
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by the Examiner, namely, to increase the surface area of the sports paddle,
and, thus, provide for increased control over the ball. See Final Act. 4–5;
Examiner’s Answer (dated May 15, 2019, hereinafter “Ans.”) 4.
Furthermore, we are not persuaded by Appellant’s position that the
Examiner’s reasoning is in error because the claimed “grooves are not
intended to increase the surface area of the racquet but rather . . . are
configured to facilitate the imparting of spin to the ball.” Reply Br. 5. It is
not necessary for the prior art to serve the same purpose as that disclosed in
Appellant’s Specification in order to support the conclusion that the claimed
subject matter would have been obvious. KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 419 (2007) (“In determining whether the subject matter of a patent
claim is obvious, neither the particular motivation nor the avowed purpose
of the [Appellant] controls.”).
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103 of claim 1 as unpatentable over Gazzara, Naret,
Davis, and Pauly. Claims 6, 12, 14, and 26 fall with claim 1.

Claims 10 and 11
In addition to the arguments discussed supra, which we did not find
persuasive, Appellant further argues that neither Naret nor Pauly discloses
“grooves having a depth within the range of 0.1 to 10 mm or within the
range of 0.5 to 10 mm,” as required by dependent claims 10 and 11. Appeal
Br. 15, 42. According to Appellant, Naret discloses an indentation depth of
25% of the paddle thickness, which is beyond the claimed 10 mm limit, and
Pauly merely discloses a two dimensional graphic or pattern; and, even if a
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skilled artisan would read Pauly’s circles or curves to be three-dimensional,
then they would extend through the entire thickness of Pauly’s bat. Id.
We are not persuaded by Appellant’s argument because once more
Appellant is attacking Naret and Pauly individually, and, furthermore, such
arguments are not commensurate with the Examiner’s rejection. In
particular, the Examiner’s rejection further modifies the circular elongated
textured indentations of Gazzara, as modified by Naret and Pauly, i.e., the
“grooves,” to have a depth within the range of 0.1 to 10 mm or within the
range of 0.5 to 10 mm. See Final Act. 6–7. According to the Examiner,
such a modification would have been obvious to a skilled artisan, because
Appellant’s Specification does not impart any criticality to the depth
dimension; paragraph 29 of the Specification states that “other dimensions
for the width and maximum depth . . . can be used;” and determining the
claimed maximum depth dimension would be arrived at by routine
optimization. Id. (citing In re Aller, 220 F.2d 454, 456 (CCPA 1955)).
Appellant does not adequately explain why the Examiner’s reasoning is in
error. Accordingly, for the foregoing reasons, we likewise sustain the
rejection of clams 10 and 11 over the combined teachings of Gazzara, Naret,
Davis, and Pauly.

Rejections II–IV
Appellant relies on the arguments discussed supra, and, in addition,
contends that neither Paddleball Galaxy Technology, Platform Tennis Rules,
nor Paddleball Galaxy Specification discloses a plurality of grooves
extending between and spaced apart from a plurality of through-head portion
holes. See Appeal Br. 16–20.
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We are not persuaded by Appellant’s arguments for the reasons
discussed above and, furthermore, Appellant is attacking Paddleball Galaxy
Technology, Platform Tennis Rules, and Paddleball Galaxy Specification
individually. The Examiner is correct that the rejection does not employ
Paddleball Galaxy Technology, Platform Tennis Rules, or Paddleball Galaxy
Specification to disclose a plurality of grooves extending between a plurality
of through-head portion holes. Ans. 5.
Accordingly, for the reasons discussed supra, we sustain Rejections
II–IV.

Rejection V
The Examiner determines that it would have been obvious for a
person of ordinary skill in the art to modify the orientation of the grooves in
the paddle of Gazzara, Naret, Davis, Pauly, and Paddleball Galaxy
Specification, as taught by Cole, in order “to provide different feedback,”
and, in particular, to “improve the control over spin and direction of a hit
ball.” Final Act. 16–17. According to the Examiner, “grooves are a known
component in sports apparatus devices . . . [that] provide more accuracy or
spin when making contact with a ball, and therefore, the club head of Cole in
combination with the other cited references would have motivation for
[making the] combination.” Ans. 6.
In response, Appellant argues that “[t]he various number of recessed
patterns disclosed by Cole are all internal to the club head in that they are
located on the inner face,” and, thus, “the patterns are not configured to
impact a golf ball.” Appeal Br. 20–21; Reply Br. 9. According to
Appellant, the Examiner’s rejection of “combin[ing] the grooves of an iron
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golf club head with the head of a paddleball racquet” is based upon
impermissible hindsight as a skilled artisan would not conclude that Cole’s
grooves, which are not designed for impacting a golf ball, “should be
included in a sports paddle.” Appeal Br. 21–22.
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Here, Cole
discloses club head 12, 15 having strike face 1350 with groove-set 1360 and
back face 1210, 1510 with grooves 1220, 1520. See Cole, paras. 81–84,
Figs. 12, 13, 15. Furthermore, Cole’s grooves 1220, 1520 which the
Examiner relies on to have an orientation substantially parallel, as per claim
5, or substantially orthogonal, as per claim 7, to the longitudinal axis of shaft
180, do not come into contact with a golf ball, but rather “provide beneficial
effects with respect to the strength or ability of strike portion 1200 to absorb
and/or dissipate stress forces upon impact . . . with a golf ball. Cole, paras.
84. In other words, Cole’s grooves 1220, 1520 located in back face 1210,
1510 absorb and/or dissipate stress forces when strike face 1350 hits the golf
ball. See id., paras. 42, 82.
Accordingly, from the teachings of Cole, it is not apparent how the
Examiner considers the orientation of Cole’s grooves 1220, 1520 of back
face 1210, 1510, which do not contact a golf ball, as relevant to the
orientation of the grooves of Gazzara, Naret, Davis, Pauly, and Paddleball
Galaxy Specification, which do contact a ball. In other words, the Examiner
has not provided an adequate factual basis to show that providing the
orientation of Cole’s grooves 1220, 1520 to the grooves of Gazzara, Naret,
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Davis, Pauly, and Paddleball Galaxy Specification would “improve the
control over spin and direction of a hit ball” or that a person of ordinary skill
in the art would understand this to be the case. Consequently, the
Examiner’s conclusion that it would have been obvious to a skilled artisan to
provide the orientation of Cole’s grooves 1220, 1520 to the grooves of
Gazzara, Naret, Davis, Pauly, and Paddleball Galaxy Specification to
“improve the control over spin and direction of a hit ball” lacks rational
underpinning.
Lastly, we appreciate the Examiner’s position that grooves are known
to be employed in sports devices to control spin of a ball; however, the
Examiner’s position does not explain how the orientation of the grooves of
Gazzara, Naret, Davis, Pauly, and Paddleball Galaxy Specification “provide
more accuracy or spin when making contact with a ball,” as per the
Examiner’s reasoning. As the grooves of Gazzara, Naret, Davis, Pauly, and
Paddleball Galaxy Specification already provide control over ball spin, the
Examiner’s rejection does not adequately explain why, in the absence of
hindsight gleaned improperly from Appellant’s underlying disclosure, a
skilled artisan would have modified the orientation of the grooves of
Gazzara, Naret, Davis, Pauly, and Paddleball Galaxy Specification, as
proposed by the Examiner, to arrive at the subject matter of claims 5 and 7.
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 103 of claims 5 and 7 as unpatentable over
Gazzara, Naret, Davis, Pauly, Paddleball Galaxy Specification, and Cole.

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Rejection VI
Claim 8 requires, inter alia, a plurality of grooves, wherein “at least
one groove extend[s] in a first direction that is substantially parallel to the
longitudinal axis and at least one groove extend[s] in a second direction that
is substantially orthogonal to the longitudinal axis.” Appeal Br. 41.
The Examiner finds that Gordos’ grooves 30 extend “in a first
direction that is substantially parallel to the longitudinal axis” and grooves
32 extend “in a second direction that is substantially orthogonal to the
longitudinal axis.” Final Act. 18, annotated Figure 1 of Gordos.
Appellant argues that “Gordos shares the same deficiencies as Cole.”
Appeal Br. 24. In other words, we understand Appellant’s argument to be
that Gordos’ grooves 30, 32 are not configured to impact a golf ball, and,
thus, the Examiner’s reasoning to combine the teachings of Gazzara, Naret,
Davis, Pauly, Paddleball Galaxy Specification, and Gordos lacks rational
underpinning.
We appreciate that Gordos’ grooves 30 are located on striking surface
28 and come into direct contact with a golf ball, and, thus, are configured to
impact a golf ball. See Gordos, col. 2, ll. 27–28, Fig. 1. However, grooves
32 are located in the top surface 12 of club head, and, thus do not contact a
golf ball. Accordingly, Gordos’ grooves 32, which the Examiner equates to
grooves that extend “in a second direction that is substantially orthogonal to
the longitudinal axis,” are not configured to impact a golf ball. Therefore,
the Examiner’s rationale to combine the teachings of Gazzara, Naret, Davis,
Pauly, Paddleball Galaxy Specification, and Gordos, namely, to “improve
the control over spin and direction of a hit ball,” lacks rational underpinning.
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As such, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 103 of claim 8 as unpatentable over Gazzara, Naret,
Davis, Pauly, Paddleball Galaxy Specification, and Gordos.

Rejection VII
Claim 9 requires, inter alia, a plurality of grooves including “at least
one groove extending in a third direction that is angled with respect to the
longitudinal axis.” Appeal Br. 41.
The Examiner finds that Raymond’s grooves 32 are angled with
respect to the longitudinal axis. Final Act. 19, annotated Fig. 1 of Raymond.
In addition to the arguments discussed supra in Rejection I, which we
did not find persuasive, Appellant further argues that “Raymond shares the
same deficiencies as Cole.” Appeal Br. 25 (“[T]he present rejection of claim
9 should be reversed for at least the reasons stated above with respect to
claim 1.”). In other words, we understand Appellant’s argument to be that
Raymond’s grooves 32 are not configured to impact a golf ball, and, thus,
the Examiner’s reasoning to combine the teachings of Gazzara, Naret, Davis,
Pauly, Paddleball Galaxy Specification, and Raymond lacks rational
underpinning.
We are not persuaded by Appellant’s arguments because, in contrast
to Cole’s grooves 1220, 1520, which, as discussed supra in Rejection V, do
not come into contact with a golf ball, Raymond’s grooves 32 are located on
striking surface 14, and, thus, do come into contact with a golf ball. See
Raymond, col. 2, ll. 31, 54 through col. 3, l. 6. Accordingly, we do not
agree with Appellant that the Examiner’s rationale to combine the teachings
of Gazzara, Naret, Davis, Pauly, Paddleball Galaxy Specification, and
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Raymond, namely, to “improve the control over spin and direction of a hit
ball,” lacks rational underpinning. See Appeal Br. 25.
Lastly, we are not persuaded by Appellant’s conclusory argument that
the Examiner’s combination “would be unworkable” because Appellant does
not point out with any specificity missing findings or reasoning that are
necessary to support the conclusion of obviousness. See id.
Accordingly, for the reasons discussed supra, we sustain the rejection
under 35 U.S.C. § 103 of claim 9 as unpatentable over Gazzara, Naret,
Davis, Pauly, Paddleball Galaxy Specification, and Raymond.

Rejection VIII
Claims 15–17
Appellant does not present arguments for the patentability of claims
16 and 17 apart from claim 15. See Appeal Br. 26–30. Therefore, we select
claim 15 as the representative claim on which to decide the appeal of the
rejection of these claims, with claims 16 and 17 standing or falling with
claim 15.
The Examiner finds Gazzara discloses a sports paddle including, inter
alia, oval head portion 12 having a core layer sandwiched between first and
second face plates 121A, 121B and through-holes 23, and handle portion 11.
Final Act. 20 (citing Gazzara, col. 3, ll. 1–3, Fig. 6). However, the Examiner
finds that
Gazzara does not teach a plurality of grooves extending into the
first and second face plates at least one of the first and second
outer surfaces of the first and second face plates of the head
portion includes a generally planar roughened region and a
generally smooth region, and the smooth region of the oval
shaped head portion being positioned adjacent the handle
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portion and formed without a through-head portion hole and
without a groove.

Id. Nonetheless, the Examiner finds Naret discloses a paddle racquet having
a plurality of grooves 21 extending into first and second surface plates 16,
17 and a smooth region 13 adjacent a “handle portion and formed without a
through-head portion hole and without a groove.” Id. (citing Naret, Fig. 1).
The Examiner further finds that Paddleball Galaxy Technology discloses
first and second outer surfaces of a paddle having a roughened region. Id. at
21 (citing Paddleball Galaxy Technology, Spin Tex). The Examiner
concludes that it would have been obvious for a person of ordinary skill in
the art to modify Gazzara’s sports paddle to include grooves, as taught by
Naret, and to provide a roughened region, as taught by Paddleball Galaxy
Technology, in order “to provide increased control using the grooves” and
“to further improve control over spin and grip on the ball by the racket.” Id.
(citing Naret, col. 2, ll. 13–24).
Appellant argues that Naret’s portion 13, which the Examiner equates
to the claimed “smooth region of the oval-shaped head portion,” “is NOT a
head portion and not part of an oval-shaped head portion,” but rather, “is
specifically defined as a neck portion.” Appeal Br. 27.
We are not persuaded by Appellant’s argument because 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 Suitco Surface, Inc., 603
F.3d 1255, 1260 (Fed. Cir. 2010). Here, we reproduce below the
Examiner’s comparison of annotated Figure 4c of Appellant’s Drawings and
annotated Figure 1 of Naret:
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The Examiner’s annotated Figure 4c of Appellant’s Drawings and annotated
Figure 1 of Naret illustrate smooth portions 76 and 13, respectively, as part
of an oval-shaped head portion.
Hence, in light of Figure 1 of Appellant’s Drawings, which illustrates
portion 76 as part of an oval-shaped head portion, and the Specification,
which describes portion 76 as a “smooth portion,” we agree with the
Examiner’s finding that a skilled artisan would reasonably construe Naret’s
portion 13 as the claimed “smooth region of the oval-shaped head portion.”
Ans. 9; see also Spec. para. 33. We further agree with the Examiner that
annotated Figure 1 of Naret also illustrates smooth portion 13 as “formed
without a through-head portion hole and without a groove.” Id. at 26.
Furthermore, we are not persuaded by Appellant’s argument that the
Examiner has failed to identify any motivation, suggestion or teaching of the
desirability to combine Gazzara, Naret, and Paddleball Galaxy Technology
to arrive at Appellant’s invention. See Appeal Br. 28. As discussed supra,
the Examiner has set forth an adequate reasoning with rational underpinning
to combine the teachings of Gazzara, Naret, and Paddleball Galaxy
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Technology, namely, “to provide increased control using the grooves” and
“to further improve control over spin and grip on the ball by the racket.” See
Final Act. 21. Appellant has not persuasively argued that the Examiner’s
findings and reasoning are in error. Moreover, Appellant’s argument that
“[t]he references are devoid of any teaching, suggestion or disclosure” to
make the combination (see Appeal Br. 28) is not persuasive because such an
argument appears to be holding the Examiner to the old teaching,
suggestion, or motivation (“TSM”) standard; such a standard is not required.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007).
As such, for the foregoing reasons, we sustain the rejection under 35
U.S.C. § 103 of claim 15 as unpatentable over Gazzara, Naret, and
Paddleball Galaxy Technology. Claims 16 and 17 fall with claim 15.

Claim 18
Claim 18 depends from independent claim 15 and adds the limitation
that “the roughened region terminates within 0.25 inches from the through-
head portion hole positioned closest to the handle portion.” Appeal Br. 43
(Claims App.).
Appellant argues that Naret fails to disclose a roughened portion that
terminates “within 0.25 inches from the through-head portion hole
positioned closest to the handle portion” because “Naret teaches only a
plurality of spaced-apart, enlarged indentations and perforations in the
smooth surface of a paddle racquet,” which “do not form a roughened
region.” Appeal Br. 29.
We are not persuaded by Appellant’s argument because it is not
commensurate with the Examiner’s rejection. The Examiner did not employ
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Naret to expressly disclose where the roughened portion of Paddleball
Galaxy Technology terminates in the modification of Gazzara. See Final
Act. 23–24. Hence, Appellant is arguing against Naret individually, whereas
the Examiner’s rejection is based on a further modification of the Gazzara,
Naret, and Paddleball Galaxy Technology combination. See id. at 23,
Examiner’s annotated Figure 1 of Naret; see also Ans. 10.
In particular, the Examiner finds that the combination of Gazzara,
Naret, and Paddleball Galaxy Technology discloses a roughened region
terminating within a distance from the “through-head portion hole positioned
closest to the handle portion,” wherein a skilled artisan would readily arrive
at the claimed distance of 0.25 inches by routine optimization. Final Act.
23–24 (citing In re Aller, 220 F.2d at 456). The Examiner concludes that
such a location for terminating the roughened region of the sports paddle of
Gazzara, Naret, and Paddleball Galaxy Technology would have been
obvious to a skilled artisan “to better protect a user’s hand.” Final Act. 23.
As Appellant does not adequately explain why the Examiner’s
reasoning is in error, we also sustain the rejection of claim 18 as
unpatentable over the combined teachings of Gazzara, Naret, and Paddleball
Galaxy Technology.

Rejection IX
Appellant does not present arguments for the patentability of claims
21, 23, and 24 apart from claim 20. See Appeal Br. 33. Therefore, we select
claim 20 as the representative claim on which to decide the appeal of the
rejection of these claims, with claims 21, 23, and 24 standing or falling with
claim 20.
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Appellant argues that
None of the references disclose, teach or suggest a head portion
including opposing first and second face plates having first and
second outer surfaces, wherein each of the first and second
outer surfaces includes a roughened region and a generally
smooth region. None of the references disclose, teach or
suggest a smooth region of a first outer surface of a head
portion spacing apart the grip from a roughened region of the
first outer surface.

Appeal Br. 31. According to Appellant, Naret’s portion 13, which the
Examiner equates to the claimed “planar smooth region of the head portion,”
“is NOT a head portion and not part of a head portion” and head portion 12
is not “formed without a through-head portion hole and without a groove” as
Naret discloses a peripheral groove extending about the contact head
portion” 12 “between the lower end of the contact head portion and the
handle portion 14.” Id. 31–32.
We are not persuaded because Appellant’s argument amounts to a
recitation of the claim elements and a “naked assertion” that the elements are
not found in the prior art. Such statements do not constitute a separate
argument for patentability pursuant to 37 C.F.R. § 41.37(c)(1)(iv). See In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board had
reasonably interpreted the same language in the prior rule under 37 C.F.R.
§ 41.37(c)(1)(vii) as requiring “more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art”). As discussed
supra in Rejection VIII, we agree with the Examiner’s finding that a skilled
artisan would reasonably construe Naret’s smooth portion 13 as the claimed
“planar smooth region of the head portion being formed without a through-
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21

head hole and without a groove.” Ans. 10–11; see also Final Act. 25,
Examiner’s annotated Fig. 1 of Naret. Moreover, Appellant’s arguments
appear to attack the teachings of Gazzara, Paddleball Galaxy Technology,
Naret, and Davis individually, whereas the Examiner’s rejection is based on
a combination of these teachings.
Appellant further argues that the Examiner’s combination is based
upon impermissible hindsight and the Examiner’s conclusion that it would
have been obvious to a skilled artisan to combine the teachings of Gazzara,
Paddleball Galaxy Technology, Naret, and Davis “is not reasonable given
the long [felt] need that went unmet until the invention of the present
Application.” Appeal Br. 32.
We are not persuaded by Appellant’s argument that the Examiner’s
determination of obviousness is based on impermissible hindsight
reconstruction. Rather, the Examiner has set forth an adequate reasoning
with rational underpinning to modify the sports paddle of Gazzara and
provide (1) the roughened area of Paddleball Galaxy Technology to
“improve control over spin and grip on the ball;” (2) the grooves and smooth
portion of Naret “to provide increased control”; and (3) Davis’ head size of
70 to 100 square inches “in order to increase the surface of the face to
increase control and power over the ball.” Final Act. 24–25; see also In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness
grounds [require] some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”) (cited with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
Appellant has not persuasively argued that the Examiner’s conclusion lacks
rational underpinning.
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Further, we agree with the Examiner that Appellant has not proffered
persuasive evidence establishing long-felt need. See Ans. 11–12.
Establishing long-felt need requires objective evidence that the invention
satisfies the long-felt need. In re Cavanagh, 436 F.2d 491, 496 (CCPA
1971). Hence, Appellant must establish that “such a ‘problem’ objectively
existed, as distinguished from its subjective existence in the minds of the
inventors and their patent counsel.” In re Gershon, 372 F.2d 535, 538
(CCPA 1967). Appellant must also establish that others unsuccessfully
attempted to solve the problem. See Orthopedic Equipment Co. v. All
Orthopedic Appliances, Inc., 708 F.32d 1376, 1382 (Fed. Cir. 1983); Scully
Signal Co. v. Electronics Corp. of America, 570 F.2d 355, 361 (1st Cir.
1977) (“[T]he questions ‘how long did the need exist’ and ‘how many tried
to find the way’, appear side by side with the question of success.”). Here,
however, in the absence of evidence in the record, we are not persuaded that
Appellant has persuasively established that the claimed invention solved a
long felt need that others in the field unsuccessfully attempted to solve.
Lastly, Appellant argues that “none of the references disclose, teach or
suggest the smooth region of the first outer surface having a first
longitudinal dimension measured with respect to the longitudinal axis within
the range of 1 to 3 inches.” Appeal Br. 31.
The Examiner finds that Naret’s smooth region 13 has “a first
longitudinal dimension measured with respect to the longitudinal axis within
the range of 1 to 3 inches,” as recited by claim 20. See Final Act. 25.
However, we do not find any portion of Naret that discloses such a feature
and reliance on Naret’s Figure 1 is untenable as the Examiner has not
indicated that Figure 1 is drawn to scale. See Hockerson- Halbertstadt, Inc.
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23

v. Avia Group Int'l, 222 F.3d 951,956 (Fed. Cir. 2000) (patent drawings not
designated as being drawn to scale cannot be relied upon to define precise
proportions of elements if the specification is completely silent on the issue).
Nonetheless, the lack of an express disclosure of a particular claim
element does not defeat a rejection under 35 U.S.C. § 103, and such a
requirement would essentially defeat the purpose of 35 U.S.C. § 103. We
must attribute skill to the hypothetical person described in 35 U.S.C. § 103.
In re Sovish, 769 F.2d 738, 742 (Fed. Cir. 1985). Here, a person of ordinary
skill in the art of sports paddles would have understood that the longitudinal
dimension of the smooth region, which connects and transitions the head
portion to the handle portion, is limited by the resulting torque and stresses
generated between the head portion and the handle portion upon impact with
a ball. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962) (An artisan must
be presumed to know something about the art apart from what the references
disclosed.).
Accordingly, modifying the smooth portion of the sports paddle of
Gazzara, Paddleball Galaxy Technology, Naret, and Davis to have a
“longitudinal dimension . . . within the range of 1 to 3 inches” would have
been obvious to a skilled artisan because the claimed range can be arrived at
by routine optimization. See Aller, 220 F.2d at 456 (“[W]here the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation.”
(citations omitted)); see also Final Act. 22.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103 of claim 20 as unpatentable over Gazzara, Paddleball
Galaxy Technology, Naret, and Davis. Claims 21, 23, and 24 fall with claim
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24

20. However, we denominate our affirmance as a NEW GROUND OF
REJECTION pursuant to 37 C.F.R. § 41.50(b), because our analysis relies
upon facts and reasoning that the Examiner did not use.

Rejections X and XI
Appellant relies on the arguments discussed supra with respect to the
rejection of claim 20. See Appeal Br. 33–36. Therefore, for the reasons
discussed above, we also sustain Rejections X and XI.
However, as claims 22 and 25 depends from claim 20, we denominate
our affirmances as NEW GROUNDS OF REJECTION pursuant to 37
C.F.R. § 41.50(b), because our analysis relies upon facts and reasoning that
the Examiner did not use.

CONCLUSION

Claim(s)
Rejected
35
U.S.C.
§
Basis Affirmed Reversed New
Ground
of
Rejection
1, 6, 10–
12, 14, 26
103 Gazzara,
Naret, Davis,
Pauly
1, 6, 10–
12, 14, 26

2 103 Gazzara,
Naret, Davis,
Pauly,
Paddleball
Galaxy
Technology
2
3 103 Gazzara,
Naret, Davis,
Pauly,
3
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25

Platform
Tennis Rules
4, 19 103 Gazzara,
Naret, Davis,
Pauly,
Paddleball
Galaxy
Specification
4, 19
5, 7 103 Gazzara,
Naret, Davis,
Pauly,
Paddleball
Galaxy
Specification,
Cole
5, 7
8 103 Gazzara,
Naret, Davis,
Pauly,
Paddleball
Galaxy
Specification,
Gordos
8
9 103 Gazzara,
Naret, Davis,
Pauly,
Paddleball
Galaxy
Specification,
Raymond
9
15–18 103 Gazzara,
Naret,
Paddleball
Galaxy
Technology
15–18
20, 21, 23,
24
103 Gazzara,
Paddleball
Galaxy
Technology,
Naret, Davis
20, 21,
23, 24
20, 21, 23,
24
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22 Gazzara,
Paddleball
Galaxy
Technology,
Naret, Davis,
Platform
Tennis Rules
22 22
25 Gazzara,
Paddleball
Galaxy
Technology,
Naret, Davis,
Paddleball
Galaxy
Specification
25 25
Overall
Outcome
1–4, 6, 9–
12, 14–26
5, 7, 8 20–25
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:

(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
[E]xaminer, in which event the prosecution will be remanded to
the [E]xaminer. The new ground of rejection is binding upon
the examiner unless an amendment or new Evidence not
previously of Record is made which, in the opinion of the
[E]xaminer, overcomes the new ground of rejection designated
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27

in the decision. Should the [E]xaminer reject the claims,
appellant may again appeal to the Board pursuant to this
subpart.

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and
state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01 (9th ed.
2018).
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-IN-PART
37 C.F.R. § 41.50(b)