Ben DeJesus

Patent Trials and Appeals Board

Jul 13, 2021

2021000207 (P.T.A.B. Jul. 13, 2021)

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.
16/171,964 10/26/2018 Ben L DeJesus BLDG-103D 6187
21272 7590 07/13/2021
Law Offices of Morland C.Fischer
2030 Main Street, Suite 1300
Irvine, CA 92614
EXAMINER
PENG, RAYSHUN K.
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
07/13/2021 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 BEN L. DEJESUS
Appeal 2021-000207
Application 16/171,964
Technology Center 3700

Before JOHN C. KERINS, BRETT C. MARTIN, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, 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 14–17. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as the inventor, Ben
L. DeJesus. Appeal Br. 2.
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Application 16/171,964

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CLAIMED SUBJECT MATTER
The claims are directed to a golf club head. Claim 14, reproduced
below and reformatted for clarity, is illustrative of the claimed subject
matter:
14. A golf club head attached to a hosel and comprising
a face at which a golf ball is to be struck,
a plurality of spin control grooves extending
horizontally across the face of the golf club head,
a sweet spot located on the face at which to apply
an impact force to the golf ball without causing the golf club
head to rotate in the hand of a golfer when the golf club head
strikes the golf ball,
an inside end at which the hosel is attached,
an outside end located opposite the inside end, and
a top edge which runs above the face of the club head
between the inside and outside ends thereof,
said top edge having a first portion and a second
portion that lies adjacent said first portion, wherein a
perceptively visible boundary line is located at the intersection
of said first and second portions,
said perceptively visible boundary line being
located in a vertical sweet spot reference plane which is aligned
perpendicular to said plurality of horizontally extending spin
control grooves and incudes the center of the sweet spot that is
located on the face of the golf club head, and
wherein the first portion of the top edge of said
golf club head extends continuously in an upsloping straight
line direction from the hosel to said perceptively visible
boundary line, and
the adjacent second portion of the top edge of said
golf club head extends continuously downward from said
perceptively visible boundary line to the outside end of said
golf club head.
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Application 16/171,964

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Reach US 1,402,537 Jan. 3, 1922
Antonious US 4,900,028 Feb. 13, 1990
Guerriero US 2012/0196696 A1 Aug. 2, 2012
REJECTIONS
Claims 14, 16, and 17 are rejected under 35 U.S.C. § 103 as being
unpatentable over Antonius and Guerriero.
Claim 15 is rejected under 35 U.S.C. § 103 as being unpatentable over
Antonius, Guerriero, and Reach.
OPINION
Related Appeal
Appellant notes that “[n]o other prior or pending appeals,
interferences or trials are known to the Appellant or to his legal
representatives which are related to or will directly affect or be directly
affected by or have a bearing on the Board’s decision in this appeal.”
Appeal Br. 2. This statement is misleading because as Appellant
additionally notes, “a prior appeal was filed by the Appellant with respect to
his parent Patent Application No. 14/751,563 from which the instant
application on appeal is a division.” Id. That prior appeal directly affects
the appeal now before us.
The prior appeal noted by Appellant is Appeal Number 2017-009416
(“the Prior Appeal”), which resulted in a Board Decision issuing a new
ground of rejection. Ex parte DeJesus, Appeal No. 2017-009416, 2018 WL
4666008 (PTAB Sept. 12, 2018) (“the Prior Board Decision”). Appellant
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Application 16/171,964

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did not dispute that rejection and, instead, allowed the application to go
abandoned.
The same Antonius reference at issue in this proceeding was also the
basis for the new ground of rejection in the Prior Board Decision. See Prior
Board Decision at *3–4. The claim at issue in the Prior Board Decision,
claim 1 (“the prior claim”), is substantially similar to claim 14 in the instant
proceeding. For example, the prior claim was also directed to a golf club
head with a sight line feature, and recited:
said top edge having a first portion which runs in a first
direction and a second portion which runs in a second direction
and a perceptively visible boundary line lying at the intersection
of the first and second portions of said top edge, wherein said
visible boundary line is located in a vertical sweet spot
reference plane which includes the center of the sweet spot that
is located on the face of the club head, such that said visible
boundary line and the center of the sweet spot are aligned with
one another in said vertical sweet spot plane.
Prior Board Decision at *1. The Prior Board Decision “determine[d] that it
would have been obvious to one of ordinary skill in the art at the time of the
invention to locate point 325 in Antonious over the center of center of
percussion (CP).” Prior Board Decision at *2.
The main difference between the prior claim and claim 14 in the
instant appeal is the sloping recited in claim 14 for the first and second
portions of the top edge. Appellant cannot rely on the “perceptively visible
boundary line” feature for patentability of claim 14, as that feature was
already determined obvious in the Prior Board Decision as noted above.
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See MPEP § 706.07(h)(XI) (9th Ed., Rev. 10, June 2020) (“a Board decision
in an application is the ‘law of the case,’ and is thus controlling in that
application and any subsequent, related application”).
Accordingly, Appellant’s representation that “[n]o other prior . . .
appeals . . . are known to the Appellant or to his legal representatives which
are related to or will directly affect . . . or have a bearing on the Board’s
decision in this appeal” (Appeal Br. 2) is incorrect.
Claims 14, 16, and 17
The Examiner finds that Antonius teaches the majority of features
recited in claim 14, including “a perceptively visible boundary line (Fig. 7
325) is located at the intersection of said first and second portions.” Final
Act. 2–3. The Examiner finds that Guerriero teaches the location of the
perceptively visible boundary line and the downward sloping feature of the
second portion of the top portion recited in claim 14 and proposes modifying
the club head of Antonius accordingly. Id. at 3–4.
Appellant responds that “the Examiner’s conclusion as to the
obviousness of and the reason for combining the particular references being
relied upon is not correct, because the teachings of Antonious and Guerriero
relate to golf club heads that have different purposes.” Appeal Br. 5. More
specifically, Appellant contends that “those in the field of golf would not be
at all inclined to substitute a largely design feature from [Guerriero’s] club
head for a functional feature of [Antonius’s club head].” Id. Appellant
contends that “the configuration of the club head claimed . . . is entirely
functional and intended to provide a visual indication to a golfer of the
location of the sweet spot of the golf club head.” Id. at 6.
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According to Appellant, “the golf club head of Antonious is fully
capable in the manner in which it is currently constructed with an entirely
horizontal top edge portion . . . performing its intended function of providing
an integral line of sight.” Id. at 7. Appellant contends that “replacing the
horizontal top edge portion of Antonious with a sloping edge portion of
Guerriero . . . would provide no apparent advantage to Antonious” and,
instead, “would be avoided by golfers because such alteration would
undesirably alter the weight distribution of the head of Antonious, change
the balance thereof, and subject the club to rotating in the hand of the
golfer.” Id.
The Examiner has the better position. As the Examiner explains,
“both Antonious and Guerriero . . . deal with the problem of providing an
alignment indicator on the top surface of the club head, and therefore, [it]
logically follows that one of ordinary skill would readily recognize” and
“when taken in combination [it] would have been obvious to incorporate the
downward sloping top surface portion of Guerriero to provide the sight line
13 in the same plane as the sweet spot of the club.” Ans. 3.2
As the Examiner finds, “the club head of Guerriero is not configured
for largely ornamental purposes” and “discloses a sweet spot.” Ans. 3–4
(citing Guerriero ¶ 9). Indeed, Guerriero expressly discusses “aligning the
sweet spot of the head with the center of the ball.” Guerriero ¶ 9.
As the Examiner explains, Appellant’s contentions regarding weight
distribution of the modified club head are based on speculation. Moreover,
there is no reason to believe that one skilled in the art would not readily

2 Appellant did not file a Reply Brief in response to the Examiner’s Answer.
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appreciate and be capable of appropriate weight distribution adjustment of
the modified golf club head.
The Examiner also finds that the change in shape of the top surface of
Antonius’s club head is a matter of design choice because it does not affect
performance of the club head. With no response from Appellant, we are not
apprised of error in this alternate reason for the proposed modification to
Antonius’s club head. Indeed, as explained above, there can be no dispute
that the visible sight line feature does not provide a patentable distinction
over the cited references. The addition of a second sloped surface changes
the shape of the club head, but provides no difference in functionality.
For the reasons set forth above, we are not apprised of error in the
Examiner’s decision to reject claims 14, 16, and 17.3
Claim 15
Claim 15 depends from claim 14 and recites that “the second portion
of the top edge of said golf club head which extends continuously downward
from said visible boundary line to the outside end of said golf club head
curves continuously downward from said perceptively visible boundary
line.”
The Examiner finds that Reach teaches this additional feature and
proposes further modifying Antonius’s club head accordingly. Final Act.
7–8.

3 Appellant did not argue dependent claims 16 and 17 separately. See
Appeal Br. 10.
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In response, Appellant unpersuasively alleges that one skilled in the
art would not make the particular modification proposed by the Examiner,
and would, instead, arrive at a different arrangement. Appeal Br. 8–9.
Appellant’s allegations are not persuasive because they are merely
allegations, unsupported by persuasive explanation identifying error in the
Examiner’s proposed modifications and rationale. Additionally, as the
Examiner points out in the Answer, the additional features recited in claim
15 are a matter of design choice, as they have no impact on the functionality
of the club head. See Ans. 5.
CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
14, 16, 17 103 Antonius,
Guerriero
14, 16, 17
15 103 Antonius,
Guerriero, Reach
15
Overall
Outcome
14–17

TIME PERIOD FOR 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) (2019).
AFFIRMED