Ex parte EBELING

Board of Patent Appeals and Interferences

Sep 28, 1998

08688141 (B.P.A.I. Sep. 28, 1998)

Application for patent filed July 29, 1996. According1
to appellant, the application is a continuation of Application
08/398,000, filed March 3, 1995, abandoned; which is a divi-
sion of Application 08/059,185, filed May 6, 1993, now U.S.
Patent 5,421,493, issued June 6, 1995.
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(2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOHN J. EBELING II

_____________
Appeal No. 98-0430
Application 08/688,1411
______________
ON BRIEF
_______________
Appeal No. 98-0430
Application 08/688,141
Based upon the explicit statement in the answer (page 2)2
that claims 1 through 8 were canceled, it appears to us that
the amendment canceling claims 2 through 4, attached to the
main brief (Paper No. 13), was entered by the examiner, al-
though no notation to that effect appears on the referenced
amendment.
2
Before COHEN, ABRAMS and FRANKFORT, Administrative Patent
Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the refusal of the examiner
to allow claims 9 through 12, as amended subsequent to the
final rejection. These claims constitute all of the claims
remaining in the application. 2
Appellant’s invention pertains to a baseball or
soft- ball pocket forming tool. An understanding of the
invention can be derived from a reading of exemplary claim 9,
a copy of which appears in APPENDIX A of the reply brief
(Paper No. 15).
Appeal No. 98-0430
Application 08/688,141
3
As evidence of obviousness, the examiner has applied
the documents listed below:
Schnase et al. (Schnase) 2,121,989 June 28, 1938
Posey 4,454,204 June 12, 1984
Walker 554 Dec. 23, 1898
(Great Britain)
The following rejections are before us for review.
Claims 9 through 12 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Walker in view of Schnase.
Claims 9 through 12 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Posey.
The full text of the examiner's rejections and
response to the argument presented by appellant appears in the
answer (Paper No. 14), while the complete statement of appel-
Appeal No. 98-0430
Application 08/688,141
On September 17, 1998, Craig R. Feinberg, a Program and3
Resource Administrator at the Board of Patent Appeals and
Interferences, discussed an amendment to claim 9, filed with
the reply brief, with the examiner, and determined that the
examiner entered this amendment. Thus, we have assessed claim
9 as including this amendment. The clerical entry of the
amendment should be made during any further prosecution before
the examiner.
In our evaluation of the applied teachings, we have4
considered all of the disclosure of each teaching for what it
would have fairly taught one of ordinary skill in the art.
See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA
1966). Additionally, this panel of the board has taken into
account not only the specific teachings, but also the infer-
ences which one skilled in the art would reasonably have been
expected to draw from the disclosure. See In re Preda, 401
F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
4
lant’s argument can be found in the main and reply briefs
(Paper Nos. 13 and 15).3
OPINION
In reaching our conclusion on the obviousness issues
raised in this appeal, this panel of the board has carefully
considered appellant’s specification and claims, the applied
teachings, and the respective viewpoints of appellant and 4
Appeal No. 98-0430
Application 08/688,141
5
the examiner. As a consequence of our review, we make the
determinations which follow.
The rejections based upon Walker and Schnase
We reverse the rejection of claims 9 through 12
under 35 U.S.C. § 103 as being unpatentable over Walker in
view of Schnase.
Initially, we note that appellant’s independent
claim 9 is drawn to a baseball or softball glove pocket form-
ing tool made from a material selected from wood, plastic and
metal and com- prising, inter alia, an enlarged head portion
having an essen- tially spherical surface with a radius from
about 1 to 2 inches,
with the enlarged head portion of the tool being intended to
be pounded into a baseball or softball glove.
Appeal No. 98-0430
Application 08/688,141
6
As evidence of obviousness, the examiner relies upon
the teachings of Walker and Schnase.
The Walker patent addresses a constable’s staff con-
sisting of a solid piece of indiarubber 14 inches long. As
depicted in the sole drawing figure, an end of the staff has
an arcuate appearance.
The patent to Schnase teaches a combined handle grip
and weapon. More specifically, the sleeve 12, that acts as a
knob on a conventional gear shift lever (Fig. 1), can be
removed for use as a club or blackjack (Fig. 2). When used as
a club, the shaft portion 12 serves as a handle and the head
14 forms a striking member. The head 14 is formed of a sub-
stantially ball-shaped member 16 with a rubber coating 18
thereon.
When we set aside what appellant has disclosed in
the present application, we find that the combined teachings
Appeal No. 98-0430
Application 08/688,141
7
of Walker and Schnase would not have, in particular, been
suggestive
of an article, a tool as claimed, wherein an enlarged spheri-
cal head portion, intended to be pounded into a baseball or
softball glove, has a radius of from about 1 to 2 inches.
Simply stated, the applied references are silent on particular
dimensions for any spherical end and, as we see it, provide no
motivation to effect a spherical end with a radius from about
1 to 2 inches, as now claimed. Thus, the rejection is re-
versed.
The rejection based upon Posey
We reverse the rejection of claims 9 through 12
under 35 U.S.C. § 103 as being unpatentable over Posey.
Considering again the content of claim 1, and set-
ting aside appellant’s disclosure, it is at once apparent to
us that the tool for pounding, now claimed, would not have
been suggested by the combined bank for coins and noisemaker
Appeal No. 98-0430
Application 08/688,141
8
of Posey, keeping in mind that the claimed tool includes an
enlarged spherical head portion with the head portion being
of a radius of from about 1 to 2 inches and being intended to
be pounded into a baseball or softball glove. We perceive no
reasonable basis in the Posey patent that would have motivated
one of ordinary skill in the art to configure a ball design,
as taught by Posey, with the particular radius range of from
about 1 to 2 inches, now claimed. It follows that this rejec-
tion must be reversed.

At this juncture, we make note of the declaration of
John J. Ebeling II, a copy of which is appended to the main
brief. As to the content thereof, we point out that the
claims on appeal are not commensurate with declarant’s indica-
tion (paragraph 9) that to make a suitable pocket the diameter
of the tool head “must be at least 2 inches.”
REMAND TO THE EXAMINER
We remand this application to the examiner to con-
sider the claimed subject matter relative to arts addressing
Appeal No. 98-0430
Application 08/688,141
9
hand tools that work material by pounding. One such art is
the pestle art.
The patent to Maris (U.S. Patent No. 278,575, issued May 29,
1883), a copy of which is attached to this opinion, is exem-
plary.
In summary, this panel of the board has:
reversed the rejection of claims 9 through 12 under
35 U.S.C. § 103 as being unpatentable over Walker in view of
Schnase; and
reversed the rejection of claims 9 through 12 under
35 U.S.C. § 103 as being unpatentable over Posey.
Additionally, we have remanded the application to
the examiner for consideration of arts addressing hand tools
that work material by pounding.
The decision of the examiner is reversed.
Appeal No. 98-0430
Application 08/688,141
10
REVERSED AND REMANDED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge ) INTERFER-
ENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 98-0430
Application 08/688,141
11
Henry W. Cummings
3313 W. Adams Street
St. Charles, MO 63301