Ex Parte Baiz

Patent Trial and Appeal Board

May 14, 2013

11436843 (P.T.A.B. May. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte LUIS BAIZ
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Appeal 2011-002910
Application 11/436,843
Technology Center 3700
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Before: PHILLIP J. KAUFFMAN, BRETT C. MARTIN, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Luis Baiz (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-4, 6-8, 12-15, and 17-19. Claims 5 and 16
were canceled and claims 9-11 were withdrawn from consideration. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellant’s invention is directed to “interchangeable golf accessory
devices for attachment to a golf bag.” Spec., p. 1, l. 3. Claim 1, reproduced
below with emphasis added, is illustrative of the claimed subject matter:
1. A system for interchangeable attachment of golf
accessories to a golf bag, comprising:
a plurality of pre-sized hook-and-loop fasteners, each
individual pre-sized hook-and-loop fastener having a hook
portion and a loop portion; and
at least two golf accessory storage elements, each storage
element having an attachment surface for affixation of the hook
portion or the loop portion of the individual pre-sized hook-and
loop fastener, wherein a first golf accessory storage element is a
golf ball holder, the golf ball holder comprising a wall defining
an interior storage space for a plurality of golf balls, the wall
having a front surface and an opposing rear surface, the rear
surface comprising the attachment surface for affixation of the
hook portion or the loop portion of the individual pre-sized
hook-and-loop fastener, the wall further having a top surface
and an opposing bottom surface, a first side surface and an
opposing second side surface, the wall further defining an
opening through the front surface into the storage space, the
opening sized to allow passage of a golf ball therethrough, the
wall further defining a first aperture in the top surface and a
second aperture in the bottom surface, the first and second
apertures sized to prevent passage of a golf ball and to permit
passage of an urging implement for urging a golf ball from the
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interior storage space through the opening, and wherein at least
one second golf accessory storage element is selected from the
group consisting of: a sunglasses holder, a brush and brush
holder combination, a golf tee holder, a golf glove holder, and
a combination thereof.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Brown
Norwell
Stack
Carr
Antczak
US 4,350,194
US 4,464,072
US 4,850,483
US 4,951,857
US 5,934,530
Sep. 21, 1982
Aug. 7, 1984
Jul. 25, 1989
Aug. 28, 1990
Aug. 10, 1999

THE REJECTIONS ON APPEAL
The Examiner made the following rejections:
1. Claims 1-3, 8, 12-14, and 19 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Brown and Stack. Ans. 3.
2. Claims 4 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brown, Stack, Carr, and Norwell. Ans. 9.
3. Claims 6, 7, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Brown, Stack, and Antczak. Ans. 10.

ANALYSIS
Obviousness over Brown and Stack
Appellant argues the claims subject to the first ground of rejection as a
group. App. Br. 3-5. We select claim 1 as representative. See
37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner finds that Brown
discloses all limitations of claim 1, “except does not expressly disclose a ball
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holder with the specific wall and aperture structure claimed by applicant.”
Ans. 4. The Examiner then finds that Stack discloses the claimed golf ball
holder including the claimed opening and first and second apertures. Id.
With specific regard to the first and second apertures at issue, the Examiner
finds that “the first and second apertures [are] sized to prevent passage of a
golf ball.” Ans. 5 (citing to Stack Fig. 2, col. 2, ll. 15-20). Appellant’s sole
argument is to attack the Examiner’s interpretation of the claim term
“prevent” as improper. See App. Br. 4-5, Reply Br. 1-2.
Appellant argues that the Examiner’s “interpretation is contrary to the
clear meaning of the term ‘prevent’ and ignores the teachings of both the
Stack reference and the present specification.” App. Br. 4. Appellant
further points out that “[t]he Stack reference clearly intends that a user insert
golf balls through a top aperture of the golf ball holder.” Id. According to
Appellant, because Stack allows passage through the aperture in the top
surface, “Stack does not prevent passage of a golf ball, on the contrary, the
aperture described in Stack permits passage of a golf ball.” Id. We disagree.
As the Examiner correctly points out, “[i]n turning to the specification
of appellant’s invention to determine the meaning of the term ‘prevent’,
there is no special definition set forth.” Ans. 11. The Examiner also
correctly finds that Stack’s
top aperture is sized to prevent passage of a golf ball because an
external force is required to deform the aperture (via pressure
exerted by the ball on the perimeter of the opening) in order that
[the] golf ball can pass through. The default size of the top
aperture of the Stack reference is sized to prevent passage of
golf balls, absent deformation caused by force applied by the
user.
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Id.
In this instance, both the Appellant and the Examiner are
correct in some sense because Stack actually discloses a flexible top
aperture that allows for multiple states. See Stack col. 2, ll. 14-19.
Appellant is correct that the top opening of Stack, in its flexed or
deformed state, permits passage of a golf ball, but such passage
requires force to be applied because the aperture, in its unflexed or
undeformed state (according to the Examiner as noted supra, “default
size”), is slightly smaller than the diameter of a golf ball. Id.
Appellant’s argument, however, is not dispositive of the issue as to
whether the top aperture also prevents passage of a golf ball. We find
Appellant’s assertion that “[i]t is clear from the specification that the
aperture in the top surface of the golf ball holder of Stack does not
prevent passage of a golf ball” to be inaccurate, or at least accurate
only as far as it applies to Stack’s flexed or deformed state. See Reply
Br. 2.
As noted supra, until force is applied, the top aperture in Stack
is configured to prevent passage of a golf ball. Appellant appears to
argue that the language at issue requires mutual exclusivity of
permitting and preventing. We see nothing in the claim language at
issue that requires, as Appellant argues, that the claimed apertures
prevent passage of a golf ball to the exclusion of also permitting
passage of a golf ball. Stack teaches a top aperture that, at least in its
unflexed/undeformed/default state, prevents passage of a golf ball as
claimed in claim 1. Accordingly, we sustain the Examiner’s rejection
of claims 1-3, 8, 12-14, and 19 as unpatentable over Brown and Stack.
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Obviousness over Brown, Stack, Carr, and Norwell
Appellant relies on the arguments presented for the patentability of
independent claims 1 and 12 alone in rebutting the various rejections of
dependent claims 4 and 15. App. Br. 5. The disposition of the rejections of
claims 4 and 5, therefore, turns on our analysis of the rejection of claim 1.
Accordingly, we sustain the Examiner’s rejection of claims 4 and 5.
Obviousness over Brown, Stack, and Antczak
Appellant also relies on the arguments presented for the patentability
of independent claims 1 and 12 alone in rebutting the various rejections of
dependent claims 6, 7, 17, and 18. App. Br. 5. The disposition of the
rejections of these claims, therefore, turns on our analysis of the rejection of
claim 1. Accordingly, we sustain the Examiner’s rejection of claims 6, 7,
17, and 18.

DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claims 1-4, 6-8, 12-15, and 17-19.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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