Ex Parte Adams et al

Board of Patent Appeals and Interferences

Jan 5, 2009

11330090 (B.P.A.I. Jan. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JONATHAN R. ADAMS and ROBERT W. ADAMS
__________

Appeal 2008-5395
Application 11/330,090
Technology Center 3700
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Decided: January 5, 2009
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Before, TONI R. SCHEINER, LORA M. GREEN and
FRANCISCO C. PRATS Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-8.1 We have jurisdiction under 35
U.S.C. § 6(b).

1 Claims 9-16 are also pending, but stand withdrawn from consideration as
being drawn to a non-elected invention (App. Br. 5).
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Application 11/330,090

STATEMENT OF THE CASE
The claims are directed to a lacrosse stick in which a portion of the
shaft is made from a composite material. Claim 1 is representative of the
claims on appeal, and reads as follows:
1. A lacrosse stick having at least one shaft portion made from a
composite mixture of materials comprising at least the combination of
titanium and carbon fiber.
The Examiner relies on the following references:
McNeil 3,972,529 Aug. 3, 1976
We reverse.
ISSUE (Written Description)
The Examiner finds that claims 1-8 do not comply with the written
description requirement of 35 U.S.C. § 112, first paragraph.
Appellants contend that the rejection set forth by the Examiner is
improper.
Thus, the issue on Appeal is: Whether the Examiner has met the
burden of setting forth adequate reasons as to why the claims do not meet
the written description requirement of 35 U.S.C. § 112, first paragraph?

FINDINGS OF FACT
FF1 The Specification “generally relates to an improved design for a
lacrosse stick.” (Spec. 1.)
FF2 The lacrosse stick may have a telescoping shaft having two or more
sections that “can slide relative to each other so that the stick length can be
modified and then secured into a locked position to retain the desired length
during use.” (Id. at 3.)
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FF3 According to the Specification:
These telescopic shafts may be reinforced by ribbing,
material selection (such as titanium, carbon fiber or other
composition mixtures) or other structural reinforcement means.
Although applicants have not currently constructed such a
composite shaft, it is believed that the use of a composition
mixture containing titanium and carbon fiber materials (either
alone or in combination with other materials) may be desirable
due to their light weight and high strength. These high-strength
materials could be used to construct one or more of the
telescoping shafts. For example, currently used metal alloys
could be used for the outside telescoping shaft and the inner
telescoping shaft(s) may be constructed of a composition
including, inter alia, carbon fibers and/or titanium.
More specifically, if current metal alloy materials are
used as the primary composition for one or more of the
telescoping shafts, then the addition, inter alia, of carbon fibers
and/or titanium may be useful in providing strength without
unduly adding weight. Alternatively, if the main ingredient for
one or more of the shafts is carbon fibers - e.g., about 40% or
more - then a relatively small amount of titanium may added, if
desired (either with or without commonly used metal alloys).
In that situation, the relatively small amounts of titanium would
like be in amounts of about 25% or less. Of course, it is
envisioned that one or more of the telescoping shafts may be
made essentially or only from carbon fibers - e.g., about 75% or
more.

(Id. at 3-4.)
FF4 The Examiner rejects claims 1-8 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement
(Ans. 3).
FF5 According to the Examiner, the Specification “fails to disclose the
novelty or how to make or use the instant invention.” (Id.)
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FF6 The Examiner further finds that the “simple recitation of an idea, that
has not been reduced to or is in the process of being reduced to practice, is
not patentable.” (Id. (emphasis removed).)
FF7 Finally, the Examiner finds that the Specification “fails to clearly
disclose what the invention is and its metes and bounds” as it “merely
provide[s] thoughts and ideas about a lacrosse stick.” (Id.)

PRICIPLES OF LAW
The first two paragraphs of 35 U.S.C. § 112 state:
The specification shall contain a written description of
the invention, and of the manner and process of making and
using it, in such full, clear, concise, and exact terms as to enable
any person skilled in the art to which it pertains, or with which
it is most nearly connected, to make and use the same, and shall
set forth the best mode contemplated by the inventor of
carrying out his invention.
The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention.

In addition, “(1) examples are not necessary to support the adequacy
of a written description (2) the written description standard may be met . . .
even where actual reduction to practice of an invention is absent.” Falko-
Gunter Falkner v. Inglis, 448 F.3d 1357, 1366 (Fed. Cir. 2006).

ANALYSIS
We cannot sustain the Examiner’s rejection. Actual reduction to
practice is not required to meet the written description requirement. The
Examiner also appears to be arguing that the claims are not enabled, but has
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provided no evidence or scientific reasoning as to why the skilled artisan
could not make and/or use the claimed invention.
Finally, whether or not the claims describe the metes and bounds of an
invention is a second paragraph issue, not a first paragraph issue, and the
Examiner has not explained why the metes and bounds are not adequately
described.

CONCLUSIONS OF LAW
We find that the Examiner has not met the burden of setting forth of
why the claims do not meet the written description requirement of 35 U.S.C.
§ 112, first paragraph. We thus reverse the rejection of claims 1-8 under 35
U.S.C. § 112, first paragraph.

ISSUE (Prior Art)
The Examiner concludes that claims 1, 2, 5, and 6 are anticipated by,
or in the alternative, obvious over, McNeil, and claims 3, 4, 7, and 8 are
obvious over McNeal.
Appellants argue that the Examiner has not set forth a prima facie case
that McNeil discloses or renders obvious a “lacrosse stick” that has “at least
one shaft portion made from a composite mixture of materials comprising at
least the combination of titanium and carbon fiber.”
Thus, the issue on Appeal is: Has the Examiner set forth a prima facie
case that McNeil discloses or renders obvious a “lacrosse stick” that has “at
least one shaft portion made from a composite mixture of materials
comprising at least the combination of titanium and carbon fiber.”

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Application 11/330,090

FINDINGS OF FACT
FF8 The Examiner rejects claims 1, 2, 5, and 6 under 35 U.S.C. § 102(b),
as being anticipated by, or in the alternative, under 35 U.S.C. § 103(a), as
being obvious over, McNeil (Ans. 4). The Examiner also rejects claims 3, 4,
7, and 8 as being obvious over McNeal (id.).
FF9 The Examiner finds that McNeil “discloses one shaft portion made
from a group of materials comprising at least the combination of titanium
and carbon fiber.” (Ans. 4 (citing McNeil abstract, Figs. 1-4).)
FF10 According to the Examiner:
In as much structure set forth by the applicant in the claims, the
device is capable of use in the intended manner if so desired.
The use of various composite materials is old in the art. It
would have been obvious to one of ordinary skill in the art at
the time of the invention to select any one of several equivalent
composite materials based on cost and design considerations.

(Id.)
FF11 As to claims 3, 4, 7, and 8, the Examiner concludes that in the absence
of unexpected results, it “would have been obvious to one of ordinary skill
in the art to have selected any one of several equivalent amounts of carbon
fiber based on cost and design considerations.” (Id. at 5.)
FF12 McNeil is drawn to a golf club shaft, particularly those formed of
aluminum (McNeil col. 1, ll. 4-6).
FF13 According to McNeal:
The present invention resides in the discovery that the strength,
durability and stiffness characteristics of elongated metal
bodies, particularly of lightweight tubular metals such as
aluminum, magnesium, titanium and the like, can be increased
dramatically by the lengthwise incorporation of continuous
unidirectional graphite fiber strips which are integrated along
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the outer surface of the metallic bodies to become a part
thereof. Such graphite fiber strips are extremely light in
weight, rectangular in cross-section and are inlaid or recessed
within the metallic body so as to have three sides firmly bonded
to the metallic body while the fourth side is exposed along the
surface of the metallic body and preferably is sanded flush
therewith so as to impart a striped appearance to the metallic
body. Thus the receptive recesses formed in the metallic body
have a flat base and substantially parallel sides.

(Col. 1, l. 56-col. 2, l. 5.)
FF14 Thus, in the shaft of the golf club of McNeal, the carbon fibers are
inlaid into the metal body of the shaft.

PRINCIPLES OF LAW
“If the claim preamble, when read in the context of the entire claim,
recites limitations of the claim, or, if the preamble is ‘necessary to give life,
meaning, and vitality’ to the claim, then the claim preamble should be
construed as if in the balance of the claim. . . . If, however, the body of the
claim fully and intrinsically sets forth the complete invention, including all
of the limitations, and the preamble offers no distinct definition of the
claimed invention’s limitations, but merely states, for example, the purpose
of the intended use of the invention, then the preamble is of no significance
to claim construction because it cannot be said to constitute or explain a
claim limitation.” Pitney Bowes, Inc. v. Hewlett Packard Co., 182 F.3d
1298, 1305 (Fed. Cir. 1999).
It is axiomatic that in order for a prior art reference to serve as an
anticipatory reference, it must disclose every limitation of the claimed
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invention, either explicitly or inherently. In re Schreiber, 128 F.3d 1473,
1477 (Fed. Cir. 1997).
As to obviousness, the question of obviousness is resolved on the
basis of underlying factual determinations including: (1) the scope and
content of the prior art; (2) the level of ordinary skill in the art; (3) the
differences between the claimed invention and the prior art; and (4)
secondary considerations of nonobviousness, if any. Graham v. John Deere
Co., 383 U.S. 1, 17 (1966). The Supreme Court has recently emphasized
that “the [obviousness] analysis need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741
(2007). However, an invention “composed of several elements is not proved
obvious merely by demonstrating that each of its elements was,
independently, known in the prior art.” Id. 1741.

ANALYSIS
Appellants argue that McNeil does not disclose “a product wherein
the shaft or any portion thereof is made from a ‘composite mixture of
materials comprising at least the combination of titanium and carbon fiber,’”
rather “McNeal teaches that the lightweight metal tubular element . . . has
notches or grooves . . . cut or formed into it,” in which “[g]raphite strips
made up of about 60% of graphite fibers and 40% by weight of resin binder
are inserted and glued.” (App. Br. 10.) Moreover, Appellants assert,
McNeil does not disclose a lacrosse stick (id.).
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The Examiner responds that the claim “merely calls for a shaft
comprising a mixture of titanium and carbon fiber” (Ans. 5), and that the
shaft of McNeil is thus a composite of titanium and graphite (id. at 6-7).
We find that Appellants have the better argument. The Specification
teaches that carbon fibers and/or titanium are added to metal alloy materials,
and thus, we interpret “a composite mixture of materials comprising at least
the combination of titanium and carbon fiber” as being a single mixture of
the components, and not strips of carbon fiber being inlaid into a metal shaft.
In addition, the Examiner has not set forth any evidence or scientific
reasoning as to why it would have been obvious to the ordinary artisan to
substitute “a composite mixture of materials comprising at least the
combination of titanium and carbon fiber” for the carbon fiber inlaid into the
metal shaft of McNeil.
Moreover, the claim recites a “lacrosse stick,” which we interpret as
giving life and providing structure to the claim, and the Examiner has
provided no evidence or scientific reasoning as to why one would adapt the
shaft of a golf club to that of a lacrosse stick.

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CONCLUSIONS OF LAW
Thus, we conclude that the Examiner has not set forth a prima facie
case that McNeil discloses or renders obvious a “lacrosse stick” that has “at
least one shaft portion made from a composite mixture of materials
comprising at least the combination of titanium and carbon fiber.” We
therefore reverse the rejection of claims 1, 2, 5, and 6 as being anticipated
by, or in the alternative, obvious over, McNeil, and as well as the rejection
of claims 3, 4, 7, and 8 as being obvious over McNeal.

REVERSED

LP
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON VA 222

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