Ex Parte ASTA

Board of Patent Appeals and Interferences

Apr 18, 2003

09326996 (B.P.A.I. Apr. 18, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOSEPH C. ASTA
____________
Appeal No. 2003-0017
Application No. 09/326,996
____________
ON BRIEF
____________
Before FRANKFORT, STAAB, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's rejection of claims 2 to 11, 13 to
15, 21 and 22, which are all of the claims pending in this application.
We REVERSE.
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Application No. 09/326,996
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BACKGROUND
The appellant's invention relates to a golfing aid (specification, p. 1). A copy of
the claims under appeal is set forth in the appendix to the appellant's brief.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Pruitt 2,979,335 Apr. 11, 1961
Piazza 4,021,068 May 3, 1977
Luther, Sr. 5,335,953 Aug. 9, 1994
Erickson, Jr. 5,759,117 June 2, 1998
Cole et al. (Cole) 6,290,617 Sep. 18, 2001
Claims 3 to 6 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Piazza in view of Cole.
Claims 2, 7, 11, 21 and 22 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Piazza in view of Erickson.
Claims 8 to 10 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Piazza in view of Erickson and Pruitt.
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Application No. 09/326,996
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Claims 13 to 15 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Piazza in view of Luther.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the answer
(Paper No. 13, mailed June 4, 2002) for the examiner's complete reasoning in support
of the rejections, and to the brief (Paper No. 8, filed May 2, 2001), supplemental brief
(Paper No. 12, filed March 26, 2002) and reply brief (Paper No. 14, filed August 13,
2002) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. Upon evaluation of
all the evidence before us, it is our conclusion that the evidence adduced by the
examiner is insufficient to establish a prima facie case of obviousness with respect to
the claims under appeal. Accordingly, we will not sustain the examiner's rejection of
claims 2 to 11, 13 to 15, 21 and 22 under 35 U.S.C. § 103. Our reasoning for this
determination follows.
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Application No. 09/326,996
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In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established by presenting evidence that would have led one of ordinary skill in the art to
combine the relevant teachings of the references to arrive at the claimed invention.
See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
The claimed subject matter
Claims 4, 7 and 13, the independent claims under appeal, read as follows:
4. A golfing aid comprising:
an elongated member having a first end and a second end, said first end
being provided with golf ball holding means, and said elongated member further
being provided with means for releasing a golf ball from said holding means and
means for retaining a divot repair tool; and
a divot repair tool held by said retaining means, said repair tool including
an elongated shaft having opposite ends and a divot repair element at one of
said. ends of said shaft.
7. A golfing aid comprising:
an elongated member having a first end and a second end, said first end
being provided with golf ball holding means, and said elongated member further
being provided with means for releasing a golf ball from said holding means, at
least one of said elongated member, said holding means and said releasing
means having a first golf ball marker holding portion for storing a golf ball marker,
and at least one of said elongated member, said holding means and said
releasing means having a second golf ball marker holding portion for depositing
a golf ball marker on and retrieving a golf ball marker from the ground.
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Application No. 09/326,996
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13. A golfing aid comprising:
an elongated member having a first end and a second end, said first end
being provided with golf ball holding means, and said elongated member further
being provided with means for releasing a golf ball from said holding means; and
support means for said elongated member, said support means being
pivotally mounted on said elongated member.
Teachings of the applied prior art
Piazza
Piazza's invention relates to a device for retrieving golf balls. The device
comprises a tapered receptacle to which a hand operated vacuum pump is attached.
The receptacle is sized so that a golf ball entering its lower end will be lightly trapped
against its flexible sides. The vacuum pump is part of the retriever handle and is
preferably of the piston and cylinder type. When the retriever is used for a ball lying on
a soft surface, the receptacle is moved over the ball and in close proximity to it. A
movement of the vacuum pump piston creates a flow of air or water as the case may
be towards and around the ball. The force of the flow pushes the ball into the
receptacle where it is trapped. The retriever can now be withdrawn from the water
hazard or rough. A reverse motion of the piston then frees the ball. When used with
balls lying on hard terrain, the device is lowered over the ball and pushed in a
direction away from the user. This forces the ball into the receptacle and no use is
made in this case of the vacuum pump.
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Referring now in detail to Figures 1 and 2 it will be seen that the device is
comprised of a tapered receptacle 1 firmly and communicably joined to a tubular handle
2. The receptacle is preferably in the form of a truncated cone and made of relatively
thin material so that its walls are somewhat flexible. A ball 9 entering the receptacle 1
flexes the walls slightly and is locked inside the receptacle by friction. Plastic has been
found suitable as a material of construction for the receptacle but other materials such
as aluminum can be used. The inner surface 16 of the receptacle 1 is roughened to aid
in frictional retention of the ball. The piston 4 is comprised of three sections of differing
lengths and diameters. The relatively long upper section 4a is of a diameter somewhat
less than the inside of tubular handle 2. The relatively short center section 4b is of a
diameter to give a close fit with the inside of the tubular handle 2 and contains an
annular groove 17 and an "O" ring 5. The center section by its construction acts as a
moving seal and is used to create a partial vacuum in receptacle 1. The lower section
4c of the piston is relatively long and of the smallest diameter. The lower section of the
piston serves several purposes. During a retrieval from a hard surface the lower
section is contacted by the ball and is moved upwards to the position 7 shown in Figure
2. An operating knob 6 joined to the upper section of the piston moves and signals the
user that the ball has entered the receptacle. Downward pressure on knob 6 now frees
the ball.
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When the invention is employed to retrieve a ball from water as is shown in
Figure 1, the operation is somewhat different. The receptacle 1 is moved within a short
distance of the ball. The operating knob 6 is now pulled back with one hand while the
handle 2 is held with the other. The partial vacuum thus created in receptacle 1
induces a rapid flow of water towards its opening. The ball 9 is thereby forced into
receptacle 1 and is frictionally retained. The seal between the ball 9 and the walls
of the receptacle is not completely tight because of the roughened surface 16 and the
dimples in the surface of the ball so that the vacuum is soon relieved after the
ball is in place. The frictional retention of the ball against surface 16 is however not
altered by the relief of the partial vacuum. Whenever the user desires to release
the ball, he presses the operating knob 6 downward. The sealing section 4b of the
piston 4 acting against the air in the inside of handle 2 now functions as a pressure
pump and forces the ball to drop out of the receptacle 1.
Cole
Cole's invention relates to a golf club accessory device. As shown in Figures 1-
8, the device is an essentially flat plastic member having a forked end for use in
replacing divots or green repair, and integral jaw members for attachment of the device
to the club shaft adjacent the head so that when the club is stored in a golf bag the
device can be readably removed. The end of the device opposite the forked portion
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provides a cradle, and a removable ball marker is carried by the device. The ball
marker typically has a spindle that is pressed fitted through a hole in the device so that
it can be physically separated to be used by the golfer.
Erickson
Erickson's invention relates to a golf ball teeing device which allows an impaired
or elderly golfer to tee a golf ball without the need of bending over. The device may
also be used to retrieve balls from the ground, cup or water hazards. As shown in
Figures 1-6, these goals are accomplished by the use of a long handled, golf club-like
device with a spring loaded golf ball and tee holding device at its bottom end and a
depressable knob at the top end. The golfer uses the device by depressing the knob,
which opens the gap between the ball holder and tee holder, thereby allowing a golfer
to place a tee and golf ball in the device. The user then places the device in an upright
position and pushes the tee at the bottom end of the device into the ground, and again
depresses the knob, releasing the tee and the ball in their desired position. The golfer
may also depress the knob, causing the aforementioned gap to open, and allowing the
golfer to place the gap over a golf ball that is on the ground. When the golfer releases
the knob, the gap closes, securing the golf ball within the holding device. In this way,
the golfer can use the device to pick up balls from the ground, cup and to retrieve balls
from a water hazard.
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As shown in Figures 2 and 3, the release knob 18 has attached to it a magnet
26, to which a ball marker 24 attaches. As shown in Figures 2 and 7-9, an attachable
greens keeper is attachable to the golf ball teeing device by snapping it to the exposed
part of an inner shaft just below the ball holder and above the tee holder. The
accessory is made up of a greens keeper 32 which is attached to a greens keeper
holder 34 which on its inner surface has a snap groove 44 which fits over the inner
shaft. This allows the golfer to repair ball marks left on the green without the need to
bend over by attaching the greens keeper to the lower portion of the golf ball teeing
device.
Pruitt
Pruitt's invention relates to a golf club having a permanent magnet used for
removably carrying a magnetic keeper which, when removed, is utilized as a marker for
indicating the previous position of a golf ball which had been lifted from the putting
green. As shown in Figures 1-7, the upper extreme end of the handle of the golf club is
provided with an open top recess 26. A permanent magnet 36 is disposed within the
recess with the upper side thereof below the top of the handle. A marker 42 of
magnetic material is disposed within the recess and above the magnet and is
removably held in place by the magnet. The walls of the recess completely surround
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Application No. 09/326,996
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the marker when held in position by the magnet, and preferably, the top side of the
marker is slightly below the top of the putter.
Since the marker 42 is wider than the upper surface 44 of the magnet 36, it can
be readily tilted by pressing on the outer surface thereof near the periphery thereof.
When such pressure is applied, the outer edge of the magnet functions as a fulcrum for
the marker. By pressing near the outer edge of the marker with a finger or thumb, the
other fingers of the same hand of the player can be used to detach the marker from the
magnet, since at that time, the part of the marker which is diagonally opposite the point
of pressure on the marker, is raised a sufficient distance above the cover so that it is
readily accessible for handling, as shown in Figure 1. As shown in Figure 6, the
construction is such that the club can be used for lifting the marker off the green. Thus
eliminating a stooping movement of the player. Once the marker is attracted to the
magnet, it can, if not properly seated in the recess, be readily seated by a sliding
movement imparted thereto by a finger.
Luther
Luther's invention relates to a golf ball retrieving and dispensing apparatus
which includes an elongated inner tube and an elongated outer tube mounted
telescopically slidable with respect to each other such that a single longitudinal axis is
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common to both tubes, the tubes being substantially coextensive and having upper and
lower ends. The outer tube has two legs releasably attached thereto adjacent its lower
end and adapted to hold said apparatus in a general vertical free-standing position
when resting on a horizontal surface. The outer tube at its bottom end includes an
expandable contractable means to expand sufficiently to encircle a golf ball and
then contract sufficiently to grip the golf ball and hold it against the bottom end of the
inner tube when the bottom end of the inner tube is retracted to the bottom end
of the outer tube and then to expand again and release the golf ball when the bottom
end of the inner tube is protracted outwardly from the bottom end of the outer
tube.
As shown in Figure 1, two legs 24 made of heavy wire are provided which
together with lower end 23 of inner tube 21 (with golf ball 26 gripped by fingers 25) form
a tripod to allow the apparatus to stand in generally vertical position, tipped to an angle
of about 10°-20° from the vertical. The legs 24 are locked securely at the desired angle
which provides stability for the apparatus. Luther teaches (column 4, line 67, to column
3, line 2) that "[i]t is, of course, entirely within the scope of this invention to employ other
types of legs, whether permanently attached or detachably connected."
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1 Erick son teaches a divo t repa ir tool re tained on a golf b all hold ing tool.
Claims 3 to 6
We will not sustain the rejection of claims 3 to 6 under 35 U.S.C. § 103 as being
unpatentable over Piazza in view of Cole.
We agree with the examiner's determination (answer, pp. 3-4) that it would have
been obvious to one of ordinary skill in the art to provide the tool of Piazza with the tool
of Cole in order to allow the user to repair divots in the golf green.1 However, we find
ourselves in agreement with the appellant that this combination of tools does not arrive
at the subject matter of claim 4. Specifically, the claimed elongated member being
further provided with means for retaining a divot repair tool is not met by this
combination of tools. As correctly pointed out by the examiner (answer, p. 6), this
"means plus function" corresponds to the structure set forth on page 10, lines 17-22 of
the instant specification. Thus, the structure corresponding to the means for retaining a
divot repair tool is both the magnetic or magnetizable button 54 on the elongated
member 12 and the clamp 48 on the elongated member 12. However, the elongated
member of Piazza's tool (i.e., handle 2) does not contain either a magnetic or
magnetizable button or a clamp, or for that matter, any structure that could be
considered to be equivalent to both a magnetic or magnetizable button and a clamp.
Accordingly, it is our view that the tool of Piazza when mounted with the tool of Cole
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does not have an elongated member provided with means for retaining a divot repair
tool as set forth in claim 4 on appeal.
For the reasons set forth above, the decision of the examiner to reject claim 4,
and claims 3, 5 and 6 dependent thereon, under 35 U.S.C. § 103 is reversed.
Claims 2, 7, 11, 21 and 22
We will not sustain the rejection of claims 2, 7, 11, 21 and 22 under 35 U.S.C.
§ 103 as being unpatentable over Piazza in view of Erickson.
We agree with the examiner's determination (answer, p. 4) that it would have
been obvious to one of ordinary skill in the art to modify the handle of Piazza's tool to
hold a golf ball marker as suggested and taught by Erickson. However, once again we
find ourselves in agreement with the appellant that this modification of Piazza does not
arrive at the claimed subject matter. Specifically, we agree with the appellant's
argument that Piazza lacks both the first golf ball marker holding portion for storing a
golf ball marker and the second golf ball marker holding portion for depositing a golf ball
marker on and retrieving a golf ball marker from the ground. Thus, even if the handle of
Piazza's tool were modified to hold a golf ball marker as suggested and taught by
Erickson (i.e., the claimed first golf ball marker holding portion for storing a golf ball
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marker) the modified tool of Piazza would still lack the second golf ball marker holding
portion for depositing a golf ball marker on and retrieving a golf ball marker from the
ground. In that regard, it is our view that the examiner's determination (answer, p. 4)
that Piazza's "pump is obviously capable of storing and retrieving a golf ball marker"
lacks sufficient evidentiary and technical basis. Accordingly, it is our determination that
Piazza's pump is not inherently capable of storing and retrieving a golf ball marker. As
such, the above-noted modification of Piazza does not arrive at the subject matter of
claim 7.
For the reasons set forth above, the decision of the examiner to reject claim 7,
and claims 2, 11, 21 and 22 dependent thereon, under 35 U.S.C. § 103 is reversed.
Claims 8 to 10
We will not sustain the rejection of claims 8 to 10 under 35 U.S.C. § 103 as
being unpatentable over Piazza in view of Erickson and Pruitt.
We have also reviewed the reference to Pruitt additionally applied in the rejection
of dependent claims 8 to 10 but find nothing therein which makes up for the
deficiencies of Piazza and Erickson discussed above with respect to parent claim 7.
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2 It appears to us that Luther is closer prior art to the subject matter of claim 13 than Piazza since
Luther teaches a golfing aid having (1) an elongated member having a first end and a second end, the first
end be ing provide d with golf ba ll holding m eans, a nd the elo ngated mem ber furthe r being pro vided with
means for releasing a golf ball from the holding means; and (2) legs mounted on the elongated member
for supporting the elongated me mber.
3 The examiner may wish to conduct a further search of the prior art to uncover prior art teaching
the use of support legs pivoted to a golfing device (e.g., a golf bag).
Accordingly, the decision of the examiner to reject claims 8 to 10 under 35 U.S.C. § 103
is reversed.
Claims 13 to 15
We will not sustain the rejection of claims 13 to 15 under 35 U.S.C. § 103 as
being unpatentable over Piazza in view of Luther.
We agree with the examiner's determination (answer, p. 5) that it would have
been obvious to one of ordinary skill in the art to add the support legs of Luther to
Piazza's tool in order to support the tool when not in use.2 However, we do not agree
we the examiner's subsequent determination (answer, p. 5) that it would have been
further obvious to one of ordinary skill in the art to have replaced the non-pivoting legs
of Luther with legs that are hingedly attached (i.e., pivotally mounted) in view of the fact
that hinges are well known in the art of supports.3 In our view, the only suggestion for
modifying the non-pivoting legs suggested and taught by Luther in the manner
proposed by the examiner to arrive at the subject matter of claim 13 stems from
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hindsight knowledge derived from the appellant's own disclosure, not the teachings of
the applied prior art. The use of such hindsight knowledge to support an obviousness
rejection under 35 U.S.C. § 103 is, of course, impermissible. See, for example, W. L.
Gore and Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
For the reasons set forth above, the decision of the examiner to reject claim 13,
and claims 14 and 15 dependent thereon, under 35 U.S.C. § 103 is reversed.
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CONCLUSION
To summarize, the decision of the examiner to reject claims 2 to 11, 13 to 15, 21
and 22 under 35 U.S.C. § 103 is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
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Application No. 09/326,996
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ANTONIO R. DURANDO
2929 E BROADWAY BLVD
TUCSON, AZ 85716
JVN/jg