Ex Parte Goldsmith et al

Board of Patent Appeals and Interferences

Jan 23, 2009

10759525 (B.P.A.I. Jan. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte EDWARD M. GOLDSMITH and CHRISTOPHER K. DELAP
__________

Appeal 2008-3526
Application 10/759,525
Technology Center 3700
__________

Decided: January 23, 2009
__________

Before ERIC GRIMES, RICHARD M. LEBOVITZ, and STEPHEN
WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a hybrid
hockey stick blade. The Examiner rejected the claims for obviousness. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appeal 2008-3526
Application 10/759,525

STATEMENT OF THE CASE
The invention relates to hockey stick blades. (Spec. 4.) Composite
blades are said to have advantages over wood blades. (Id.) Hybrid hockey
stick blades are described. (Spec. 4-6.)
Claims 30-37, 40, 42-49 and 108-110, which are all the pending
claims, are on appeal. The claims have not been argued separately and
therefore stand or fall together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 30 is
representative and reads as follows:
30. A hybrid hockey stick blade adapted to being removably
coupled to a hockey stick shaft comprising:

a composite paddle portion comprising:
i. an elongate member extending from a tip section to a heel
section and having a front face and a back face;
ii. the heel section comprising front-side and back-side facing
surfaces that are recessed relative to adjacent portions of the front and back
faces;
iii. the elongate member further comprising an inner foam core and
one or more plies disposed within a hardened resin matrix material
overlaying the inner foam core, wherein the one or more plies comprise
fibers aligned in one or more defined directions; and

a wooden hosel portion comprising:
i. an adapter member constituted at least in part of wood and
extending longitudinally from a first end section to a second end section;
ii. the first end section includes a slot wherein the recessed
surfaces of the heel section are received and permanently coupled thereto;
and
iii. the second end section being adapted for receipt within a
tubular portion of a hockey stick shaft,

wherein a portion of said fibers being interposed between one or more
of the recessed heel section surfaces and an overlying inner surface defining
the slot in the first end-section of the hosel portion.
2
Appeal 2008-3526
Application 10/759,525

The claims were rejected for obviousness as follows:
Claims 30-37, 40, 42-49 and 108-110 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Christian1 in view of Tiitola.2

OBVIOUSNESS
The Examiner concluded the claims would have been obvious over
the combined teachings of the Christian and Tiitola patents. The Examiner’s
position is that Christian disclosed the claimed blade except for the inner
foam core. (Ans. 3.) The Examiner found that Tiitola disclosed a foam core
blade or “paddle” of better quality than wood blades such as Christian’s. Id.
The Examiner concluded it would have been obvious to improve the quality
of Christian’s blade with Tiitola’s foam core blade. Id. The Examiner
concluded that joining Tiitola’s fiber composite paddle to Christian’s hosel3
in the manner described by Christian would cause the fibers of Tiitola’s
paddle to be interposed between the recessed heel section surfaces and the
hosel slot. (Id.; Ans. 7.) The Examiner found Appellants’ evidence of
commercial success did not establish a nexus between the features of the
claims and the items sold. (Ans. 8-9.) According to the Examiner,
paragraphs 34-39 of the declaration offering evidence on commercial
success do not include a number of the features of claim 30, and Appellants

1 U.S. Patent No. 6,039,661, issued to Christian et al., Mar. 21, 2000.
2 U.S. Patent No. 5,407,195, issued to Tiitola et al., Apr. 18, 1995.
3 A “hosel” is the upward extension of the hockey bade from the heel which
acts as blade connection member (Spec. 2: 17-19).
3
Appeal 2008-3526
Application 10/759,525

did not show that the success of the products was attributable to the
particular features claimed. Id.
Appellants contend that the Examiner erroneously assumed the claim
limitations existed in the prior art. (App. Br. 12.) Appellants argue that
these features are not taught or suggested: (i) a composite blade with a
recessed heel, (ii) fibers interposed between the recessed heel and the
wooden hosel, (iii) a wooden hosel permanently coupled to a composite
paddle and adapted for receipt within a tubular hockey stick shaft. (App. Br.
13.) Appellants summarize as follows: “the rejection simply fails to
identify the ‘known elements’ of the prior art, no doubt because the blades
of Tiitola et al. and Christian et al. do not contain the claimed features.”
(App. Br. 14.)
Appellants argue that the Examiner’s explanation for combining the
references is “conclusory and flawed” (Reply Br. 4-6), and that the Tiitola
reference teaches away from a recessed heel blade configuration. (Reply Br.
6-8.) According to Appellants, there was “no explicit reason to combine the
elements in the way the new invention does” (Reply Br. 8), and the
Examiner proposes to remove the very structural elements in Tiitola that
provide structural integrity (Reply Br. 9.) According to Appellants, the
evidence regarding commercial success establishes that the combination is
non-obvious. (App. Br. 17.)
The issues with respect to this rejection are:
• did the Christian and Tiitola references teach or suggest all the
elements of the claims;
4
Appeal 2008-3526
Application 10/759,525

• did the Examiner provide a sound reason explaining why one of
ordinary skill in the art would have combined the teachings of
Christian and Tiitola;
• did the Tiitola reference teach away from the claimed invention;
• did Appellants show a nexus between the novel features of the claims
and their sales; and
• did Appellants’ sales evidence establish nonobviousness?

FINDINGS OF FACT
1. Christian disclosed a “replacement blade for a hockey stick handle
with improved reinforcement in the area between the hozel [sic, hosel]
or connection end and between the hozel [sic, hosel] and the bottom
edge of the blade.” (Col. 2, ll. 43-48.)
2. Christian’s FIG. 3 showed the parts of a replacement hockey stick
blade comprising “a wooden bladestock 24, a wooden block 25 and a
wooden shaftstock 26.” (Col. 5, ll. 35-39.)
3. Christian’s “block 25 and the shaftstock 26 are formed from
conventional handle stock, are glued together along adjacent edges
and are provided with a generally tapered slot or mortise 28 as shown
[in Fig. 3].” (Col. 5, ll. 39-42.)
4. Christian’s “bladestock 24 is a generally flat, planar piece of wood
which is provided with a tongue area or tenon 29 of reduced thickness
for insertion into the slot 28 where it is retained by an appropriate
adhesive.” (Col. 5, ll. 42-46.)
5
Appeal 2008-3526
Application 10/759,525

5. Christian explained that “[t]he assembly and gluing of the pieces 24,
25 and 26 result in the rough blade configuration as illustrated in FIG.
4.” (Col. 5, ll. 46-48.)
6. After additional steps, Christian’s replacement blade is smooth sanded
or finished sanded “to provide the final finished shape.” (Col. 6, ll.
50-57.)
7. Following shape sanding, Christian’s replacement blade “can, if
desired, be provided with further fabric reinforcement over the
exterior surface of the blade 15 and a portion of the shaft 16,” with “a
tubular braid such as that shown by reference character 41 of FIG. 8
or sheets, or wrappings of fiberglass or other reinforcement material,”
and “the blade is again smooth sanded.” (Col. 6, ll. 57-67.)
8. Christian disclosed “a composite (fiber reinforced plastic and wood)
blade in combination with a wood hosel (25, 26) and a tubular shaft.”
(Ans. 7.)
9. Christian does not disclose a paddle with an inner foam core.
10. Tiitola disclosed a composite blade construction for a hockey stick.
(Col. 1, ll. 5-13.)
11. Tiitola’s blade element is designed to be of better quality than known
blades, and to be “strong, durable, light-weight and of acceptable
stiffness.” (Col. 1, ll. 30-68.)
12. Tiitola’s composite blade element may comprise opposed face
members of fiber reinforced plastic material, and the face members
may be connected to each other with bridge members also of fiber
6
Appeal 2008-3526
Application 10/759,525

reinforced plastic material, the bridge members being part of a core
cavity member. (Col. 2, ll. 1-21.)
13. Tiitola’s core cavity may be filled with foam, as shown in FIG. 5-8.
(Col. 10, ll. 19-23.)
14. Tiitola disclosed the composite blade in combination with a wood
handle, see 3 in FIG. 1. (Col. 11, ll. 43-56.)
15. Tiitola instructed that “the heel end of the final intermediate structure
[paddle] may be configured as shown in FIG. 1 so as to matingly
contact with the lower end 3 of the handle section 1.” (Id.)
16. Tiitola further instructed that if the heel end of the paddle was
configured to matingly contact the lower end of the handle section,
“the excess reinforcing plastic layers 28 and 29 in this region of the
intermediate structure will be extended to overlap the handle portion
3.” (Id.; see Fig. 8 showing layers 28 and 29).
17. The “heel end” of Tiitola’s paddle corresponds to Christian’s tenon
29, and Tiitola’s “lower end 3” corresponds to the lower end of
Christian’s shaftstock 26.

PRINCIPLES OF LAW
Section 103 of Title 35 prohibits a patent when “the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.”
7
Appeal 2008-3526
Application 10/759,525

Obviousness is a question of law based on fact findings including: the
scope and content of the prior art; differences between the prior art and the
claims at issue; the level of skill in the art; and objective evidence of
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). The
obviousness or nonobviousness of the subject matter is determined against
that factual background. Id.; In re Kahn, 441 F.3d 977, 985 (Fed. Cir.
2006). The determination of obviousness is made with respect to the subject
matter as a whole, not separate pieces of the claim. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, ___, 127 S.Ct. 1727, 1734 (2007). A claim that
involves a combination of familiar elements according to known methods
that do no more than yield predictable results may have been obvious. KSR,
550 U.S. 398, ___, 127 S.Ct. at 1739.
What the prior art teaches, whether it teaches away from the
invention, and whether it motivates a combination of teachings from
different references are questions of fact. In re Fulton, 391 F.3d 1195, 1200
(Fed. Cir. 2004). When references are combined, “the question is whether
there is something in the prior art as a whole to suggest the desirability, and
thus the obviousness, of making the combination, not whether there is
something in the prior art as a whole to suggest that the combination is the
most desirable combination available.” Id. (internal quotation omitted). “A
suggestion or motivation to modify prior art teachings may appear in the
content of the public prior art, in the nature of the problem addressed by the
invention, or even in the knowledge of one of ordinary skill in the art.”
Princeton Biochemicals, Inc. v. Beckman Coulter, Inc., 411 F.3d 1332, 1338
(Fed. Cir. 2005). “A reference may be said to teach away when a person of
8
Appeal 2008-3526
Application 10/759,525

ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” In re Gurley,
27 F.3d 551, 553 (Fed. Cir. 1994). “[M]ere disclosure of alternative designs
does not teach away.” Fulton, 391 F.3d at 1201 (refusing to conclude that
prior art disclosure taught away from the claimed invention where the
disclosure did not “criticize, discredit, or otherwise discourage the solution
claimed”).
Commercial success “is relevant in the obviousness context only if
there is proof that the sales were a direct result of the unique characteristics
of the claimed invention—as opposed to other economic and commercial
factors unrelated to the quality of the patented subject matter.” In re Huang,
100 F.3d 135, 140 (Fed. Cir. 1996).

ANALYSIS
The Examiner combined the teachings of two prior art patents, both of
which disclosed replacement composite hockey stick blades. Whether the
combination is a modification of one blade or the other is immaterial. The
Examiner concluded that a person of ordinary skill in the art at the time of
the invention would have found it obvious to build a replacement composite
hockey stick blade incorporating Tiitola’s foam-core paddle into a blade
with Christian’s hosel in order to improve blade quality. (Ans. 3.)
Appellants contend that the prior art does not contain all the elements
of the claims and that these features are not taught or suggested in the prior
art: (i) a composite blade with a recessed heel, (ii) fibers interposed between
9
Appeal 2008-3526
Application 10/759,525

the recessed heel and the wooden hosel, (iii) a wooden hosel permanently
coupled to a composite paddle and adapted for receipt within a tubular
hockey stick shaft. (App. Br. 13.) Appellants also argue the rejection fails
to identify the “known elements” of the prior art blades, “no doubt because
the blades of Tiitola et al. and Christian et al. do not contain the claimed
features.” (App. Br. 14.)
The Examiner’s citations identify the elements of the prior art blades
and associate them with the claim language. (Ans. 3.) As to the three
features Appellants list, the Examiner found that when a blade such as
Tiitola’s is joined to the hosel in the manner disclosed by Christian, the
fibers of the blade necessarily have to be between the recessed heel section
and the slot. Id. That is, the Tiitola composite paddle would be formed with
a recessed heel in order to fit it into the slot in Christian’s wooden hosel. Id.
As both Christian and Tiitola disclose the blade permanently coupled and
adapted for receipt within a tubular stick, the combination would be no
different. The three elements listed are accounted for by the Examiner’s
explanation.
Appellants dispute the soundness of the combination, finding the
Examiner’s explanation “conclusory and flawed.” (Reply Br. 4-6.)
According to Appellants, Tiitola’s foam core has very little strength, and the
primary strength in Christian’s blade is derived from the wood construction.
(App. Br. 15.) There is no evidence in the record establishing as a fact that
Tiitola’s foam core has very little strength, and Appellants themselves quote
Tiitola as teaching that “the blade for a hockey stick must be extremely
strong.” (App. Br. 8.) The Examiner’s finding that Tiitola discloses a
10
Appeal 2008-3526
Application 10/759,525

paddle “designed to be of better quality than known blades such as
Christian’s” (Ans. 3), is supported by Tiitola’s disclosure of improved
quality. (FF11.)
Appellants also argue that Tiitola teaches away from a recessed-heel
blade configuration. (Reply Br. 6-8.) The Goldsmith Declaration opines
that there was no motivation to employ tongue and groove joint construction
at a heel region, and it would introduce lack of uniformity in the hitting
surfaces. (App. Br. 16.) Appellants cite “the hockey stick embodiment
shown in [Tiitola] FIG. 1,” as showing the handle being received by the
“intermediate structure,” which they say overlaps, or surrounds, the handle
structure. (Reply Br. 6-7.) This is contrasted with the claimed invention, in
which the hosel is configured to receive and overlap the blade. Id.
Tiitola’s description of FIG. 1 does not support Appellants’
interpretation. The text reads:
With respect to the hockey stick embodiment as shown in FIG. 1, the
heel end of the final intermediate structure may be configured as
shown in FIG. 1 so as to matingly contact with the lower end 3 of the
handle section 1. Thus the excess reinforcing plastic layers 28 and
29 in this region of the intermediate structure will be extended to
overlap the handle portion 3 . . . .

Col. 11, ll. 43-56 (emphasis added). Tiitola’s “matingly contact” could be
interpreted at least two ways: (i) the intermediate structure or paddle is
“matingly” inserted into the lower end of the handle (the Examiner’s
reading), or (ii) the lower end of the handle is “matingly” inserted into the
intermediate structure or paddle (Appellants’ reading). If Tiitola intended
option (ii), so that the paddle overlapped the lower end of the handle, there
would have been no “excess reinforcing plastic layers” (FF16) and no need
11
Appeal 2008-3526
Application 10/759,525

for Tiitola to give the instruction to extend the plastic reinforcing layers to
overlap the handle. Instead, option (i) is more consistent with the text, i.e.,
the paddle is to be inserted into the handle. Any lack of uniformity in the
surface is dealt with in part by plastic layers “extended to overlap the handle
portion.” As the Examiner found (Ans. 5-6.), the paddle necessarily would
have a recessed heel for that insertion as taught by Christian. (FF4.) One of
skill in the art would have understood Tiitola’s instruction using FIG. 1 “to
matingly contact [the paddle or intermediate structure] with the lower end 3
of the handle section” to have been equivalently illustrated by Christian’s
FIG. 3, where Christian’s paddle tenon 29 matingly contacts Christian’s
hosel slot 28. (FF17.) Retaining fibers on the recessed area of the Tiitola’s
paddle, corresponding to Christian’s tenon 29, would have been recognized
as necessary to the strength of the blade, and to have done otherwise would
have reduced the structural integrity of the blade. (Ans. 5-6.) See KSR,
127 S. Ct. at 1742 (“in many cases a person of ordinary skill will be able to
fit the teachings of multiple patents together like the pieces of a puzzle”.)
Appellants’ argument about fibers being placed outside the hosel and
causing a roughened surface is not persuasive. (App. Br. 16; Reply Br. 5-7.)
Christian taught the importance of a smooth blade. (FF7; FF6.)
Additionally, we find Tiitola’s FIG. 1 and Christian’s FIG. 8 to be very
similar. Christian’s instructions on smooth finishing would have been
followed by a person of ordinary skill in the art the time who wished to use
Christian’s hosel structure in a replacement blade, whether the paddle
portion was wood or Tiitola’s foam core and fiber material. There is no
evidence that artisans of the time would have ignored Christian’s
12
Appeal 2008-3526
Application 10/759,525

instructions. Appellants’ argument is not based on evidence. Instead the
argument seems to presume, contrary to the prior art instructions, that the
ordinary artisan at the time lacked an awareness that a smooth blade was
desired, or that the ordinary artisan lacked the skill to combine Tiitola’s
paddle with Christian’s hosel so as to make a smooth blade. Our reviewing
court rejected a similar argument because the argument failed to
acknowledge ordinary skill in the art. In re Sovish, 769 F.2d 738, 743 (Fed.
Cir. 1985) (“[Appellants] are assuming that one of ordinary skill would not
appreciate that Esher's hollow member 14 could be removed if it is not
wanted, as insulation or otherwise, and that it would not be removed by a
skilled worker who wished to allow heat recovery of the conduit in which it
was placed. This argument presumes stupidity rather than skill.”) (Emphasis
in original.). “[W]hen a patent ‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the combination is
obvious.” KSR, 550 U.S. 398, ___, 127 S. Ct. at 1740. We agree with the
Examiner’s reasoning and find that Tiitola does not “teach away” from the
combination. See Gurley, 27 F.3d at 553.
According to Appellants, the evidence regarding commercial success
establishes the non-obviousness of the combination. (App. Br. 17-21.) The
objective evidence of sales did not persuade the Examiner to conclude the
invention would have been nonobvious because, according to the Examiner,
Appellants did not establish a nexus between what was sold and the
limitations of claim 30. (Ans. 8-10). Even though commercial
embodiments of an invention might have enjoyed commercial success,
13
Appeal 2008-3526
Application 10/759,525

Appellant must link that commercial success to the features of its invention
that were not disclosed in the prior art. See J.T. Eaton & Co. v. Atlantic
Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997) (“asserted
commercial success of the product must be due to the merits of the claimed
invention beyond what was readily available in the prior art”); Asyst
Technologies, Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008).
Specifically, the Examiner found that the Goldsmith Declaration gives
“a general description of the blade/shaft connection in paragraph 39 which
does not even include a number of the argued features of the device of claim
30, such as the limitation of the fiber layers between the recessed portion
and the slot.” (Ans. 9-10). We agree. A major issue of nonobviousness
between the Examiner and Appellants is the limitation “fibers being
interposed between one or more of the recessed heel section surfaces and an
overlying inner surface defining the slot in the first end-section of the hosel
portion.” The Declaration does not provide “hard evidence” that the blades
sold had this limitation and does not provide “proof that the sales were a
direct result of the unique characteristics of the claimed invention.” Huang,
100 F.3d at 140.
Appellants argue that “the direct evidence of applicant’s increasing
sales . . . in an otherwise level or declining market for directly competing
replacement blades, establishes the necessary nexus.” (App. Br. 20.) That is
not what “nexus” means. It is well-settled that a showing of commercial
success must establish that the success of the products was attributable to the
subject matter that the proponent contends was nonobvious. In re Graselli,
713 F.2d 731, 743 (Fed. Cir. 1983); Asyst Techs., Inc. v. Emtrak, Inc.,
14
Appeal 2008-3526
Application 10/759,525

544 F.3d 1310, 1316 (Fed. Cir. 2008); In re DBC, 545 F.3d 1373, 1384
(Fed. Cir. 2008). The nexus to be established by “hard evidence” is that the
sales are due to the nonobvious subject matter; the nexus is not inferred from
sales, which are not given weight unless the appropriate nexus is first
established. Huang, 100 F.3d at 140.
Finally, Appellants argue the rejection is “in violation of the policy of
the Patent Office.” (App. Br. 14.) Specifically, Appellants argue that the
Examiner violated the Office policy requiring Examiners to identify a reason
why a person of ordinary skill in the art would have combined the prior art
elements in the manner claimed. (App. Br. 14-15.) We find that the
Examiner provided evidence-based reasons for combining the teachings of
the prior art. We find that substantial evidence supports the Examiner’s fact
findings concerning (i) the scope and content of the prior art, (ii) the
suggestions found in both references for modifying replacement hockey
stick blades, and (iii) the proffered evidence of commercial success. We
conclude the Examiner gave appropriate weight to all the facts in reaching
the ultimate determination of obviousness.

CONCLUSIONS OF LAW
• the Christian and Tiitola references teach or suggest all the elements
of the claims;
• one of ordinary skill in the art would have combined teachings of
Christian and Tiitola because the combination would have combined
Christian’s strength with Tiitola’s improved feel;
• the Tiitola reference did not teach away from the claimed invention;
15
Appeal 2008-3526
Application 10/759,525

• Appellants did not establish a nexus between the limitations of the
claims and sales; and
• Appellants’ sales evidence does not outweigh the evidence weighing
toward obviousness.

SUMMARY
We affirm the rejection of claims 30-37, 40, 42-49 and 108-110 under
35 U.S.C. § 103(a) as being unpatentable over Christian in view of Tiitola.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a.)

AFFIRMED

Ssc:

JONES DAY
555 SOUTH FLOWER STREET
FIFTIETH FLOOR
LOS ANGELES, CA 90071

16