Ex Parte Hansberry

Board of Patent Appeals and Interferences

Aug 29, 2008

11219990 (B.P.A.I. Aug. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOSEPH P. HANSBERRY,
Appellant
____________________

Appeal 2008-4670
Application 11/219,9901
Technology Center 3700
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Decided: August 29, 2008
____________________

Before CAROL A. SPIEGEL, ERIC GRIMES, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

SPIEGEL, Administrative Patent Judge.

DECISION ON APPEAL

1 Application 11/219,990 ("the 990 application”) was filed 6 September 2005
and is a continuation-in-part of application 10/359,008, filed 5 February
2003, which is a continuation of application 09/206,460, filed 7 December
1998, which claims benefit under 35 U.S.C. § 119 to provisional application
60/067,988, filed 9 December 1997. The 990 application is also a
continuation-in-part of application 10/388,199, filed 13 March 2003, which
is a continuation-in-part of application 09/206,460, filed 7 December 1998,
which claims benefit under 35 U.S.C. § 119 to provisional application
60/067,988, filed 9 December 1997. The real party in interest is said to be
the inventor, Joseph P. Hansberry (Appeal Brief pursuant to 37 C.F.R.
§ 41.37, filed 15 October 2007 ("App. Br."), 1).
Appeal 2008-4670
Application 11/219,990

I. Statement of the Case
This is an appeal under 35 U.S.C. § 134 from the final rejection of all
pending claims, claims 1 and 3-17. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM-IN-PART.
The subject matter on appeal is directed to a device for improving
hand-eye coordination in activities such as boxing or batting. Claims 1 and
10, the only independent claims, are illustrative and read (App. Br.
Appendix A-1 and A-2, emphasis added):
1. A practice device, comprising:
a flexible elongate member having a
proximal end and a distal end, the proximal end
being adapted to be mounted on a support
structure;
a target formed at the distal end of the
flexible elongate member, the target serving to
dissipate energy such that when the target is struck
by a user, the target exhibits a small range of
lateral motion; and
a weighted portion that is formed on the
flexible elongate member and that weighs at least
25 grams, the weighted portion being adapted to
provide inertia when the target is struck by the
user, thereby stabilizing the device.

10. A practice device, comprising:
a mount that is adapted to couple to a
support structure;
an anchoring member having a first end
adapted to couple to the mount such that the
anchoring member extends laterally therefrom, the
anchoring member further comprising a lumen
extending from the first end to a second end;
an end cap that is adapted to be placed on
the second end of the anchoring member; and
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a flexible elongate member that is adapted
to extend through the end cap and at least a
portion of the lumen of the anchoring member, the
flexible elongate member having a target formed at
a distal end thereof that is adapted to dissipate
energy such that the device has a small range of
motion when struck by a user.

The Examiner has rejected (i) claims 1, 3-10, and 12-17 under 35
U.S.C. § 103(a) as unpatentable over Zuber2 (Ans.3 3-5), and (ii) claims 10
and 11 under 35 U.S.C. § 103(a) over Green4 in view of Incaudo5 (Ans. 5-
6).
II. Findings of Fact ("FF")
The following findings of fact, and those set forth in the Discussion,
are supported by a preponderance of the evidence of record.
A. Appellant's invention
[1] In an embodiment illustrated in Figure 7A, the 990 specification
("Spec.") describes a practice device 510 comprising a mount 516, an
anchoring tubular member 530, an end cap 540, and a flexible
elongated member 512 with a target 518 at distal end 512b of flexible
elongated member 512 and a covered weighted portion 526 formed on
the flexible elongated member 512 proximal to target 518 (Spec. ¶¶
40-46). Figure 7A is reproduced below.

2 U.S. Patent 5,662,537, "Tethered Baseball Batting Practice Apparatus,"
issued 2 September 1997, to Gary T. Zuber ("Zuber").
3 Examiner's Answer mailed 11 December 2007 ("Ans.").
4 U.S. Patent 5,282,615, "Tethered-Ball, Hitting Practice Apparatus," issued
1 February 1994, to Green et al. ("Green").
5 U.S. Patent 6,099,419, "Interchangeable Ball-Practice Trainer," issued 8
August 2000, based on application 08/262,576, filed 20 June 1994, to
Incaudo et al. ("Incaudo").
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{Figure 7A of the 990 application is said to show a perspective view of an
exemplary embodiment of Appellant's practice device.}

[2] According to the 990 specification, a weighted portion, optionally
surrounded by a covering such as a ball, “is adapted to provide inertia
when the target is struck by a user, and can be a knot, a nut, a washer,
a wooden member, a plastic member or a ball bearing” (Spec. ¶ 10).
[3] In other words, the weighted portion is adapted to allow the target to
resist movement when struck by a user.
[4] "The weighted portion can also provide additional mass to the device,
preferably adding at least 5 grams, more preferably 25 grams or more.
In one embodiment, the overall device can be at least 50 grams to
provide greater stability." (Spec. ¶ 11).
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[5] In some embodiments, the ball covering the weighted portion can be
the target that is struck by the user (Spec. ¶ 13).
B. The prior art
1. Zuber
[6] In an embodiment illustrated in Figure 1, Zuber discloses a baseball
batting practice apparatus 10 comprising an anchoring tubular
member 15 having a first proximal end adapted to connect to a
mounting member 16 and a second distal end having an end cap 30.
A T-shaped rotatable structure 27 slips over anchoring tubular
member 15 and is positioned just proximal to end cap 30. The leg of
the T-shaped structure (portion 31) has an end portion 14 to which one
end of a tether 11 (flexible elongated member) is attached. The other
end of the tether 11 is attached to a ball 13 by stringing it through a
hole drilled in the ball and then knotting the tether (knot 11A). (Zuber
3:33-4:47.) Figure 1 of Zuber is reproduced below.

{Figure 1 of Zuber is said to show a three-dimensional view of a batting
practice device.}

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[7] Figure 5 of Zuber is an enlarged view of rotatable T-shaped structure
27. The leg of structure 27 includes a portion 31 that forms a port
facing away from anchoring member 15. An interiorly threaded
bushing 32 is secured within portion 31 at the port facing away from
anchoring member 15 and an exteriorly threaded plug 33 is removably
secured to bushing 32. End portion 14 of tether 11 is connected to
plug 33. (Zuber 4:30-39). Figure 5 of Zuber is reproduced below.

{Figure 5 of Zuber is said to show an enlarged view taken in cross-section of
the rotational components attached the tether to the anchoring arm 15.}

2. Green
[8] In an embodiment partially illustrated in Figure 2, Green discloses a
ball batting practice apparatus 10 comprising a T-shaped connector 40
(mount) for connecting side portions 42 and 44 to form a hollow
tether-assembly-retaining-member 16 (anchoring member). Tether-
assembly-retaining-member 16 includes a means for guiding a tether
cord 20 through open end 36 of the tether-assembly-retaining-member
16. The free-hanging end 24 of tether cord 20 is connected to a
means, such as a rubber band 28 or a pair of Velcro straps 30, 32, for
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releasably attaching a ball to the end 24 of tether cord 20. (Green
4:34-61; 5:1-24; 6:38-54.) Figure 2 of Green is reproduced below.

{Figure 2 of Green is said to show an enlarged perspective view of the top of
a preferred embodiment of a batting practice device.}

[9] The ends of the tether-assembly-retaining-member 16 (anchoring
member) of Green are open, see e.g., open end 36.
3. Incaudo
[10] Incaudo discloses a batting practice device wherein the height of a
ball attached to an arm of the device can be adjusted (Incaudo
abstract). As seen in Figure 6, the upper end portion 12-A of arm 12
is received by a receptor 13 positioned within a cylindrical housing of
a mounting standard 11-U. The end opening 12-B of arm 12 has a
circular fitting through which a flexible line 15 extends to a ball.
When it desired to move the position of arm 12, its end portion 12-A
is lifted out of receptor 13 and moved in 90o increments from position
#1 through position #4. (Incaudo 6:64-7:9.) Figure 6 is reproduced
below.

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{Figure 6 of Incaudo is a partial perspective view showing various rotational
positions for a tubular arm in relation to an associated mounting stand.}

III. Discussion
A. Legal principles
A claimed invention is not patentable if its subject matter would have
been obvious to a person of ordinary skill in the art. 35 U.S.C. § 103(a); KSR
Int'l Co. v. Teleflex, Inc., 127 S.Ct. 1727, 1734 (2007); Graham v. John
Deere Co. of Kansas City, 383 U.S. 1, 3 (1966). Facts relevant to a
determination of obviousness include (1) the scope and content of the prior
art, (2) any differences between the claimed invention and the prior art, (3)
the level of ordinary skill in the art and (4) relevant objective evidence of
obviousness. KSR, 127 S.Ct. at 1734; Graham, 383 U.S. at 17-18. Further,
one of ordinary skill in the art is presumed to have skills apart from what the
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prior art references expressly disclose. In re Sovish, 769 F.2d 738, 743 (Fed.
Cir. 1985). A person of ordinary skill is also a person of ordinary creativity,
not an automaton. KSR, 127 S.Ct. at 1742.
Dependent claims are nonobvious under § 103 if the independent
claim on which they depend is non-obvious. Panduit Corp. v. Dennison Mfg.
Co., 810 F.2d 1561, 1576 n.36 (Fed. Cir. 1987).
B. Analysis
1. Rejection of claims 1 and 3-9 under § 103 over Zuber
a. Claims 1, 3-6, and 8
Appellant argues Zuber does not teach or suggest a device having a
weighted portion that weighs at least 25 grams and is adapted to provide
inertia when the target is struck by the user to stabilize the device (App. Br.
6). The Examiner maintains that since Appellant's specification discloses
the weight can be a knot or a washer and Zuber discloses a knot 11A and a
washer 32, there is nothing unobvious about selecting a knot and/or a washer
weighing at least 25 grams as required by claim 1 (Ans. 6-7). According to
the Examiner, "the use of knots of various weights in combination with
tethered balls are old and well known and obvious to incorporate because it
aids in securely retaining the ball on the tether" (Ans. 3).
Here, we find that using a bigger and/or heavier knot, e.g., a double
knot or triple knot, would aid in more securely retaining a ball on a tether.
For example, a bigger knot would be less likely to go through a hole in the
ball through which the tether was threaded. Further, if the first looping of a
double or triple knot came undone, the remaining looping(s) would keep the
ball on the tether. To hold otherwise presumes that a person of ordinary skill
in the art is unknowledgeable and unskilled. This is error. In re Sovish, 769
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F.2d at 743. Furthermore, it is well settled that it is obvious to duplicate one
or more parts of a machine or manufacture unless the duplication causes a
new mode of operation or produces a new unitary results. See In re Harza,
274 F.2d 669 (CCPA 1960). Thus, there is nothing unobvious about using a
double or triple knot, for example. Therefore, Appellants' argument that "the
use of weighted knots to securely retain a ball on a tether is not well known
or obvious" is without merit (App. Br. 7).
Appellant also argues that a person of ordinary skill in the art would
have no motivation to use a weighted portion (heavier knot) to increase the
inertia of the target (ball) when hit because the device of Zuber allows for
free motion of the ball (App. Br. 7-8). This argument presumes a person of
ordinary skill would have been unaware that a heavier object is more
resistant to movement than a lighter object. Here, we agree with the
Examiner's position that it would have been obvious to use a bigger and/or
heavier knot to more securely tether the ball to Zuber's device, thereby
stabilizing the device. Therefore, this argument is not persuasive of
reversible Examiner error.
Finally, for the sake of completeness, as Appellant points out (Reply
Br.6 2), we find that washer 32 (or for that matter, structure 33 associated
with the washer) of Zuber cannot be the claimed weighted portion because it
is not "formed on the flexible elongate member" (see FF 7).
Therefore, we sustain the rejection of independent claim 1 and claims
3-6, and 8 dependent thereon under § 103 over Zuber. Panduit Corp. v.
Dennison Mfg. Co., 810 F.2d at 1576 n.36.

6 Reply Brief pursuant to 37 C.F.R. § 41.41 filed 29 January 2008 ("Reply
Br.").
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b. Claim 7
As to claim 7, the Examiner maintains that it would have been an
obvious matter of design choice to provide the device of Zuber with a
conical shaped target because both targets perform the same function of
providing a practice device in order to improve hand-eye coordination (Ans.
4). Appellant argues there is no motivation to replace the baseball of Zuber
with any other target, such as the conical piece of cloth recited in claim 7
(App. Br. 8). However, as stated by the Examiner (Ans. 7-8),
[t]here is nothing novel or patentable in using
targets of various shape and size in [a] sports
training device. Therefore, to suggest a target in
the shape of a conical cloth is patentable is not
persuasive. It is noted, in Green et al patent strap
(30,32) form a conical shaped target which is
formed of Velcro which is considered a material
such as a cloth (see figure 2). Therefore, . . . there
is no novelty in using a conical-shaped target
formed of cloth.
Appellant did not challenge the Examiner's statement in their Reply Brief.
Therefore, we sustain the rejection of claim 7 under § 103 over Zuber.
c. Claim 9
The Examiner maintains that Zuber shows the mount adapted to
receive the proximal end 14 of tether 11 is a cleat, i.e., slip-on portion 31,
seen in Figure 4 (Ans. 4). According to the Examiner, while claim 9
requires the mount to be a cleat, a mount "that is adapted to receive the
proximal end" of the tether is not required to come into physical contact with
the tether (Ans. 8). Appellant disagrees (App. Br. 9). Appellant argues
physical contact is required and slip-on portion 31 is not structurally able to
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receive the proximal end 14 of tether 11 because it receives bushing 32
instead (Reply Br. 4).
"During patent examination the pending claims must be interpreted as
broadly as their terms reasonably allow." In re Zletz, 893 F.2d 319, 321
(Fed. Cir. 1989). The broadest reasonable interpretation of "adapted to
receive" is "made to fit" and allows for the presence of a modification to
allow the fit to occur. Appellant has not pointed to, and we do not find, a
narrowing definition of "adapted to receive" in the 990 specification, e.g., a
definition requiring direct physical contact between the proximal end of the
flexible elongate member. Thus, this argument is unpersuasive of reversible
Examiner error.
Therefore, we sustain the rejection of claim 9 under § 103 over Zuber.
2. Rejection of claims 10 and 12-17 under § 103 over Zuber
Appellant argues Zuber does not teach or suggest the end cap required
by claim 10 because cap 30 of Zuber is not adapted to allow the flexible
elongate member to extend therethrough (App. Br. 10). The Examiner
contends that the combination of the end cap 30 and plug 33 disclosed in
Zuber corresponds to the claimed end cap (Ans. 8). However, as seen in
Figure 6 of Zuber, the flexible elongated member (tether 11) of Zuber is
connected to plug 33 which is secured to bushing 32 inside rotatable
structure 27 (FF 7). Rotatable structure 27 of Zuber slips over anchoring
tubular member 16 (FF 6). Thus, as pointed out by Appellant (Reply Br. 4-
5), tether 11 does not extend through both plug 33 and at least a portion of
the lumen of anchoring tubular member 16 as required by claim 10.
Moreover, the Examiner has not explained how the combination of end cap
30 and plug 33 of Zuber can be adapted to allow tether 11 to extend through
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the cap 30/plug 33 combination and at least a portion of the lumen of
anchoring tubular member 16.
Therefore, we reverse the rejection of independent claim 10 and
claims 12-17 dependent thereon under § 103 over Zuber. Panduit Corp. v.
Dennison Mfg. Co., 810 F.2d at 1576 n.36.
3. Rejection of claims 10 and 11 under § 103 over Green
and Incaudo

Initially, we note that Appellant has argued claims 10 and 11 as a
single group (App. Br. 14-15). Therefore, the patentability of claim 11 rises
or falls with that of claim 10.
Appellant argues that end opening 12-B of Incaudo includes a circular
fitting seated within tubular arm 12 that is more of a plug than an end cap
since the end of tubular arm 12 remains uncapped (App. Br. 14; Reply Br.
5).
“[I]n proceedings before the PTO, claims in an application are to be
given their broadest reasonable interpretation consistent with the
specification.” In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983). The
Federal Circuit has emphasized that the terms which define the scope and
content of the subject matter claimed must be construed in a manner
consistent with the specification. Phillips v. AWH Corp., 415 F.3d 1303,
1315-16 (Fed. Cir. 2005)(en banc). The specification is the primary aid in
deciphering claim language. Id. at 1315. Here, nothing in claim 10 requires
the end cap to seal the end of the anchoring member completely. Indeed,
Figure 7A of the 990 application illustrates an end cap 540 with a hole in its
center. Therefore, this argument is not persuasive of reversible Examiner
error.
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Appellant also argues neither Green nor Incaudo teaches or suggests a
device with a target adapted to dissipate energy such that the device has a
small range of motion when struck by a user (App. Br. 14). However, as
pointed out the Examiner (Ans. 7), recitation of "adapted to" in a claim is
merely language of intended use. Loctite Corp. v. Ultraseal, Ltd., 781 F.2d
861, 864-68 (Fed. Cir. 1985). While such functional limitations cannot be
disregarded Pac-Tec, Inc. v. Amerace Corp., 903 F.2d 796, 801 (Fed. Cir.
1990), the dispositive issue is whether the prior art structure is capable of
performing the desired function. Here, Appellant has not shown that the ball
of Green and/or Incaudo is incapable of being adapted to dissipate energy as
recited in claim 10. For example, the tether might be shortened or the
tubular arm might be repositioned. Furthermore, the 990 specification does
not provide any limiting definition of a "small range of motion." Argument
of counsel cannot take the place of evidence lacking in the record. Meitzner
v. Mindick, 549 F.2d 775, 782 (CCPA 1977); see also In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take
the place of evidence.”).
Since neither of Appellant's arguments demonstrate reversible error in
the Examiner's conclusion of prima facie obviousness, we affirm the
decision of the Examiner rejecting claims 10 and 11 under § 103 over Green
and Incaudo.
IV. Order
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner rejecting claims 1 and
3-9 under 35 U.S.C. § 103(a) over Zuber is AFFIRMED;
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FURTHER ORDERED that the decision of the Examiner rejecting
claims 10 and 12-17 under 35 U.S.C. § 103(a) as unpatentable over Zuber is
REVERSED, and
FURTHER ORDERED that the decision of the Examiner rejecting
claims 10 and 11 under 35 U.S.C. § 103(a) over Green in view of Incaudo is
AFFIRMED; and
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a).
AFFIRMED-IN-PART

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