Ex parte Haskell

Board of Patent Appeals and Interferences

Jan 14, 1998

08353083 (B.P.A.I. Jan. 14, 1998)

Application for patent filed December 9, 1994.1
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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journal and (2) is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ROGER HASKELL
________________
Appeal No. 97-0394
Application 08/353,0831
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ON BRIEF
________________
Before FRANKFORT, McQUADE and CRAWFORD, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1 through
8, all of the claims pending in the application.
The invention relates to a “bowling ball fingertip
positioner for positioning a pad of a fingertip against an
interior wall of a finger hole in a bowling ball” (specification,
Appeal No. 97-0394
Application 08/353,083
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page 1). Claim 1 is illustrative and reads as follows:
1. A bowling ball for positioning a finger in a finger
hole; comprising:
a substantially cylindrical finger hole having an interior
wall and a length adapted to receive a fingertip portion of a
finger, said fingertip portion comprising the portion of a finger
from the first knuckle to the end of the finger, including a
fingernail and finger pad portion; and
a fingertip positioner protruding into said finger hole and
adapted to position a finger to grip said bowling ball with the
pad portion of said finger pressed against said interior wall of
the finger hole when the finger is positioned in said finger hole
with the fingernail of the finger in contacting relationship with
the fingertip positioner,
wherein in use, the fingertip portion of a finger is placed
in said finger hole with the fingernail of said finger in
contacting relationship with said fingertip positioner such that
said pad portion of said finger is positioned to grip the
interior wall of the finger hole.
The reference relied upon by the examiner as evidence of
anticipation is:
Rowland 5,261,660 Nov. 16, 1993
Claims 1 through 8 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Rowland.
Rowland pertains to a pad adapted to be inserted into the
thumb hole of a bowling ball. As described by Rowland,
FIG. 1 illustrates thumb pad 10 disposed on the
interior side wall 12 defining a thumb hole 14 of a
bowling ball which is shown in cross section as bowling
ball portion 16. Thumb 18 is also disposed in thumb
hole 14. Thumb 18 includes a palm side 20 and a
backside 22 opposite palm side 20. Thumb 18 includes a
Appeal No. 97-0394
Application 08/353,083
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medial knuckle 24 and a proximal thumb joint 26 which
attaches the thumb to a bowler’s hand. Thumb pad 10
includes a thin, distal portion 28 and a slightly
thicker foam pad portion 30. The distal end 32 of foam
pad portion 30 is located longitudinally behind medial
knuckle 24 of thumb 18. Further, foam pad portion 30
is positioned laterally intermediate medial knuckle 24
and proximal thumb joint 26. . . .
It is known that the medial knuckle of some
bowler’s [sic] develop calluses due to rubbing of the
knuckle on the interior side of a bowling ball thumb
hole. These calluses and the friction developed
between the back side of the thumb and the interior
surface of the thumb hole distracts the bowler and
affects the bowler’s ability to control the bowling
ball during the swing and release of the ball down the
alley. The placement of a cushioning pad in a thumb
insert intermediate the medial knuckle and the proximal
thumb joint enables the bowler to better grip the
bowling ball, reduces the friction between the bowler’s
thumb and the thumb hole, and further reduces and
sometimes eliminates the callus formed on the medial
knuckle of the bowler’s thumb [column 2, line 57
through column 3, line 21].

Anticipation is established only when a single prior art
reference discloses, expressly or under principles of inherency,
each and every element of a claimed invention. RCA Corp. v.
Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984).
In the present case, independent claim 1 recites a bowling
ball comprising, inter alia, “a finger tip positioner protruding
Appeal No. 97-0394
Application 08/353,083
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into said finger hole and adapted to position a finger to grip
said bowling ball with the pad portion of said finger pressed
against said interior wall of the finger hole . . . [and] with
the fingernail of the finger in contacting relationship with the
fingertip positioner.” Independent claim 5 recites an insert for
providing a fingertip positioner in a bowling ball “wherein said
insert is positioned in a finger hole of a bowling ball . . .
such that . . . said fingernail is in contacting relationship
with the insert to position the finger for pressing against a
portion of the interior wall of the finger hole.” Independent
claim 8 recites a fingertip positioner for use in a finger hole
of a bowling ball comprising “a protrusion positioned in the
interior wall toward the bottom wall in said finger hole, said
protrusion adapted to bear against a fingernail of a finger and
thereby press an opposite pad portion of the finger against an
opposite portion of the interior wall of the finger hole.”
Although the foregoing limitations contain functional
language, there is nothing intrinsically wrong with defining
something in a claim by what it does rather than by what it is
(In re Hallman, 655 F.2d 212, 215, 210 USPQ 609, 611 (CCPA 1981);
In re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 229 (CCPA
1971)). Taken as a whole, these limitations set forth positive
Appeal No. 97-0394
Application 08/353,083
The recitation of these positive structural relationships2
belie the examiner’s determination that “Claims 5-8 are drawn to
merely an insert . . . and do not require the particulars of a
bowling ball” (answer, Paper No. 10, page 4).
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structural relationships between the fingertip positioner (claims
1 and 8) or insert (claim 5) and the bowling ball. Thus, the2
examiner’s position that the functional language is entitled to
little, if any, weight (see pages 3 through 7 in the answer) is
not well taken.
Clearly, Rowland’s disclosure of a thumb pad in combination
with a bowling ball does not expressly meet the above limitations
in claims 1, 5 and 8. Moreover, the illustration of the bowling
ball portion 16 and thumb pad 10 in Rowland’s Figure 1 renders
unduly speculative, and indeed seems to refute, the examiner’s
apparent determination that these elements meet the limitations
in question under principles of inherency. This being the case,
the examiner’s finding that the subject matter recited in
independent claims 1, 5 and 8, and in dependent claims 2 through
4, 6 and 7, is anticipated by Rowland cannot
stand. Accordingly, we shall not sustain the standing 35 U.S.C.
§ 102(b) rejection of these claims.
Appeal No. 97-0394
Application 08/353,083
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The decision of the examiner is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
JOHN P. McQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-0394
Application 08/353,083
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Glenn D. Bellamy
Barnard Pauly and Bellamy
P.O. Box 58888
Seattle, WA 98138