Wilson Sporting Goods Co.

Patent Trials and Appeals Board

Aug 30, 2021

2021001559 (P.T.A.B. Aug. 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.
15/677,794 08/15/2017 Sean S. Epling WTD-0195-US-NP 3173
90487 7590 08/30/2021
Amer Sports Americas
1 Prudential Plaza
130 East Randolph Street, Suite 600
Chicago, IL 60601
EXAMINER
DAVISON, LAURA L
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
08/30/2021 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 SEAN S. EPLING, TY B. GOODWIN, BRENT R. SLATER, and
MARK A. FRITZKE
____________________

Appeal 2021-001559
Application 15/677,794
Technology Center 3700
____________________

Before JENNIFER D. BAHR, PHILLIP J. KAUFFMAN, and
SEAN P. O’HANLON, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3–18, and 21–27. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Wilson Sporting
Goods Co. Appeal Br. 3.
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THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A ball bat extending along a longitudinal axis and
configured for testing under an accelerated break-in test, the bat
comprising:
a barrel portion including an outer surface, a proximal
region and a distal region, the barrel portion being formed of a
fiber composite material having a wall thickness of at least
0.060 inch, the fiber composite material including at least first,
second and third plies, the first ply including a first plurality of
fibers aligned adjacent to one another and a first resin, the
second ply including a second plurality of fibers aligned
adjacent to one another and a second resin, and the third ply
including a third plurality of fibers aligned adjacent to one
another and a third resin, the first ply including a first fiber
discontinuity, the second ply including a second fiber
discontinuity, and the third ply including a third fiber
discontinuity, the first, second and third fiber discontinuities
being cuts that are generally aligned, but staggered, with each
other such that one of the first, second and third fiber
discontinuities is within a longitudinal dimension of 0.2 inches
of one of the other of the first, second and third fiber
discontinuities creating an ABI fuse region of the barrel portion
and such that at least two of the first, second and third
discontinuities do not directly overlie each other, the ABI fuse
region forming a crack initiation location when the bat is
subjected to the accelerated break-in test, each of the first,
second and third discontinuities forming first, second and third
spaces between the first, second and third pluralities of fibers,
respectively, one or more of the first, second and third resins
completely filling the first, second and third spaces, wherein the
crack initiation location is configured to show evidence of
cracking on the outer surface of the bat when the bat is
subjected to the accelerated break-in test.
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EVIDENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Cruz US 7,749,115 B1 July 6, 2010
Slater US 9,211,460 B2 Dec. 15, 2015
Chuang US 9,744,416 B2 Aug. 29, 2017
Chauvin US 2019/0022483 A1 Jan. 24, 2019
REJECTIONS2
I. Claims 1, 3–13, 15–18, 21, 22, and 25–27 stand rejected under
35 U.S.C. § 103 as unpatentable over Chauvin and Slater.
II. Claim 14 stands rejected under 35 U.S.C. § 103 as unpatentable
over Chauvin, Slater, and Chuang.
III. Claims 23 and 24 stand rejected under 35 U.S.C. § 103 as
unpatentable over Chauvin, Slater, and Cruz.
OPINION
Rejection I – Obviousness Based on Chauvin and Slater
Claims 1, 3–9, 16–18, 21, 22, and 26
Appellant presents arguments for independent claim 1 and does not
assert any separate arguments for dependent claims 3–9, 16–18, 21, 22, and
26. Appeal Br. 7–14, 17–18. We select claim 1 as representative, and
claims 3–9, 16–18, 21, 22, and 26 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
The Examiner finds that Chauvin discloses a ball bat including a
barrel portion formed of fiber composite material having first, second, and

2 The Examiner withdrew a rejection of claims 1, 3–9, 21–24, and 26 under
35 U.S.C. § 112(b). See Ans. 3; Final Act. 2.
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third plies 250 with first, second, and third fiber discontinuities 260,
respectively. Final Act. 4 (citing Chauvin ¶¶ 20, 22, 23, 25, 39–43, Fig. 7).
The Examiner finds that Chauvin discloses
the first, second, and third fiber discontinuities being generally
aligned, but staggered, with each other (para. 0039, lines 5–16,
generally aligned in staggered or angled configuration shown in
Fig. 7), such that one of the first, second, and third fiber
discontinuities is within a longitudinal dimension of 0.2 inches
of the others of the first, second, and third fiber discontinuities
(as shown in Fig. 7, the staggered discontinuities partially
overlap along the longitudinal dimension of the bat and are
therefore inherently within a longitudinal dimension of 0.2
inches of each other . . . ) creating an ABI fuse region (260,
para. 0026, lines 7–20) of the barrel portion (110) and such that
the first, second and third discontinuities do not directly overlie
each other (since the discontinuities are staggered along the
oblique angle shown in Fig. 7 and only partially overlie each
other).
Id. at 4–5. The Examiner also finds that Chauvin discloses
[e]ach of the first, second, and third discontinuities (at
discontinuity/gap region 260) form first, and second and third
spaces (spaces in gap region 260, para. 0039, Fig. 7) between
the first, and second and third pluralities of fibers, respectively
(i.e., between fibers of each composite ply 250 on each side of
the gap region 260, as shown in Fig. 7), and one or more of the
first, second and third resins completely fill the first, second
and third spaces (para. 0041; para. 0043, lines 7–11, separation
plies and cap ply elements may be omitted).
Id. at 5.
Appellant argues that Chauvin does not disclose “first, second and
third fiber discontinuities being staggered such that at least two of the first,
second and third discontinuities do not directly overlie each other, as
required by claim 1.” Appeal Br. 14 (emphasis omitted). In particular,
Appellant asserts that “the gap region[s] 260 of ALL five plies 250 shown in
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Figure 7 [of Chauvin] overlie each other.” Id. at 12; see also id. (asserting
that, “[a]lthough the plies 250 are slightly staggered in Figure 7, the plies
still directly overlie each other”). This argument is unpersuasive.
The Examiner responds that “[a]t least two of Chauvin’s
discontinuities do not ‘directly’ overlie each other, because the
discontinuities do not exactly or totally overlie each other, but instead only
partially overlie each other as shown in Fig. 7 of Chauvin.” Ans. 4; see also
id. (explaining that “[t]he plain meaning of the word ‘directly’ is ‘exactly or
totally’ (American Heritage® Dictionary of the English Language, definition
3)”). Appellant replies that the Examiner “attempts to narrowly redefine the
word ‘directly’ to mean that the entire length of each discontinuity or gap
region must overlie the other discontinuities or gap regions. Such an
argument is contrary to the ordinary meaning of the terms.” Reply Br. 3; see
also id. (asserting that “the first definition given by the same dictionary cited
by the Examiner, the American Heritage® Dictionary, ALSO defines
directly to mean ‘in a direct line or manner’” and “[t]he Examiner ignored
this first definition”). However, that Appellant identifies alternative
definitions for the term “directly” does not identify error in the Examiner’s
proffered definition and construction for the claim terms. Appellant does
not identify, nor do we discern, anything in the Specification that would
compel a different reading of the claim language. Appellant’s Specification
does not use the terminology “directly overlies” anywhere, much less
provide a special definition for the terminology. As such, Appellant’s
argument does not apprise us of error in the Examiner’s construction of the
disputed limitation.
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Appellant argues that Chauvin fails to disclose “each of the first,
second and third discontinuities forming first, second and third spaces
between the first, second and third pluralities of fibers, respectively, wherein
one or more of the first, second and third resins completely fills the first,
second and third spaces.” Appeal Br. 17. Appellant asserts that Chauvin
does not disclose “any embodiment showing the gap regions NOT at least
partially filled with a separation ply 270 or a pair of cap ply elements 310,
750.” Reply Br. 5. Appellant asserts that “Figures 2 through 7 of Chauvin
ALL clearly include a separation ply 270,” and “Figures 3 through 7 all
clearly also include cap ply elements 310, 750.” Id. (italics omitted).
According to Appellant, Chauvin “does not state that a resin completely fills
the space or the gap regions in any of its illustrated embodiments.” Id. at 6.
This line of argument is unpersuasive for the reasons that follow.
Chauvin discloses that,
in some bats with gap regions that are too strong, delamination
may occur to a significant (or undesirable) degree before a
break in the gap region causes total failure of the wall. For
example, during the molding process for a composite bat with a
gap (such as the gap region 260), plies (such as the plies 250)
may move, narrowing or even closing the gap, which may delay
or disrupt the failure along the gap. According to embodiments
of the present technology, to prevent such movement and to
lower the energy needed to trigger the thickness failure along
the gap region 260 to a level at which the thickness failure
occurs before the plies 250 in the stacks 240 delaminate, a
separation ply 270 may be positioned in the gap region 260.
Chauvin ¶ 27. Chauvin also discloses that, “in various embodiments of the
present technology, more than one separation ply may be used, or separation
plies may be omitted. One or more cap ply elements (such as cap ply
elements 310) may be omitted.” Id. ¶ 43. According to the Examiner, “[t]he
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clear implication is that the separation ply is not necessary in all
embodiments (i.e., when the gap is not too strong or too narrow to reliably
provide the desired break).” Ans. 7. In this regard, Appellant does not
persuasively refute the Examiner’s position. Although Appellant correctly
observes that none of the embodiments illustrated in Figures 2–7 omits both
the separation ply and the cap ply elements (Reply Br. 5), Chauvin explicitly
discloses that these features may be omitted (Chauvin ¶ 43).
Appellant also argues that Chauvin teaches away (Reply Br. 5) and
the Examiner’s rejection relies upon impermissible hindsight (id. at 7).
These arguments are unpersuasive. A reference teaches away from a
claimed invention or a proposed modification if “a person of ordinary skill,
upon reading the reference, would be discouraged from following the path
set out in the reference, or would be led in a direction divergent from the
path that was taken by the applicant.” In re Kubin, 561 F.3d 1351, 1357
(Fed. Cir. 2009) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)).
Prior art does not teach away from claimed subject matter merely by
disclosing a different solution to a similar problem unless the prior art also
criticizes, discredits, or otherwise discourages the solution claimed. See In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, Appellant does not
point to any disclosure in Chauvin criticizing, discrediting, or otherwise
discouraging the combination of teachings proposed by the Examiner in the
rejection. Moreover, Appellant does not identify, nor do we discern, any
knowledge relied upon by the Examiner that was gleaned only from
Appellant’s disclosure and that was not otherwise within the level of
ordinary skill at the time of the invention. See In re McLaughlin, 443 F.2d
1392, 1395 (CCPA 1971) (“Any judgment on obviousness is in a sense
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necessarily a reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not include
knowledge gleaned only from [Appellant’s] disclosure, such a reconstruction
is proper.”).
For the above reasons, Appellant does not apprise us of error in the
Examiner’s determination that the subject matter of claim 1 would have been
obvious. Accordingly, we sustain the rejection of claim 1, and of claims
3–9, 16–18, 21, 22, and 26 falling therewith, under 35 U.S.C. § 103 as
unpatentable over Chauvin and Slater.
Claims 10–13, 15, 25, and 27
Appellant presents arguments for independent claim 10 and does not
assert any separate arguments for dependent claims 11–13, 15, 25, and 27.
Appeal Br. 15–19.3 We select claim 10 as representative, and claims 11–
13, 15, 25, and 27 stand or fall with claim 10.
The Examiner finds that Chauvin discloses a ball bat including, in
relevant part, “a stiffening element (cover layer 650 on inwardly facing skin
610; para. 0038, made of intermediate modulus carbon fiber composite

3 Appellant’s statements regarding claims 12, 13, 15, and 25 on pages 18–19
of the Appeal Brief merely recite claim limitations and baldly assert that the
references do not disclose, teach, or suggest these features. These vague
statements do not constitute separate arguments for patentability of the
dependent claims pursuant to 37 C.F.R. § 41.37(c)(1)(iv). See In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board had reasonably
interpreted 37 C.F.R. § 41.37(c)(1)(vii) (the predecessor to § 41.37(c)(1)(iv))
as requiring “more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art”).
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providing increased stiffness) positioned within the barrel portion (110) and
adjacent the ABI fuse region (260).” Final Act. 11.
Appellant argues that “cover layer 650 of FIG. 6 of Chauvin is not a
stiffening element positioned within the barrel portion, and the cover layer
650 of Chauvin is not positioned adjacent to the ABI fuse region but overlies
it.” Appeal Br. 16 (emphasis omitted). In particular, Appellant asserts that
“cover layer 650 is NOT WITHIN the barrel wall,” but, rather, “outer layer
650 along with the plies 250, the skin 620, the separation ply 270 and the
end caps 310 represent the structural components of the barrel wall 600.” Id.
Appellant asserts that “layer 650 represents one of the composite layers or
plies of the composite structure used to form the barrel portion.” Reply
Br. 8; see also id. at 9 (asserting that “layers 650 are NOT separate elements
formed apart from the barrel portion”). We are unpersuaded by this line of
argument because it is not commensurate with the scope of claim 10.
Claim 10 recites, in relevant part, “a stiffening element positioned
within the barrel portion and adjacent the ABI fuse region.” Appeal Br. 29
(Claims App.). Appellant does not point to, nor do we discern, any
limitation recited in claim 10 that requires the stiffening element be formed
apart from the barrel portion. See In re Self, 671 F.2d 1344, 1348 (CCPA
1982). That claim 10 recites the barrel portion and stiffening element
separately does not preclude the stiffening element from being part of a
composite structure that includes the barrel portion.
Chauvin discloses composite barrel wall 600 including inwardly
facing skin 610 and outwardly facing skin 620, one or both of which may
have discontinuity 640, and cover layer 650 may be positioned to cover
discontinuity 640. Chauvin ¶ 37. Chauvin also discloses that cover layers
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650 may be formed of intermediate modulus carbon fiber composite, which
generally provide more stiffness than standard carbon fiber materials. Id.
¶ 38. The Examiner takes the position that Chauvin’s “interior cover layer
(650) is positioned on the inwardly facing skin (610) of the barrel wall (600)
and is therefore clearly positioned within (i.e., inside the interior of) the
barrel portion as claimed.” Ans. 8; see also id. (explaining that “cover layer
(650) is an element that performs a stiffening function and is reasonably
considered to be a stiffening element as claimed”). In this regard,
Appellant’s arguments do not persuasively refute the Examiner’s position.
Although inner cover layer 650 may become a layer of the composite barrel
wall 600 construction once the barrel portion is formed, this does not
preclude cover layer 650 from being a stiffening element positioned within
the barrel portion, as recited in claim 10.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s determination that the subject matter of claim 10 would have
been obvious. Accordingly, we sustain the rejection of claim 10, and of
claims 11–13, 15, 25, and 27 falling therewith, under 35 U.S.C. § 103 as
unpatentable over Chauvin and Slater.

Rejections II and III – Obviousness Based on Chauvin, Slater,
and one of Chuang and Cruz
In contesting these rejections, Appellant relies on the same arguments
and reasoning we found unpersuasive in connection with claims 1 and 10,
from which claims 14, 23, and 24 depend. See Appeal Br. 19–23 (relying on
the alleged deficiencies in the combination of Chauvin and Slater, and
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asserting that each of Chuang and Cruz fails to remedy such deficiencies).4
Accordingly, for the same reasons discussed above with respect to
Rejection I, we also sustain the rejections of claims 14, 23, and 24 under
35 U.S.C. § 103.

CONCLUSION
The Examiner’s rejection of claims 1, 3–18, and 21–27 under
35 U.S.C. § 103 is AFFIRMED.

DECISION SUMMARY
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–13, 15–
18, 21, 22,
25–27
103 Chauvin, Slater 1, 3–13,
15–18, 21,
22, 25–27

14 103 Chauvin, Slater,
Chuang
14
23, 24 103 Chauvin, Slater,
Cruz
23, 24
Overall
Outcome
1, 3–18,
21–27

4 Appellant’s vague statements that the additional limitations of claims 14,
23, and 24 are not disclosed, taught, or suggested by the combination
(Appeal Br. 20, 23) do not constitute substantive arguments for patentability
of these claims. Cf. Lovin, 652 F.3d at 1357.
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TIME PERIOD FOR RESPONSE
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