Ex parte BORDEN et al.

Board of Patent Appeals and Interferences

Apr 8, 1998

08459417 (B.P.A.I. Apr. 8, 1998)

Application for patent filed June 2, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte FRED L. BORDEN, JAMES F. MANSFIELD and
JERRYLIN D. EDWARDS
__________
Appeal No. 97-4004
Application 08/459,4171
__________
ON BRIEF
__________
Before MEISTER, FRANKFORT and McQUADE, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Fred L. Borden, James F. Mansfield and Jerrylin D. Edwards
(the appellants) appeal from the final rejection of claims 1-11
and 15-26, the only claims remaining in the application.
Appeal No. 97-4004
Application 08/459,417
2
We AFFIRM-IN-PART.
The appellants’ invention pertains to a bowling apparatus, a
method of bowling in low ambient light and a method of training a
bowler. Independent claims 1, 15 and 24 are further illustrative
of the appealed subject matter and read as follows:
1. A bowling apparatus for bowling in low ambient light,
said bowling apparatus comprising:
a room containing a plurality of fluorescent
bowling lanes wherein at least a portion of a
surface of each said fluorescent bowling lane is
fluorescent;
a rack of bowling pins positioned in each said
fluorescent bowling lane, at least one of said
pins of said rack having at least a partially
fluorescent exterior surface;
a bowling ball; and
a means for subjecting said room and each said
fluorescent bowling lane and said rack of pins to
ultraviolet light.
15. A method of bowling in low ambient light in a room
containing a plurality of fluorescent bowling lanes, said
method comprising:
providing at least one bowling pin having at least
a partially fluorescent exterior of a rack of
bowling pins for each said fluorescent bowling
lane;
coating at least portions of each said fluorescent
bowling lane with fluorescent material; and
illuminating said room and each said fluorescent
Appeal No. 97-4004
Application 08/459,417
3
bowling lane and each said rack of pins with
ultraviolet light, whereby said fluorescent
surfaces of said pins and each said fluorescent
bowling lane will be illuminated.
24. A method of training a bowler comprising the steps of:
supplying fluorescent material on a plurality of
positions on the bowler;
minimizing ambient light in the bowling environ-
ment; and
illuminating the bowling environment with ultra-
violet light, whereby the bowler's form may be
easily viewed and analyzed through illumination of
said fluorescent material.
The references relied on by the examiner are:
Clapham 3,301,558 Jan. 31, 1967
Davidson et al. 3,917,264 Nov. 04, 1975
Panosh 3,971,560 Jul. 27, 1976
Claims 1-11 and 15-26 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Clapham in view of Davidson
and Panosh.
The examiner’s rejection is explained on pages 3 and 4 of
the answer. The arguments of the appellants and examiner in
support of their respective positions may be found on pages 6-29
of the brief, pages 2-9 of the reply brief and pages 4-9 of the
Appeal No. 97-4004
Application 08/459,417
On January 12, 1998, the appellants also filed a paper styled2
“SUPPLEMENTAL REPLY BRIEF TO EXAMINER’S ANSWER” (Paper No. 19). This paper,
however, contains no arguments pertaining to the rejection before us for
consideration. Instead, it is directed to the propriety of the examiner’s
refusal to consider the reference to Perrier which was cited in the
Information Disclosure Statement filed on April 12, 1996 (Paper No. 7). Even
if we were to agree with the appellants that they nominally complied with the
provisions of 37 CFR § 1.97 in filing this Information Disclosure Statement,
we must point out that under 35 U.S.C. § 134 and 37 CFR 1.191, appeals to the
Board of Patent Appeals and Interferences are taken from the decision of the
primary examiner to reject claims. We exercise no general supervisory power
over the examining corps and decisions of primary examiners to deny entry of
papers is not subject to our review. See Manual of Patent Examining Procedure
(MPEP) §§ 1002.02(c) and 1201 (6th ed., Rev. 3, July 1997); cf In re Mindick,
371 F.2d 892, 894, 152 USPQ 566, 568 (CCPA 1967) and In re Deters, 515 F.2d
1152, 1156, 185 USPQ 644, 648 (CCPA 1975). Thus, the relief sought by
appellants would have properly been presented by a petition to the Commisioner
under 37 CFR § 1.181.
4
answer.2
OPINION
We have carefully reviewed the appellants’ invention as
described in the specification, the appealed claims, the prior
art applied by the examiner and the respective positions advanced
by the appellants in the brief and reply brief, and by the
examiner in the answer. As a consequence of this review, we will
sustain the rejection of claims 1, 2, 5, 6, 15, 16, 18 and 20.
We will not, however, sustain the rejection of claims 3, 4, 7-11,
17, 19 and 21-26.
Considering first the rejection of claims 1, 2, 5, 6, 15,
16, 18 and 20, the appellants note various alleged deficiencies
of the references individually and urge that the examiner has
Appeal No. 97-4004
Application 08/459,417
5
relied upon a hindsight reconstruction of the references to
Clapham, Davidson and Panosh in arriving at a conclusion of
obviousness. We disagree. From our perspective, there is no
need to resort to the appellants' disclosure for a suggestion to
combine the relied on prior art. In order to establish
obviousness under § 103 it is not necessary that the cited
references must specifically suggest making the claimed
combination. See, e.g., B.F. Goodrich Co. V. Aircraft Braking
Systems Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed.
Cir. 1996) and In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500,
1502 (Fed. Cir. 1988). Instead, the issue of obviousness is not
only determined by what the references expressly state but also
is determined by what they would fairly suggest to those of
ordinary skill in the art. See, e.g., In re Delisle, 406 F.2d
1386, 1389, 160 USPQ 806, 808-809 (CCPA 1969) and In re Bozek,
416 F.2d 1385, 1390, 163 USPQ 545, 549-50
(CCPA 1969). See also In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981):
The test for obviousness is not whether the features of
a secondary reference may be bodily incorporated into
the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is
what the combined teachings of the references would
have suggested to those of ordinary skill in the art.
Appeal No. 97-4004
Application 08/459,417
6
As a broad proposition, each of the three references relied
on by the examiner is directed to a sporting apparatus and method
that utilizes fluorescent markings or elements in conjunction
with radiant energy (e.g., ultraviolet light) to provide visible
enhancement to the sport being played (i.e., bowling in the case
of Clapham, billiards in the case of Davidson and table tennis in
the case of Panosh). More specifically, Clapham teaches a
bowling apparatus and method wherein a selectively actuated ball
path indicator displays to a bowler the proper path along which
the ball should be rolled in order to knock down the maximum
number of pins. Although fluorescent lamps 26 provide a
preponderant proportion of the total ambient light falling on the
pin deck and on the bowling pins standing thereon (see column 2,
lines 61-63), Clapham teaches that fluorescent images 148 applied
directly to the pin deck may be selectively caused “to fluoresce
or luminesce as a result of being subjected to radiant energy
from the appropriate one of the projectors 35" (see column 6,
lines 22-24), thus providing a visible image which indicates the
proper path for the ball.
Davidson teaches a billiard apparatus wherein (1) the balls
21 (including the cue ball and the remaining balls which it
Appeal No. 97-4004
Application 08/459,417
In evaluating such references it is proper to take into account not3
only the specific teachings of the references but also the inferences which
one skilled in the art would reasonably be expected to draw therefrom. See In
re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
7
strikes) are provided with a luminescent coating 23 (which may be
a fluorescent material - see column 2, lines 55-62), (2) the
rails on the billiard table are provided with luminescent tape 34
and (3) the indicating markers on the billiard table are in the
form of luminescent dots or diamonds 38. The artisan would
reasonably infer that the luminescent tape and indicating
markers, as is the case with the balls 21, may be formed of a
fluorescent material. Davidson also provides a radiation means3
31 for emitting ultraviolet radiation in the “black light” band
(see column 2, lines 52-54) in order that the balls, the tape on
the rails and the indicating markers will glow in a darkened
room. By such an arrangement (1) a beginner may more readily
determine the angles of incidence and angles of rebound of the
balls as they move on the billiard table and (2) an amusing
effect is created (see column 1, lines 29-49). Thus, at the
broadest level, Davidson teaches providing various parts of a
sporting apparatus with fluorescent exterior surfaces, including
Appeal No. 97-4004
Application 08/459,417
8
(1) a ball (i.e., cue ball), (2) the items which the cue ball
strikes during the course of play (i.e., other balls) and (3)
indicator markers associated with the playing area, so that they
will all glow in a darkened room when subjected to ultraviolet
light for the purposes of providing training and creating an
amusing effect.
Panosh teaches a table tennis apparatus wherein the ball,
the net, a part of the paddles and the peripheral edge portions
of the table (which define the playing area) are all provided
with a fluorescent material on the exterior surfaces thereof
(see, generally, column 1). Panosh also provides a source of
infrared or ultraviolet radiation so that, when subjected to the
ultraviolet radiation, the various fluorescent surfaces are
illuminated to the extent that “table tennis may be played in the
dark” (see column 1, lines 57-61), thereby providing a “novel
entertainment” (see column 1, line 12). Thus, at the broadest
level, Panosh teaches providing various parts of a sporting
apparatus with fluorescent exterior surfaces, including a ball
and markers defining the playing surface (the peripheral edges of
the table) so that they will glow in a darkened room when
Appeal No. 97-4004
Application 08/459,417
9
subjected to ultraviolet light for the purpose of providing novel
entertainment.
The artisan would have recognized as a matter of common
sense (see In re Bozek, supra) that (1) the above-noted teachings
of Davidson would be applicable to other sporting apparatus
wherein a ball was used to strike items and indicator markers
were used to help a player to determine the proper path along
which the ball should be rolled and (2) the above-noted teachings
of Panosh would be applicable to other sporting apparatus
utilizing a ball and markers to define the playing area.
Particularly in view of the fact that Clapham teaches the use
fluorescent images on the pin deck in conjunction ultraviolet
light to provide markers for indicating the proper path of travel
of the bowling ball in a bowling apparatus, we are convinced that
a combined consideration of Clapham, Davidson and Panosh would
have fairly suggested to the artisan to additionally provide the
bowling apparatus of Clapham with a fluorescent bowling ball,
fluorescent pins (i.e., the items which the ball strikes),
fluorescent lane markers (such as a foul line) and lane arrows
(to the extent that the image 148 of Clapham is not considered to
Appeal No. 97-4004
Application 08/459,417
10
broadly be a “lane arrow”), as well as providing a means for
subjecting these fluorescent elements to ultraviolet light, in
order to achieve the advantages of providing (1) training and
creating an amusing effect as taught by Davidson and (2) “novel
entertainment” as taught by Panosh.
As to claims 2 and 18 the appellants, while conceding that
they “did not invent fluorescent apparel” (reply brief, page 4),
nevertheless argue that none of the prior art relied on by the
examiner teaches bowler “apparel” having a fluorescent exterior
surface thereon. We must point out, however, that claims 2 and
18 are so broad that they would not define over a bowler who
utilized the bowling apparatus of Clapham, as modified by
Davidson and Panosh, and happened to be dressed in a well known
type of apparel (i.e., fluorescent apparel). Accordingly, we do
not believe that claims 2 and 8 patentably distinguish over the
combined teachings of Clapham, Davidson and Panosh.
In view of the foregoing we will sustain the rejection of
claims 1, 2, 5, 6, 15, 16, 18 and 20 under 35 U.S.C. § 103(a) as
being unpatentable over Clapham in view of Davidson and Panosh.
We now turn to the rejection of claims 3, 4, 7-11, 17, 19
and 21-26. With respect to claims 3, 4, 19 and 24, it is
Appeal No. 97-4004
Application 08/459,417
11
apparently the examiner’s position that, inasmuch as fluorescent
apparel is old at well known, it would have been obvious to
provide fluorescent exterior surfaces on bowling shoes and a
wristband. We do not agree. Obviousness under § 103 is a legal
conclusion based on factual evidence (In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988)) and the mere fact
that, generally speaking, fluorescent apparel is known does not
provide a sufficient factual basis for establishing the
obviousness of the claimed fluorescent bowling shoes and
wristband within the meaning of 35 U.S.C. § 103 (see In re GPAC
Inc, 57 F.3d 1573, 1582, 35 USPQ2d 1116, 1123 (Fed. Cir. 1995)
and In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968)). As stated on page 6
of the appellant’s specification, by employing a fluorescent
wristband and shoes
the bowler and/or trainer can concentrate on observing
the highlighted key positions of the bowler. For
example, with the use of the fluorescent wristband 38
and fluorescent shoes 36, the bowler and/or the trainer
can concentrate on proper movement of the arm in
conjunction with the feet during the approach.
With respect to claims 24, and claims 25 and 26 which depend
Appeal No. 97-4004
Application 08/459,417
12
thereon, the examiner asserts that none of the steps physically
performs any “training” action. We must point out, however, that
independent claim 24 is directed to a “method of training” which
includes the steps of supplying fluorescent material on a
plurality of positions on the bowler and illuminating the bowling
environment with ultraviolet light in such a manner that “the
bowler’s form may be easily viewed and analyzed through
illumination of said fluorescent material.” Clearly there is
nothing in the relied on prior art which either teaches or
suggests such a method.
The examiner has also taken the position that (1) “disco
balls” and fog machines (claims 9, 10, 22 and 23) and (2)
fluorescent decals (claims 7 and 17) and fluorescent decorations
on walls (claims 8 and 21) are all old and well known. The
appellants, on the other hand, on pages 6 and 7 of the reply
brief have argued that the examiner has cited no prior art to
show that this is the case. Thus challenged, it was incumbent
upon the examiner to cite a reference to show that these features
were in fact old and well known. See Manual of Patent Examining
Procedure (MPEP) § 2144.03 (6th ed., Rev. 3, Jul. 1997). The
Appeal No. 97-4004
Application 08/459,417
13
examiner, however, has not complied with this requirement.
Accordingly, we are constrained to agree with the appellants that
the examiner has not established a prima facie case of obvious-
ness with respect to these claims.
In view of the above, we will not sustain the rejection of
claims 3, 4, 7-11, 17, 19 and 21-26 under 35 U.S.C. § 103(a)
based on the combined teachings of Clapham, Davidson and Panosh.
In summary:
The rejection of claims 1, 2, 5, 6, 15, 16, 18 and 20 is
affirmed.
The rejection of claims 3, 4, 7-11, 17, 19 and 21-26 is
reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
Appeal No. 97-4004
Application 08/459,417
14
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 97-4004
Application 08/459,417
15
Frederick B. Ziesenheim
700 Koppers Building
436 Seventh Avenue
Pittsburgh, PA 15219-1818