Ex Parte O

Patent Trial and Appeal Board

May 22, 2014

13286129 (P.T.A.B. May. 22, 2014)

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.
13/286,129 10/31/2011 James Paul O'Sullivan SR. 400085-20000 2355
25570 7590 05/27/2014
ROBERTS MEOTKOWSKT SAFRAN & COLE. P.C.
EXAMINER
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064
WONG, STEVEN B
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
05/27/2014 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):
lgallaugher@rmsclaw.com
dbeltran@rmsclaw.com
docketing@rmsclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES PAUL O’SULLIVAN, SR.
Appeal 2013-007708
Application 13/286,129
Technology Center 3700
Before: JOHN C. KERINS, STEFAN STAICOVICI, and
LYNNE H. BROWNE, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2013-007708
Application 13/286,129
STATEMENT OF THE CASE
James Paul O’Sullivan, Sr. (Appellant) appeals under 35U.S.C. § 134
from the rejection of claims 2-14 and 16-30. Claims 1 and 15 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
The claims are directed to a long lasting golf tee. Claims 29 and 30
are independent. Illustrative claim 29 is reproduced below:
29. A golf tee device comprising a long lasting combination
of a golf tee in the form of a nail and a force absorbing member
in the form of a washer;
(a) said tee comprising a head having a top surface and a
bottom surface at least approximately parallel to each other,
said top surface including a ball support means exclusively
within said head, and, on said bottom surface, a uniform
diameter shaft smaller than said head integrally attached thereto
and terminating in a ground insertion end;
(b) said washer comprising a resilient member at the
bottom surface of said head exclusively surrounding said shaft
and having an outer diameter greater than both its thickness and
said head, protecting said head from a club face impact; and
(c) said washer having a resistance to force sufficient to
prevent the face of a club strike from harming said tee head.
We AFFIRM.
CLAIMED SUBJECT MATTER
PRIOR ART
Rosetta
Sand
Rose
Elder
US 5,186,455
US 6,475,107 B1
US 2006/0100038 A1
US 2008/0070724 A1
Feb. 16, 1993
Nov. 5, 2002
May 11,2006
Mar. 20, 2008
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Application 13/286,129
GROUNDS OF REJECTION
1. Claims 2-5, 11, 12, 14, 16-19, and 25-30 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Sand and Rose.
2. Claims 6, 7, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sand, Rose, and Elder.
3. Claims 8-10, 13, and 22-24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sand, Rose, and Rosetta.
OPINION
Claims 2-5, 11, 12, 14, and 29
Appellant argues claims 2-5, 11, 12, 14, and 29 together. See App.
Br. 13. We select independent claim 29 as the representative claim and
claims 2-5, 11, 12, and 14 stand or fall with claim 29. See 37 C.F.R.
§ 41.37(c)(l)(vii) (2011).
Appellant “traverses the Examiner’s finding . . . that Sand discloses a
device having a ‘uniform diameter shaft’. Because the presence of a
shoulder 18 (Col. 3, lines 1-6) on the shank (16) results in two different
diameters along the golf tee height set apparatus (10).” App. Br. 8. In
support of this argument, Appellant notes that Sand describes a shank having
a portion with a constant diameter and a portion with a varying diameter.
See App. Br. 9 (citing Sand, 2:14-22); see also Reply Br. 2-3.
While Appellant correctly identifies a section of Sand that describes
the entire shank (including head 20) as having a portion with a constant
diameter and a portion with a varying diameter; Appellant has not identified
where Sand describes elongated shank portion 16 (identified by the
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Application 13/286,129
Examiner as corresponding to the claimed shaft and which we understand to
extend from the pointed end 14 to the intermediate shoulder 18) as having a
varying diameter. Rather, as the Examiner finds, Sand states that elongated
shank portion 16 is “of substantially constant cross-section which extends
from the pointed end 14 to an intermediate shoulder 18 formed at a lower
end of the smoothly outwardly tapering upper end 20.” Sand, 2:66- 3:2.
Given that Appellant has claimed a tee comprising a head (which the
Examiner determines corresponds to Sand’s shank portion 20) and a shaft,
we are not persuaded that the Examiner’s interpretation of Sand is
unreasonable. We note that the issue is not what one of ordinary skill in the
art would consider to be the shank in Sand, but what elements in Sand could
reasonably be considered to correspond to the claimed “head” and “shaft”.
Appellant argues that “the Examiner engages in impermissible
picking-and-choosing from Sand only so much of it as will support his
position and excludes the other parts necessary to the full appreciation of
what Sand fairly suggests to one of ordinary skill in the art. App. Br. 9-10
(citing In re Wesslau, 147 USPQ 391, 393 (CCPA 1965)).
The Examiner has identified those elements in Sand that read on claim
29. As discussed supra, Appellant has not apprised us of error in the
Examiner’s findings. Appellant does not identify any part of Sand that was
excluded from the Examiner’s analysis. We further note that the Supreme
Court, in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), has provided
guidance when addressing a concern about picking and choosing.
For over a half century, the Court has held that a “patent for a
combination which only unites old elements with no change in
their respective functions ... obviously withdraws what already
is known into the field of its monopoly and diminishes the
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Application 13/286,129
resources available to skillful men.” Great Atlantic & Pacific
Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152—
153, 71 S.Ct. 127, 95 L.Ed. 162 (1950). This is a principal
reason for declining to allow patents for what is obvious. The
combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield
predictable results.
KSR 550 U.S. at 415-16. For these reasons, Appellant’s argument is not
persuasive.
Appellant argues that “it would not have been obvious to one of
ordinary skill in the art to modify the non-uniform diameter shaft of Sand to
eliminate the shoulder (18).” App. Br. 10. Appellant’s argument is not
persuasive as it is not responsive to the rejection as articulated by the
Examiner.
Appellant argues that “since there is no teaching or suggestion in Sand
of a shaft of uniform diameter, the rejection of claim 29 is based upon
speculation, an unfounded assumption, and impermissible hindsight” (App.
Br. 10) and that “[t]he only teaching of a shaft of uniform diameter is found
in the present application.” App. Br. 11. As discussed supra, Sand
describes elongated shank portion 16 as having a “substantially constant
cross-section”. Sand, 2:66. Accordingly, Appellant’s arguments are
unconvincing.
Appellant argues that Rose “fails to cure the underlying deficiencies
of Sand.” App. Br. 11. Appellant’s argument is unpersuasive as we find no
deficiencies in the Examiner’s findings based on Sand.
Appellant further argues “that even in view of Rose et al., the skilled
artisan would not have been motivated to modify Sand in a manner which
would destroy its disclosed function.” App. Br. 12. We understand
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Application 13/286,129
Appellant to be arguing that modifying Sand’s stopper 40 to be resilient in
view of the teachings of Rose, as proposed by the Examiner’s rejection,
would render Sand inoperative for its intended purpose; however, Appellant
does not explain why this would be the case. Specifically, Appellant does
not provide evidence or persuasive argument that modifying Sand’s stopper
40 to be resilient would render the stopper incapable of performing its
function of seating firmly against the ground to set the height of the tee
when the pointed end of the shank is inserted into the ground. See Sand,
3:63-4:3. Accordingly, Appellant’s argument is not persuasive.
Appellant notes that the “claims are directed to a long lasting golf tee
. . . the term ‘long lasting’ means a tee that can be used in multiple rounds
of golf rather than multiple holes of golf.” App. Br. 12. We understand
Appellant to be arguing that he has acted as his own lexicographer such that
the requirement that the tee can be used in multiple rounds of golf should be
read into the claims.
To act as a lexicographer, Appellant must “clearly set forth a
definition of the disputed claim term” other than its plain and ordinary
meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
(Fed.Cir.2002). “[T]he inventor’s written description of the invention, for
example, is relevant and controlling insofar as it provides clear
lexicography.” C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862
(Fed.Cir.2004) (emphasis added).
Appellant’s discussion of the term “long lasting” in paragraph [0032]
of the Specification does not provide a clear definition of this term. Rather,
it describes the term as depending “on the kind of material used to make the
tee.” Spec., para. [0032], Even the discussion of plastic tees states that the
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Application 13/286,129
meaning of the term “long lasting” “depends on the nature of the plastic.” Id.
Accordingly, Appellant does not act as his own lexicographer such that the
claim term “long lasting” must be construed to require that the tee last
through multiple rounds of golf as argued by Appellant.
Further, while we read the claim in light of the Specification, to
thereby interpret limitations explicitly recited in the claim, this is a quite
different thing from reading limitations of the specification into a claim, to
thereby narrow the scope of the claim by implicitly adding disclosed
limitations which have no express basis in the claim. In re Prater, 415 F.2d
1393, 1404-05, (CCPA 1969). Although the claims are interpreted in light
of the Specification, limitations from the Specification are not read into the
claims. In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993). Accordingly, we
do not construe claim 29 to require that the tee last for multiple rounds of
golf, as Appellant urges. Rather, we agree with the Examiner that the “tee of
Sand and Rose is also a long lasting tee that is capable of lasting multiple
holes of golf.” Ans. 6. Thus, Appellant’s argument is not persuasive.
In the Reply Brief, Appellant argues that the Examiner’s interpretation
of upper end 20 as corresponding to the claimed head “is inconsistent with
the description in Sand” (Reply Br. 3), that “Sand never discloses or even
suggests that item (20) is the ‘head’, and in fact never even uses the word
‘head’” and “the Sand golf tee in no way resembles a ‘nail’, especially when
that term is construed in light of the present disclosure.” Reply Br. 4.
Appellant raises these arguments for the first time in the Reply Brief
and these arguments are not responsive to an argument raised in the
Examiner’s Answer. Appellant has not shown good cause why these
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arguments should be considered. Accordingly, for purposes of the present
Appeal, these arguments will not be considered. 37 C.F.R. § 41.41 (2012).
For these reasons, we sustain the Examiner’s rejection of claim 29,
and claims 2-5, 11, 12, and 14 which fall therewith.
Claims 16-19, 25-28, and 30
Appellant argues claims 16-19, 25-28, and 30 together. See App. Br.
20. We select independent claim 30 as the representative claim and claims
16-19 and 25-28 stand or fall with claim 30.
Appellant presents substantially the same arguments regarding the
rejection of independent claim 30 as presented for independent claim 29.
See App. Br. 13-19. These arguments are not persuasive for the reasons
discussed supra. Accordingly, we sustain the Examiner’s rejection of
independent claim 30, and claims 16-19 and 25-28 which fall therewith.
Claims 6, 7, 20, and 21
Regarding claims 6, 7, 20, and 21, Appellant argues that “Elder fails
to cure the underlying deficiencies of the combination of Sand and Rose et
al, in that the relied-upon references, in combination, fail to fairly teach or
suggest Appellant’s golf tee device.” App. Br. 20. Given that we find no
deficiencies in the combination of Sand and Rose, as discussed supra,
Appellants have not identified the alleged error in the Examiner’s findings
with respect to Elder. Appellant’s argument amounts to a recitation of the
claim elements and a “naked assertion” that the elements are not found in the
prior art. Such statements do not constitute a separate argument for
patentability of claims 6, 7, 20, and 21 pursuant to 37 C.F.R.
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§ 41.37(c)(l)(vii). See In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(holding that the Board had reasonably interpreted 37 C.F.R.
§ 41.37(c)(l)(vii) as requiring “more substantive arguments in an [Ajppeal
[Bjrief than a mere recitation of the claim elements and a naked assertion
that the corresponding elements were not found in the prior art”).
For this reason, we sustain the Examiner’s rejection of claims 6, 7, 20,
and 21.
Claims 8, 10, 13, and 22-24
Regarding claims 8, 10, 13, and 22-24, Appellant argues that “Rosetta
fails to cure the underlying deficiencies of the combination of Sand and
Rose et al, in that the relied-upon references, in combination, fail to fairly
teach or suggest Appellant’s golf tee device.” App. Br. 22. As with
Appellant’s argument supra regarding claims 6, 7, 20, and 21, Appellant’s
argument amounts to a recitation of the claim elements and a “naked
assertion” that the elements are not found in the prior art which does not
constitute a separate argument for patentability of claims 8, 10, 13, and 22-
24. Id.
For this reason, we sustain the Examiner’s rejection of claims 8, 10,
13, and 22-24.
DECISION
The Examiner’s rejection of claims 2-14, and 16-30 is AFFIRMED.
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).
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AFFIRMED
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