Ex Parte Hu et al

Board of Patent Appeals and Interferences

Aug 12, 2009

11035421 (B.P.A.I. Aug. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte
CHUNWEI JERRY HU and CHRISTOPHER MICHAEL WALDECK
__________

Appeal 2009-0016621
Application 11/035,4212
Technology Center 3700
__________

Decided: August 12, 2009
__________

Before LORA M. GREEN, FRANCISCO C. PRATS, and
STEPHEN WALSH, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a football.
The Examiner has rejected the claims as obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.

1 Reebok International Ltd. is the real party in interest.
2 Oral argument was presented in this appeal on August 4, 2009.

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STATEMENT OF THE CASE
Claims 1-13, 22-25, and 27-30 stand rejected and are on appeal (App.
Br. 3). Claims 1, 10, and 22, the independent claims, are representative and
read as follows:
1. A football comprising:
an inflatable bladder;
a layer of wound filament fibers surrounding said
inflatable bladder;
a carcass surrounding said layer of wound filament
fibers, said carcass including raised areas and recessed areas
and
a plurality of panels positioned within said recessed areas
of said carcass, such that an outer surface of said plurality of
panels is flush with an outer surface of said raised surface of
said carcass;
wherein said outer surface of said raised areas of said
carcass has the appearance of a pebbled outer surface; and
wherein said raised areas of said carcass are greater than
0.25 inch wide.

10. A football comprising:
an inflatable bladder;
a layer of wound filament fibers surrounding said
inflatable bladder;
a carcass surrounding said layer of wound filament
fibers, said carcass including raised areas and recessed areas
and
a plurality of panels positioned within said recessed areas
of said carcass, such that an outer surface of said plurality of
panels is flush with an outer surface of said raised surface of
said carcass;
wherein said outer surface of said raised areas of said
carcass includes the appearance of stitching, seams and a
pebbled outer surface; and
wherein said raised areas of said carcass are greater than
0.25 inch wide.

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22. A football comprising:
an inflatable bladder;
a layer of wound filament fibers surrounding said
inflatable bladder;
a carcass surrounding said layer of wound filament
fibers, said carcass including raised areas and recessed areas
and
a plurality of panels positioned within said recessed areas
of said carcass, such that an outer surface of said plurality of
panels is flush with an outer surface of said raised surface of
said carcass;
wherein said raised areas of said carcass are greater than
0.25 inch wide; and
wherein said raised areas of said carcass are molded to
include a pebbled outer surface.

The Examiner cites the following documents as evidence of
unpatentability:

Tebbetts, Jr. US 3,948,518 Apr. 6, 1976
Yang US 6,520,877 B1 Feb. 18, 2003
Downing3 US 5,480,144 Jan. 2, 1996

The following rejections are before us for review:
Claims 1, 3-9, 22-25, and 28-30 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over admitted prior art in view of Yang (Ans.
3-4).
Claims 2, 10, and 27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over admitted prior art in view of Yang and Tebbetts (Ans. 4).

3 Although not cited in the “Evidence Relied Upon” section of the
Examiner’s Answer, the Examiner in fact cites Downing in one of the
pending rejections (see Ans. 4).
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Claims 11-13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over admitted prior art in view of Yang and Downing (Ans. 4-
5).
OBVIOUSNESS -- CLAIMS 1, 3-9, 22-25, AND 28-30
ISSUE
The Examiner cites paragraph [0003] of the Specification as evidence
that footballs constructed of a bladder, a surrounding layer of filaments, and
an outer carcass with raised areas and recessed areas having panels
positioned in the recessed areas, were known in the art (Ans. 3). The
Examiner also cites paragraph [0003] of the Specification as evidence that
the raised areas of the carcass between the panels were known to be about
0.25 inch wide (id.).
The Examiner concludes that an ordinary artisan armed with this
knowledge would have considered it obvious for a football of the prior art
construction to have raised areas greater than 0.25 inch wide, as recited in
independent claims 1 and 22, because Appellants have “not shown the
criticality for the recited widths by the demonstration of a new and
unexpected result obtained therefrom and it appears that the width shown by
the prior art football of appellant's own disclosure would accomplish similar
purposes” (id.). The Examiner further concludes that an ordinary artisan
would have considered it obvious for the raised areas of the prior art football
to be molded to include a pebbled outer surface in view of Yang’s disclosure
that such surfaces improve the grip of game balls (id.).
Appellants contend that “the Examiner has not met the burden
required to sustain a prima facie case of obviousness of independent claim 1,
and claims 2-9, 11-13, and 28-30” (App. Br. 12). Specifically, Appellants
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argue, “there is no rationale to increase the width of the raised areas other
than impermissible hindsight, as the rims of basketballs are standardized at
about 0.25 inch wide and there would have been no rationale to one of
ordinary skill in the art to increase the width of the raised areas in a football”
(id. at 11).
Moreover, Appellants urge, making the raised areas of the carcass
greater than 0.25 inch wide “generates benefits not suggested or appreciated
in the cited art or that would have been apparent to one of ordinary skill in
the art” (id.) For example, Appellants argue, when the raised areas of the
carcass cover a substantial area of the football, “less of the expensive
synthetic or natural leather material is necessary, thereby decreasing the
costs of the ball. The greater the width of the raised areas of the carcass, the
lesser amount of expensive material such as natural leather is required to
manufacture the football” (id. (citing Specification [0028])).
Appellants further contend that, although “Yang appears to disclose a
basketball with ribs 41 having protruding grains 411 so the basketball does
not slip from the hand of the user,” Yang does not provide any “suggestion
or rationale for a football to include raised areas of a carcass having ‘a
pebbled outer surface’ to allow for larger width of raised areas of the carcass
that appear to resemble the material of the panels as is called for by the
present invention” (id. at 12). Rather, Appellants argue, “[s]uch would not
have been obvious to one of ordinary skill in the art at the time the invention
was made, absent impermissible hindsight” (id.).
Appellants repeat these arguments with respect to claims 22-25 (see
id. at 12-14).
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In view of the positions advanced by Appellants and the Examiner,
the issue with respect to this rejection is whether the Examiner erred in
concluding that an ordinary artisan, advised by the prior art of the suitability
of constructing footballs with an outer carcass including raised and recessed
areas, would have considered it obvious for the raised areas to be greater
than 0.25 inch wide, and for the raised areas to have a pebbled outer surface.
FINDINGS OF FACT (“FF”)
1. Appellants’ Figure 1 is reproduced below:

Figure 1 shows “a sectional view of a game ball” (Spec. [0009].)
2. Paragraph [0003] of the Specification, discusses the features shown in
Figure 1, and states:
In order to correct the problem of consistency, a football
has been made which includes techniques generally used for
making basketballs. In this type of football 100, a cross section
of which, for example, is shown in FIG. 1, an inflatable bladder
102 is covered first with a wound filament layer 104 and then
with a thermoplastic rubber carcass 106. Synthetic or natural
leather panels 108 are then laminated to and over the
thermoplastic rubber carcass, leaving a rim 107 of carcass
exposed and slightly recessed between each panel 108. In
basketballs, the exposed rim forms the traditional channels on a
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basketball, which are about 0.25 inch wide. In a football,
however, the exposed rims form the same about 0.25 inch wide
channels between panels 108, which are uncharacteristic of a
conventional sewn football. As such, football 100 does not
have the appearance of a conventional football, complete with
the appropriate stitching. Football 100 also uses synthetic or
natural leather over all but the very small rim 107 around the
football, maintaining the undesirable costs of the conventional
football.

(Spec. [0003].)
3. Appellants do not dispute that paragraph [0003] describes the
construction of prior art footballs.
4. Yang discloses “a laminated basketball . . . which does not slip from
the hand when playing” (Yang, col. 1, ll. 6-8).
Figure 1 of Yang, reproduced below, depicts a cross section of “a
laminated basketball constructed according to the prior art” (id. at col. 1, ll.
14-15):

Figure 1 shows:
[A] laminated basketball, [which] is comprised of . . . a thread
layer 12 wound round the outside wall of the inner tube 11, a
carcass 13 adhered to the outside wall of the thread layer 12, the
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carcass 13 having longitudinally grooved partition ribs 132
raised from the flat outer surface 131 thereof, and panels of
leather cover 14 adhered to the flat outer surface 131 of the
carcass 13 and respectively abutted against each of the
longitudinally grooved partition ribs 132

(Id. at col. 1, ll. 15-25.)
5. Yang discloses that, because the raised portion 132 of the carcass has
a smooth groove, “the player cannot positively grasp the basketball with the
hand having sweat” (id. at col. 1, ll. 29-30).
6. Figure 3 of Yang, reproduced below, “is a sectional view showing the
structure of a laminated basketball according to the present invention” (id. at
col. 1, ll. 49-50):

Figure 3 shows:
The carcass 4 comprises a plurality of longitudinally grooved
partition ribs 41 formed integral with the outside wall thereof.
The leather cover 5 is comprised of multiple panels adhered to
the outside wall of the carcass 4 and respectively abutted
against each of the respectively longitudinally grooved partition
ribs 41. Each longitudinally grooved partition rib 41 has
protruding grains 411 disposed flush with the protruding grains
of the grained outside wall of the leather cover 5.

(Id. at col. 2, ll. 11-19.)
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7. Yang discloses that, “[b]ecause the partition ribs 41 have protruding
grains 411 disposed flush with the protruding grained outside wall of the
leather cover 5, the basketball does not slip from the hand the user is playing
the basketball” (id. at col. 2, ll. 19-22).
PRINCIPLES OF LAW
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme
Court reaffirmed that “when a patent ‘simply arranges old elements with
each performing the same function it had been known to perform’ and yields
no more than one would expect from such an arrangement, the combination
is obvious.” Id. at 417 (quoting Sakraida v. AG Pro, Inc., 425 U.S. 273
(1976)). The Court reasoned that:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.

Id. at 421.
The Court also noted that the analysis under 35 U.S.C. § 103 properly
“take[s] account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id. at 418; see also id. at 421 (“A
person of ordinary skill is . . . a person of ordinary creativity, not an
automaton.”).
The Court further noted that “[a] factfinder should be aware, of
course, of the distortion caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning. Rigid preventative rules that deny
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factfinders recourse to common sense, however, are neither necessary under
our case law nor consistent with it.” Id. at 421 (citations omitted).
With respect to the obviousness of ranges, our reviewing court has
stated that, “[i]n cases involving overlapping ranges, we and our predecessor
court have consistently held that even a slight overlap in range establishes a
prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003). Moreover, “a prima facie case of obviousness exists when the
claimed range and the prior art range do not overlap but are close enough
such that one skilled in the art would have expected them to have the same
properties.” Id.
It is well settled, however, that evidence of unexpected results may
rebut an examiner’s prima facie case of obviousness. See In re Rouffet, 149
F.3d 1350, 1355 (Fed. Cir. 1998); see also KSR, 550 U.S. at 416 (“The fact
that the elements worked together in an unexpected and fruitful manner
supported the conclusion that Adams’s design was not obvious to those
skilled in the art.”) (discussing United States v. Adams, 383 U.S. 39 (1966)).
“[W]hen unexpected results are used as evidence of nonobviousness,
the results must be shown to be unexpected compared with the closest prior
art.” In re Baxter-Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991.
Moreover, “[m]ere improvement in properties does not always suffice
to show unexpected results. . . . [W]hen an applicant demonstrates
substantially improved results . . . and states that the results were
unexpected, this should suffice to establish unexpected results in the absence
of evidence to the contrary.” In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995).
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Thus, “any superior property must be unexpected to be considered as
evidence of non-obviousness.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1371 (Fed. Cir. 2007).
ANALYSIS
Appellants’ arguments do not persuade us that the Examiner erred in
concluding that an ordinary artisan, advised by the prior art of the suitability
of constructing footballs with an outer carcass including raised and recessed
areas, would have considered it obvious for the raised areas to be greater
than 0.25 inch wide, and for the raised areas to have a pebbled outer surface.
With respect to the limitation in claims 1 and 22 requiring the raised
area of the carcass to be greater than 0.25 inch wide, as Appellants concede,
footballs having the claimed basketball-type laminated construction were
known in the art to have carcasses in which the raised areas were 0.25 inch
wide (see FF 1-3). Thus, while it may be that claims 1 and 22 differ from
the prior art with respect to this limitation, the difference is miniscule, as the
claims encompass raised areas only one or two thousandths of an inch wider
than 0.25 inch. An ordinary artisan would therefore have reasoned that
footballs having widths encompassed by claims 1 and 22 would have the
same properties, and would function equivalently, to prior art footballs
having raised areas 0.25 inch wide.
Accordingly, since the claimed range directly abuts the prior art value,
we agree with the Examiner that the claimed range would have been prima
facie obvious in view of the prior art. See Peterson, 315 F.3d at 1329.
Moreover, we are not persuaded that a person of ordinary skill in the art
would consider it unexpected that decreasing the area of the ball covered by
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the leather panels would also reduce the expense associated with the leather
or synthetic leather material.
We also agree with the Examiner that a person of ordinary skill in the
art, advised by Yang that a player’s grip on a basketball is improved by
placing protruding grains on the raised areas of the ball’s carcass, flush with
the protruding grains on the ball’s leather panels (FF 7), would have been
prompted to place the same pebbling on the corresponding raised areas of
the carcass of prior art footballs using the basketball-type construction, flush
with the footballs’ leather panels, so as to improve players’ capacity to grip
the footballs. While Yang might not explicitly state that its teachings were
applicable to footballs, in our view an ordinary artisan would have
reasonably inferred that it would be desirable to ensure optimal grip on a
football. Thus, we further agree with the Examiner that an ordinary artisan
would have considered a football having a carcass with a raised area
including a pebbled outer surface, as recited in claims 1 and 22, obvious in
view of the prior art.
In sum, Appellants’ arguments do not persuade us that the Examiner
failed to make a prima facie case of obviousness with respect to claims 1 and
22, nor are we persuaded that Appellants have presented evidence adequate
to rebut that prima facie case. We therefore affirm the Examiner’s rejection
of claims 1 and 22 as being obvious in view of the prior art as admitted by
Appellants, taken with Yang.
Because they were not argued separately, claims 3-9, 23-25, and 28-
30 fall with claims 1 and 22. See 37 C.F.R. § 41.37(c)(1)(vii).
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OBVIOUSNESS -- CLAIMS 2, 10, and 27
ISSUE
Claims 2, 10, and 27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over admitted prior art in view of Yang and Tebbetts (Ans. 4).
In addition to the limitations, discussed above, requiring the raised
areas of the carcass to be greater than 0.25 inch wide and have pebbled outer
surfaces, independent claim 10 requires the raised areas of the carcass to
“include[] the appearance of stitching [and] seams.” To meet that limitation,
the Examiner cites Tebbetts as teaching that “it is well known in the art of
footballs to provide raised portions (62) having simulated seams (42)
thereon” (Ans. 4). Based on these teachings, the Examiner concludes that an
ordinary artisan would have considered it obvious to provide prior art
footballs having the laminated basketball-type construction described at
paragraph [0003] of the Specification “with a simulated seam and stitching
thereon in order to more closely resemble a conventional football” (Ans. 4).
Appellants contend, as with claims 1 and 22 discussed above, that the
Examiner erred in concluding that the width of the football carcass’ raised
areas recited in claim 10 would have been obvious to a person of ordinary
skill in the art (App. Br. 8-9). Appellants further contend that Yang and
Tebbetts fail to suggest providing the raised area of the football carcass with
“the appearance of stitching, seams and a pebbled outer surface” as recited
in claim 10 (id. at 9-10).
In view of the positions advanced by Appellants and the Examiner,
the issue with respect to this rejection is whether the Examiner erred in
concluding that an ordinary artisan, advised by the prior art of the suitability
of constructing footballs with an outer carcass including raised and recessed
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areas, would have considered it obvious for the raised areas to be greater
than 0.25 inch wide, and for the raised areas to have “the appearance of
stitching, seams and a pebbled outer surface” as recited in claim 10.
FINDINGS OF FACT
8. Tebbetts discloses a “football including a wound bladder, a rubber
layer including seams, and leather panels having square edges abutting the
sides of the seams. The rubber layer has a thickness which gradually
increases from a minimum midway of the seams to a maximum at the
seams” (Tebbetts, abstract).
9. Tebbetts discloses that once the rubber layer is placed onto the
football, “[t]he thus covered bladder . . . is then placed in a mold to form
raised simulated side seams 42 bordering the four longitudinal quadrants of
the ellipsoid, the side seams 42 fairing into simulated end seams 44” (id. at
col. 3, ll. 49-52).
10. Tebbetts discloses that “[l]eather panels 50 are [then] placed on the
ball in between the seams 42 . . . such that joints between the panels and the
simulated seams 42 and 44 are smooth and present no height differential”
(id. at col. 3, ll. 56-62).
ANALYSIS
Appellants’ arguments do not persuade us that the Examiner erred in
concluding that an ordinary artisan, advised by the prior art of the suitability
of constructing footballs with an outer carcass including raised and recessed
areas, would have considered it obvious for the raised areas to be greater
than 0.25 inch wide, and for the raised areas to have “the appearance of
stitching, seams and a pebbled outer surface” as recited in claim 10.
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With respect to the limitations directed to the width and pebbled
surface of the football carcass’ raised areas, for the reasons discussed above,
we agree with the Examiner that a football having those features would have
been obvious to an artisan of ordinary skill. We also agree with the
Examiner that an ordinary artisan would have considered it obvious to
provide prior art footballs having the laminated basketball-type construction
described at paragraph [0003] of the Specification with the appearance of
stitching and seams, as recited in claim 10.
Specifically, we agree with the Examiner that that a person of
ordinary skill in the art, advised by Tebbetts of the desirability of providing
rubber-layer footballs with simulated seams (see FF 8-10), would have been
prompted to provide simulated seams and stitching to footballs so as to
impart to the footballs a closer resemblance to natural footballs.
Thus, given the evidence of record, the football recited in claim 10
amounts to no more than the predictable application of prior art elements
according to their established functions. See KSR, 550 U.S. at 417. We
therefore affirm the Examiner’s obviousness rejection of claim 10.
Because they were not argued separately, claims 2 and 27 fall with claim 10.
See 37 C.F.R. § 41.37(c)(1)(vii).
OBVIOUSNESS -- CLAIMS 11-13
Claims 11-13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over admitted prior art in view of Yang and Downing (Ans. 4-
5). Claim 11 recites “[t]he football of claim 1, wherein at least a portion of
one of said panels includes holes for laces.”
The Examiner cites Downing to meet that limitation, and concludes
that an ordinary artisan would have considered it obvious to provide prior art
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footballs having the laminated basketball-type construction described at
paragraph [0003] of the Specification “with holes in the panel and a lace
therefor[] in order to sew the football closed during construction” (Ans. 4).
Appellants do not contest the merits of this rejection. Because we
detect no deficiency in the Examiner’s prima facie case, we affirm the
Examiner’s obviousness rejection of claims 11-13.

SUMMARY
We affirm the Examiner’s rejection of claims 1, 3-9, 22-25, and 28-30
under 35 U.S.C. § 103(a) as being unpatentable over admitted prior art in
view of Yang.
We affirm the Examiner’s rejection of claims 2, 10, and 27 under 35
U.S.C. § 103(a) as being unpatentable over admitted prior art in view of
Yang and Tebbetts.
We also affirm the Examiner’s rejection of claims 11-13 under 35
U.S.C. § 103(a) as being unpatentable over admitted prior art in view of
Yang and Downing.

TIME PERIOD
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

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