Ex Parte Bryant

Board of Patent Appeals and Interferences

Jul 28, 2010

11085278 (B.P.A.I. Jul. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EARL M. BRYANT
____________

Appeal 2009-011447
Application 11/085,278
Technology Center 3700
____________

Before WILLIAM F. PATE, III, STEVEN D.A. McCARTHY, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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Application 11/085,278

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STATEMENT OF THE CASE
Earl Bryant (Appellant) seeks our review under 35 U.S.C. § 134 of the
Examiner’s decision to finally reject under 35 U.S.C. § 103(a) claims 1, 3-5,
10-13, 16, and 17 as being unpatentable over Landmark (US 5,253,421,
issued Oct. 19, 1993) and claims 6-9, 14, 15, 18, and 19 as being
unpatentable over Landmark in view of Diracca (US 962,702, issued Jun.
28, 1910). We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The claimed invention is to equipment for measuring out a pitcher’s
circle. The claims essentially recite that the measuring apparatus comprises
a frame member 22, a center axis member 34, a fixed length flexible
measuring line 18, and a guide rod 20. Figure 3, reproduced below,
illustrates the interrelationship of the Appellant’s claimed features.

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Appellant’s Figure 3 depicts a frame member 22 surrounding a pitcher’s
rubber 12, and a center axis member 34 mounted on cross-brace 32. Center
axis member 34 provides a swiveling base connection for measuring line 18
that is connected to guide rod 20.
Reproduced below are portions of each independent claim joined in
this appeal.
For claim 1:
“said frame member being adapted to be fit over and engage said
pitcher’s plate in a fixed relationship.”
For claims 10 and 16:
“said frame member being adapted to be fixed in position over said
pitcher’s plate.”

SUMMARY OF DECISION
We AFFIRM-IN-PART.

DISCUSSION
Issue
In light of the Appellant’s contentions and the Examiner’s claim
construction, the determinative issue before us is as follows:
Whether the Examiner erred in construing the claim language noted
above in order to conclude that Landmark would render obvious such a
claimed feature.
Principles of Law
Claims are construed with an eye toward giving effect to all terms in
the claim. Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006).
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See also Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir.
2007) (denouncing claim constructions which render phrases in claims
superfluous).

Analysis
As we survey the claim language we are mindful of the full import of
the word “adapted.” The verb “adapted” in English means that the
preceding noun or nouns, in this case the “frame member” are suitable for
the subsequent infinitive “to” phrases. There is no requirement that the
preceding noun actually does the subsequent infinitive phrases, i.e., the
infinitive phrase is noncommittal to the subject noun of the sentence. As
such, the requirement for the prior art to satisfy the claimed infinitive
functions at issue, see supra, is that the prior art have a structure that is
suitable to perform the function; the structure, however, does not actually
have to perform that function. In other words, what is required is evidence
that the prior art is suitable to perform the function.
With this in mind, we review the independent claims 1, 10, and 16 and
dependent claim 5 and compare the properly construed claim language to
what the Examiner found in Landmark that satisfied the frame member
feature claimed in each independent claim, viz. Landmark’s cylindrical base
11, see Ans. 3, 5, and 6, and the leveling member, aperture 23, see Ans. 5.
Claim 1
Claim 1 requires that the frame member be adapted to be fit over and
engage the pitcher’s plate in a fixed relationship. The only frame member
embodiment of Landmark that could reasonably satisfying this claimed
feature is the “frame member” embodiment with the suction cup as shown in
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Figure 7, i.e., base 11a. However, as Appellant correctly points out to the
Examiner, Landmark’s suction cup is ineffective to be adapted to be fit over
the pitcher’s plate because the suction cup would be inoperative.
Landmark’s suction cup clearly requires that the cup be placed onto a flat
flush surface in order to be effective in fixing the base 11a to that surface.
Within the context of claim 1, “to fit over” denotes that the frame member
essentially surrounds or encompasses the pitcher’s plate. The suction cup of
base 11a is not suitable for surrounding or encompassing a pitcher’s plate
since a seal could not be established between the underside of the suction
cup and the sidewall surfaces of the pitcher’s plate.
In view of the foregoing, we are constrained not to sustain the
Examiner’s rejection of claims 1, 3, and 4. The Examiner has not utilized
Diracca to cure the above-noted deficiency. As such, we are constrained not
to sustain the Examiner’s rejection of claims 6-9.
Claims 10 and 16
Claims 10 and 16 only require that the frame member be adapted to be
fixed in a position over the pitcher’s plate. Here, the Examiner is correct
that Landmark’s base 11a with the suction cup is suitable for fixing the base
(frame member, Appellant’s nomenclature) to a pitcher’s plate. The suction
cup, when placed on the top surface of a pitcher’s plate, would cause the
base 11a to be fixed in a position over the pitcher’s plate. As such, nothing
in Landmark’s disclosure precludes the base 11a from performing the
function of a frame member being adapted to be fixed in a position over a
pitcher’s plate as set forth in claims 10 and 16.
Responding to Appellant’s arguments that claims 10 and 16 require
the centering axis to have a “self-centering capability,” see App. Br. 7,
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claims 10 and 16 have no recitation of a “self-centering” feature. Claims 10
and 16 only require that the centering axis member be disposed on the frame
member such that the centering axis member aligns over the center point of
the pitcher’s plate when the frame member is positioned over the pitcher’s
plate. Appellant has not provided any convincing argument or evidence that
Landmark’s embodiment is not suitable for placing Landmark’s centering
axis member (pivot axle 25) over the pitcher’s plate.
While Appellant may be correct that placing the Landmark apparatus
precisely in the center of the pitcher’s plate may be difficult, no evidence is
present that such a feat could not be accomplished. A person of ordinary
skill in the art is a person of ordinary creativity and not an automaton. KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007). It is not beyond
ordinary creativity to scribe two diagonal lines across the top surface of the
pitcher’s plate, thus identifying the centerpoint and placing Landmark’s base
carefully on the identified centerpoint in order to have it precisely on the
point. Moreover, the claimed invention is not a process for measuring a
pitcher’s circle, but an apparatus for measuring. Accordingly, the claimed
invention does not require a pitcher’s circle to be achieved on the first
attempt. Nothing in the claim precludes multiple attempts by a person
having ordinary skill in the art to scribe the pitcher’s circle with the
Landmark apparatus.
In view of the foregoing, we sustain the Examiner’s rejection of
claims 10 and 16. Appellant fails to provide separate arguments for the
patentability of claims 11-13 and 17 which have been rejected by the
Examiner over Landmark alone. As such, claims 11-13 and 17 fall with
claims 10 and 16, respectively.
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Claim 5
Claim 5 further defines the claimed invention as having a leveling
member adapted to enable a user to maintain the guide rod at a 90° angle
with respect to a surface over which it is moved. We disagree with
Appellant that the Examiner erred in finding that Landmark’s aperture 23
would not be suitable to perform the function of a leveling member which
enables the user to maintain the guide rod at a 90° angle with respect to the
surface over which it is moved. No evidence has been presented by
Appellant that the aperture is of a size or shape that precludes the marker 24
from maintaining a 90° angle to the surface upon which the circle is being
scribed. Moreover, Landmark’s device is a geometric measuring tool, as
evidenced by the web 20 having hash marks and the base 11 having indicia
13 for measuring degrees. See Figure 1. Persons of ordinary skill in the art
would understand and expect geometric measuring tools to maintain
precision and not deviate during operation of the tool. As such, the weight
of evidence and reasoning is against Appellant’s contention that it would be
quite difficult to maintain a constant angle of 90°.
In view of the foregoing, we sustain the Examiner’s rejection of claim
5.
Claims 6-9, 14, 15, 18, and 19
Appellant appears to only argue separately claims 6, 14, and 18. As
such, claims 7-9, 15, and 19 stand or fall with claims 6, 14, and 18,
respectively.
Claims 6, 14, and 18 are directed to further claiming that the leveling
member comprises a laterally extending arm member disposed at a 90° angle
with respect to the guide rod that is adapted to engage the surface over
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which the guide rod is moved along the arm member’s length to maintain a
vertical orientation of 90° with respect to the arm member.
The Examiner relies on the teachings of Diracca for meeting the
aforementioned limitation and then concludes that it would be obvious to
provided a laterally extending arm for the guide rod of Landmark “so that
alternative tips could be used with the same apparatus.” Ans. 8 and 9.
Appellant argues Diracca’s device is not designed to affect the vertical
orientation of the guide rod. Appellant points out that Diracca’s device has
separate level members J and H and as such teaches away from an arm
member serving as a leveling device. Appellant contends that the arm K′
that the Examiner alleges is a leveling member is actually an offset device
for enabling the circle mark to be drawn if the desired circle is of a diameter
less than “cone” A. App. Br. 9.
Here, we find Appellant’s arguments against the Examiner’s rejection
persuasive. The Examiner has not provided sufficient facts or reasoning to
find that arm K′ would be suitable to perform the function of maintaining the
guide rod taught in Landmark in a vertical orientation. Moreover, as found
supra, Landmark’s aperture is suitable for maintaining a vertical orientation
and the addition of Diracca’s arm K′ does not facially appear to further assist
in performing that function nor has the Examiner provided a cogent analysis
of how such an additional arm would assist in performing the function.
In view of the foregoing, we are constrained not to sustain the
rejection of claims 6-9, 14, 15, 18, and 19.

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CONCLUSIONS
The Examiner erred in construing the claim language noted above in
order to conclude that Landmark would render obvious such a claimed
feature found in claims 1 and 5, but did not err in construing the claim
language in claims 10 and 16 in order to conclude that Landmark would
render obvious such a claimed feature. The Examiner erred in concluding
that Diracca’s arm member K′ would be suitable to perform the functional
feature with claims 6, 14, and 18.

DECISION
The Examiner’s decision to reject claims 1, 3-9, 14, 15, 18 and 19 is
reversed.
The Examiner’s decision to reject claims 10-13, 16, and 17 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

mls

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