DUNLOP SPORTS CO. LTD.

Patent Trials and Appeals Board

Aug 23, 2021

2021002916 (P.T.A.B. Aug. 23, 2021)

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.
14/915,010 02/26/2016 Yuki SHIMAHARA 6400-0139PUS1 4042
2292 7590 08/23/2021
BIRCH STEWART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
PIERCE, WILLIAM M
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
08/23/2021 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YUKI SHIMAHARA
____________

Appeal 2021-002916
Application 14/915,010
Technology Center 3700
____________

Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and
BRETT C. MARTIN, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated May 28, 2020, hereinafter “Final
Act.”) rejecting claims 8, 19, 21, 22, and 24–26.2 Appellant’s representative
presented oral argument on August 10, 2021. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. SUMITOMO RUBBER INDUSTRIES, LTD. is identified as
the real party in interest in Appellant’s Appeal Brief (filed Oct. 28, 2020,
hereinafter “Appeal Br.”). Appeal Br. 1.
2 Claims 10–15 and 23 are withdrawn and claims 1–7, 9, 16–18, and 20 are
canceled. Appeal Br., Claims App. 1–5.
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SUMMARY OF DECISION
We REVERSE.

INVENTION
Appellant’s invention is directed “to an iron-type golf club head and a
golf club set.” Spec. para. 1.
Claims 8 and 19 are independent. Claim 8 is illustrative of the
claimed invention and reads as follows (with indentations added):
8. A golf club head which comprises:
a top portion having a surface on an upper portion;
a sole portion having a surface on a bottom
portion;
a hosel portion for connecting to a shaft and a heel
portion both disposed on a first end of the top and sole
surfaces;
a toe portion have a surface that disposed on a
second end of the top and sole surfaces opposite from the
heel portion;
a face portion for hitting a golf ball which has a
surface defined by a first side of the top, sole, heel and
toe portions, the face surface having a slope that defines a
predetermined loft angle; and
a back portion disposed opposite of the face
portion which has a surface defined by a second side of
the top, sole, heel and toe portions,
wherein
the sole surface includes a leading surface
perpendicular to the face portion that is planar and
extends rearward from the face portion so as to terminate
at a boundary line, and a trailing surface that is planar,
and slopes upward from the boundary line and rearward
towards the back portion, the boundary line being visible
and extending linearly along the face portion sole side, as
well as substantially along an entire toe-heel direction as
an apex,
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the distance between the boundary line and the
face portion sole edge is substantially constant; and
in a reference state in which the golf club head
boundary line is placed on a planar surface in order to
achieve a predetermined loft angle, the placement of the
boundary line on the planar surface results in no contact
to the planar surface by the leading surface or the trailing
surface.

Appeal Br., Claims App. 1.

REJECTIONS
I. The Examiner rejects claims 8, 19, 21, 22, and 24–26 under 35
U.S.C. § 112(a) as failing to comply with the written
description requirement.
II. The Examiner rejects claims 8, 19, 21, 22, and 24–26 under 35
U.S.C. § 112(b) as being indefinite.
III. The Examiner rejects claims 8, 19, 21, 22, and 24 under 35
U.S.C. § 102(a)(2) as being anticipated by Solheim.3
IV. The Examiner rejects claims 25 and 26 under 35 U.S.C. § 103
as being unpatentable over Solheim.

3 Solheim, US 3,897,065, issued July 29, 1975.
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ANALYSIS
Rejection I
The Examiner finds that the limitation “the distance between the
boundary line and the face portion sole edge is substantially constant,”
recited in each of independent claims 8 and 19, is not supported by
Appellant’s original disclosure. Final Act. 2.
In response, Appellant relies on “the embodiment of Figures l(a) and 2
as described in paragraph [0022]” and “the embodiment of Figures 6(a), 6(b)
and 6(c) together with paragraph [0033]” as support for boundary line 41
being at “substantially constant distance from the face portion sole edge
depicted as the right-side boundary line of the leading surface 42 in Figures
2 and 6(a), 6(b) and 6(c).” Appeal Br. 6 (emphasis omitted).
The purpose of the written description requirement in 35 U.S.C.
§ 112, first paragraph, is to “‘clearly allow persons of ordinary skill in the art
to recognize that [the inventor] invented what is claimed.’” Ariad Pharm.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010 (citing In re
Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989))). “[T]he test for sufficiency
is whether the disclosure of the application relied upon reasonably conveys
to those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad, 598 F.3d at 1351. This test
“requires an objective inquiry into the four corners of the specification from
the perspective of a person of ordinary skill in the art.” Id. In this case,
Appellant’s reliance on paragraphs 22 and 33 of the Specification to support
the limitation “the distance between the boundary line and the face portion
sole edge is substantially constant” is misplaced because neither of these
paragraphs discloses such a feature. In particular, paragraph 22 describes in
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general sole surface 4 with leading surface 42, trailing surface 43, and
boundary line 41, whereas paragraph 33 describes gear effect and backspin.
Nonetheless, “drawings alone may be sufficient to provide the
‘written description of the invention’ required by § 112, first paragraph.”
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991).
Here, the claim limitation at issue is directed to “the distance between the
boundary line and the face portion sole edge,” which is recited as being
“substantially constant.” Simple observation of Appellant’s Figures 2 and
6(a) would reveal to a person of ordinary skill in the golf club art that “the
distance between the boundary line and the face portion sole edge is
substantially constant.” We do not agree with the Examiner’s position that
Appellant’s disclosure needs “to discuss or show a constant distance.”
Examiner’s Answer (dated Jan. 29, 2021, hereinafter “Ans.”) at 5 (emphasis
added). Rather, we agree with Appellant that the use of the phrase
“substantially constant” means “that the distance is not ‘exactly’ constant,”
and, thus, Appellant’s Figures 2 and 6(a) adequately support the limitation
“the distance between the boundary line and the face portion sole edge is
substantially constant.” Reply Brief (filed Mar. 29, 2021, hereinafter “Reply
Br.”) at 9. Moreover, the Examiner’s annotated Figures 2 and 6(a) of
Appellant’s Drawings illustrate that “the distance between the boundary line
and the face portion sole edge” is different at the toe and heel sides, and,
thus, is “substantially constant.” See Ans. 4–5.
Accordingly, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 112(a) of claims 8, 19, 21, 22, and 24–26 as failing to
comply with the written description requirement.

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Rejection II
The Examiner finds that the limitation “the distance between the
boundary line and the face portion sole edge is substantially constant,”
recited in each of independent claims 8 and 19, is indefinite. Final Act. 3.
According to the Examiner, the phrase “‘substantially constant’ is
considered subjective with no clear metes and bounds.” Id. The Examiner
explains that the phrase “‘substantially constant’ is more than just broad
as it give no reasonable measure as to how far from a constant a distance can
be before such is considered to no longer be ‘substantially constant’.” Id.
Furthermore, the Examiner takes the position that “‘the distance’ . . . is
misdes[c]riptive” in that it represents “a single measure at a single point
between the boundary line and the face portion” or “the distances of a series
of points along the boundary lines from toe to heel.” Id.
In response, Appellant argues “that ‘the distance’ clearly refers to a
distance between the boundary line 41 and the face portion sole edge (right-
side boundary line of the leading surface 42).” Appeal Br. 6. Appellant
further contends “that the use of terms of degree, such as ‘substantially’,
does not necessarily render the language indefinite.” Id. at 6–7. According
to Appellant, claims are not indefinite when “a figure . . . provides a
standard for measuring the meaning of the term of degree.” Id. at 7 (citing
Interval Licens. LLC v. AOL, Inc., 766 F.3d 1364, 1371–72 (Fed. Cir.
2014)).
Claim language should be read in light of the Specification, as it
would be interpreted by one of ordinary skill in the art. In re Suitco Surface,
Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Furthermore, the term
“substantial” is often used as a modifier to imply “approximate” rather than
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“perfect.” See Playtex Prods., Inc. v. Proctor & Gamble Co., 400 F.3d 901,
907 (Fed. Cir. 2005). “[W]ords of approximation, such as ‘generally’ and
‘substantially,’ are descriptive terms ‘commonly used in patent claims “to
avoid a strict numerical boundary to the specified parameter.”’” See Playtex
Prods., 400 F.3d at 907 (citation omitted). In this case, a reasonable
construction in light of Appellant’s Specification of the term “distance” is
the distance between a series of points from toe to heel between boundary
line 41 and leading surface 42, wherein such “distance” is “approximately”
constant. Such an interpretation is consistent with Appellant’s Figures 6a,
6b, and 6c, which illustrate distances L1 , L2, and L3, respectively, as being
“approximately” constant, that is, “substantially constant” between heel 9
and toe 5 of sole 4. See also, Spec. Fig. 2. As such, Appellant has used the
term “substantially” as a term of approximation to mean mostly or usually
and to allow some deviation from a “constant distance.”
Accordingly, for the foregoing reasons, the limitation “the distance
between the boundary line and the face portion sole edge is substantially
constant” is definite, and, therefore, we do not sustain the indefiniteness
rejection of claims 8, 19, 21, 22, and 24–26.

Rejection III
Each of independent claims 8 and 19 recites, inter alia, “the boundary
line being visible and extending linearly along the face portion sole side.”
Appeal Br., Claims App. 1, 4 (emphasis added).
The Examiner finds Solheim’s element 17 constitutes “a boundary
line parallel to the front edge 20 extending from toe to heel visible from the
front as shown in fig. 1.” Final Act. 4. Relying on Solheim’s Figure 4, the
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Examiner asserts that it cannot be determined if “[border] line 17 is straight
or just looks like it is curved base[d] on the perspective from which the
curved sole and club are being viewed.” Ans. 10.
In response, Appellant argues that Solheim’s “ridge 17 curves such
that it cannot be characterized as being ‘linear’.” Reply Br. 5. According to
Appellant, “the Examiner fails to explain how a straight line can be shown
as curved and fails to point to any portion of the Solheim . . . disclosure
suggesting that the ridge 17 is not curved.” Id (emphasis omitted).
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the Specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In this
case, we construe the term “linearly” to mean that the claimed boundary line
extends in a line. Such a construction is consistent with Appellant’s
Specification, which differentiates between a boundary line 41 that “is
formed linearly” or is “curved convexly.” Spec. para. 39, Figs. 2, 9. In
other words, Appellant’s Specification differentiates between a “linear”
boundary line and a “curved” boundary line. A person of ordinary skill in
the art would readily acknowledge from Solheim’s Figure 4 that ridge 17,
which the Examiner equates to the claimed boundary line, is “curved,” rather
than “linear.” Stated differently, Solheim’s ridge 17 does not extend in a
line, but rather curves from heel 9 to toe 18. Therefore, Solheim fails to
disclose a “linearly” extending boundary line, as called for by each of
independent claims 8 and 19.
Accordingly, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 102(a)(2) of independent claims 8 and 19, and dependent
claims 21, 22, and 24, as anticipated by Solheim.
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Rejection IV
The Examiner’s modification of Solheim does not remedy the
deficiency of Solheim discussed supra. See Final Act. 6. Therefore, for the
same reasons discussed above, we also do not sustain the rejection of claims
25 and 26 as unpatentable over Solheim.

CONCLUSION

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
8, 19, 21,
22, 24–26
112 Written
Description
8, 19, 21, 22,
24–26
8, 19, 21,
22, 24–26
112 Indefiniteness 8, 19, 21, 22,
24–26
8, 19, 21,
22, 24
102(a)(2) Solheim 8, 19, 21, 22,
24
25, 26 103 Solheim 25, 26
Overall
Outcome
8, 19, 21, 22,
24–26

REVERSED