11758861 (B.P.A.I. Jan. 27, 2012)

Ex Parte Droppleman

Board of Patent Appeals and InterferencesJan 27, 2012

11758861 (B.P.A.I. Jan. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte J. PATRICK DROPPLEMAN ____________ Appeal 2010-003673 Application 11/758,861 Technology Center 3700 ____________ Before GAY ANN SPAHN, WILLIAM V. SAINDON, and JAMES P. CALVE, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-003673 Application 11/758,861 2 THE INVENTION Claim 1 relates to a separable putter golf club. 1. A separable putter golf club comprising: an upper portion having one of a first connector portion and a second connector portion disposed on a first end of the upper portion; and a lower portion having the other one of the first connector portion and the second connector portion disposed on a first end of the lower portion; wherein the first connector portion includes a first base having a first mating surface, a first locking member having one or more outwardly protruding lugs including a lug surface, and a substantially rigid guide rod; and wherein the second connector portion includes a second base having a second mating surface, a second locking member including an aperture and a cavity and a bore, wherein the bore is adapted to receive the guide rod, and the cavity is adapted to receive the first locking member and includes a cavity surface, and wherein the lug surface and the cavity surface are angled relative to each other, so that the first base and the second base are forced together during rotation of the first and second connector portions relative to each other when the first locking member is disposed in the cavity. REJECTIONS The Examiner relies on the following as evidence of unpatentability: Davidson US 1,762,572 June 10, 1930 Stanton US 4,429,875 Feb. 7, 1984 Grace US 2003/0050131 A1 Mar. 13, 2003 The following grounds of rejection are before us for review: 1. The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as being unpatentable over Davidson and Grace. 2. The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as being unpatentable over Davidson and Stanton. Appeal 2010-003673 Application 11/758,861 3 ANALYSIS Claim 1 as obvious over Davidson and Grace The Examiner found that Davidson discloses a first connector (male coupling member 17) with outwardly protruding lugs 22 each with a surface 23 and a second connector (female coupling member 6) with a cavity surface (inclined cam surface 14) angled relative to the lug surface 23. Ans. 5; Office Action mailed Nov. 17, 2008 at 3. Notwithstanding this finding, the Examiner now concedes that Davidson does not disclose a lug surface 23 angled relative to cam surface 14 (Ans. 11), but finds that lug 22 has other surfaces that are angled relative to cam surface 14 and even though these surfaces do not ride on cam surface, claim 1 is written broad enough that any surface of the lug can be compared to any cavity surface (Ans. 12). We agree with Appellant that Davidson discloses a lug surface 23 that is parallel (rather than angled) relative to a cam surface 14. App. Br. 9-11. Davidson discloses that a surface (inclined face 23) of each lug of coupling member 17 rides on a cam surface 14 of a respective shoulder 11 of coupling member 6 such that relative turning movement of coupling members 6, 17 draws the coupling members 6, 17 and tubes 5, 5 tightly together. Davidson, p. 2, ll. 77-87; fig. 2. Figure 1 of Davidson shows a cam surface 14 sloping downwardly from left to right with a portion that is hidden behind coupling member 17 illustrated as a dashed line. Figure 8 of Davidson also shows the lug surface 23 that rides on this cam surface 14 as a dashed line because it also is hidden behind the coupling member 17 opposite of the visible lug 22. The slope of this hidden lug surface 23 parallels the slope of the hidden cam surface 14 on which it rides as Appellant illustrates with dashed lines that show these features in Schematic 2 of the Appeal Brief. App. Br. 10. App App App from lines how of th cavit seco conn expl relat are f each eal 2010-0 lication 11 Figures eal Brief a Figure 1 left to rig with a sim this lug su The Exa e lug is un y surface nd base ar ector port ained how ive to cam orced toge other. Da 03673 /758,861 1 and 8 of re reprodu shows cam ht; Figure ilar slope rface 23 p miner’s in reasonable are angled e forced to ions relativ other lug surface 14 ther by rot vidson dis Davidson ced below surface 8 shows th ; Schemati arallels th terpretatio . Claim 1 relative to gether dur e to each surfaces in , are angl ation of th closes onl 4 and Schem : 14 as a das e correspo c 2 illustra e cam surf n of lug su recites th each othe ing rotatio other . . . . Davidson ed so that e coupling y that lug atic 2 fro hed line s nding lug tes Appel ace 14 on rface as in at “the lug r, so that t n of the fi ” The Exa , even if th the upper members surface 23 m Appella loping dow surface 2 lant’s cont which it ri cluding an surface an he first ba rst and sec miner has ey are an and lower 17, 6 rela rides on a nt’s nwardly 3 in dashed ention of des. y surface d the se and the ond not gled tubes 5, 5 tive to parallel Appeal 2010-003673 Application 11/758,861 5 cam surface 14 to cause tubes 5, 5 to be drawn together by rotation of the coupling members 17, 6. Davidson, p. 1, ll. 22-33, p. 2, ll. 77-87; fig. 2. Appellant’s interpretation of “angled relative to each other” to exclude parallel surfaces is consistent with the ordinary, customary usage of “angle” which includes “the amount of turning necessary to bring one line or plane into coincidence with or parallel to another.” See MERRIAM WEBSTER’S COLLEGIATE® DICTIONARY 48 (11th ed. 2005). Appellant discloses that cavity surface 98 may be parallel to lug surface 86 or cavity surface 98 may be slanted with respect to flat or slanted lug surfaces 84. See Spec. 7, ll. 6- 11 (cited in App. Br. 7); fig. 2. However, Appellant has limited claim 1 to embodiments in which the lug surface is angled (i.e., not parallel) relative to the cavity surface by claiming only this arrangement and by arguing that the parallel lug surface 23 and cam surface 11 of Davidson are “not angled relative to each other” (App. Br. 9). See Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc) (noting that an inventor may narrow or disclaim claim scope during prosecution). Accordingly, we cannot sustain the rejection of claim 1 based on Davidson and Grace. Claim 1 as obvious over Davidson and Stanton The Examiner also rejected claim 1 based on Davidson and Stanton, again finding that Davidson discloses a lug surface and cam surface that are angled relative to each other. Ans. 7, 11-12. Appellant again argues that the lug surface 23 and cam surface 14 of Davidson are parallel to one another and therefore are not angled relative to each other as called for in claim 1. App. Br. 13-14. We agree with Appellant for the reasons discussed supra for the rejection of claim 1 based on Davidson and Grace. Accordingly, we cannot sustain the rejection of claim 1 based on Davidson and Stanton. Appeal 2010-003673 Application 11/758,861 6 DECISION The Examiner’s decision to reject claim 1 under 35 U.S.C. § 103(a) as being unpatentable over Davidson and Grace is REVERSED. The Examiner’s decision to reject claim 1 under 35 U.S.C. § 103(a) as being unpatentable over Davidson and Stanton is REVERSED. REVERSED mls