Ex Parte Cirone

Patent Trial and Appeal Board

Oct 24, 2012

11497329 (P.T.A.B. Oct. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
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6
Ex parte DOMINICK CIRONE 7
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9
Appeal 2010-005409 10
Application 11/497,329 11
Technology Center 3700 12
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and 16
ANTON W. FETTING, Administrative Patent Judges. 17
18
FETTING, Administrative Patent Judge. 19
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21
DECISION ON APPEAL22
Appeal 2010-005409
Application 11/497,329

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STATEMENT OF THE CASE1 1
Dominick Cirone (Appellant) seeks review under 35 U.S.C. § 134 of a 2
final rejection of claims 1 and 2, the only claims pending in the application 3
on appeal. Appellant presented oral arguments on October 16, 2012. We 4
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 5
The Appellant invented a protective cover for a bat, such as a baseball 6
or softball bat. (Spec. ¶ 0003). 7
An understanding of the invention can be derived from a reading of 8
exemplary claim 1, which is reproduced below (bracketed matter and some 9
paragraphing added). 10
1. A protective bat barrel cover 11
for a baseball or softball bat 12
having a barrel portion and a handle portion, 13
wherein the barrel portion 14
is substantially uniform in diameter, 15
and 16
wherein the diameter of the handle portion 17
is less than the diameter of the barrel portion, 18
the protective bat barrel cover comprising: 19
[1] a first piece of neoprene material 20
having a first edge and an opposing second edge 21
fastened together to form a substantially tubular 22
casing 23
having a first open end for receiving the 24
barrel portion of the bat, 25
and 26
a second end closed off by a second piece of 27
neoprene material 28
fastened to the first piece of neoprene 29
material; 30

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed November 10, 2008) and Reply Brief (“Reply Br.,” filed April 6,
2009), and the Examiner’s Answer (“Ans.,” mailed February 4, 2009).
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[2] wherein the first edge and opposing second edge 1
of the first piece of neoprene material 2
are fastened together only partially along their respective 3
lengths 4
to form a split 5
that begins nearest to and extends into the 6
first open end of the substantially tubular 7
casing; 8
and 9
[3] wherein the substantially tubular casing 10
further defines an interior cavity 11
of substantially uniform diameter 12
and 13
is adapted to cover 14
substantially only the barrel portion of the bat 15
when the bat is inserted into the interior 16
cavity 17
such that an end of the barrel portion abuts 18
the closed second end of the substantially 19
tubular casing. 20
21
The Examiner relies upon the following prior art: 22
Zills US 4,401,245 Aug. 30, 1983 23
Cirone US Re. 35,899 Sep. 22, 1998 24
Block US 5,163,608 Nov. 17, 1992 25
Hartman US 5,888,154 Mar. 30, 1999 26
Moseley US 6,065,764 May 23, 2000 27
28
Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as 29
unpatentable over Hartman, Zills, and Cirone. 30
Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 31
Hartman, Zills, Cirone, and Block or Moseley. 32
Appeal 2010-005409
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ISSUES 1
The issues of obviousness turn primarily on whether one of ordinary 2
skill would have considered the scope of prior art as being that of protective 3
covers. 4
FACTS PERTINENT TO THE ISSUES 5
The following enumerated Findings of Fact (FF) are believed to be 6
supported by a preponderance of the evidence. 7
Facts Related to the Prior Art 8
Hartman 9
01. Hartman is directed to a resistance device for a baseball bat. 10
Hartman 1:7-8. It also acts as a protective cover for a baseball bat. 11
Hartman 3:66-67. 12
02. Hartman’s Figure 2 portrays a baseball bat with a form fitting 13
protective cover over the top half. The caption includes the phrase 14
“USING SLEEVE AS PROTECTIVE COVER.” 15
03. The cylindrical sleeve 12 is dimensioned for receiving a barrel of 16
a baseball bat 14 therein. The cylindrical sleeve 12 has an open 17
lower end 16 for receiving the barrel therein. The open lower end 18
16 has an adjustable strap 18 extending there around to facilitate 19
securement of the cylindrical sleeve 12 to the baseball bat 14. The 20
adjustable strap includes hook and loop fasteners thereon to mate 21
with a hook and loop strap disposed on the lower end of the 22
cylindrical sleeve 12. The cylindrical sleeve 12 has a plurality of 23
hook and loop strips 20 transversing thereon in a spaced 24
relationship. The cylindrical sleeve 12 has a handle 22 secured to 25
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a central portion thereof. The cylindrical sleeve 12 is designed to 1
fit all sizes of baseball and softball bats. Hartman 3:34-45. 2
Zills 3
04. Zills is directed to container carriers and more particularly to a 4
beverage container carrier that is insulated to maintain a constant 5
beverage temperature and is foldable for compact storage. Zills 6
1:7-10. 7
05. An object is to provide a beverage bottle or can carrier that is 8
capable of holding beverage bottles, cans or other containers of 9
various shapes and sizes. Zills 1:29-31. 10
06. The jacket 12 is formed of inner and outer, water resistant fabric 11
layers 20 and 22 within which is disposed a layer of insulative 12
material 24, all quilted together as shown in Figure 1a. The jacket 13
12 preferably has a cylindrical configuration, as shown in the 14
Figures, but it is to be understood that other configurations 15
conforming to shapes of particular containers to which the carrier 16
10 is adapted may be provided. The carrier 10, being formed 17
completely from fabric material, may be folded or rolled 18
following use for compact storage in a pocket or purse. A 19
longitudinal slit 26 formed in the jacket 12 adjacent to upper end 20
18 is established by an open jacket portion within side seam 28. A 21
closure band 30 parallel to and positioned at the upper end or 22
mount 18 of jacket 12 extends across the slit 26 to enclose the 23
mouth 18 around the beverage container, as shown in Figure 7. 24
The inner surface of closure band 30 is covered by a strip of 25
Velcro™ or other fastening material to releasably secure the band 26
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30 to a corresponding band 32 on the other surface of the jacket 12 1
(see Fig. 4). Because the closure bands 30 and 32 are preferably 2
formed of Velcro™, the diameter of access opening 18 is 3
infinitely adjustable to accommodate virtually any standard 8 or 4
16 ounce beverage bottle or can, for example. Zills 2:29-55. 5
Cirone 6
07. Cirone is directed to protective covers for the striking heads of 7
golf clubs. Cirone 1:13-14. 8
08. Cirone describes using neoprene as the material for the golf club 9
cover. Cirone 3:33. This is done for its form fitting properties. 10
Cirone 3:10-11. 11
ANALYSIS 12
We are not persuaded by the Appellant’s argument that Zills and 13
Cirone are non-analogous art. Appellant would have us narrow the scope of 14
analogous art to that of baseball bat covers. 15
In determining whether the subject matter of a patent claim is 16
obvious, neither the particular motivation nor the avowed 17
purpose of the patentee controls. What matters is the objective 18
reach of the claim. If the claim extends to what is obvious, it is 19
invalid under § 103. One of the ways in which a patent’s 20
subject matter can be proved obvious is by noting that there 21
existed at the time of invention a known problem for which 22
there was an obvious solution encompassed by the patent’s 23
claims. 24
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419-20 (2007). 25
The Specification itself informs us of a broader scope than Appellant 26
argues. “The invention solving these and other problems in the art relates to 27
a protective cover for a bat, or other structure.” Spec. ¶ 0008. Thus, the 28
Specification indicates that (1) the scope of analogous art is that of 29
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protective covers; and (2) the structures enclosed are not limited to bats, but 1
include other unspecified structures. Zills is directed to protective covers for 2
items of differing sizes, and describes both a slit and securing band to 3
accommodate different sizes. This would have commended itself to one 4
reviewing Hartman, which explicitly recites the need to accommodate 5
different sizes of baseball bats. Cirone describes protective covers for golf 6
clubs, which are similar to bats in being elongated sports paraphernalia that 7
must be protected from banging against each other. Thus the structural 8
characteristics of protective covers would be similar in both instances. 9
Cirone describes neoprene as being suitable for its form fitting properties 10
that help keep the cover in place. These same reasons also show why 11
Appellant’s arguments about motivation are unpersuasive. 12
CONCLUSIONS OF LAW 13
The rejection of claims 1 and 2 under 35 U.S.C. § 103(a) as 14
unpatentable over Hartman, Zills, and Cirone is proper. 15
We need not and do not reach the new cumulative ground of rejection 16
over claim 2. 17
DECISION 18
The rejection of claims 1 and 2 is affirmed. 19
No time period for taking any subsequent action in connection with 20
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 21
§ 1.136(a)(1)(iv) (2011). 22
23
AFFIRMED 24
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hh 27