Ex Parte Gallagher

Patent Trial and Appeal Board

Feb 27, 2013

11675383 (P.T.A.B. Feb. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BRIAN GALLAGHER
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Appeal 2010-011003
Application 11/675,383
Technology Center 3700
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Before STEVEN D.A. McCARTHY, ANNETTE R. REIMERS and
CARL M. DeFRANCO, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s 2
decision rejecting claims 1-21. The Examiner has withdrawn claims 22-25 3
from consideration. We have jurisdiction under 35 U.S.C. § 6(b). 4
We DISMISS the appeal as to claims 1-17. We sustain the rejection 5
of claims 18-21.6

1 The Appellant is the real party in interest.
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Claim 18 recites: 1
18. A training bat comprising: 2
An outer structural shell having a handle 3
section 26, a barrel section 22 having an outside 4
diameter (D2) and an inside substantially 5
cylindrical surface, and a transition section 24 6
between the handle section and the barrel section; 7
a rubber tube 28 in tight contact with the 8
inside substantially cylindrical surface; 9
wherein the outside diameter (D2) of the 10
barrel section is in the range between about 1 ½ 11
inches and about 1 ¾ inches; and 12
wherein the rubber tube, substantially 13
cylindrical surface, and outside diameter combine 14
to give a ball hit by the training bat true 15
compression and game-like exit speeds, and the 16
weight and swing weight of a regulation diameter 17
bat of the same length. 18
19
DISMISSAL OF THE APPEAL AS TO CLAIMS 1-17 20
The Notice of Appeal filed August 14, 2009 states that the Appellant 21
“hereby appeals to the Board of Patent Appeals and Interferences [now the 22
Patent Trial and Appeal Board] from the last decision of the examiner.” 23
Page 3 of the Appeal Brief filed December 30, 2009 states that “[c]laims 1-24
21 stand rejected. Claims 18-21 are now on appeal.” Neither the Appeal 25
Brief nor the Reply Brief filed June 16, 2010 includes any argument 26
addressed to the rejection of claims 1-17. Since the Appellant’s submissions 27
unequivocally indicate that they do not intend to pursue an appeal from the 28
rejection of claims 1-17, we DISMISS the appeal as to those claims. See Ex 29
parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008)(precedential). We 30
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note that § 1215.03 of the MANUAL OF PATENT EXAMINING PROCEDURE 1
states that a “withdrawal of the appeal as to some of the claims on appeal 2
operates as an authorization to cancel those claims from the application.” 3
4
ISSUES 5
The Examiner finally rejects claims 18-21 under 35 U.S.C. § 103(a) as 6
being unpatentable over Buiatti (US 6,663,517 B2, issued Dec. 16, 2003) 7
and Mulhausen (US 6,050,908, issued Apr. 18, 2000). The Examiner also 8
provisionally rejects claims 18-21 on the ground of non-statutory 9
obviousness-type double patenting as being unpatentable over claims 5-8 10
and 11 of Gallagher (US Appl’n 11/000,278, filed Nov. 30, 2004) in view of 11
Buiatti. We decline to address the latter ground of rejection as moot: On 12
July 27, 2010, during the pendency of this appeal, the Appellant abandoned 13
the prior application on which the obviousness-type double patenting 14
rejection was based. 15
The Appellant appears to argue the patentability of claims 19-21 16
solely on the basis of the dependency of claims 19-21 from independent 17
claim 18. (See App. Br. 11). Therefore, the rejection of claim 18 under 18
§ 103(a) is representative of the rejections of the other claims on appeal. 19
Only issues and findings of fact contested by the Appellant have been 20
considered. See Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010) 21
(precedential). Two issues are dispositive of this appeal: 22
First, do the evidence and technical reasoning underlying 23
the rejection of claim 18 adequately support the conclusion that 24
one of ordinary skill in the art would have had reason to 25
provide a training bat having an insert and elastomeric layer 26
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similar to that described by Buiatti; a reduced diameter of 1½ 1
inch to 1¾ inch; but the same weight and swing weight? (See 2
App. Br. 9-11; Reply Br. 1-2). 3
Second, does the Examiner have a sound basis for belief 4
that a training bat as proposed by the Examiner having an insert 5
and elastomeric layer similar to that described by Buiatti; a 6
reduced diameter of 1½ inch to 1¾ inch; but the same weight 7
and swing weight, necessarily would have given a ball hit by 8
the training bat true compression and game-like ball exit 9
speeds? (See Reply Br. 2). 10
11
FINDINGS OF FACT 12
The record supports the following findings of fact (“FF”) by a 13
preponderance of the evidence. 14
1. Buiatti describes a bat having a handle 12, barrel 14 and a 15
tapered section 16 interconnecting the handle 12 and the barrel 14. (Buiatti, 16
col. 2, ll. 36-38). 17
2. Buiatti further describes the bat as having a rigid outer shell 10 18
which confines a substantially cylindrical rigid insert 30 in the barrel 14. 19
The bat also has a resilient elastomeric layer 40 sandwiched between the 20
outer shell 10 and the rigid insert 30. (Buiatti, col. 2, l. 65 – col. 3, l. 8). In 21
other words, the elastomeric layer 40 is trapped in tight contact with an 22
inside substantially cylindrical surface of the barrel 14. (See Buiatti, fig. 1). 23
3. Buiatti teaches that the bat “is designed for increased wall 24
compliance and trampoline effect, strength and durability by use of a unique 25
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layered construction which is light weight yet strong and dent resistant.” 1
(Buiatti, col. 2, ll. 56-59). 2
4. Buiatti states as an object “to provide a more compliant 3
lightweight yet strong and durable metal shell softball bat.” (Buiatti, col. 2, 4
ll. 5-7). Buiatti further teaches that “[r]eduction of the wall thickness of the 5
outer shell 10 of a tubular bat desirably reduces the weight of the bat . . . .” 6
(Buiatti, col. 2, ll. 44-49 (italics added)). 7
5. Mulhausen describes a training bat 10 including a handle 8
member 20 and at least one detachable elongated contact surface member 9
30. (Mulhausen, col. 4, ll. 31-36). Each detachable elongated contact 10
surface member 30 has an outer diameter between one inch and one-and-a-11
half inch. (Mulhausen, col. 4, ll. 39-40). 12
6. Mulhausen teaches use of the training bat 10 by attempting to 13
strike a ball 5 with the detachable elongated contact surface member 30. 14
(See Mulhausen, col. 6, ll. 53-55). Therefore, the detachable elongated 15
contact surface member 30 of Mulhausen’s training bat 10 serves the same 16
purpose as the barrel portion of a regulation bat. 17
7. Mulhausen teaches that use of the training bat 10 with the 18
detachable elongated contact surface member 30 of outer diameter in the 19
range of one inch to one-and-a-half inch improves a batter’s batting 20
technique and eye-to-hand coordination. (Mulhausen, col. 3, ll. 10-13). 21
8. Mulhausen states as an object “to provide a training bat with a 22
plurality [of] detachable elongated contact surface members wherein each 23
detachable elongated contact surface member has a different length and 24
weight, or diameter.” (Mulhausen, col. 3, ll. 6-10). Mulhausen teaches that 25
“the increased length and weight of each detachable elongated contact 26
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surface member allows the training bat to be adapted for various ages, 1
heights and strengths of the batter.” (Mulhausen, col. 3, ll. 14-17). 2
3
ANALYSIS 4
First Issue 5
Mulhausen suggests that the use of a training bat having a barrel (or 6
detachable elongated contact surface member 30 functioning as a barrel (see 7
FF 6)), of one inch to one-and-a-half inch improves batting technique and 8
eye-to-hand coordination. (See FF 7). Therefore, one of ordinary skill in the 9
art would have had reason to reduce the diameter of the barrel 14 of a 10
regulation bat such as that described by Buiatti in order to provide a training 11
bat. The Appellant does not appear to argue that the implementation of this 12
reduction in barrel diameter would have been beyond the level of ordinary 13
skill in the art. Neither does the Appellant appear to contend that the success 14
of this effort might not have been reasonably predictable. 15
As the Examiner correctly concludes, as a matter of common sense, 16
one of ordinary skill in the art would have had reason to retain physical 17
characteristics such as the weight and swing weight of a regulation bat even 18
while reducing the barrel diameter to improve batting technique and eye-to-19
hand coordination. (See Ans. 5-6). Given the popularity of organized 20
baseball and softball in the United States, an ordinary layman, not to 21
mention one of ordinary skill in the art, would have recognized that training 22
with a bat of reduced weight or swing weight relative to a regulation bat 23
might have diminished the batter’s ability to swing a regulation bat properly 24
when desired. Perfect Web Techs. v. InfoUSA, Inc., 587 F.3d 1324, 1328-29 25
(Fed. Cir. 2009)(an examiner when analyzing evidence of obviousness may 26
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employ common sense not inconsistent with the ordinary level of knowledge 1
and skill in the art at the time of the invention). Once again, the Appellant 2
does not appear to argue that the implementation of this retention of bat 3
weight and swing weight would have been beyond the level of ordinary skill 4
in the art. Neither does the Appellant appear to contend that the success of 5
this effort might not have been reasonably predictable. 6
Buiatti does not teach away from reducing the diameter of the barrel 7
14 of a regulation bat such as that described by Buiatti while retaining the 8
same weight and swing weight. (See App. Br. 10-11). Buiatti describes a 9
regulation bat, not a training bat. Therefore, Buiatti’s teaching that it may be 10
desirable to make a regulation bat lightweight (see FF 3 and 4) would not 11
have discouraged one of ordinary skill in the art from retaining a regulation 12
weight and swing weight when constructing a training bat. In re Gurley, 27 13
F.3d 551, 553 (Fed. Cir. 1994)( A reference teaches away from the subject 14
matter of a claim only if “a person of ordinary skill, upon reading the 15
reference, would be discouraged from following the path set out in the 16
reference, or would be led in a direction divergent from the path that was 17
taken by the applicant.”). Likewise, Mulhausen’s suggestion that detachable 18
elongated contact surface members might be provided having lesser weights 19
for batters of lesser height, age, or strength (see FF 8) would not have 20
discouraged one of ordinary skill in the art from providing a training bat 21
having regulation weight and swing weight for an adolescent or adult of 22
suitable strength. 23
24
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Second Issue 1
The proposed modification to convert Buiatti’s bat to a training bat 2
would retain the same weight and swing weight as a regulation bat, while at 3
the same time benefitting from the improved wall compliance and degree of 4
“trampoline effect” attributed by Buiatti to Buiatti’s design. (See FF 3). 5
Therefore, the Examiner has a sound basis for belief that a training bat as 6
proposed by the Examiner having an insert and elastomeric layer similar to 7
that described by Buiatti; a reduced diameter of 1½ inch to 1¾ inch; but the 8
same weight and swing weight, necessarily would have given a ball hit by 9
the training bat true compression and game-like ball exit speeds. This sound 10
basis for belief shifts to the Appellant the burden of producing evidence to 11
rebut the belief. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977). The 12
Appellant has not provided arguments or evidence persuasive that the 13
Examiner’s belief is in error. (See, e.g., Reply Br. 2). In view of the 14
foregoing analysis, we sustain the rejection of claims 18-21 under § 103(a) 15
as being unpatentable over Buiatti and Mulhausen. 16
17
DECISION 18
We AFFIRM the Examiner’s decision rejecting claims 18-21. 19
We DISMISS the appeal as to claims 1-17. 20
No time period for taking any subsequent action in connection with 21
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010). 22
23
AFFIRMED 24
25
26
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