May 8, 2010
On the Mat
David T. Pelz tried to patent a golf training mat (11/066,554). Non-final rejection purely on anticipation prompted Pelz to amend the preamble. The language in the claims: "consisting essentially of," and "include," speak volumes to a deft prosecutor of the claims being in the weeds. The patent Board putted along with the examiner. Pelz appealed to the CAFC, who held the flag.
In Re David T. Pelz (CAFC 2009-1551) non-precedential
Pelz's patent application is directed to a golf training mat for practicing shots associated with a golfer's short game, which include wedge, sand, and chip swings. The training mat has a ball striking surface with printed markings associated with foot and ball positioning for three different short swings.
5,645,494 ("Dionne") was the cited prior art.
Dionne discloses an instructional golf mat for improving a wide variety of golf swings. The top surface of Dionne's mat is covered by horizontal and vertical lines, which form a grid pattern of squares, and which can be used to adjust ball placement and foot positions depending on the type of club and shot being practiced. It also includes horizontal and vertical swing path lines, which enable the golfer to gauge the direction of the club's swing. The mat also includes adjustable tee locations along the swing path lines. The horizontal and vertical reference lines of Dionne provide position markings, including front foot markings, rear foot markings, and ball markings. These markings include the first, second, and third positions covered by the claims of Pelz's application.
The chip shot -
In response to the rejection, Pelz amended the preamble of claim 1 to read: "A golf training mat for practicing short game shots including a wedge swing, a sand swing and a chip swing, consisting essentially of," whereas it formerly read: "A golf training mat for practicing short game shots comprising."
The club -
Claim 1: A golf training mat for practicing short game shots including a wedge swing, a sand swing and a chip swing, consisting essentially of:
a ball striking surface including markings associated with foot and ball positioning:
a first position marking...;
a second position marking...;
a third position marking.
The sand trap speaks -
The Board found that the "consisting essentially of" language refers to the ball striking surface, and that the transition word "including" refers to the markings. Id. As such, the Board concluded that "the recitation in the claim that the markings include first, second, and third foot and ball positions does not foreclose the inclusion of additional markings." Id. The Board found that Dionne discloses a golf training mat having all of the limitations of representative claim 1. Id. at 5.
The rough incarnate -
Claims are given their "broadest reasonable interpretation" during prosecution and this court reviews the Board's interpretation of disputed claim language to determine whether it is "reasonable" in light of the specification. See In re Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997). Anticipation is a question of fact that is reviewed for substantial evidence. In re Gartside, 203 F.3d 1305, 1315 (Fed. Cir. 2000). To anticipate a claim, a single prior art reference must expressly or inherently disclose each claim limitation. Celeritas Techs., Ltd. v. Rockwell Int'l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998).
Contrary to Pelz's reading, claim 1 does not specify that the markings on the golf training mat consist essentially of first, second, and third foot and ball position markings. Rather, claim 1 states that the mat consists essentially of a "surface including markings" and that the markings "include" first, second, and third foot and ball positions. Such a construction is reasonable in view of Pelz's use of the open-ended transition "including" after the structural limitation "ball striking surface" in claim 1. See SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1284 (Fed. Cir. 2005) ("Neither includes, nor comprising, forecloses additional elements that need not satisfy the stated claim limitations."); see also Mannesmann Demag Corp. v. Engineered Metal Prods. Co., 793 F.2d 1279, 1282-83 (Fed. Cir. 1986) (holding that an overall transitional phrase does not trump later transitional language). It is reasonable to find that this open-ended term naturally refers to the next word--"markings." Under such a construction, the surface may feature additional markings not explicitly listed.
Pelz's woody punctuation shanked when he should have more carefully put a wedge between his claims and the prior art.
The preamble of claim 1 confirms this construction as it recites that the claimed mat is for "practicing short game shots including a wedge swing, a sand swing and a chip swing." The transition term "including" implies that claim 1 contemplates additional shots besides the three listed. It therefore flows logically that the body of the claim would also leave open the possibility for additional foot and ball positions to accommodate additional shots. Pelz's choice of punctuation for the claim also supports the Board's construction. He used a colon after the transition phrase "consisting essentially of," which indicates that a list of particulars was to follow. Following the colon, there was only one component--the ball striking surface. Pelz then used a second colon after the phrase "including markings associated with foot and ball positioning" to list the positions printed on the striking surface. Within that list, Pelz used semicolons to separate the particulars for that list. The punctuation indicates that the three positions are exemplary subsets. Pelz's construction is inconsistent with the punctuation he chose for this claim.
Posted by Patent Hawk at May 8, 2010 3:39 PM | Prior Art
If he had got rid of the second colon he would have won...
Posted by: fliptop at May 9, 2010 6:22 PM
Even without the double colon gaff, the claim sucks about as bad as Tiger's performance at Sawgrass, if you can call teeing from 11 and hitting water on 12 as a "performance."
I just hope whomever wrote this garbage claim gets serviced as well and as often as Tiger does. (Wish I could, too.)
Posted by: Babel Boy at May 10, 2010 7:37 AM
Should have gone for a design patent.
Posted by: primate bay at August 12, 2010 7:01 AM