Ex parte Decker

Board of Patent Appeals and Interferences

Dec 29, 1997

08189140 (B.P.A.I. Dec. 29, 1997)

Application for patent filed January 26, 1994.1
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(2) is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte THOMAS J. DECKER
_____________
Appeal No. 96-1820
Application 08/189,1401
______________
ON BRIEF
_______________
Before McCANDLISH, Senior Adminisstrataive Patent Judge, and
ABRAMS and STAAB, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
Appeal No. 96-1820
Application No. 08/189,140
2
DECISION ON APPEAL
This is an appeal from the decision of the examiner finally
rejecting claims 1 through 4, which constitute all of the claims
of record in the application.
The appellant's invention is directed to a practice baseball
of a size smaller than that of a regulation baseball. The
subject matter before us on appeal is illustrated by reference to
claim 1, which reads as follows:
1.
A practice baseball for use in batting practice having
dimension and weight proportionally less than that of a
regulation baseball, comprising:
a central core with yarn tightly wrapped therearound to form a
spherical interior portion, said central core having a diameter
in the range of 0.85 inches to 1.18 inches;
an outer cover of two pieces of leather stitched together to form
a tightly wrapped outer surface on the practice baseball;
said practice baseball having an outer diameter measured at the
outer surface in the range of 1.86 to 2.65 inches and having a
total weight in the range of 3.25 to 4.725 ounces.
Appeal No. 96-1820
Application No. 08/189,140
This was not listed as a reference by the examiner, but was2
cited in the rejection.
3
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
(1) Worth Catalogue, “Junior Balls,” January 9, 1976, page 7
(2) The appellant’s specification, page 4, lines 1 through 4 and
19 through 212
THE REJECTION
Claims 1 through 4 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the appellant’s specification (page 4,
lines 1 through 4 and 19 through 21) in view of Junior Balls.
For a complete explanation of the rejection, one must refer
to the Examiner's Answer, Paper No. 6 (the final rejection) and
Paper No. 3 (the first office action).
The opposing viewpoints of the appellant are set forth in
the Brief.
OPINION
The objective of the appellant’s invention is to provide an
improved baseball for batting practice. In furtherance of this,
the invention comprises a baseball which is dimensionally smaller
Appeal No. 96-1820
Application No. 08/189,140
The examiner and the appellant have agreed that the term3
“regulation baseball” defines a baseball that meets the
requirements of Rule 1.09 of the Official Baseball Rules, which
governs amateur and professional baseball in the United States,
as has been referenced on page 1 of the appellant’s specification
and described on page 2 of the Brief.
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in weight and size than a regulation baseball used in game3
situations, but which has the same “feel” and “dynamic
characteristics” as a regulation baseball. According to the
appellant, the inventive baseball is more challenging to hit in
batting practice, which results in improving the player’s ability
to hit a regulation baseball. See specification, page 3.
As we understand the rejection, it is the examiner’s
position that since the construction and materials of a
regulation baseball are known, as acknowledged in the cited
portions of the appellant’s specification, and since it is known
from Junior Balls to make baseballs smaller in size than a
regulation baseball, it would have been obvious to one of
ordinary skill in the art reduce the size of all of the
components of a regulation baseball proportionally, suggestion
being found in the desire to permit use by smaller players. The
examiner further opines that the appellant has failed to
establish that the claimed dimensions are critical. See Answer,
pages 4 and 5.
Appeal No. 96-1820
Application No. 08/189,140
5
The claims in this case stand rejected as being obvious
under 35 U.S.C. § 103. Our reviewing court has provided us with
the following guidance for evaluating a rejection made under
Section 103, which we have applied in arriving at our decision:
The test for obviousness is what the combined teachings of the
prior art would have suggested to one of ordinary skill in the
art. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). In establishing a prima facie case of obviousness
under 35 USC §103, it is incumbent upon the examiner to provide a
reason why one of ordinary skill in the art would have been led
to modify a prior art reference or to combine reference teachings
to arrive at the claimed invention. See Ex parte Clapp, 227 USPQ
972, 973 (Bd. Pat. App. & Int. 1985). This motivation must stem
from some teaching, suggestion or inference in the prior art as a
whole or from the knowledge generally available to one of
ordinary skill in the art and not from the appellant's
disclosure. See, for example, Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1052 (Fed. Cir.),
cert. denied, 488 U.S. 825 (1988).
We first reflect upon the fact that the appellant considers
it critical that the practice baseball provide the “feel” and the
“dynamic characteristics” of a regulation baseball
Appeal No. 96-1820
Application No. 08/189,140
6
(specification, page 3). Explicit consideration of these factors
is absent from Junior Balls, which is the only applied reference
directed to a baseball of size smaller than that of a regulation
baseball. Moreover, there is nothing, in our view, which would
have suggested to one of ordinary skill in the art that these
factors be present in a baseball of reduced size, especially in
view of the fact that the Junior Balls baseball is not made of
the same materials as a regulation baseball, as will be discussed
below.
With this as prologue, independent claim 1 requires, inter
alia, that the inventive practice baseball include a central core
“having a diameter in the range of 0.85 inches to 1.18 inches,”
whereas the central core in a regulation baseball has a diameter
of “about 1.3125 inches,” according to the description provided
on page 5 of the appellant’s specification. Thus, the core of
the regulation baseball does not fall within the range recited in
claim 1. While the Junior Balls baseball is smaller in outside
circumference than a regulation baseball (8.5 inches vs. 9.25
inches), the diameter of its core is not disclosed nor, in our
view, is there any teaching in the reference which would have
suggested to one of ordinary skill in the art that the core be of
Appeal No. 96-1820
Application No. 08/189,140
7
the size specified in claim 1. The only information provided
about the core is that it is made of “molded wool.”
The same situation exists with regard to independent claim
4, wherein the diameter of the core is required to be “in the
range of 65% to 90% of the diameter of a regulation baseball.”
For the reasons expressed above with regard to claim 1, it is our
view that the prior art fails to teach this limitation. Claim 4
also requires a central core “formed of the same materials as a
regulation baseball core” (emphasis added). As we stated above,
the Junior Balls reduced size baseball is disclosed as having a
core of molded wool. According to the appellant, however, the
core of a regulation baseball must have a central core of cork,
rubber or other similar material to comply with Rule 1.09
(specification, page 1). On its face, therefore, the secondary
reference also fails to teach this feature of claim 4. Further
in this regard, the examiner has not provided evidence to
establish that the molded wool core of the Junior Balls baseball
is a “similar material” under Rule 1.09.
The examiner’s position that the appellant has failed to
demonstrate “criticality of the differences” (Answer, page 4) is
not well taken. In the disclosure, the appellant states that his
invention maintains the feel and the dynamic characteristics of a
Appeal No. 96-1820
Application No. 08/189,140
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regulation baseball, and in the claims he describes his invention
by way of specific dimensions (claims 1 through 3) and
dimensional relationships (claim 4), as well as in the material
from which the core is made (claim 4). From our perspective,
this establishes criticality to the degree necessary to require
focus upon the fact that while the prior art discloses baseballs
sized smaller than regulation baseballs, this is not the extent
of the limitations recited in the appellant’s claims. The only
suggestion for making the core of the baseball in accordance with
the dimensional and material limitations recited in claims 1 and
4 is found via the luxury of the hindsight provided one who first
viewed the appellant’s disclosure. This, of course, is
impermissible as a basis for rejecting the claims. See In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir.
1992).
It therefore is our conclusion that the teachings of the
prior art relied upon fail to establish a prima facie case of
obviousness with regard to the subject matter of independent
claims 1 and 4, and we therefore will not sustain the rejection
of these claims or, it follows, of dependent claims 2 and 3.
In view of the fact that a prima facie case of obviousness
has not been established by the applied prior art, there is no
Appeal No. 96-1820
Application No. 08/189,140
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need for us to discuss the secondary evidence submitted by the
appellant.
The decision of the examiner is reversed.
REVERSED
HARRISON E. McCANDLISH, Senior)
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 96-1820
Application No. 08/189,140
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