SUMITOMO RUBBER INDUSTRIES, LTD.

Patent Trials and Appeals BoardJun 30, 2021

2020006460 (P.T.A.B. Jun. 30, 2021)

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. 16/163,901 10/18/2018 Takahiro NORIMURA 019400-SR0005 1050 78198 7590 06/30/2021 Studebaker & Brackett PC 8255 Greensboro Drive Suite 300 Tysons, VA 22102 EXAMINER PIERCE, WILLIAM M ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 06/30/2021 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): info@sbpatentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TAKAHIRO NORIMURA Appeal 2020-006460 Application 16/163,901 Technology Center 3700 Before BRETT C. MARTIN, MICHELLE R. OSINSKI, and JILL D. HILL, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, 4, and 6–15. Claim 16 was withdrawn during prosecution. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Sumitomo Rubber Industries, Ltd. Appeal Br. 2. Appeal 2020-006460 Application 16/163,901 2 CLAIMED SUBJECT MATTER The claims are directed to a golf club head. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A golf club head comprising: a face part; a sole part; and a hosel part, wherein: the face part includes a hitting surface and a face back surface; a plurality of score lines are formed on the hitting surface; one or two or more back grooves are formed on the face back surface; with reference to a face center, the face part is divided into four regions: a toe upper region; a toe lower region; a heel upper region; and a heel lower region; back-groove projected areas of at least two regions of the four regions are different from each other; and the back-groove projected area in a region located on a lower side relative to the face center is greater than the back- groove projected area in a region located on an upper side relative to the face center. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Lin US 6,299,548 B1 Oct. 9, 2001 Nishimura US 6,322,459 B1 Nov. 27, 2001 Cole US 7,794,335 B1 Sept. 14, 2010 REJECTIONS Claims 1, 2, 4, and 6–13 stand rejected under 35 U.S.C. § 103 as being unpatentable over Lin and Cole. Final Act. 2. Appeal 2020-006460 Application 16/163,901 3 Claims 14 and 15 stand rejected under 35 U.S.C. § 103 as being unpatentable over Lin, Cole, and Nishimura. Final Act. 4. OPINION Obviousness The Examiner finds that Lin teaches all of the features of claim 1 except for the differential configuration of the back grooves. Final Act. 2–4. The Examiner then finds that Cole “teaches that the ‘distances between different trenches…can be varied based on different criteria’” and that “narrower, shallow trenches [can] be placed in the center where strength and integrity is needed.” Final Act. 4 (citing Cole col. 24, l. 33; col. 15, l. 36). The Examiner then states “to have a more concentrated groove or trenches in Lin…on the lower side would have been obvious in order to remove more material and shift the weight upward and make the upper regions stronger as a matter of design choice.” Id. First, we agree with Appellant that “when the claimed structure performs differently from the prior art a finding of obvious design choice is precluded.” Appeal Br. 7. As Appellant correctly states, “neither cited Lin nor Cole disclose[s] the recited feature of ‘the back-groove projected area in a region located on a lower side relative to the face center is greater than the back-groove projected area in a region located on an upper side relative to the face center.’” Appeal Br. 10. The Examiner admits that Lin fails to teach this and all that Cole teaches is that the grooves may be smaller at a center area of the club, but that area above and below the center has back grooves that are distributed equally and not differentially in a lower region as claimed. The Examiner has not stated why one of skill in the art would Appeal 2020-006460 Application 16/163,901 4 take Cole’s teaching of strengthening the center region and apply it, for example, to the entire upper region as would be required by the claims. The Examiner cannot simply use “design choice” to move the features to a lower region when none of the prior art suggests that having a greater area of back grooves in the lower region is a desired structure. In Appellant’s club head, having more or larger grooves in the lower region affects the spring in the lower face of the club resulting in better results when striking a ball located on the ground rather than in the center for striking a ball off of a tee. The cited prior art does not recognize this advantage or any advantage related to moving the back grooves to a lower region and as such, the Examiner is using improper hindsight in claiming that such a modification is merely a design choice. CONCLUSION The Examiner’s rejections are reversed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4, 6–13 103 Lin, Cole 1, 2, 4, 6–13 14, 15 103 Lin, Cole, Nishimura 14, 15 Overall Outcome 1, 2, 4, 6–15 REVERSED