Ex Parte Addington et al

Board of Patent Appeals and Interferences

Feb 28, 2007

09396530 (B.P.A.I. Feb. 28, 2007)

The opinion in support of the decision being entered today
was not written for publication and
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RANDALL A. ADDINGTON, W. ROBERT ADDINGTON and
W. ROBERT ADDINGTON II
_____________

Appeal 2006-3338
Application 09/396,530
Technology Center 3700
______________
Decided: February 28, 2007
______________

Before JENNIFER D. BAHR, ROBERT E. NAPPI, and
LINDA E. HORNER, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

Appeal 2006-3338
Application 09/396,530

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 of the final
rejection of claims 3, 4, and 14 through 30. For the reasons stated infra we
will not sustain the Examiner’s rejection of these claims.

INVENTION

The invention is directed to a method of using a finger shield, attached
to a bowler’s hand, to control the release of a bowling ball. See pages 4, 5
and 23 through 26 of Appellants’ specification. Claim 14 is representative
of the invention and is reproduced below:
14. A method of using a finger pad shield placed in contact with
the finger pad of a bowler's finger inserted into a finger hole of a
bowling ball, to reduce the pressure on the finger pad when releasing
said bowling ball from said bowler's finger and to improve a
bowler's control over a direction or spin on a bowling ball, when
lifting the bowling ball to impart spin and velocity, at release,
comprising the steps of:
a. placing a finger pad shield having a first surface, and a
second surface opposed to said first surface, on a finger pad of a
bowler, with said first surface in contact with said finger pad of a
bowler and forming a contact area made between said finger pad of a
bowler and said first surface of said finger pad shield;
b. inserting said finger pad shield, in a finger hole of a bowling
ball;
c. said step b, of inserting said finger pad shield in said finger
hole of a bowling ball, including the step of placing said second
surface of said finger pad shield in contact with an interior surface of
said finger hole of a bowling ball;
2

Appeal 2006-3338
Application 09/396,530

d. releasing said finger pad of a bowler and said finger pad
shield from said finger hole of a bowling ball by applying a first force
from said finger pad of a bowler in a first direction against said first
surface of said finger pad shield, through said finger pad shield to said
second surface of said finger pad shield, against said interior surface
of said finger hole of a bowling ball, to lift said bowling ball and
producing a second force in a second direction, from said interior
surface of said finger hole of a bowling ball, against said second
surface of said finger pad shield;
e. said step d, of releasing said finger pad of a bowler and said
finger pad shield from said finger hole of a bowling ball, includes the
step of receiving said second force in said second direction, from said
interior surface of said finger hole of a bowling ball, against said
second surface of said finger pad shield, through said finger pad shield
to said first surface of said finger pad shield and over said contact area
made between said finger pad of a bowler and said first surface of said
finger pad shield; and
f. said step e, of receiving said second force in said second
direction from said interior surface of said finger hole of a bowling
ball, against said second surface of said finger pad shield, includes the
step of distributing said second force in said second direction from
said interior surface of said finger hole of a bowling ball, against said
second surface of said finger pad shield, over said contact area made
between said finger pad of a bowler and said first surface of said
finger pad shield, for reducing a pressure over said contact area made
between said finger pad of a bowler and said first surface of said
finger pad shield, produced by said second force, in a second direction
from said interior surface of said finger hole of a bowling ball, against
said second surface of said finger pad shield.

3

Appeal 2006-3338
Application 09/396,530

REFERENCE

The reference relied upon by the Examiner is:

Marinese US 3,046,561 Jul. 31, 1962

REJECTION AT ISSUE

Claims 3, 4, and 14 through 30 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Marinese. The Examiner’s rejection is set
forth on pages 3 through 5 of the Answer. Throughout the opinion we make
reference to the Brief and Reply Brief (filed August 25, 2004 and January 4,
2005 respectively), and to the Examiner’s Answer (mailed November 30,
2004) for the respective details thereof.

ISSUES

Appellants contend that the rejection under 35 U.S.C. § 102(b) is in
error as Marinese does not teach all of the limitations of independent claims
14, 21 and 23. Appellants argue that one of the claimed features not taught
is the use of a finger shield when lifting to impart spin and velocity while
releasing the ball.
The Examiner in response contends that the rejection is proper. The
Examiner states that Marinese teaches a finger pad shield and that the finger
pad shield carries out the claimed method steps during normal use. Further,
the Examiner states “[u]nder the principles of inherency, if a prior art device,
4

Appeal 2006-3338
Application 09/396,530

in its normal and usual operation, would necessarily perform the method
claimed, then the method claimed will be considered to be anticipated by the
prior art device.” (Answer, page 3.)
Thus, the issue presented to us is whether the use of the finger pad of
Marinese inherently performs the claimed method steps including use of a
finger shield when lifting to impart spin and velocity while releasing the ball
as recited in the independent claims.

FINDINGS OF FACT.

Marinese teaches a ring that a bowler wears around the thumb. The
ring has a ridged outer member and an inner cushioning member which
conforms to the finger. See col. 2, ll. 46-50 and col. 3, ll. 3-5. The ring is
carried on the thumb of the bowler and is “responsive to adequate thumb
pressure in the control of the bowling ball, [and] will enable the release of
the bowling ball without frictional drag.” See col. 1, ll. 55-61 and col. 3, ll.
21-33. We note that Marinese discusses control of the bowling ball and
release of the bowling ball separately, but does not discuss controlling the
bowling ball during the release of the bowling ball. Further, we find no
discussion in Marinese of using the thumb or the thumb with the thumb ring
to impart spin and velocity to the bowling ball. Additionally, we do not find
that Marinese discusses using the ring on any finger other than the thumb.

5

Appeal 2006-3338
Application 09/396,530

PRINCIPLES OF LAW

Office personnel must rely on Appellants’ disclosure to properly
determine the meaning of the terms used in the claims. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 980, 34 USPQ2d 1321, 1330 (Fed.
Cir. 1995). “[I]nterpreting what is meant by a word in a claim ‘is not to be
confused with adding an extraneous limitation appearing in the specification,
which is improper.’” In re Cruciferous Sprout Litigation, 301 F.3d 1343,
1348, 64 USPQ2d 1202, 1205 (Fed. Cir. 2002) (emphasis in original) (citing
Intervet America, Inc v. Kee-Vet Laboratories, Inc., 887 F.2d 1050, 1053, 12
USPQ2d 1474, 1476 (Fed. Cir. 1989)). “To establish inherency, the
extrinsic evidence ‘must make clear that the missing descriptive matter is
necessarily present in the thing described in the reference, and that it would
be so recognized by persons of ordinary skill.’ ‘Inherency, however, may
not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient.’”
In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir.
1999) (citations omitted).
ANALYSIS

Claim 14 recites “A method of using a finger pad shield placed … to
improve a bowler's control over a direction or spin on a bowling ball, when
lifting the bowling ball to impart spin and velocity, at release” and “releasing
said finger pad … to lift said bowling ball .” Thus, we find that independent
claim 14 recites using the finger pad shield when releasing the ball to “lift”
6

Appeal 2006-3338
Application 09/396,530

the ball. The claim also recites that to “lift” the ball is to impart spin and
velocity. Independent claims 21 and 23 recite similar limitations.
In contrast to the Appellants’ invention wherein the finger pad shield
is disposed on one of the four other fingers and not the thumb, Marinese
discloses use of a thumb ring. We do not find that the Examiner has shown
that use of Marinese’s thumb ring during release of the ball inherently
allows the bowler to “lift” (impart spin and velocity) to the ball. As
discussed supra we find that Marinese teaches that use of the thumb
protector assists the user in controlling the ball, and provides a frictionless
release of the ball. We do not find that Marinese discusses providing control
over the ball as it is being released. Nor, do we find that the Examiner has
provided evidence that the thumb of a bowler necessarily, imparts spin and
velocity during the release of a bowling ball. Thus, we do not find that
Marinese teaches implicitly, or through the principles of inherency, the
limitations of independent claims 14, 21 and 23.
CONCLUSION

We consider the Examiner’s rejection of claims 3, 4, and 14 through
30 under 35 U.S.C. § 102 (b) to be in error as we do not find that Marinese
inherently performs the claimed method steps including use of a finger
shield when lifting to impart spin and velocity while releasing the ball.
7

Appeal 2006-3338
Application 09/396,530

ORDER

For the forgoing reasons, we will not sustain the Examiner’s rejection
of claims 3, 4 and 14 through 30 under 35 U.S.C. § 102(b). The decision of
the Examiner is reversed.

REVERSED

vsh

JOEL I. ROSENBLATT
445 11TH AVENUE
INDIALANTIC FL 32903
8