Ex Parte Stites

Patent Trial and Appeal Board

Feb 27, 2017

12572709 (P.T.A.B. Feb. 27, 2017)

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.
12/572,709 10/02/2009 John T. Stites 007625.01425/09-0490 4474
11370 7590
Banner & Witcoff, Ltd.
10 South Wacker Drive
Suite 3000
Chicago, IL 60606
EXAMINER
STANCZAK, MATTHEW BRIAN
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
PTO-11370@bannerwitcoff.com
nike_docketing @ cardinal-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN T. STITES
Appeal 2015-004119
Application 12/572,709
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John T. Stites (“Appellant”)1 appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1—4, 8—14, 17—19, and 22—27. See
Br. 2. Claims 7, 15, and 16 have been canceled, and claims 5, 6, 20, 21, and
28—34 have been withdrawn. See id., Claims App. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
i According to Appellant, the real party in interest is NIKE, Inc. Br. 1.
Appeal 2015-004119
Application 12/572,709
CLAIMED SUBJECT MATTER
Appellant’s disclosed invention “relates to golf clubs and golf club
heads.” Spec. 12. Claims 1 and 14 are independent. Claim 1, reproduced
below, is illustrative of the subject matter on appeal.
1. A golf club head, comprising:
a wood-type golf club head body; and
an indicator formed in a sole portion of the wood type
golf club head body, the indicator extending across
substantially all of the sole portion and including:
a hub positioned vertically below the center of gravity
when the golf club head is oriented at its design lie angle at a
ball address orientation, the hub providing a visual indication of
a location of the center of gravity; and
a plurality of legs extending outward from the hub
toward a perimeter of the golf club head body.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Reach US 2,859,972 Nov. 11, 1958
Wright US 5,695,411 Dec. 9, 1997
Burrows US 6,422,951 B1 July 23,2002
REJECTIONS
The following rejections are before us for review:
I. Claims 1, 4, 8—13, 18, 19, and 22 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Burrows and
Reach. Final Act. 2—7.
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Application 12/572,709
II. Claims 2, 3, and 23—25 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Burrows, Reach, and Wright. Id. at
7-8.
III. Claims 14, 17, 26, and 27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Burrows. Id. at 9—11.
ANALYSIS
Independent claim 1 recites, in relevant part, a golf club head
including a “hub providing a visual indication of a location of the center of
gravity.” Br., Claims App. Appellant argues that the combined teachings of
Burrows and Reach do not address this recited limitation. See id. at 4—7. In
particular, Appellant asserts that “nowhere in Burrows does it disclose
exactly where its geometric center or its center of gravity is located,” but,
rather, that Burrows “merely states that the vertical axis of the dome is
centered on or aligned with the sweet spot.” Id. at 5. We agree.
In rejecting independent claim 1, the Examiner finds that Burrows
discloses “a hub (Fig. 5, noting the circular center), the hub providing a
visual indication of a location of the center of gravity.” Final Act. 2
(emphasis omitted) (citing Burrows, col. 3,11. 25—29). The Examiner
explains that Burrows’s “vertical apex is on the same line as the ‘sweet
spot’, [which] is the line on which the eg is located and which provides
optimum distance.” Id. According to the Examiner, “the vertical apex or
hub indicates the line perpendicular to the face on which the eg is located.”
Id. at 2—3.
Although we agree with the Examiner that Burrows discloses that the
apex of dome element 14 is aligned with or centered on the sweet spot of the
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Appeal 2015-004119
Application 12/572,709
club face (see id. at 2; Burrows, col. 3,11. 26—28), the Examiner’s rejection
does not establish that Burrows discloses that the apex of dome element 14
provides a visual indication of a location of the center of gravity, as
specifically required by claim 1. The Examiner takes the position that a
person having ordinary skill in the art would recognize that Burrows’s
‘“sweet spot’ would be designated by a line projected back from the front
face over the eg location as this would give the highest ball velocity.”
Ans. 11. According to the Examiner, “the apex of the dome is along this
projected line and . . . [is] also in-line with the eg.” Id.
However, this speculative position is not supported by the disclosure
of Burrows, which does not disclose that the sweet spot, or the apex of dome
element 14, visually indicates the location of the center of gravity of the club
head. To the extent that Burrows describes dome element 14 as visually
indicating a characteristic of the club head, Burrows describes only that “[a]
vertical axis of the dome element 14 is desirably centered on or aligned with
a ball impact point or sweet spot, which can be indicated by an arrow 34.”
Burrows, col. 3,11. 26—28 (boldface omitted). In other words, Burrows
discloses a correlation between the apex of dome element 14 and the sweet
spot of the club face. But the Examiner does not provide sufficient evidence
to establish what visually-indicative relationship, if any, exists between the
center of gravity location of the club head, the sweet spot of the club face,
and the apex of dome element 14 in Burrows. Although we appreciate that
the center of gravity of the club head might lie on a perpendicular line
projected back from the sweet spot of the club face, as the Examiner posits
(see Final Act. 2—3; Ans. 11), the center of gravity might just as likely lie
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Appeal 2015-004119
Application 12/572,709
elsewhere within the club head (e.g., forward or rearward of such a projected
line).
Moreover, the Examiner’s reliance on Reach does not cure the
deficiency in the disclosure of Burrows identified above. The Examiner
finds that “Reach discloses a sole element [(i.e., weight 30)] that acts as a eg
indicator because it is located both at both the geometric center of the club
and below [the] center of mass (i.e. eg) of the club.” Final Act. 3 (citing
Reach, Fig. 3, col. 2,11. 48—50, 62—69). However, the Examiner’s rejection
does not establish that Reach’s weight 30 visually indicates the location of
the center of gravity of the club head. According to the Examiner, Reach’s
weight 30 serves as an indicator because Figure 4 “show[s] the head body
and center hub being of two materials . . . [and] reinforces the idea that [a]
visual distinction is present.” Ans. 13. However, the Examiner’s position is
speculative and unsupported by the disclosure of Reach, which does not
disclose that weight 30 is visually discernible from the outside of the club
head.2 In this regard, we agree with Appellant that “it is impossible to tell
from the section views provided whether the bottom surface of item 30 is
visible from an exterior of the club head.” Br. 7.
Thus, the Examiner has not established by a preponderance of the
evidence that any of the cited references, particularly Burrows as relied
upon, discloses the disputed limitation as claimed. This unsupported finding
pervades Rejections I—III. See Final Act. 2—11. In Rejection II, the
Examiner relies on Wright for teaching additional claimed features, but not
2 Although weight 30 may be seen in Figures 3 and 4, these are
“sectional” views, which cut away part of the club head to depict structure
(such as weight 30) inside the club head. See Reach, col. 2,11. 33—37.
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Appeal 2015-004119
Application 12/572,709
to cure the deficiency of Burrows identified above. See id. at 7—8. In
Rejection III of independent claim 14, which recites a limitation similar to
the disputed limitation of claim l,3 the Examiner relies on the same findings
made with respect to Burrows discussed above for Rejection I, and does not
articulate any additional findings or reasoning that would cure the
aforementioned deficiency in Burrows. See id. at 9—11. Rejections based on
obviousness must rest on a factual basis; in making such a rejection, the
Examiner has the initial burden of supplying the requisite factual basis and
may not, because of doubts that the invention is patentable, resort to
speculation, unfounded assumptions, or hindsight reconstruction to supply
deficiencies in the factual basis. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967). The lack of sufficient evidentiary support from Burrows
regarding any visually-indicative correlation between the apex of dome
element 14, as relied upon, and the center of gravity of the club head, as
discussed above, is fatal to Rejections I—III.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper case that the claims are unpatentable
based on the cited references. On this basis, we do not sustain the rejections
of claims 1—4, 8—14, 17—19, and 22—27.
3 Independent claim 14 recites, in relevant part, “an indicator formed in
the wood-type golf club head body indicating a center of gravity of the golf
club head.” Br., Claims App.
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Appeal 2015-004119
Application 12/572,709
DECISION
We REVERSE the Examiner’s decision rejecting claims 1—4, 8—14,
17-19, and 22-27.
REVERSED
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