Ex Parte Nishitani

Board of Patent Appeals and Interferences

Sep 2, 2010

11182850 (B.P.A.I. Sep. 2, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MASAFUMI NISHITANI
____________________

Appeal 2009-008726
Application 11/182,850
Technology Center 3700
____________________

Before LINDA E. HORNER, WILLIAM F. PATE, III, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Masafumi Nishitani (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-17. We have jurisdiction under 35
U.S.C. § 6(b). Appellant’s counsel presented oral argument on August 5,
2010.
We REVERSE.

THE INVENTION
Appellant’s claimed invention is directed to a metal golf club head
having the shape of a wood, wherein the sound of the club head hitting the
ball is high-pitched and clear (Spec. 1: para. [03] and Spec. 2: para. [08]).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A hollow golf club head made of metal, comprising:
a face portion;
a sole portion;
a side portion;
a crown portion; and
a plate piece made of metal and fixedly attached to an
internal surface of the golf club head on a toe side of the sole
portion so that one surface thereof is in tight contact with the
sole portion,
wherein the plate piece is disposed such that a bass-range
sound is dampened.

THE REJECTIONS
The following rejections by the Examiner are before us for review:
1. Claims 1, 2, 5 and 8-17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hasebe (US 6,254,494 B1, issued Jul. 3, 2001) in
view of Helmstetter (US 5,755,624, issued May 26, 1998), Nygren
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(US 4,076,254, issued Feb. 28, 1978) and Lee (US 2002/0160858 A1,
published Oct. 31, 2002).
2. Claims 3, 4, 6 and 7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hasebe in view of Helmstetter, Nygren, Lee, and
further in view of Galloway (US 6,371,868 B1, issued Apr. 16, 2002).

ISSUES
The issues before us are whether the Examiner erred in concluding
that the combined teachings of Hasebe, Helmstetter, Nygren and Lee would
have led a person having ordinary skill in the art to a golf club head having a
metal plate piece attached to an internal surface of the golf club head on a
toe side of the sole portion (1) that dampens a bass-range sound, as called for
in independent claim 1 (App. Br. 9, 12), or (2) that is of the size called for in
claim 2 (App. Br. 14).

ANALYSIS
Rejection of claims 1, 2, 5 and 8-17 over Hasebe, Helmstetter, Nygren and
Lee
Claim 1
Appellant contends that the combined teachings of Hasebe,
Helmstetter, Nygren and Lee do not describe a metal piece that dampens a
base-range sound, as called for in independent claim 1 (App. Br. 9, 12).
Appellant contends that “the Examiner still has not cited to a particular
portion of any reference which discloses that placement of a metal plate
piece as [sic, at] a particular location within a golf club head dampens a
base-range sound, as recited in claim 1.” (App. Br. 12).
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The Examiner proffers findings regarding the teachings of Hasebe,
Helmstetter, Nygren and Lee, and then proffers a rationale based on the
findings that “[t]hus, the converse must be true.” (Ans. 4). The Examiner
then found that “[t]he elimination of the foam core must provide for a higher
or crisper sound to emanate from the head during impact with a golf ball,”
and “[t]he addition of more metallic material to the interior of the head most
certainly must add to this higher pitched noise, to some extent, thereby
dampening lower bass range sounds.” (Emphasis added) (Ans. 4-5).
The Examiner concluded that “it would have been obvious . . . to
modify the amount and location of the metal material within the Hasebe
device to desirably alter the weight distribution” and then found that “[i]t is
clear that the amount of metallic material and the location of the metallic
material within the Hasebe hollow head must alter the output quality (i.e.,
Hz) of the sound.” (Emphasis added) (Ans. 5).
Claim 1 calls for, inter alia, a plate piece made of metal attached to an
internal surface of the golf club head on a toe side of the sole portion such
that a bass-range sound is dampened.
Appellant’s Specification describes that “it is found that an abnormal
sound, particularly a bass-range abnormal sound is generated more easily at
the time of hitting a ball with the golf club head as the golf club head is
made thinner” (Spec. 5: para. [29]).
We find that none of the prior art cited and applied either collectively
or individually describes dampening bass-range sounds. We agree with
Appellant that the Examiner has not provided even one specific citation in
the applied prior art that deals with Appellant’s problem or Appellant’s
particular solution thereto. In our view the applied prior art is largely
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irrelevant to Appellant’s claimed subject matter. Thus, we find that the
Examiner has not provided an adequate basis to support the proffered
rationale.
Thus, we find that the Examiner’s rationale is based upon speculation,
and is conclusory. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (holding 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.”).
Claim 2
Appellant contends that the combined teachings of Hasebe,
Helmstetter, Nygren and Lee do not describe “that a plate piece of the size
recited in claim 2 is placed at the specified location in the club head” (App.
Br. 14).
The Examiner found that:
[t]here is nothing unexpected claimed, here.
Obviously, sizing the plate piece [in Hasebe] with
a different thickness and weight would inevitably
change the sound produced by the club head. This
is nothing but common sense reasoning. Even
considering that Hasebe calls for a plate piece
having a mass that is outside the weight range
claimed by the applicant, the effect of reducing the
mass in Hasebe would flow logically from the
collective teachings in the prior art, insofar as the
effect on the sound emanating from the head at
impact and the effect on the weight distribution of
the head.
(Emphasis added) (Ans. 5).
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Appellant contends that “[t]he Examiner appears to simply be drawing
a conclusion upon which there is no support” (App. Br. 14).
Claim 2 calls for, inter alia, a plate piece made of metal attached to an
internal surface of the golf club head on a toe side of the sole portion having
a thickness of 0.2 mm-1.5 mm and a weight of 0.2 g-1.5 g.
While, we agree with the Examiner’s findings that Hasebe describes a
metal piece 4(A) outside the claimed size and weight range (col. 4, ll. 3-34),
we note that this piece 4(A) is disclosed for the purpose of adjusting the
center of gravity of the club head. Thus, the Examiner’s conclusion of
obviousness is based both on making a substantial change in the mass of the
metal piece 4(A) and also changing its purpose.
Appellant’s Specification describes (1) that a bass-range abnormal
sound is eliminated when the metal plate piece attached to an internal
surface of the golf club head on a toe side of the sole portion was of the
specific size and weight, that is, as called for in claim 2; and (2) a Table and
specific examples supporting the fact that the bass-range sound was
eliminated by the size and weight of the claimed metal plate piece, while
also describing examples wherein the bass-range sound was caught slightly.
(Spec. 7-10).
In view of the above, we find that it was not a predictable variation
that by minimizing the weight of the piece 4(A), and locating it as Appellant
has done, bass-range sound would be eliminated. Therefore, we disagree
with the Examiner’s finding, as set forth supra, that “there is nothing
unexpected here.” Accordingly, we find that the Examiner’s conclusion of
obviousness is based on a flawed finding. We also agree with Appellant that
the Examiner’s conclusion of obviousness is conclusory. See id.
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Thus, we reverse the rejection of independent claims 1 and 2.
Likewise, we reverse the rejection of claims 5 and 8-17, which depend
from independent claims 1 and 2, respectively.
Rejection of claims 3, 4, 6 and 7 under 35 U.S.C. § 103(a) over Hasebe,
Helmstetter, Nygren, Lee, and Galloway
The Examiner has not relied on Galloway for any teaching that would
remedy the deficiency in the combined teachings of Hasebe, Helmstetter,
Nygren and Lee (Ans. 7).
Thus, we reverse the rejection of claims 3, 4, 6 and 7, which depend
from independent claims 1 and 2, respectively.

CONCLUSIONS
The Examiner has erred in concluding that the combined teachings of
Hasebe, Helmstetter, Nygren and Lee would have led a person having
ordinary skill in the art to a golf club head having a metal plate piece
attached to an internal surface of the golf club head on a toe side of the sole
portion (1) that dampens a bass-range sound, as called for in independent
claim 1, and (2) that is of the size called for in claim 2.

DECISION
The decision of the Examiner to reject claims 1-17 is reversed.

REVERSED

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