Ex Parte Garske

Board of Patent Appeals and Interferences

Oct 18, 2005

10057719 (B.P.A.I. Oct. 18, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte STEPHEN J. GARSKE
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Appeal No. 2005-1815
Application No. 10/057,719
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ON BRIEF
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Before FRANKFORT, PATE and McQUADE, Administrative Patent Judges.
Per curiam
DECISION ON APPEAL
Stephen J. Garske appeals from the examiner’s rejection of
claims 1, 3, 8, 9, 11 through 13, 20 and 22 through 30. Claims 2
and 14, the only other claims pending in the application, stand
withdrawn from consideration.
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Application No. 10/057,719
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THE INVENTION
The invention relates to a sleeve for a golf hole cup.
Representative claims 1, 22, 25 and 29 read as follows:
1. A golf cup apparatus comprising:
a golf cup comprising a cylinder extending from a top
surface to a bottom surface, the golf cup including a wall
extending between the top surface and the bottom surface, the cup
wall defined by an interior surface and an exterior surface; and
a cup sleeve disposed within the golf cup, the sleeve
comprising a one-piece, seamless cylinder having an open circular
top end and an open circular bottom end and the cup sleeve
abutting the interior surface of the golf cup without interfering
with a golf ball dropping within the golf cup.
22. A golf cup sleeve comprising:
a cylindrical sleeve having an outer diameter dimensioned to
fit against an inner surface of a golf cup and an inner diameter
dimensioned so as not to interfere with a golf ball dropping
within the golf cup, the cylindrical sleeve having a one-piece,
seamless form wherein the cylindrical sleeve presents a
substantially smooth inner surface when the cylindrical sleeve is
mounted within the golf cup.
25. A golf cup apparatus comprising:
a golf cup having an inner surface defining a golf cup
sleeve mounting area; and
a golf cup sleeve adapted to fit within the golf cup sleeve
mounting area without interfering with a golf ball dropping
within the golf cup, wherein the golf cup sleeve includes an
unbroken cylindrical sleeve having an outer diameter dimensioned
to fit against the inner surface of the golf cup.
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29. A method of inserting a golf cup sleeve into a golf cup,
the method comprising:
placing a one-piece, seamless cylindrical golf cup sleeve
into a golf cup; and
releasing the golf cup sleeve so that an outer surface of
the golf cup sleeve is forced against an inner surface of the
golf cup and an inner surface of the golf cup sleeve does not
interfere with a golf ball dropping within the golf cup.
THE EVIDENCE
The items relied upon by the examiner as evidence of
obviousness are:
Hageman 5,362,044 Nov. 08, 1994
Browne 5,382,018 Jan. 17, 1995
Crocker et al. (Crocker) 355,171 Aug. 20, 1931
(British Patent Document)
Boyd 2,206,804 Jan. 18, 1989
(British Patent Document)
The item relied upon by the appellant as evidence of non-
obviousness is:
The 37 C.F.R. § 1.132 declaration of Stephen J. Garske filed
December 16, 2002.
THE REJECTIONS
Claims 1, 9, 11, 12, 22, 25, 27 and 29 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Boyd in view of
Browne.
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Claims 3, 13, 20, 23, 26 and 30 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Boyd in view of Browne
and Hageman.
Claims 8, 24 and 28 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Crocker in view of Browne.
Attention is directed to the main brief filed October 14,
2003 and reply brief filed February 27, 2004 and to the Office
action mailed March 5, 2003 and answer mailed December 23, 2003
for the respective positions of the appellant and examiner
regarding the merits of these rejections.
DISCUSSION
I. The 35 U.S.C. § 103(a) rejection of claims 1, 9, 11, 12, 22,
25, 27 and 29 as being unpatentable over Boyd in view of Browne
Boyd discloses a liner for a golf hole cup. The liner (see
Figures 1 and 2) comprises a strip of flexible plastic that is
rolled into a cylinder with overlapping ends and placed into a
golf hole cup. Once in the cup, the strip opens out under its
natural resilience to tightly engage the wall of the cup. Boyd
teaches that the liner is reversible and may be cleaned and
re-used multiple times (see page 2, lines 31 through 35).
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The examiner concedes that Boyd does not respond to the
limitations in independent claims 1, 22 and 29 requiring a cup
sleeve which is a one-piece, seamless cylinder or the limitation
in independent claim 25 requiring the sleeve to be an unbroken
cylindrical sleeve.
Browne discloses a cylindrical collar 10 designed to be
placed in a golf hole above the cup 14 (see Figures 1 and 3).
The collar serves to enhance the visibility of the hole and to
maintain the shape and sharpness of the hole (see column 3, lines
18 through 25). The collar has a one-piece, seamless design (see
Figure 4) that is “sufficiently flexible to permit temporary
collapse of the diameter for insertion and removal from the hole”
(column 3, lines 35 through 37). According to Browne, this
construction makes the collar “easy to install” (column 4, line
47).
Combining Boyd and Browne to reject independent claims 1,
22, 25 and 29, the examiner submits that “[i]n view of Browne the
use of a one-piece seamless design in fashioning Boyd's liner
would have been obvious to the ordinarily skilled artisan wishing
to make Boyd's device easier to insert into the hole” (Office
action, page 2).
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1 As a result, it is unnecessary to go into the merits of the
appellant’s declaration evidence of non-obviousness.
6
While Browne does disclose a one-piece, seamless collar that
is easy to install, the combined teachings of Boyd and Browne do
not corroborate the examiner’s implication that the liner of Boyd
is difficult to install or that the collar of Brown is easier to
install. Further, these prior art devices serve different
purposes: one (Boyd) lines a golf hole cup and provides a highly
visible and easily renewable (by cleaning) indication of a golf
hole and the other (Browne) lines the portion of the hole above
the cup and reinforces the bare earth, provides a moisture
barrier and keeps the edge of the hole sharp and well defined,
while also enhancing the visibility of the hole. At most, the
combined teachings of Boyd and Browne would have suggested
pairing the golf hole cup liner of Boyd with the bare hole collar
of Browne, which would not result in the subject matter recited
in independent claims 1, 22, 25 and 29.
Hence, as applied by the examiner, the combination of Boyd
and Browne fails to establish a prima facie case of obviousness
with respect to the subject matter recited in claims 1, 22, 25
and 29, and dependent claims 9, 11, 12 and 27.1 Therefore, we
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shall not sustain the standing 35 U.S.C. § 103(a) rejection of
these claims.
II. The 35 U.S.C. § 103(a) rejection of claims 3, 13, 20, 23, 26
and 30 as being unpatentable over Boyd in view of Browne and
Hageman
Hageman discloses a conventional golf hole cup 5 (see
Figure 1) modified to include an interior recess 20 that defines
an upper lip 35 which acts to retain an advertisement insert 30
(see Figure 2). The insert 30 is a strip of flexible plastic
that is formed into a partial cylinder and inserted into the cup
wherein it springs into the recess and is held by the lip.
The examiner’s application of Hageman does not cure the
above noted shortcomings of Boyd and Browne relative to the
subject matter recited in independent claims 1, 22, 25 and 29, or
in independent claim 20 which also requires a one-piece, seamless
cup sleeve. Hence, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of claim 20, and dependent claims 3, 13, 23,
26 and 30, as being unpatentable over Boyd in view of Browne and
Hageman.
III. The 35 U.S.C. § 103(a) rejection of claims 8, 24 and 28 as
being unpatentable over Crocker in view of Browne
Claims 8, 24 and 28 depend from claims 1, 22 and 25,
respectively.
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Crocker discloses golf hole liner which, depending on its
construction, may or may not extend into a golf hole cup. The
liner is a cylindrically formed sheet of fibrous material which,
according to the examiner, does not respond to the one-piece,
seamless cylinder limitations in parent claims 1 and 22 or the
unbroken cylindrical sleeve limitation in parent claim 25. In
short, the examiner’s reliance on Browne to overcome these
deficiencies is unsound, essentially for the reasons expressed
above with respect to the proposed combination of Boyd and
Browne.
Thus, we shall not sustain the standing 35 U.S.C. § 103(a)
rejection of claims 8, 24 and 28 as being unpatentable over
Crocker in view of Browne.
IV. Remand to the examiner
As indicated above, independent claim 25 differs from
independent claims 1, 20, 22 and 29 in that it defines the golf
cup sleeve as being an unbroken cylindrical sleeve instead of a
one-piece, seamless cylinder. Notwithstanding the examiner’s
apparent finding to the contrary, the golf hole liner disclosed
by Crocker appears to meet the unbroken cylindrical sleeve
limitation in claim 25 as well as all of the other limitations in
this claim and dependent claim 27. On remand, the examiner
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should reconsider the patentability of claims 25 and 27 in view
of the Crocker disclosure and enter an appropriate rejection if
such is warranted.
SUMMARY
The decision of the examiner to reject claims 1, 3, 8, 9, 11
through 13, 20 and 22 through 30 is reversed, and the application
is remanded to the examiner for further consideration.
REVERSED AND REMANDED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
WILLIAM F. PATE, III ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
JPM/ki
Appeal No. 2005-1815
Application No. 10/057,719
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