Ex Parte Jones

Board of Patent Appeals and Interferences

Mar 11, 2010

10715056 (B.P.A.I. Mar. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DONALD R. JONES
____________________

Appeal 2009-006796
Application 10/715,056
Technology Center 3700
____________________

Decided: March 11, 2010
____________________

Before WILLIAM F. PATE, III, LINDA E. HORNER, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Donald R. Jones (Appellant) seeks our review under 35 U.S.C. § 134
of the rejection of claims 1-5, 8-16, 18 and 19, which are all of the pending
claims. Claims 6, 7, 17, 20 and 21 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

Appeal 2009-006796
Application 10/715,056

2
SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellant’s claimed invention is directed to an easily movable,
automatic tee-up device for golfers (Spec. 1:20-21; Spec. 3:8-11).
Claims 1 and 15, reproduced below, are representative of the subject
matter on appeal.
1. An automatic tee-up device, comprising:
a golf ball reservoir;
a platform with a groove for a golf ball to
travel from the reservoir to a tee, with the tee
movable from below a level of the golf ball in the
groove to above the level of the golf ball in the
groove;
a ball ejector disposed to eject golf balls one
at a time from the reservoir onto the groove; and
a lever that projects from the platform and
that actuates the ball ejector and the tee;
wherein after the golf ball is ejected by the
ejector, the golf ball travels on the groove to the
tee and is raised by the tee into a position suitable
for striking with a golf club;
wherein the ball ejector and the tee are
actuated by moving an end of the lever in a
horizontal arc; and
wherein the lever is disposed to be actuated
by a head of the golf club.

15. A method of using an automatic tee-up
device, comprising the steps of:
actuating a lever to cause a ball ejector to
eject golf balls one at a time from a golf ball
reservoir onto a platform with a groove for a golf
ball to travel from the reservoir to a tee; and
Appeal 2009-006796
Application 10/715,056

3
actuating the lever to cause the tee to raise
the golf ball, with the tee movable from below a
level of the golf ball in the groove to above the
level of the golf ball in the groove;
wherein after the golf ball is ejected by the
ejector, the golf ball travels on the groove to the
tee and is raised by the tee into a position suitable
for striking with a golf club; and
wherein an end of the lever is actuated by
being moved in a horizontal arc and is disposed to
be actuated by a head of the golf club.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Koett US 3,693,979 Sep. 26, 1972
Adam US 4,741,537 May 3, 1988
Lai US 4,779,796 Oct. 25, 1988
Chang US 5,529,307 Jun. 25, 1996
Tarbox US 5,647,805 Jul. 15, 1997
Eckardt US 2003/0162598 A1 Aug. 28, 2003

The following rejections by the Examiner are before us for review:
1. Claims 1-4 and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Adam in view of Tarbox.
2. Claims 5 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Adam in view of Tarbox, and further in view of
Chang.
Appeal 2009-006796
Application 10/715,056

4
3. Claims 8-101, 18 and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Adam in view of Tarbox, and further in view
of Eckardt.
4. Claims 11-13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Adam in view of Tarbox, and further in view of
Lai.
5. Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Adam in view of Tarbox and Lai, and further in view of Koett.

ISSUE
The issue before us is whether the Examiner erred in finding that the
combined teachings of Adam and Tarbox, or, in the alternative, the
teachings of Adam alone would have led a person having ordinary skill in
the art to a lever that actuates both a ball ejector and a tee as called for in
independent claims 1 and 15 (App. Br. 7, 11, 14).

ANALYSIS
Regarding claims 1-4 and 15: Appellant contends that the combined
teachings of Adam and Tarbox, or, in the alternative, the teachings of Adam
alone would not have led a person having ordinary skill in the art to a lever
that actuates both a ball ejector and a tee as called for in independent claims
1 and 15 (App. Br. 7, 11, 14).

1 The dependency of claim 10 was amended from canceled claim 6 to
pending claim 1 in an amendment filed January 28, 2008, which was noted
as being entered in a communication mailed February 6, 2008.
Appeal 2009-006796
Application 10/715,056

5
The Examiner found that “Adam also discloses a lever . . . that
projects from the platform and that actuates the ball ejector and the tee via a
head of a golf club . . .” (Ans. 4).
Claims 1 and 15 call for, inter alia, a lever that actuates both a ball
ejector and a tee.
Adam describes:
If the practicing golfer wishes to release a ball to be teed up, he
merely uses the head of his club to depress the padded portion
40 of the pedal bar [lever] 39. As may be readily seen in FIGS.
3-6, depression of the padded portion 40 . . . rotates the rocking
arm 37 . . . out of the path of balls issuing from the outlet of the
flexible tubing 10 . . . With the ball path thus unblocked, a
single ball exits the tubing 10 . . . ” (col. 6, ll. 31-43).
We find that in Adam, the depression of the padded potion 40 of the
pedal bar [lever] 39 causes the ball to eject, that is, actuates a ball ejector.
Adam further describes:
As shown in FIGS. 8 and 9, when a ball comes to rest within
mat depression 62, it seals the tee orifice 89 and prevents the
passage of air from the supply 74 therethrough. When this
happens, positive pressure from the supply 74, unable to
escape, begins to fill the deflated chamber 76 formed by the
base 78, the upper chamber portion 84, and the membrane 87.
As the chamber fills and expands, the unconfined upper portion
84 rises to the position shown in FIG. 9 and causes the tee 88 to
lift the ball to its teed height above the mat.” (col. 6, l. 65-col.
7, l. 6).
We find that in Adam that the ball coming to rest within the mat
depression 62 seals the orifice 89 and causes the tee 88 to rise. Thus, we
find in Adam that the pedal bar [lever] 39 does not actuate the tee 88.
Therefore, we find that Adam does not describe a lever that actuates
both a ball ejector and a tee as called for in independent claims 1 and 15.
Appeal 2009-006796
Application 10/715,056

6
The Examiner has not relied on Tarbox for any teaching that would remedy
the deficiency in Adam (Ans. 4-5).
We conclude that Appellant has demonstrated that the Examiner erred
in rejecting independent claims 1 and 15 over Adam in view of Tarbox.
Appellant has likewise demonstrated error in the Examiner’s rejection of
claims 2-4, which depend from independent claim 1.
Regarding claims 5, 8-14, 16, 18 and 19: The Examiner has not
relied on Chang, Eckardt, Lai or Koett for any teaching that would remedy
the deficiency in Adam (Ans. 5, 6, 8, and 9). We thus conclude that the
Examiner also erred in rejecting claims 5 and 16 over Adam, Tarbox and
Chang; claims 8-10, 18 and 19 over Adam, Tarbox and Eckardt; claims 11-
13 over Adam, Tarbox and Lai; and claim 14 over Adam, Tarbox and Koett.

CONCLUSION
The Examiner has erred in finding that the combined teachings of
Adam and Tarbox, or, in the alternative, the teachings of Adam alone would
have led a person having ordinary skill in the art to a lever that actuates both
a ball ejector and a tee as called for in independent claims 1 and 15.

DECISION
The decision of the Examiner to reject claims 1-5, 8-16, 18 and 19 is
reversed.
REVERSED
Klh

DANE C. BUTZER
11625 CUSTER #110-341
FRISCO, TX 75035