Ex Parte Furze et al

Patent Trial and Appeal Board

Nov 15, 2018

14557688 (P.T.A.B. Nov. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/557,688 12/02/2014
40990 7590
ACUSHNET COMPANY
333 BRIDGE STREET
P. 0. BOX965
FAIRHAVEN, MA 02719
11/19/2018
FIRST NAMED INVENTOR
Paul A. Furze
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.
GB14-066US01 3143
EXAMINER
RAEVIS, ROBERT R
ART UNIT PAPER NUMBER
2856
NOTIFICATION DATE DELIVERY MODE
11/19/2018 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):
michelle _lima@acushnetgolf.com
joann_demers@acushnetgolf.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL A. FURZE, MICHAEL J. TOUPIN, GLENN GRENIER,
RICHARD DAPRATO, and STEVE TOBIN
Appeal2018-000377
Application 14/557,688
Technology Center 2800
Before TERRY J. OWENS, LINDA M. GAUDETTE, and
JANEE. INGLESE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
1 This Decision includes citations to the following documents: Specification
filed Dec. 2, 2014 ("Spec."); Final Office Action mailed July 18, 2017
("Final Act."); Appeal Brief filed July 27, 2017 ("Appeal Br."); Examiner's
Answer mailed Sept. 13, 2017 ("Ans."); and Reply Brief filed Oct. 11, 2017
("Reply Br.").
Appeal2018-000377
Application 14/557,688
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1-12. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
The invention relates to a lightweight, portable robot for analyzing
golf balls for short game performance attributes. Spec. ,r 20. The preferred
robot is said to be lightweight, portable, and able to hit a golf ball off of the
ground, or a mat that simulates the ground, such that realistic short game
performance can be evaluated. Id. Claims 1 and 10 are representative of the
claims on appeal, and are reproduced below:
1. A portable golf hitting robot, comprising:
a frame, a drive shaft coupled to the frame, a drive unit coupled
to a first end of the drive shaft for supplying torque thereto and
a golf club gripping member coupled to a distal end of the drive
shaft, and
the robot further comprising a one-way clutch juxtaposed
between the drive unit and the golf club gripping member,
wherein the torque applied from the drive unit to the golf club
gripping member is at a ratio of less than 4-1.
10. A portable golf hitting robot system for swinging a golf
club, comprising: a frame, a drive shaft coupled to the frame, a
pneumatic rotary actuator coupled to a first end of the drive
shaft for supplying power thereto and a golf club gripping
member coupled to a distal end of the drive shaft for coupling
the golf club to the robot, wherein the torque ratio from the
pneumatic rotary actuator to the golf club gripping member is
less than 2-1, and wherein the golf club is rotated in a pendulum
2 The Applicant under 3 7 C.F .R. § 1.46, and, therefore, the Appellant under
35 U.S.C. § 134, is Acushnet Company, also identified by Appellant as the
real party in interest. Appeal Br. 3.
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manner about the drive shaft axis which extends proximate a
grip portion of the golf club.
Appeal Br. 13-14 (Claims Appendix).
The claims stand finally rejected as follows:
1. claims 1-12 under 35 U.S.C. § 112(a) as failing to comply with
the enablement requirement;
2. claims 1-9 and 12 under 35 U.S.C. § 112(b) as indefinite; and
3. claims 10 and 11 under 35 U.S.C. § 103 as obvious over
Parente (US 5,763,761, iss. June 9, 1998).
Rejection of claims 1-12 under 35 USC§ l 12(a)
as failing to comply with the enablement requirement
The Examiner contends the claims fail to comply with the enablement
requirement of 35 U.S.C. § 112(a) because the Specification does not
explain how ( 1) "the same single rotating shaft [can] extend through the
clutch from the drive unit to the gripping members" (the "drive shaft/clutch
limitations," recited in claims 1 and 12), (2) the torque ratio can be anything
other than 1-1 (the "torque ratio limitation," recited in claims 1 and 1 O); and
(3) the club can move like a pendulum if it can rotate freely in only one
direction (the "pendulum limitation," recited in claim 10). Final Act. 2-3.
For an enablement rejection, the PTO must "set[] forth a reasonable
explanation as to why it believes that the scope of protection provided by
that claim is not adequately enabled by the description of the invention." In
re Wright, 999 F.2d 1557, 1561---62 (Fed. Cir. 1993). "[T]o be enabling, the
specification of a patent must teach those skilled in the art how to make and
use the full scope of the claimed invention without 'undue
experimentation."' Id. at 1561. Some experimentation, even a considerable
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amount, is not "undue" if, e.g., it is merely routine, or if the specification
provides a reasonable amount of guidance as to the direction in which the
experimentation should proceed. In re Wands, 858 F.2d 731, 737 (Fed. Cir.
1988). The following factors are relevant in determining whether undue
experimentation would have been required to make and use an invention:
"(1) the quantity of experimentation necessary, (2) the amount of direction
or guidance presented, (3) the presence or absence of working examples, (4)
the nature of the invention, ( 5) the state of the prior art, ( 6) the relative skill
of those in the art, (7) the predictability or unpredictability of the art, and (8)
the breadth of the claims." In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
It is not necessary for an examiner to review all Wands factors, as long as it
is evident that the examiner's analysis is at least reasonably based on some
of the factors. In re Hillis, 484 Fed. App'x 491, 495 (Fed. Cir. 2012)
(unpublished); see also Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200,
1213 (Fed. Cir. 1991) ("[I]t is not necessary that a court review all the
Wands factors to find a disclosure enabling. They are illustrative, not
mandatory.").
(1) The drive shaft/clutch limitations (claims 1-9 and 12)
The Examiner contends independent claims 1 and 12 require a clutch
positioned between a drive unit and a gripping member. Ans. 4. The
Examiner finds the written description indicates the purpose of the clutch is
to disconnect structurally separate drive shaft elements located on opposite
sides of the clutch to enable independent rotation of the separate shaft
elements. Id. at 2--4. The Examiner contends claims 1 and 12 require a
structure in which opposite "ends of the same shaft ('a drive shaft')" are
connected to the drive unit and the gripping member, respectively. Id. at 2.
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The Examiner contends the written description does not enable one of
ordinary skill in the art to make or use the claimed configuration, because it
is unclear how the ends of the same drive shaft could rotate independently
when employed with a clutch. Id. at 6.
Appellant argues the Examiner's rejection is based on an overly
narrow interpretation of the claim term "a drive shaft" (claims 1, 12) as
requiring a one-piece shaft. Appeal Br. 8; see Final Act. 2; Ans. 2. As noted
by Appellant (Reply Br. 3), "an indefinite article 'a' or 'an' in patent
parlance carries the meaning of 'one or more' in open-ended claims
containing the transitional phrase 'comprising."' Baldwin Graphic Sys., Inc.
v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008) (quoting KCJ Corp. v.
Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000)). "The
exceptions to this rule are extremely limited: a patentee must evince a clear
intent to limit 'a' or 'an' to 'one."' Id. (internal quotation marks omitted).
As observed by Appellant (Appeal Br. 10), the Examiner fails to read the
claim language in light of the Specification as it would be interpreted by one
of ordinary skill in the art. The Examiner has not identified, nor do we find,
any disclosure in the Specification that indicates the inventors intended to
limit the invention to a one-piece drive shaft. We are persuaded by
Appellant's argument that the ordinary artisan would have understood from
Figure 3 and the corresponding description thereof (see, e.g., Spec. ,r 22) that
the drive shaft may have a two-piece construction. Reply Br. 3. Indeed, the
Examiner appears to acknowledge that such two-piece construction is
described in the Specification. See Ans. 2 ("Appellant's Figure 3 employs a
clutch unit 126 positioned between the drive unit 124 and grip member 130,
which clutch unit 126 is employed to literally disconnect the separate
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rotating elements located on the opposite sides of the clutch. As the clutch
disconnects those 2 separate elements, those 2 elements are independently
rotatable because they are structurally separate.").
To the extent the Examiner's analysis of the drive shaft/clutch
limitations took into account Wands factors other than the breadth of the
claims (Wands factor (8)), that analysis is based on an erroneous
interpretation of the claims as requiring a one-piece drive shaft. See, e.g.,
Ans. 5 ("Appellant's claim calls for 'a shaft' whose shaft ends are connected
to a drive unit and gripping member, and no such shaft is operational with a
clutch."). Accordingly, the Examiner has not met the burden to show that
the drive shaft/clutch limitations of claims 1-9 and 12 are not enabled by the
Specification.
(2) The torque ratio limitations (claims 1-3 and 5-10)
The Examiner contends the Specification fails to describe gearing
between the drive actuator and gripping members and, therefore, only a
torque ratio of 1-1 is enabled. Final Act. 2. Appellant directs us to
Specification paragraph 8 (Appeal Br. 8), which discloses that
[ t ]he pneumatic rotary actuator preferably has sufficient torque
to rotate the club head using less than a 4-1 torque ratio and
preferably less than 2-1. Most preferably, the pneumatic rotary
actuator is coupled to the golf club gripping member without
any gear members such that the torque ratio from the actuator to
the golf club gripping member is 1-1.
(Spec. ,r 8). Appellant also directs us to Specification paragraph 4 which
describes the known use of a gearbox, as described in Parente, to achieve
torque ratios above 1-1. Appeal Br. 8; Spec. ,r 4; Reply Br. 4 ( citing Parente
16:9-16 (use of a 10:1 gearbox)); see also Reply Br. 3 ("[W]hen the claim
states that a 'drive unit is coupled to a first end of the drive shaft for
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Application 14/557,688
supplying torque thereto' the claim contemplates the possibility of
something linking the drive unit to the shaft such that torque can be
transmitted to the shaft. It could be linked by a gearbox or clutch or both
like in an automobile."). Appellant argues the ordinary artisan would
understand from the disclosure in Specification paragraphs 4 and 8 that
gearing can be used to adjust torque ratio to less than 4-1, although the most
preferred embodiment does not use gears ( a torque ratio of 1-1). Appeal Br.
8-9.
As noted above, although the Examiner need not review all Wands
factors, the Examiner's analysis must be at least reasonably based on some
of the factors. Appellant's argument persuasively shows that the Examiner
failed to give sufficient consideration to the Wands factors in determining
the torque ratio limitation is not enabled. By the Examiner's own admission,
the rejection is based on the claim language alone, without consideration of
the amount of direction or guidance in the Specification, the nature of the
invention, the state of the prior art, the relative skill in the art, etc. See, e.g.,
Final Act. 3 ("[C]laims 1 and 10 are read by themselves (and without
consideration of the specification) .... (NOTE: This rejection treats the two
claims literally as they are and in its own way treats them as different
embodiments from those illustrated in the figures .... ). "
As explained by the predecessor to our reviewing court, "[i]n cases
involving predictable factors, such as mechanical or electrical elements, a
single embodiment provides broad enablement in the sense that, once
imagined, other embodiments can be made without difficulty and their
performance characteristics predicted by resort to known scientific laws." In
re Fisher, 427 F.2d 833, 839 (CCPA 1970); see also, In re Vaeck, 947 F.2d
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488,496 (Fed. Cir. 1991) ("Where, as here, a claimed genus represents a
diverse and relatively poorly understood group of microorganisms, the
required level of disclosure will be greater than, for example, the disclosure
of an invention involving a 'predictable' factor such as a mechanical or
electrical element."). We are persuaded by Appellant's argument, as
supported by citations to the Specification and prior art, that one of ordinary
skill in the art would have been aware that gearing could be employed to
achieve the desired torque, and would have possessed the requisite skills to
add such gearing without undue experimentation. See Penda Corp. v. US.,
29 Fed. Cl. 533, 554 (Fed. Cl. 1993) ("The law does not require that the
specification, let alone the claims, list every parameter of operation, so long
as those of ordinary skill in the art realize that the parameter may be readily
obtained.").
Accordingly, the Examiner has not met the burden to show that the
torque ratio limitations of claims 1-3 and 5-10 are not enabled by the
Specification.
(3) The pendulum limitation (claims 10 and 11)
The Examiner contends the claim 10 recitation requiring that the golf
club have the capability of rotating in a pendulum manner is not enabled
because "[a] one way clutch will permit the club to rotate freely in only one
direction, but not in the opposite direction." Ans. 7; see Final Act. 2-3.
Appellant argues that the meaning of "pendulum manner" is clear from
Specification paragraph 7 and Figure 2. Appeal Br. 9. Specifically,
Appellant contends the ordinary artisan would have understood that the
drive shaft extends through or proximate to the golf club grip and the club
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head rotates about the drive shaft in the same manner a pendulum swings
about a point or an axis. Id.
Appellant's argument is persuasive for reasons similar to those
discussed above in connection with the drive shaft/clutch and torque ratio
limitations. Namely, the Examiner fails to consider the meaning of the
claim term "pendulum manner" when read in light of the Specification. We
agree with Appellant that the Specification clearly describes the arrangement
of parts necessary to achieve rotation of a golf club in a "pendulum manner."
See, e.g., Spec. ,r 12 ("Preferably, the golf club is not attached to the robot
through a swing arm and/or swing wrist, but rather is coupled to a club
gripping member that is rotated about the axis of a drive shaft. Thus, the
robot is comprised of a frame, a drive shaft coupled to the frame, a drive unit
coupled to a first end of the drive shaft for supplying power thereto and a
golf club gripping member coupled to a distal end of the drive shaft such
that the torque ratio is 1-1. The club is thus rotated in a pendulum manner
about the drive shaft axis which extends proximate the golf club grip."). The
Examiner is reminded that claims 10 and 11 are apparatus claims and require
only that a robot is capable of rotating a golf club in a pendulum manner.
See Reply Br. 3--4 ("[T]he only important part of the robot's function is to
swing the club about the drive shaft axis in one direction so that the club
face hits the ball." "In reality, the club ... can be rotated back to reset the
club to hit another ball.").
In sum, the Examiner has not met the burden to show that the
pendulum limitation of claims 10 and 11 is not enabled by the Specification.
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Rejection of claims 1-9 and 12 under 35 USC§ l 12(b) as indefinite
A claim is indefinite under 35 U.S.C. § 112 when it contains words or
phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1309
(Fed. Cir. 2014). "[C]laim definiteness depends on the skill level of an
ordinary artisan. Therefore, the specification need only disclose adequate
defining structure to render the bounds of the claim understandable to an
ordinary artisan." Telcordia Techs, Inc. v. Cisco Sys., Inc. (Fed. Cir. 2010)
(citing Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1365-66 (Fed. Cir.
2003) (holding that the internal circuitry of an electronic device need not be
disclosed in the specification if one of ordinary skill in the art would
understand how to build and modify the device)).
The Examiner contends
claims 1 and 12 ... call for ends of the same shaft being
connected to the gripping means and actuator, but also states
that the clutch is between those same ends. That is confusing, as
the clutch would in that case divide that single shaft into 2
shafts ( one between the actuator and clutch, and the other
between the clutch and gripping means).
Final Act. 4. As discussed above, the Examiner's interpretation of the claim
term "a drive shaft" as requiring a one-piece shaft is overly narrow. One of
ordinary skill in the art, when reading this term in light of the Specification,
would construe the term "a drive shaft" as encompassing a two-part shaft.
See Appeal Br. 10-11. Therefore, we are not persuaded that claims 1 and 12
are unclear, and do not sustain the indefiniteness rejection of 1-9 and 12.
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Rejection of claims 10 and 11 under 35 USC§ 103
as obvious over Parente
Claim 10 recites "a golf club gripping member coupled to a distal end
of the drive shaft for coupling [a] golf club to the robot ... wherein ... the
drive shaft axis ... extends proximate a grip portion of the golf club." The
Specification discloses that
[p ]referably, the golf club is not attached to the robot through a
swing arm and/or swing wrist, but rather is coupled to a club
gripping member that is rotated about the axis of a drive shaft.
Thus, the robot is comprised of ... a golf club gripping member
coupled to a distal end of the drive shaft .... The club is thus
rotated in a pendulum manner about the drive shaft axis which
extends proximate the golf club grip.
Spec. ,r 12. In the illustrated embodiments, golf gripping member 130 is
attached directly to the end of drive shaft 122, such that when golf club 102
is secured to golf gripping member 130, drive shaft axis 128 extends through
the grip portion of the golf club 102. See Spec., Figs 2--4. The Specification
discloses that "[p ]referably, the drive shaft axis 128 extends through or
approximate to the golf club grip and the golf club 102 is rotated in a
pendulum manner about the drive shaft axis 128. Most preferably, a portion
of the golf club grip is located within 4 inches of the drive shaft axis 128."
Spec. ,r 23.
The Examiner cites column 1, lines 11-20 of Parente for a teaching of
the above-quoted claim 10 limitation. Final Act. 5; Ans. 12. The cited
disclosure reads, in relevant part, "[g]enerally, golf club swinging machines
include a frame, an arm that is movably attached to the frame, and a drive
mechanism for rotating the arm. A golf club is held at one end of the arm
and the arm is swung to cause the club to hit a golf ball." Parente 1:16-20;
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see also id. at 4:11-12 ("The typical contemplated use of the invention is as
a surrogate for a swinging human arm .... ").
We agree with Appellant (see Appeal Br. 12) that the Examiner has
not explained adequately how Parente' s disclosure amounts to a teaching or
suggestion of "a golf club gripping member coupled to a distal end of the
drive shaft for coupling [a] golf club to the robot ... wherein ... the drive
shaft axis ... extends proximate a grip portion of the golf club" ( claim 10).
More specifically, the Examiner has not explained how Parente's
configuration, wherein the golf club gripping member is separated from the
end of the drive shaft by an arm, enables attachment of a golf club so that the
grip portion of the club is "proximate"-very close to, e.g., within 4 inches
of (see above-cited disclosure in the Specification}--the drive shaft axis.
Accordingly, we do not sustain this ground of rejection.
Order
1-12 § 112(a), enablement 1-12
1-9, 12 § 112(b ), indefiniteness 1-9, 12
10, 11 § 103 Parente 10, 11
Summary 1-12
REVERSED
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