Ex Parte KIMIZUKA et al

Patent Trials and Appeals Board

Apr 11, 2019

13560098 - (D) (P.T.A.B. Apr. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/560,098 07/27/2012
127226 7590 04/15/2019
BIRCH, STEW ART, KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
Wataru KIMIZUKA
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.
0229-1233PUS 1 3332
EXAMINER
PIERCE, WILLIAM M
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
04/15/2019 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WATARU KIMIZUKA and MASAHIDE ONUKI
Appeal2017-006795
Application 13/560,098
Technology Center 3700
Before JENNIFER D. BAHR, EDWARD A. BROWN, and
BRENT M. DOUGAL, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Wataru Kimizuka and Masahide Onuki ("Appellants") 1 seek review
under 35 U.S.C. § 134(a) of the Examiner's decision rejecting claims 19-23,
26, and 27. 2 We heard oral argument on March 28, 2019. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Dunlop Sports Co. LTD, is identified as the real party in interest. Appeal
Br. 1.
2 Claims 1-18 and 28 are cancelled, and claims 24, 25, and 29-32 are
withdrawn from consideration.
Appeal2017-006795
Application 13/560,098
CLAIMED SUBJECT MATTER
Claim 19 is the sole independent claim on appeal, and reads:
19. A hollow golf club head having
a moment of inertia Ix of 4500 to 5900 g sq.cm and
a moment of inertia Iy of 5300 to 6800 g sq.cm, which
satisfy the following conditional expression:
Iy =< 1.071 X Ix+ 482 g sq.cm,
wherein
the moment of inertia Ix is a moment of inertia of the head
around a vertical axis which is defined as passing through the
center of gravity of the head under a standard state in which the
head is set on a horizontal plane so that a shaft center line is
inclined at a lie angle of 60 degrees with respect to the horizontal
plane within a vertical plane and a club face of the head lies at
the loft angle of the head, and
the moment of inertia I y is a moment of inertia of the head
around an inclined axis which is defined as passing through the
center of gravity of the head and inclined downwardly toward the
toe of the head from the heel of the head at 62 degrees with
respect to the horizontal plane within a plane parallel with said
vertical plane.
Appeal Br. (Claims App. 1 ).
REJECTIONS 3
Claims 19-23, 26 and 27 stand rejected under 35 U.S.C. § 101 as
directed to patent ineligible subject matter.
Claims 19-23, 26 and 27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Cackett (US 7,559,851 B2, issued July 14, 2009).
3 The rejection of claims 21, 26, and 27 under 35 U.S.C. § 112, second
paragraph, has been withdrawn. Ans. 2; Final Act. 2-3.
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ANALYSIS
Patent Ineligible Subject Matter (Claims 19-23, 26, and 27)
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, 35 U.S.C. § 101 has been interpreted to include implicit
exceptions; namely, "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219; see also Bilski v. Kappas, 561 U.S. 593, 611 (2010).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)).
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
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monopolize the [abstract idea].'" Id. (alterations in original) (quoting Mayo,
566 U.S. at 77).
The PTO recently published revised guidance on the application of
§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) (hereinafter "2019 Guidance"). Under Step 2A
of that guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application is the claim "directed to" a judicial
exception. See 2019 Guidance.
Step 1 - Statutory Category
Claim 19 recites a hollow golf club head, and, therefore, is a
manufacture. See Appeal Br. (Claims App. 1 ).
Step 2A, Prong One - Recitation of Judicial Exception
Step 2A, Prong One, of the 2019 Guidance evaluates whether the
claim recites a judicial exception. For abstract ideas, we determine whether
the claim recites mathematical concepts, certain methods of organizing
human activity, or mental processes.
Claim 19 recites a hollow golf club head having "a moment of inertia
Ix of 4500 to 5900 g sq.cm and a moment of inertia Iy of 5300 to 6800 g
sq.cm, which satisfy the following conditional expression: Iy =< 1.071 X Ix
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+ 482 g sq.cm." Appeal Br. (Claims App. 1 ). The Examiner determines that
claim 19 recites an abstract idea. Final Act. 3. The Examiner states, "[t]he
claims are considered directed to a universal theory or necessary relationship
in a law of nature expressed as a mathematical formula to describe the
arrangement of mass within a club head." Id. The Examiner also states,
"[w]hile the claim is directed to an 'apparatus' per se in form, the underlying
invention is directed to the statement of a general concept as to how the
mass of the club is to be arranged." Id. at 3--4.
We agree with the Examiner that claim 19 recites an abstract idea.
Particularly, the conditional expression is a mathematical formula or
mathematical relationship in the form of an inequality that expresses
permitted values of Iy as a function of Ix in the hollow golf club head.
Under the 2019 Guidance, this mathematical formula or mathematical
relationship falls within the "mathematical concepts" grouping.
Because we conclude claim 19 recites an abstract idea, we proceed to
Prong Two to determine whether the claim is "directed to" the judicial
exception.
Step 2A, Prong 2 - Practical Application
In Prong Two, we next determine whether the recited judicial
exception is integrated into a practical application of that exception by: (a)
identifying whether there are any additional elements recited in the claim
beyond the judicial exception; and (b) evaluating those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application. This evaluation requires an additional
element or a combination of additional elements in the claim to apply, rely
on, or use the judicial exception in a manner that imposes a meaningful limit
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on the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the exception. If the recited judicial exception is
integrated into a practical application, the claim is not "directed to" the
judicial exception.
Here, Appellants acknowledge that claim 19 recites a mathematical
formula to define the mass distribution of the hollow golf club head. Appeal
Br. 7. But Appellants contend that claim 19 is not directed to the
mathematical expression. Id. at 10. Rather, the claim, as a whole, is
directed to a hollow golf club head, that is, a physical manufacture. Id.
Appellants explain that, for a rigid body, the moment of inertia determines
the torque needed to produce a desired angular acceleration about a
rotational axis, and is dependent on the rigid body's mass distribution and
the specific rotational axis chosen. Id. Thus, the moment of inertia of a
rigid body relates to its structure. Id. Appellants contend that claim 19
''practically applies the mathematical formula to configure a particular
hollow golf club head." Id. at 7 ( emphasis added).
Although we determine that claim 19 recites an abstract idea,
Appellants are correct that the "directed to" inquiry requires us to consider
claim 19 as a whole. Appeal Br. 1 O; see Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)) ("The
'abstract idea' step of the inquiry calls upon us to look at the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter."). As explained in Enfzsh:
The "directed to" inquiry ... cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
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and actions involves a law of nature and/or natural phenomenon
.... Rather, the "directed to" inquiry applies a stage-one filter
to claims, considered in light of the specification, based on
whether "their character as a whole is directed to excluded
subject matter." Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015).
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
Applying these principles, we note that Appellants' Specification
discloses that "[t]he present invention relates to a golf club head." Spec. 1.
The Specification also describes, for example, "an object of the present
invention [is] to provide a golf club head which can increase carry distances
of average golfers whose probability of off-center shot is relatively high."
Id. at 2 ( emphasis added). Accordingly, these exemplary passages in the
Specification provide evidence as to what the claimed invention is directed
to. Regarding the claims, claim 19 recites a hollow golf club head having a
moment of inertia Ix of a specified range, a moment of inertia Iy of a
specified range, and the conditional expression, which specifies values of Iy
in relation to Ix. See Appeal Br. (Claims App. 1 ). Additionally, claim 19
defines a "vertical axis" corresponding to Ix and an "inclined axis"
corresponding to Iy with respect to recited structure of the golf club head
(i.e., "club face," "toe of the head," "heel of the head"). Id. Accordingly,
the claims also provide evidence as to what the claimed invention is directed
to.
In Diamond v. Diehr, 450 U.S. 17 5, 192 (1981 ), although the claim at
issue recited a mathematical formula, the Supreme Court held that "[a] claim
drawn to subject matter otherwise statutory does not become nonstatutory
simply because it uses a mathematical formula." Id. at 176. Rather, the
court stated, "when a claim containing a mathematical formula implements
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or applies that formula in a structure ... , when considered as a whole, is
performing a function which the patent laws were designed to protect ... ,
then the claim satisfies the requirement of§ 101." Id. at 192 ( emphasis
added). Here, we agree with Appellants that claim 19 does not merely seek
patent protection for the conditional expression in the abstract, but instead
applies the conditional expression in a structure, that is, a hollow golf club
head, to describe or define the structure.
Moreover, applying the 2019 Guidelines, we determine that claim 19
applies or uses the recited mathematical formula or mathematical
relationship "in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception." See 2019 Guidance at 54.
According to the Examiner:
Here any club that is made with a mass to satisfy the recited
equation will be excluded. Use of the concept would effectively
grant a monopoly over the concept of both known and unknown
clubs. Such is considered a general concept that is disembodied
as long as it is made in accordance with the mathematical
equation recited[.]
Final Act. 4. Similarly, the Examiner states, "[t]he instant claims most
broadly define any club both known and developed in the future that has a
distribution of mass about a defined axis that meets the claimed formula."
Id. at 5. The Examiner submits that the recited "mathematical relationship
does not amount to any particular structure," but instead, "the claims seek to
tie up any shape, material and combination thereof in a club that currently
satisfies or could satisfy this mathematical equation in the future. In effect, a
patent would grant a monopoly over [sic] concept of the equation itself and
any club capable of satisfying it." Id. at 7.
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Appellants contend that "[b ]ased on different variables, there clearly
will be golf clubs that do not meet the claimed recitations." Appeal Br. 12.
We agree. The recited moments of inertia Ix and Iy are around specific axes
of the golf club head and have specific numerical values. According to the
Examiner, "the Y axis is only required to run through the CG at an angle
from toe to heel. Within any club head there are an infinite number of axis
[sic] that can be selected to represent the Y axis in the equation." See Ans. 5
n.1. To the extent the Examiner's position is that claim 19 does not specify
any axis for Iy as recited in the conditional expression, the claim recites that
Iy is "around an inclined axis," which axis "is defined as" a) "passing
through the center of gravity of the head" and b) "inclined downwardly
toward the toe of the head from the heel of the head at 62 degrees with
respect to the horizontal plane within a plane parallel with said vertical
plane." Appeal Br. (Claims App. 1). Figure 1 of Appellants' Application
depicts the orientation of inclined axis K of golf club head 1 in relation to a
vertical axis extending through center of gravity G and to horizontal plane
HP. In view of this disclosure, the Examiner does not explain adequately
how "any club head" (i.e., every club head) would have an infinite number
of axes that can be selected to represent the inclined axis in the conditional
expression, as claimed. Further, the recited moments of inertia relate to the
mass distribution of the golf club head and, as such, are physical parameters
of the golf club head and are directed to its structure. As the conditional
expression recites a specific numerical relationship between Ix and Iy, the
conditional expression, likewise, is directed to the structure of the golf club
head.
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Appellants also contest the Examiner's statement that "[t ]he claims
are ... directed to a universal theory or necessary relationship in a law of
nature expressed as a mathematical formula to describe the arrangement of
mass within a club head." Appeal Br. 12; see Final Act. 3. We agree with
Appellants that the conditional expression is neither "a universal theory" nor
a "necessary relationship in a law of nature." Instead, we agree with
Appellants that the claimed moments of inertia Ix and Iy and the conditional
expression are "directed to the physical structure of the hollow golf club
head, similar to claiming an object having a certain weight, a certain
thickness, or a certain hardness." Appeal Br. 13 (emphasis added). To the
extent it is the Examiner's position that patenting of the "concept of the
equation itself' would be pre-emptive to "any club capable of satisfying it,"
regardless of the "shape, material and combination thereof in a club," (Final
Act. 7) that issue should be addressed through 35 U.S.C. §§ 102 and 103.
See, e.g., Diehr, 450 U.S. at 188-89 ("The 'novelty' of ... the ... [claim]
itself, is of no relevance in determining whether the subject matter of a claim
falls within the§ 101 categories of possibly patentable subject matter."); id.
at 191 ("A rejection [ on the ground of novelty under § 102 or
nonobviousness under§ 103] does not affect the determination that
respondents' claims recited subject matter which was eligible for patent
protection under § 101. ")
For these reasons, we determine that claim 19 integrates the recited
abstract idea into a practical application, and thus, is not "directed to" the
judicial exception. Therefore, we do not sustain the rejection of claims 19-
23, 26, and 27 under 35 U.S.C. § 101 as directed to patent ineligible subject
matter.
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Obviousness over Cackett (Claims 19-23, 26, and 27)
Cackett discloses a golf club head 42 having moments of inertia Ixx,
Iyy, and Izz about X, Y, and Z axes, respectively. See Cackett, Fig. IA, col.
13, 1. 63---col. 14, 1. 7.
As to claim 19, the Examiner finds that Cackett's golf club head has
moments of inertia around Iz and I y axes that correspond to the axes of Ix
and Iy, as claimed. Final Act. 10. We understand the Examiner to be
referring to axes Izz and I yy described in Cackett. The Examiner states,
"[w]here Ix and ly correspond to Cackett's Iz and Iy axes, they [sic] most
broadly disclosed as respectfully 4700-600 and 2000-4000."4 Id. The
Examiner finds that Cackett' s moment of inertia Izz meets the claimed value
of Ix, but finds Cackett' s moment of inertia I yy has a lower value than the
claimed value of Iy. Id. The Examiner states, however, "Cackett is
considered to inherently show the claimed relationships and magnitudes
between Iy and Ix as set forth in the claims." Id. (emphasis added).
Additionally, the Examiner states, "the distribution of mass shown by
Cackett inherently has a MOI [moment of inertia] about any given axis that
can be designed as desired." Id. at 11. According to the Examiner, "it is
inherent that [Cackett' s] club does possess an Ix and I y axis as is claimed
and while [Cackett] fails to discuss the values of the moments about them,
4 Cackett describes, "[i]n general, the moment of inertia, Izz, about the Z
axis for the golf club head 42 of the present invention will range from
4500 g-cm2 to 6000 g-cm2, preferably from 5000 g-cm2 to 5500 g-cm2, and
most preferably 5000 g-cm2. The moment of inertia, Iyy, about the Y axis
for the golf club head 42 ... will range from 2000 g-cm2 to 4000 g-cm2,
preferably from 2500 g-cm2 to 3500 g-cm2, and most preferably from 2900
g-cm2 to 3300 g-cm2." See Cackett, col. 13, 1. 63---col. 14, 1. 3.
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such are considered a matter of design choice depending upon the desired
performance of the club head." Id. (emphasis added). The Examiner
submits, "[t]o select a moment about any axis is a matter of choice for a
designer." Id.
Appellants contend that the Examiner has not established a prima
facie case of inherency. Appeal Br. 16. As for the legal standard for
establishing inherency, Appellants state:
"To establish inherency, the extrinsic evidence 'must make clear
that the missing descriptive matter is necessarily present in the
thing described in the reference, and that it would be so
recognized by persons of ordinary skill. Inherency, however,
may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of
circumstances is not sufficient.'"
Id. (boldface omitted) (quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999)). Appellants contend that the Examiner fails to provide a sufficient
basis in fact and/or technical reasoning to support the position that the
claimed values of Ix and Iy and the conditional expression necessarily flow
from Cackett. Id. at 1 7.
We agree with Appellants. According to the Examiner,
"[A]ppellant[s'] remarks fail[] to show how the club of Cackett could not
inherently possess the relationship recited between the MOI of the Ix and ly
axes." Ans. 25-26. However, even if Cackett' s golf club head possesses
axes that correspond to the claimed vertical axis and inclined axis, the
Examiner still provides no evidence or technical reasoning to support the
position that Cackett' s club head would have any particular moment of
inertia value around an axis corresponding to the claimed Iy axis, much less
a value that would necessarily meet the claimed value of Iy. Nor does the
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Examiner provide evidence or technical reasoning to support the position
that, in Cackett, the moment of inertia Izz about the Z axis and the moment
of inertia Iyy around the Y axis would have values in relation to each other
that necessarily meet the claimed conditional expression. Absent a prima
facie showing of inherency, Appellants do not have a burden to prove with
evidence that Cackett's golf club head "could not inherently possess the
[ claimed] relationship."5
As for the Examiner's obvious design choice position, when the
claimed structure performs differently from the prior art, a finding of
obvious design choice is precluded. In re Gal, 980 F.2d 717, 719 (Fed. Cir.
1992) (finding of obvious design choice precluded when claimed structure
and the function it performs are different from the prior art). Here,
Appellants contend that Cackett fails to recognize the advantageous
properties exhibited by the present invention, as evidenced by the
comparative tests described at pages 21-25 of Specification. Appeal Br. 15.
Appellants also contend that the unexpected and critical nature of the
claimed values are described at TABLE 1 and paragraphs 45 and 46 of the
Specification. Reply Br. 3. 6 Appellants maintain that the claimed condition,
Iy =< 1.071 X Ix+ 482 g sq.cm, is "a crucial threshold above which a club
5 See, e.g., In re Best, 562 F.2d 1252, 1255 (CCPA 1977) ("Where ... the
claimed and prior art products are identical or substantially identical, ... the
PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product.")
( citation omitted).
6 Appellants appear to be referring to the description at paragraphs 45 and 46
of the published application (US 2013/0029783 Al, published Jan. 31, 2013)
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head could not be made durable and/or to meet other requirements deemed
necessary by the inventors." Id.
We disagree with the Examiner that "select[ing] a moment about any
axis is a matter of choice for a designer." Final Act. 11 (emphasis added).
The Examiner's position essentially amounts to asserting that a proposed
change in the prior art is an obvious design choice, which is insufficient.
Appellants have explained that, for a chosen axis, the value of the moment
of inertia depends on the golf club head's mass distribution, and, thus, its
structure. Even assuming Cackett's golf club head possesses an "inclined
axis" as claimed, the Examiner has not provided an adequate reason why one
of ordinary skill in the art would have modified the golf club head structure
to have a moment of inertia Iy about that inclined axis, as claimed. As the
moment of inertia about a particular rotational axis is structurally dependent,
the Examiner's modification based on design choice would require
modifying the structure of Cackett' s golf club head to meet the claimed
conditional expression. The Examiner does not explain adequately why this
structural modification in Cackett would provide "the desired performance
of the club head." Final Act. 11. Indeed, the result of the proposed
modification is premised on speculation. Moreover, the Examiner's position
appears to acknowledge that the claimed golf club head performs differently
from Cackett's golf club head without the proposed modification, which
further weighs against the design choice rationale. See Gal, 980 F .2d at 719.
Accordingly, the Examiner's design choice position is insufficient to
establish the obviousness of the claimed golf club head in view of Cackett.
Appellants also contend that Cackett fails to recognize the
significance of a moment of inertia Iy, as claimed, and the relationship
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( conditional expression) between the moment of inertia Ix and the moment
of inertia Iy. Appeal Br. 16. Thus, Crockett does not recognize Iy and the
relationship, as claimed, as a result-effective variable to achieve a
recognized result, that is, effectively reduce the rotation of the club head by
the hitting and improve rebound performance. Id.
The applicable legal principles are as follows:
"[W]here the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or workable
ranges by routine experimentation." [In re] Aller, 220 F.2d
[454,] 456 [(CCPA 1955)]. This rule is limited to cases in which
the optimized variable is a "result-effective variable." In re
Antonie, 559 F.2d 618, 620 (CCPA 1977); see [In re] Boesch,
617 F.2d [272,] 276 [(CCPA 1980)] ("[D]iscovery of an
optimum value of a result effective variable . . . is ordinarily
within the skill of the art.").
In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012). We
note Cackett discloses that "[t]he placement of the weights 122 allows for
the moment of inertia of the golf club head 42 to be optimized." See
Cackett, col. 11, 11. 26-28. Apart from this general disclosure, however, the
Examiner does not direct us to any disclosure in Cackett that describes or
suggests a numerical relationship between moments of inertia around axes
corresponding to the claimed axes of Ix and I y. 7 We agree with Appellants
that the Examiner has not established, with sufficient evidence, that the
7 We note Cackett describes an "inertia ratio," equaling Izz of the club head
divided by I yy of the club, where Izz "is defined as the moment of inertia
about the Z axis through the center of gravity of the golf club head. . . . The
club I yy is the moment of inertia of the entire club taken at the butt end of
the shaft, which is calculated by taking the sum of the moment of inertia of
the individual components of the club taken about the Y axis as shown in
FIG. IA." See Cackett, col. 16, 11. 10-18.
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recited combination of the value of Iy and the conditional expression are
recognized as a result-effective variable, rendering optimization within the
ordinary skill in the art.
Accordingly, we determine that the Examiner does not provide an
adequate reason with rational underpinning to modify Cackett' s golf club
head to satisfy all limitations in claim 19. Thus, we do not sustain the
rejection of claims 19-23, 26, and 27 under 35 U.S.C. § 103(a) as
unpatentable over Cackett.
DECISION
The rejection of claims 19-23, 26, and 27 under 35 U.S.C. § 101 as
directed to patent ineligible subject matter is REVERSED.
The rejection of claims 19-23, 26, and 27 under 35 U.S.C. § 103(a) as
unpatentable over Cackett is REVERSED.
REVERSED
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