Ex Parte Bibby

Patent Trial and Appeal Board

May 11, 2017

12716576 (P.T.A.B. May. 11, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/716,576 03/03/2010 Charlie Henry Bibby BIB1.PAU.01 1010
97066 7590 05/15/2017
Innovation Capital Law Group, LLP
19800 MacArthur Blvd.
Suite 270
Irvine, CA 92612
EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
05/15/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
processing @ icaplaw .com
vlin @ ic aplaw. com
eofficeaction @ appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLIE HENRY BIBBY
Appeal 2015-005602
Application 12/716,576
Technology Center 3700
Before WILLIAM A. CAPP, GEORGE R. HOSKINS, and
BRANDON J. WARNER, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 7, 8, 10, 13, and 21—28. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2015-005602
Application 12/716,576
THE INVENTION
Appellant’s invention relates to balls for sports and recreation.
Spec. 1. Claim 1, reproduced below, is illustrative of the subject matter on
1. A basketball configured to be dribbled by hand,
comprising:
an inflatable bladder having an inner surface and an outer
surface, wherein the inflatable bladder is spherical when fully
inflated;
a first plurality of skins, each comprising a first material
contiguous to the outer surface of the inflatable bladder and a
solid anomaly; and
a second plurality of substantially smooth skins without
anomalies, each skin in the second plurality comprising the first
material contiguous to the outer surface of the inflatable
bladder;
wherein the first plurality of skins and the second plurality
of skins are configured in an alternating arrangement such that
each skin in the first plurality is disposed in between a pair of
skins in the second plurality, and each skin in the second
plurality is disposed in between a pair of skins in the first
plurality.
The Examiner relies upon the following as evidence in support of the
appeal.
THE REJECTIONS
rejections:
Riddell
Nally
Zheng
US 2,129,238
US 3,968,967
US 2006/0063623 A1
US 2008/0305900 A1
US 2011/0207564 A1
Sept. 6, 1938
July 13, 1976
Mar. 23, 2006
Dec. 11,2008
Aug. 25, 2011
Geisendorfer
Goodall
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The following rejections are before us for review:1
1. Claims 21—25, 27, and 28 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
2. Claims 1, 7, 8, 10, 13, and 21—28 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Geisendorfer.
3. Claims 1, 7, 8, 10, 13, and 21—28 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Geisendorfer and Nally.
4. Claims 1, 7, 8, 13, 21, 22, 24, and 25 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Goodall.
5. Claims 1, 7, 8, 13, 21, 22, and 24—28 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Zheng and Goodall.
6. Claims 1, 7, 8, 10, 13, and 21—28 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Riddell and Zheng.
OPINION
35 U.S.C. § 112, second paragraph
Rejection of Claims 21—25, 27, and 28
The Examiner rejected claims 21—25, 27, and 28 under 35 U.S.C.
§112, second paragraph, as lacking antecedent basis and as being
incomplete for omitting essential structural cooperative relationships of
elements. Final Action 2. For example, claim 21 depends from claim 1 and
1 Claims 1, 7, 21, and 22 are “objected to” under 35 U.S.C. § 101 as being
substantial duplicates of claims 8, 13, 24, and 25 and, therefore,
unpatentable on the grounds of statutory double patenting. Also, claim 26 is
“objected to” under 35 U.S.C. § 101 as being a substantial duplicate of
claims 10 and 23 and, therefore, unpatentable on the grounds of statutory
double patenting. Final Action 3. In the absence of a ground of rejection,
specifically stated as such, we decline to review these objections. See Ex
Parte Frye, 94 U.S.P.Q.2d 1072, 1078-79 (BPAI 2010); MPEP § 1201.
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adds the limitation: “wherein the second solid anomaly comprises a same
shape as the first solid anomaly.” Claims App. Claim 1 contains a
limitation directed to “a solid anomaly,” but not to any “second” solid
anomaly. Id.
Appellant argues that a new set of amended claims was filed after the
filing of the Notice of Appeal leading to the instant appeal. Appeal Br. 39.
Appellant contends that the amended claims cure any deficiency in the
claims under final rejection with regard to lack of antecedent basis. Id.
at 39-40.
Notwithstanding Appellant’s filing of an after-final amendment, the
Examiner issued an Advisory Action informing Appellant that the proposed
amendment will not be entered. See Advisory Action dated October 17,
2014. Appellant assigns error to the Examiner’s decision not to enter the
proposed amendment. Appeal Br. 40.
The Examiner’s refusal to enter an amendment is reviewable by
petition under 37 C.F.R. § 1.181 and, consequently, is not within the
jurisdiction of the Board. See Ex Parte Frye, 94 U.S.P.Q.2d 1072 (BPAI
2010).
The line of demarcation between appealable matters for the
Board of Patent Appeals and Interferences (Board) and
petitionable matters for the Director of the U.S. Patent and
Trademark Office (Director) should be carefully observed. The
Board will not ordinarily hear a question that should be decided
by the Director on petition, and the Director will not ordinarily
entertain a petition where the question presented is a matter
appealable to the Board.
MPEP § 1201. In view of the foregoing, the matter as to whether the
Examiner should have entered Appellant’s proposed amendment is not
before us for review as part of the instant appeal.
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Application 12/716,576
Appellant has not shown error in the Examiner’s decision to reject the
unamended claims 21—25, 27, and 28 under 35 U.S.C. § 112, second
paragraph and, accordingly, we sustain the Examiner’s rejection of these
claims as indefinite.
Anticipation of Claims 1, 7, 8, 10, 13, and 21—28
by Geisendorfer
Claims 1, 7, 21, 22, and 26—28
Appellant argues claims 1 and 26 together and does not separately
argue for the patentability of claims 7, 21, 22, 27, and 28 that depend from
either claim 1 or claim 26. Appeal Br. 10—14. For purposes of disposition
of this appeal, it is expedient to treat the rejection of these claims together.
The Examiner finds that Geisendorfer contains all of the limitations of
claims 1 and 26. Final Action 4—5, 6—7. In particular, the Examiner finds
that Geisendorfer’s ribs (113) correspond to the “solid anomaly” of claims 1
and 26. Id. at 5—6.
Appellant argues that Geisendorfer’s ribs 113 do not constitute a
“solid anomaly” within the meaning of claims 1 and 26. Appeal Br. 10—11.
Appellant construes a “solid anomaly” as a structure that forms a prominent
bulge resembling a bump or protuberance on the outer surface of a
basketball, capable of causing an erratic bounce. Id. at 11.
The Examiner responds by relying on a dictionary definition of
“anomaly” as an “oddity, peculiarity, abnormality, or inconsistency.”
Ans. 19. The Examiner considers ribs 113 of Geisendorfer as such an
anomaly. Id. However, the Examiner’s reliance on an abstract dictionary
definition is of little help to us in deciding this appeal, as the Examiner
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provides no analysis as to what constitutes “normal” as the basis of a
comparison from which an “abnormality” can be analyzed.2
Determining whether claims are anticipated involves a two-step
analysis. In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). The
first step involves construction of the claims at issue. Id. “During
examination, ‘claims ... are to be given their broadest reasonable
interpretation consistent with the specification, and . . . claim language
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. Id. (quoting In re Am. Acad, of Sci. Tech Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004)). The second step of an anticipation
analysis involves comparing the claims to prior art. Id. A prior art reference
anticipates a patent claim under 35 U.S.C. § 102 if it discloses every claim
limitation. Id.
Under the broadest reasonable interpretation standard, claim terms are
given their ordinary and customary meaning as would be understood by one
2 Our reviewing court counsels against over reliance on dictionary
definitions in construing claim terms.
The main problem with elevating the dictionary to such
prominence is that it focuses the inquiry on the abstract
meaning of words rather than on the meaning of claim terms
within the context of the patent. Properly viewed, the “ordinary
meaning” of a claim term is its meaning to the ordinary artisan
after reading the entire patent. Yet heavy reliance on the
dictionary divorced from the intrinsic evidence risks
transforming the meaning of the claim term to the artisan into
the meaning of the term in the abstract, out of its particular
context, which is the specification.
Phillips v. AWHCorp., 415 F.3d 1303, 1321 (Fed. Cir. 2005). The Phillips
Court went to caution us that indiscriminate reliance on dictionary
definitions can produce absurd results. See id. at 1322.
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Application 12/716,576
of ordinary skill in the art in the context of the entire disclosure. In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We have been
repeatedly admonished by the Federal Circuit that a claim construction
during examination cannot be so broad as to be unreasonable.
“[t]he protocol of giving claims their broadest reasonable
interpretation . . . does not include giving claims a legally
incorrect interpretation.” In re Skvorecz, 580 F.3d 1262, 1267
(Fed. Cir. 2009); see also In re Suitco Surface, Inc., 603 F.3d
1255, 1260 (Fed. Cir. 2010) (“The broadest-construction rubric
coupled with the term ‘comprising’ does not give the PTO an
unfettered license to interpret claims to embrace anything
remotely related to the claimed invention.”). Rather, “claims
should always be read in light of the specification and teachings
in the underlying patent.” Suitco, 603 F.3d at 1260. Even
under the broadest reasonable interpretation, the Board’s
construction “cannot be divorced from the specification and the
record evidence,” In re NTP, Inc., 654 F.3d 1279, 1288 (Fed.
Cir. 2011), and “must be consistent with the one that those
skilled in the art would reach,” In re Cortright, 165 F.3d 1353,
1358 (Fed. Cir. 1999). A construction that is “unreasonably
broad” and which does not “reasonably reflect the plain
language and disclosure” will not pass muster. Suitco, 603 F.3d
at 1260.
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015);
see also In re Man Machine Interface Tech. LLC, 822 F.3d 1282, 1286—87
(Fed. Cir. 2016) (Board’s broad construction deemed unreasonable in view
of the specification’s clear teaching).
Appellant’s invention is directed to a ball that has a solid anomaly.
Spec. 2. Appellant explains that “balls are generally spherical and are thus
predictable in the manner in which they bounce and react to force.” Id. at 1.
Appellant further explains that it is desirable to create a ball that bounces in
an erratic manner. Id. Among other things, erratic bouncing may be
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desirable in developing a user’s motor skills. Id. The solid anomaly causes
the ball to bounce erratically when the ball is bounced upon the solid
anomaly. Id. at 2. The Specification consistently uses “anomaly” in the
context of creating a ball that bounces erratically. Thus, the Specification,
taken in context and when taken as a whole, associates “anomaly” with
erratic bouncing.3
Geisendorfer is directed to a ball that has a plurality of ribs or other
surface texture that provides an improved tactile feel for a player.
Geisendorfer | 6. The surface texture is used to facilitate a player observing
and ascertaining the rotational speed of the ball during a throw or shot. Id.
There is no indication that Geisendorfer’s ball bounces erratically when it is
bounced on ribs 113. See Geisendorfer 135 (ball produces a true bounce).
The Examiner’s findings to the contrary (see Ans. 20) are not supported by a
preponderance of the evidence.
The Examiner errs in finding that Geisendorfer has a solid anomaly
within the meaning of claims 1 and 26. Accordingly, we do not sustain the
Examiner’s anticipation rejection of claims 1, 7, 21, 22, and 26—28.
Claims 8, 10, 13, and 23—25
Claim 8 differs from claim 1 primarily in that it contains a limitation
directed to a “solid protrusion” rather than a “solid anomaly.” Claims App.
3 This decision should not be construed as endorsing Appellant’s proposed
construction of anomaly. See Appeal Br. 12 (“single, stand-alone,
preferably large, at least partially spherical structure that forms a prominent
bulge on a basketball skin resembling a large bump or protuberance”). For
purposes of this appeal, it is sufficient to note that “solid anomaly” cannot be
construed broadly enough to encompass Geisendorfer’s ribs 113.
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The Examiner finds that Geisendorfer’s ribs 113 correspond to the claimed
“solid protrusion.” Final Action 5.
In light of the teaching of Appellant’s Specification, a person of
ordinary skill in the art would understand that a “solid protrusion” is
something that causes a ball, when bounced thereon, to bounce erratically.
Thus, for essentially the same reasons discussed in connection with claim 1
above, we do not sustain the anticipation rejection of claim 8, nor do we
sustain the rejection of claims 10, 13, and 23—25 that depend therefrom.
Unpatentability of Claims 1, 7, 8, 10, 13, and 21—28
over Geisendorfer and Nally
Given the similarity of issues among the various rejected claims under
this ground of rejection, we deem it expedient to discuss all of the rejected
claims together. The Examiner relies on Nally as teaching a game ball with
protrusions that result in unpredictable rebounding of the ball. Final
Action 7. The Examiner concludes that it would have been obvious to a
person of ordinary skill in the art at the time the invention was made to
combine Geisendorfer and Nally to achieve the claimed invention. Id. at 8.
According to the Examiner, a person of ordinary skill in the art would have
done this to provide an intended use of unpredictable rebounding of a game
ball. Id.
Appellant argues that a person of ordinary skill in the art would not
have combined Geisendorfer and Nally in the manner proposed by the
Examiner. Appeal Br. 38. We agree.
In Appellant’s invention, the anomaly that produces the erratic
bouncing is disposed on the ball. See e.g., Fig. 3. In Nally, the
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protuberances that cause erratic or unpredictable bouncing are disposed on a
surface against which a game ball is bounced. See Nally, Figs. 1 and 2.
The Examiner’s analysis in both the final rejection and the Answer are
abbreviated and conclusory in nature. Final Action 7—8, Ans. 23. The
Examiner gives little or no articulated reasoning with rational underpinning
as to why a person of ordinary skill in the art would have found it obvious to
relocate Nally’s protuberances from a wall or floor surface to Geisendorfer’s
ball to achieve the claimed invention. See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006); KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The Examiner’s reasoning for making the proposed combination is
not sufficient to sustain the rejection. Consequently, we do not sustain the
unpatentability rejection of claims 1, 7, 8, 10, 13, and 21—28 over
Geisendorfer and Nally.
Unpatentability of Claims 1, 7, 8, 13, 21, 22, 24, and 25
over Goodall
Appellant argues independent claims 1 and 8 together and does not
separately argue for the patentability of dependent claims 7, 13, 21, 22, 24,
and 25. Appeal Br. 18—21. We select claim 1 as representative. See 37
C.F.R. § 41.37(c)(l)(iv) (2016).
The Examiner finds that Goodall discloses the invention substantially
as claimed except for placing anomalies in an alternating pattern on first and
second skin portions. Final Action 9. The Examiner considers it obvious to
modify Goodall to exhibit the pattern of anomalies claimed by Appellant as
a mere variation. Id.
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Appellant traverses the rejection primarily by attempting to swear
behind Goodall. Appeal Br. 18—21.4 Appellant supplies a Declaration of
Charlie Henry Bibby (the “Bibby Dec.”) in support of the attempt to swear
behind. Mr. Bibby testifies that he conceived of an invention referred to as
“Ball With Anomalies” prior to September of 2007. Bibby Dec. | 5. Mr.
Bibby then testifies that he conceived of an invention, illustrated in Exhibit
“A” to his declaration, at least as early as June of 2008. Id. 1 6. Mr. Bibby
then testifies that in June of 2008, he “started” developing “prototypes of the
basketball.” Id. 17. He then testifies that by October of 2009, he “refined
the initial prototypes” and “came up” with embodiments that are suitable for
mass production. Id. He testifies that he contacted a patent attorney in
December of 2009 who prepared a draft patent application on February 23,
2010. Id. | 8. He then testifies that he received a revised draft of the
application on February 25, 2010, which he approved. Id. 19. The instant
application was thereafter filed with the PTO on March 3, 2010. Mr. Bibby
concludes that:
The evidence has established that I conceived my invention and
reduced it to practice at least as early as September of 2007,
which is a date earlier than Goodall’s effective date of
February 25, 2010.
Id. 110.
The Examiner responds that the Bibby Declaration is ineffective to
establish actual or constructive reduction to practice in a manner that
antedates Goodall. Ans. 21.
4 To the extent Appellant’s brief also attempts to patentably distinguish
Goodall’s invention from the claimed invention on the basis of claiming an
“alternating arrangement” (Id. at 20), we find this argument unpersuasive.
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A reduction to practice can be either an actual reduction to practice or
constructive reduction to practice. Cooper v. Goldfarb, 154 F.3d 1321, 1327
(Fed. Cir. 1998). In order to establish an actual reduction to practice, the
inventor must prove that he constructed an embodiment or performed a
process that met all the limitations of the claim and that he determined that
the invention would work for its intended purpose. See UMC Elecs. Co. v.
United States, 816 F.2d 647, 652 (Fed. Cir. 1987) (“[TJhere cannot be a
reduction to practice of the invention . . . without a physical embodiment
which includes all limitations of the claim.”). Furthermore, in order to
establish an actual reduction to practice, an inventor’s testimony must be
corroborated by independent evidence. Cooper, 154 F.3d at 1330; see also
Knorrv. Pearson, 671 F.2d 1368, 1373 (CCPA 1982). A “rule of reason”
analysis is applied to determine whether an inventor’s testimony regarding
reduction to practice has been sufficiently corroborated. Cooper, 154 F.3d
at 1330. The rule requires an evaluation of all pertinent evidence when
determining the credibility of an inventor’s testimony. Id.
We agree with the Examiner that Mr. Bibby’s Declaration and
accompanying exhibit fall short of satisfying the requirements for an actual
reduction to practice prior to the effective filing date of Goodall. The only
extrinsic evidence submitted by Appellant to support Mr. Bibby’s testimony
is a series of undated drawings captioned “Bibby Program Conceptual
Development.” Bibby Dec., Ex. A. There is no independent, extrinsic
evidence corroborating Mr. Bibby’s testimony that a physical embodiment
that includes all limitations of claim 1 (or any other claim) was constructed
on or before the February 25, 2010, filing date of Goodall. In short, there is
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no independent, extrinsic evidence to corroborate the testimony in
paragraph 7 of Mr. Bibby’s Declaration.
With respect to constructive reduction to practice, even if we were to
accept Mr. Bibby’s testimony that he conceived of the invention prior to the
filing date of Goodall, that leaves the question of whether Bibby exercised
diligence during the period of February 25, to March 3, 2010.5 Mr. Bibby
testifies that he approved of a draft of the patent application on February 25,
2010. However, Mr. Bibby’s testimony regarding diligence in the
constructive reduction to practice is entirely uncorroborated. Precedent
requires that an inventor’s testimony concerning his diligence be
corroborated. See Brown v. Barbacid, 436 F.3d 1376, 1380 (Fed. Cir. 2006).
The corroboration requirement relates to a concern that inventors may
remember facts favorable to their case by the lure of protecting their patent.
See Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572 (Fed. Cir. 1996).
If we were to credit Bibby’s uncorroborated testimony as reliable and
true (we do not), we would be inclined to find that a mere six day period
between reviewing and approving a draft application and an actual filing
date by an attorney is consistent with the notion of reasonable diligence.
However, this is a matter where we would reasonably expect extrinsic,
corroborating evidence to be readily available. In the absence of any
corroborating evidence to substantiate Mr. Bibby’s testimony that he
reviewed and approved the draft patent application only six days before the
5 “The basic inquiry is whether, on all of the evidence, there was reasonably
continuing activity to reduce the invention to practice. There is no rule
requiring a specific kind of activity in determining whether the applicant was
reasonably diligent in proceeding toward an actual or constructive reduction
to practice.” Brown v. Barbacid, 436 F.3d 1376, 1380 (Fed. Cir. 2006).
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filing thereof by his patent attorney, we are not persuaded that Appellant has
satisfactorily shown that reasonable diligence toward constructive reduction
to practice was exercised during the period from February 25 to March 3,
of 2010.
Thus, for purposes of the instant appeal, we will treat Goodall as prior
art to the claimed invention. With that in mind, we are persuaded that the
Examiner has made out a prima facie case of unpatentability of claim 1 over
Goodall. In light of the substantial similarity between the disclosures of
Goodall and Appellant’s claim 1, Appellant fails to rebut the Examiner’s
prima facie case of obviousness on the merits with either evidence or
persuasive technical reasoning.6
In view of the foregoing, we sustain the unpatentability rejection of
claims 1, 7, 8, 13, 21, 22, 24, and 25 over Goodall.
Unpatentability of Claims 1, 7, 8, 13, 21, 22, and 24—28
over Zheng and Goodall
Claims 1, 7, 8, 13, 21, 22, 24, and 25
Appellant’s argument for patentability of these claims revolves around
the swearing-behind argument that we considered and found unpersuasive
with respect to the rejection of claim 1 over Goodall previously discussed.
Appeal Br. 21—24. We find that argument equally unpersuasive here.
Accordingly, we sustain the Examiner’s unpatentability rejection of
claims 1, 7, 8, 13,21, 22, 24, and 25 over Zheng and Goodall.
6 In the event that Appellant decides to continue prosecution, our decision
herein is without prejudice to Appellant presenting additional and
corroborating evidence to the Examiner in an effort to establish the requisite
diligence in reducing the invention to practice.
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Claims 26—28
Claim 26 is an independent claim that is substantially similar in scope
to claim 1. Claims App. Appellant argues claims 1 and 26 under the instant
ground of rejection together. Appeal Br. 21—24. Appellant’s argument for
patentability revolves around the swearing-behind issue that we considered
and found unpersuasive with respect to the rejection of claim 1 over Goodall
previously discussed. We find that argument equally unpersuasive here.
We are not apprised of Examiner error and, consequently, sustain the
unpatentability rejection of claims 26—28 over Zheng and Goodall.
Unpatentability of Claims 1, 7, 8, 10, 13, and 21—28
over Riddell and Zheng
Given the issues presented, we deem it expedient to treat the rejection
of claims 1, 7, 8, 10, 13, and 21—28 together. Appellant traverses the
Examiner’s rejection over Riddell and Zheng by arguing against the
combinability of the two references. Appeal Br. 24—34. In response, the
Examiner states that Riddell discloses all claim limitations except for a
spherical bladder. Ans. 23. The Examiner modifies Riddell with Zheng to
derive a ball of any suitable shape. Id.
Riddell discloses a football with elongated, bead-like, axially
extending ridges or ribs on the surface of the ball. Riddell, col. 2,11. 33—53,
Figs. 1—3. The ridges are advantageous when performing forward pass plays
as they facilitate a player’s grip on the ball so that a spin (or spiral) may be
imparted to the ball in flight. Id. col. 3,11. 2—8. Zheng is a play ball for
young children, babies and toddlers. Zheng | 7. Zheng’s ball exhibits a
plurality of obstructors 15 that function to prevent the ball from rolling very
far after it has been kicked or thrown. Id. ]Hf 15—16. The number, size,
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shape, and arrangement of the obstructors can be varied depending on the
desired results. Id. 118. However, an exemplary embodiment has a
height H of each obstructor that is greater than 10 percent of the diameter D
of body 100. Id. 117. Furthermore, Zheng teaches that “the number, size,
shape and arrangement of the obstructors 15 all relate to how much
impediment is imparted on a rolling ball.” Id. 118.
The existence of a reason for a person of ordinary skill in the art to
modify a prior art reference is a question of fact. See In re Constr. Equip.
Co., 665 F.3d 1254, 1255 (Fed. Cir. 2011). The mere fact that the prior art
may be modified in the manner suggested by the Examiner does not
necessarily make the modification obvious. In reFritch, 972 F.2d 1260,
1266 (Fed. Cir. 1992).
Riddell has features on the external surface of a football that are
designed to affect the flight characteristics of a thrown ball. Zheng has
features on the external surface of a ball designed to inhibit the ball from
rolling away from an infant at play. We are not persuaded that a person of
ordinary skill in the art, armed with the teachings of Riddell and Zheng,
would be led in the direction of adding “anomalies” to the external surface
of a basketball to affect its bounce characteristics when being dribbled.
For the foregoing reasons, we do not sustain the Examiner’s
unpatentability rejection of claims 1, 7, 8, 10, 13, and 21—28 over Riddell
and Zheng.
DECISION
The decision of the Examiner to reject claims 21—25, 27, and 28 under
35 U.S.C. § 112, second paragraph, is AFFIRMED.
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The decision of the Examiner to reject claims 1, 7, 8, 10, 13, and 21—
28 under 35 U.S.C. § 102(b) as anticipated by Geisendorfer is REVERSED.
The decision of the Examiner to reject claims 1, 7, 8, 10, 13, and 21—
28 as unpatentable over Geisendorfer and Nally is REVERSED.
The decision of the Examiner to reject claims 1, 7, 8, 13, 21, 22, 24,
and 25 as unpatentable over Goodall is AFFIRMED.
The decision of the Examiner to reject claims 1, 7, 8, 10, 13, and 21,
22, and 24—28 as unpatentable over Zheng and Goodall is AFFIRMED.
The decision of the Examiner to reject claims 1, 7, 8, 10, 13, and 21—
28 as unpatentable over Riddell and Zheng is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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