Ex Parte 7,189,169 et al

Board of Patent Appeals and Interferences

Aug 30, 2012

95000362 (B.P.A.I. Aug. 30, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/000,362 04/07/2008 7,189,169 OEKM-135432 5443
50086 7590 08/30/2012
LAW OFFICE OF DAVID H. JUDSON
15950 DALLAS PARKWAY
SUITE 225
DALLAS, TX 75248
EXAMINER
WEHNER, CARY ELLEN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
08/30/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Taylor Made Golf Company, Inc.
Requester

v.

Dogleg Right Corporation
Patent Owner and Appellant
____________

Appeal 2012-005168
Reexamination Control 95/000,362
Patent 7,189,169 B2
Technology Center 3900
____________

Before JENNIFER D. BAHR, JEFFREY B. ROBERTSON, and
DANIEL S. SONG, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
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Patent Owner Dogleg Right Corporation (“Patent Owner”) appeals
under 35 U.S.C. §§ 134(b) and 315(a) the Examiner’s decision to reject
claims 1-20.1 Third-Party Requester Taylor Made Golf Company, Inc.
(hereinafter “Requester”) urges that the Examiner’s decision must be
affirmed.2 We have jurisdiction under 35 U.S.C. §§ 134(b) and 315(a). We
affirm the Examiner’s decision to reject claims 1-20.

STATEMENT OF THE CASE
United States Patent 7,189,169 B2 (hereinafter the “‘169 Patent”),
which is the subject of the current inter partes reexamination, issued to
David P. Billings on March 13, 2007. The ‘169 patent is a continuation of
United States Patent 7,004,852 B2 (hereinafter the “‘852 Patent”), which is
the subject of inter partes reexamination control no. 95/000,361 (Appeal No.
2012-005164). The ‘169 Patent is also related to United States Patent
7,344,450 B2 (hereinafter the “‘450 Patent”), which claims to be a
continuation of both the ‘169 Patent and the ‘852 Patent, and is the subject
of inter partes reexamination control no. 95/000,378 (Appeal No. 2012-
006542).

1 See Patent Owner’s Appeal Brief 1 (filed August 22, 2011) (hereinafter
“App. Br.”); Patent Owner’s Rebuttal Brief (filed January 17, 2012)
(hereinafter “Reb. Br.”); Examiner’s Answer (mailed December 16, 2011)
(hereinafter “Ans.”); Right of Appeal Notice (mailed February 7, 2011)
(hereinafter “RAN.”).
2 See Requester’s Respondent Brief (filed August 31, 2011) (hereinafter
“Resp. Br.”).
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We have also been informed that the ‘852, ‘169, and ‘450 Patents
were the subject of litigation styled Dogleg Right Partners, LP et al. v.
TaylorMade Golf Company, Inc. et al., Civil Action No. 2:07-CV-533
(TJW-CE), U.S. District Court for the Eastern District of Texas, in which the
Court entered judgment of non-infringement (App. Br. 1; Resp. Br. 1.),3 and
which was affirmed by the Court of Appeals for the Federal Circuit (No.
2011-1537). Dogleg Right Partners, LP v. TaylorMade Golf Company, Inc.,
2012 WL 2308117 (Fed. Cir. 2012).
Oral arguments from both Patent Owner and Requester were heard in
this appeal on May 2, 2012, a transcript of which having been entered into
the electronic record on June 7, 2010.
The ‘169 Patent relates to a golf club head in which the center of
gravity, balance, and weight are customizable to specific user requirements.
(Col. 1, ll. 15-20.) Claim 1, which is illustrative of the appealed subject
matter, reads as follows:
1. A golf club head comprising:
a relatively thin shell comprising a plurality of walls that
collectively form a hollow club head body comprising a front
club head portion having a wall for striking a golf ball, a back
club head portion and an original center of gravity prior to the
addition of any weights;
at least four weights readily user-repositionably secured
to said shell of said club head at readily user-accessible spaced-
apart locations along the walls of the shell to adjust the center
of gravity of the golf club head body;

3 The District Court did not consider issues of invalidity. (Resp. Br., Ex. 3,
p. 2.)
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wherein at least one of said weights is securable in a
location that is substantially non-co-linear with the others of
said weights to permit adjustment of the center of gravity of the
golf club head in at least two axes,
wherein at least a portion of one of said weights is user-
repositionably disposed behind and to the heel side of said
original center of gravity;
wherein at least a portion of one of said weights is user-
repositionably disposed behind and to the toe side of said
original center of gravity;
wherein at least a portion of each of two of said weights
is user-repositionably disposed in front of said original center of
gravity; and
wherein each of said weights is interchangeably
repositionable by the user at each of said locations.

(PO App. Br. 16 Claims App’x.)

Patent Owner contests the Examiner’s decision to reject the claims as
follows:
I. Claims 14, 15, and 20 under 35 U.S.C. § 102(b) as anticipated
by Parente (U.S. Patent 5,911,638, issued June 15, 1999);
II. Claims 1, 9, 12, and 13 under 35 U.S.C. § 103(a) as obvious
over Parente;
III. Claims 2-8, 10, 11, 14, and 16-20 under 35 U.S.C. § 103(a) as
obvious over Parente in view of Ellingham (U.S. Patent
1,518,316, issued December 9, 1924); and
IV. Claims 1-16, 18, and 20 under 35 U.S.C. § 103(a) as obvious
over Parente in view of Vincent (U.S. Patent 5,447,309, issued
September 5, 1995).

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Additionally, Patent Owner relies on the following evidence:
Excerpts from the Supplemental Declaration of Peter Piotrowski
executed on August 9, 2010; and
Excerpts from the Declaration of Richard Parente executed August 9,
2010.

CLAIM INTERPRETATION
An important issue in the instant appeal is the interpretation of certain
claim terms including “a relatively thin shell having a plurality of walls that
collectively form a hollow club head body” as recited in claim 1.
Patent Owner contends that the Examiner erred in interpreting the
plurality of walls in claim 1 to collectively refer to the “the entire shell.”
(App. Br. 5-7; RAN 18.) Specifically, Patent Owner argues that the ‘169
Patent uses the term “walls” to refer to the different portions of the club
head, such as the crown portion, the sole portion, and the wall portion.
(App. Br. 6-7.) Thus, Patent Owner contends that the Examiner’s
interpretation of claim 1 is inconsistent with the disclosure in the ‘169
Patent.
Requester contends that the Examiner’s interpretation of claim 1 is
proper and the claim means that the walls of the golf club head collectively
form the entire hollow body of the shell, such that shell is merely a
shorthand way of referring to the walls collectively. (Resp. Br. 5-7.)
Requester also argues that Patent Owner’s interpretation of claim 1 negates
the purpose of shifting the center of gravity of the club head, because the
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resulting weight arrangement in claim 1 would require weights positioned on
all the walls. (Req. Resp. Br. 8.)
We begin with the plain language of the claim. Claim 1 recites “a
relatively thin shell comprising a plurality of walls that collectively form a
hollow club head body.” Claim 1 does not further structurally define the
“plurality of walls.” Although the ‘169 Patent does not provide a definition
of what is meant by “walls,” the ‘169 Patent does refer to “a wall portion
112” and that crown portion 114 has an “inner wall” in describing Figure 5.
(Col. 3, ll. 58-66.) Thus, we agree with Patent Owner that the term “walls”
in claim 1 is not merely a reference to the entire shell, but includes the
individual walls that collectively form a hollow body of the recited shell.
This is not the end of the inquiry, however, as the claim further recites
that a plurality of weights are “readily user-repositionably secured to said
shell of said club head at readily user-accessible spaced-apart locations
along the walls of the shell.” Patent Owner contends that because “walls” in
“along the walls” is plural, the weights recited in the claim must be
positioned on more than one wall. (App. Br. 7.) We disagree.
In our view, the broadest reasonable interpretation of claim 1 does not
require that the weights be positioned on multiple walls. In this regard, we
emphasize that claim 1 does not recite “a plurality of weights readily user-
repositionably secured along the walls of the shell.” Rather, claim 1 recites
that the weights are secured “to said shell” at “readily user-accessible
spaced-apart locations along the walls of the shell,” such that “along the
walls of the shell” limits the recited “locations” to those that are along the
walls of the shell, as distinguished from other locations that are not along the
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walls of the shell. A location along any of the walls of the shell is a location
along the walls of the shell. Thus, while the locations where the plurality of
weights may be placed in accordance with claim 1 are on the plurality of
walls, we do not interpret claim 1 to require that the weights must actually
be placed on more than one wall. That is, we do not interpret the language
of the claim to require that the “locations” at which the weights are secured
be on different walls, but rather that the plurality of weights may be placed
on multiple locations on the same wall and/or on multiple locations on
different walls.
Such an interpretation is consistent with the rest of the claim language
in claim 1, which specifies that at least one of the weights is “securable in a
location that is substantially non-co-linear with others of said weights,” and
that at least a portion of one of the weights is user-repositionably disposed
“behind and to the heel side of said original center of gravity,” “behind and
to the toe side of said original center of gravity,” and at least a portion of
each of two of said weights is user-repositionably disposed “in front of said
original center of gravity.” We do not discern any requirements in this
additional language, that the weights must be actually located on different
walls. The Examiner’s interpretation that the “walls” recited in claim 1 refer
to the entire shell is not inconsistent with our interpretation above, as there is
no particular requirement that the weights in the claim must be located on
more than one wall.
We have also not been directed to any evidence in the Specification of
the ‘169 Patent that would require an interpretation of the claims under
which the weights are necessarily located on different walls. Rather, the
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‘169 Patent identifies multiple locations where weights may be located,
including weights on the same wall as well as multiple walls, stating that the
illustrated positions do not limit the invention in any manner, and that the
positions may be used individually or in combination. (Col. 3, l. 63 – col. 4,
l. 58, Fig. 5.) Thus, we interpret claim 1 to require the placement of a
plurality of weights within the shell, where the weights may located on the
same wall, and/or different walls.

PRIOR ART REJECTIONS
Rejection I-Anticipation by Parente
Patent Owner’s argument is that Parente does not disclose weights
secured to the shell “along the walls of the shell,” but rather that Parente
only discloses weights secured to one wall of the shell. (PO App. Br. 7.)
However, in light of our claim interpretation above, Patent Owner’s
argument is not persuasive. That is, because the claims do not require
weights positioned along different walls, we agree with the Examiner, that
Parente anticipates claims 14, 15, and 20.

Rejections II and III
ISSUES
Rejection II
Regarding the arrangement of weights recited in claim 1, the
Examiner stated that the location and number of weights in the golf club
head of Parente depends on the requirements of the users and the playing
conditions. (RAN 12.) The Examiner concluded that it would have been
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obvious to locate the weights of Parente in any arrangement to suit the
specific requirements of an individual user including the arrangement of
weights recited in the claims. (RAN 12.)
Patent Owner contends that Parente fails to disclose or suggest that
the screw weights are located along the walls of the shell of the club head as
recited in claim 1. (App. Br. 6-7.) Patent Owner further argues that the
Examiner’s position that the location and number of weights is user
dependent is in error in view of the evidence of record, because a user could
not reengineer a club head by adding additional threaded openings or by
placing multiple screws within the same hole. (App. Br. 8-9.) Appellant
also contends that declaration evidence of record explains why the
Examiner’s position that the arrangement of weights does not have any
particular significance is incorrect. (App. Br. 9-11.) As a result Appellant
contends that the Examiner’s articulated reasoning is not supported by the
necessary rational underpinning. (App. Br. 11.)
Requester argues that the location and number of screws is dictated by
how the club head is manufactured as further dictated by the needs of the
user, and that the user would be able to adjust the weights to the desired
arrangement, including the claimed weight arrangement, according to user’s
individual needs. (Resp. Br. 11-14.) Requester also argues that increasing
the number of screws or positioning the screws as claimed would not be a
patentable invention. (Resp. Br. 10.) Requester further contends that it was
appropriate for the Examiner to shift the burden to Patent Owner to provide
unexpected results and that Patent Owner’s expert conceded that the effects
of claimed locations for the weights are known. (Resp. Br. 12.) Requester
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argues that Parente provides same advantages as claimed weights and that
the evidence of secondary considerations is based on nothing more than
speculation and conjecture. (Resp. Br. 13.)

Rejection III
Patent Owner argues that the combination of Parente and Ellingham
would not result in the claimed golf club head, as the combination would
only result in weights positioned on a single wall of the golf club head.
(App. Br. 12.) Patent Owner also contends that Ellingham discloses three
distinct weight elements where the central weight element disclosed in
Ellingham is not interchangeable with the weight elements at the heel and
toe of the club. (App. Br. 12.) Patent Owner additionally points to
declaration evidence that the screws of Ellingham could not be adapted to
Parente’s second embodiment. (App. Br. 13, Piotrowski Supp. Dec., paras.
155-171.) Patent Owner also points to declaration evidence that one of
ordinary skill in the art would not have combined Parente and Ellingham.
(App. Br. 13; Parente Declaration, paras. 46-49, 56-57.)
Requester contends that the Examiner’s rejection was not based on
combining the actual screws of Ellingham with Parente, but rather the idea
of modifying Parente’s screws to include collars. (Resp. Br. 14-15.) In
addition, Requester contends that the evidence that the collars of Ellingham
could not be modified is conclusory, and that one of ordinary skill in the art
knows how to configure screws. (Resp. Br. 15.)
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The Examiner’s position is that it would have been obvious to
“replace the weight system of Parente with the screws and collars taught by
Ellingham, to provide for a greater range of adjustability.” (RAN 14.)
Accordingly, the dispositive issues on appeal are:
When the evidence of record is considered as a whole, did the
Examiner err in concluding that a golf club head having the weight
arrangements recited in the claims would have been obvious over Parente?
When the evidence of record is considered as a whole, did the
Examiner err in concluding that a golf club head having the weight
arrangements recited in the claims would have been obvious over Parente in
view of Ellingham?

FINDINGS OF FACT (“FF”)
1. Parente discloses a golf club head that allows the weight
distribution in the head to be adjusted by providing screws of
different weights at different locations of the club head. (Col.
1, ll. 5-7, col. 2, ll. 3-23.)
2. Parente discloses that “by using heavier screws at the heel, toe,
or rear, weight can be selectively adjusted from toe to heel or
front to back of the club head, as desired for the particular
golfer.” (Col. 2, ll. 20-23.)
3. Parente exemplifies a club head that contains two front weights
located to the left and right of the center line of the club head
and a rear weight located in the center of the club head. (Fig.
2.)
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4. In one embodiment, Parente discloses a hollow club head
containing threaded holes formed through the lower wall that
would accommodate different length screws for adjusting the
weight of the club head. (Col. 4, ll. 45-62.)
5. Parente discloses that although three screws are exemplified in
the illustrated embodiments, “a greater number of screws
maybe used in alternative embodiments, simply by providing
additional threaded openings . . . .” (Col. 4, ll. 64-67.)
6. Ellingham discloses a golf club head where the weight may be
varied and the weight distribution may be adjusted based on the
requirements of the user. (Page 1, ll. 12-17.)
7. Ellingham discloses a weight unit that includes one or more
disks or collars that are threaded upon a shank portion of a
screw. (Page 2, ll. 18-20.)

PRINCIPLES OF LAW
A prima facie case of obviousness is established where the Examiner
demonstrates that the invention is nothing more than the predictable result of
a combination of familiar elements according to known methods. KSR Int'l
Co. v. Teleflex, Inc., 550 U.S. 398, 416-17 (2007). “[I]f a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.” Id. at 417.

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ANALYSIS
Issue 1-Parente
Initially, we are not persuaded that Parente fails to disclose weights
affixed at spaced apart locations “along the walls” of the golf club head as
recited in the claims. As discussed supra, the claims do not require that the
weights be placed on separate walls. Thus, the screw weights disclosed in
Parente, which secure the sole plate to the golf club head are at spaced-apart
locations along the walls as required by the claims. (See FF 3.)
Patent Owner additionally contends that Parente fails to disclose
weights that are “user-repositionably disposable,” because the end-user of
the golf club head is not capable of drilling additional holes in the head to
move the weighted screws. (App. Br. 7-8.) We do not agree with Patent
Owner’s application of the prior art to the claims. In our view, the phrase
“user-repositionably disposable” only requires that the weights be capable of
being placed at different locations, which includes moving the weights from
one existing screw hole to another. Parente discloses this concept. (FF 1,
2.) Accordingly, Patent Owner’s argument is not persuasive.
In addition, we agree with the Examiner that in view of Parente, it
would have been obvious to one of ordinary skill in the art to adjust the
weights disclosed in Parente to be located behind the center of gravity of the
club head, to the heel and toe side, and two weights in front of the center of
gravity of the club head as recited in claim 1. Parente discloses that the
weight distribution of the club head can be adjusted from toe to heel or front
to back of the club head, by using different weights as desired for the
particular golfer. (FF 2.) Parente also discloses that different arrangements
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of weights may be accommodated by providing additional threaded
openings. (FF 5.) As pointed out by Requester, Patent Owner has presented
evidence that the effects of the weight locations recited in the claims were
individually known in the art. (Supp. Piotrowski Decl., paras. 111 and 112.)
Although Patent Owner’s evidence also states that in the claimed
combination of weights, the individual effects of each weight location are
counterbalanced by the other weight locations (Supp. Piotrowski Decl., para.
112), we have not been directed to sufficiently persuasive evidence that one
of ordinary skill in the art would have been unaware of such effects. Indeed,
in view of Parente, which discloses the use of multiple weights, one of
ordinary skill in the art would have had to understand the effects of using
multiple weights, in order to effectively adjust the weighting system in
Parente for the preferences of the individual golfer. Accordingly, because
Parente suggests additional locations for the screw weights in the golf club
head, we conclude that it would have been obvious to one of ordinary skill in
the art to have configured the golf club head to include weights at the
locations specified in the claims.
In this regard, the Examiner’s characterization of the location of the
weights as a “design consideration,” is with reference to locating the weights
based on the requirements of the user. (RAN 10.) Thus, we do not agree
with Patent Owner that the Examiner entirely dismisses the location of
weights as not having any significance. (App. Br. 9-10.) The clear context
of the Examiner’s statement is that the location of the weights does not
impart any new or unexpected results to the claims. (RAN 12, “the
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specification and evidence of record fail to attribute any significance (novel
or unexpected results) to a particular arrangement.”)
Further, the evidence presented by Patent Owner regarding long felt
need is entitled to little weight. (See App. Br. 11; Supl. Piotrowski Decl.
para. 148.) Specifically, the evidence does not adequately explain the basis
for the statement that the amount of discretionary weight available in the
Parente “would have been nearly negligible.” (Supl. Piotrowski Decl. para.
148.) In addition, we have not been directed to evidence supporting the
Declarant’s recollection that the commercial embodiment of Parente was not
advertised or sold as an adjustable weight golf club head. Id. Moreover,
whether or not the golf club head was marketed or sold as an adjustable
weight golf club head is not determinative of whether there was an
unsatisfied long-felt need.
Thus, while we acknowledge the opinions of the Declarant, we do not
view such evidence as outweighing the express disclosure in Parente that the
weighting of the golf club head may be adjusted. Accordingly, Patent
Owner’s evidence of secondary considerations does not establish non-
obviousness.

Issue 2-Parente in view of Ellingham
Patent Owner’s arguments that Parente in view of Ellingham does not
disclose or suggest the golf club head of the rejected claims including the
positioning of weights at spaced-apart locations along the walls and in the
specific locations recited in the claims (App. Br. 11-12) are not persuasive
for the same reasons as discussed above.
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In addition, Patent Owner’s argument that all of the weight units
disclosed in Ellingham are not interchangeable (App. Br. 12) amounts to an
argument against the bodily incorporation of the weight system in Ellingham
into the club head of Parente, rather than the application of the teachings of
Ellingham as a whole to the club head of Parente. Indeed, Patent Owner has
not provided sufficient evidence that one of ordinary skill in the art would
have been incapable of providing a weight system that was interchangeable
at all locations of the club head.
In this regard, we are further unpersuaded by Patent Owner’s evidence
that the weighting system in Ellingham could not have been adapted and
would not have been applied to the club head of Parente. (App. Br. 13.)
Specifically, the Supplemental Piotrowski Declaration states that
Ellingham’s system would not have been readily adaptable to the club head
shell of Parente without additional structure, such as extra threading, in order
to provide support at the base of the screw. (Para. 159.) However, the
Supplemental Piotrowski Declaration does not adequately explain why this
would be the case, or why the screws of Ellingham or golf club head of
Parente could not have been modified to accommodate the proposed
combination set forth by the Examiner.
In addition, the Declarant states that if screws with collars were used
with Parente’s club head, the screws would “most likely” vibrate like
cantilevered beams due to insufficient support, causing unpredictable
alterations in the sound field and performance of the club, which would have
discouraged persons of ordinary skill in the art from making the combination
proposed by the Examiner. (Para. 160, 162.) However, we have not been
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directed to a sufficient basis from which to conclude that such vibrations
would occur, and in the event that the alleged vibrations were to occur, that
the alterations would have unpredictable results that would dissuade a
person of ordinary skill from the suggested combination.
Moreover, the Declarant’s statements regarding the specific weights
used in Ellingham for putters and the different weight restrictions for drivers
fails to consider the combination as a whole. (Supplemental Piotrowski
Declaration, para. 163-170.) Initially, Ellingham does suggest that the
weighting system could be used for drivers. (Page. 1, l. 91.) In addition, the
statements made in the Declaration are largely premised on the position that
additional structure would be necessary in Parente to support a screw and
collar configuration. (Para. 163.) As discussed above, sufficient
explanation as to why the existing structure in Parente would not have been
sufficient, or could not have been modified has not been offered by Patent
Owner. Moreover, we are not persuaded by the Declarant’s statements that
even if the engineering aspects to the combination would have been feasible,
it is not certain that the adjustability would have improved based on the
differences in loads between drivers and putters during the swing (para.
164), because again, Ellingham discloses that the adjustable weight system
may be used with drivers.
Further, the Declarant unduly emphasizes the particular materials used
for the weights in Ellingham. (Para. 166.) Ellingham discloses that the
Babbitt metal used therein is merely a “preferred” material. (Page 2, ll. 30-
36.) There is insufficient evidence on the record that one of ordinary skill in
the art would be limited to a particular material and would have been
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incapable of selecting an appropriate weight material in order to increase
adjustability of the weights and also maintain the known desired weight for
drivers. (See Para. 165.) We accord the Declarant’s statements that there
would be no beneficial gain in using Ellingham’s screws and collars (Para.
169) little weight, when Ellingham’s system on its face is disclosed to
provide the ability to fine tune the weighting in the club head via adding and
removing collars as needed to meet the preference of the individual user.
The portions of the Parente Declaration relied on by Patent Owner
(App. Br. 13) are nearly identical to the cited portions of the Supplemental
Piotrowski Declaration discussed above, and are unpersuasive for similar
reasons.

Rejection IV
ISSUE
The Examiner found that Parente does not disclose the weights
located in the positions as claimed, but that Vincent discloses a hollow golf
club head with weights that are positioned in locations similar to those
disclosed in Parente as well as in the locations as claimed. (RAN 14-15.)
The Examiner concluded that in view of Vincent’s disclosure that the
locations disclosed therein allow for producing a satisfactory shot with less
precision at the moment of impact, it would have been obvious to locate the
weights of Parente at the locations taught by Vincent. (RAN 15.)
Patent Owner contends that Parente and Vincent are directed to
different problems, such that the Examiner’s obviousness conclusion does
not have adequate rational underpinnings. (App. Br. 13-14.) In addition,
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Patent Owner argues that Parente only discloses weights attached to one wall
of the shell of the club head, and that Vincent adds nothing to Parente
because Vincent discloses weight arrangements in the same place as Parente.
(PO App. Br. 6-7, 14.)
Accordingly, the dispositive issue on appeal is:
When the evidence of record is considered as a whole, did the
Examiner err in concluding that claim 1, including a golf club head having a
weight arrangement recited therein would have been obvious over Parente in
view of Vincent?
ADDITIONAL FINDINGS OF FACT
8. Vincent discloses a golf club head that tolerates a relative lack
of precision at the moment of impact through the distribution of
mass in the club head. (Col. 2, ll. 6-14.)
9. Vincent discloses a golf club head including at least three
weights forming a triangle in the golf club head. (Col. 2, ll. 27-
31.)
10. Vincent discloses alternative configurations for the weights
where a central weight may be located at the front or rear upper
or lower portions of the head and two lateral weights may be
located at the rear or front upper or lower portions of the head.
(Col. 4, ll. 40-46, 50-56; Figs. 7-22.)
11. Vincent exemplifies embodiments where the central weight is
located at the front of the club head and the rear weights are
located to the left and right of the center line of the head (Figs.
13 and 21), as well as embodiments where the central weight is
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20
located at the rear of the club head and the front weights are
located to the left and right of the center line of the head. (Figs.
9 and 17.)
12. Vincent discloses that the weights may be separate from the
head and attached. (Col. 8, ll. 3-6; Fig. 25.)

ANALYSIS
Notwithstanding our determination above that Parente alone would
have rendered claim 1 obvious, we also agree with the Examiner that claim 1
would have been obvious over Parente in view of Vincent. Initially, we
agree with the Examiner that it would have been obvious to one of ordinary
skill in the art to combine the teachings of Parente and Vincent. Parente
discloses that by using different screw weights at different positions, the
playing characteristics of the club can be readily adjusted. (FF 2.) We have
not been directed to sufficient evidence that would indicate that such playing
characteristics would not also encompass adjusting for imprecise contact at
impact as taught in Vincent. Such a modification of Parente’s golf club head
would lead to a more versatile golf club head that would be adjustable for a
wide range of player skill levels.
In addition, Patent Owner’s argument that Vincent adds nothing to
Parente in terms of the arrangement of weights, does not consider the
variations of weight arrangements disclosed in Vincent. As pointed out by
the Examiner, Vincent discloses that both the weight arrangements disclosed
in Parente, containing a weight near the rear of the club head and weights
left and right of the center line of the head toward the front of the club, as
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21
well as other weight arrangements having a weight near the front of the head
and weights left and right of the center line toward the rear of the head, are
known weight arrangements. (FF 9-11.)
Regarding Patent Owner’s argument that Parente only discloses
weights positioned along one wall, in light of our claim interpretation supra,
we do not find Patent Owner’s argument to be persuasive as the claims do
not require the weights to be positioned along multiple walls. Even if we
were to accept Patent Owner’s interpretation of the claims, the combination
of Parente and Vincent would still render the claims obvious, as Vincent
discloses weight placement at upper and lower portions of the club head,
which are clearly on different walls of the club head shell. (FF 10, 11.)
Thus, we agree with the Examiner that a golf club head having the weight
arrangements recited in the claims would have been obvious over the
combination of Parente in view of Vincent.

CONCLUSION
When the claims are properly interpreted, the Examiner did not err in
finding that Parente anticipates claims 14, 15, and 20.
When the evidence of record is considered as a whole, the Examiner
did not err in concluding that a golf club head having a weight arrangement
recited in claim 1 would have been obvious over Parente.
When the evidence of record is considered as a whole, the Examiner
did not err in concluding that a golf club head having a weight arrangement
recited in the claims would have been obvious over Parente in view of
Ellingham.
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22
When the evidence of record is considered as a whole, the Examiner
did not err in concluding that a golf club head in claim 1 having a weight
arrangement recited therein would have been obvious over Parente in view
of Vincent.

DECISION
The Examiner’s decision to reject claims 1-20 is affirmed.
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 7, July 2008).

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23
AFFIRMED

PATENT OWNER:

LAW OFFICE OF DAVID H. JUDSON
15950 DALLAS PARKWAY, SUITE 225
DALLAS TX, 75248

THIRD-PARTY REQUESTER:

SHEPPARD, MULLIN, RICHTER & HAMPTON, LLP
333 SOUTH HOPE STREET, 48TH FLOOR
LOS ANGELES, CA 90071

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