COMMISSIONER'S DECISION
Obviousness Hockey Stick Reinforcing
The stick is reinforced with strips of reinforcing plastic material embedded
in the side surface of the wood core handle portion of the stick. The rejection
of the broad claims were affirmed, but some of the more restricted claims
were allowed. The rejection was made during conflict proceedings, but is
taken under Section 42 of the Act, so that failure to appeal or to delete the
rejected claims will lead to abandonment The decisions on 490 and 492 relate
to the other conflicting applications, and are essentially the same.
Final Rejection affirmed in part.
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This decision deals with a request for review by the Commissioner of
Patents of the examiner's letter dated April 25, 1977, on application
248349 (Class 273-161). The application was filed on Manch 12, 1976, in
the name of William E. Ardell et al, and is entitled ''Ice Hockey Stick
With Fibre Reinforced Handle." The Patent Appeal Board conducted a
Hearing on June 21, 1978, at which Mr. R. Trudeau represented the
applicant. Also present were three of the inventors viz. Messrs. W.
Burchmore, L. Drolet and W. Ardell.
The application is directed to an ice hockey stick in which strips of
reinforcing plastic material are embedded into the side surfaces of the
wood core handle portion of the hockey stick. Figure 2, shown below, shows
that arrangement:
<IMG>
This application is in conflict with two other applications. In the exam-
iner's letter claims C1 to C15 were refused in view of the folloming patents:
Primary Reference Applied:
Finnish Patent
42,515 Apr. 30, 1970 Norvasto
Supporting References Applied:
Canadian Patent
286,234 Jan. 8, 1929 Purkis
United States Patents
1,535,667 Apr. 28, 195 Horne
2,944,820 July 12, 1900 Paullus
The patent to Norvasto is the primary reference and is directed to an ice hockey
stick in which strips of reinforcing plastic material are secured to the side
surfaces of the wood core handle portion of the hockey stick. Figure 1 below
shows that invention:
<IMG>
a) represents the light wood core; b) the glass fibre plastic layers; and
c) a wood veneer constituting the outer surfaces
The references to Purkis, Horne and Paullus were cited to shoe that the idea
of embedding reinforcing strips within longitudinally cut grooves of the
handle of game playing equipment is well known.
The Commissioner's letter, which was signed by the examiner, reads (in part):
Claims C1, C4, C5 and C10 stand rejected as anticipated by the
Finnish patent to Norvasto. Norvasto overcomes the problems
of cost and heavy weight of the so called glass fiber reinforced
sticks of the prior art in which the lower part of the handle
and the blade of a standard hardwood stick, were covered with a
glass fiber fabric impregnated with an artificial resin "suited
to the purpose". Norvasto achieves his objectives by (a)
replacing the hardwood handle by a rectangular core of lightwood
or equivalent material and by (b) cementing a layer of plastic
reinforced with longitudinal glass fibers onto each of the two
wide flat sides. Norvasto also adds an outer veneer of hardwood
to cover the plastic layer and maintains the fibers in the blade
portion oriented as uniformly as possible "in all directions".
Thus Norvasto teaches all of the structure recited in claims C1,
C4 and C5.
This reference also teaches that the renforcements of the
handle and the blade as being "fitted at the juncture of these
parts to overlap so that the glass-fiber reinforced plastic
layers are structurally continuous over the whole length of
the stick".
Thus the overlap of the reinforcings recited in dependent
claim C10 is also anticipated.
Claims C2, C3, C6 to C9 and C11 to C15 fail to distinguish in
an unobvious sense from the patent to Norvasto and are re-
jected. Althrough the reference does not show the details of
the way in which the glass fiber fabric is attached to the
blade, the recitation of this as in the glassifical manner of
"wound around" cannot be seen to distinguish the otherwise
anticipated structure of claim C2 in a significant or unobvious
way. Since the structure in dependent claim C3 is shown
by this reference, this claim fails to further distinguish
from the reference. Similarly the recitation of the core
as "being made from a wood material selected from lower grade
hardwood", which is the only distinction of claim C6 from
the reference Finnish patent, does not impart patentability
of this claim. Norvasto defines his core as "made of a
comparatively light material such as E.G. wood, plastic or
equivalent". In any case the use of hardwood in hockey sticks
is classical and not unobvious. Norvasto also shows his strip
of reinforcement to be embedded in each wide side of the handle.
In view of this, claim C11 by specifying this strip as "embedded
centrally" in each wide side surface of a handle component "made
of hardwood" does not distinguish from this reference in a
significant way. Further, since the concept of cementing rigid
strips of reinforcing material in grooves cut longitudinally in the
hafts of game bats is well known being shown in the patents to
Purkis and Paullus and in the 1925 patent to Horne, the recital
of such a groove in the dependent claims C7 and C12 and in the
independent claim C14 does not add or define anything of an
unobvious and patentable nature to the otherwise unpatentable
structures. Except for this feature claim C14 is other wise antic-
ipated by the Finnish patent. Similarly whether the reinforcing
filaments are glass fibers as taught by Norvasto and also recited
in dependent claim C8 or graphite fibers as recited in dependent
claim C9, or glass and graphite fibers as recited in dependent
claims C13 and C15 is seen to involve merely an obvious matter of
choice or elementary design. These claims, C8, C9, C13 and C15 do not
add anything of an unobvious or inventive nature to the claims
upon which they depend.
In response the applicant stated that there will be no attempt to defend claims
C1 to C10. He did argue however that C11 to 15 "define an invention over
the prior art...." He stated that claim C11 defines an ice hockey stick
having inextensible reinforcement in strip form comprising longitudinally
aligned fibres embedded centrally in each wide side surface of the handle
component. He also argued that in the Norvasto patent "a layer of reinforce-
ment extends on each side of the hockey stick from the free end of the
handle to the tip of the blade." He concluded by saying:
...
The applicants therefore submit that it is improper to combine
the teaching of Norvasto, Paullus, Horne and Purkis and conclude
that the structure defined by claim C12 does not amount to an
invention. The better view, it is submitted, is that the
applicants herein are the first to have conceived of an improved
ice hockey stick that combines the necessary degree of handle
rigidity and shank flexibility by reason of the fact that the
handle component has on each side an inextensible rigid reinforcement
of glass fiber material of rectangular cross-section received
into a closely conforming groove in the handle component and
flush with respect to the surrounding wood to which it is glued,
and wherein the reinforcing strips terminate in the upper region
of the shank, are of constant cross-section throughout the length
of the handle and extend strictly parallel to each other throughout
their extent. Such a hockey stick is new but also has all the
attributes of an invention particularly when one has regard to the
fact that such a reinforced composite hockey stick can be manu-
factured using conventional manufacturing equipment and tooling.
Claim C13
This claim depends upon claims C12 which in turn is dependent
upon C11. The invention therein described is specified as having
strips of glass-fiber material which is made of continuous strands
of textile yarns comprising glass fibers and graphite fibers in a
suitable binder. To the extent that claim C12 is patentable the
applicants are believed to be entitled to claim C13 which specifies
a preferred embodiment of the invention. It is not necessary at
this state to argue whether claim C13 defines subject matter which
is patentably different over claim C12.
Claim C14, C15
The prior art cited by the examiner fails to disclose reinforced
hockey stick handles. Moreover this component which is essential
to the applicants new method of construction for producing their
new hockey stick is believed to be the most basic aspect of the
present invention. It follows that a reinforced handle component
as claimed in C14 for making hockey sticks in accordance with
this invention must be a patentable invention since it is also
a vendible product of obvious utility and apparent novelty,and
since such a product is adequately disclosed in the present patent
application.
The only consideration before the Board is whether or not C11 to C15 are
directed to patentable subject matter.
At the Hearing Mr. Trudeau argued strongly that indeed claims C11 to C15
define patentable subject matter. An excellent demonstration was given
at the Hearing by Mr. L. Drolet using hockey sticks or parts thereof to
show that advance in the art and how the hockey sticks are produced. One
feature in particular was stressed i.e. the absence of reinforcement in
the middle or lower region of the shank. In other words the side reinforcing
strips 60 and 62 extend from the upper free end of the handle component and
terminates dust above the shank.
We have studied the prosecution of this application and carefully read the
disclosure. We find there a succinct description of the "absence of reinforce-
ment" feature on page 9, line 2 f.f., which reads:
When producing an ice hockey stick in accordance with the present
invention, the basic piece of hardwood for making the handle
component 12 is first provided with side grooves 50 and 52; the
side reinforcing strips 60 and 62 are then glued in place, each
strip extending from the upper free end 20 of the handle
component 12 and terminating at least a short distance beyond the
lower region of handle 18 which is illustrated at 22 in Figure 2,
after which the rest of the operations are conventional, namely the
addition of a small block 44, the provision of a slot in the heel
portion of the assembly, followed with gluing of the blade component
16 into the heel portion 14, shaping of the lower portion of the
hockey stick, followed by coarse sanding of the entire lower portion
of the hockey stick. The coarse sanding operation which is
designed to make the heel and blade portion thinner will also
provide a gradual transverse tapering throughout the shank
portion 24. Consequently, the lower portions of reinforcing strips
60 and 62 will also gradually taper from the lower region of handle
18 and will completely disappear at some point along shank 24, leaving
the lower region of shank 24 without any reinforcement. The absence of
reinforcement in the middle and lower region of shank 24 is a very
desirable feature in that this lower portion of the hockey stick
should be slightly more flexible than the handle 18 in order to absorb
some of the shocks which otherwise would be directly transmitted to
the arms of the hockey player and also to permit springing back
of the blade portion 16 resulting in faster shooting. The position
of the lowest extremity of reinforcing strips 60 and 62
as at 90 in Figure 2 will be determined by the depth of grooves 50
and 52 in the basic piece of wood used for making the handle, which
depth should be constant, and by accurately controlling the coarse
sanding operation of the lower region of the hockey stick.
At first blush the absence of reinforcement in the middle or lower region
of the shank might appear as a small difference. At the Hearing we were
assured that this difference created large and excellent results. For
example, it made the hockey stick more flexible in order to absorb some
of the shocks which otherwise would be directly transmitted to the arms
of the hockey player, and also to permit springback of the blade portion
resulting in faster shooting of the hockey puck. In any event it was stated
in O'Cedar of Canada Ltd. v. Mallory Hardware Products Ltd. (1956) Ex. C.R.
299 at 317, that "The simplicity of a device is no proof that it was obvious
and that inventive ingenuity was not required to produce it and, if small
differences create large results, then the scintilla of inventiveness required
by law is in fact present [emphasis added."
We turn to the claims. Claim C11 reads:
An ice hockey stick comprising a handle component made of
hardwood and defining a handle of rectangular, constant cross-
section having four flat surfaces and an integrally formed
shank extending from the lower end region of said handle, a
blade secured to the lower end portion of said handle component,
and an inextensible rigid reinforcement in strip form comprising
longitudinally aligned fibres, embedded centrally in each wide
side surface of said handle component extending throughout said
handle and terminating in the upper region of said shank, said
reinforcements being glued to the surrounding wood of said
handle component, each reinforcement being of constant cross-
section throughout the length of said handle and said reinforce-
ments extending strictly parallel to each other throughout their
extent.
This claim clearly defines the feature of "... an inextensible rigid rein-
forcement comprising in strip form longitudinally aligned fibres embedded
centrally in each wide side surface of said handle component extending
throughout said handle and terminator in the upper region of said shank
[emphasis added]...."
This claim also indicates that the plastic reinforcing strip is made in a
particular manner, i.e. the strip has longitudinally aligned fibres. In
order to more particularly define the advance in the art however, the term
"continuous" should precede the phrase "longitudinally aligned fibres...."
While this seems like an unimportant feature, it was argued that it produced
excellent results. This claim, when amended to add "continuous" as noted
above is, in our view, directed to patentable subject matter.
Claims C12 and C13, which depend directly or indirectly on C11, are also
found allowable. The arguments for the allowance of claim 11, apply equally
to them.
C14 reads:
A reinforced hockey stick handle made of hardwood having at
least one longitudinal shallow groove extending along each wide
side surface and a rigid thin strip of longitudinally extending
fibres bonded together which is received in each groove, glued
thereinto and which terminates flush with the adjacent wide side
surface, the tensile strength of said strip being considerably
higher than that of said hardwood.
This claim neither has the restriction of the "continuous" longitudinally
extending fibres, nor the reinforcement "... extending throughout said handle
and terminating in the upper region of said shank...." recited therein.
The fact that the reinforcement is placed in a "shallow groove" is not con-
sidered a patentable advance in the art, because this feature is generally
taught by the patents to Purkis, Horne and Paullus, albeit, not totally on
analogous art, but in an allied art of sports equipment e.g. tennis rackets,
base ball bats and golf clubs. This claim in our view does not define patent-
able subject matter. We recommend that this claim be refused.
Claim C15, which depends en C14, reads:
A reinforced hockey stick handle in accordance with claim 12,
wherein said longitudinally extending fibres comprise glass
fibres and graphite fibres.
This claim should also be refused, because the type of fibres, under the
circumstances, does not lend patentability to the claimed combination which
was refused in claim C14.
To summarize, claims C11 (when amended) C12 and C13 are found allowable
and should be returned to the examiner, while claims C14 and C15 should
be refused for the reasons stated.
The applicant is also advised that it was found that claims C6, C7, C8
and C9 are also directed to a patentable advance in the art and they
will remain as conflict claims, but if the applicant does not wish to
contest them it is his perogative.
J.F. Hughes
Assistant Chairman
Patent Appeal Board, Canada
I have reviewed the prosecution of this application and I agree with the
recommendations of the Patent Appeal Board. Accordingly, I refuse to grant
a patent on claims C1 to C5, C10, C14 and C15, but I will accept claims
C11 (when amended), C12 and C13. The applicant should note that while this
rejection developed from prosecution under Section 45 of the Patent Act, the
rejection itself is taken under Section 42 of the Act. Consequently failure
to delete the rejected claims, or to appeal under Section 44 of the Act,
will terminate the prosecution of this application.
J.H.A. Gariepy
Commissioner of Patents
Dated at Hull, Quebec
this 8th. day of August, 1978
Agent for Applicant
Raymond Trudeau
31 St-Jacques St.
Suite 400
Montreal, Que.
H2Y 1K9