11211537 (B.P.A.I. Mar. 27, 2012)

Ex Parte Gobush

Board of Patent Appeals and InterferencesMar 27, 2012

11211537 (B.P.A.I. Mar. 27, 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. 11/211,537 08/26/2005 William Gobush 5222-031US01 7398 79175 7590 03/27/2012 MURPHY & KING PROFESSIONAL CORPORATION 1055 Thomas Jefferson Street, NW Suite 400 WASHINGTON, DC 20007 EXAMINER BLAU, STEPHEN LUTHER ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 03/27/2012 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 WILLIAM GOBUSH ___________ Appeal 2010-010492 Application 11/211,537 Technology Center 3700 ____________ Before ANTON W. FETTING, BIBHU R. MOHANTY, and MEREDITH C. PETRAVICK, Administrative Patent Judges. PETRAVICK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-010492 Application 11/211,537 2 STATEMENT OF THE CASE William Gobush (Appellant) seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. 1 THE INVENTION This invention is “a method for predicting a golfer’s ball striking performance.” Spec. 3:30-31. Claim 8, reproduced below, is illustrative of the subject matter on appeal (bracketed lettering has been added). 8. A method for predicting a golfer's ball striking performance, comprising: [A] determining a plurality of pre-impact swing properties for the golfer based on the golfer's swing with a golf club, the plurality of pre- impact swing properties including an impact location, an orientation of a golf club head, and the golf club head speed; [B] determining a plurality of equipment properties including a plurality of golf ball properties and plurality of golf club properties, the plurality of golf ball properties including a coefficient of restitution at a plurality of velocities 1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,” filed Mar. 5, 2010) and the Examiner’s Answer (“Ans.,” mailed Apr. 19, 2010). Appeal 2010-010492 Application 11/211,537 3 and a time of contact at a plurality of velocities, and the plurality of club properties including a center of mass of the club head, a center of a club face, and a moment of inertia; [C] determining the effect of properties of a shaft of the golf club on the impact of the golf ball with the club head, the properties of the shaft including a longitudinal force component and a torque component; and [D] generating a predicted trajectory and a plurality of predicted ball launch conditions of the golf ball if struck with the golf club based on the properties of the shaft, the plurality of equipment properties, and the plurality of pre-impact swing properties; [E] wherein the predicted trajectory and predicted ball launch conditions account for the effects of a golf club shaft. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Long Gobush Voges US 6,454,664 B1 US 6,758,759 B2 US 7,166,035 B2 Sep. 24, 2002 Jul. 6, 2004 Jan. 23, 2007 Ralph Simon, The Development of a Mathematical Tool for Evaluating Golf Club Performance, ASME Design Eng’r Conf., 17- 35 (May 1967) (Hereinafter, Simon). Appellant’s own Admissions on page 11, lines 1-14 of the Response filed April 30, 2008 (Hereinafter, AOA). The following rejections are before us for review: Appeal 2010-010492 Application 11/211,537 4 1. Claims 8, 10, 12, 13, 15, and 17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Long, Simon, and Voges. 2. Claims 9, 11, 14, 16, and 18-20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Long, Simon, Voges, and AOA. 3. Claims 1-7 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Long, Simon, Voges, AOA, and Gobush. ISSUE The issue is whether the Examiner erred in rejecting claims 8, 10, 12, 13, 15, and 17 as unpatentable under 35 U.S.C. § 103(a) over Long, Simon, and Voges. Specifically, the issue is whether the prior art teaches the steps marked A and D above. The rejection of claims 9, 11, 14, 16, and 18-20 under 35 U.S.C. § 103(a) as being unpatentable over Long, Simon, Voges, and AOA and the rejection of claims 1-7 rejected under 35 U.S.C. § 103(a) as being unpatentable over Long, Simon, Voges, AOA, and Gobush also turn on this issue. ANALYSIS The rejection of claims 8, 10, 12, 13, 15, and 17 under 35 U.S.C. § 103(a) as being unpatentable over Long, Simon, and Voges The Appellant does not provide separate arguments as to the patentability of dependent claims 10, 12, 13, 15, and 17 (see Br. 10-11) and therefore, these claims will stand or fall with their independent claim 8. 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appeal 2010-010492 Application 11/211,537 5 The Appellant argues that none of the prior art teaches the determining a plurality of pre-impact swing properties recited in the step marked A above and the generation of a predicted trajectory of the golf ball based on the plurality of pre-impact swing properties in the step marked D above. Br. 10-11. Specifically, the Appellant argues: 1) that Long does not mention determining pre-impact swing properties based on a golfer’s swing and 2) that Voges is used to determine pre-impact swing properties of a golfer’s swing to analyze swing flaws and not to generate a predicted trajectory and predicted ball launch conditions. Br. 10. We are not persuaded that the Examiner erred. The Appellant’s argument does not address the Examiner’s findings or articulated rationale in establishing a prima facie case of obviousness. The Examiner reasons that, given: 1) Long’s teaching of using head speed, the head’s center of gravity orientation with respect to the center of the ball, the center of face and heel- toe droop as fixed parameters in a computer model (Ans. 12); 2) Simon’s teaching of using impact location for a realistic mathematical model for evaluating golf club performance (Ans. 13); and 3) Voges’ teaching of determining swing parameters from the swing of a club by an actual golfer (Ans. 12), that the claimed step of determining pre-impact swing properties (i.e., step A) would have been obvious to one of ordinary skill in the art. See Ans. 12-14. The Examiner also found the Long’s column 4, lines 52-57 taught generating a predicted trajectory or predicted ball launch conditions suing a computer model. See Ans. 4. See also Ans. 14. The Appellant does not dispute the Examiner’s findings as to the teaching of the prior art nor do they dispute the Examiner’s articulated rationale in concluding that the limitations at issue are obvious. We note Appeal 2010-010492 Application 11/211,537 6 that the Appellant did not file a Reply Brief. “It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for nonobvious distinctions over the prior art.” In re Baxter Travenol Labs, 952 F.2d 388, 391 (Fed. Cir. 1991). See also In re Wiseman, 596 F.2d 1019, 1022 (CCPA 1979) (arguments must first be presented to the board). Therefore, we find the Appellant’s argument unpersuasive in overcoming the Examiner’s prima facie showing of obviousness. Accordingly, the rejection of claims 8, 10, 12, 13, 15, and 17 under 35 U.S.C. § 103(a) as being unpatentable over Long, Simon, and Voges is affirmed. The rejection of claims 9, 11, 14, 16, and 18-20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Long, Simon, Voges, and AOA and the rejection of claims 1-7 under 35 U.S.C. § 103(a) as being unpatentable over Long, Simon, Voges, AOA, and Gobush The Appellant argues against the rejection of claims 1-7, 9, 11, 14, 16, and 18-20 for the same reasons used to argue against the rejection of claim 8. Br. 11. Accordingly, because we found them unpersuasive as to that rejection, we find them equally unpersuasive as to error in the rejection of claims 1-7, 9, 11, 14, 16, and 18-20. The rejection of claims 9, 11, 14, 16, and 18-20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Long, Simon, Voges, and AOA and the rejection of claims 1-7 under 35 U.S.C. § 103(a) as being unpatentable over Long, Simon, Voges, AOA, and Gobush is affirmed. Appeal 2010-010492 Application 11/211,537 7 DECISION The decision of the Examiner to reject claims 1-20 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 hh