Ex Parte Cameron

Patent Trial and Appeal Board

Jun 27, 2013

10946394 (P.T.A.B. Jun. 27, 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.
10/946,394 09/22/2004 Don T. Cameron 5221-011-US01 7127
79175 7590 06/28/2013
SMITH, GAMBRELL & RUSSELL
1055 Thomas Jefferson Street, NW
Suite 400
WASHINGTON, DC 20007
EXAMINER
PASSANITI, SEBASTIANO
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
06/28/2013 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 DON T. CAMERON
____________________

Appeal 2011-003537
Application 10/946,394
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, GAY ANN SPAHN, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-003537
Application 10/946,394
2
STATEMENT OF THE CASE
Don T. Cameron (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1, 4-12, 19, and 25-29. Appellant has
elected not to appeal the rejections of claims 13-18, 20-24, and 30. App. Br.
5. We suggest that the Examiner cancel these claims upon return of
jurisdiction of this application to the Examiner. See Ex Parte Ghuman, 88
USPQ2d 1478, 1480 (BPAI 2008) (precedential). We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A golf club, comprising:
a head having an alignment indicia thereon;
a tube having a first end and a second end and a longitudinal
axis, said first end coupled to said head;
a coupling member coupled to said tube second end; and
a shaft having a longitudinal axis, said shaft coupled to said
coupling member;
wherein said tube blocks said indicia from a user's view at
address when said head is aligned properly; and
wherein said tube longitudinal axis is substantially parallel
to and offset from said shaft longitudinal axis.
Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Weeks
Perkins
Collins
Anderson
Kastenhuber
Jimenez
US Des. 404,450
US 4,231,576
US 4,852,879
US 4,915,385
US 4,951,949
US 5,494,288
Jan. 19, 19999
Nov. 4, 1980
Aug. 1, 1989
Apr. 10, 1990
Aug. 28, 1990
Feb. 27, 1996
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Application 10/946,394
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Delio US 5,857,922 Jan. 12, 1999
Cameron US 6,663,496 B2 Dec. 16, 2003
Rejections
Appellant requests our review of the following rejections:1
1. Claims 1, 4-8, 10, 12, 19 and 25-28 under 35 U.S.C. § 103(a) as
unpatentable over Weeks, Jimenez, Delio, and Anderson;
2. Claim 29 under 35 U.S.C. § 103(a) as unpatentable over Weeks,
Jimenez, Delio, Anderson, and Kastenhuber;
3. Claim 9 under 35 U.S.C. § 103(a) as unpatentable over Weeks,
Jimenez, Delio, Anderson, and Perkins;
4. Claim 11 under 35 U.S.C. § 103(a) as unpatentable over Weeks,
Jimenez, Delio, Anderson, and Collins; and
5. Claims 1, 4-12, and 19 under the judicially-created ground of
obviousness-type double patenting as unpatentable over claims 1-
11 of Cameron in view of Jimenez, Delio, Anderson, and Perkins.
OPINION
Rejections 1-4
Claims 1, 4-12, 25, 27, and 29
An issue raised by Appellant in contesting Rejection 1 is whether the
applied references render obvious a golf club as claimed in claim 1 with
indicia wherein the tube blocks the indicia from a user’s view at address
when said head is aligned properly. See App. Br. 14-15.
Appellant’s Specification explains that the head of Appellant’s
invention is aligned properly at address when it is aligned to strike the ball
squarely. Spec. 5:13-20. If the indicia are visible to the golfer at address,

1 The Examiner withdrew the rejection of claims 1, 5-8, and 12 under
35 U.S.C. § 102(b) as anticipated by Anderson. Ans. 3.
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the golfer knows that the club needs to be adjusted to square it with the
intended putting path. Spec. 6:2-4. In the case of a right-handed golfer,
seeing the indicia to the right of the tube instructs the golfer to open the club,
or rotate it clockwise. Id.at 6:5-6. Seeing the indicia to the left of the tube
instructs the right-handed golfer to close the club, or rotate it
counterclockwise. Id. at 6:6-8.
Weeks is a design patent directed to “[t]he ornamental design for a
golf putter head having indented shaft alignment marks on top.” Weeks,
claim (emphasis added); fig. 1. Weeks is silent as to whether the alignment
marks are to be blocked from the golfer’s view at address.
Weeks lacks a coupling member coupling a tube and shaft having
offset parallel axes as called for in claim 1.
The Examiner found that Jimenez, Delio, and Anderson teach a
coupling member that provides an offset between the shaft and tube, and
determined it would have been obvious to modify the device of Weeks by
incorporating a hosel assembly with a tube and coupling arrangement
(presumably providing an offset as taught by Jimenez, Delio, and Anderson)
as an alternative way of attaching a shaft to the head. Ans. 4-5.
Jimenez (figs. 7, 8, 13), Delio (figs. 3, 4), and Anderson (fig. 2, 3)
disclose hosel coupling arrangements providing an offset between the
longitudinal axis of the tube and the longitudinal axis of the shaft. However,
these references also disclose offsetting the shaft so that alignment marks on
the top of the putter are visible at address. See Jimenez, col. 3, ll. 4-9
(stating that the putter marker is such that “[l]ining up the putt is easier than
with other putters because lining up the marker, the ball centerline, and the
intended ball path is facilitated”); Delio, col. 4, ll. 26-31 (describing three
grooves 25 “to assist in aligning the putter face squarely to the hole”); id. at
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fig. 3 (showing the shaft 16 and hosel 17 offset so that substantially the
entire top face of the club, including the three grooves 25 thereon, is visible
at address); Anderson, col. 1, ll. 45-52 (describing assurance of “ease of
downward viewing of both markers; while addressing the ball”); id. at col. 2,
ll. 41-59 (describing the function of the markers in giving the appearance of
a ball being moved directionally as the golfer advances the head toward the
real golf ball).
The Examiner found that Weeks shows “what appears to be the
orientation of a shaft that, if connected, would extend at an angle toward the
heel end of the club head.” Ans. 4. The Examiner further found that “[t]he
extension of a shaft over a heel end would clearly obscure at least a portion
of the indicia (lines/grooves) that are located on the top of the head.” Id.
However, this finding that the extension of the shaft over a heel would
clearly obscure at least a portion of the indicia appears to presume an
extension of the shaft as depicted by Weeks without any offset.
After determining it would have been obvious to modify Weeks to
provide such an offset in view of the teachings of Jimenez, Delio, and
Anderson, the Examiner stated “it is noted that a portion of the indicia may
be obscured at address.” Ans. 5 (emphasis added). The Examiner has not
articulated sufficient findings and/or reasoning to support a conclusion that
the combined references render obvious a golf club as claimed wherein the
tube blocks the indicia from the user’s view at address when said head is
aligned properly. Indeed, Appellant is correct that Jimenez, Delio, and
Anderson suggest to the contrary. See App. Br. 15.
For the above reasons, we do not sustain the Examiner’s rejection of
claim 1 and of its dependent claims 4-8, 10, 12, 25, and 27 as unpatentable
over Weeks, Jimenez, Delio, and Anderson (i.e., Rejection 1). We also do
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not sustain Rejections 2-4 (i.e., the rejections of claims 9, 11, and 29, which
depend from claim 1), because these rejections include no additional
findings or reasoning that might make up for the deficiency of Rejection 1.
Claim 19
Claim 19 depends indirectly from independent claim 13,2 which is not
involved in this appeal, and further requires that the indicia be “positioned
between a strike face of said club head and a vertical plane passing through a
heel and a toe of said head and including an intersection of said first
longitudinal axis and said head.” Notably, claim 19 does not specify the
orientation of the recited vertical plane relative to the strike face of the head.
The Examiner found that Weeks’ indicia “is clearly positioned
between a strike face of the club head and a vertical plane that would pass
through a heel and toe of the head, including an intersection of the first
longitudinal axis defined herein above.” Ans. 6. Indeed, figure 1 of Weeks
appears to depict such an arrangement. At least the elongate alignment mark
extending parallel to the striking face and disposed closest to the striking
face and the shorter and wider alignment mark aligned with the depicted
fragmented shaft are positioned within the claimed area.
Appellant does not adequately explain why the Examiner’s finding is
in error. See App. Br. 16 (stating only that “contrary to the Examiner’s
statement, the Weeks club head includes indicia that are not positioned as
required by the claim”); Reply Br. 7 (stating, “the Weeks club head does not

2 Unlike claim 1 and the claims depending therefrom, claim 13 and the
claims depending therefrom do not include a limitation that the tube blocks
the indicia from a user’s view at address when said head is aligned properly.
Thus, the arguments directed to that feature are not pertinent to the claims
depending from claim 13.
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include indicia that is positioned between a strike face and vertical plane
passing through the heel and toe of the club head”).
Appellant also argues that the Examiner’s “proffered motivation to
modify the Weeks club head is not motivation at all” and that the “Examiner
has not explained why a skilled artisan would be led to make [the proposed]
alteration of the Weeks club head.” App. Br. 15-16. This line of argument
is not convincing. The Supreme Court has stated that a rigid insistence on
teaching, suggestion, or motivation is incompatible with its precedent
concerning obviousness. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 419
(2007). Instead, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (cited with approval in KSR, 550 U.S. at 418). The Examiner has
articulated such reasoning. As noted above, the Examiner reasoned that it
would have been obvious to modify the device of Weeks by incorporating a
hosel assembly with a tube and coupling arrangement (presumably providing
an offset as taught by Jimenez, Delio, and Anderson) as an alternative way
of attaching a shaft to the head. Ans. 4-5. The modification proposed by the
Examiner is nothing more than the simple substitution of one known element
for another. “[W]hen a patent claims a structure already known in the prior
art that is altered by the mere substitution of one element for another known
in the field, the combination must do more than yield a predictable result.”
KSR, 550 U.S. at 416.
Thus, Appellant does not apprise us of error in the Examiner’s
rejection of claim 19. We sustain the rejection of claim 19.
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Claim 26
Claim 26 depends indirectly from claim 13 and further requires that
the indicia be “positioned between said tube and a heel end of said head.”
The Examiner found that “it is clear from a review of Weeks, that the
indicia identified is between the heel end of the head and the point of
attachment of the tube, as modified by the teaching references.” Ans. 6. We
find that figure 1 of Weeks shows three indicia between the depicted
fragmented shaft attachment location and the heel end of the head.
Appellant argues that Weeks “includes at least one alignment mark
positioned in front of the shaft,” that “any alignment marks in Delio are in
front of the shaft,” that “Jimenez shows a putter marker directly in line with
the hosel,” and that Anderson “shows markers in front of the hosel and
shaft.” Reply Br. 7.3 These arguments do not apprise us of error in the
Examiner’s rejection, as claim 26 does not exclude the presence of indicia
that are not positioned between the tube and a heel end of the head.
We sustain the rejection of claim 26.
Claim 28
Claim 28 depends from claim 13, which, as noted above, is not
involved in this appeal, and further recites, “said coupling member is a
separate body than said tube and said shaft.”
In addressing this limitation, the Examiner determined, “the inclusion
of a separate or integral coupling member with the remaining tube and shaft
assembly would have been obvious to one of ordinary skill in the art, as it

3 Appellant raises these issues for the first time in the Reply Brief. We
direct Appellant to the informative decision Ex Parte Borden, 93 USPQ2d
1473, 1475 (BPAI 2010) (pointing out the procedural difficulties with such
belated arguments).
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has been held to be within the level of skill of one of ordinary skill in the art
to make separable that which has been shown to be constructed integrally.”
Ans. 6.
Appellant argues,
[p]roviding the coupling member as a separate body than the
tube and shaft allows the club head designer to provide the tube
and shaft formed of a low density material, enhancing the
moment of inertia and other properties of the golf club,
resulting in a more balanced and playable golf club, while
simultaneously ensuring a robust golf club by forming the
coupling member of a more substantial material.
App. Br. 16.
Appellant’s argument regarding the use of materials of different
densities is directed to features not recited in the claim, and thus is not
convincing. As stated by our reviewing court in In re Hiniker Co., 150 F.3d
1362, 1369 (Fed. Cir. 1998), “the name of the game is the claim.”
Limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Moreover, in
any event, the fact that separately formed bodies can be made of different
materials having different material properties does not appear to be
unexpected or unpredictable, and Appellant does not provide any evidence
showing that this aspect of a separate coupling member body would have
been unexpected or unpredictable to a person of ordinary skill in the art.
Further, there is no evidence of record tending to show that the nature
of the modification required to provide a separate coupling member body as
compared with a coupling member formed as part of the hosel, or tube,
would have been uniquely challenging to a person of ordinary skill in the art.
We sustain the Examiner’s rejection of claim 28.
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Rejection 5
Appellant argues that the number of references applied “suggests that
the instant claims are not an extension of the prior claims [i.e., claims 1-11
of the Cameron patent].” App. Br. 17. This argument does not apprise us
of error in the rejection, because the number of references applied is not
relevant to the propriety of the combination of references. In re Gorman,
933 F.2d 982, 986 (Fed. Cir. 1991).
Appellant also relies on the same arguments asserted against
Rejection 1. App. Br. 17. These arguments do not apprise us of error in the
obviousness-type double patenting rejection because they address perceived
deficiencies in the combination of Woods, Jimenez, Delio, and Anderson,
and not in the combination of claims 1-11 of the Cameron patent4 with
Jimenez, Delio, Anderson, and Perkins.
We sustain Rejection 5.
DECISION
The Examiner’s decision rejecting claims 1, 4-12, 19, and 25-29 is
affirmed as to claims 1, 4-12, 19, 26, and 28, and is reversed as to claims 25,
27, and 29.
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-IN-PART

4 Claim 1 of the Cameron patent includes an offset hosel, and reference
lines, some, all or none of which are obscured when the putter is held by the
golfer.
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