Ex Parte Tinti

Patent Trial and Appeal BoardNov 28, 2014

12387853 (P.T.A.B. Nov. 28, 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. 12/387,853 05/07/2009 Robert Tinti JEC011 7206 7590 12/01/2014 James E. Curry P.O. Box 12516 La Crescenta, CA 91224 EXAMINER GRAHAM, MARK S ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 12/01/2014 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 ROBERT TINTI ____________ Appeal 2012-012184 Application 12/387,853 Technology Center 3700 ____________ Before JOHN C. KERINS, NEIL T. POWELL, and JILL D. HILL, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Robert Tinti (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1, 3–10 and 20–26. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2012-012184 Application 12/387,853 2 THE INVENTION Appellant’s invention is directed to a vibration isolation system for a hand implement. Independent claim 1 is illustrative: 1. A vibration isolation system for a hand implement having a grip end and a impact end, the hand implement having a fundamental bending natural frequency (ω) and a mass (m), the vibration isolation system comprising: a outer shell member having an inner surface substantially encircling and spaced outwardly from the grip end, the outer shell member sufficiently spaced outwardly from the grip end allowing the grip end to freely deflect within the outer shell member when the impact end of the hand implement impacts an object within an intended zone of contact; and, at least two isolation elements positioned between the grip end and the outer shell member and supporting the outer shell member about the grip end, each isolation element having an inner mounting surface and an outer mounting surface, the inner mounting surface affixed to the grip end of the hand implement and the outer mounting surface affixed to the inner surface of the outer shell member, the isolation elements establishing a spring rate (k) of the vibration isolation system when the system is affixed to the hand implement, the square root of the spring rate (k) divided by the mass (m) of the hand implement defines a natural frequency of the vibration isolation system (ωo), (ωo = (k + m)1/2), wherein the ratio of the fundamental bending natural frequency (ω) divided by the natural frequency of the vibration isolation system (ωo) is greater than 1.5; and, the isolation elements having a footprint length and the outer shell member having a length that is at least 2 times greater than the footprint length of the isolation elements. Appeal 2012-012184 Application 12/387,853 3 THE REJECTIONS The Examiner has rejected: (i) claims 1, 3–10, and 20–25 under 35 U.S.C. § 103(a) as being unpatentable over Sims (US 2010/0184540 A1, published July 22, 2010) and Shomo (US 4,660,832, issued Apr. 28, 1987); and (iii) claim 26 under 35 U.S.C. § 103(a) as being unpatentable over Sims and Shomo, and Wu (US 5,332,280, issued June 21, 1994). Claim 27 was introduced in an Amendment dated July 15, 2011, and that Amendment was noted as being entered in the Advisory Action dated August 1, 2011. Neither the Final Office Action dated May 17, 2011, nor the Examiner’s Answer dated May 11, 2012, contains a rejection of claim 27.1 Claim 27 is thus not within our jurisdiction in this appeal. ANALYSIS Claims 1, 3–10, and 20–25--Obviousness--Sims/Shomo The Examiner finds that Sims teaches the claimed outer shell member and the at least two isolation elements positioned between the grip of the hand implement and the outer shell member. Answer 4. The Examiner acknowledges that Sims does not disclose that the ratio of the fundamental bending natural frequency of the bat to the natural frequency of the vibration isolation system is greater than 1.5. Id. The Examiner cites to Shomo as teaching that selection of materials and controlling the thickness, length, and width of the isolation elements dictates the degree of vibration absorption in a similar system. Id. The Examiner concludes that it would have been 1 The Advisory Action indicated that claim 27 would be rejected, but no rejection has been made. Appeal 2012-012184 Application 12/387,853 4 obvious to modify Sims to select a particular material (cellular urethane) and appropriate thickness, length, and width for the isolation elements in order to attain a value for the claimed ratio that is greater than 1.5, if that is the “degree of vibration absorption or isolation desired by the ordinary skilled artisan.” Id. at 4–5. The Examiner also takes the position that, if such a value for the ratio is not inherent in the Sims system, it would have been obvious to try various isolation elements in order to attain such a value. Id. at 7. The Examiner’s position is not supported by a preponderance of the evidence. Although Sims describes using elastomeric decouplers to space an outer shell from a bat handle to isolate the handle from the outer shell, in order to “keep[] shock (and to a significant extent other vibrations) from being transmitted to the batter’s hands when a ball is struck,” Sims further describes using one or more damping devices to further lessen the transmission of shock or vibration to the batter’s hands. Sims, ¶ 38; passim. There is no indication in Sims that persons of ordinary skill in the art would rely solely on vibration isolation to lessen the vibration felt by a batter. Further, Shomo’s discussion of choice of materials and sizing of spacer elements is with respect to a vibration absorption or damping system, whereas vibration isolation involves different principles. Shomo, col. 1, ll. 44–49; col. 5. ll. 38–46; Appeal Br. 10–11. The Examiner’s rejection, including the “obvious to try” rationale, appears to be premised on an understanding in the art that the spring rate of a vibration isolation system, as governed by properties of the isolation elements, as well as the ratio of the fundamental bending natural frequency of a hand implement, such as a bat, to a natural frequency of the vibration Appeal 2012-012184 Application 12/387,853 5 isolation system, are akin to result effective variables that persons of ordinary skill in the art would have found it obvious to change to produce a desired result. Such is not evidenced in the Sims hybrid isolation/damping system. Further, as noted above, although Shomo addresses choice of material and appropriate sizing of spacer elements, it is with regard to an energy absorption or damping system, and not a vibration isolation system. Appellant notes that, in order to attain the claimed ratio value and to adequately isolate vibrational forces using isolation only, “an extremely low spring rate of the system is needed.” Appeal Br. 16. Appellant further points out that “the joints in a vibration isolation system tend to be ‘floppy’ and wriggle around a lot.” Id. at 11. Although Sims mentions that the system therein will experience “wiggle and jiggle” (Sims, ¶ 41), it appears to us that only a certain amount of floppiness would be tolerated from a practical standpoint for a baseball bat, tennis racket, or other similar hand implements. Sims, in that respect, can be seen as acknowledging that attaining a desirable level of vibration reduction would not be achieved using vibration isolation alone. As such, we do not agree that a person of ordinary skill in the art would have found obvious reducing the spring rate to the point that the claimed ratio value in excess of 1.5 in order to achieve a particular level of vibration isolation. In view of the foregoing, the rejection of claims 1, 3–10, and 20–25 as being unpatentable over Sims and Shomo is not sustained. Claim 26--Obviousness--Sims/Shomo/Wu The Examiner does not rely on Wu in any manner that would result in overcoming the deficiencies of the rejection based on the combination of Appeal 2012-012184 Application 12/387,853 6 Sims and Shomo. As such, the rejection of claim 26 as being unpatentable over Sims, Shomo, and Wu is not sustained. DECISION The rejection of claims 1, 3–10, and 20–25 under 35 U.S.C. § 103(a) as being unpatentable over Sims and Shomo is reversed. The rejection of claim 26 under 35 U.S.C. § 103(a) as being unpatentable over Sims, Shomo, and Wu is reversed. REVERSED Klh