10319604 (B.P.A.I. Jan. 23, 2012)

Ex Parte Kusumoto et al

Board of Patent Appeals and InterferencesJan 23, 2012

10319604 (B.P.A.I. Jan. 23, 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. 10/319,604 12/16/2002 Harunobu Kusumoto D12-152523M/TBS 2432 21254 7590 01/23/2012 MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC 8321 OLD COURTHOUSE ROAD SUITE 200 VIENNA, VA 22182-3817 EXAMINER PASSANITI, SEBASTIANO ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 01/23/2012 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 HARUNOBU KUSUMOTO, TAKESHI KASAI, ATSUSHI IIJIMA, and HITOSHI TAMURA ____________________ Appeal 2010-002618 Application 10/319,604 Technology Center 3700 ____________________ Before: JOHN C. KERINS, WILLIAM V. SAINDON, and MICHAEL L. HOELTER, Administrative Patent Judges. SAINDON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-002618 Application 10/319,604 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 5-11 and 16-34. We have jurisdiction under 35 U.S.C. § 6(b). Claim 5, reproduced below, is illustrative of the claimed subject matter. 5. A golf club head comprising: a head body comprising a tungsten alloy which is formed by a casting process, said tungsten alloy comprising 15 wt. % to 70 wt.% of tungsten, 15 wt. % to 17 wt. % of iron, and 9 wt.% to 65 wt.% of nickel, and having a specific gravity of at least 9. References The Examiner relies upon the following prior art references: Larsen Saeki Schaeffer Kenmi Nishizawa Takeda Onuki US 3,859,055 US 5,207,427 US 5,676,606 US 5,913,735 US 6,012,990 US 6,102,812 US 6,117,023 Jan. 7, 1975 May 4, 1993 Oct. 14, 1997 Jun. 22, 1999 Jan. 11, 2000 Aug. 15, 2000 Sep. 12, 2000 Rejections The Examiner makes the following rejections under 35 U.S.C. § 103(a): I. Claims 5-8, 16-20, 22, 26, 28-30, and 32 are unpatentable over Schaeffer and Larsen. II. Claims 9, 10, and 34 are unpatentable over Nishizawa and Larsen. III. Claims 8-11 and 25 are unpatentable over Takeda, Nishizawa, and Larsen. IV. Claims 18-21, 23, 27, and 31 are unpatentable over Nishizawa, Larsen, and Onuki. V. Claim 24 is unpatentable over Nishizawa, Larsen, Onuki, and Saeki. Appeal 2010-002618 Application 10/319,604 3 VI. Claim 33 is unpatentable over Nishizawa, Larsen, and Kenmi. We REVERSE. OPINION The Examiner’s rejections are predicated on a finding that, while the prior art does not disclose a composition within the particular ranges claimed for tungsten, iron, and nickel, a new use for an old composition (tungsten alloy) is unpatentable1. Ans. 4. The Examiner also found that Larson teaches a tungsten alloy with iron and nickel that has various favorable qualities for a golf club (Ans. 4) and that the selection of “an appropriate tungsten alloy” for a golf club would have been obvious (Ans. 5). In particular, the Examiner found that the “particular % weight for each element is merely derived from routine experimentation.” This is the premise of each of the Examiner’s rejections. Ans., passim. Appellants argue that the prior art does not teach the claimed weight percent ranges and the Examiner has not discussed why it would have been obvious to select the claimed weights via routine experimentation. App. Br. 15-17; Reply Br. 4-5. “[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). Antonie clarified the principle set forth in Aller, requiring the prior art to recognize the parameter to be optimized to be “a result-effective variable.” In re 1 At the outset, we note that this is not a case of “a new use for an old composition” because there is no evidence that the claimed composition (i.e., a composition within the particularly claimed weight % of W, Fe, and Ni) was known. Appeal 2010-002618 Application 10/319,604 4 Antonie, 559 F.2d 618, 620 (CCPA 1977). Thus, as a general rule, the discovery of an optimum value of a result effective variable is ordinarily within the skill of the art, and thus usually obvious. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007) (citing In re Boesch, 617 F.2d 272, 276 (CCPA 1980). In this case, the Examiner has not established that the variables involved (% wt. W, Fe, Ni) are result effective. That is to say, the Examiner has not shown that it is known in the art how the particular variation(s) of the composition percentages will affect a desired result (e.g., suitable tensile strength). Larson appears to provide some evidence that increasing the percentage weight of tungsten increases the tensile strength of the composition. Larson, col. 3 (unlabeled table). However, the compositions shown in Larson are in a very narrow range and well above the claimed weight percentages of tungsten (90-95% vs. 15-70%). Similar variations exist between Larson’s and the claims’ percentages of iron and nickel. Larson does not provide evidence regarding the tensile strengths of compositions having lower weights of tungsten and correspondingly higher weights of iron and nickel, such as those claimed.2 Thus, the teachings of Larson alone are insufficient to establish by a preponderance of the evidence that it would be obvious as a matter of routine optimization to modify the golf club head of Schaeffer (or Nishizawa) to include the particularly claimed tungsten alloy. 2 For example, the addition of iron in amounts required by the claimed ranges may have an offsetting effect to the tensile strength benefits of tungsten. Larson does not provide evidence of what happens to the tensile strength of the composition as iron and nickel offset tungsten in a way that makes such a modification predictable. Appeal 2010-002618 Application 10/319,604 5 For the above reasons, we reverse the Examiner’s decision regarding claims 5-11 and 16-34. REVERSED hh