Ex Parte Davenport

Patent Trial and Appeal Board

Jun 19, 2018

13273216 (P.T.A.B. Jun. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/273,216 10/13/2011
25223 7590 06/21/2018
WHITEFORD, TAYLOR & PRESTON, LLP
ATTN: GREGORY M STONE
SEVEN SAINT PAUL STREET
BALTIMORE, MD 21202-1626
FIRST NAMED INVENTOR
Roger Davenport
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
094008.20502 8771
EXAMINER
WEATHERFORD, SYVILA
ART UNIT PAPER NUMBER
3717
NOTIFICATION DATE DELIVERY MODE
06/21/2018 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):
patents@wtplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROGER DAVENPORT
Appeal2017-007982
Application 13/273 ,216
Technology Center 3700
Before DANIEL S. SONG, STEFAN STAICOVICI, and
BRANDON J. WARNER, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Roger Davenport ("Appellant") 1 appeals under 35 U.S.C. § 134(a)
from the Examiner's decision in the Non-Final Office Action (dated Nov. 5,
2015, hereinafter "Non-Final Act.") rejecting claims 4--6 and 13-29. 2 We
have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
1 Golf Impact, LLC is identified as the real party in interest in Appellant's Appeal
Brief (filed Aug. 5, 2016, hereinafter "Br."). Br. 1.
2 Claims 1-3 and 7-12 are canceled. See Appellant's Amendment 2, dated
Aug. 11, 2015.
Appeal2017-007982
Application 13/273,216
SUMMARY OF DECISION
We AFFIRM-IN-PART.
INVENTION
Appellant's invention relates "to a measurement and analysis system
for determining the effectiveness of a golfer's swing based on all
measurements made at the golf club head." Spec. para. 2.
Claims 4, 16, and 20 are independent. Claim 4 is illustrative of the
claimed invention and reads as follows:
4. A golf club head comprising:
a shell having an electrically conductive outer surface
and a thickness; and
an antenna that transmits data from multiple sensors to an
external receiver, the antenna being defined by at least:
a portion of said outer surface;
a non-conducting object of a predetermined
dielectric constant; and
an electrically-conductive element,
wherein the non-conducting object is attached
between the outer surface of the club head and the
electrically conductive element.
REJECTIONS
I. The Examiner rejects claims 4, 5, and 27-29 under 35 U.S.C. § I03(a)
as being unpatentable over Carrender (US 2005/0093700 Al,
published May 5, 2005) and Stites et al. (US 2005/0215340 Al,
published Sept. 29, 2005, hereinafter "Stites").
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II. The Examiner rejects claims 6, 13, 14, 16, 17, and 19--22 under 35
U.S.C. § I03(a) as being unpatentable over Carrender, Stites, and
Cook (US 5,941,782, issued Aug. 24, 1999).
III. The Examiner rejects claim 15 under 35 U.S.C. § I03(a) as being
unpatentable over Carrender, Stites, and Anelli (US 2003/0220154
Al, published Nov. 27, 2003).
IV. The Examiner rejects claim 18 under 35 U.S.C. § I03(a) as being
unpatentable over Carrender, Stites, Cook, and Wood (US 5,997,415,
issued Dec. 7, 1999).
V. The Examiner rejects claims 23-25 under 35 U.S.C. § I03(a) as being
unpatentable over Carrender, Stites, Cook, and Puuri (US
2007/0091004 Al, published Apr. 26, 2007).
VI. The Examiner rejects claim 26 under 35 U.S.C. § I03(a) as being
unpatentable over Carrender, Stites, Cook, and Anelli.
ANALYSIS
Rejection I
Claims 4 and 5
With respect to claim 4, the Examiner finds that Carrender discloses,
inter alia, an object 22 (such as a can, luggage tag, or other conductive
object) having an electrically conductive outer surface 24 and a thickness,
and an antenna 20 attached to outer surface 24, and including an electrically
non-conductive element 30 positioned between electrically conductive outer
surface 24 and electrically conductive element 26. Non-Final Act. 3--4
( citing Carrender, Abstract, paras. 32, 34, Fig. 3).
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The Examiner further finds that "Carrender does not explicitly
disclose a golf club head and an antenna that transmits data from multiple
sensors to an external receiver." Id. at 4. Nonetheless, the Examiner finds
that Stites discloses a golf club head 208 including "an impact module [21 OJ
for measuring impact of a golf ball ... and an accelerometer module [212]
for measuring acceleration," where data from the sensors is transmitted to a
transmission module 214, which, via an antenna, then transmits the data to a
portable computer 120. Id. ( citing Stites, paras. 28, 29, Fig. 2). The
Examiner further notes that, although ferrule 216 or shaft 206 may be used
as an antenna, the antenna may also be plated onto shaft 206, embedded
under grip 220, or placed in "any other location that does not interfere with a
golf swing." Id. (citing Stites, para. 29). Thus, the Examiner concludes that:
It would have been obvious to a person of ordinary skill in the
art at the time of the invention to modify Carrender with the
teachings of Stites to provide a golf club head, and an antenna
that transmits data from multiple sensors to an external receiver.
These modifications are obvious since Carrender discloses
[that] a stacked or patch antenna can be implemented on any
object needed to be tracked [Carrender, para 0034] which
includes a golf club.
Id. at 4--5.
First, Appellant argues that "Carrender and Stites do not teach or
suggest 'an antenna that transmits data from multiple sensors to an external
receiver' wherein the antenna is defined by at least a portion of an
electrically conductive outer surface of a shell of a golf club head, as recited
by independent claim 4." Br. 8.
We are not persuaded because Appellant's argument amounts to a
recitation of claim elements and a "naked assertion" that the elements are
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Application 13/273,216
not found in the prior art. Such statements do not constitute a separate
argument for patentability pursuant to 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv). See In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
Furthermore, "[ n ]onobviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. [Each reference] must be read, not in isolation,
but for what it fairly teaches in combination with the prior art as a whole."
See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
Examiner is correct that Carrender discloses an antenna attached to an object
for transmitting data, wherein the object's electrically conductive outer
surface is part of the antenna, and Stites discloses a golf club head having
multiple sensors embedded therein, and uses an antenna to transmit data to
an external receiver. Examiner's Answer 17-18 (dated Feb. 27, 2017,
hereinafter "Ans."). The Examiner is also correct in that "[i]t is known in
the golfing industry that some golf club heads have metal outer surfaces."
Id. at 22.
As Appellant has not persuasively shown error in the Examiner's
findings, upon attaching Carrender' s antenna to the golf club head of Stites,
the antenna of Carrender would transmit data from Stites' multiple sensors
to an external receiver, with Carrender' s antenna including at least a portion
of an electrically conductive outer surface of a shell of the golf club head of
Stites.
Secondly, Appellant argues that "the combination proposed by the
Examiner ... would render Stites inoperable for its intended purpose." Br.
8. According to Appellant, "placing the antenna of Carrender [on the golf
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club head of Stites,] would interfere with the aerodynamics of the golf club
of Stites." Id. at 9-10. Appellant asserts that, because the sensors of Stites
are positioned within the Stites golf club to "not change the balance or center
of gravity of the club," adding the weight of Carrender's antenna to the golf
club head of Stites "would negatively affect the balance or center of gravity
of the [golf] club," and, thus, "would detrimentally affect ... [its]
aerodynamics." Id. at 10 (citing Stites, para. 30).
We are not persuaded by Appellant's arguments because "[ w ]hen
there is a design need or market pressure to solve a problem and there are a
finite number of identified, predictable solutions, a person of ordinary skill
has good reason to pursue the known options within his or her technical
grasp." KSRint'l Co. v. Teleflex Inc., 550 U.S. 398,419 (2007). In this
case, the Examiner's modification represents selecting a location for
Carrender's antenna, namely, the golf club head of Stites, from a plurality of
finite number of locations, i.e., ferrule 216, golf club shaft 206, or "any other
location that does not interfere with a golf swing." See Stites, para. 29.
We appreciate Appellant's position that adding Carrender's antenna to
the golf club head of Stites would affect the balance or center of gravity of
the golf club, and, thus, affect its aerodynamics. See Br. 10. However,
Stites discloses configuring its golf club 200 to account for the weights of its
embedded components, which includes sensors 210,212. See Stites, paras.
28, 30. Although we appreciate that Stites does not expressly discloses
configuring its golf club 200 to account for the weight of Carrender' s
antenna attached to its club head 208, this does not defeat a rejection under
35 U.S.C. § 103(a), and such a requirement would essentially defeat the
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purpose of35 U.S.C. § 103(a). We must attribute skill to the hypothetical
person described in 35 U.S.C. § 103(a). In re Sovish, 769 F.2d 738, 742
(Fed. Cir. 1985). The fact that some judgment and mechanical skill may be
required to account for the weight of Carrender' s antenna attached to the
golf club head of Stites does not necessarily mean that such combination
constitutes a nonobvious invention. Graham v. John Deere Co. of Kansas
City, 383 U.S. 1, 10-12 (1966) (discussing Hotchkiss v. Greenwood, 11
How. 248 (1851 )). Here, because Stites explicitly discloses attaching radio
frequency and ultrasound sensors 302a-302e to golf club head 304, a skilled
artisan would readily appreciate that Stites takes into account the weight of
sensors attached to its golf club head when configuring its golf club so that
the balance or center of gravity is not changed. See Stites, para. 31, Fig. 3.
Accordingly, we agree with the Examiner that a person "of ordinary skill in
the art would have considered how and where the antenna [ of Carrender] is
placed [ onto the club head of Stites] to prevent noticeable change in
performance." Ans. 20.
Thirdly, Appellant argues that Carrender constitutes non-analogous art
because Carrender is not reasonably pertinent to the problem addressed by
Appellant as it neither "(1) addresses the same problem nor (2) serves the
same purpose as the golf club head of claim 4." See Br. 11-12. Appellant
further explains that "the information transmitted by the antenna of claim 4
is dynamic," whereas the RFID being transmitted ... is static." Id. at 12.
Thus, according to Appellant:
[An] inventor considering the problem of how to measure a golf
club swing and effectively transmit information pertaining to
the golf club swing would not have been motivated to consider
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Carrender when making his invention, particularly since
Carrender does not show an antenna that is ( 1) coupled to
sensors of any kind, (2) transmits dynamic information that is
based on information collected via the sensors, or (3) measure
characteristics that would be specific to a golf club swing.
Id. at 13-14.
A reference is reasonably pertinent if ... it is one which,
because of the matter with which it deals, logically would have
commended itself to an inventor's attention in considering his
problem. If a reference disclosure has the same purpose as the
claimed invention, the reference relates to the same problem,
and that fact supports use of that reference in an obviousness
rejection.
Innovention Toys, LLCv. MGA Entm't, Inc., 637 F.3d 1314, 1321 (Fed. Cir.
2011) (quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992) (quotations
omitted). In this case, the relevant problem Appellant confronts is (1)
measuring a golfer's swing performance characteristics at the golf club head
and (2) transmitting wirelessly the measured data. See Spec., paras. 2, 8.
Carrender discloses an antenna for use on an electrically conductive surface
of an object for transmitting data pertaining to the object. Carrender,
Abstract. As such, a skilled artisan looking for a device to transmit
wirelessly data pertaining to a golf club head would consider Carrender's
antenna to be of particular interest.
In contrast, Appellant's statement of the problem would focus the
analysis, not on the problem at issue, but on the specific application and
setting identified in the Specification-"transmitting information pertaining
to the golf club swing." Br. 13; see also Spec. para. 9. (generally disclosing
this application and setting). The analogous prior art should not be so
limited. See Graham, 383 U.S. at 35 (rejecting the argument that the cited
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references were not "pertinent prior art" and stating that "[ t ]he problems
confronting [ the patentee] and the insecticide industry were not insecticide
problems; they were mechanical closure problems").
Furthermore, the Examiner is correct in that Carrender discloses a
lead 34 that connects its antenna to any kind of circuit, and, thus, a skilled
artisan would consider connecting sensor circuits to Carrender's antenna.
See Ans. 22; see also Carrender, para. 33, Fig. 3. Moreover, Appellant's
argument regarding the type of data being transmitted, i.e., dynamic versus
static, is not persuasive, because the function of an antenna is to transmit
data wirelessly, and, thus, Carrender's antenna would logically have
commended itself to an inventor considering the problem of transmitting
data wirelessly, regardless of whether the type of data is "static" or
"dynamic." As such, for the foregoing reasons, we are not persuaded by
Appellant's arguments that Carrender constitutes non-analogous art.
Finally, Appellant argues that although "[t]he sport of golf originated
in the 15th century" and "[ a ]ntennas likewise have been around for a long
time," Appellant's invention solves a "long-felt need" in the manner in
which the game is practiced. Br. 14.
"[L Jong-felt need is analyzed as of the date of an articulated identified
problem and evidence of efforts to solve that problem." Texas Instruments,
Inc. v. US. Int'! Trade Comm 'n, 988 F.2d 1165, 1178 (Fed. Cir. 1993). This
requires evidence to explain how long this need was felt, or when the
problem first arose. Perfect Web Technologies, Inc. v. Info USA, Inc., 587
F.3d 1324, 1332-33 (Fed. Cir. 2009) (citation omitted). In this case,
Appellant has not proffered any evidence establishing long-felt need. See
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Br. 14--15. Merely arguing that the Examiner cites to six references and
combines four references in a single rejection (see id. at 14) is not persuasive
as reliance on a large number of references in a rejection does not, without
more, weigh against the obviousness of the claimed invention. See In re
Gorman, 933 F.2d 982 (Fed. Cir. 1991) (court affirmed a rejection of a
detailed claim to a candy sucker shaped like a thumb on a stick based on
thirteen prior art references). Likewise unpersuasive is Appellant's
argument regarding the age of the references the Examiner relied upon (see
id.), as the mere age of the references is not persuasive of the
nonobviousness of a combination of their teachings. See In re Wright, 569
F.2d 1124, 1127 (CCPA 1977).
In conclusion, for the foregoing reasons, we sustain the rejection of
claim 4 under 35 U.S.C. § 103(a) as unpatentable over Carrender and Stites.
In regards to the rejection of claim 5, Appellant relies on the
arguments discussed supra with respect to the rejection of claim 4. See Br.
15. Accordingly, for the same reasons discussed above, we likewise sustain
the rejection of claim 5 over the combined teachings of Carrender and Stites.
Claims 27-29
We agree with Appellant that claims 27-29 depend from independent
claim 20, rather than independent claim 4. See Br. 15; see also Br., Claims
App., A4. As such, each of claims 27-29 includes all the limitations of
independent claim 20, and, thus, requires, inter alia, "a plurality of ribs
configured for structural support on said inner surface within the club head,
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wherein at least two ribs cross another at a point on top section of the inner
surface." Br., Claims App., A3.
The Examiner finds that the combined teachings of Carrender and
Stites fails to disclose the above noted limitation, and relies on the disclosure
of Cook. See Non-Final Act. 5-11. As the Examiner's stated rejection of
claims 27-29 does not employ the disclosure of Cook (see id. at 5), the
rejection presented fails to disclose at least the above noted limitation of
claims 27-29. 3
Accordingly, we do not sustain the rejection of claims 27-29 under 35
U.S.C. § 103(a) as unpatentable over Carrender and Stites.
Rejections II-VI
Appellant relies on the arguments discussed supra in Rejection I. See
Br. 16-19. Therefore, for the same reasons discussed above, we also sustain
Rejections II-VI.
SUMMARY
The Examiner's decision to reject claims 4---6 and 13-29 under 35
U.S.C. § 103(a) is affirmed as to claims 4--6 and 13-26 and reversed as to
claims 27-29.
3 We note that there is no dispute that Carrender discloses a "patch type"
antenna. See Carrender, para. 36.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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