Ex Parte Adams et al

Patent Trial and Appeal Board

Sep 30, 2013

11330090 (P.T.A.B. Sep. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JONATHAN R. ADAMS and ROBERT W. ADAMS
__________

Appeal 2012-001751
Application 11/330,090
Technology Center 3700
__________

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 appeal1 under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-8.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

1 The Real Parties in Interest are Jonathan R Adams and Robert W. Adams
(Appeal Br. 3).
2 Claims 9-16 are also pending, but stand withdrawn from consideration
(App. Br. 5).
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STATEMENT OF THE CASE
The Specification discloses “an extendable lacrosse stick . . . [having
a] shaft . . . [that] contains two or more telescopic shaft sections . . . which
can slide relative to each other so that the stick length can be modified”
(Spec. 3, ¶ 0016). The Specification discloses that the “telescopic shafts
may be reinforced by . . . material selection [ ]such as titanium, carbon fiber
or other composition mixtures” (id. at ¶ 0017).
Claim 1, the only independent claim, 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 claims stand rejected under 35 U.S.C. § 103(a) as follows:
I. Claims 1-4 in view of Lewis3 and Umlauft4 (Ans. 5);
II. Claims 5-8 in view of Lewis, Umlauft and Morrow5 (Ans. 6);
III. Claims 1-4 in view of Lewis and Harrigan6 (Ans. 7)
IV. Claims 5-8 in view of Lewis, Harrigan and Morrow (Ans. 8);
V. Claims 1-4 in view of Feeney7 and Dohnomoto8 (Ans. 9); and
VI. Claims 5-8 in view of Feeney, Dohnomoto and Morrow (Ans.
10).

3 Lewis, Jr. US 4,739,994, Apr. 26, 1988.
4 Umlauft et al., US 6,106,417, Aug. 22, 2000.
5 Morrow et al., US 2005/0079935 A1, Apr. 14, 2005.
6 Harrigan, Jr. et al., US 4,223,075, Sept. 16, 1980.
7 Feeney, US 5,685,791, Nov. 11, 1997.
8 Dohnomoto et al., US 4,600,661, Jul. 15, 1986.
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Rejections III to VI are cumulative to rejections I and II. Therefore,
we vacate rejections III to VI in favor of rejections I and II, which rejections
address all the claims on appeal. We affirm the rejection of claims 1-4 over
the combination of Lewis and Umlauft and the rejection of claims 5-8 over
the combination of Lewis, Umlauft and Morrow.
Issue
The Examiner has rejected claims 1-4 under 35 U.S.C. § 103(a) as
obvious in view of Lewis and Umlauft. The Examiner has also rejected
claims 4-8 under 35 U.S.C. § 103(a) as obvious in view of Lewis, Umlauft
and Morrow. We consider these rejections together.
The Examiner finds that “Lewis discloses the elements of claim 1 …
[but] fails to clearly disclose the use of a composite mixture of titanium and
carbon” (Ans. 5). The Examiner finds that “Umlauft discloses the use of a
composite mixture of titanium and carbon fibers” (id.). The Examiner
concludes that it “would have been obvious to one of ordinary skill in the art
. . . to have employed the composite mixture of titanium and carbon fibers of
Umlauft with the apparatus [of Lewis] in order to provide a stronger non-
linear improvement in strength to the device for play” (id. at 5-6).
Appellants contend that Lewis describes “a plastic handle as an
improvement to prior art handles, including those made of metal . . . [and]
teaches away from using metal handles” (Appeal Br. 11-12 (emphasis
removed)). Appellants argue that “one of ordinary skill in the art … would
not have used a composition including metal to modify the plastic handle of
Lewis,” especially in view of the advantages Lewis discloses for graphite-
loaded plastic handles (id. at 12).
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The issue presented is: Does the evidence of record support the
Examiner’s conclusion that one of skill in the art would have been motivated
to modify the graphite-containing plastic lacrosse stick shaft to contain
titanium as disclosed in Umlauft?
Findings of Fact
FF1. Lewis discloses “a lacrosse stick including a graphite-loaded
plastic handle which is formed to provide advantages as to grip, strength,
safety, weight distribution, and comfortable feel in the hands of a player”
(Lewis, col. 1, ll. 6-9).
FF2. Lewis discloses that the graphite-loaded plastic handle has
advantages “with respect to standardization, desirable weight distribution
with the stick head, strength and avoidance of fracturing, and having
improved grip and feel under virtually all conditions” (id. at col. 1, ll. 44-
49).
FF3. Lewis discloses that “lacrosse sticks used by defense players
may suffer more frequent and sometimes more severe shocks, as by impact,
than the attack and midfield sticks. Factors of lightness, limited flexibility
and strength contribute to the suitability for use by attack and midfield
players” (id. at col. 3, ll. 57-62).
FF4. Lewis discloses that “[p]referred plastic materials … are
thermoplastic polyesters, polycarbonates, and nylon, and blends of these
polymers” (id. at col. 4, ll. 14-17).
FF5. Lewis discloses that “an extremely superior lacrosse stick
handle may be fabricated by using 3 to 30 percent graphite in conjunction
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with the above-referenced plastics. The graphite is uniformly dispersed in
the plastic prior to molding the handle” (id. at col. 4, ll. 42-46).
FF6. Umlauft discloses a “lightweight, high stiffness tennis racket . . .
[which] is formed from a composite material including carbon fibers,
titanium fibers, and epoxy resin” (Umlauft, abstract).
FF7. Umlauft discloses that the tennis racket frame is “manufactured
of a synthetic composite reinforced with carbon fibers forming a racket
prepreg … [which] is obtained by layering the carbon composite at several
different angles and forming the layers into the desired hollow frame shape”
(id. at col. 3, ll. 39-43).
FF8. Umlauft discloses that to “further achieve the lightweight, high
strength properties, the carbon reinforced synthetic composite is
strengthened in the racket throat area 16 with titanium fibers” (id. at col. 3,
ll. 52-54).
FF9. Umlauft discloses that “titanium fibers 26 may be included at
any or all locations about tennis racket frame 12 . . . . Including titanium
fibers 26 at throat area 16 helps to relieve high torsional stresses that occur
at the junction between the racket head 14 and handle” (id. at col. 3, ll. 59-
64).
FF10. Umlauft discloses that the “added strength resulting from the
utilization of titanium fibers 26 allows less material to be used, which results
in a correspondingly reduced overall weight of racket 10 without a
detrimental reduction in strength. Indeed, the use of titanium fibers results
in a non-linear improvement in racket strength” (id. at col. 3, l. 65-col. 4, l.
3).
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Principles of Law
‘A reference is reasonably pertinent if, even though it may be
in a different field from that of the inventor’s endeavor, it is one
which, because of the matter with which it deals, logically
would have commended itself to an inventor’s attention in
considering his problem.’ In re Clay, 966 F.2d 656, 659
(Fed.Cir.1992). In other words, ‘familiar items may have
obvious uses beyond their primary purposes.’ KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, [402], 127 S.Ct. 1727, 1742
(2007).

In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir.
2007) (a reference describing a folding bed found pertinent to Appellants'
folding treadmill).
“[W]here general conditions of a claim are disclosed in the prior art, it
is not inventive to discover the optimum or workable ranges by routine
experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Analysis
Claim 1 is directed to 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.
Lewis discloses a lacrosse stick having a graphite-loaded plastic
handle which provides advantages related to grip, strength, safety, weight
distribution, and comfortable feel in the hands of a player. Lewis discloses
that the graphite is uniformly dispersed in the plastic prior to molding the
handle. Umlauft discloses a lightweight, high stiffness tennis racket which
is formed from a composite material including carbon fibers, titanium fibers,
and epoxy resin. Umlauft discloses that the added strength resulting from
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the titanium fibers allows less material to be used without a detrimental
reduction in strength. In view of these disclosures, we agree with the
Examiner that it would have been obvious for one of skill in the art modify
the Lewis plastic composition to comprise titanium and carbon fiber, as
disclosed by Umlauft, in order to obtain a stronger lacrosse stick.
Appellants argue that Lewis describes “a plastic handle as an
improvement to prior art handles, including those made of metal … [and]
teaches away from using metal handles” (Appeal Br. 11-12). Appellants
argue that, therefore, “one of ordinary skill in the art … would not have used
a composition including metal to modify the plastic handle of Lewis,”
especially in view of the advantages Lewis discloses for graphite-loaded
plastic handles (id. at 12).
This argument is not persuasive. As noted by the Examiner (Ans. 12),
the incorporation of the titanium fibers of Umlauft in the plastic handle
composite material of Lewis would not result in a metal handle, but rather a
plastic handle with titanium fibers incorporated into the plastic. Since
Umlauft discloses that titanium fibers provide a significant enhancement in
terms of strength without adding excess weight, we agree with the Examiner
that it would have been obvious to add Umlauft’s titanium fibers to the
plastic handle composite material of Lewis.
Appellants also argue that “tennis racquets and lacrosse sticks fall into
distinctly different fields of use and functions … [and] a person of ordinary
skill in the art relating to lacrosse sticks would not look to the very different
field of tennis racquets” (Reply Br. 4).
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This argument is not persuasive. In accord with In re Clay, a
reference is reasonably pertinent if it logically would have commended itself
to an inventor’s attention. Since tennis rackets and lacrosse sticks are both
sports equipment, with similar concerns of strength, durability and weight,
one of skill in the art would have logically looked to other sports equipment,
such as the tennis racket art, to solve problems related to strength, and
durability, and weight of lacrosse sticks.
Appellants also argue the rejection of claim 3. Claim 3 depends from
claim 1, and further requires that the carbon fiber is about 40% or more of
the mixture. Appellants argue that neither Lewis nor Umlauft “disclose or
suggest the % composition of the titanium-carbon fiber mixture” (Appeal Br.
13). Appellants also argue that the Examiner provides no evidence to
support the argument that it would have been obvious to the ordinary artisan
to have selected an appropriate ratio in order to optimize the strength versus
weight ratio of the shaft (id. at 13).
This argument is not persuasive. The combination of Lewis and
Umlauft disclose the general conditions and requirements for a lacrosse stick
made from plastic and comprising a combination of titanium and carbon
fiber. Lewis also discloses that design factors for a lacrosse stick shaft
composition include weight distribution with the stick head, strength, and
grip and feel and whether the stick will be used by defense players, where
strength is required, or by attack and midfield players, where weight is
factor. In accord with In re Aller, it would have been obvious for one of
skill in the art to optimize a composition to form a lacrosse stick shaft
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according to the particular requirements or preferences for any particular
lacrosse stick.
Appellants also argue the rejection of claim 4. Claim 4 depends from
claim 1 indirectly and further requires that the carbon fiber is about 40% or
more of the mixture and that the titanium is about 25% or less of the
mixture. Appellants argue that “[n]either Lewis nor Umlauft et al. disclose
or suggest the % composition of the titanium-carbon fiber mixture” (Appeal
Br. 13).
This argument is not persuasive. As discussed above, the combination
of Lewis and Umlauft suggest the general conditions for a lacrosse stick
shaft portion made from plastic and comprising a combination of titanium
and carbon fiber. The ordinary artisan would have found it obvious to
optimize the amount of titanium to provide the strength required for a
particular application. We note that claim 5 is directed to a broad range of
titanium, i.e. from about 25 % or less of the mixture.
The Examiner has also rejected claims 5-8 under 35 U.S.C. § 103(a)
as obvious in view of Lewis, Umlauft and Morrow. Claims 5-8 depend from
claim 1, directly or indirectly, and further require that the lacrosse stick has
at least two shaft portions. Appellants do not dispute that the combination of
Morrow with Lewis and Umlauft would have made obvious a lacrosse stick
having two shaft portions (Appeal Br. 14). However, Appellants argue that
Morrow does not cure the deficiencies of Lewis and Umlauft with respect to
the limitation of a “shaft portion made from a composite mixture of
materials comprising at least the combination of titanium and carbon fiber,”
as required by claims 5-8, or with respect to the limitations of “the carbon
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fiber is about 40% of the mixture” or “the titanium is about 25% or less of
the mixture,” as required by claims 7 and 8, respectively (id. at 14-15).
Appellants’ arguments are not persuasive because, for the reasons
discussed above, we agree with the Examiner that the combination of Lewis
and Umlauft would have made obvious a lacrosse stick with a shaft portion
made from a composite mixture comprising titanium and carbon fiber such
that the carbon fiber is about 40% of the mixture and the titanium is about
25% or less of the mixture. Thus, we affirm the rejection of claims 5-8 as
being obvious in view of Lewis, Umlauft and Morrow.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that one
of skill in the art would have been motivated to modify the graphite-
containing plastic lacrosse stick shaft of Lewis to contain titanium as
disclosed in Umlauft.
SUMMARY
We affirm the rejections of claims 1-8 under 35 U.S.C. § 103(a).
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).

AFFIRMED

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