Ex Parte Moore

Patent Trial and Appeal Board

Feb 15, 2018

13712571 (P.T.A.B. Feb. 15, 2018)

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.
13/712,571 12/12/2012 Simon Garry Moore NIKE1099CON1/12-0031 2749
113338 7590
Quinn IP Law/NIKE, Inc.
21500 Haggerty Road
Ste 300
Northville, MI 48167
EXAMINER
BLAU, STEPHEN LUTHER
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
02/20/2018 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):
nike_docketing @ cardinal-ip. com
U S Docketing @ quinniplaw .com
adomagala@quinniplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SIMON GARRY MOORE
Appeal 2016-003342
Application 13/712,571
Technology Center 3700
Before LYNNE H. BROWNE, JEFFREY A. STEPHENS, and
ERIC C. JESCHKE, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Simon Garry Moore (Appellant) appeals under 35 U.S.C. § 134(a)
from the rejection of claims 1,5,6, 8—10, 19, and 23—25, which constitute
all the claims pending in this application. We have jurisdiction under 35
U.S.C. § 6(b).
We reverse.
Appeal 2016-003342
Application 13/712,571
CLAIMED SUBJECT MATTER
Claims 1 and 19 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A golf club having a coupled head and shaft comprising:
a connection mechanism to couple the head to the shaft,
said connection mechanism including:
a first part and a second part, the first part having a body
that defines a first internal bore, wherein the first part engages a
hosel of the head and rotates with respect to the hosel between a
first plurality of rotational positions, wherein each of the first
plurality of rotational positions is respectively identified by a
different one of a first plurality of markings; and
the second part coupled to the shaft at a distal end of the
shaft and configured to be inserted into the first internal bore,
wherein the second part is rotatable with respect to the first part
between a second plurality of rotational positions, wherein each
of the second plurality of rotational positions is respectively
identified by a different one of a second plurality of markings,
said second part having a second internal bore, wherein the
second internal bore is inclined with respect to the first internal
bore and receives said distal end of the shaft,
wherein aligning a first marking selected from the first
plurality of markings and a second marking selected from the
second plurality of markings with an indicia provided on at least
one of the head and the shaft disposes the head at an orientation
that is defined by a loft angle and a lie angle of the head relative
to the shaft;
wherein rotating the first part, while maintaining the
second marking in alignment with the indicia, alters at least one
of the loft angle and the lie angle of the head relative to the shaft;
wherein rotating the second part, while maintaining the
first marking in alignment with the indicia, alters at least one of
the loft angle and the lie angle of the head relative to the shaft;
wherein the first part includes a spline, key detail, or
ridge to inhibit relative rotation of the second part relative to the
first part when the second part is fully inserted into the first
internal bore; and
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Application 13/712,571
wherein the first part and the second part are slidably
engaged to provide for rotational adjustment of the second part
relative to the first part.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Rusing US 2,027,452 Jan. 14, 1936
Wettlaufer US 2,219,670 Oct. 29, 1940
Wharton US 4,948,132 Aug. 14, 1990
Ingalls US 7,210,693 B2 May 1,2007
Soda JP 9-164227 Dec. 15, 1995
REJECTIONS
I. Claims 1, 6, 8—10, 19, and 23—25 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Soda, Ingalls, Wettlaufer,
and Wharton.
II. Claim 5 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Soda, Ingalls, Wettlaufer, Wharton, and
Rusing.
DISCUSSION
Rejection I
The Examiner finds that Soda, Ingalls, Wettlaufer, and Wharton
disclose or suggest all of the limitations of claim 1. See Final Act. 2—7. In
particular, the Examiner finds that “Ingalls discloses a dual axis bushing
assembly with both a first and second rotatable part (Fig. 2C).” Id. at 4. The
Examiner further finds that each part of Ingalls’ dual axis bushing assembly
has “inner and outer surfaces which are circular (Figs. 9A, 9B)” and that the
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Application 13/712,571
“second part is configured to be rotatably inserted into a first internal bore”
of the first part. Id. The Examiner finds that the “second part is rotatable
with respect to the first part between a second plurality of rotational
positions, [and the] second part [has] a second internal bore [] inclined with
respect to the first internal bore ... in order to have the most offset
potential.” Id. (citing Ingalls 14:47—50). Based on these and other findings,
the Examiner determines that it would have been obvious
to modify the club of [Soda] to have a second rotatable part
coupled at a distal end of the shaft and configured to be
rotatably inserted into a first internal bore in addition to first
rotatable part that engages the head, [wherein the] second part
is rotatable with respect to the first part between a second
plurality of rotational positions, [and the] second part [has] a
second internal bore [that is] inclined with respect to the first
internal bore and receives the distal end of the shaft... in order
to have the most offset potential between a shaft and a head as
compared to using only one rotatable bushing with an inclined
bore..
Id. at 4—5.
Appellant contends that the Examiner fails to set forth reasoning with
rational underpinning for the proposed modification. See Appeal Br. 9—10.
In support of this contention, Appellant argues that “[t]he presently claimed
connector ... is not concerned with ‘offset.’ Instead, claim 1 specifically
requires ‘an orientation that is defined by a loft angle and a lie angle of the
head relative to the shaft.’” Id. at 9. In this regard, claim 1 requires a
connection mechanism “wherein rotating the first part, while maintaining the
second marking in alignment with the indicia, alters at least one of the loft
angle and the lie angle of the head relative to the shaft” and “wherein
rotating the second part, while maintaining the first marking in alignment
with the indicia, alters at least one of the loft angle and the lie angle of the
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Application 13/712,571
head relative to the shaft.” Id. at 16—17 (Claims App.). Appellant further
argues that “[rjegardless of whether dual bushing designs were known at the
time of the invention, the rejection fails to provide any evidence that an
increase in offset potential would provide any benefits or address any known
issues.” Id. at 10.
Responding to this argument, the Examiner explains that:
Sometimes a structure is able to be described using different
terms due to the fact there are different perspectives one is able
to take with respect to the structure. The Examiner strongly
believes that both the terms orientation and offset are able to be
used to describe both the joint of Ingalls and the joint of [Soda].
In figure 7D in Ingalls clearly there are different orientations of
the bore of the dual bushing assembly (10) which produces
different orientations of stud (24) of the ball joint (22) (Fig. 1)
which goes through the bore of the dual bushing axis (Fig. 70).
It is the orientation changes that allow the offset and translation
changes. The same is true with golf clubs. In figures 1 and 2 of
[Soda] the different orientations of bushing (5) will produce a
different offset of the grip at the end of the shaft.
Ans. 14.
While it may be true that, as shown in Soda’s Figures 1 and 2,
different orientations of Soda’s bushing 5 result in varying the “offset” of
the grip with respect to the end of the shaft, that finding alone is insufficient
to explain why one skilled in the art would have made the proposed
modification. In this case, despite explaining in detail why he considers
Ingall’s offset potential to be the equivalent of the claimed orientation, the
Examiner does not articulate sufficient reasons why one skilled in the art
would have modified Soda in view of Ingall’s teachings. The Examiner
merely opines that an increase in offset potential is desirable, without
explaining why that would be so. However, “it is not enough to simply
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Application 13/712,571
show that the references disclose the claim limitations; in addition, ‘it can be
important to identify a reason that would have prompted a person of
ordinary skill in the art to combine the elements as the new invention does.’”
Transocean Offshore Deepwater v. Maersk Contractors, 617 F. 3d 1296,
1303 (Fed. Cir. 2010) (citing KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398,
401 (2007)).
Moreover, although we do not agree with Appellant that the Examiner
must provide “evidence that demonstrates why [Soda] would benefit from
increased offset potential, or that such a modification would even be
desirable” (Appeal Br. 9 (citations omitted)), the Examiner must articulate
reasons supported by rational underpinning for the proposed modification.
See KSR, 550 U.S. at 418 (noting that the analysis supporting a rejection
under 35 U.S.C. § 103 should be made explicit). The Federal Circuit has
stated that “rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR, 550 U.S. at 418.
For this reason, we do not sustain the Examiner’s decision rejecting
claim 1, and claims 6, and 8—10, which depend therefrom. The Examiner’s
rejection of claim 19 and claims 23—25, which depend from claim 19, suffers
from the same deficiency. See Final Act. 2—7. Accordingly, we do not
sustain the Examiner’s decision rejecting these claims.
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Rejection II
The Examiner’s rejection of claim 5 suffers from the same deficiency
as the rejection of claim 1 discussed supra. See Final Act. 7—8. Rusing does
not cure this deficiency. See id. Accordingly, we do not sustain the
Examiners’ decision rejecting claim 5.
DECISION
The Examiner’s rejections of claims 1, 5, 6, 8—10, 19, and 23—25 are
REVERSED.
REVERSED
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