DUNLOP SPORTS CO. LTD.

Patent Trials and Appeals Board

Jun 17, 2020

14849130 - (D) (P.T.A.B. Jun. 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.
14/849,130 09/09/2015 Naoyoshi UEDA 6400-0130PUS1 2528
2292 7590 06/17/2020
BIRCH STEWART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
KLAYMAN, AMIR ARIE
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
06/17/2020 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NAOYOSHI UEDA, MASAHIKO UEDA,
YASUSHI SUGIMOTO, TAKASHI NAKAMURA, SEIJI HAYASE, and
WATARU KIMIZUKA

Appeal 2019-000027
Application 14/849,130
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1, 5, 9, 11, 14 and 18. We have
jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on May 28,
2020.
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
DUNLOP SPORTS CO. LTD. Appeal Br. 1.
Appeal 2019-000027
Application 14/849,130

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STATEMENT OF THE CASE
Claimed Subject Matter
Claim 1, the sole independent claim, is representative of the subject
matter on appeal and is reproduced below.
1. A golf club comprising:
a head, a shaft with a shaft axis, and a grip, wherein:
if a club inertia moment about a swing axis is defined as
Isw (kg·cm2), and a club inertia moment about an axis
perpendicular to the shaft axis and passing through a grip end is
defined as Ige (kg·cm2), wherein the swing axis is parallel to
the axis passing through the grip end, and away from the grip
end with a distance of 60 cm from the grip end so that the grip
end is positioned between the swing axis and the head,
the inertia moment Ige is 2760 (kg·cm2) or greater and
less than 2820 (kg·cm2), and Isw/Ige is equal to or less than
2.42; and
if a club weight is defined as Wc (kg), an axial direction
distance from the grip end to a center of gravity of the club is
defined as Lc (cm), and a club inertia moment about the center
of gravity of the club is defined as Ic (kg·cm2),
the inertia moment Isw (kg·cm2) is calculated by
Equation (1) below, and the inertia moment Ige (kg·cm2) is
calculated by Equation (2) below:
Isw = Wc x (Lc+ 60)2 + Ic (1)
Ige = Wc x (Lc)2 + Ic (2), and
wherein a head weight Wh is equal to or greater than
0.188 kg, and a grip weight Wg is equal to or less than
0.026 kg.
Appeal Br., Claims App. 1.

Appeal 2019-000027
Application 14/849,130

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Rejection
Claims 1, 5, 9, 11, 14, and 18 are rejected under 35 U.S.C. § 103 as
being unpatentable over Nakamura et al. (US 2013/0095945 A1, pub.
Apr. 18, 2013) (“Nakamura”) and Beno et al. (US 2013/0029781 A1, pub.
Jan. 31, 2013) (“Beno”).

ANALYSIS
The Examiner relies on Nakamura to teach all of the subject matter of
independent claim 1, except for grip weight Wg being equal to or less than
0.0260 kg. See Non-Final Act. 2–5. Indeed, as the Examiner finds,
Nakamura teaches a grip weight Wg higher than 0.0260 kg. See id. at 3
(citing Nakamura ¶ 40). To remedy this deficiency, the Examiner relies on
Beno’s teachings. Id. at 4. The Examiner finds that Beno teaches a grip
weight Wg of 0.024 kg. Id. (citing Beno ¶ 30). The Examiner modifies
Nakamura’s teaching of a golf club with Beno’s teaching of a lower grip
weight Wg. This modification lowers the club weight Wc of Nakamura’s
golf club, which the Examiner acknowledges. Id. (“As with Nakamura,
Beno’s grip weight contribut[es] to the performance of the golf club to
redistribute the weight to the other parts of the golf club and thus reduc[es]
the overall weight of the golf club, which is extremely desirable in the golf
club art.” (emphasis added)); see Ans. 7 (“It is evident that forming a golf
club which is lighter (due for example to a lighter grip weight) . . . .”).
The Appellant points out that the Examiner’s modification of
Nakamura’s grip weight Wg not only changes grip weight Wg and club
weight Wc, but also changes other parameters of the golf club including
inertia moments Isw, Ige, and Ic. See Appeal Br. 6–7. The Appellant
Appeal 2019-000027
Application 14/849,130

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contends that the Examiner’s rejection lacks adequate support because it
fails to properly account for the changes in the weight Wc and consequently,
changes in the inertia moments Isw, Ige, and Ic. See id. The Appellant’s
argument is persuasive.
For example, the Examiner’s rejection relies on Nakamura’s teaching
of tested golf clubs including comparative example 20, which has a grip
weight Wg of 0.0375 kg and a club weight Wc of 0.270 kg. Non-Final
Act. 3; Nakamura, ¶ 130, Table 5. Notably, club weight Wc is a parameter
used to calculate club inertia moment about a swing axis Isw and club inertia
moment about an axis perpendicular to the shaft axis and passing through a
grip end Ige. More specifically, as recited in claim 1,
Isw = Wc x (Lc+ 60)2 + Ic (1)
Ige = Wc x (Lc)2 + Ic (2).
Appeal Br., Claims App. 1. As a result of the Examiner’s modification, grip
weight Wg is lowered from 0.0375 kg to 0.026 kg, which lowers club
weight Wc by 0.011 kg, which effects inertia moments Isw and Ige as well
as the ratio of Isw/Ige. Besides club weight Wc, the equations for Isw and
Ige include axial direction distance from the grip end to a center of gravity
of the club Lc and club inertia moment about the center of gravity of the
club Ic. Id. While Lc may or may not change due to the change in club
weight Wc, the inertia moment Ic, similar to Isw and Ige, will be affected.
The Examiner does not address how the modification of grip
weight Wg of Nakamura’s golf club in comparative example 20 –– or any
other golf club as taught by Nakamura –– changes its club weight Wc or the
values of the golf club’s inertia moments, such as Isw, Ige, or the ratio of
Isw/Ige. Therefore, we agree with the Appellant that Examiner’s rejection
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Application 14/849,130

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lacks adequate support. For example, the Examiner does not address how
the inertia moment Ige changes after the grip weight Wg and consequently,
club weight Wc, is modified, and if the modified value of the inertia
moment Ige is within the claimed range, i.e., “2760 (kg·cm2) or greater and
less than 2820 (kg·cm2).” Appeal Br., Claims App. 1.
Further, it is notable that the Examiner’s rejection of claim 1 includes
a modification of Nakamura’s grip weight Wg “based [on] routine
experimentation for the reason that a skilled artisan would have been
motivated to form the optimum grip’s weight thus providing the optimum
grip’s weight and providing the optimum grip that is durable enough and yet
not too heavy to alter/ influence a golfer’s swing.” Non-Final Act. 5.
Additionally, in response to arguments presented in the Appeal Brief, the
Examiner appears to extend the theory of routine experimentation and
optimization to the ratio of Isw/Ige. See Ans. 10–11. Even if the rationale
for the proposed modification was sufficient, the deficiency in the
Examiner’s rejection as discussed above remains. Namely, the Examiner
never acknowledges that changing grip weight Wg causes a change in values
of other claimed parameters of a golf club, such as the inertia moment Ige.
Thus, we do not sustain the Examiner’s rejection of independent
claim 1 and claims 5, 9, 11, 14, and 18, which depend therefrom.

Appeal 2019-000027
Application 14/849,130

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1, 5, 9, 11,
14, 18
103 Nakamura, Beno

1, 5, 9, 11,
14, 18

REVERSED