15278133 - (D) (P.T.A.B. Jan. 17, 2020)

Ambrose, John

Patent Trials and Appeals BoardJan 17, 2020

15278133 - (D) (P.T.A.B. Jan. 17, 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. 15/278,133 09/28/2016 John Ambrose LateralLine-1501 1043 36787 7590 01/17/2020 BLYNN L. SHIDELER THE BLK LAW GROUP 3500 BROKKTREE ROAD SUITE 200 WEXFORD, PA 15090 EXAMINER DENNIS, MICHAEL DAVID ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 01/17/2020 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): blynn@BLKLawGroup.com cbelleci@BLKLawGroup.com patents@BLKLawGroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN AMBROSE Appeal 2019-003962 Application 15/278,133 Technology Center 3700 Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK, Administrative Patent Judges. PESLAK, 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 1–20. See Non-Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real parties in interest as the inventor John M. Ambrose and Lateral Line, LLC. Appeal Br. 1. Appeal 2019-003962 Application 15/278,133 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to a golf putter grip and associated putter to improve putting mechanics or motions. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A golf putter grip comprising a main body extending at least 7 inches (177.8 mm) in length from a top end to a bottom end, a flat front surface extending substantially from the top end to the bottom end and having a width less than 1.75 inches (44.45 mm) and configured to accommodate side by side thumbs with an opposing palm position grip of the golfer, and a shaft receiving bore within the golf putter grip extending from the bottom end substantially to the top end, wherein the shaft receiving bore is centered between lateral sides of the golf putter grip between the top end and the bottom end and wherein the shaft receiving bore is angled relative to a longitudinal center line of the main body to extend away from the flat front surface in the direction along the main body from the top end to the bottom end. Appeal 2019-003962 Application 15/278,133 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Landi US 5,110,653 May 5, 1992 Hannon US 5,575,724 Nov. 19, 1996 Chandler US 6,152,832 Nov. 28, 2000 Goldfader US 2006/0068929 A1 Mar. 30, 2006 Rose US 2007/0082750 A1 Apr. 12, 2007 Lu US 2011/0165957 A1 July 7, 2011 REJECTIONS 1) The Examiner rejected claims 1–5, 8–112, 15, 16, 19, and 20 under 35 U.S.C. § 103 as unpatentable over Goldfader and Chandler. 2) The Examiner rejected claims 6, 7, 12, and 14 under 35 U.S.C. § 103 as unpatentable over Goldfader, Chandler, and Lu. 3) The Examiner rejected claim 13 under 35 U.S.C. § 103 as unpatentable over Goldfader, Chandler, Lu, and Rose. 4) The Examiner rejected claims 12 and 13 under 35 U.S.C. § 103 as unpatentable over Goldfader, Chandler, and Rose. 5) The Examiner rejected claims 12 and 13 under 35 U.S.C. § 103 as unpatentable over Goldfader, Chandler, and Landi. 6) The Examiner rejected claims 17–18 under 35 U.S.C. § 103 as unpatentable over Goldfader, Chandler, and Hannon. 2 The caption for this rejection includes claims 12 and 13, but the body of the rejection does not include a rejection of these claims. Non-Final Act. 4– 6. Appeal 2019-003962 Application 15/278,133 4 OPINION Rejection 1 The Examiner finds that Goldfader discloses most of the limitations of claim 1, but does not teach a shaft receiving bore that is angled to extend away from a flat front surface of the grip. Non-Final Act. 4. The Examiner finds that Chandler teaches a bore that extends from the front surface because the Examiner considers that one of ordinary skill in the art would construe Chandler’s land 42 to be the front surface consistent with the broadest reasonable construction. Id. at 5–6; see also Ans. 15. The Examiner concludes that it would have been “obvious (to) combine (the) references to provide grip surfaces at angles that provide tactile reference for the golfers.” Non-Final Act. 5. Appellant argues, inter alia, that Chandler’s bore is angled from one side to the other, and not centered between the lateral sides of the grip as required by claim 1. Appeal Br. 15; see also Reply Br. 3. According to Appellant, the Examiner’s assertion that the side of the grip is the front is unsupported and is not the interpretation one of ordinary skill in the art would reach. Appeal Br. at 16. For the following reasons, we do not sustain this rejection. We give claim terms their broadest reasonable interpretation consistent with the Specification as it would be interpreted by one of ordinary skill in the art. See In re Suitco Surface, Inc., 603 F.3d 1255, 1259– 60 (Fed. Cir. 2010); In re Morris, 127 F.3d 1048, 1054–55 (Fed. Cir. 1997). Although the claims are interpreted in light of the Specification, limitations from the Specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We begin our analysis with the claim Appeal 2019-003962 Application 15/278,133 5 language. In re Power Integrations, Inc., 884 F.3d 1370, 1376 (Fed. Cir. 2018) (“[c]laim construction must begin with the words of the claims themselves.”). Although we understand the Examiner’s position to be that one of ordinary skill in the art could construe Chandler’s side land 42 to be the “front” surface, the front surface is recited in claim 1 to have a specific configuration, namely, “extending substantially from the top end to the bottom end and having a width less than 1.75 inches (44.45 mm) and configured to accommodate side by side thumbs.” Appellant’s Specification discloses that a key operational aspect for optimizing the grip includes “a flat front surface 16 width sufficient to accommodate side by side thumbs.” Spec. ¶ 49. The front surface 16 is shown in Figure 1, reproduced below. Figure 1 is a bottom-front perspective view of a golf putter grip. Spec. ¶ 21. The main body of grip 10 includes flat front surface 16 that extends substantially from top end 12 to bottom end 14, flat rear surface 20 that is parallel to front surface 16, and a pair of side surfaces that each includes planar front side portion 22 adjacent flat front surface 16 and planar rear side portion 24 adjacent flat rear surface 20. Id. ¶¶ 40–42. Thus, contrary to the Examiner’s assertion, in light of the Specification, the claims require that the front surface is the surface to be gripped by the thumbs of a user. The Examiner’s claim interpretation that Appeal 2019-003962 Application 15/278,133 6 “the surface between the top and bottom of the grip and closest to the toe portion of the club head is construed to be the ‘front’ surface” which, according to the Examiner, is “consistent with applicant’s own specification” (Non-Final Act. 5), is based on an unreasonably broad interpretation of the front surface. See In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009) (“[t]he protocol of giving claims their broadest reasonable interpretation . . . does not include giving claims a legally incorrect interpretation.”). Chandler discloses that “[t]he angular offset of bore 47 [] enables a player naturally and comfortably to grasp putter 10 in its normal address position with the Cg, head and/or Cg, putter substantially vertically aligned with longitudinal axis 48 of grip 40.” Chandler, 9:17–21. Figure 2 of Chandler, reproduced below, “illustrat[es] the relationship among putter head 20, grip 40, the player’s shoulder joint and the player’s arm when putter 10 and a player are in a normal address position.” Id. at 7:46–48. Appeal 2019-003962 Application 15/278,133 7 Figure 2 is a perspective view of the putter in a normal address position. Id. at 6:18–21. Figure 2 shows a player in a normal address position, holding putter 10 with his or her dominant hand and preparing to stroke a putt along an intended target line 50. Id. at 7:56–59. Thus, in Chandler, the “front” land is the land aligned with target line 50. Specifically, Chandler discloses that land 41 forms “a comfortable resting place for the player’s thumb, for example, when the player holds grip 40 such that the posterior side of the player’s hand faces the target,” as seen in Figure 2. Id. at 9:8–11. Land 41 is shown in Chandler’s Figure 4, reproduced below. Appeal 2019-003962 Application 15/278,133 8 2. Figure 4 is “a front elevational view” of a grip. Id. at 6:26– 27(emphasis added). As Appellant correctly notes, Chandler’s bore 47 does not extend away from the front surface, and rather angles from one side to the other (“Bore 47 through grip 40 is angled relative to (side) lands 42 and 45.”). Id. at 9:14–15. Accordingly, Chandler’s disclosed grip does not support a finding that this grip has a flat front surface configured to accommodate side by side thumbs and a shaft receiving bore centered between lateral sides of the golf putter grip that is angled relative to a longitudinal center line of the main body to extend away from the flat front surface in the direction along the main body from the top end to the bottom end, as recited in claim 1. For the reasons discussed above, we determine that the Examiner’s finding that Chandler discloses the “front” surface as called for in claim 1 is not supported by a preponderance of the evidence. We, therefore, do not sustain the rejection of claim 1 as unpatentable over Goldfader and Chandler. We also do not sustain the rejection of claims 2–5, 8–11, 15, 16, 19, and 20, depending therefrom, as unpatentable over Goldfader and Chandler for the same reasons. Appeal 2019-003962 Application 15/278,133 9 Rejections 2–6 Claims 6, 7, 12–14, 17, and 18 depend directly or indirectly from claim 1. Appeal Br. 26–27 (Claims App.). The Examiner rejects these claims as unpatentable over Goldfader and Chandler with additional disclosure from Lu, Rose, Landi, and Hannon, but does not rely on the additional disclosure from Lu, Rose, Landi, and Hannon to cure the deficiencies in Goldfader and Chandler discussed above for claim 1. Non- Final Act. 8–11. Therefore, we do not sustain the rejection of claims 6, 7, 12–14, 17, and 18 under 35 U.S.C. § 103 for the same reasons stated in connection with claim 1. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 8–11, 15, 16, 19, 20 103 Goldfader, Chandler 1–5, 8–11, 15, 16, 19, 20 6, 7, 12, 14 103 Goldfader, Chandler, Lu 6, 7, 12, 14 13 103 Goldfader, Chandler, Lu, Rose 13 12, 13 103 Goldfader, Chandler, Rose 12, 13 12, 13 103 Goldfader, Chandler, Landi 12, 13 17, 18 103 Goldfader, Chandler, Hannon 17, 18 Overall Outcome: 1–20 REVERSED