Vardon, INC

Patent Trials and Appeals Board

Sep 30, 2020

14677820 - (D) (P.T.A.B. Sep. 30, 2020)

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.
14/677,820 04/02/2015 Dillis V. Allen 2641
26985 7590 09/30/2020
Dillis V. Allen & Associates
367 Arbor Glen Blvd
Schaumburg, IL 60195
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/30/2020 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DILLIS V. ALLEN
____________

Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1
Technology Center 3900
____________

Before MICHELLE R. OSINSKI, JILL D. HILL, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL

The Appellant1 appeals the Examiner’s rejections of claims 1–7,
10–12, 15–19, and 23–26. We sustain at least one rejection for each claim
on appeal and we enter a new ground of rejection. Therefore, we affirm and
designate our affirmance as a new ground of rejection.2

1 The Appellant is the “applicant” as defined by 37 C.F.R. § 1.42. “The real
party in interest” is “the named inventor, Dillis V. Allen.” (Appeal Br. 8.)
2 We have jurisdiction under 35 U.S.C. §§ 6 and 134(a).
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

2
BACKGROUND
The above-identified application on appeal (the “Reissue Application”)
seeks a broadened reissue of US Patent 8,911,301 B1 (the “Issued Patent”).
The Issued Patent issued on December 16, 2014 and matured from a patent
application (the “Patent Application”) filed on January 15, 2013. The Reissue
Application was filed on April 2, 2015, which is within two years of the issue
date of the Issued Patent.
THE APPELLANT’S INVENTION
The Patent Application dubs the Appellant’s invention “facetongue
technology,” and discloses a single embodiment of a golf iron clubhead 10
that “incorporates” this facetongue technology. (Patent Application
p5:18–20.)3
The disclosed clubhead 10 has an overall profile corresponding to that
of a traditional clubhead configuration, as shown in our annotated drawing
below.

3 Our citations to the “Patent Application” throughout this opinion refer to
the patent application filed on January 15, 2013.
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

3
The above drawing is a darkened profile of the clubhead 10 when it is
viewed from the front. (See Patent Application p5:2, p5:20–p6:2, Fig. 1.) A
facewall 17, a toe, a sole, a heel, and a hosel are labeled on this profile. The
facewall 17 is what “impacts the [golf] ball” (id. p2:4), is “generally planar”
(id. p6:1), and has a “geometric center 25” (id. p6:18). As plotted on the
clubhead’s profile, the Patent Application uses a standard x-y-z convention
to substantiate planar, parallel, perpendicular, and other orthogonal
orientations of the clubhead 10. (See id. p3:4–8, p4:1–4, p6:5–7, p7:1–3,
p7:22–8:2.)
The clubhead 10 has “separate pieces” that could be “cast” and
“fastened together, after casting.” (Patent Application p9:3–5.) This
two-piece construction is shown in our annotated drawing below.

The above drawing is an exploded view of the clubhead 10 showing that it
has a front piece and a rear piece. (See id. p5:14–16, Fig. 7.) As labeled on
this drawing, the front piece has a facewall 17, a tongue 36, and what we call
a “lip” for the sake of expediency only. The tongue 36 has a symmetrical
arcuate shape, and, as also labeled on the above drawing, the rear piece has a
groove 42 with a “complementary” shape. (Id. p6:10.)
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

4
The front and rear pieces of the clubhead 10 are shown fastened
together in our annotated drawing below.

The above drawing is a sectional view of the clubhead 10 showing the
interface between the tongue 36, the groove 42, and adjacent slot-forming
surfaces. (See Patent Application p5:10–11, Fig. 5.) As shown in the above
drawing, the clubhead has a two-slot arrangement in which a first slot 31
spaces the facewall 17 from the tongue 36 and a second slot 46 spaces the lip
from a neighboring surface of the rear piece. (See id. p6:12–15, p7:4–6.) As
also shown in the above drawing, the tongue 36 (which is also called “a
piston 36” (id. p8:8)) and the groove 42 (which is also called “a cylinder 42”
(id. p7:7)) engage in a piston-cylinder fashion.
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

5
The front piece of the clubhead 10 is shown isolated from the rear
piece in our annotated drawing below.

The above drawing is a sectional view of the front piece of the clubhead 10.
(See id. p5:10–11, Fig. 5.) This drawing shows that the facewall 17, the
tongue 36, and the lip (shaded in gray) are all part of the same integral
structure. The lip has a U-shape with a right side (formed by a lower region
of the facewall 17), a left side (positioned parallel behind the right side), and
a curved bight therebetween. The tongue 36 resides at the top of the lip’s
left side, and only the lip connects the tongue 36 to the facewall 17.
Although there is only one disclosed embodiment of the clubhead 10,
the above-depicted integral structure is described in two different ways.
facewall 17tongue 36
FRONTREAR
lip
left side right side
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

6
The Patent Application firstly describes a “facewall,” a “‘U’ shaped
channel,” a “rear leg,” and an “[a]n arcuate horizontally elongated tongue.”
(Patent Application p3:13–20.) The U-shaped channel is “just behind” the
facewall (id. p3:13–14), the rear leg of the channel “extends vertically
upwardly behind and parallel to the facewall” (id. p3:14–15), and the tongue
“is formed on the rear surface of the rear leg” (id. p3:19–20).
The Patent Application secondly describes a “facewall 17,” a “tongue
and groove assembly 20,” a “U-shaped flange 28,” a “lower portion [29] of
facewall 17,” an “upwardly extending wall 33,” and a “tongue 36.” (Patent
Application p6:8–12.) The tongue and groove assembly 20 “includes” the
U-shaped flange 28 and the tongue 36. (Id. p6:8–10.) The U-shaped
flange 28 “includes” the lower portion 29 of the facewall 17 and the wall 33.
(Id. p6:8–10.)
There appears to be some discord in the appeal papers as to the
precincts of the integral structure,4 the flexibility, movability, and heel-to-toe
extensions of these precincts, and the connections (or lack thereof)
associated therewith. (See Non-Final Action 8–30; Appeal Br. 35–52;
Answer 23–47; Reply Br. 8–18.)
As for the precincts of the integral structure, per the first description,
at least a lower region of the U-shaped channel’s rear leg serves as the left
side of the lip; and the tongue is formed on the rear surface of the rear leg.
(See Patent Application p3:19.) Per the second description, at least a lower

4 We use the term “precincts,” for the sake of expediency only, to discuss
regions of the front piece which, while perhaps not physically demarked in
the drawings, collectively correspond to the integral structure that includes
the facewall, the tongue, and the lip.
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

7
region of the wall 33 serves as the left side of the lip; the wall 33 is included
in the U-shaped flange 28; and the U-shaped flange 28 and the tongue 36 are
listed as separate elements of the tongue and groove assembly 20. (See id.
p6:12–14.) Thus, regardless of nomenclature, the Patent Application
delineates the tongue as an element which is distinct from (although integral
with) whatever region of the integral structure is serving as the left side of
the lip. Put another way, the Patent Application does not describe a
clubhead without a tongue.5
As for the flexibility/movability of the precincts of the integral
structure, the first description describes the upper edge of the channel’s rear
leg as having “unrestricted movement fore and aft along the clubhead target
line.” (Patent Application p3:15–16.) The second description describes the
second slot 46 of the clubhead’s two-slot arrangement as “increase[ing] the
flexibility of not only the facewall 17 but also the upwardly extending
wall 33.” (Id. p8:3–5.) As discussed above, the tongue is integrally formed
with these movable/flexible elements (see id. Figs. 5–7), and the tongue
slides in the groove in the clubhead’s rear piece (see id. p3:10–11, p8:6).
Thus, the Patent Application describes the facewall, the tongue, and the lip
as being flexible/movable relative to the clubhead’s rear piece.
As for the toe-to-heel extension of the precincts of the integral
structure, the first description describes the U-shaped channel as “running
along the entire length of the lower edge of the facewall.” (Patent

5 A dictionary definition of “tongue” is “[a] protruding strip along the edge
of a board that fits into a matching groove on the edge of another board.”
(https://www.thefreedictionary.com/tongue, last visited September 27,
2020.)
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

8
Application p3:13–14.) The second description describes the U-shaped
flange 28 as defining a slot (the first slot 31 of the clubhead’s two-slot
arrangement) which extends between a heel-adjacent “point 39” and a
toe-adjacent “point 40” of the clubhead. (Id. p6:12–13, see also Fig. 3.) The
left side of the lip (i.e., the channel’s rear leg or the wall 33) and the
tongue 36 residing on top thereof, are described and depicted as sharing this
substantial heel-to-toe span. (See id. p6:17–20, p8:8–13, Figs. 1, 2, 6.)
As for connections associated with the precincts of the integral
structure (or lack thereof), the lip is disclosed as forming a flexible hinge
along the lower edge of the facewall 17 and so its left side is not rigidly
connected to the facewall 17. (See Patent Application p3:15–17, p8:3–5.)
The tongue 36 is disclosed as only being connected to the facewall 17 by
this flexible hinge, and so the tongue is not rigidly connected to the
facewall 17. (See id. p3:8–19, p4:11–13, p6:3–5, Fig.4).
With respect to the clubhead’s rear piece, the lip is spaced therefrom
by a slot (the second slot 46 in the clubhead’s two-slot arrangement) and the
tongue 36 engages with the groove 42 in a piston-cylinder fashion. (See
Patent Application p3:10–11, p6:15–16, p8:3–5, Fig. 4.) Thus, the
facewall 17, the tongue 36, and the lip are not rigidly connected to the
clubhead’s rear piece.6

6 We disagree with the Examiner that the clubhead’s piston-cylinder
engagement rigidly connects the tongue to the clubhead’s rear piece. (See
Non-Final Action 9.) The Patent Application expressly distinguishes the
clubhead 10, and particularly the piston-cylinder engagement of the
tongue 36 and the groove 42, from prior art clubheads in which “piston
devices are connected directly to the rear of the clubface.” (Patent
Application p4:8–11.)
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

9
Thus, the Patent Application discloses an integral structure (formed at
least in part by a facewall, a tongue, and a lip) which possesses the flexibility,
movability, toe-to-heel span, and unconnectedness outlined above.
ILLUSTRATIVE CLAIMS7
[Issued Claim] 1. An iron golf clubhead, comprising: a
clubhead body having a facewall with a lower portion, a toe
portion, a heel portion, and a rearwardly extending portion, a
hosel extending generally upwardly from the heel portion, a
wall portion extending rearwardly and integrally upwardly from
the lower portion of the facewall, and a tongue defined at least
in part by and integral with the upwardly extending wall portion
unconnected to the body rearwardly extending portion so it is
free to flex forwardly and rearwardly relative to the rearwardly
extending portion.

[Reissue Claim] 1. An iron golf clubhead, comprising: a
clubhead body having a facewall with a lower portion, a toe
portion, a heel portion, and a rearwardly extending portion, a
hosel extending generally upwardly from the heel portion, a
wall portion extending rearwardly and integrally upwardly from
the lower portion of the facewall and extending upwardly
parallel to the facewall, said upwardly extending wall portion
being unconnected rigidly to the body rearwardly extending
portion so it is free to flex forwardly and rearwardly relative to
the rearwardly extending portion, said body rearwardly
extending portion having a forward surface parallel to and
closely spaced from the upwardly extending wall portion.

7 We refer to the claims issued in the Issued Patent as the “Issued Claims,”
refer to the claims pending in the Reissue Application as the “Reissue
Claims,” refer to the prosecution history of the Issued Patent, from the filing
of the Patent Application to allowance, as the “Patent FileWrapper,” and
refer to the prosecution history of the Reissue Application, to date, as the
“Reissue FileWrapper.”
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

10
OVERVIEW OF REJECTIONS
The Examiner rejects some or all of the Reissue Claims under
35 U.S.C. § 102 (Rejection I), 35 U.S.C. § 103 (Rejection II), 35 U.S.C.
§ 112 (Rejections III and IV), and 35 U.S.C. § 251 (Rejections V–VII). We
enter a new ground of rejection under 35 U.S.C. § 251 for some of the
Reissue Claims (Rejection VIII).
REJECTION I
The Examiner rejects Reissue Claims 1 and 7 under 35 U.S.C.
§ 102(e) as anticipated by the Wahl Patent.8 (See Non-Final Action 32.) We
sustain this rejection.
Status as a Prior Art Reference
“[A] patent granted on an application for patent by another filed in the
United States before the invention by the applicant for [a] patent” qualifies
as a prior art reference. (35 U.S.C. § 102(e).) Thus, in order for the Wahl
Patent to qualify as a prior art reference under 35 U.S.C. § 102(e), it must
have an effective filing date before the filing date of the Issued Patent.
The filing date of the Wahl Patent is March 14, 2013, which does not
predate the Issued Patent’s filing date of January 15, 2013. However, the
Wahl Patent “claims the benefit of” a provisional application (“Wahl
Provisional”)9 which was filed on June 8, 2012. (Wahl Patent c1:6–7.) If
the Wahl Patent is entitled to the filing date of the Wahl Provisional then it
qualifies as a prior art reference under 35 U.S.C. § 102(e).

8 US 9,044,653 B2, issued June 2, 2015.
9 US Provisional Application 61/657,675, filed June 8, 2012.
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

11
“A provisional application’s effectiveness as prior art depends on its
written description support for the claims of the issued patent of which it
was a provisional.” (Dynamic Drinkware, LLC v. National Graphics, Inc.,
800 F.3d 1375, 1382 (Fed. Cir. 2015).) Here, the Wahl Provisional provides
written description support for at least one claim in the Wahl Patent. For
example, issued claim 1 of the Wahl Patent mirrors the subject matter of
claim 4 (which depends from claim 1) of the Wahl Provisional. (Compare
Wahl Patent c34:54–c35:22, with Wahl Provisional p41:3–22, p42:6–9.)
Also, as demonstrated by the citations below, the disclosures in the Wahl
Patent necessary to support the Examiner’s rejection are correspondingly
contained in the Wahl Provisional.
Anticipation
“A prior art reference can only anticipate a claim if it discloses all the
claimed limitations ‘arranged or combined in the same way as in the claim.’”
(Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381
(Fed. Cir. 2015).) “However, a reference can anticipate a claim even if it
‘d[oes] not expressly spell out’ all the limitations arranged or combined as in
the claim, if a person of skill in the art, reading the reference, would ‘at once
envisage’ the claimed arrangement or combination.” (Id.)
Analysis
Reissue Claim 1 requires the clubhead to comprise a “heel portion,” a
“toe portion,” and a “hosel.” (Appeal Br., Claims App.) The Examiner
finds that Wahl discloses a clubhead comprising these elements. (See
Non-Final Action 32.) Wahl discloses “an iron type golf club head 100”
comprising “a heel 102, a toe 104, a sole portion 108, a top line portion 106,
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

12
and a hosel 114.” (Wahl Patent c10:64–66, Fig. 1A; see also Wahl
Provisional p5:22–23, Fig. 1A.)
Reissue Claim 1 requires the clubhead to also comprise “a facewall
with a lower portion,” a “wall portion extending rearwardly and integrally
upwardly from [a] lower portion of the facewall and extending upwardly
parallel to the facewall.” (Appeal Br., Claims App.) The Examiner finds
that Wahl’s clubhead 100 comprises these elements. (See Non-Final
Action 32.) Wahl discloses that its clubhead 100 comprises a striking
face 110 and a channel 150 defined by a forward wall 152 and a rear
wall 154; and Wahl depicts the forward wall 152 as extending in the claimed
manner. (See Wahl Patent c13:27–31, c15:20–22, Figs. 1E, 1F; see also
Wahl Provisional p10:3–6, p13:8–10, Figs. 1E, 1F.)
Reissue Claim 1 requires the clubhead to additionally comprise a
“rearwardly extending portion” having “a forward surface parallel to and
closely spaced from the upwardly extending wall portion.” (Appeal Br.,
Claims App.) The Examiner finds that Wahl’s clubhead 100 comprises such
a rearwardly extending portion. (See Non-Final Action 32.) As indicated
above, Wahl discloses that the channel 150 has a rear wall 154; and Wahl
depicts this rear wall 154 as having a forward surface parallel to and closely
spaced from the front wall 152. (See Wahl Patent, Figs. 1C–1F; see also
Wahl Provisional Figs. 1C–1F.)
Reissue Claim 1 further requires “said upwardly extending wall
portion” to be “unconnected rigidly to the body rearwardly extending
portion so it is free to flex forwardly and rearwardly relative to the
rearwardly extending portion.” (Appeal Br., Claims App.) The Examiner
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

13
finds that Wahl discloses such flexibility. (See Non-Final Action 32.) Wahl
discloses that a golf clubhead can be provided with “a flexible boundary
structure” that “enhances the capability of an adjacent or related portion of
the golf clubhead to flex or deflect and to thereby provide a desired
improvement in the performance of the golf clubhead.” (Wahl Patent
c2:5–11; see also Wahl Provisional p2:18–22.) Wall also discloses that this
flexible boundary structure can be “a channel.” (Wahl Patent c2:6, see also
Wahl Provisional p2:19.)
The Appellant argues that, in Wahl, “[the] upward wall 152 is integral
with and cast as one piece together with the rear 135, so that prevents the
wall 152 and the lower part of the face 110 from freely moving back and
forth in the direction of ball travel from the facewall 110 at ball impact.”
(Appeal Br. 64.) However, Wahl expressly discloses that a one-piece
clubhead can have a channel which allows its facewall “to flex under the
load of a golf ball impact.” (Wahl Patent c15:30–39, Fig. 2C; see also Wahl
Provisional p13:15–21, Fig. 2C.)
Reissue Claim 7, which depends from Reissue Claim 1, requires the
facewall to have a “portion” that is “free to move in a direction
perpendicular to the facewall.” (Appeal Br., Claims App.) The Wahl Patent
discloses that, with a channel configuration (e.g., channel 150’s
configuration), the striking face 110 deflects upon golf ball impact. (Wahl
Patent c15:30–39, Figs. 1F, 2F; see also Wahl Provisional p13:8–21, Figs.
1F, 2F.)
Thus, the prior art reference discloses all of the claimed limitations
and their claimed arrangement. Inasmuch as Wahl may not expressly spell
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

14
out the flexibility required by Reissue Claim 1 and/or the freedom required
by Reissue Claim 7, one of ordinary skill in the art would at once envisage
the claimed flexibility and freedom after reviewing Wahl’s disclosure.
Therefore, we sustain Rejection I.
REJECTION II
The Examiner rejects Reissue Claims 1 and 7 under 35 U.S.C.
§ 103(a) as obvious over the Wahl Patent. (See Non-Final Action 32.) We
sustain this rejection.
Obviousness
“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.” (KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).)
“[H]owever, the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” (Id.)
Analysis
As discussed above, Reissue Claim 1 requires “said upwardly
extending wall portion” to be “unconnected rigidly to the body rearwardly
extending portion so it is free to flex forwardly and rearwardly relative to the
rearwardly extending portion,” and Reissue Claim 7 further requires the
facewall to have a “portion” that is “free to move in a direction
perpendicular to the facewall.” (Appeal Br., Claims App.) As also
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

15
discussed above, inasmuch as Wahl may not expressly spell out this
flexibility and freedom with respect to its golf clubhead 100, one of ordinary
skill in the art would at once envisage this flexibility and freedom.
Moreover, inasmuch as one of ordinary skill in the art would not at
once envisage the claimed flexibility and freedom, one of ordinary skill in
the art would immediately understand from Wahl’s teachings that the prior
art clubhead 100 could be provided with such flexibility and freedom.
As pointed out by the Examiner, Wahl discloses not only the golf
clubhead 100, but also other “similar embodiments.” (Non-Final Action 32.)
In particular, Wahl teaches that a channel configuration, nearly duplicating
that of the channel 150 in golf clubhead 100, can have “hinge” regions that
“flex under the load of a golf ball impact,” which “in turn, creates additional
deflection of the striking face.” (Wahl Patent c15:30–39, Figs. 1F, 2F; see
also Wahl Provisional p13:8–21, Figs. 1F, 2F.) Wahl further teaches that
such a “flexible boundary structure” provides “a desired improvement in the
performance of the golf clubhead.” (Wahl Patent c14:57–62; see also Wahl
Provisional p12:14–17.)
Thus, the record sufficiently supports a determination that one of
ordinary skill in the art would understand that Wahl’s golf clubhead 100
could be provided with the flexibility and freedom recited in Reissue
Claims 1 and 7. The record also sufficiently shows that one of ordinary skill
in the art would be motivated to do so, because this flexibility and freedom
would provide a desired improvement in the performance of the golf
clubhead. Therefore, we sustain Rejection II.
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

16
REJECTION III
The Examiner rejects claims 1–7, 10–12, 17–19, and 23–26 under
35 U.S.C. § 112(a) as failing to comply with the written description
requirement. (Non-Final Action 24–25.) We do not sustain this rejection.
Written Description
The test for determining compliance with the written description
requirement is whether the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had possession at that
time of the later claimed subject matter, rather than the presence or absence
of literal support in the specification for the claim language. (In re Kaslow,
707 F.2d 1366, 1375 (Fed. Cir. 1983).)
Analysis
The Examiner determines that the Patent Application does not
reasonably convey possession of subject matter specified by the Reissue
Claims because they recite “new matter” for which “[t]here is no support” in
the Patent Application. (Non-Final Action 24–25.)
Many of the Examiner’s new-matter concerns stem from the Reissue
Claims’ imprecise naming of the clubhead’s elements which, in turn, causes
an imperfect correlation between them and those described in the Patent
Application. As discussed above, the Patent Application conveys possession
of an integral structure including a facewall, a tongue, and a lip, although the
precincts of this integral structure are described with different words. The
Examiner does not maintain that the named elements in the Reissue Claims
do not collectively constitute the disclosed precincts of the integral structure;
and the Examiner does not maintain that the named elements collectively do
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

17
not possess the claimed flexibility, movability, toe-to-heel span, or
unconnectedness. Although the imprecision pointed out by the Examiner is
symptomatic of indefiniteness, this imprecision does not reflect an intention
to inject new matter into the Reissue Claims.
The Examiner’s new-matter concerns also involve limitations which
require a claimed element to be “perpendicular” or “parallel” to something
else. (See Non-Final Action 10, 13.) The Examiner acknowledges that these
perpendicular/parallel limitations are consistent with the drawings, but
maintains that “the drawings cannot be relied upon alone to support” these
limitations. (Id.) However, as discussed above, the Patent Application uses
a standard x-y-z convention to substantiate the parallel and perpendicular
orientations disclosed in the drawings. (See Patent Application, p3:4–8,
p4:1–4, p6:5–7, p7:21–p8:2, Fig. 1.)
The Examiner’s remaining two new-matter concerns pertain to the
claimed projection of the clubhead’s hosel (see Non-Final Action 14) and
the claimed location of a lubrication system (see id. at 11).
As for the hosel’s projection, the at-issue claim (Reissue Claim 26)
sets forth that the hosel “project[s] forwardly from the facewall ball striking
surface when viewed from the toe side of the clubhead toward the heel side
of the clubhead.” (Appeal Br., Claims App.) The Patent Application
discloses this view of the clubhead 10, and this view shows the hosel 16
projecting forwardly from the facewall. (See Patent Application, Fig. 4.)
We disagree with the Examiner’s implication that the claim language
requires the hosel to extend directly from the facewall (see Non-Final
Action 14), especially because Reissue Claim 26 also requires the hosel to
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

18
“exten[d] generally upwardly from” the clubhead’s “heel portion” (Appeal
Br., Claims App.).
As for the lubrication system’s location, the at-issue claim (Reissue
Claim 3) sets forth a lubrication system “in” the tongue-receiving groove in
the clubhead’s rear piece. (Appeal Br., Claims App.) The Patent
Application describes the groove 46 as having a rear “chamber 48” which is
“lubricated by a passage 50,” via lubricant being fed through a “fitting 52.”
(Patent Application p7:6–13, see also Fig. 5.) As correctly pointed out by
the Examiner, the passage 50 and the fitting 52 are located behind, not “in,”
the tongue-receiving groove 42. (See Non-Final Action 11.) However,
Reissue Claim 3 does not require all of the components of the lubrication
system to be located in the tongue-receiving groove. The chamber 48 can be
considered a component of the lubrication system, and the chamber 48 is
located “in” the tongue-receiving groove.
Thus, the Patent Application reasonably conveys possession of the
subject matter specified by the Reissue Claims in compliance with the
written description requirement. Therefore, we do not sustain Rejection III.
REJECTION IV
The Examiner rejects Reissue Claims 1–7, 10–12, 15–19, and 23–26
under 35 U.S.C. § 112(b) as being indefinite. (Non-Final Action 25.) We
sustain this rejection.
Indefiniteness
The test for definiteness under 35 U.S.C. § 112, is whether “those
skilled in the art would understand what is claimed when the claim is read in
light of the specification.” (Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

19
806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted).) A claim is
properly rejected as indefinite if the “claim is ambiguous, vague, incoherent,
opaque, or otherwise unclear.” (In re Packard, 751 F.3d 1307, 1311 (Fed.
Cir. 2014).)
Analysis
The Examiner determines that the scope of the Reissue Claims are
“unclear,” contain “inaccurate” suggestions or descriptions, “lack proper
antecedent basis,” are “open to multiple interpretations,” and/or their scope
“cannot be determined with any reasonable degree of certainty.” (See, e.g.,
Non-Final Action 28.)
The Examiner is initially troubled with the word “iron” in the Reissue
Claims’ preamble phrase “[a]n iron golf clubhead.” (Appeal Br., Claims
App.) The Examiner maintains that “it is unclear” what role the word “iron”
plays with respect to the scope of the Reissue Claims. (Non-Final
Action 25.) We agree.
The word “iron” was defined in the following paragraph in the Issued
Patent:
It should also be understood that the specific embodiment of the
prevent invention is incorporated into iron-type golf clubs
because the metal thickness behind the facewall provides
increased opportunity to house the presently designed tongue
and groove. However, it may be that some future visionary
may well adopt these principles into a metal wood-type club so
that possibility is within the scope of the present invention and
that the term “iron” in the Claims is intended to be only
preferable and not limiting.
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

20
(Issued Patent c2:20–28; see also Patent Application p4:14–19.) This
paragraph remains in the Reissue Application, and thus the record contains a
definition of the term “iron” that does not limit the Reissue Claims to “iron-
type-golf clubs,” and specifies that their scope would encompasses a “metal
wood-type club” developed by a future visionary.
However, the record also contains contentions that the term “iron”
does not “expand the scope of the ‘iron’ [Reissue] Claims to encompass
metal woods.” (Reissue FileWrapper, Response filed June 18, 2018,
page 26.) The Appellant contends that the above-quoted paragraph was
intended to mean that “in cases where the underlying [Reissue] Claims do
not specify whether the clubhead is a metal wood or an iron wood, then in
that case, and in only that case, the Claims are to be interpreted to include
both irons and metal woods.” (Id.) As for the “metal wood-type club” and
the “future visionary” sentence, the Appellant contends that it was intended
to mean that “the present invention could, in some remote circumstances, be
applied to metal woods.” (Id.)
But one of ordinary skill reading the Issued Patent would be unaware
of the Appellant’s intentions, even with the help of the Patent FileWrapper.
Thus, the record sends two conflicting messages regarding the word
“iron” in the Reissue Claims: 1) the word “iron” is not limiting; and 2) the
word “iron” is limiting. “This renders the claims indefinite because it is
unclear whether or not the claims are limited to a traditional iron-type club.”
(Non-Final Action 25.)
The Appellant argues that, although “there is an inconsistency,
admittedly,” this inconsistency “does not create an indefiniteness.” (Appeal
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

21
Br. 52.) The Appellant argues that this inconsistency, and any indefiniteness
created thereby, is erased by “application of the common file wrapper
estoppels rule.” (Id. at 53.) According to the Appellant, when the
file-wrapper-estoppel rule is applied here, “the [Reissue] Claims are in fact,
under law, limited to iron-type clubheads.” (Id.)
To be sure, the prosecution history of the Issued Patent “serves as
intrinsic evidence for purposes of claim construction” and may be relevant
when “construing patent claims before the PTO.” (Tempo Lighting, Inc. v.
Tivoli, LLC, 742 F.3d 973, 977 (Fed. Cir. 2014).) Here, however, we are
looking at claims in a still pending application, and, to boot, the bothersome
indefiniteness was introduced during prosecution of this still-pending
application. Thus, the still-evolving prosecution history of the Reissue
Application does not resolve the indefiniteness surrounding the word “iron.”
Moreover, even with respect to the prosecution history of the Issued Patent,
file wrapper estoppel “generally only binds the patent owner” and we are
“under no obligation to accept a claim construction” proffered during
prosecution of the Issued Patent. (Id. at 978.)
Aside from the preamble, the Examiner determines that a long list of
limitations recited in the Reissue Claims are problematic (see Non-Final
Action 25–30); and the Appellant advances arguments challenging, to some
extent, these determinations (see Appeal Br. 54–61; Reply Br. 11–18).10

10 We do not share the Appellant’s overall sentiment that the Examiner’s
indefiniteness determinations are unworthy of response. (See Appeal
Br. 61.) The Examiner quotes each instance of troublesome claim language,
and identifies, in each instance, why the quoted claim language is indefinite.
(See Non-Final Action 25–30.) When an examiner has “issued a well-
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

22
We are persuaded by some of the Appellant’s arguments. We agree
with the Appellant that one of ordinary skill would: (1) deduce that a
wall/leg portion (not a surface or slot) is “free to move forwardly and
rearwardly;” (2) would know that a clubhead has one “target line;”
(3) would accurately appreciate what is meant by a wall portion “having an
upper edge with unrestricted movement along [the] clubhead target line;”
(4) would recognize that the “maximum extent possible” is a ceiling set by
clubhead integrity (see Patent Application p3:3–8); and (5) would
understand the magnitude of the modifier “significantly” with respect to the
toe-to-heel span of a golf clubhead. We also agree with the Appellant that
adequate antecedent basis for the term “piston” is established by an earlier
recital of a “piston and groove assembly,” and that it is acceptable to refer to
“the” length of an already introduced element when length is an inherent
characteristic of that element.
However, we agree with the Examiner that the predominant problem
with the Reissue Claims is the Appellant’s serial imprecision when naming
the clubhead’s elements. As pointed out by the Examiner, the Appellant

grounded rejection that identifies ways in which language in a claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention,” an applicant must “provide a
satisfactory response.” (In re Packard, 751 F.3d 1307, 1311 (Fed. Cir.
2014).) A satisfactory response “can take the form of a modification of the
language identified as unclear, a separate definition of the unclear language,
or, in an appropriate case, a persuasive explanation for the record of why the
language at issue is not actually unclear.” (Id.) If an applicant “fails to
provide a satisfactory response,” an examiner can “properly reject the
claim[s] as failing to meet the statutory requirements of § 112(b)” (id.), and,
in turn, it is proper for us to sustain such a rejection.
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

23
repeatedly uses the same words, in different sequences, to define various
elements of the clubhead. (See Non-Final Action 25–30.) For example, the
Reissue Claims recite a “lower portion,” a “facewall lower portion,” an
“arcuate lower portion,” a “body rearwardly extending portion,” an
“upwardly extending wall portion,” a “rearwardly and upwardly extending
wall portion,” a “wall portion extending rearwardly,” and a “rear leg wall,”
along with defining still other elements with the words “portion,”
“facewall,” “wall, “lower,” “front,” “rear,” “rearwardly,” and “upwardly.”
(See Appeal Br., Claims App.)
The Appellant’s repetitive and extensive use of the same words does
not, in and of itself, doom the Reissue Claims to indefiniteness. However,
with such a lexicographic strategy, there must be a faithful adherence to
these words, and their sequences, when referring to claim elements. The
Appellant falls short in his regard, and this shortcoming renders the Reissue
Claims confusing to the degree of indefiniteness. As pointed out by the
Examiner, this confusion is compounded in means-plus-function clauses
which define the “means” by connecting “portions” to “portions” of host
“portions” at locations between “portions.” (See, e.g., Non-Final
Action 28–30.)
Thus, the Reissue Claims fail to particularly point out and distinctly
claim the subject matter which the Appellant regards as its invention.
Therefore, we sustain Rejection IV.
REJECTION V
The Examiner rejects Reissue Claims 1–7, 10–12, 17–19, and 23–26
under 35 U.S.C. § 251 (the “Reissue Statute”) because the Appellant
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

24
introduces new matter into the Reissue Application. (Non-Final Action 18.)
We do not sustain this rejection.
New Matter in Reissue Application
The Reissue Statute allows a patentee to seek reissue of an issued
patent if certain conditions are met. (35 U.S.C. § 251.) However, even
when these conditions are met, “[n]o new matter shall be introduced into the
application for reissue.” (Id.)
Analysis
The Examiner determines that the Appellant introduces new matter
into the Reissue Application. (See Non-Final Office Action 18.) The
Reissue Application, as filed, revised the Issued Patent’s specification to
include the following paragraph:
A facewall flexure portion from the tongue and groove
assembly 20 is defined in the U-shaped flange 28 and the rear
upwardly extending wall 33 that has an upper area within
unrestricted movement along a target line to increase facewall
flexure.
(See Reissue FileWrapper, specification filed on April 2, 2015.) The
Examiner maintains that this paragraph “introduces new matter” and the
Appellant is “required to cancel the new matter.” (Non-Final Act. 8.)
According to the Appellant, the Reissue Application’s specification
“has been amended to duplicate” that of the Patent Application, thereby
mooting any new-matter issues related thereto. (Appeal Br. 3.) The
Examiner states that “[t]he amendments to the specification have been
entered” (Non-Final Action 2); and the Answer reflects that the Examiner
also considers new matter issues related to the Reissue Application’s
specification resolved (see Answer 3–9, 14, 23–33).
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

25
Thus, even if the above-quoted paragraph did introduce new matter,
it is not included in the current version of the Reissue Application’s
specification. Therefore, we do not sustain Rejection V.
REJECTION VI
The Examiner rejects Reissue Claims 1, 7, 17, and 23–26 under
35 U.S.C. § 251 as an attempt to recapture surrendered subject matter.
(Non-Final Action 18.) We do not sustain this rejection.
Recapture
The Reissue Statute allows a patentee to pursue broadened claims by
reissue, provided the patentee can show “error.” (35 U.S.C. § 251.) “[N]ot
every event or circumstance that might be labeled ‘error’ is correctable by
reissue,” and “one such circumstance that does not satisfy the ‘error’
requirement is embodied by the recapture rule.” (In re Youman, 679 F.3d
1335, 1343 (Fed. Cir. 2012).)
“The recapture rule bars a patentee from recapturing subject matter,
through reissue, that the patentee intentionally surrendered during the
original prosecution in order to overcome prior art and obtain a valid
patent.” (Youman, 679 F.3d at 1343.) A three-step test is applied to discern
whether a reissue claim “violate[s] the recapture rule.” (Id.) In the first step,
it is determined what “aspect” of the reissue claim is “broader than the
patent claims.” (Id.) In the second step, it is determined whether the reissue
claim’s broader aspect “relate[s] to the surrendered subject matter.” (Id.) If
a reissue claim’s broader aspect does not relate to surrendered subject
matter, the reissue claim does not violate the recapture rule, and the third
step need not be applied. (See id.)
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

26
Analysis
Under the first step of the recapture rule, the Examiner determines that
Reissue Claims 1, 7, 17, and 23–26 are broader than the Issued Claims
because they do not require a “tongue.” (Non-Final Action 19.) We agree
with the Examiner. While these Reissue Claims could be infringed by a
tongue-less clubhead, the Issued Claims could not.
Under the second step of the recapture rule, the Examiner determines
that the identified broader aspect (i.e., a tongue-less clubhead) was
surrendered during prosecution. (Non-Final Action 20.) We agree with the
Appellant that this determination does not align with the evidence of record.
(See, e.g., Appeal Br. 24.)
“[T]o determine what subject matter the patentee surrendered,” we
look to “changes in the claim language and arguments in the prosecution
history that were made in an effort to overcome prior art.” (Youman,
679 F3d. at 1344.) More particularly, we look to the prosecution history of
the issued patent “for evidence of an admission by the patent applicant
regarding patentability.” (Hester Industries, Inc. v. Stein, Inc., 142 F.3d
1472, 1480 (Fed. Cir. 1998).) “The recapture rule does not apply where
there is no evidence” of “an admission that the scope of that claim was not in
fact patentable.” (Mentor Corp. v. Coloplast, Inc., 998 F.2d 992, 995 (Fed.
Cir. 1993).)
During prosecution of the Issued Patent, an independent claim
(claim 1) was rejected as being anticipated by the prior art. (See Patent
FileWrapper, Office Action mailed June 4, 2014, page 10.) The rejected
claims required a U-shaped lip and a tongue (see id., Claims filed March 14,
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

27
2014),11 and the anticipation rejection was premised upon a prior art
clubhead purportedly possessing a U-shaped lip and a tongue (see id., Office
Action mailed June 4, 2014, page 11). The Appellant overcame this prior art
rejection by amending the rejected claims to require an “integral” U-shaped
lip, and arguing the same. (See id., Response filed July 23, 2014, pages 6,
20–21; see also Office Action mailed August 15, 2014, page 10.)12
The Appellant did not mention, in its effort to overcome the prior art,
the presence or absence of a tongue. (See Patent FileWrapper, Response
filed July 23, 2014, page 20–21, Response filed September 9, 2014, page 8.)
Thus, any and all tongue-less clubheads could not have been surrendered by
virtue of this effort alone. What could have been surrendered is a clubhead
(with or without tongue) sans an integral U-shaped lip. But Reissue
Claims 1, 7, 17, and 23–25 require an integral U-shaped lip, and so this is
not a broader aspect of these claims.
Reissue Claim 26 does not require an integral U-shaped lip, but it
does require the clubhead to have a two-slot arrangement. During
prosecution of the Issued Patent, an independent claim (claim 17) was not
rejected on prior art grounds and, therefore, the Appellant made no
amendments or arguments to specifically distinguish it over the prior art.

11 Independent claim 1 required a “wall portion extending upwardly from a
lower portion of the facewall” and “a tongue defined by the upwardly
extending wall portion.” (Patent FileWrapper, preliminarily-amended
Claims filed March 14, 2014, page 3.)
12 Independent claim 1 was amended to recite “a wall portion extending
rearwardly and integrally upwardly from the lower portion of the facewall.”
(Patent FileWrapper, Response filed July 23, 2014, page 6.)
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

28
Independent claim 17 required, from start to finish, an integral U-shaped lip
and a two-slot arrangement similar to that recited in Reissue Claim 26.13
We could speculate that the “integral” limitation in independent
claim 17, alone, was the reason it was excused from the prior art rejection.
If this speculation was adopted, a broader aspect of Reissue Claim 26 relates
to surrendered subject matter. We could just as easily speculate that the
two-slot limitation in the non-rejected claim 17, alone, was the reason it was
excused from the prior art rejection. But it matters not, because there is no
evidence in the Patent FileWrapper supporting either one of these
speculations.
Thus, the Patent FileWrapper does not adequately evidence that the
broader aspects of Reissue Claims 1, 7, 17, and 23–26 relate to surrendered
subject matter under the second step of the recapture-rule analysis. And if a
reissue claim’s broader aspect does not relate to surrendered subject matter,
it does not violate the recapture rule. Therefore, we do not sustain
Rejection VI.

13 Independent Claim 17 recited an “integral ‘U’ shaped flange,” an
“upwardly extending wall portion behind the facewall,” a “slot” between
“the facewall and the upwardly extending wall portion,” and another “slot”
between “the upwardly extending wall portion and [a] rearwardly extending
portion of the clubhead body.” (Patent FileWrapper, Claims filed March 14,
2014, pages 5–6.) Reissue Claim 26 recites “a ‘U’ shaped channel formed
with the lower edge of the facewall having a rear leg wall extending
upwardly behind and parallel to the facewall defining a slot between the
facewall and the rear leg wall” and “[a] rearwardly extending portion having
a forward surface parallel to the rear leg wall and defining a slot between the
rear portion forward surface and the rear leg wall.” (Appeal Br., Claims
App.)
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

29
REJECTION VII
The Examiner rejects Reissue Claims 1–7, 10–12, 15–19, and 23–26
under 35 U.S.C. § 251 as being based upon a defective reissue declaration.
(Non-Final Action 18.) We sustain this rejection.
Reissue Declaration
“The inventor’s oath or declaration for a reissue application” must
“identify” an error pursuant to 35 U.S.C. § 251 that is “being relied upon as
the basis for reissue.” (37 C.F.R. § 1.175(a).) “The most commonly
asserted correctable error is the failure of the patentee’s attorney to
appreciate the full scope of the invention during prosecution of the original
patent application.” (Youman, 679 F.3d at 1342.) However, as indicated
above, “not every event or circumstance that might be labeled ‘error’ is
correctable by reissue.” (Id. at 1343.)
Analysis
The Examiner determines that the “error” identified in the Appellant’s
Reissue Declaration is not an error that is correctable via reissue. (See Non-
Final Action 17.) We agree.
The Appellant acknowledges in its reissue declaration that the impetus
for the Reissue Application is to expand claim scope to encompass
tongue-less clubheads. (See Reissue FileWrapper, Declaration filed April 2,
2015.) The Appellant declares that he claimed “less than he had a right to
claim in the patent,” and the Appellant declares that this deficiency is due to
the word “tongue” in Issued Claims 1 and 17. (Id.) The Declaration also
conveys that the Appellant planned to remedy this deficiency by writing new
claims without the tongue limitations. (See id.)
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

30
Thus, the Appellant’s declared “error” is that it did not file claims
having a scope broad enough to cover a tongue-less clubhead during
prosecution of the Issued Patent. However, as explained below, this is not
an error correctable by reissue. As such, the Appellant’s reissue declaration
is defective because it does not identify an “error” as required by the Reissue
Statute. Therefore, we sustain Rejection VII.
REJECTION VIII
We enter a new ground of rejection rejecting Reissue Claims 1, 7, 17,
and 23–26 under 35 U.S.C. § 251 as failing to comply with the original
patent requirement.
Original Patent
The Reissue Statute confines the “reissue” of a patent to “the
invention disclosed in the original patent.” (35 U.S.C. § 251.) “Thus, for
broadening reissue claims, the specification of the original patent must do
more than merely suggest or indicate the invention recited in reissue
claims.” (Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346, 1351 (Fed.
Cir. 2019).) Rather, to satisfy the original-patent requirement of the Reissue
Statute, “it must appear from the face of the instrument that what is covered
by the reissue was intended to have been covered and secured by the original
[patent].” (Id. at 1351–1352.) More concisely, the original patent “must
clearly and unequivocally disclose the newly claimed invention as a separate
invention.” (Id. at 1352.)
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

31
Analysis
We determine that Reissue Claims 1, 7, 17, and 23–26 cover an
invention that was not clearly and unequivocally disclosed in the Issued
Patent, namely a tongue-less clubhead.
This rejection is best explained by following the Federal Circuit’s
reasoning in the Forum case, which involved a strikingly similar fact pattern.
In Forum, the technology related to “fixtures for holding workpieces during
machining,” and the issued patent disclosed “only embodiments with
arbors.” (Forum, 926 F.3d at 1348.) The issued patent’s claims required the
fixture to comprise a “body member,” and “a plurality of arbors supported
by the body member.” (Id. at 1349.) The patentee broadened the claims
during reissue, “to include embodiments of fixtures that do not use arbors by
writing new claims without the arbor limitations.” (Id.)
In Forum, the patentee argued “that [one] of ordinary skill in the art
would understand that the patent disclosed multiple inventions, consisting of
embodiments with and without arbors.” (Forum, 926 F.3d at 1350.) The
patentee supported its argument with an expert declaration evidencing “what
a person of ordinary skill in the art would purportedly understand in the
absence of the disclosure of an arbor-less embodiment.” (Id. at 1352.) The
Federal Circuit clarified that this argument and its supporting evidence were
not germane to the pivotal question of whether the “face of the instrument”
(i.e., the issued patent) disclosed an arbor-less embodiment. (Id.)
Consequently, in the Forum case, the Federal Circuit held that the
reissue claims did not comply with the original-patent requirement because
Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

32
there was no disclosure of “an arbor-less embodiment of the invention.”
(Forum, 926 F.3d at 1350.)
As discussed above, the Patent Application does not describe a
clubhead without a tongue, and, correspondingly, neither does the Issued
Patent. As also discussed above, the Appellant is attempting to broaden
claims during reissue to include embodiments of clubheads that do not have
tongues by writing new claims without the tongue limitations. Thus,
Reissue Claims 1, 7, 17, and 23–26 do not comply with the original-patent
requirement because there was no disclosure of a tongue-less embodiment of
the invention. Therefore, we enter this new ground of rejection.
CONCLUSION
Claims
Rejected
35 U.S.C.
§  
Reference(s)/
Basis
Affirmed Reversed New
Ground
1, 7

102 Wahl 1, 7
1, 7

103  Wahl 1, 7
1–7,
10–12,
17–19,
23–26
112(a) Written
Description
1–7,
10–12,
17–19,
23–26

1–7,
10–12,
15–19,
23–26
112(b) Indefiniteness 1–7,
10–12,
15–19,
23–26

1–7,
10–12,
17–19,
23–26
251 New Matter 1–7,
10–12,
17–19,
23–26

1, 7, 17,
23–26
251 Recapture 1, 7, 17,
23–26

Appeal 2020-004128
Application 14/677,820
Patent 8,911,301 B1

33
Claims
Rejected
35 U.S.C.
§  
Reference(s)/
Basis
Affirmed Reversed New
Ground

1–7,
10–12,
15–19,
23–26
251 Defective
Declaration
1–7,
10–12,
15–19,
23–26

1, 7, 17,
23–26

251 Original Patent 1, 7, 17,
23–26

1, 7, 17,
23–26
Overall
Outcome
1–7,
10–12,
15–19,
23–26
1, 7, 17,
23–26
FINALITY AND RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

AFFIRMED; 37 C.F.R. § 41.50(b)