Ex Parte Belanger et al

Board of Patent Appeals and Interferences

Apr 16, 2003

09458926 (B.P.A.I. Apr. 16, 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and is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte BRUNO BELANGER, GARY RIGGS,
ROBERT ZILLIOUX and KAMAL KASSOUF
____________
Appeal No. 2002-1954
Application No. 09/458,926
____________
ON BRIEF
____________
Before STAAB, McQUADE and NASE, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Bruno Belanger et al. appeal from the final rejection of
claims 1 through 36, all of the claims pending in the
application.
THE INVENTION
The invention relates to “a composite baseball bat suitable
for replacing aluminum bats” (specification, page 1).
Representative claims 1 and 30 read as follows:
Appeal No. 2002-1954
Application No. 09/458,926
2
1. A baseball bat comprising:
a core having a barrel portion, handle portion and a
longitudinal axis extending through said core barrel and handle
portions, said handle portion being narrower than said barrel
portion;
continuous first fibers wound around said core barrel
portion at an angle of about 0° to 90° relative to a first plane
normal to the longitudinal axis to provide at least one layer of
first fibers around said core barrel portion;
continuous second fibers wound around said core handle
portion at an angle of about 35° to 55° relative to the first
plane normal to the longitudinal axis to provide at least one
layer of second fibers around said core handle portion; and
a resin impregnated on said first and second fibers.
30. A baseball bat comprising a core continuous fibers
wound around said core to provide at least one layer of said
fibers and a two-part epoxy resin impregnated on said fibers,
said epoxy resin having a Component A comprising a glycidyl ether
of polyhydroxy hydrocarbons and a poly(oxyalkylene) epoxide and a
Component B comprising a poly(oxyalkylene)amine and a penol
having 5 to 15 carbons.
THE PRIOR ART
The references relied on by the examiner to support the
final rejection are:
Bohannan et al. (Bohannan) 4,848,745 July 18, 1989
Baum 5,458,330 Oct. 17, 1995
THE REJECTIONS
Claims 1 and 2 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Bohannan.
Appeal No. 2002-1954
Application No. 09/458,926
1 As recognized by the appellants (see pages 3 and 8 in the
brief), the examiner’s statements of the third rejection (see
page 3 in both the final rejection and answer) should have
referred to claim 35 instead of claim 25.
3
Claims 3 through 5, 7 through 16, 18 through 26, 28 through
34 and 36 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bohannan.
Claims 6, 17, 27 and 35 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bohannan in view of Baum.
Attention is directed to the appellants’ brief (Paper No.
10) and to the final rejection and examiner’s answer (Paper Nos.
8 and 11) for the respective positions of the appellants and the
examiner regarding the merits of these rejections.1
DISCUSSION
I. The 35 U.S.C. § 102(b) rejection
Anticipation is established only when a single prior art
reference discloses, expressly or under principles of inherency,
each and every element of a claimed invention. RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984).
Bohannan discloses a baseball bat 2 having a neck portion 9,
a body portion 11, a knob 40 and a longitudinal axis 10.
Structurally, the bat consists of a filling or core of closed
Appeal No. 2002-1954
Application No. 09/458,926
4
cell foam material 42 and a laminated outer shell 6 of fiber
reinforcement impregnated in a continuous resin matrix. The
fibers are long “continuous” fibers made of material selected
from the group consisting of glass, boron, carbon and aramid (see
column 2, lines 37 through 51), and the matrix is preferably a
thermoplastic resin, and mere preferably a poly(arylene sulfide)
resin (see column 2, lines 24 through 33). As shown in Figure 3,
the outer shell 6 includes at least three layers of fiber
reinforcement extending the length of the bat: at least one layer
of generally circumferentially extending fiber rovings 20 forming
an angle of near 0° with respect to a plane normal to the
longitudinal axis 10, at least one layer of generally
longitudinally extending fiber rovings 24, 32 lying generally in
planes which include the longitudinal axis 10, and at least one
layer of generally helically extending rovings 28 forming an
angle of near 0° to near 90°, and usually between about 20° and
70°, with respect to a plane normal to the longitudinal axis 10
(see column 2, line 59, through column 4, line 2). The bat may
optionally include at least one additional layer of generally
circumferentially extending fiber rovings 36 in the body portion
11 and at least one additional layer of generally longitudinally
Appeal No. 2002-1954
Application No. 09/458,926
5
extending fiber rovings 38 in the neck portion 9 (see column 4,
lines 3 through 26).
Tracking the language employed in claim 1, Bohannan’s
baseball bat comprises a core (filling 42) having a barrel
portion, a handle portion narrower than the barrel portion and a
longitudinal axis extending through the barrel and handle
portions, continuous first fibers (any one of fiber rovings 20,
24, 28 and 32) wound around the core barrel portion at an angle
of about 0° to 90° relative to a first plane normal to the
longitudinal axis to provide at least one layer of first fibers
around the core barrel portion, continuous second fibers (any
different one of fiber rovings 20, 24, 28 and 32) wound around
the core handle portion to provide at least one layer of second
fibers around the core handle portion, and a resin (the
thermoplastic resin) impregnated on the first and second fibers.
The appellants’ contention (see pages 3 through 6 in the
brief) that these limitations are not met because Bohannan’s
fiber layers are sandwiched (laminated) together and extend the
length of the core is unconvincing. Claim 1 does not contain any
limitation requiring the first and second fibers to be in direct
Appeal No. 2002-1954
Application No. 09/458,926
2 Similar arguments advanced by the appellants with respect
to independent claims 12, 23 and 29 (see pages 6 through 8 in the
brief) are likewise unconvincing.
6
contact with the core or the first fibers to the sole fibers
wound around the core barrel portion and the second fibers to the
sole fibers wound around core handle portion.2
On the other hand, the appellants’ related contention (see
pages 3 through 6 in the brief) that Bohannan’s baseball bat does
not meet the limitation in claim 1 requiring the second fibers to
be wound at an angle of about 35° to 55° relative to a plane
normal to the longitudinal axis is persuasive. The most
pertinent of Bohannan’s fibers in this regard are those in the
generally helically extending rovings 28 which form an angle of
near 0° to near 90°, and usually between about 20° and 70°, with
respect to a plane normal to the longitudinal axis. While both
of these ranges fully encompass the significantly narrower 35° to
55° range set forth in the claim, they do not describe it with
the specificity necessary to establish anticipation. At most,
Bohannan presents a rebuttable prima facie case of obviousness
here. See, e.g., In re Malagari, 499 F.2d 1297, 182 USPQ 549
(CCPA 1974) which notes, with implicit approval, “several cases
wherein the prior art taught a broad range and the inventor was
held entitled to claims limited to a narrow range within the
Appeal No. 2002-1954
Application No. 09/458,926
7
broad range by showing criticality of and the existence of
unexpected properties within the claimed range” (499 F.2d at
, 182 USPQ at 553).
Thus, Bohannan does not disclose each and every element of
the baseball bat recited in independent claim 1. Accordingly, we
shall not sustain the standing 35 U.S.C. § 102(b) rejection of
claim 1, and dependent claim 2, as being anticipated by Bohannan.
II. The 35 U.S.C. § 103(a) rejections
Claims 3 through 11 depend from independent claim 1 and
thereby include its recitation of the 35° to 55° fiber angle
range. Like claim 1, independent claim 12, from which claims 13
through 22 depend, independent claim 23, from which claims 24
through 28 depend, and independent claim 29 all recite at least
one fiber angle range significantly narrower than the helical
fiber angle ranges disclosed by Bohannan. The examiner’s
conclusions of obviousness with respect to claims 3 through 29
rest on a finding that the relatively narrow ranges required
thereby are met by Bohannan. For the reasons discussed above in
conjunction with claim 1, this finding is unsound and thus
fatally taints the conclusions of obviousness founded thereon.
Appeal No. 2002-1954
Application No. 09/458,926
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Consequently, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of claims 3 through 5, 7 through 16, 18
through 26, 28 and 29 as being unpatentable over Bohannan or the
standing 35 U.S.C. § 103(a) rejection of claims 6, 17 and 27 as
being unpatentable over Bohannan in view of Baum.
As indicated above, independent claim 30 does not recite any
fiber angle ranges, but does require a specific two-part epoxy
resin. Conceding that Bohannan does not teach this specific
epoxy resin, the examiner nonetheless submits (see pages 2 and 3
in the final rejection) that “resins such as those claimed by the
applicant[s] are commonly known and would have been suitable for
Bohannan’s purpose. Absent some showing of unexpected results
the claimed resins are not considered to further distinguish
the claimed bat” (final rejection, pages 2 and 3). To the extent
that this amounts to a conclusion that it would have been obvious
to substitute the two-part epoxy resin specified in claim 30 for
the resin disclosed by Bohannan, it is completely lacking in
evidentiary support as argued by the appellants (see page 8 in
the brief).
Therefore, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of independent claim 30, and dependent claims
31 through 34 and 36, as being unpatentable over Bohannan.
Appeal No. 2002-1954
Application No. 09/458,926
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As Baum does not cure this evidentiary deficiency in
Bohannan, we shall not sustain the standing 35 U.S.C. § 103(a)
rejection of claim 35, which depends from claim 30, as being
unpatentable over Bohannan in view of Baum.
III. Remand to the examiner
The application is remanded to the examiner to consider
whether Bohannan, which as explained above does not meet the
relatively narrow fiber angle ranges set forth in independent
claims 1, 12, 23 and 29, nevertheless would have rendered such
ranges prima facie obvious within the context of the claimed
subject matter, and, if so, whether Bohannan constitutes an
appropriate starting point for 35 U.S.C. § 103(a) rejections of
claims 1, 12, 23 and 29, and any of their dependent claims. In
making these determinations, the examiner may wish to refer to
MPEP § 2144.05 for a discussion of the obviousness of ranges.
SUMMARY
The decision of the examiner to reject claims 1 through 36
is reversed and the application is remanded to the examiner for
further consideration.
Appeal No. 2002-1954
Application No. 09/458,926
10
REVERSED AND REMANDED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
JPM/gjh
Appeal No. 2002-1954
Application No. 09/458,926
11
MYERS, BIGEL, SIBLEY & SAJOVEC
P.O. BOX 37428
RALEIGH, NC 27627