Ex Parte Hicks

Board of Patent Appeals and Interferences

Nov 27, 2002

09728901 (B.P.A.I. Nov. 27, 2002)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MICHAEL J. HICKS
__________
Appeal No. 2002-1900
Application 09/728,901
___________
ON BRIEF
___________
Before ABRAMS, MCQUADE, and NASE, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Michael J. Hicks appeals from the final rejection of claims
1 through 7, all of the claims pending in the application.
THE INVENTION
The invention relates to a hand-held amusement device which
is defined in representative claim 1 as follows:
1. A hand-held amusement device comprising;
an aerial projectile and
a U-shaped conduit having a uniform circular cross-section
throughout its length and having opposite open ends so that one
open end can discharge the aerial projectile therefrom while the
other open end can receive the aerial projectile therein whereby
proper manipulation of the curved conduit by a player in a
clockwise/counterclockwise movement will keep the aerial
projectile in a continuous play mode.
Appeal No. 2002-1900
Application 09/728,901
2
THE PRIOR ART
The references relied on by the examiner to support the
final rejection are:
Burrows 3,069,805 Dec. 25, 1962
Griffin 3,445,551 May 20, 1969
Cummings 4,863,174 Sep. 5, 1989
THE REJECTIONS
Claims 1, 2 and 4 through 7 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Cummings in view of Burrows.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cummings in view of Burrows and Griffin.
Attention is directed to the brief (Paper No. 8) and the
answer (Paper No. 9) for the respective positions of the
appellant and the examiner with regard to the merits of these
rejections.
DISCUSSION
Cummings, the examiner’s primary reference, discloses a
hand-held ball catching and throwing device generally similar to
that claimed by the appellant. One of Cummings’ objectives is
“to provide a catching surface having a shape adapted to receive
a ball in ballistic flight and which will smoothly and
progressively change the direction of the ball” (column 2, lines
2 through 5). To this end,
Appeal No. 2002-1900
Application 09/728,901
3
a straight, rigid elongated open-ended tubular member
[10] formed of transparent material provides an
enclosed smooth passage for receiving and discharging
an aerial projectile, such as a ball [16], at or from
either end thereof, and has an outwardly extending
scoop-shaped throwing and catching member [12, 14]
attached to each end for providing a curved surface
over which the projectile may be directed at or from
the open end of the tubular member by baton-like
manipulation [column 2, lines 25 through 34].
Each throwing and catching member 12 or 14 presents an
upwardly concave scoop-shaped surface having a generally circular
outer rim of a radius approximately twice that of the tube 10
(see column 3, lines 18 through 26; and column 4, lines 1 through
8).
As conceded by the examiner (see page 2 in the answer), the
Cummings device does not respond to the limitation in appealed
claim 1 requiring “a U-shaped conduit having a uniform circular
cross-section throughout its length and having opposite open ends
so that one open end can discharge the aerial projectile
therefrom while the other open end can receive the aerial
projectile therein.” The examiner’s reliance on Burrows to
overcome this deficiency is not well taken.
Burrows discloses an amusement device comprising a plurality
of support blocks 10, a plurality of straight and curved conduits
24 and 26, and a plurality of couplings 28 for selectively
Appeal No. 2002-1900
Application 09/728,901
4
joining the conduits to one another and to the blocks (see, for
example, Figure 4) such that the conduits form a continuous
passageway for a ball/marble M. Figure 5, which is focused on by
the examiner (see page 2 in the answer), shows U-shaped
passageway section composed of a pair of curved conduits 26
joined by a coupling 28.
In proposing to combine Cummings and Burrows to reject the
appealed claims, the examiner concludes that it would have been
obvious to one of ordinary skill in the art “to have employed the
ends of Burrows [presumably as shown in Figure 5] with the
apparatus of Cummings in order to increase the skill level of the
player as the game is played” (answer, page 3).
Even if Burrows is assumed to analogous art (the appellant
argues that it is not), however, there is nothing in its
depiction of coupled conduit sections (Figure 5) intended to form
part of a larger conduit system (Figure 4) which would have
suggested modifying the Cummings device in the manner proposed
for any discernable reason, let alone the unfounded skill level
rationale advanced by the examiner. Indeed, Cummings’ stated
intention to provide a catching surface having a shape adapted to
receive a ball and smoothly and progressively change its
direction seemingly would have taught away from this
Appeal No. 2002-1900
Application 09/728,901
5
modification. Thus, although the appellant’s invention is a
relatively simple and straightforward device, the examiner’s
reference evidence does not justify a conclusion that the
differences between the subject matter set forth in claim 1 and
the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made to a person
having ordinary skill in the art.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of claim 1, and dependent claims 2 and 4
through 7, as being unpatentable over Cummings in view of
Burrows.
Since Griffin’s disclosure of a phosphorescent, glow in the
dark ball does not cure the shortcomings of the Cummings-Burrows
combination relative to parent claim 1, we also shall not sustain
the standing 35 U.S.C. § 103(a) rejection of dependent claim 3 as
being unpatentable over Cummings in view of Burrows and Griffin.
SUMMARY
The decision of the examiner to reject claims 1 through 7 is
reversed.
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Application 09/728,901
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REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
JOHN P. MCQUADE )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
JPM/kis
Appeal No. 2002-1900
Application 09/728,901
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