Ex Parte Blanks

Patent Trial and Appeal Board

Sep 20, 2013

11620693 (P.T.A.B. Sep. 20, 2013)

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.
11/620,693 01/07/2007 Paul Michael Blanks PMB-002 9753
26654 7590 09/20/2013
Dane C. Butzer
8100 Delaware Dr.
McKinney, TX 75070
EXAMINER
WONG, STEVEN B
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
09/20/2013 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 PAUL MICHAEL BLANKS
____________________

Appeal 2011-010346
Application 11/620,693
Technology Center 3700
____________________

Before CHARLES N. GREENHUT, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1, 3-6, 8, 9, and 20. Claims 7 and 10-19 stand
withdrawn, and claims 2 and 21 are cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellant’s invention “relates to a golf pitch mark repair tool.” Spec.
1, l. 22. Claims 1 and 20 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter.
1. A pitch mark repair tool comprising:
a base including a push ledge; and
one and only one prong extending from the
push ledge or from a portion of the base adjacent
the push ledge, with the prong shaped like an end
of a tee;
wherein the prong lifts up turf as the prong
is pulled out of the turf so as to repair a pitch mark
when repeatedly pushed into and then pulled out of
the turf.
Claim 20 is directed to a method of repairing a pitch mark using a tool
similar to that recited in claim 1.
REFERENCES
The Examiner relies upon the following prior art references:
Gerlach
Haugom
Warfield
Wiens
US 2,508,155
US 5,121,519
US 6,224,502 B1
US 7,238,126 B1
May 16, 1950
Jun. 16, 1992
May 1, 2001
Jul. 3, 2007

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Appellant relies upon several declarations from various golfing
professionals made of record April 23, 2010, a declaration by inventor Paul
M. Blanks dated April 17, 2010 (“Blanks Declaration”), S. Mona, CEO’s
Message, GCM (Golf Course Management), p. 15, Jan. 2006, and copies of
the web pages (http://www.cmcgolf.net/newweb/web_products.php?id=
2&page=3&sortid=) and (http://www.cmcgolf.net/newweb/aboutus.htm)
made of record April 23, 2010.
REJECTIONS
The following rejections are before us on appeal:
I. Claims 1, 3, 8, and 9 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Warfield.
II. Claims 1, 3, 8, and 9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Warfield and Gerlach.
III. Claims 4-6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Warfield and Haugom.
IV. Claims 4-6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Warfield, Gerlach, and Haugom.
V. Claims 1, 3-5, 8, 9, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wiens, Warfield, and Gerlach.
VI. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wiens, Warfield, Gerlach, and Haugom.
ANALYSIS
Rejection I
The Examiner finds that Warfield discloses the repair tool of claim 1
including a single prong that “is shaped like a pointed end of a tee.” Ans. 3
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(citing Warfield, figs. 13-16). Appellant argues that the prong 144 of
Warfield is not shaped like an end of a tee.1 App. Br. 7. Appellant further
asserts that “[t]he plain meaning of (golf) tee is ‘a short peg put into the
ground to hold a golf ball off the ground,’” and “[t]he shape of Warfield’s
prong 144 does not fit this meaning.” Id. at 7-8 (quoting
http://dictionary.reference.com/browse/golf+tee).
However, the dictionary definition relied on by Appellant defines a
golf tee primarily in terms of its function and, other than the broad “short
peg” description, does not specify any particular shape. Appellant has not
convincingly asserted that Warfield’s prong 144 does not have a shape that
is like that of a short peg. Appellant does not present any persuasive
argument or evidence supporting the contention that one of ordinary skill in
the art would consider the plain meaning of the phrase “shaped like an end
of a tee” to exclude the shape of Warfield’s prong 144. In particular,
Appellant does not point to any disclosure in the Specification that would
support the narrow interpretation of “shaped like an end of a tee” asserted by
Appellant. See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir.
2005) (en banc) (noting patent claims are given their broadest reasonable
interpretation in light of the specification during examination). Indeed, we
are unable to glean any meaning of this language from Appellant’s
Specification, which is silent on how the claimed prong is “shaped like an
end of a tee.”

1 Appellant argues claims 1, 3, 8, and 9 as a group. App. Br. 6-9. We take
independent claim 1 as representative pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii) (2011), and claims 3, 8, and 9 stand or fall with claim 1.
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Furthermore, this claim language is very broad in scope because it
does not require the prong to have the shape of an end of a tee, but only
requires a shape like an end of a tee. We also note that Appellant’s
Specification does not discuss or ascribe any particular meaning to the
phrase “end of a tee,” requiring the phrase to be broadly construed. As such,
the “end of a tee” can be interpreted to be its tip, and we thus agree with the
Examiner that “simply providing a shape taught by Warfield where the end
is tapered to a point provides a prong that is ‘shaped like an end of a tee.’”
Ans. 8. For these reasons, we determine that Warfield’s prong is shaped like
an end of a tee.
Appellant also argues that Warfield does not disclose that “prong 144
‘lifts up turf as the prong is pulled out of the turf so as to repair a pitch mark
when repeatedly pushed into and then pulled out of the turf.’” App. Br. 8.
We do not find this argument persuasive because, as the Examiner correctly
notes, this claim language relates to the intended use of the repair tool and
Warfield’s repair tool is “capable of lifting up turf as the prong is pulled out
of the turf.” Ans. 9; see In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir.
1997) (upholding the Board’s affirmance of a rejection under § 102(b) on
the basis of a finding that a prior art device was capable of performing a
claimed function). To the extent Appellant’s claimed “prong shaped like an
end of a tee” is capable of lifting turf as it is being pulled out of the turf,2

2 We note that Appellant’s Specification merely states: “In step 51, the
single prong is pulled out of the turf. This pulling action can actually lift
indented grass and soil up, for example in the middle of a pitch mark.”
Spec. 12, ll. 1-2. There is no other description of how this is accomplished
or how the invention would function in any manner different from existing
single prong repair tools.
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Warfield’s prong 144, which as determined supra is also shaped like an end
of a tee, is also capable of functioning in this manner.
In view of the above, Appellant’s arguments do not apprise us of
error, and we sustain the rejection of claim 1, and of claims 3, 8, and 9
grouped therewith, as being anticipated by Warfield.
Rejection II
The Examiner finds that Gerlach shows an end portion of a golf tee
that “is shaped similarly to the prong of Warfield” and determines that this
showing demonstrates that Warfield’s prong is shaped like an end of a tee.
Ans. 3-4. More specifically, the Examiner maintains that “Gerlach is relied
upon merely as an evidentiary teaching” and “Warfield is not being modified
to the shape of Gerlach.” Ans. 9.
As such, Appellant’s argument that a modification cannot render a
reference unsatisfactory for its intended purpose (App. Br. 9-10) is not
persuasive because the Examiner is not proposing to modify Warfield.
Appellant’s argument that neither Warfield nor Gerlach discloses a prong
shaped like an end of a tee based on the plain meaning of “tee” (id. at 10) is
also not persuasive for the reasons discussed supra in connection with
Rejection I.
We thus sustain the Examiner’s rejection of claim 1, and of claims 3,
8, and 9 grouped therewith, under 35 U.S.C. § 103(a) as being unpatentable
over Warfield and Gerlach. We note, however, that because the Examiner
relies on Gerlach only as an evidentiary teaching regarding a shape of a golf
tee, this ground of rejection alternatively could have been made under 35
U.S.C. § 102. See Manual of Patent Examining Procedure (MPEP)
§ 2131.01 (8th ed., Rev. 9, August 2012).
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Rejections III and IV
Regarding claims 4 and 5, Appellant argues only that Haugom does
not remedy the deficiencies of Warfield. App. Br. 10-11. As we find no
deficiencies in the Examiner’s rejections of claim 1 based on Warfield, as
discussed supra, we sustain the rejections of claims 4 and 5 for the same
reasons.
Regarding claim 6, Appellant argues that “Haugom’s raised tread
lines 12 simply are not ‘a raised fingernail rest in the location for the thumb
towards the push ledge.’” Id. at 11. This naked assertion is not convincing.
Instead, we agree with the Examiner that Haugom’s raised tread lines 12
define a raised area that is “capable of acting as a thumbnail rest” and thus
meet the claimed raised fingernail rest limitation. Ans. 10.
Accordingly, we sustain the rejections of claims 4-6 as being
unpatentable over Warfield and Haugom (Rejection III) and Warfield,
Gerlach, and Haugom (Rejection IV).
Rejection V
The Examiner finds that Wiens discloses the repair tool of claim 1
with the exception that the Wiens’ tool has two prongs rather than a single
prong. Ans. 5. The Examiner further finds that Warfield discloses a repair
tool having either a plurality of prongs or a single prong and concludes it
would have been obvious to replace Wiens’ plurality of prongs with a single
prong to simplify manufacturing. Ans. 5-6. The Examiner also finds that
Gerlach evidences that the prong of the Wiens-Warfield combination is
shaped like the end of a golf tee. Ans. 6.
Appellant’s sole argument against this rejection is that Wiens does not
disclose a single prong (which the Examiner concedes) and Warfield and
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Gerlach do not disclose a prong shaped like an end of a tee.3 This argument
is not persuasive for the reasons discussed supra. Therefore, Appellant does
not apprise us of error, and we sustain the rejection of claim 1, and of claims
3-5, 8, 9, and 20 grouped therewith, as being unpatentable over Wiens,
Warfield, and Gerlach.
Rejection VI
Appellant’s only argument with respect to this rejection of claim 6 is
to again assert that “Haugom’s raised tread lines 12 simply are not ‘a raised
fingernail rest in the location for the thumb towards the push ledge.’” App.
Br. 12. This argument is not persuasive for the reason discussed supra and
we accordingly sustain this rejection.
Appellant’s Evidence of Secondary Considerations
Appellant points to several declarations and other documentary
evidence of secondary considerations as indicating the claimed invention is
not obvious. Id. at 12-19. We have fully considered this evidence of
secondary considerations, but find that the overwhelming evidence of
obviousness of the claimed invention outweighs the evidence of non-
obviousness .
Appellant argues that the Blanks Declaration provides evidence of
significant commercial success of the invention. Id. at 13. The Blanks
Declaration states that Mr. Blanks has “sold or otherwise distributed over
1,250,000” of his repairs tools. Blanks Decl., para. 2. This evidence,
however, is lacking in several respects. First, it is unclear what “otherwise

3 Appellant argues claims 1, 3-5, 8, and 9 as a group and does not present
any separate arguments for claim 20. App. Br. 11-12. We take independent
claim 1 as representative pursuant to 37 C.F.R. § 41.37(c)(1)(vii) (2011),
and claims 3-5, 8, 9 and 20 stand or fall with claim 1.
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distributed” means or how many of the total units were actually sold and at
what price. Thus, the Blanks Declaration does not clearly define the extent
of the alleged commercial success. Second, there is no indication of whether
the quantity sold or otherwise distributed represents a substantial quantity in
the relevant market. “[E]vidence related solely to the number of units sold
provides a very weak showing of commercial success, if any.” In re Huang,
100 F.3d 135, 140 (Fed. Cir. 1996); see In re Baxter Travenol Labs., 952
F.2d 388, 392 (Fed. Cir. 1991) (“[I]nformation solely on numbers of units
sold is insufficient to establish commercial success.”). Third, Appellant has
not provided “factual evidence that demonstrates the nexus between the
sales and the claimed invention.” In re Huang, 100 F.3d at 140 (noting, as
an example, that an affidavit from a purchaser explaining that the product
was purchased due to the claimed features could present evidence of a
nexus). Stating that the commercial success was achieved with a tool
“configured as recited by at least claim 1” (Blanks Decl., para. 1) is not
sufficient, by itself, to establish such a nexus. The statement that the sales
were largely accomplished without significant marketing expenditures
(Blanks Decl., para. 3) does not provide enough specific information about
the actual marketing expenditures to demonstrate that the claimed features
were responsible for the commercial success. We thus find the Blanks
Declaration insufficient to overcome the Examiner’s conclusions of
obviousness.
Appellant argues that several declarations from various golf
professionals provide evidence the present invention has superior
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performance and solves a longstanding problem.4 App. Br. 13-14. We do
not find these declarations sufficient to overcome the Examiner’s
conclusions of obviousness. We initially note that the declarants in three of
the sixteen declarations from golf professionals stated they had a financial or
other interest in a patent issuing for the present invention, while two other
declarants did not answer the question regarding their interest in the outcome
of the patent application. The declaration of a person with an interest in the
case may be less persuasive than that of a disinterested person, although the
declaration cannot be disregarded for this reason alone. In re McKenna, 203
F.2d 717, 720 (CCPA 1953).
The key problem with the declarations from golf professionals,
however, is that the evidence they provide has limited probative value with
respect to the obviousness determination. While each declaration indicates
the statements made therein “relate to a PitchPro Ball Mark Repair Tool
having the [elements of claim 1],” there is no indication that the declarant
had examined such a repair tool or was familiar with its particular features.
See, e.g., Affidavit for United States Patent Office of Joe Kennedy CGCS
(“Kennedy Declaration”), p. 1. Furthermore, the declarations provide the
declarant’s opinion of the PitchPro Ball Mark Repair Tool’s performance
relative to only “traditional two-pronged ball mark repair tools” and “any
other ball mark repair tool” used by the declarant, which is not specified and
therefore unknown. See, e.g., Kennedy Decl., p. 2. The declarations thus
fail to provide evidence that the present invention has superior performance
relative to the devices of the prior art relied on by the Examiner.

4 While Appellant indicates that there are fifteen declarations from golf
professionals, we note that there are sixteen such declarations in the record.
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The golf professional declarations also fail to establish that the present
invention solves a long-felt need that was not solved by others. Specifically,
the declarations refer to the present invention addressing “the longstanding
problem of damage caused by traditional two-pronged ball mark repair
tools.” See, e.g., Kennedy Decl., p. 2. There is no evidence that this
particular “longstanding problem” was not solved by prior single prong
repair tools (such as that of Warfield) or by using a golf tee as a repair tool
(admitted by Appellant as being a common practice (see Spec. 3, ll. 6-7)).
Furthermore, the bald assertions that “[i]mproper use of ball mark
tools has been a longstanding problem” (see, e.g., Kennedy Decl., p. 2)
addressed by the present invention because the present invention “is difficult
to used [sic] improperly” and its design “encourages proper use” (see, e.g.,
Kennedy Decl., p. 3) do not provide objective evidence that the invention
solves a long-felt need. These are conclusory statements not supported by
fact and lacking sufficient detail to show a nexus between the alleged
problem and how the design of the present invention overcomes the
problem.

Appellant further argues that the CMC webpage provides evidence of
copying by a competitor, asserting that “CMC Golf has introduced a single
pronged pitch mark tool that falls within the scope of claim 1.” App. Br. 15.
However, the pictures of the CMC webpage, while appearing to show a
single prong repair tool, are not of sufficient quality to discern that the CMC
tool falls within the scope of claim 1. Thus, Appellant has failed to establish
that the alleged copy is identical to the claimed tool. See Pentec, Inc. v.
Graphic Controls Corp., 776 F.2d 309, 317 (Fed. Cir. 1985). Furthermore,
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Appellant has not provided any evidence that CMC Golf expended any
effort to develop its own tool prior to the alleged copying. See id.
Accordingly, the evidence provided by the sixteen declarations of the
golf professionals, and the CMC webpage evidence, is outweighed by the
evidence of obviousness represented by the applied prior art.
DECISION
We affirm the decision of the Examiner rejecting claims 1, 3-6, 8, 9,
and 20.
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).

AFFIRMED

JRG