Ex Parte ODownload PDFPatent Trial and Appeal BoardMay 22, 201413286129 (P.T.A.B. May. 22, 2014) Copy Citation 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 2 Appeal 2013-007708 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 3 Appeal 2013-007708 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 4 Appeal 2013-007708 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 5 Appeal 2013-007708 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 6 Appeal 2013-007708 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 7 Appeal 2013-007708 Application 13/286,129 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. 8 Appeal 2013-007708 Application 13/286,129 § 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). 9 Appeal 2013-007708 Application 13/286,129 AFFIRMED llw 10 Copy with citationCopy as parenthetical citation