Ex Parte Tavares et al

Patent Trial and Appeal BoardMay 20, 2013

11697007 (P.T.A.B. May. 20, 2013)

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. 11/697,007 04/05/2007 Gary G. Tavares 007625.00710 5535 22907 7590 05/21/2013 BANNER & WITCOFF, LTD. 1100 13th STREET, N.W. SUITE 1200 WASHINGTON, DC 20005-4051 EXAMINER HUNTER, ALVIN A ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 05/21/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte GARY G. TAVARES and TODD ANTHONY WAATTI ____________________ Appeal 2011-003913 Application 11/697,007 Technology Center 3700 ____________________ Before EDWARD A. BROWN, MICHAEL L. HOELTER, and RICHARD E. RICE, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-003913 Application 11/697,007 2 STATEMENT OF THE CASE Gary G. Tavares et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the decision of the Examiner rejecting claims 1-19, 23-29, 32, 38-42, 46, and 65.1 App. Br. 3, 6-7. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. CLAIMED SUBJECT MATTER Claims 1, 23, 46, and 65 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A golf club head, comprising: a golf club head base member including a golf club head face member having a ball striking face engaged therewith or integrally formed therewith as a unitary one piece construction; and a polymeric body member engaged with the golf club head base member via a rotational molding process, wherein the polymeric body member forms at least a portion of a crown member of the golf club head. REJECTIONS Claims 1-5, 18, 19, 23-27, and 39-42 stand rejected under 35 U.S.C. §§ 102(a) and 102(e) as anticipated by Erickson ‘973 (US 7,059,973 B2; iss. 1 Appellants indicate that claims 30, 31, and 33-37 were also rejected by the Examiner and are under appeal. App. Br. 3. However, we find no rejection for these claims in either the Final Rejection dated March 24, 2010, from which this appeal was taken, or the Answer. See Ans. 3-10; Final Rej. 2-8. We also find no rejection of these claims discussed in the Appeal Brief. Accordingly, there is no rejection of these claims before us for review. Appeal 2011-003913 Application 11/697,007 3 Jun. 13, 2006), and under 35 U.S.C. § 102(b) as anticipated by Erickson ‘115 (US 2006/0058115 A1; pub. Mar. 16, 2006).2 Claims 1, 2, 5-7, 16-19, 24, 27-29, 32, and 39-42 stand rejected under 35 U.S.C. § 102(e) as anticipated by Morales (US 7,361,100 B1; iss. Apr. 22, 2008). Claims 1-6, 8-15, 18, and 19 stand rejected under 35 U.S.C. § 102(b) as anticipated by Beach (US 6,558,271 B1; iss. May 6, 2003). Claims 23, 24, 27-29, 32, and 39-42 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Morales and Official Notice. Claim 38 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Erickson ‘973 and Appellants’ Admitted Prior Art (AAPA). Claim 38 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Morales, Official Notice, and AAPA.3 Claims 46 and 65 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Erickson ‘973, Giardello (US 7,285,593 B1; iss. Oct. 23, 2007), and Rotational Molding4. 2 The Examiner found that both Erickson ‘973 and ‘115 contain the same subject matter, and Erickson ‘973 is applied to reject claims under 102(a) and 102(e), and Erickson ‘115 is applied to reject the same claims under 102(b). Ans. 11. Erickson ‘115 is the publication of the patent application that issued as the Erickson ‘973 patent. “Erickson” is used infra to refer to subject matter disclosed by both Erickson ‘973 and ‘115. 3 The Examiner rejected claim 38 over Morales and AAPA (Ans. 9), but rejected claim 23, from which claim 38 depends, over Morales and Official Notice (id. at 7-8). Thus, we understand the rejection of claim 38 as being over Morales, Official Notice, and AAPA. 4 http://en.wikipedia.org/wiki/Rotational_molding (last visited Dec. 29, 2006). Appeal 2011-003913 Application 11/697,007 4 ANALYSIS Claims 1-5, 18, 19, 23-27, and 39-42 – Erickson ‘973 or Erickson ‘115 Claim 1 is directed to a golf club head comprising “a polymeric body member engaged with [a] golf club head base member via a rotational molding process.” The Examiner found that Erickson discloses a club head including a polymeric body member (minor body 60) engaged with a base member (major body 50) and forming a portion of a crown (crown section 62). See Ans. 4; see also Erickson ‘973, col. 7, ll. 19-22. The Examiner stated “[r]otational molding will not be given patentable weight being that it is a process and Erickson et al. discloses the final product.” Ans. 4. Thus, the Examiner appears to have interpreted “a rotational molding process” in claim 1 as a process limitation, and not a product limitation of the claimed gold club head. As such, we understand that the Examiner interpreted claim 1 as a “product-by-process” claim. In analyzing product-by-process claims, “[i]f the product in [the] product-by-process claim is the same as . . . a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (citations omitted). Once the examiner provides a rationale tending to show that the claimed product appears to be the same as that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing a difference between the claimed product and the prior art product. See Manual of Patent Examining Procedure (MPEP) § 2113 (8th Ed., Rev. 9, Aug. 2012); see also In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983). “[W]hen the prior art discloses a product which reasonably appears to be . . . identical with . . . a product claimed in a Appeal 2011-003913 Application 11/697,007 5 product-by-process claim, a rejection based . . . [on] section 102 . . . of the statute is eminently fair and acceptable.” In re Brown, 459 F.2d 531, 535 (CCPA 1972). Appellants contend that the rejection over Erickson fails on its face because the Examiner failed to consider all of the features of claim 1 in stating that “‘[r]otational molding will not be given patentable weight being that it is a process and Erickson et al. discloses the final product.’” App. Br. 8-10. However, we understand that the Examiner properly focused on the product recited in claim 1, and not on the process by which the product is made. See Brown, 452 F.2d at 535 (“[I]t is the patentability of the product claimed and not of the recited process steps which must be established.”). Thus, we find no error in the rejection of claim 1 on its face. Appellants also contend that “a polymeric body member engaged with [a] golf club head base member via a rotational molding process” will impart distinctive structural characteristics to the claimed golf club head that are not present in the club head structure of Erickson. App. Br. 10. Appellants cite to the Specification for support as to what structural characteristics are imparted to the golf club head by rotational molding: These [rotational molding] steps cause the polymeric material to flow toward and form a shell against all interior surface(s) to which it is exposed (e.g., against the inside of the club head body member 200 or against the interior surface (e.g., 226) of the mold portion 224) . . . . As the mold is further heated, and while the rotation continues, polymeric material in contact with the mold walls and/or the metal part eventually reaches a "tack" point and starts sticking to the mold walls and/or to the metal part. Appeal 2011-003913 Application 11/697,007 6 Spec. 15, para. [43]. Appellants contend that Erickson’s minor body 60 is formed separately from major body 50, and the bodies are engaged to each other via an adhesive. App. Br. 11-12. Appellants contend that this engagement of the bodies via an adhesive is structurally distinct from engagement via a rotational molding process, as claimed. Id. Appellants’ contentions are persuasive. Appellants provide some details as to what structural characteristics are imparted by engagement via rotational molding. Particularly, from Appellants’ Specification, it appears that “engaged . . . via a rotational molding process” at least requires direct contact between the polymeric body member and golf club head base member. Such direct contact appears to exclude the presence of an intermediary adhesive. Additionally, Appellants’ Specification distinguishes a golf club head that is similar to Erickson’s, in which the golf club head parts are separately formed and then engaged via an adhesive, from the claimed golf club head resulting from engagement during a rotational molding process. See, e.g., Spec. 6-7, para. [21]. Accordingly, we do not sustain the rejection of claim 1 and its dependent claims 2-5, 18, and 19 as being anticipated by Erickson. Additionally, independent claim 23 is similar to claim 1, and Appellants’ contentions (App. Br. 8-12) and the Examiner’s findings (Ans. 4-5, 11-12) are similar to those discussed supra for claim 1. Thus, we also do not sustain the rejection of claim 23 and its dependent claims 24-27 and 39-42 as being anticipated by Erickson. Appeal 2011-003913 Application 11/697,007 7 Claims 1, 2, 5-7, 16-19, 24, 27-29, 32, and 39-42 – Morales Claims 1, 2, 5-7, 16-19 Appellants argue claims 1, 2, 5-7, and 16-19 as a group, and indicate that claims 2, 5-7, and 16-19 stand or fall with claim 1. App. Br. 13. Regarding claim 1, the Examiner found that Morales discloses a club head having a polymeric body member (nonmetallic material 54) engaged with a base member (body 12). See Ans. 5; see also Morales, col. 3, ll. 16-22. Appellants contend that the rejection over Morales fails on its face because the Examiner failed to consider all of the features of claim 1 in stating that “‘[r]otational molding will not be given patentable weight being that it is a process.’” App. Br. 13-15. For reasons similar to those discussed supra, we find no error in the rejection of claim 1 on its face. Appellants also contend that Morales discloses a process of forming a golf club head in which no rotation of a mold is discussed. App. Br. 16. Appellants contend that Morales does not teach or suggest a golf club head having a structure in which a shell of a polymeric body member is positioned within, formed at, and engaged with an interior of the club head base member during a rotational molding process. Id. at 17. Appellants’ contentions are unpersuasive. Morales discloses a golf club head body 12 with openings 46/48/50/52. Morales, col. 3, ll. 10-12; figs. 3, 4. A non-metallic material 54 is laid up on an inside surface 56 of the body 12 extending across and closing its openings. Id. at col. 3, ll. 23- 26. An inflatable bladder is inserted into the body 12, and the body is placed in a mold. Id. at col. 3, ll. 26-30. The bladder is then inflated and the mold heated to cure the nonmetallic material 54. Id. at col. 3, ll. 31-32. While Appellants are correct that Morales fails to disclose that the mold is rotated, Appeal 2011-003913 Application 11/697,007 8 “it is the patentability of the product claimed and not of the recited process steps which must be established.” See Brown, 459 F.2d at 535. Additionally, claim 1 does not recite any limitation that the polymeric body member forms an “interior shell” in the golf club head base member. Nor have Appellants directed us to any disclosure in the Specification, or to any other evidence, that persuasively supports the contention that an interior shell must necessarily be present when the polymeric body is engaged with the golf club head base member via a rotational molding process. We note that the Specification states that a shell can be formed “against the inside of the club head body member 200 or against the interior surface . . . of the mold portion 224.” Spec. 15, para. [43] (emphasis added). Accordingly, an interior shell formed at an interior of the club head base member does not appear to be necessarily present as a result of a rotational molding process. In addition, Morales appears to disclose that the non-metallic material 54 forms at least part of an interior shell in the body 12. See, e.g., Morales, figs. 3, 4. Appellants provide no persuasive argument or evidence that the direct engagement between the non-metallic material 54 and the body 12 in Morales is structurally distinct from the engagement recited in claim 1. Accordingly, we sustain the rejection of claim 1 and its dependent claims 2, 5-7, and 16-19 as being anticipated by Morales. Claims 24, 27-29, 32, and 39-42 Appellants correctly point out that the Examiner did not also reject independent claim 23, from which claims 24, 27-29, 32, and 39-42 depend. App. Br. 13; see Ans. 5-6. Accordingly, we do not sustain the rejection of claims 24, 27-29, 32, and 39-42 as anticipated by Morales. Appeal 2011-003913 Application 11/697,007 9 Claims 1-6, 8-15, 18, and 19 – Beach Appellants argue claims 1-6, 8-15, 18, and 19 as a group, and indicate that claims 2-6, 8-15, 18, and 19 stand or fall with claim 1. App. Br. 17. Appellants contend that the rejection over Beach fails on its face because the Examiner failed to consider all of the features of claim 1 in stating that “‘[r]otational molding will not be given patentable weight being that it is a process.’” Id. at 17-18. For reasons similar to those discussed supra, we find no error in the rejection of claim 1 on its face. Appellants contend that Figure 16 of Beach discloses a golf club head skeletal structure 96 including gaps 102 that can be filled with various materials, such as plastics. See App. Br. 20; see also Beach, col. 8, ll. 46-50. Appellants also contend that Figures 18 and 19 of Beach disclose a shell 124 formed by a molding process, and that anterior annular surfaces of the shell 124 of Beach are “bonded” to an annular mating flange 126 of a striking plate 122. See App. Br. 20; see also Beach, col. 8, ll. 51-61 Appellants contend that Beach fails to disclose that its golf club heads are formed using a rotational molding process. App. Br. 20-21. However, as discussed supra, “it is the patentability of the product claimed and not of the recited process steps which must be established.” See Brown, 459 F.2d at 535. Appellants also contend that Beach does not teach or suggest a golf club head having a structure in which a shell of a polymeric body member is formed and engaged with an interior of the club head base member during a rotational molding process. App. Br. 21. To the extent Appellants are contending that Beach does not disclose a polymeric interior shell in the golf club head base member, as discussed supra, claim 1 does not recite such a feature. As also discussed supra, Appellants have also not persuasively Appeal 2011-003913 Application 11/697,007 10 shown how such an interior shell would necessarily be required as part of engagement via a rotational molding process. In addition, Appellants provide no persuasive argument or evidence that the engagements between the various parts of the gold club heads in Beach are structurally distinct from the engagement recited in claim 1. Accordingly, we sustain the rejection of claim 1 and its dependent claims 2-6, 8-15, 18, and 19 as being anticipated by Beach. Claims 23, 24, 27-29, 32, and 39-42 - Morales and Official Notice Appellants argue claims 23, 24, 27-29, 32, and 39-42 as a group, and indicate that claims 24, 27-29, 32, and 39-42 stand or fall with claim 23. App. Br. 22. Claim 23 is directed to a golf club comprising a golf club head similar to that recited in claim 1. Appellants rely on their contentions discussed supra regarding the rejection of claim 1 as anticipated by Morales for patentability of claim 23. App. Br. 22. As we find no deficiency in the rejection of claim 1 as anticipated by Morales, we sustain the rejection of claim 23 and its dependent claims 24, 27-29, 32, and 39-42 as being unpatentable over Morales and Official Notice for reasons similar to those discussed supra. Claim 38 – Erickson ‘973 and AAPA Claim 38 depends from claim 23. The Examiner’s findings and conclusions (Ans. 4, 9) and Appellants’ contentions (App. Br. 23) are similar to those discussed supra for the rejection of claim 1 as anticipated by Erickson. As we agree with Appellants that Erickson does not disclose every feature of claim 23, including “a polymeric body member engaged Appeal 2011-003913 Application 11/697,007 11 with the golf club head base member via a rotational molding process,” and the Examiner’s application of AAPA does not cure the deficiencies of Erickson, we do not sustain the rejection of claim 38 as unpatentable over Erickson and AAPA. Claim 38 – Morales, Official Notice, and AAPA Claim 38 depends from claim 23. Appellants rely on their contentions discussed supra regarding the rejection of claim 1 as anticipated by Morales for patentability of claim 38. App. Br. 23. As we find no deficiency in the rejection of claim 1 as anticipated by Morales, we sustain the rejection of claim 38 as being unpatentable over Morales, Official Notice, and AAPA for reasons similar to those discussed supra. Claims 46 and 65 – Erickson ‘973, Giardello, and Rotational Molding Claim 46 Claim 46 is directed to a method of forming a golf club head comprising: “engaging a golf club head base member with at least a portion of a mold,” “placing a material for forming a portion of a golf club body member into at least a portion of the mold,” and “moving the mold with the material therein and with the golf club head base member engaged therewith to position the material at one or more desired locations with respect to the golf club head base member.” The Examiner found that Erickson discloses a golf club head having a polymeric member engaged to a base member, with both members formed by the use of a mold. Ans. 9. The Examiner found that Giardello discloses a polymeric material for use in a golf club head, and that the polymeric material can be formed by rotational molding (id.), and Appeal 2011-003913 Application 11/697,007 12 concluded that it would have been obvious to form the polymeric material of Erickson using a rotational molding process (id. at 9-10). Appellants contend that Erickson fails to disclose a molding process in which a mold having both a moldable material and a base member are moved. App. Br. 24. Appellants also contend that Giardello fails to disclose the use of a molding technique that moves a mold containing both a golf club base member and a moldable material, and instead discloses the use of a molding technique to form a golf club head made from a single material. Id. at 25. Appellants’ contentions are persuasive. While the Examiner found that Giardello’s polymeric material can be formed by rotational molding, the Examiner did not make a finding that either of Erickson and Giardello discloses using a movable mold that contains both a base member and a moldable material to form a golf club head. The Examiner’s application of Rotational Molding does not cure the deficiencies of Erickson and Giardello. The Examiner also did not articulate a reason why the missing claimed features would have been obvious. Accordingly, we do not sustain the rejection of claim 46. Claim 65 Claim 65 is directed to a method of forming a golf club head comprising rotating a mold having both a material for forming a portion of a golf club body member and a golf club head base member. The Examiner’s findings and conclusions (Ans. 9-10 and 14) and Appellants’ contentions (App. Br. 26-28) for claim 65 are similar to those discussed supra regarding claim 46. The Examiner did not make a finding that Erickson, Giardello, or Rotational Molding discloses rotating a mold that contains both a base Appeal 2011-003913 Application 11/697,007 13 member and a material for forming a portion of a golf club body member. Thus, we do not sustain the rejection of claim 65. DECISION The rejection of claims 1-5, 18, 19, 23-27, and 39-42 under 35 U.S.C. §§ 102(a) and 102(e) as anticipated by Erickson ‘973, and under 35 U.S.C. § 102(b) as anticipated by Erickson ‘115 is REVERSED. The rejection of claims 1, 2, 5-7, and 16-19 under 35 U.S.C. § 102(e) as anticipated by Morales is AFFIRMED, and the rejection of claims 24, 27- 29, 32, and 39-42 as anticipated by Morales is REVERSED. The rejection of claims 1-6, 8-15, 18, and 19 under 35 U.S.C. § 102(b) as anticipated by Beach is AFFIRMED. The rejection of claims 23, 24, 27-29, 32, and 39-42 under 35 U.S.C. § 103(a) as unpatentable over Morales and Official Notice is AFFIRMED. The rejection of claim 38 under 35 U.S.C. § 103(a) as unpatentable over Erickson ‘973 and AAPA is REVERSED. The rejection of claim 38 under 35 U.S.C. § 103(a) as unpatentable over Morales, Official Notice, and AAPA is AFFIRMED. The rejection of claims 46 and 65 under 35 U.S.C. § 103(a) as unpatentable over Erickson ‘973, Giardello, and Rotational Molding is REVERSED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART Appeal 2011-003913 Application 11/697,007 14 hh