Ex Parte Hooker

Patent Trial and Appeal Board

Jul 25, 2018

14635061 (P.T.A.B. Jul. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/635,061 03/02/2015
114977 7590
James Edward Shultz Jr.
16656 Pine Dunes Court
Grand Haven, MI 49417
07/26/2018
FIRST NAMED INVENTOR
Daniel Hooker
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.
DBHOOl 8839
EXAMINER
BLAU, STEPHEN LUTHER
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
07/26/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL HOOKER
Appeal2017-009727
Application 14/635,061
Technology Center 3700
Before: MICHELLE R. OSINSKI, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1--4, 6, 11, 12, 14--16, and 20. Wehavejurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2017-009727
Application 14/635,061
THE INVENTION
Appellant's invention relates to golf club grips. Spec. ,r 1. Claim 11,
reproduced below, is illustrative of the subject matter on appeal.
11. A golf club grip, comprising:
a number corresponding to a first golf club; and
at least one circumferentially extending ring correlated to a
length of a second golf club corresponding to the number,
wherein the number prompts an associated golfer to grip the
respective golf club grip at the at least one circumferentially
extending ring.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Kilshaw
Tosti
Rife
Herber
Casati
Maglaque
Bentley
us 3,871,649
us 4,878,667
us 5,813,920
us 5,865,684
US 2009/0270194 Al
US 8,241,138 B2
US 2013/0095941 Al
Mar. 18, 1975
Nov. 7, 1989
Sept. 29, 1998
Feb.2, 1999
Oct. 29, 2009
Aug. 14, 2012
Apr.18,2013
The following rejections are before us for review:
1. Claim 11 is rejected under 35 U.S.C. § 103, as being unpatentable
over Herber and Casati.
2. Claims 1, 4, 12, and 16 are rejected under 35 U.S.C. § 103, as
being unpatentable over Herber, Casati, and Kilshaw.
3. Claims 14 and 15 are rejected under 35 U.S.C. § 103, as being
unpatentable over Herber, Casati, and Maglaque.
4. Claim 20 is rejected under 35 U.S.C. § 103, as being unpatentable
over Herber, Casati, and Rife.
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Application 14/635,061
5. Claims 2 and 3 are rejected under 35 U.S.C. § 103, as being
unpatentable over Herber, Casati, Kilshaw, Bentley, and Tosti.
OPINION
Petitionable Matters
Appellant assigns error to the Examiner's objection to certain
informalities with respect to claims 11 and 16. Final Action 2; Br. 4--5.
Appellant also assigns error to the Examiner's restriction requirement with
respect to claims 5, 7-10, 13, and 17-19, which have been withdrawn from
consideration. Final Action 1; Br. 4. In response, the Examiner correctly
informs Appellant that these are petitionable matters that are not subject to
appeal to the Board. Ans. 11. The line of demarcation between appealable
matters for the Board and petitionable matters for the Director of the U.S.
Patent and Trademark Office (Director) should be carefully observed.
MPEP § 1201. The Board will not ordinarily hear a question that should be
decided by the Director on petition. See Ex Parte Frye, 94 U.S.P.Q.2d 1072
(BPAI 2010); 37 C.F.R. § 1.181. We decline to take up these matters in this
appeal.
Unpatentability of Claim 11
over Herber and Casati
The Examiner finds that Herber discloses the invention except for a
numbered ring correlating to a length of a second golf club. Final Action 3.
The Examiner relies on Casati as disclosing rings with associated numbered
indicia. Id. The Examiner concludes that it would have been obvious to a
person of ordinary skill in the art at the time of the invention to combine the
teachings of Herber and Casati to achieve the claimed invention. Id.
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According to the Examiner, a person of ordinary skill in the art would have
done this to assist a golfer with gripping a club. Id.
Appellant argues that Herber does not disclose a grip with a number
corresponding to a golf club as claimed. Br. 6. Appellant points out that
Figure 3 of Herber depicts the head, not the grip, of a golf club. 1 Id. The
Examiner concedes this point, but refers to Casati as disclosing that it was
known to place numbers and rings on a golf grip to assist the golfer in
gripping the club. Ans. 14.
Appellant next argues that, although Casati discloses numbered
indicia on a golf club grip, such indicia are not correlated to a length of a
second golf club as claimed. Br. 6. In response, the Examiner makes two
cogent points. The first point is that the claimed indicia represents printed
matter that is not given patentable weight. Ans. 13 ( citing In re Gulack, 703
F.2d 1381, 1385 (Fed. Cir. 1983)). The second point is that when the
teachings of Herber and Casati are combined such that Casati' s ring number
one replaces Herber's upper chevron and Casati's ring number two replaces
Herber's lower chevron, the result would be a number (e.g., "1")
corresponding to a first golf club and there would be ring with a second
number (e.g., "2") correlated to a length of a second golf club. Id. at 15-16.
The Appellant is arguing the reference independently. If you
put the rings and numbers in the locations to locate the thumb
as Herber is teaching, the longitudinal indicators and the
1 Generally, it is well known that golf club manufacturers etch, inscribe, or
emboss the number of a golf-club (e.g., the number "5" on a 5-iron) on the
bottom of the club head. Appellant does not offer evidence or persuasive
argument as to why placing a duplicative and redundant indicia of the club
number on the opposite end of the club (i.e., on the grip) would not have
been obvious to a person of ordinary skill in the art of golf club design and
manufacture.
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Application 14/635,061
traversal indicators of Casati will be correlated to a length of a
second golf club.
Id. at 16.
Finally, Appellant argues that Herber and Casati would not be
combined by a person of ordinary skill in the art in the manner asserted by
the Examiner. Br. 6-7 ("[T]here was no teaching, suggestion, or motivation
to combine or modify the cited references to produce the claimed
invention.").
Herber is directed to a multi-use golf club. Herber, Abstract.
Herber's club allows a user to select a long or short shot without changing
the dynamics of the user's golf swing. Id. Herber accomplishes this by
designating at least two positions on the grip. Id. In the illustrated
embodiment, the designated indicia are chevrons. Id. at Figs 4---6. Herber
recognizes the well-known principle that placing the hands on the grip either
closer to or farther away from the club head has an effect on the swing arc of
the golf head movement, club head speed, flight trajectory, launch angle, and
travel distance of the golf ball. Id. col. 5, 1. 53---col. 6, 1. 21.
Casati is directed to a golf club grip with hand positioning indications.
Casati, Abstract. Casati' s Figure 1 embodiment comprises six transversal
indicators (or circuniferentially extending rings). Id. ,r 10. The transversal
lines are indicative of the amount of grip choke. Id. ,r 16. Casati recognizes
the well-known principle that the amount of grip choke has an effect on the
distance and trajectory of a golf shot. Id. The transversal lines in the
illustrated embodiment are spaced 1 inch apart, but it is expressly
contemplated that the number and spacing of the lines may vary. Id.
Thus, Herber and Casati, both alone and together, demonstrate that it
was known in the prior art to place indicia on a grip to assist a golfer in
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gripping a club. With respect to combining the references, we find
unpersuasive Appellant's argument that there is "no teaching, suggestion, or
motivation" to combine or modify the references. Br. 6-7. When
considering whether an invention is obvious, we are admonished by the
Supreme Court to take an expansive and flexible approach and ask whether a
purported improvement is more than just the predictable use of prior art
elements according to their established functions. KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 415--417 (2007). When a patent application "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 at 417 (quoting
Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). Similarly, if a person
of ordinary skill can implement a predictable variation of the prior art,
section 103 likely bars its patentability. Id.
In the instant case, the only difference between the prior art and the
claimed invention that is identified by Appellant is the informational content
of the indicia. Printed matter is only given patentable weight if the
informational content thereof has a functional or structural relation to the
substrate. See In re Distefano, 808 F.3d 845, 850 (Fed. Cir. 2015).
Claim limitations directed to the content of information and
lacking a requisite functional relationship are not entitled to
patentable weight because such information is not patent
eligible subject matter under 35 U.S.C. § 101.
Praxair Distribution, Inc. v. Mallinckrodt Hospital Products IP Ltd., 890
F.3d 1024, 1032 (Fed. Cir. 2018); cf Digitech Image Techs., LLC v. Elecs.
for Imaging, Inc., 758 F.3d 1344, 1349--50 (Fed. Cir. 2014) ("Data in its
ethereal, non-physical form is simply information that does not fall under
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any of the categories of eligible subject matter under section 101."). Thus,
"[ w ]here the printed matter is not functionally related to the substrate, the
printed matter will not distinguish the invention from the prior art in terms of
patentability." In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).
Information that is of an instructional nature is routinely treated as lacking a
functional relationship with the substrate. AstraZeneca LP v. Apotex, Inc.,
633 F.3d 1042, 1065 (Fed. Cir. 2010) (FDA-required instructions not
functionally related to drug.); King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d
1267, 1279 (Fed. Cir. 2010) (Informing patient of drug properties.); Ngai,
367 F.3d at 1339 (Diagnostic kit instructions.).
In the instant case, the Examiner finds that Appellant's indicia does
not bear a functional relationship with the substrate. Ans. 13, 20. Appellant
offers neither evidence, argument, nor persuasive technical reasoning to
rebut the Examiner's position. See generally Br. Golfers know that,
generally, a 7-iron is shorter than a 6-iron, which, in tum, is shorter than a 5-
iron, and so on. 2 Placing a circumferential ring on the grip of a 5-iron
showing the relative length of a 6-iron, a 7-iron, etc., is merely instructional
information that is otherwise immediately available to the golfer by merely
inspecting and comparing the golf clubs side-by-side. Golfers are free to
"choke-up" their grip on a golf club whenever and by how much as they, in
their own discretion, may choose. The information printed on Appellant's
grip is useful and intelligible only to the human mind. See In re Bernhart,
417 F.2d 1395, 1399 (CCPA 1969) (printed lines or characters). The
information merely instructs the golfer, in essence and for example, that -
2 The different club lengths are readily and immediately apparent by just
looking at a golf bag filled with clubs.
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"you are holding a 5-iron and you are hereby informed that a 6-iron is this
much shorter and a 7-iron is this much shorter still." Appellant's claim
limitation: "wherein the number prompts an associated golfer ... " merely
reflects how the human mind may choose to respond to the printed matter
information. Claims App. claim 11. The golfer is free to ignore the printed
indicia and grip the club anywhere along its length entirely at the golfer's
own discretion.
Once it is determined that the content of the printed matter of claim 11
is not entitled to patentable weight, there is no non-obvious structural
distinction between the prior art and the claimed invention. Claim 11, at
best, is no more than a predictable variation of Herber and Casati. KSR, 550
U.S. at 417. We sustain the Examiner's unpatentability rejection of
claim 11.
Claim 16
Unpatentability of Claims 1, 4, 12, and 16
over Herber, Casati, and Kilshaw
Claim 16 is an independent claim that differs in scope from claim 11
primarily in that it specifies that the spacing between the circumferential
rings is approximately one-half inch. Claims App. The Examiner relies on
Kilshaw as disclosing that the difference in length between a 7-iron and an
8-iron is one-half inch. Final Action 4. The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art at the time
of the invention to combine the teachings of Kilshaw with Herber and Casati
to achieve the claimed invention. Id. According to the Examiner, a person
of ordinary skill in the art would have done this to allow a golfer to
reproduce the same swing arc with conventional golf clubs with common
shaft lengths. Id.
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In traversing the rejection, Appellant relies on essentially the same
arguments that we fully considered and found unpersuasive with respect to
claim 11 and find equally unpersuasive here. Br. 8-9. Appellant also argues
that Kilshaw fails to cure the alleged deficiencies of Herber and Casati and,
in addition, mounts an individual attack on Kilshaw. Id. However, we do
not find Herber and Casati deficient for reasons discussed above with respect
to claim 11. Moreover, it is well settled that non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references. In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413,425 (CCPA
1981 ).
The Examiner's finding that the length progression between various
golf clubs is approximately one-half inch is supported by the record. See
Kilshaw, col. 3, Table 1; see also Final Action 4. We sustain the rejection of
claim 16.
Claims 1, 4, and 12
Claims 1, 4, and 12 depend directly from claim 11. Claims App.
Appellant does not argue for the separate patentability of these claims apart
from arguments presented with respect to claims 1 and 16, which we have
previously considered. See Br. 10. We sustain the Examiner's rejection of
claims 1, 4, and 12. See 37 C.F.R. § 41.37(c)(iv) (failure to separately argue
claims).
Unpatentability of Claims 14 and 15
over Herber, Casati, and Maglaque
Claims 14 and 15 depend directly from claim 11. Claims App.
Appellant does not argue for the separate patentability of these claims apart
from arguments presented with respect to claim 11, which we have
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previously considered. See Br. 10-11. We sustain the Examiner's rejection
of claims 14 and 15. 37 C.F.R. § 4I.37(c)(iv).
Unpatentability of Claim 20
over Herber, Casati, and Rife
Claim 20 depends from claim 16. Claims App. Appellant does not
argue for the separate patentability of this claim apart from arguments
presented with respect to claim 16, which we have previously considered.
See Br. 11. We sustain the Examiner's rejection of claim 20. 37 C.F.R.
§ 4I.37(c)(iv).
Unpatentability of Claims 2 and 3
over Herber, Casati, Bentley, and Tosti
Claims 2 and 3 depend indirectly from claim 11. Claims App.
Appellant does not argue for the separate patentability of these claims apart
from arguments presented with respect to claim 11, which we have
previously considered. See Br. 11-12. We sustain the Examiner's rejection
of claims 2 and 3. 37 C.F.R. § 4I.37(c)(iv).
DECISION
The decision of the Examiner to reject claims 1--4, 6, 11, 12, 14--16,
and 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)(l )(iv).
AFFIRMED
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