Ex parte DUTCHBURN

Board of Patent Appeals and Interferences

Jan 13, 1998

08133294 (B.P.A.I. Jan. 13, 1998)

Application for patent filed October 8, 1993. 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journal and (2) is not binding precedent of the Board.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 LESLIE G. DUTCHBURN
____________
Appeal No. 95-4994
Application No. 08/133,2941
____________
ON BRIEF
____________
Before ABRAMS, McQUADE, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 2 and 8. Claims 3 through 7 and 9 through
13 have been allowed.
We AFFIRM.
Appeal No. 95-4994 Page 2
Application No. 08/133,294
BACKGROUND
The appellant's invention relates to a play-head for a
hockey stick. Claim 1 is representative of the subject matter on
appeal and a copy of claim 1 is attached to this decision.
The prior art reference of record relied upon by the
examiner as evidence of anticipation under 35 U.S.C. § 102(b) is:
White, Sr. 3,529,825 Sept. 22, 1970
(White)
Claims 1, 2 and 8 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by White.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the § 102(b) rejection,
we make reference to the examiner's answer (Paper No. 10, mailed
February 13, 1995) and the examiner's response to the reply brief
(Paper No. 12, mailed June 29, 1995) for the examiner's complete
reasoning in support of the rejection, and to the appellant's
brief (Paper No. 9, filed October 12, 1994) and reply brief
(Paper No. 11, filed March 13, 1995) for the appellant's
arguments thereagainst.
Appeal No. 95-4994 Page 3
Application No. 08/133,294
Appeal No. 95-4994 Page 4
Application No. 08/133,294
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art reference, and to the respective
positions articulated by the appellant and the examiner.
Upon evaluation of all the evidence before us, it is our
conclusion that the evidence adduced by the examiner is
sufficient to establish a case of anticipation with respect to
claim 1. Accordingly, we will sustain the examiner's rejection
of claim 1 under 35 U.S.C. § 102(b). Our reasoning for this
determination follows.
A claim is anticipated only if each and every element as set
forth in the claim is found, either expressly or inherently
described, in a single prior art reference. Verdegaal Bros. Inc.
v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed.
Cir.), cert. denied, 484 U.S. 827 (1987). The inquiry as to
whether a reference anticipates a claim must focus on what
subject matter is encompassed by the claim and what subject
matter is described by the reference. As set forth by the court
in Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ
Appeal No. 95-4994 Page 5
Application No. 08/133,294
781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984), it
is only necessary for the claims to "'read on' something
disclosed in the reference, i.e., all limitations of the claim
are found in the reference, or 'fully met' by it."
Claim 1 is anticipated by White. Claim 1 reads on the
hockey stick clearly disclosed in Figure 8 of White. Claim 1
reads on White's hockey stick as follows: A play-head for a
hockey stick comprising, a generally rectangular body portion
having one end adapted to be mounted to a hockey stick handle
(White's body portion shown in Figure 8 is generally
rectangular), a middle portion having a front surface operative
for playing and impacting with a hockey puck (White's middle
portion of the body portion as shown in Figure 8 has a front
surface which is operative for playing and impacting with a
hockey puck), said middle portion having an elongated lower edge
operative to contact with a play surface of a hockey ring
(White's front surface shown in Figure 8 has an elongated lower
edge which is capable of contacting a play surface of a hockey
ring), said lower edge having an elongated recess formed therein
(White's front surface shown in Figure 8 has elongated recesses,
i.e., notched out portions 14), said recess having an elongated
Appeal No. 95-4994 Page 6
Application No. 08/133,294
inner edge (as shown in Figure 8, White's elongated recesses 14
have an elongated inner edge), and said recess operatively
forming an elongated gap between said elongated inner edge and
said play surface when said lower edge is pushed against said
play surface (as shown in Figure 8, the elongated inner edges of
White's elongated recesses 14 are spaced from the lower edge to
form elongated gaps between the elongated inner edges and the
play surface when the lower edge is pushed against the play
surface).
The argument presented by the appellant that claim 1 is not
anticipated by White is unpersuasive for the following reasons.
First, the appellant's argument regarding the hazards of using
White's hockey stick and the inability of White's hockey stick to
comply with the standards of the National Hockey League
Association is not commensurate in scope with the claims under
appeal. Second, the claims on appeal do not define over White's
hockey stick shown in Figure 8 prior to fixedly attaching the
attachment member 1 to the hockey stick. In that regard, claim 1
is drafted utilizing the transitional phrase "comprising."
Therefore, claim 1 is open-ended and does not exclude additional,
unrecited elements such as White's attachment member.
Appeal No. 95-4994 Page 7
Application No. 08/133,294
Since each and every element as set forth in claim 1 is
found, either expressly or inherently described, in White, we
sustain the examiner's rejection of claim 1 under 35 U.S.C.
§ 102(b).
Claims 2 and 8 have not been separately argued by the
appellant. Accordingly, we have determined that these claims
must be treated as falling with claim 1. See In re Nielson, 816
F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987) and 37 CFR
§§ 1.192(c)(7) and 1.192(c)(8)(iv). Thus, it follows that the
examiner's rejection of claims 2 and 8 under 35 U.S.C. § 102(b)
as being anticipated by White is also sustained.
CONCLUSION
To summarize, the decision of the examiner to reject claims
1, 2 and 8 under 35 U.S.C. § 102(b) is affirmed.
Appeal No. 95-4994 Page 8
Application No. 08/133,294
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 95-4994 Page 9
Application No. 08/133,294
DAVID W. WONG
46 WILLOWBROOK ROAD
THORNHILL, ONTARIO
CANADA, L3T 4W9
Appeal No. 95-4994
Application No. 08/133,294
Page 1
APPENDIX
1. A play-head for a hockey stick comprising,
a generally rectangular body portion having one end adapted
to be mounted to a hockey stick handle, a middle portion having a
front surface operative for playing and impacting with a hockey
puck, said middle portion having an elongated lower edge
operative to contact with a play surface of a hockey ring, said
lower edge having an elongated recess formed therein, said recess
having an elongated inner edge, and said recess operatively
forming an elongated gap between said elongated inner edge and
said play surface when said lower edge is pushed against said
play surface.
APPEAL NO. 95-4994 - JUDGE NASE
APPLICATION NO. 08/133,294
APJ NASE
APJ McQUADE
APJ ABRAMS
DECISION: AFFIRMED
Prepared By: Delores A. Lowe
DRAFT TYPED: 10 Dec 98
FINAL TYPED: