Ferris, Richard D.

Patent Trials and Appeals BoardNov 1, 2019

14285701 - (D) (P.T.A.B. Nov. 1, 2019)

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. 14/285,701 05/23/2014 Richard D. Ferris FERR 301 7504 7590 11/01/2019 Nicholas J. Aquilino 5101 Palo Duro Avenue Albuquerque, NM 87110 EXAMINER DENNIS, MICHAEL DAVID ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 11/01/2019 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 RICHARD D. FERRIS Appeal 2016-008755 Application 14/285,701 Technology Center 3700 BEFORE LISA M. GUIJT, BRADLEY B. BAYAT, and PAUL J. KORNICZKY, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant, Richard D. Ferris, appeals from the Examiner’s decision to reject claims 1–13. An oral hearing was conducted on October 22, 2019. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2016-008755 Application 14/285,701 2 CLAIMED SUBJECT MATTER The claims are directed to a golf grip that is shaped to support and facilitate natural hand and finger action. Spec. 4. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A unitary golf club grip for attachment to the shaft of a golf club comprising: three gripping sections including: a lower end section of said grip having a first outer diameter constant along said lower end section; an upper end section having a second outer diameter constant along said upper end section, said second outer diameter being smaller than said first outer diameter; an intermediate section located between said upper end section and said lower end section, said intermediate section having an outside diameter progressively tapering between said upper end section and said lower end section toward said upper end section; said upper end section having a relative length smaller than said intermediate section; said lengths of said upper end section and said intermediate section characterized by having a proportionate ratio of 5:12; said lower end section having a length at least equal to the length of both of said upper end section and said intermediate sections combined; said upper end section further characterized by having a size providing a gripping surface to accommodate the upper finger of a golfer’s upper hand; said intermediate section characterized by having a size providing a gripping surface for the remaining three fingers of the upper hand; and, said lower end section characterized by having a size providing sufficient gripping surface to accommodate all the fingers of the golfer’s lower hand. Appeal 2016-008755 Application 14/285,701 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Ferris US 7,658,684 B2 Feb. 9, 2010 Furey US 2011/0294598 A1 Dec. 1, 2011 REJECTION1 Claims 1–13 stand rejected under 35 U.S.C. § 103 as unpatentable over Ferris and Furey. OPINION Independent claim 1 Regarding independent claim 1, the Examiner finds, and Appellant does not dispute, that Ferris discloses a unitary golf club grip comprising three gripping sections: (i) a lower end section having a first, constant outer diameter; (ii) an upper end section having a second, constant outer diameter smaller than the first diameter; and (iii) an intermediate section having an outside diameter progressively tapering between the between the upper and lower end sections; as claimed. Final Act. 4–5 (Ferris ¶¶ 29–33, Figs. 1–7). The Examiner also finds that Ferris discloses that (i) the upper end section has a relative length smaller than the intermediate section; (ii) the lengths of 1 We decline to consider the Examiner’s refusal to grant priority for the claims of the present continuation-in-part application to the filing date of the parent application (filed Oct. 13, 2011), because Appellant does not argue that the issue is relevant to the Examiner’s rejection of the claims under 35 U.S.C. § 103 as unpatentable over Ferris and Furey, which is the rejection before us on appeal. Appeal Br. 8–9. Appeal 2016-008755 Application 14/285,701 4 the upper end section and the intermediate section are characterized by a proportionate ratio; and (iii) the lower end section has a length at least equal to the length of both of the upper end section and the intermediate sections combined; as claimed. Id. at 5 (Ferris ¶¶ 29–33, Figs. 1–7) (emphasis added). The Examiner determines that Ferris does not disclose that the lengths of the upper end section and the intermediate section are characterized by a proportionate ratio of 5:12, as claimed, which the Examiner determines means the length of the upper end section is 42% of the length of the intermediate section. Final Act. 7 (emphasis added). However, the Examiner relies on Ferris for disclosing the general conditions of claim 1, because Ferris discloses all of the structure of the unitary golf grip, including a proportionate ratio between the upper and intermediate sections, but for the specific ratio of 5:12, as claimed. The Examiner finds that Ferris is evidence that the prior art recognizes such a proportionate ratio as a result-effective variable, by disclosing that a length of upper end section 18 of 2 inches and a length of intermediate section 22 of 3.5 inches, resulting in a proportionate ratio of 7:12, wherein the length of the upper end section is 57% of the length of the intermediate section. Ans. 7. The Examiner relies on In re Aller to conclude that a person of ordinary skill in the art would have known to optimize the proportionate ratio of the lengths of upper end and intermediate sections to achieve the claimed ratio. Id. at 8; see also In re Aller, 220 F.2d 454 (CCPA 1955). The Examiner further determines that “[a]ny alleged criticality for the proportionate ratio is limited to golfers of specific hand and finger lengths and thicknesses.” Ans. 8. Appeal 2016-008755 Application 14/285,701 5 Appellant argues that the general conditions of the claim are not disclosed by Ferris, because “[t]he Ferris patent is structured to receive the two uppermost fingers of the golfer’s upper hand in the constant diameter upper section of the grip,” while “[t]he grip claimed in the present application is structured to receive only the single, uppermost finger or the upper hand on the uppermost section of the grip, a different and improved grip altogether than the patented grip of Ferris.” Reply Br. 9–10. In particular, Appellant maintains that at the time Ferris’ grip was invented, conventional wisdom . . . was that a golf grip is to be generally held lightly without tension throughout [the] swing,” except that “the little and ring fingers of the upper, non-dominant hand are pressed more firmly than the other middle and index fingers against the upper part of the grip to provide a firmer impaction against the heel of the hand thereby providing increased control and stability during the golf swing,” such that “the ring finger and the little finger closed simultaneously on the golf grip when golfer executed a golf swing” and “the middle finger and the index finger closed sequentially.” Reply Br. 7–8; see also Appeal Br. 22. Appellant submits that based on this information, Ferris’ grip is designed such that “the index and middle finger were placed on the tapered intermediate section of the grip while the ring finger and little finger were both placed on a smaller but constant diameter . . . portion.” Reply Br. 8. Appellant further submits that after the Ferris invention, “it was subsequently learned that the conventional wisdom of the ring finger and little finger acting to close simultaneously was incorrect, but rather they closed sequentially because these fingers engaged a portion of the grip having the same diameter.” Id. (citation omitted). Appellant concludes that Appeal 2016-008755 Application 14/285,701 6 [t]his knowledge created Appellant’s “flash of genius” that, in turn led to the development of the grip of the present application where only the little finger rests on the uppermost part of the grip having a constant diameter and the remaining three fingers of the upper hand rest on the tapered, intermediate section of the grip when the grip is used in a normal, conventional manner. Id. at 9. Appellant concludes that “in order for the principles of ‘Aller’ to apply[], both grips [(i.e., the grip disclosed in Ferris and the claimed grip)] would have to be structured to receive the upper two fingers of the upper hand on the uppermost section and the lower fingers structured to be received on the intermediate section.” Reply Br. 10. As an initial matter, we determine that the claim limitations addressing the golfer’s hand and fingers are statements of use, which are not entitled to patentable weight. In other words, the golfer’s hand does not limit the structure of the claimed unitary golf grip. Cf. Reply Br. 4 (arguing that the grip disclosed in Ferris “is not capable of performing the intended, normal use of the [claimed] golf grip when used to execute the routine mechanics of a full golf swing”). “[W]ere the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d at 456. This rule is limited to cases in which the optimized variable is a “result-effective variable.” In re Antonie, 559 F.2d 618, 620 (CCPA 1977). We are not apprised of error in the Examiner’s determination that Ferris discloses the general conditions of the claimed unitary golf grip, including the structure of the three sections as set forth supra, and further, that Ferris recognizes a proportional ratio between the lengths of the upper Appeal 2016-008755 Application 14/285,701 7 and intermediate sections that results in effecting the golfer’s finger placement relative to the sections of the grip. For example, Ferris discloses that “[t]he upper section of the grip is designed to accommodate the pinky and ring finger,” while “[t]he intermediate tapered transitional section of the grip accommodates the middle and index fingers”, whereby “[i]t is contemplated that the transitional section ranges in length between approximately 2.5 and 3.5 inches, [and] the upper section ranges in length between 2 to 3 inches.” Ferrus 3:4–7, 4:64–66. Notably, the dimensions of Ferris’ upper and intermediate sections support, by a preponderance of the evidence, the Examiner’s determination that Ferris discloses a proportionate ratio for the length of the upper and transitional (or intermediate) sections of 2:3.5, or 57%. See Ans. 7; cf. Reply Br. 3 (relying solely on the preferred embodiment in Ferris for disclosing that “a careful reading of Ferris clearly shows that the intermediate section is 3.0 inches with the uppermost section of 2.5 inches, a ratio of approximately 5 to 6 or 85%”); see Ferris 4:42–61 (disclosing that “a preferred embodiment” includes an upper section 18 of 2.5 inches in length and a tapered transitional section 22 of 3 inches in length). In addition to disclosing the general conditions of the claim, we also agree with the Examiner’s determination that although Ferris teaches accommodating the pinky and ring finger on the upper section (Ferris 3:4– 5), rather than solely the pinky finger according to the intended use recited in claim 1, Ferris none-the-less is evidence that the prior art recognizes a proportional ratio between the lengths of the upper and intermediate sections as effecting finger placement (i.e., a result-effective variable), and that it is not inventive to discover the claimed optimum or workable ranges by Appeal 2016-008755 Application 14/285,701 8 routine experimentation See Appeal Br. 11 (arguing Ferris discloses that “the upper section . . . exclusively accommodate[s] only the little and ring, upper two fingers of the upper hand and a transitional or intermediate section . . . accommodate[s] only the two remaining lower fingers”). Appellant argues that the difference in finger placement between Ferris’ grip and the claimed grip are “essential and critical,” whereby the claimed grip produces a “significant change” from the prior art that “creates a totally different grip structure,” because removing the ring finger from the upper section impacts, for example, the leverage of a full swing golf shot. Appeal Br. 12–14. Appellant concludes that the claimed invention “is structured differently and . . . functions differently to produce a new and different result.” Reply Br. 10. We are not persuaded by Appellant’s argument. Given Ferris’ recognition of the ratio of the lengths of upper and intermediate sections as a result-effective variable affecting finger placement, we determine that the claimed ratios are obtainable by routine experimentation and that one skilled in the art would appreciate that shortening the length of the upper section relative to the intermediate section would predictably result in the pinky finger of certain golfer’s hands to be the only finger to rest on the upper section of the grip. In view of the analysis supra, the Examiner’s reliance on Furey for disclosing total grip lengths, in the rejection of claim 1, is unnecessary. Final Act. 4. Accordingly, we sustain the Examiner’s rejection of claim 1. Appeal 2016-008755 Application 14/285,701 9 Dependent claims 2, 3, and 9 Dependent claims 2, 3, and 9 recite, in relevant part, “wherein said upper end section has a length that is less than 50% of the length of the intermediate section” (claim 2) and “wherein said upper section has a length of approximately 42% of the length of said intermediate section” (claim 3 and, similarly, claim 9). Appeal Br. (Claims App.). Appellant argues that “Ferris discloses a grip wherein the upper section is 83% of the intermediate section, well over the claimed 50 %” recited in claim 2. Appeal Br. 17. Appellant also argues that claim 3 is “directed to specific features and dimensions of the grip that ultimately insure the proper placement of the fingers of a golfer’s upper hand.” Id. Appellant further relies on the arguments submitted with respect to independent claims 1 and 8 for the patentability of claim 9. For the reasons stated supra, we determine that the dimensions recited in claims 2, 3, and 9 relate to an art-recognized result-effective variable, and that the values of the ratio are obtainable by routine experimentation. Accordingly, we sustain the Examiner’s rejection of claims 2, 3, and 9. Independent claim 8 In addition to the limitations recited in independent claim 1, independent claim 8 requires “said upper end section having a relative length smaller than and less than 50% of the length of said intermediate section.” Appeal Br. (Claims App.). The Examiner relies on Ferris for disclosing this claim limitation. Final Act. 5 (“Claims 8–13 are rejected based on the disclosure set forth in the rejection of claims 1–7.”). Appeal 2016-008755 Application 14/285,701 10 Appellant argues that Ferris “fails to show an upper section and an intermediate section wherein the upper section is less than 50% of the intermediate section.” Appeal Br 18. However, Appellant’s argument does not apprise us of error in the Examiner’s reliance on Ferris for disclosing the general conditions of claim 8, and further, that the percentage of the length of upper section relative to the length of the intermediate section is a result- effective variable impacting finger placement on the grip, as set forth supra. Appellant’s argument also does not set forth sufficient evidence of criticality of the claimed ratio, which we determine is obtainable by routine experimentation. Accordingly, we sustain the Examiner’s rejection of claims 4–7. Dependent claim 10 Claim 10 recites, in relevant part, “said intermediate section characterized by having a size providing a gripping surface for the remaining fingers of the upper hand.” Appeal Br. 19 (Claims App.). We determine that this limitation is a statement of use dependent upon the size of a golfer’s hand, which is variable. In other words, we do not assign patentable weight to claim 10 because claim 10 fails to limit the structure of the unitary golf club grip recited in claim 8. Accordingly, we sustain the Examiner’s rejection of claim 10. Dependent claims 4–7 and 11–13 Appellant chose not to present arguments for the patentability of claims 4–7 and 11–13 apart from the arguments presented supra. Appeal Br. 17, 19–20. Accordingly, for essentially the same reasons as stated supra, we sustain the Examiner’s rejection of claims 4–7 and 11–13. Appeal 2016-008755 Application 14/285,701 11 DECISION The Examiner’s rejection of claims 1–13 stand under 35 U.S.C. § 103 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). See 37 C.F.R. § 1.136(a)(1)(iv). CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1–13 103 Ferris and Furey 1–13 Overall Outcome 1–13 AFFIRMED