Ex Parte Frame et al

Patent Trials and Appeals Board

Mar 18, 2019

14963059 - (D) (P.T.A.B. Mar. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/963,059 12/08/2015 Nick Frame
23552 7590 03/20/2019
MERCHANT & GOULD P.C.
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
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.
04878.0065US01 4665
EXAMINER
PIERCE, WILLIAM M
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
03/20/2019 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):
USPT023552@merchantgould.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICK FRAME and RICHARD L. CLEGHORN
Appeal2018-006053
Application 14/963,059 1
Technology Center 3700
Before LINDA E. HORNER, DANIELS. SONG, and BRETT C. MARTIN,
Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's rejections of claims 1-9, 19, and 20. Final Office Action (June
14, 2017, "Final Act."). 2 We have jurisdiction under 35 U.S.C. § 6(b).
The Final Office Action rejects the pending claims under 35 U.S.C.
§§ 102(a)(2) and 103 as being either anticipated by, or unpatentable over,
1 Acushnet Company ("Appellant") is the applicant under 37 C.F.R. § 1.46
and is identified as the real party in interest. Appeal Brief (November 14,
2017, "Appeal Br.") 3.
2 Claims 10-18 are pending and withdrawn from consideration. Final
Act. 1.
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Application 14/963,059
the prior art. Appellant contests the anticipation and obviousness rejections
arguing that the Examiner erred in finding that the cited prior art teaches
certain features of the claims. The Final Office Action also rejects certain
claims under 35 U.S.C. §§ 112(a), (b) as failing to comply with the written
description and enablement requirements and as being indefinite. Appellant
argues that the Specification contains adequate disclosure to show
possession of the claimed subject matter and that a person having ordinary
skill in the art would be able to practice the claimed invention without undue
experimentation. Appellant also argues that the Examiner improperly
confuses breadth with indefiniteness. The Final Office Action also rejects a
dependent claim under 35 U.S.C. § 112(d), which Appellant does not
contest.
For the reasons explained below, we agree with Appellant's
arguments regarding the impropriety of the contested rejections. Thus, we
do not sustain the rejections under 35 U.S.C. §§ 102(a)(2), 103, 112(a), and
112(b). We summarily sustain the uncontested rejection under 35 U.S.C.
§ 112(d). Thus, we AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
The claimed subject matter on appeal relates to a golf club head and
method for manufacturing a golf club head. When a golf club head strikes a
golf ball, it emits sound due to vibration of the components of the golf club
head. Specification (December 8, 2015, "Spec.") ,r 1. According to
Appellant's Specification, some golf clubs produce sounds that are
displeasing to a user, and the emission of sounds may influence a golfer's
opinion of the golf club. Id. The goal of the claimed subject matter is to
alter the sound properties of the club head to reduce undesirable sound
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frequency. Id. ,r 22. As described in the Specification, by controlling the
size and location of stranded structures in the golf club head, the components
of the club head are "tuned" to produce a more desirable sound. Id.
Claims 1 and 19 are the independent claims. Claim 1 is illustrative of
the subject matter on appeal and is reproduced below with the disputed
limitations shown in italics for emphasis.
1. A golf club head comprising:
a crown;
a club face connected to the crown; and
a sole connected to and disposed opposite the crown,
wherein the crown, the club face, and the sole at least partially
define an interior void, and wherein at least one of the crown
and the sole define:
at least one stranded structure having an
unsupported section and at least one supported end,
wherein the at least one stranded structure is an
elongated cantilevered structure or a beam structure,
wherein the unsupported section of the at least one
stranded structure is separated from at least one of the
crown and the sole by a through-hole and the at least one
supported end is fixed to the at least one of the crown and
the sole, and wherein the through-hole is filled with a
flexible polymer.
Corrected Claims Appendix (January 5, 2018, "Claims Appendix") at 3.
REJECTIONS
The Final Office Action includes the following rejections:
1. Claims 1-3, 6, 8, and 19 are rejected under 35 U.S.C. § 102(a)(2)
as anticipated by Takagi (US 9,421,434 B2, issued August 23,
2016). Final Act. 6-7.
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2. Claims 4, 5, 7, and 9 are rejected under 35 U.S.C. § 103 as being
unpatentable over Takagi. Id. at 7-8.
3. Claims 9 and 20 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description and enablement requirements.
Id. at 4-5.
4. Claims 9 and 20 are rejected under 35 U.S.C. § 112(b) as being
indefinite. Id. at 3-4.
5. Claim 6 is rejected under 35 U.S.C. § 112(d) as being of improper
dependent form for failing to further limit the subject matter of the
claim upon which it depends. Id. at 5-6.
ANALYSIS
Rejection under 35 U.S.C. § 102(a)(2)
The Examiner found that Takagi discloses a golf club head crown
with an elongated cantilevered or beam stranded structure (bottom surface
96 of Takagi's step part 9) having an unsupported end (side edge 71 of
penetration hole 7) and a supported end (at step side surface 95 of step
part 9), as recited in independent claims 1 and 19. Final Act. 6 ( citing
Takagi, Fig. 3). Appellant argues that Takagi's penetration hole (7) does not
result in the claimed stranded structures because the border of the hole is a
fully supported ledge or step. Appeal Brief (November 14, 2017, "Appeal
Br.") at 16 ( citing Fig. 5). In other words, Appellant argues that Takagi' s
bottom surface 96 does not have an unsupported section, as claimed.
Claims 1 and 19 define a "stranded structure" as a structure having
"an unsupported section and at least one supported end." Claims 1 and 19
further narrow the scope of "stranded structure" to be limited to either "an
elongated cantilevered structure or a beam structure." Appellant's
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Specification describes that "a cantilevered strand is a stranded structure
supported at one end, whereas a beam strand is a stranded structure
supported on at least two ends." Spec. ,r 22; Figs. 2A, 2B, 2C, 2E, 3
(showing cantilevered stranded structures); Fig. 2F (showing a beam
stranded structure), and Fig. 2D ( showing a club having both cantilevered
stranded structures and a beam stranded structure). Thus, one having
ordinary skill in the art would understand claims 1 and 19, when read in light
of Appellant's Specification, to require a stranded structure that is either an
elongated cantilevered structure having one supported end and an
unsupported section, or a beam structure having opposite supported ends and
an unsupported center section.
Claims 1 and 19 also recite that "the unsupported section of the at
least one stranded structure is separated from at least one of the crown and
the sole by a through-hole." Each stranded structure shown in Appellant's
Specification includes an unsupported section of the structure that is formed
by a gap or gaps that traverse two sides of the structure to result in an
unsupported section of the structure being separated from the remainder of
the sole. Spec. ,r,r 28, 30, 32-33, 35, 36 (describing Figs. 2A, 2C, 2D, 2E,
2F, respectively). Thus, what makes a section of the stranded structure
"unsupported" is that the section is separated from the surrounding golf club
head portion (e.g., the sole or crown) by a gap. With this understanding of
the claimed "stranded structure" in mind, we tum to the prior art.
Takagi' s surface 96 is neither an elongated cantilever structure nor a
beam structure having an unsupported portion, as claimed. Surface 96 is
shown in Figure 5 of Takagi, reproduced below.
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Fig. 5
Figure 5, reproduced above, shows an exploded perspective view of
the portion on the crown part of the golf club head in the vicinity of
penetration hole 7. Takagi, col. 2, 11. 49-51. Takagi shows a crown
containing trapezoidal indented step part 9 formed by step side surface 95,
which is connected at its top end around the entire perimeter to the
surrounding outer crown surface 51 and at its bottom end to bottom surface
96 of step part 9. Id. at col. 3, 11. 23-29. In the center of bottom surface 96
of step part 9 is trapezoidal penetration hole 7. Id. at col. 3, 11. 30-31, Fig. 5.
Because Takagi's step part 9 is connected to the remainder of crown
surface 51 around its entire periphery, bottom surface 96 does not have an
unsupported section that is separated from the remainder of crown surface
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51 by a gap. The single penetration hole 7 in bottom surface 96 does not
form an unsupported section because it does not traverse along two sides of
a section of bottom surface 96 so as to render a portion of it unsupported.
Rather, each portion of bottom surface 96 that has an edge of penetration
hole 7 extending along one side, is also connected to crown surface 51 along
its opposite side via step side surface 95. Although the cross-sectional view
of Figure 3 might appear, if viewed in isolation, to show an elongate
cantilevered strand, when bottom surface 96 is viewed in its entirety in
Figure 5, it is clear that bottom surface 96 does not contain a stranded
structure having an unsupported section, as claimed. For this reason, we do
not sustain the rejection under 35 U.S.C. § 102(a)(2) of independent claims
1-3, 6, 8, and 19 as anticipated by Takagi.
Rejection under 35 U.S.C. § 103
The rejection of dependent claims 4, 5, 7, and 9 as unpatentable over
Takagi is based on the finding that Takagi discloses the stranded structure
recited in claim 1, from which these claims depend. Final Act. 7-8. For the
same reasons discussed above, we do not sustain the rejection under
35 U.S.C. § 103 of claims 4, 5, 7, and 9 as unpatentable over Takagi.
Rejection under 35 U.S.C. § l l 2(a)
The Examiner rejected dependent claims 9 and 20 for lack of adequate
written description and enabling disclosure. 3 Final Act. 4-5. Claim 9
depends indirectly4 from claim 1 and recites, "wherein the flexible polymer
3 The Examiner states in the Answer that the rejections are discussed
together because both rejections "stem from the lack of an adequate written
description consistent to the scope of the claims." Ans. 20.
4 Claim 9 depends from claim 8, which depends from claim 1. Claim 8
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is disposed so as to reduce a frequency of 2-5 kHz of at least one of the
plurality of the inherent vibration frequency regions from the known
inherent frequency." Claims Appendix 5. Claim 20 depends from method
claim 19 and recites the additional step of, "identifying a portion of at least
one of the crown and the sole that emits a sound frequency between 300 Hz
to 3 kHz when the golf club head strikes a golf ball, and wherein the
removing operation removes a part of the identified portion." Id. at 8.
We do not sustain these enablement and written description rejections
because they are based on an unreasonably broad interpretation of claims 9
and 20. For instance, the Examiner determined that the claimed subject
matter is not enabled because "one skilled in the art would not know what
shapes, materials or structures need to be modified to obtain the desired
performance properties and functions of the head" and "the condition and
variables, such as materials, temperature, ball hardness and etc., under which
such properties are to be achieved could not be determined." Final Act. 4;
see also id. at 5 ( discussing undue experimentation because "the
combinations of structures, shapes, materials, and elements of the club head
necessary to meet the claimed frequency ranges are infinite").
We disagree with the Examiner's reading of the claims. Specifically,
as described in Appellant's Specification, the addition of the stranded
structure is made to an existing golf club head, the sole of which has
inherent vibration frequency regions that result from a golf ball strike.
Spec. ,r 26. Thus, claim 9 is directed to reduction of this inherent vibration
recites, "[t]he golf club head of claim 1, wherein the sole comprises a
plurality of inherent vibration frequency regions, each having a known
inherent frequency." Claims Appendix 5.
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frequency of the sole of the golf club head when striking the same ball under
the same conditions using a golf club head having the claimed
modifications.
The Examiner states that the portion of claim 20 that recites
"'identifying a portion of the crown and sole that emits a sound frequency'
that is undesirable" is "arbitrary and subjective" because the Specification
does not disclose "how this portion is to be identified." Ans. 20-21.
Appellant argues that the limitation is adequately supported and enabled by
the description provided in paragraphs 25 and 45 of Appellant's
Specification. Appeal Br. 27-28. 5
Paragraph 25 of the Specification describes a vibration frequency
region as a region that "vibrates at a particular frequency range and for a
particular duration upon the golf club head 100 striking a golf ball." The
Specification discloses that vibration frequency regions "may be identified
through acoustic and optical techniques, such as measurements made with a
laser vibrometer and modal analysis based on simulations." Spec. ,r 25. The
locations, shapes, and number of vibration frequency regions can change
depending on the constructions of the golf club head. Id.
5 Appellant also cites to a June 16, 2017 article in Popular Science as
support for the proposition that sophisticated tools and technology for
identification of sound emitted from a golf club head are used in the art.
Appeal Br. 28. We do not consider this evidence because it is not clear from
the Official File Wrapper that it was made of record prior to filing this
appeal, and Appellant has not shown good and sufficient reasons why the
evidence is necessary and was not earlier presented. 37 C.F.R. § 4I.33(d)
(providing that evidence filed after the date of filing an appeal will not be
admitted unless the examiner determines that the evidence overcomes all
rejections under appeal and a showing was made of good and sufficient
reasons why the evidence is necessary and was not earlier presented).
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Paragraph 45 of the Specification describes an example method,
shown in Figure 6, for manufacturing a golf club head. The Specification
describes that the method begins with identifying targeted vibration
frequency regions of a component of a standard golf club head, such as a
region producing an undesirable frequency. Spec. ,r 45. The Specification
describes that "[ s ]uch identification may be accomplished via acoustic and
optical measurement techniques, as discussed above and understood by
those having skill in the art." Id. The Specification provides that regions
that produce a sound primarily within the range of 300 Hz to 3kHz, or that
produce a sound at frequencies that are "too high," may be considered to be
undesirable. Id.
We agree with Appellant that the Specification contains an adequate
description of how one skilled in the art would go about identifying a portion
of a crown or a sole that emits a sound frequency within the claimed range
when the golf club head strikes a golf ball. Specifically, contrary to the
Examiner's interpretation of the claim, the claim language recites a
particular range of 300 Hz to 3 kHz and does not broadly recite a region
producing generally an undesirable frequency. Further, the Specification
defines each vibration frequency region as a region that vibrates at a
particular frequency range and for a particular duration upon the golf club
head 100 striking a golf ball and describes that those skilled in the art would
understand that measurements of sound frequency emitted during striking
could be made via known acoustic and optical measurement techniques,
such as measurements made with a laser vibrometer and modal analysis
based on simulations. Spec. ,r,r 25, 45.
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For these reasons, we find adequate written description support in
Appellant's original disclosure for the claim elements recited in dependent
claims 9 and 20. Also, we disagree with the Examiner's reading of the claim
language as being so broad as to require undue experimentation to make and
use the subject matter recited in claims 9 and 20. Thus, we do not sustain
the written description and enablement rejections of claims 9 and 20 under
35 U.S.C. § 112(a).
Re} ection under 3 5 U.S. C. § 112 (b)
The Examiner rejected claims 9 and 20 as indefinite because "the
structure required to perform the recited function is not clear." Final Act. 3.
The Examiner found that many variables in the club head and conditions
have an effect on the frequency of a club head, and "[ w ]ithout knowing the
original frequencies of a club head and the variables under which they are
being evaluated, one would not know which variables would and could
reduce the frequency of a club head by the recited ranges." Id.
Appellant argues that one having skill in the art would have
understood how to build a club meeting the limitations of claims 9 and 20
because the claims "recite clear frequency ranges that can be readily
identified by one having skill in the art." Appeal Br. 31. Appellant argues
that "whether a particular configuration meets the limitation is easily
determinable through acoustic analysis of the golf club" and the outcome is
"testable, simple, and clear." Reply Br. 14.
We agree with Appellant that the limitations of claims 9 and 20 are
clear. As discussed above, claim 9 recites a reduction in the inherent
vibration frequency of the sole of an unmodified golf club head through the
addition of a stranded structure and flexible polymer to form a modified golf
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club head. Although golf club heads may vary, the starting point for
determining whether claim 9 has been met is an unmodified golf club head
to which the stranded structure and flexible polymer have been added. Thus,
the scope of the claim is clear to one having ordinary skill in the art upon
reading the Specification. Claim 20 is also clear. As discussed in
Appellant's Specification, the step recited in claim 20 can be performed
using acoustic and optical measurement techniques, such as measurements
made with a laser vibrometer and modal analysis based on simulations,
known to those having ordinary skill in the art. For these reasons, we do not
sustain the rejection of claims 9 and 20 under 35 U.S.C. § 112(b ).
Rejection under 35 U.S.C. § l l 2(d)
The Examiner rejected dependent claim 6 as being of improper
dependent form because it fails to further limit the subject matter of claim 1.
Final Act. 5. Appellant does not contest this rejection in the briefs. 6 Thus,
we summarily sustain the rejection of claim 6 under 35 U.S.C. § 112(d).
DECISION
We sustain the rejection of claim 6 under 35 U.S.C. § 112(d).
We do not sustain:
• The rejection of claims 1-3, 6, 8, and 19 under 35 U.S.C.
§ 102(a)(2);
• The rejection of claims 4, 5, 7, and 9 under 35 U.S.C. § 103;
and
6 Appellant improperly attempted to cancel claim 6 by adding the notation
"canceled" in the original Claims Appendix filed with the Appeal Brief.
Claim 6 is pending and remains rejected under 35 U.S.C. § 112(d).
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• The rejections of claims 9 and 20 under 35 U.S.C. §§ 112(a)
and 112(b).
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)(l )(iv).
AFFIRMED-IN-PART
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