Docket No. 2013-1552
September 30, 2014
Brief Summary: PTAB decision of non-obviousness vacated and remanded because it did “not consider the prior art in the context of the background knowledge”.
Summary: After an inter partes reexamination, Taylor appealed arguing the PTAB erred in not rejecting US 7344450 (owned by Dogleg Right Corp.) related to a method involving press fitting or latching weights to a golf club. The appeal relates to three dependent claims requiring “press fitting at least one of the plurality of weights to the shell” and “securing at least one of the plurality of weights to the shell by one or more latches”. During reexamination, the Examiner found these dependent claims would not have been obvious in view of the prior art and the Board agreed, in view of Dogleg’s proposed claim construction (the only construction offered, provided by Dogleg’s declarant “which…quoted Wikipedia”) and Taylor Made’s “later expanded” construction. The FC panel concluded “the Board was obligated to consider whether it would have been obvious to utilize press fitting even though the prior art did not disclose the use of press fitting for the specific purpose of the invention”. It also concluded that “press fitting as a means of attachment was common knowledge at the time of the invention” (Wikipedia being “itself indicative of common knowledge” (citing Vistan, FC 2013)). The opinion explained “the Supreme Court and this court require that, as part of the obviousness analysis, the prior art must be viewed in the context of what was generally known in the art at the time of the invention” (Randall Mfg., FC 2013 citing KSR (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”)) As the “Board’s obviousness analysis, which consists of a single sentence, does not consider the prior art in the context of the background knowledge”, the decision was vacated and remanded for reconsideration.