Huang, In re, 96-1126

• Decision Date: 12 November 1996
• Docket Number: No. 96-1126,96-1126
• Citation: 100 F.3d 135,40 USPQ2d 1685
• Parties: In re Ben HUANG.
• Court: U.S. Court of Appeals — Federal Circuit

Page 135

100 F.3d 135

40 U.S.P.Q.2d 1685

In re Ben HUANG.

No. 96-1126.

United States Court of Appeals Federal Circuit.

Nov. 12, 1996.

Francis A. Utecht, Fulwider, Patton, Lee & Utecht, of Long Beach, California, argued for appellant.

Kenneth R. Corsello, Associate Solicitor, U.S. Patent and Trademark Office, of Arlington, Virginia, argued for the Commissioner. With him on the brief were Nancy J. Linck, Solicitor, Albin F. Drost, Deputy Solicitor, and Scott A. Chambers, Associate Solicitor.

Before NEWMAN, PLAGER, and CLEVENGER, Circuit Judges.

Opinion for the court filed by Circuit Judge CLEVENGER. Circuit Judge NEWMAN dissents without separate opinion.

CLEVENGER, Circuit Judge.

Ben Huang (Huang) seeks review of the decision of the Board of Patent Appeals and Interferences (Board), Ex parte Ben Huang, Appeal No. 94-3535 (September 29, 1995), which held that all pending claims in Huang's application are obvious under 35 U.S.C. § 103 (1994), and, therefore, unpatentable. We affirm.

I

Huang's claimed invention is a shock absorbing grip, for tennis racquets or the like, consisting of a strip that is wrapped around the racquet handle. As shown in Fig. 8 of Huang's application (reproduced below), the strip is comprised of two layers: a textile layer 12 and a polyurethane layer 16. The user's hand grips the polyurethane layer 16 which is bonded to the textile layer 12, the bottom of which adheres to the racquet handle. The polyurethane layer 16 contains pores 22 which extend generally perpendicular to the longitudinal axis of the handle.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Huang admits that the prior art employed these same two layers in polyurethane/textile ratios ranging from a low of 0.111 to a high of 0.142. ¹ Huang explains that the key aspect of his invention lies in his discovery that greatly improved shock absorbing qualities may be obtained by increasing, above and beyond what existed in the prior art, the thickness of the polyurethane layer relative to the textile layer. Accordingly, claim 24 recites:

24. The combination of a handle for an impact imparting device and a shock absorbing grip applied over such handle to conform to the external configuration of such handle, comprising:

a strip which is spirally wrapped about said handle, the strip consisting of

an open-pored textile layer having an inner surface adhered to and abutting said handle and

a smooth closed pore polyurethane layer having its inner surface bonded to the outer surface of the textile layer remote from said handle,

with the pores of such polyurethane layer extending generally normal to the longitudinal axis of said handle,

the thickness ratio of the transverse central region of the polyurethane layer/textile layer being equal to or larger than approximately 0.18, and

with the textile layer providing strength for the polyurethane layer while the polyurethane layer both absorbs shocks and provides tackiness so as to inhibit slippage of a user's hand relative to said handle.

Claim 25 depends from claim 24 and requires a thickness ratio about equal to or greater than one. ²

The examiner rejected these claims as obvious in view of three references: Russell, Onions, and Lau. On appeal, the Board determined that the examiner had impermissibly used Huang's application "as a template to pick and choose among isolated disclosures" to demonstrate that the claims were obvious. Nevertheless, the Board rejected the claims as being obvious in view of the admitted prior art and Lau.

The Board explained that the claims differed from the admitted prior art in that the claims recited thickness ratios for the polyurethane layer relative to the textile layer. The Board further explained that Lau teaches the use of a polyurethane layer in conjunction with a textile layer wherein the pores of the polyurethane layer absorb shock by compressing. Given Lau's teachings, the Board determined that the thickness of the polyurethane layer is a variable, the optimization of which is obvious in the absence of unexpected results. Because the application contained no evidence of unexpected results, the Board concluded that the prior art created a prima facie case of obviousness.

The Board further decided that Huang failed to prove that evidence of commercial success overcame the prima facie case. Huang's only evidence on this point consisted of a personal affidavit in which Huang asserted that: (1) Wilson Sporting Goods (Wilson) had purchased, over a five month period, approximately 750,000 grips for use on newly produced racquets; (2) Wilson had ordered approximately 200,000 grips as resale replacements for existing tennis racquets; (3) Huang's company had sold about 100,000 grips to parties other than Wilson; (4) since Huang began selling the claimed grip, sales of its prior grips had decreased by about 50 percent; (5) Huang's company had sold about 100,000 grips for use on baseball bat handles; and (6) in Huang's opinion, the commercial success of the grips derived from the claimed invention. The Board was not persuaded by these assertions because they were neither supported by an evidentiary showing nor placed in a meaningful context, e.g., market share or profitability. As a result, the Board rejected the pending claims.

Huang then requested that the Board reconsider its decision. Huang explained that he did not merely increase the thickness of the polyurethane layer; rather, he increased the thickness of the polyurethane layer while reducing the thickness of the textile layer so as to maintain the total thickness of the prior art grips. The Board rejected this argument because the claim contained no such limitation. Therefore, the Board declined to make any changes to its original decision.

Huang now appeals the Board's decisions, which we have jurisdiction to review pursuant to 28 U.S.C. § 1295(a)(4) (1994).

II

A claimed invention is unpatentable if the differences between it and the prior art "are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art." 35 U.S.C. § 103 (1994). The ultimate determination as to whether or not an invention is obvious is a legal conclusion based on underlying factual inquiries including: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 693-94, 15 L.Ed.2d 545, 148 USPQ 459, 467 (1966). We review the ultimate legal determination of obviousness without deference to the Board, while we review the underlying factual inquiries for clear error. See Miles Labs., Inc. v. Shandon Inc., 997 F.2d 870, 877, 27 USPQ2d 1123, 1128 (Fed.Cir.1993).

In applying this four part analysis, we first note that neither party disputes the scope and content of the prior art. Huang admits that the prior art grips have conventionally used a layer of polyurethane backed with a layer of textile material. ³ Huang also acknowledges that the Lau reference is relevant prior art because it discloses shock absorbing grips for sports equipment. Similarly, neither party disputes the level of skill in the art.

We thus turn to the third inquiry of the obviousness analysis: the differences between the prior art and the claimed invention. On appeal, Huang again asserts that his invention lies not only in the discovery that improved shock absorption qualities could be obtained by increasing the thickness of the polyurethane layer, but also in drastically reducing the thickness of the textile layer so as to maintain the overall thickness of the prior art grip. While this may accurately describe Huang's grips, our obviousness analysis focuses on the invention as claimed. Claims 24 and 25 contain no limitation relating to a decrease in the textile layer so as to maintain an overall thickness of the grip. Instead, the claims merely require polyurethane/textile thickness ratios in excess of those employed in the prior art grips.

The admitted prior art, which employs a strip consisting of a polyurethane layer on top of a textile layer, teaches almost all aspects of Huang's claimed invention. In his specification, Huang states that the prior art grips used the polyurethane layer simply for tackiness. Huang contends that his inventive contribution lies in his discovery that the polyurethane layer, with closed pores aligned normal to the longitudinal axis of the racquet, also absorbs shock.

This discovery does not constitute a patentable contribution to the art, however, because Lau also teaches the use of a polyurethane layer to absorb shock. Lau discloses a grip that contains three layers. One layer is made of textile material; and a second adjacent layer is made of closed pore polyurethane, with the pores oriented normal to the longitudinal axis of the equipment. ⁴ Lau teaches that "[t]he impact absorbing capability of the composite laminate derives [in part] from ... the compressible nature of each of the three layers individually." (Emphasis added.)...