Ex Parte Campbell et al

Patent Trial and Appeal Board

Feb 25, 2013

10700043 (P.T.A.B. Feb. 25, 2013)

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.
10/700,043 11/04/2003 Derek Campbell 005127.00179 3120
22909 7590 02/25/2013
BANNER & WITCOFF, LTD.
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
MAI, TRI M
ART UNIT PAPER NUMBER
3781
MAIL DATE DELIVERY MODE
02/25/2013 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 DEREK CAMPBELL,
CHRISTOPHER H. PEARSON, and RANDY WOLFE
____________

Appeal 2010-012250
Application 10/700,043
Technology Center 3700
____________

Before JOHN C. KERINS, JAMES P. CALVE, and SCOTT A. DANIELS,
Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejections of claims
1, 2, 4-38, and 40-55. App. Br. 3. Claims 3, 39, and 61-67 are cancelled
and claims 56-60 and 68-76 are withdrawn. Id. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2010-012250
Application 10/700,043

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CLAIMED SUBJECT MATTER
Claims 1, 20, 38, and 48 are independent. Claim 1 is reproduced
below:
1. A golf bag comprising:
a substantially hollow body with a first end for receiving
golf equipment and an opposite second end; and
a base secured to the second end of the body, the base
formed of a single piece element that extends substantially
around the second end of the body and forms a support surface
for contacting a ground, and the base defining a flexion line, a
first portion of the base being pivotable with respect to a second
portion of the base about the flexion line.

REJECTIONS
Claims 1, 4-11, 15, 16, 20-28, 33, 34, and 36 are rejected under
35 U.S.C. § 102(e) as being anticipated by Cheng ‘762 (6,938,762 B2; iss.
Sep. 6, 2005).
Claims 1, 6, 8-11, 15, 16, 18, 20-25, 33, and 34 are rejected under
35 U.S.C. § 102(b) as being anticipated by Cheng ‘362 (US 6,386,362 B1;
iss. May 14, 2002).
Claims 1, 4-11, 15, 16, 18, 20-28, 33, 34, and 36 are rejected under
35 U.S.C. § 102(e) as being anticipated by Te-Pin (US 6,568,527 B1; iss.
May 27, 2003).
Claims 2, 29, 30, 38, 40-43, 46 and 47 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over any one of Cheng ‘762, Cheng ‘362, or Te-Pin
in view of Kang (US 2004/0200746 A1; pub. Oct. 14, 2004).

Appeal 2010-012250
Application 10/700,043

3
Claims 12-14, 31, 32, 35-37, 44, and 45 are rejected under 35 U.S.C.
§ 103 (a) as unpatentable over any one of Cheng ‘762, Cheng ‘362, or Te-
Pin in view of Wen-Chien (US 6,298,988 B1; iss. Oct. 9, 2001).
Claims 17-19 are rejected under 35 U.S.C. § 103(a) as unpatentable
over any one of Cheng ‘762, Cheng ‘362, or Te-Pin in view of Yoshida (US
6,736,264 B2; iss. May 18, 2004).
Claims 48-55 are rejected under 35 U.S.C. § 103(a) as unpatentable
over any one of Cheng ‘762, Cheng ‘362, or Te-Pin in view of Kang and
Wen Chien.
ANALYSIS
Claims 1, 4-11, 15, 16, 20-28, 33, 34, and 36 anticipated by Cheng ‘762
The Examiner found that Cheng ‘762 discloses a golf bag with a base
20 including a one-piece element that forms a support surface and defines a
flexion line 224 defining two pivotable portions. Ans. 4. The Examiner also
found that the Declaration under 37 C.F.R. § 1.131 filed on March 19, 2007
(“Declaration”) fails to show a bottom made from one piece but instead
appears to show a bottom made from a plurality of pieces or does not show
enough detail to ascertain whether the bottom is made of one piece or
multiple pieces. Ans. 9-10.
Appellants argue that the Declaration establishes a reduction to
practice prior to May 28, 2003, the filing date of Cheng ‘762. App. Br. 6.
Appellants also argue that Exhibits A and C-G illustrate a base formed of a
single piece element as recited in claims 1 and 20 and the phylon shell in
Exhibit C is the base. We agree. The Declaration states that the reduction to
practice of the claimed golf bag and case is established by Exhibits A-G,
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Application 10/700,043

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which include dates (redacted) that are prior to May 28, 2003, the filing date
of Cheng ‘762. Decl., paras. 5-9. Exhibit C discloses a base with a phylon
shell formed of a single piece element with a flexion line (indentation)
formed therein. Exhibit A discloses a pivotable base 18 extending
substantially around a golf bag with a flexion line 20 that allows a first
portion 18A of the base to pivot with respect to a second portion 18B. Decl.
para. 6). The Declaration avers that the base includes a one-piece element.
Decl., para. 6. Because we find that the Declaration adequately establishes
that the subject matter of claims 1 and 20 was reduced to practice prior to the
effective date of the Cheng ‘762 patent, we cannot sustain the rejection of
claims 1 and 20 or claims 4-11, 15, 16, 21-28, 33, 34, and 36, which depend
therefrom as anticipated by Cheng ‘762.
Claims 1, 6, 8-11, 15, 16, 18, 20-25, 33, and 34 anticipated by Cheng ‘362
The Examiner found that Cheng ‘362 discloses a golf bag with a base
with a one-piece element 2 that extends around the body and forms a support
surface defining a flexion line 42 defining two pivotable portions. Ans. 5.
The Examiner found that Cheng ‘362 discloses a one piece base with a pivot
section 40 molded together with the base. Ans. 10-11 (citing claim 1 and
col. 3, ll. 11-20 of Cheng ‘362). The Examiner interpreted the limitation
“formed of a single piece” as not excluding a base made from a plurality of
elements. Ans. 10-11. The Examiner also found that Appellants disclose a
base comprising a plurality of elements so that a “single piece element” must
be interpreted as a one-piece item comprising plural elements. Ans. 11-12.
Appellants argue that Cheng ‘362 does not disclose a base formed of a
single piece element extending substantially around the second end of the
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Application 10/700,043

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body. App. Br. 7. Appellants argue that Cheng ‘362 discloses a multi-part
base that includes a pivot section 40 that is formed of a flexible material and
connected between the front and rear sections, which Cheng describes as
halves of the base seat. App. Br. 7; Reply Br. 2-3. Appellants also argue
that although Appellants’ Specification recites wear elements that may be
affixed to the base, the base is formed of a single piece element. Reply Br. 3
(citing Spec., paras. [01], [05], and [29]; original claims). We agree.
The Examiner’s interpretation of the limitation “the base formed of a
single piece element” to mean that the base can be made from a plurality of
elements is inconsistent with the plain language of claims 1 and 20. The
Examiner’s interpretation effectively reads the term “single piece” out of the
claims. Appellants disclose a base formed of a single piece element 50 that
extends substantially around the second end of the golf bag body and may be
a polymer foam shaped through a conventional casting process. See Spec. 1,
para. [01]; Spec. 9-11, paras. [37-41]; figs. 2B, 5, 6, 8, 11A. Cheng ‘362
discloses a base seat 2 formed of a front section 20, a rear section 40, and a
pivot section 40 that is connected between the front and rear sections 20, 30.
Col. 2, ll. 65-67; figs. 1-5. Cheng ‘362 discloses that the pivot section 40 is
made from a flexible plastic or rubber material by injection molding.1 Col.
3, ll. 11-20. Thus, the base 2 of Cheng ‘362 is not “formed of a single piece
element” but instead is formed of a plurality of parts that collectively extend
substantially around the second end of the golf bag body. We cannot sustain
the rejection of claims 1, 6, 8-11, 15, 16, 18, 20-25, 33, and 34.

1 The Examiner’s position that pivot section 40 is molded together with the
base is not supported by a preponderance of the evidence. Cheng ‘362 does
not appear to disclose pivot section 40 is joined to front and rear sections.
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Application 10/700,043

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Claims 1, 4-11, 15, 16, 18, 20-28, 33, 34, and 36 anticipated by Te-Pin
The Examiner found that Te-Pin discloses a golf bag with a base 1
comprising a front section 11, a rear section 20, and a flexible section 50
joined between the two sections to form a “single piece” as claimed. Ans. 5-
6, 12. The Examiner interpreted the limitation “formed of a single piece” to
not exclude the base being made from a plurality of elements. Ans. 6.
Appellants argue that Te-Pin describes a base having multiple parts
such as a front section, rear section, first and second flexible section, and
connecting member, not a base formed of a single piece element. App. Br.
8-9; Reply Br. 3-4. We agree. Te-Pin discloses a base bracket 1 with a front
section 10, a rear section 20, a first flexible section 30 on the front section
10, a second flexible member 40 on the rear section 20, and a connection
member 50 connected between the first and second flexible sections 30, 40.
Col. 2, ll. 57-61; figs. 1, 2, 4, 5. The Examiner’s interpretation of the
limitation “the base formed of a single piece element” to mean that the base
can be made of a plurality of elements is inconsistent with the plain language
of claims 1 and 20 for the reasons discussed supra for the rejection of claims
1 and 20 based on Cheng ‘362. We cannot sustain the rejection of claims 1
and 20 or their dependent claims 4-11, 15, 16, 18, 21-28, 33, 34, and 36.
Claims 2, 29, 30, 38, 40-43, 46, and 47 unpatentable over Cheng ‘762,
Cheng ‘362, or Te-Pin in view of Kang
The Examiner found that Cheng ‘762, Cheng ‘362, and Te-pin each
disclose all of the claimed limitations except an ethylvinylacetate foam base.
Ans. 6. The Examiner found that Kang discloses an ethylvinylacetate foam
base and determined that it would have been obvious to make the bases of
Cheng ‘762, Cheng ‘362, and Te-pin of such a foam. Ans. 6.
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Appellants argue that Cheng ‘762, Cheng ‘362, and Te-pin do not
teach a base formed of a single piece element as called for in claims 1, 20,
and 38 and Kang fails to cure this deficiency. App. Br. 9-10. We agree.
We cannot sustain the rejection of claims 2, 29, 30, 40-43, 46, and 47.
Claims 12-14, 31, 32, 35-37, 44, and 45 unpatentable over Cheng ‘762,
Cheng ‘362, or Te-Pin in view Wen-Chien
The Examiner found that Cheng ‘762, Cheng ‘362, and Te-pin each
disclose all claimed elements except wear elements. Ans. 6. The Examiner
found that Wen-Chien discloses wear elements and determined that it would
have been obvious to provide such wear elements on Cheng ‘762, Cheng
‘362, and Te-pin. Ans. 6-7, 13. Appellants argue that Wen-Chien does not
cure the deficiencies of Cheng ‘762, Cheng ‘362, and Te-pin as to claims 1,
20, and 38. App. Br. 10. We agree. We cannot sustain the rejection of
claims 12-14, 31, 32, 35-37, 44, and 45.
Claims 17-19 unpatentable over Cheng ‘762, Cheng ‘362, or Te-Pin in view
of Yoshida
The Examiner found that Cheng ‘762, Cheng ‘362, and Te-pin teach a
base as claimed except a handle. Ans. 7. The Examiner found that Yoshida
teaches a golf bag handle and determined that it would have been obvious to
provide such a handle on Cheng ‘762, Cheng ‘362, and Te-pin. Ans. 7, 13.
Appellants argue that Yoshida does not cure the deficiencies of Cheng ‘762,
Cheng ‘362, and Te-pin as to claim 1. App. Br. 10. We agree. We cannot
sustain the rejection of claims 17-19.

Appeal 2010-012250
Application 10/700,043

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Claims 48-55 unpatentable over Cheng ‘762, Cheng ‘362, or Te-Pin in view
of Kang and Wen Chien
Claim 48 recites a golf bag comprising a substantially hollow body
and a base having a polymer foam material element and first and second
wear elements of different configurations. The Examiner found that Cheng
‘762, Cheng ‘362, and Te-pin disclose a base but do not teach a base made
from a ethylvinylacetate foam with wear elements. Ans. 7. The Examiner
found that Kang discloses a base made from ethylvinylacetate foam, and
Wen-Chien discloses wear elements 19, 20 as shown in Figure 3. Ans. 7-8.
Appellants argue that none of the references discloses first and second
wear elements with different configurations as recited in claim 48. App. Br.
11; Reply Br. 5. We find that Wen-Chien discloses wear elements 19, 20
having a different configuration. See Col. 2, ll. 1-4; fig. 3. Wen-Chien also
discloses a skidproof surface 25 with a third configuration. Col. 2, ll. 5-7;
fig. 3. We sustain the rejection of claims 48-55.
DECISION
We REVERSE the rejection of claims 1, 4-11, 15, 16, 20-28, 33, 34,
and 36 as anticipated by Cheng ‘762.
We REVERSE the rejection of claims 1, 6, 8-11, 15, 16, 18, 20-25,
33, and 34 as anticipated by Cheng ‘362.
We REVERSE the rejection of claims 1, 4-11, 15, 16, 18, 20-28, 33,
34, and 36 as anticipated by Te-Pin.
We REVERSE the rejection of claims 2, 29, 30, 38, 40-43, 46 and 47
as unpatentable over Cheng ‘762, Cheng ‘362, or Te-Pin and Kang.

Appeal 2010-012250
Application 10/700,043

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We REVERSE the rejection of claims 12-14, 31, 32, 35-37, 44, and
45 as unpatentable over Cheng ‘762, Cheng ‘362, or Te-Pin and Wen-Chien.
We REVERSE the rejection of claims 17-19 as unpatentable over
Cheng ‘762, Cheng ‘362, or Te-Pin and Yoshida.
We AFFIRM the rejection of claims 48-55 as unpatentable over
Cheng ‘762, Cheng ‘362, or Te-Pin in view of Kang and Wen Chien.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED-IN-PART

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