Ex Parte Voges

Patent Trial and Appeal Board

Jul 6, 2016

11843417 (P.T.A.B. Jul. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111843,417 08/22/2007 Mitchell Voges
27189 7590 07/08/2016
PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
525 B STREET
SUITE 2200
SAN DIEGO, CA 92101
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.
116540-1701UT 5041
EXAMINER
HUNTER, AL VIN A
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
07/08/2016 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):
docketing@procopio.com
PTONotifications@procopio.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MITCHELL VOGES
Appeal2014-006598
Application 11/843,417 1
Technology Center 3700
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 1-5, 12, 15, 17, and 19-21. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 According to Appellant, the real party in interest is Max Out Golf LLC.
Appeal Br. 1.
Appeal2014-006598
Application 11/843,417
BACKGROl.J1'-JD
According to Appellant, the invention is "directed to golf clubs, and
more particularly to a treatment that can be applied to the golf club."
Spec. ,-r 2.
CLAIMS
Claims 1-5, 12, 15, 17, and 19-21 are on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A golf club head comprising a club face, the club face
including:
a hitting surface having a sweet spot;
a treatment applied to the entire sweet spot and, optionally,
an area slightly larger than the sweet spot of the hitting surface,
the treatment comprising:
a pattern that reduces slippage of a golf ball on the
hitting surface when the golf ball is struck using the golf
club, wherein the pattern is a diamond groove pattern,
a surface roughness created by the treatment, and
the diamond groove pattern having a peak depth
below the hitting surface,
wherein the treatment is applied only to the sweet spot and,
optionally the area slightly larger than the sweet spot.
Appeal Br. 1 7.
REJECTIONS
1. The Examiner rejects claims 1-5 and 15 under 35 U.S.C. § 103(a)
as unpatentable over Schmermund2 in view of Sekiguchi. 3
2 Schmermund, US Des. 83,700, iss. Mar. 17, 1931.
3 Sekiguchi, JP 08000777 A, pub. Jan. 9, 1996.
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Appeal2014-006598
Application 11/843,417
2. The Examiner rejects claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Schmermund in view of Sekiguchi and Pelz. 4
3. The Examiner rejects claims 17, 19, and 21under35 U.S.C.
§ 103(a) as unpatentable over Kearsley. 5
4. The Examiner rejects claim 20 under 35 U.S.C. § 103(a) as
unpatentable over Kearsley in view of Pelz.
DISCUSSION
Rejection 1
With respect to claim 1, the Examiner finds that "[Schmermund]
discloses a club head having a club face including a hitting surface having a
sweet spot, a treatment applied to the entire sweet spot wherein the treatment
comprises a diamond groove pattern having a peak depth." Final Action 2.
Further, in response to Appellant's arguments, the Examiner finds that the
claimed device is not structurally distinguishable from Schmermund because
"Schmermund shows the exact same structure as that being claimed" and
"can be used to hit a golf ball despite being a pencil holder." Ans. 5.
However, we disagree that Schmermund discloses "the exact same
structure as that being claimed." Ans. 5. We agree with Appellant that the
Examiner has not established that Schmermund teaches "a diamond groove
pattern having a peak depth" as found in the rejection. Schmermund is a
design patent to an ornamental design for a pencil holder and does not
provide a description regarding the pattern appearing on the side of the
pencil holder. Further, we find that the Examiner has not set forth an
4 Pelz, US 7,014,568 B2, iss. Mar. 21, 2006.
5 Kearsley et al., US 2,457 ,084, iss. Dec. 21, 1948.
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Appeal2014-006598
Application 11/843,417
articulated reasoning with rational underpinnings to support the conclusion
that one of ordinary skill in the art would have found it obvious to modify
the ornamental design of a pencil holder with the golf club groove pattern
taught by Sekiguchi.
Based on the foregoing, we are persuaded that the Examiner erred in
rejecting claim 1 as obvious over Schmermund in view of Sekiguchi.
Accordingly, we do not sustain the rejection of claim 1 or any of claims 2-5
and 15 depending from claim 1.
Rejection 2
The Examiner does not rely on Pelz to cure the deficiency in the
rejection of claim 1 over Schmermund and Sekiguchi. Accordingly, we do
not sustain the rejection of claim 12 for the reasons discussed above.
Rejection 3
We are persuaded that the Examiner erred in rejecting claim 17 as
obvious over Kearsley. In particular, we agree with Appellant that the
Examiner has not sufficiently articulated why it would have been obvious to
apply a groove pattern as claimed to Kearsley's device. See Appeal Br. 13.
Claim 17 recites a treatment that includes a groove pattern that is a
diamond pattern, a swirl pattern or a circle pattern. The Examiner finds that
"[ w ]ith respect to the pattern, the pattern appears to be a mere choice of
design. Applicant does not disclose why a diamond, circular, or swirl
pattern is critical in attaining the invention." Final Action 3--4. The
Examiner also states "[t]here is no assertion that a circle, swirl, or diamond
pattern achieves any higher or unexpected results over the other, which
would indicate that each pattern arises to the same results. Therefore the
groove pattern would be merely an obvious change in pattern based on
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Appeal2014-006598
Application 11/843,417
preference (i.e. design choice)." Ans. 8. Although the Specification does
not describe the specific performance characteristics related to the listed
groove pattern designs, we are not persuaded that this lack of information is
sufficient, by itself, to conclude that the groove patterns are interchangeable
or ornamental such that they represent a mere design choice when selecting
between them. See Spec. i-f 17. Further, the rejection based on design choice
appears to be based on hindsight reasoning because it relies on information
gleaned only from Appellant's Specification. We also agree with Appellant
that the Specification is not required to provide an explanation of why the
patterns disclosed are critical in this instance because the Examiner has not
established, without relying on knowledge gleaned only from the
Specification, that it was known to use such designs interchangeably in the
art. See Reply Br. 7.
Based on the foregoing, we are persuaded that the Examiner erred in
rejecting claim 17 over Kearsley. Accordingly, we do not sustain the
rejection of claim 1 7 or dependent claims 19 and 21.
Rejection 4
The Examiner does not rely on Pelz to cure the deficiency in the
rejection of claim 17 over Kearsley. Accordingly, we do not sustain the
rejection of claim 20 for the reasons discussed above.
CONCLUSION
For the reasons set forth above, we reverse the rejections of claims 1-
5, 12, 15, 17, and 19-21.
REVERSED
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