Ex Parte Davenport

Patent Trials and Appeals Board

Feb 27, 2019

14138182 - (D) (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/138,182 12/23/2013
25223 7590 03/01/2019
WHITEFORD, TAYLOR & PRESTON, LLP
ATTN: GREGORY M STONE
SEVEN SAINT PAUL STREET
BALTIMORE, MD 21202-1626
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Roger Davenport
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
094008.20505 5608
EXAMINER
WEATHERFORD, SYVILA
ART UNIT PAPER NUMBER
3717
NOTIFICATION DATE DELIVERY MODE
03/01/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents@wtplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROGER DAVENPORT
Appeal2018-004060
Application 14/13 8,182 1
Technology Center 3700
Before DANIELS. SONG, STEFAN STAICOVICI, and
BRANDON J. WARNER, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision in the Final Office Action ( dated Jan. 27, 2017, hereinafter "Final
Act.") rejecting claims 1, 15-19, 21-23, 26, and 29. 2,3 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
1 Golf Impact, LLC is the Applicant and is identified as the real party in interest in
Appellant's Appeal Brief (filed Aug. 24, 2017, hereinafter "Br."). Br. 1.
2 Claims 3-12 are canceled. See Br., Al (Claims App.).
3 The Examiner indicates claims 2, 13, 14, 20, 24, 25, 27, 28, and 30 as being
allowable if rewritten in independent form including all of the limitations of the
base claim and any intervening claim. See Final Act. 8. Claims 2, 13, 14, 20, 24,
25, 27, 28, and 30 are not part of the instant appeal.
Appeal2018-004060
Application 14/138,182
We REVERSE.
SUMMARY OF DECISION
INVENTION
Appellant's invention is "a measurement and analysis system for
determining the effectiveness of a golfer's swing based on all measurements
made at the golf club head." Spec., para. 2.
Claims 1, 21, and 26 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. An integrated club face assembly comprising at least:
a first outer layer with first predetermined material
properties;
a second inner layer with second predetermined material
properties; and
a monolith layer between the first outer layer and the
second inner layer and made of electrically non-conducting
material that contains at least one impact sensor element.
REJECTIONS
I. The Examiner rejects claims 1, 15-19, 21, 23, and 26 under 35 U.S.C.
§ I03(a) as being unpatentable over Hagood et al. (US 2005/0037862
Al, pub. Feb. 17, 2005, hereinafter "Hagood") and Aisenbrey (US
2006/0287126 Al, pub. Dec. 21, 2006).
II. The Examiner rejects claims 22 and 29 under 35 U.S.C. § I03(a) as
being unpatentable over Hagood, Aisenbrey, and Brent Kelley,
Coefficient of Restitution, ABOUT.COM (Dec. 8, 2007) (http:! /web.
archive.org/web/20071208053007 /http://golf.about.com/cs/golfter
ms/ g/bldef_cor.htm (hereinafter "Kelly")).
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Appeal2018-004060
Application 14/138,182
ANALYSIS
Rejection I
Each of independent claims 1, 21, and 26 requires, inter alia, a non-
conductive layer between outer and inner layers "that contains at least one
impact sensor." Br., Al, A3, A4 (Claims App.).
The Examiner finds that Hagood discloses an integrated club face
assembly including first outer layer 10, second inner layer 207, and polymer
prepackaged piezo element 21. Final Act. 3--4 ( citing Hagood, paras. 10, 17,
80, Fig. 4).
Appellant argues that Hagood's piezo element 21 does not constitute
an "impact sensor," as called for by each of claims 1, 21, and 26, because an
"impact sensor" senses impact, whereas Hagood' s device is a "transducer
that mechanically modifies the physical characteristics of a golf club head."
Br. 8-9 ( citing Hagood, paras. 17-21 ). Thus, according to Appellant,
Hagood's transducer constitutes "an actuator that actively, mechanically
modifies the physical characteristics of a golf club [head]," whereas the
claimed "sensors [are] configured to measure ... impact." Id. at 8
( emphasis added).
In response, the Examiner takes the position that the claimed "sensor"
does not require having a measuring function, but merely a sensing function
and "Hagood discloses a piezoelectric element sensing the impact between
club face and ball." Examiner Answer (dated Dec. 29, 2017, hereinafter
"Ans.") at 10. The Examiner notes that as both Appellant and Hagood
"utilize piezoelectric elements" and because a piezoelectric element detects
impact, "the Hagood piezoelectric element can be considered an impact
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Appeal2018-004060
Application 14/138,182
sensor since its use is dependent upon the impact of the club face with the
golf ball." Id.
During examination, "claims ... are to be given their broadest
reasonable interpretation consistent with the specification, [ ] and ... claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art." In re Bond, 910 F .2d 831,
833 (Fed. Cir. 1990) (alteration in original) (citing In re Sneed, 710 F.2d
1544, 1548 (Fed. Cir. 1983)). This means that the words of the claim must
be given their plain meaning unless the plain meaning is inconsistent with
the Specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). In this
case, an ordinary and customary meaning of the term "sensor" is "a device
that responds to a physical stimulus (such as heat, light, sound, pressure,
magnetism, or a particular motion) and transmits a resulting impulse (as for
measurement or operating a control)."4
Such a plain meaning interpretation of the term "sensor" is consistent
with Appellant's Specification, which describes impact sensors 30 as
"impact pressure force sensors" that measure "impact pressure forces."
Spec., paras. 12, 22, 52. In addition, although we appreciate that both
Appellant and Hagood use piezoelectric materials, nonetheless, Appellant's
Specification further describes the piezoelectric material of impact sensors
30 as being chosen "for electronic measurement resolution purposes," and,
that "sensor sensitivity" is such as "to measure with reasonable resolution
ball/club face impact." Id. at para. 27 (emphasis added). Hence, in light of
Appellant's Specification and the ordinary and customary meaning of the
4 See MERRIAM-WEBSTER, https://www.merriam-webster.com/dictionary
/sensor (last visited February 22, 2019) ( emphasis added).
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Appeal2018-004060
Application 14/138,182
term "sensor," we construe the phrase "impact sensor" to mean a device that
responds to a physical stimulus, such as impact, and then transmits a
resulting impulse for measurement.
In contrast, Hagood discloses piezo element 21 that, when compressed
during impact with a golf ball, "it generates a charge and electrical energy
that can be used to power ... an ultrasonic device." Hagood, para. 81. As
such, Hagood's piezo element 21 constitutes a "transducer" that "is capable
of generati[ng] ... electrical energy from mechanical energy," which can
then be used to achieve "face deformation or face positioning [ of the golf
club head] in a controlled fashion." Id. at paras. 18, 20 ("A transducer is
capable of generation of electrical energy from mechanical energy as well as
vice versa."). Hence, although Hagood's transducer, i.e., piezo element 21,
responds to a physical stimulus, i.e., impact, it does not constitute an
"impact sensor," as called for by each of claims 1, 21, and 26, because in
light of the ordinary and customary meaning of the term "sensor" and
Appellant's Specification, it does not measure impact.
Accordingly, the Examiner's claim interpretation, which relies on the
view that a "transducer" that merely responds to a physical stimulus, i.e.,
impact, meets the "impact sensor" limitation, is unreasonably broad in view
of the ordinary and customary meaning of the term "sensor" and Appellant's
Specification and, thus, is in error. As the Examiner's use of the Aisenbrey
disclosure does not remedy the deficiency of the Examiner's interpretation
of Hagood (see Final Act. 4---6), for the foregoing reasons, we do not sustain
the rejection under 35 U.S.C. § 103(a) of claims 1, 15-19, 21, 23, and 26 as
unpatentable over Hagood and Aisenbrey.
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Appeal2018-004060
Application 14/138,182
Rejection II
The Examiner's use of the Keely disclosure does not remedy the
deficiency of the Hagood and Aisenbrey combination discussed supra. See
Final Act. 6-7. Therefore, for the reasons discussed above, we also do not
sustain the rejection of claims 22 and 29 over the combined teachings of
Hagood, Aisenbrey, and Kelly.
SUMMARY
The Examiner's decision to reject claims 1, 15-19, 21-23, 26, and 29
under 35 U.S.C. § 103(a) is reversed.
REVERSED
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