Ex parte O'Sullivan

• Decision Date: 29 September 2017
• Docket Number: Appeal 2015-007350,Application 13/286,129
• Parties: Ex parte JAMES PAUL O'SULLIVAN, SR. Technology Center 3700
• Court: Patent Trial and Appeal Board

Ex parte JAMES PAUL O'SULLIVAN, SR. Technology Center 3700

Appeal 2015-007350

Application 13/286, 129

United States Patent and Trademark Office, Patent Trial and Appeal Board

September 29, 2017

FILING DATE: 10/31/2011

Before JOHN C. KERENS, STEFAN STAICOVICI, and LYNNE H. BROWNE Administrative Patent Judges.

DECISION ON APPEAL

BROWNE, Administrative Patent Judge.

STATEMENT OF THE CASE

James Paul O'Sullivan, Sr. (Appellant) appeals under 35 U.S.C § 134 from the rejection of claim 33. We have jurisdiction under 35 U.S.C. § 6(b).

We reverse and enter new grounds of rejection pursuant to our authority under 37 C.F.R. § 41.50(b).

CLAIMED SUBJECT MATTER

Sole claim 33 is reproduced below with emphasis added:

33. A golf tee comprising a long lasting combination of a golf tee and a force absorbing member in the form of a washer;

said golf tee comprising a disc-shaped head and a flat bottom surface including a golf support means exclusively within said head and a flat bottom surface substantially parallel to the top surface of said head, said golf tee further comprising a shaft extending below said head and having a constant diameter which is smaller than that of said head, said shaft being integrally attached to said head and terminating in a ground inserting end;

said washer comprising a resilient member disposed on said shaft and located in close proximity to said bottom surface of said head, said washer having an outer diameter greater than its thickness and the thickness of said head but less than the diameter of a golf ball when the same is compressed during the drive off the tee, thereby protecting said head from the impact of a golf club striking a ball on said head and having a resistance to force which is sufficient to prevent the face of a golf club striking a ball on said head from harming said head.

PRIOR ART

                                Strong
                              
                                US 5, 672, 122
                              
                                Sept. 30, 1997
                              
                                Ayoub
                              
                                US 5, 759, 119
                              
                                June 2, 1998
                              
                                Blais
                              
                                US 2009/0088274 A1
                              
                                Apr. 2, 2009
                              
                

REJECTIONS

I. Claim 33 stands rejected under 35 U.S.C. § 102(b) as anticipated by, or alternatively under 35 U.S.C. § 103(a) as unpatentable over Strong.^[1]

II. Claim 33 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Strong, Ayoub, and Blais.

DISCUSSION

New Grounds of Rejection Rejection under 35U.S.C.$112, first paragraph

Claim 33 is rejected under 35U.S.C.§112, first paragraph as failing to comply with the written description requirement.

"[T]he test for [written description] sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). "[T]he purpose of the written description requirement is to 'ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification.'" Id. at 1353-54 (quoting Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345 (Fed. Cir. 2000)).

The Specification describes the outer diameter of the washer in paragraph 36 stating:

The member surrounding the shaft is positioned below the ball support end and has an outer diameter less than that of a golf ball but large enough and located so as to protect the support end from impact from a golf club strike after a golf ball has been struck from the tee.

Spec. ¶ 36 (emphasis added). This description, which refers to a golf ball rather than a compressed golfball, is repeated in paragraphs 13, 14, 27, 34, and 35. None of these paragraphs describe the outside diameter of the washer as being less than the compressed diameter of the golfball during the drive off the tee, as called for by claim 33. Although a ball diameter is shown in the Figure, as there is no indication that ball 20 is compressed, it is not clear whether the diameter of washer 16 is less than the diameter of a compressed golfball. Moreover, there is no indication that the Figure is drawn to scale or is in fact a particularly accurate depiction of the claimed invention. For example, it would appear from the drawing that the hole in the washer is offset from the center of the washer because the distance between the wall of the opening in the washer through which the tee passes and the outer diameter of the washer is greater on the left side of the illustration than on the right side. However, one skilled in the art would not have understood Appellant to have possession of a washer with hole that is offset from the center of the washer from the drawing alone. Similarly, given the nature of the drawing (which also appears to show the golfball sitting off-center on the tee) one skilled in the art would not have reasonably concluded that Appellant had possession of a washer having an outer diameter smaller than the compressed diameter of a golfball during the drive off the tee from the Figure either. Although, drawings may be used to provide support under § 112, first paragraph (Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991)), this case is more similar to In re Olson, 212 F.2d 590, 591-92 (CCPA 1954) (affirming a rejection based on improperly inserting the limitation "equally spaced") than it is to In re Heinle, 342 F.2d 1001, 1007 (CCPA 1965) (reversing a rejection (of claims 3 and 6) based on inserting a limitation that one part was "approximately one-fourth" the size of another).

Accordingly, we find that the original Specification including the original Drawing does not provide support for the invention as now claimed.

Rejection under 35U.S.C. § 112, second paragraph

Claim 33 is rejected under 35U.S.C.§112, second paragraph as failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention.

It is well settled that "even if a claim term's definition can be reduced to words, the claim is still indefinite if a person of ordinary skill in the art cannot translate the definition into meaningfully precise claim scope." Halliburton Energy Services, Inc. v. M-ILLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008). While patentees are allowed to claim their inventions broadly, they must do so in a way that distinctly identifies the boundaries of their claims. Id. at 1253. Claim 33 defines the outer diameter of the washer as "less than the diameter of a golf ball when the same is compressed during the drive off the tee." Appeal Br. 3 (Claims App.). This definition does not distinctly identify the boundaries of claim 33 because it is unclear what the diameter of a golf ball is when it is compressed during the drive off the tee.

Although the Specification states that "an approximate compression point where a professional golfer would be expected to compress a ball during a drive off the tee" is shown by dotted line 22 in the Figure (Spec. ¶ 35), Appellant does not identify, nor do we discern, where the Specification indicates what the compressed diameter of a golf ball during the drive off the tee is or how it can be determined. Furthermore, the amount of compression which a golf ball undergoes during drive off the tee depends on many factors such as...