Ex parte Carney

Board of Patent Appeals and Interferences

Mar 10, 2000

08659359 (B.P.A.I. Mar. 10, 2000)

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(2) is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte WILLIAM P. CARNEY

_____________
Appeal No. 1998-2657
Application 08/659,359
______________
ON BRIEF
_______________
Before CALVERT, ABRAMS, and NASE, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 3
to 5 and 11 to 13. The other claims remaining in the
Appeal No. 1998-2657
Application No. 08/659,359
Claim 19 was added by an amendment after final1
rejection, filed on February 10, 1997 (Paper No. 5½), "for the
purpose of placing claim 2 in independent form." Although the
amendment did not specifically cancel claim 2, the examiner
appears to have treated it as if it were cancelled.
2
application, claims 14 to 19, have been allowed. 1
The claims on appeal are drawn to an aiming device for
practicing putting, and, with some errors noted by the
examiner on pages 2 and 3 of the answer, are reproduced in the
appendix of appellant's brief.
The references applied in the final rejection are:
Brandell 4,078,806 Mar. 14,
1978
Terry, III et al. 5,527,041 Jun. 18,
1996
(Terry) (filed Apr. 21, 1995)
A reference of record, applied herein in a rejection
pursuant to 37 CFR 1.196(b), is:
Mick 5,452,897
Sept. 26, 1995
Claims 1, 3 to 5 and 11 to 13 stand finally rejected on
the following grounds:
(1) Claims 11 to 13, anticipated by Terry, under 35 U.S.C.
Appeal No. 1998-2657
Application No. 08/659,359
The examiner designated this as a new ground of2
rejection in the answer because in the final rejection he had
designated the statutory basis as § 102(b), rather than §
102(e).
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§ 102(e); 2
(2) Claims 1 and 3 to 5, unpatentable over Brandell in view of
Terry, under 35 U.S.C. § 103(a).
Rejection (1)- Under U.S.C. § 102(e)
Claim 11 reads:
A device providing means for practicing proper alignment
of a face of a putter with respect to an optimum path of a
properly impacted golf ball, said apparatus [sic: device]
comprising:
a target placed on a surface for putting thereon, said
target simulating a golf hole for putting thereto;
a laser emitter positioned adjacent said target
projecting a laser beam forwardly thereof defining an
illuminated reference line for aligning said putter with
respect thereto; and
said golf ball to be putted being placed on said path,
said face being positioned adjacent said golf ball and said
face being aligned perpendicularly to said reference line such
that a properly aimed putt rolls along said reference line
toward said target.
In order to constitute an anticipation of a claim, a
reference must disclose every claimed limitation, either
Appeal No. 1998-2657
Application No. 08/659,359
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explicitly or inherently. In re Schreiber, 128 F.3d 1473,
1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). The examiner
asserts that the apparatus disclosed by Terry could be used by
putting a golf ball towards the device (10), in which case the
structure recited in claims 11 to 13 would be anticipated,
notwithstanding that this would be a different use of the
apparatus from that disclosed by Terry (as stated in In re
Schreiber, supra, "It is well settled that the recitation of a
new intended use for an old product does not make a claim to
that old product patentable").
Appellant states that he does not dispute that a
reference need not disclose the intended use in order to
anticipate, but argues that Terry does not disclose the
structural limitation "a target . . . simulating a golf hole
for putting thereto," as recited in claim 11 (reply brief,
page 2).
After fully considering the record in light of the
arguments presented in appellant's brief, reply brief and
reply, and in the examiner's answer and supplemental answer,
we conclude that claims 11 to 13 are not anticipated by Terry.
Assuming arguendo that Terry's apparatus 10 constitutes a
Appeal No. 1998-2657
Application No. 08/659,359
5
target, we do not consider that it meets the claimed
limitation of "simulating a golf hole for putting thereto."
In general, terms in a claim are to be given their ordinary
and accustomed meaning, K-2 Corp. v. Salomon S.A., 191 F.3d
1356, 1362, 52 USPQ2d 1001, 1004 (Fed. Cir. 1999), and the
ordinary meaning of "simulate", as defined in Webster's Third
New International Dictionary (1971), is "to give the
appearance or effect of" or "to have the characteristics of."
The Terry device 10 does not meet any of these definitions,
since it does not give the appearance of, give the effect of,
or have the characteristics of a golf hole. The examiner
argues that "Terry's device is designed to receive a golf
ball, and thus meets the limitations of a target which
simulates a golf hole for putting thereto" (answer, page 5),
but we do not agree. Simply because a golf ball 26 may be
placed on the Terry apparatus does not mean that the apparatus
simulates a golf hole, but rather, if anything it would
simulate a putting green.
Accordingly, we will not sustain the § 102(e) rejection
of claim 11, nor of claims 12 and 13 dependent thereon.
Rejections Pursuant to 37 CFR 1.196(b)
Appeal No. 1998-2657
Application No. 08/659,359
6
Pursuant to 37 CFR 1.196(b), we enter the following new
rejections:
(A) Claims 1 and 3 to 5 are rejected for failure to comply
with the second paragraph of 35 U.S.C. § 112.
Claim 1 reads:
A laser aiming device comprising:
a housing simulating a generally circular golf hole
defining an axially extending diameter;
said housing being positioned on an adjacent floor, said
floor providing a surface for putting a golf ball thereon,
said golf hole providing a target for putting thereto;
said housing including a bore, the axis of said bore
lying in the vertical plane parallel to and passing through
said diameter;
a laser module mounted in said bore adapted to emit a
laser beam coincident with said axis thereof; and
said laser beam projecting an illuminated mark on said
surface forwardly of said target thereby providing a reference
means defining an optimum path of a successful putt aimed at
said target.
The expression "the axis of said bore lying in the
vertical plane parallel to and passing through said diameter"
in lines 7 to 9 of claim 1 is inconsistent and causes the
claim to be indefinite. If a plane is parallel to a line, by
definition the plane and line do not intersect; therefore, the
Appeal No. 1998-2657
Application No. 08/659,359
If appellant amends claim 1 in response to this3
rejection, page 6, lines 10 to 12, and page 7, lines 3 to 5,
should be correspondingly amended. We also note that on page
15, line 23, and page 16, lines 16, 17 and 26, "90" or "92"
should be --98--.
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vertical plane cannot be both parallel to the diameter and
also pass through the diameter, as recited. Considering the
apparatus disclosed by appellant in, e.g., Figs. 1 and 8 and
in the sentence bridging pages 16 and 17, it appears that,
rather than "parallel to and passing through," the term
"containing" would more accurately define what appellant
discloses and intended to claim. 3
(B) Claim 11 is rejected under 35 U.S.C. § 102(e) as
anticipated by Mick, which discloses a target 40 simulating a
golf hole
(col. 3, lines 8 to 10), a laser emitter 70 adjacent the
target, and a golf ball 30 on the optimum path with the face
of putter 20 adjacent thereto. The beam 72 emitted by the
laser constitutes "an illuminated reference line" as claimed,
it being noted that the claim does not require that the line
be on the surface.
Appeal No. 1998-2657
Application No. 08/659,359
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Rejection (2) - Under 35 U.S.C. § 103
We have rejected claims 1 and 3 to 5 above as failing to
comply with § 112, second paragraph. Generally, if claims are
rejected on that basis, a rejection under § 103 is
inappropriate.
See In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA
1962). However, in order to avoid piecemeal appellate review,
we will interpret the expression "parallel to and passing
through" in claim 1 as if it were "containing," and proceed to
consider the § 103 rejection on that basis. Cf. Ex parte
Ionescu, 222 USPQ 537, 540 (Bd. Apps. 1984).
The basis of this rejection, as stated by the examiner on
pages 6 and 7 of the answer, is:
In the instant application, the art (Terry)
teaches the use of a laser with a putting practice
device to help the golfer line up a putt. It is the
examiner's opinion that one of ordinary skill in the
art would have found the use of a laser for the
purpose of lining up a putt valuable on other
putting practice devices such as Brandell's. The
motivation to combine comes from the recognized
advantage in the prior art as typified by Terry of
using a laser to line up a putt.
We do not disagree with the broad proposition that it would
have been obvious to use the Terry device in conjunction with
Appeal No. 1998-2657
Application No. 08/659,359
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a target such as disclosed by Brandell. However, we do not
consider that, in combining the teachings of these two
references, one of ordinary skill would have been motivated to
locate the laser beam emitter (module) on the target, as
called for by claim 1. Our conclusion is based on the fact
that in the Terry apparatus the laser beam is directed from
the golfer's position toward the target. In our view, the
opposite arrangement of locating the laser on the target and
directing it back toward the golfer would be the result of
improper hindsight, based on appellant's own disclosure,
rather than the result of a teaching or suggestion coming from
the applied prior art.
Rejection (2) of claim 1, and of dependent claims 3 to 5,
will therefore not be sustained.
Conclusion
The examiner's decision to reject claims 1, 3 to 5 and 11
to 13 is reversed. Claims 1, 3 to 5 and 11 are rejected
pursuant to 37 CFR 1.196(b).
This decision contains new grounds of rejection pursuant
to 37 CFR § 1.196(b) (amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Appeal No. 1998-2657
Application No. 08/659,359
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Off. Gaz. Pat. and Trademark Office 63,122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that "[a] new ground of rejection
shall not be considered final for purposes of judicial
review."
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
grounds of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under
§ 1.197(b) by the Board of Patent Appeals and Interferences
upon the same record. . . .
No time period for taking any subsequent action in con-
nection with this appeal may be extended under 37 CFR §
1.136(a).
REVERSED 37 CFR § 1.196(b)
Appeal No. 1998-2657
Application No. 08/659,359
11
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT NEAL E. ABRAMS )
Administrative Patent Judge ) APPEALS
AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
IAC:lmb
TEMKO AND TEMKO
22 MARION ROAD
WESTPORT, CT 06880