Ex Parte Fendel

Board of Patent Appeals and Interferences

Aug 29, 2012

10389494 (B.P.A.I. Aug. 29, 2012)

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.
10/389,494 03/14/2003 Edwin B. Fendel 21,747-E-USA 3254
7590 08/30/2012
Synnestvedt & Lechner LLP
2600 Aramark Tower
1101 Market Street
Philadelphia, PA 19107-2950
EXAMINER
BLAU, STEPHEN LUTHER
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
08/30/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte EDWIN B. FENDEL
____________________

Appeal 2009-013630
Application 10/389,494
Technology Center 3700
____________________

Before KEN B. BARRETT, CHARLES N. GREENHUT, and
MICHAEL L. HOELTER, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-013630
Application 10/389,494

2
STATEMENT OF THE CASE
Edwin B. Fendel (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1-3, 6, 9, 12-14, 16, 17, 19-22, 24-26, 29, and
31-33.1 Notice of Appeal filed Nov. 10, 2005. Claims 11 and 18 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A golf shaft for attachment to a hosel of a club head, said
shaft comprising:
a first section comprising a first material and having a
hosel end and a first joint end, said first section having a linear
weight no greater than 2.4 g/in;
a second section comprising a second material and
having a butt end and a second joint end, said second joint end
being connected to said first joint end;
wherein said second material is less dense than said first
material;
wherein said first material has a shear modulus greater
than that of said second material; and
wherein said first and second sections have a torsional
stiffness no less than that of a 0.335” O.D., 0.020” thick, steel
tube.

1 Appellant purports to only appeal the rejection of claims 1, 17, and 24, and
specifically states “[c]laim 19 is not being appealed.” App. Br. 4; see also id.
at 2. However, the claims that purportedly are not being appealed, including
claim 19, have not been canceled (see id. at 2), and therefore all of the
rejected claims are before us for a decision on the pending rejections.
Appeal 2009-013630
Application 10/389,494

3
THE REJECTIONS
The following Examiner’s rejection is before us for review:
Claims 1, 6, 9, 12-14, 17, 20-22, 24, 26, 29, and 31-33 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Pompa (US 4,836,545,
iss. June 6, 1989), Meredith (US 5,018,735, iss. May 28, 1991), and
Akatsuka (US 5,685,783, iss. Nov. 11, 1997).2

Additionally, the Examiner made all four of the below-listed
rejections in the Final Rejection. Final Rej. (mailed July 5, 2005) 4-6. The
Examiner maintains all of these rejections. Office Communication mailed
Nov. 6, 2007 (hereinafter “Replacement Grounds of Rejection”) 4-6. On
appeal, Appellant does not address these four rejections. Cf. App. Br. 4
(listing only the Pompa/Meredith/Akatsuka rejection as the “Ground[] of
Rejection for Review on Appeal.”) As such, Appellant has waived any
argument of error, and we summarily sustain the following four rejections.
See In re Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002) (holding that the
Board did not err in sustaining a rejection under 35 U.S.C. § 112, second
paragraph, when the applicant failed to contest the rejection on appeal).
1. Claims 2 and 25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pompa, Meredith, Akatsuka, and Desbiolles (US
5,184,819, iss. Feb. 9, 1993);

2 In addition, the Examiner lists the following as “not relied on but cited as
to develop what is known in the art by one skilled in the art at the time of the
invention” (Office Communication mailed July, 10, 2009; see Ans. 11):
Hubert (US 6,017,280, filed Dec. 11, 1997, iss. Jan. 25, 2000), McKeighen
(US 3,969,155, iss. July 13, 1976), and Melvin (US 5,190,291, iss. Mar. 2,
1993).
Appeal 2009-013630
Application 10/389,494

4
2. Claim 3 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pompa, Meredith, Akatsuka, Desbiolles, Shenoha (US
5,971,865, iss. Oct. 26, 1999), and Cheng (US 5,465,959, iss. Nov. 14,
1995);
3. Claim 16 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pompa, Meredith, Akatsuka, and Gibson (US 2,023,131,
iss. Dec. 3, 1935); and
4. Claim 19 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pompa and Meredith.

OPINION
Appellant argues independent claims 1, 17, and 24 as a group. App.
Br. 4-8. We select claim 1 as representative, and claims 17 and 24 stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). Appellant does not
present arguments for dependent claims 6, 9, 12-14, 20-22, 26, 29, and 31-
33, and thus those claims also stand or fall with claim 1.
Appellant’s claim 1 recites a golf club shaft comprising two sections,
and calls for the sections to be of different materials and to have certain
characteristics such as a particular linear weight and torsional stiffness.
Appellant discloses that the first section may be, for example, steel or other
metal alloys, and the second section may be, for example, a composite
material of graphite fiber/resin. Spec. 11, 13-14.
The Examiner correctly found that Pompa discloses a golf club shaft
having a first section of “any of the standard high strength metal alloys
commonly used in the golf shaft construction” and a second section of a
composite graphite material. Replacement Grounds of Rejection at 2 (citing
Appeal 2009-013630
Application 10/389,494

5
Pompa, col. 2, ll. 37-41, 55-61). The Examiner also correctly found that
Pompa teaches that the metallic section may be titanium. Id. (citing Pompa,
claim 2). The Examiner found that Pompa is silent as to the recited
characteristics of linear weight and torsional stiffness. See id.; Ans. 16.
The Examiner turns to Meredith (a titanium shaft) and Akatsuka (a
composite shaft) for the dimensions and characteristics of the materials in
the first and second sections, respectively. See Replacement Grounds of
Rejection at 2-3; Ans. 12, 16. As to the titanium section, the Examiner
explains that:
Meredith was used to show typical teachings of dimensions for
a lower titanium section for a golf club shaft. Clearly Pompa
discloses a titanium lower section (Claim 2) and it is going to
have suitable and obvious dimensions. The examiner believes
that Meredith discloses suitable and obvious dimensions.
Ans. 12. We find the Examiner’s position in this regard to be reasonable.
Appellant does not appear to argue that utilizing the Meredith and Akatsuka
dimensions and material characteristics in the Pompa titanium/composite
shaft would fail to yield a golf club shaft having the characteristics and
features of the claimed invention. Cf. App. Br. 6 n.2 and corresponding text
(stating that “Appellant has chosen not to dispute” the Examiner’s position
that “that tip section of the titanium shaft disclosed in Meredith would have
the claimed features.”) We have considered all of Appellant’s arguments
against the rejection, but are not persuaded that the Examiner’s rejection is
in error. As such, we agree with the Examiner’s conclusion that claim 1 is
unpatentable over Pompa in view of Meredith and Akatsuka.
We note that Appellant attributes much significance to the problem to
which he addressed his efforts. E.g., App. Br. 5-6; Reply Br. 5-6. Appellant
Appeal 2009-013630
Application 10/389,494

6
appears to suggest that the prior art references must specifically discuss and
disclose the same solution to the same problem in order for the rejection to
have adequate motivation to modify the primary reference. App. Br. 5-6.
This is incorrect, as the Examiner need not “look only to the problem the
[Appellant was] trying to solve.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S.
398, 420 (2007); see also id. at 419 (“In determining whether the subject
matter of a patent claim is obvious, neither the particular motivation nor the
avowed purpose of the patentee controls.”)

DECISION
The decision of the Examiner to reject claims 1-3, 6, 9, 12-14, 16, 17,
19-22, 24-26, 29, and 31-33 is affirmed.
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

mls