Ex Parte Keppler et al

Patent Trial and Appeal Board

Feb 21, 2013

11719851 (P.T.A.B. Feb. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte THOMAS KEPPLER and ROLF ROTHFELDER
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Appeal 2010-011777
Application 11/719,851
Technology Center 3700
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Before BIBHU R. MOHANTY, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-011777
Application 11/719,851

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 14-25.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The rejected claims are directed to a ball case, which may be used in
the manufacture of soccer balls (Spec. 1). Claim 14, which is the sole
independent claim, is reproduced below.
14. A ball case consisting of two-dimensional blanks
which are connected with each other at their edges, the surface
of the ball case having a pattern of two different groups of
polygons, of which a first group consists of three-armed star-
shaped areas, and several three-armed star-shaped areas in
planar development contiguously forming a one-piece two-
dimensional blank, wherein a second group consists of
polygons which are integrally formed from partial areas of one
equilateral triangle and of three equilateral pentagons in such a
manner that the pentagonal areas are situated at the points of the
corners of the triangle and an imaginary corner and/or the
centre of each of the pentagons lies on the perpendicular
bisector of the opposite side of the triangle, said polygons being
configured as separate, two dimensional blanks.

THE REJECTIONS
The Examiner rejects the claims as follows:
Claims 14-21 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Schwaner (US 5,709,623, iss. Jan. 20, 1998); and
claims 22-25 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Schwaner in view of Kennedy (US 6,966,857 B2, iss. Nov. 22, 2005).

1 Our decision will refer to Appellants’ Specification (“Spec.,” filed May 21,
2007) and Appeal Brief (“App. Br.,” filed Apr. 21, 2010), as well as the
Examiner’s Answer (“Ans.,” mailed May 27, 2010).
Appeal 2010-011777
Application 11/719,851

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ANALYSIS
The Examiner rejects independent claim 14 under 35 U.S.C. § 103(a)
as unpatentable over Schwaner. Specifically, the Examiner acknowledges
that Schwaner does not disclose
the second group [of polygons] being integrally formed
from partial areas of one equilateral triangle and of three
equilateral pentagons in such a manner that the pentagonal
areas are situated at the points of the corners of the triangle and
an imaginary corner and/or the centre of each of the pentagons
lies on the perpendicular bisector of the opposite side of the
triangle
(Ans. 4) as recited in independent claim 1. The Examiner asserts, however,
that it would be obvious to combine three pentagonal ball zones 12 with one
star ball zone 31 of Schwaner, which would provide the claimed second
group of polygons (Ans. 4, 8-10). Appellants argue that such a combination
would require “dissecting, altering and wholly reconfiguring one of the
disclosed embodiments of Schwaner” (App. Br. 15), and thus “[t]here is
nothing in Schwaner, which would teach or suggest modifying the teachings
of Schwaner to achieve the requirements of claim 14” (App. Br. 16), which
Appellants allege is “a vastly different structure from any of the ball casings
disclosed by Schwaner” (App. Br. 12). We disagree with Appellants, and
agree with the Examiner that it would be obvious to rearrange the star and
pentagonal ball zones of Schwaner to provide the claimed second group of
polygons (Ans. 9). See In re Japikse, 181 F.2d 1019 (CCPA 1950) (claims
to a hydraulic power press which read on the prior art except with regard to
the position of the starting switch were held unpatentable because shifting
the position of the starting switch would not have modified the operation of
Appeal 2010-011777
Application 11/719,851

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the device.); In re Kuhle, 526 F.2d 553 (CCPA 1975) (the particular
placement of a contact in a conductivity measuring device was held to be an
obvious matter of design choice). Thus, we sustain the rejection of
independent claim 14 under 35 U.S.C. § 103(a) as unpatentable over
Schwaner.
The Examiner rejects dependent claim 18 under 35 U.S.C. § 103(a) as
unpatentable over Schwaner. Dependent claim 18 recites the additional
limitations of “ball case according to claim 14, consisting of 5 two-
dimensional blanks, namely 4 identical polygons of the second group and
one single one-piece blank which is composed of 16 three-armed star-shaped
areas.” The Examiner acknowledges that Schwaner does not disclose the
claimed “specific number of blanks put together to make larger pieces of the
first group [of polygons]” (Ans. 4). The Examiner states, however, that it
would have been obvious to use a different number of first and second
groups of polygons, than are shown in Schwaner (Ans. 4, 10). We note that
Appellants have not submitted any substantive arguments or evidence as to
why it would not be obvious to use a different number of groups of polygons
than shown in Schwaner. Instead, Appellants argue that Schwaner does not
show using the claimed “5 two-dimensional blanks,” and that “[o]ne having
skill in the art would not be able to use Schwaner’s teaching of a ball casing
having 12 pentagon panels and one of 13, 14, 17, 22 or 32 additional panels
to achieve the 5 total panels required by dependent claim 18” (App. Br. 17)
without further discussion. Thus, we sustain the rejection of dependent
claim 18 under 35 U.S.C. § 103(a) for the same reasons as independent
claim 14.
Appeal 2010-011777
Application 11/719,851

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Claims 15-17 and 19-25 depend from independent claim 14.
Inasmuch as Appellants do not argue these dependent claims separately, we
sustain the rejections of claims 15-17 and 19-25 under 35 U.S.C. § 103(a)
for the same reasons as independent claim 14.

DECISION
The Examiner’s rejection of claims 14-21 under 35 U.S.C. § 103(a) as
unpatentable over Schwaner is AFFIRMED; and
the Examiner’s rejection of claims 22-25 under 35 U.S.C. § 103(a) as
unpatentable over Schwaner in view of Kennedy is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
1.136(a)(1)(iv).

AFFIRMED

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