Ex Parte Lewis

Board of Patent Appeals and Interferences

Apr 21, 2008

10961551 (B.P.A.I. Apr. 21, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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7
Ex parte JOSEPH EDWIN LEWIS 8
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10
Appeal 2008-0034 11
Application 10/961,551 12
Technology Center 3700 13
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Decided: April 21, 2008 16
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Before WILLIAM F. PATE, III, DAVID B. WALKER and 19
STEVEN D.A. McCARTHY, Administrative Patent Judges. 20
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PATE, III, Administrative Patent Judge.22
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24
DECISION ON APPEAL 25
26
STATEMENT OF CASE 27
The Appellant appeals under 35 U.S.C. § 134 (2002) from a Final 28
Rejection of claims 45 to 55. Claims 1 to 44 have been previously canceled. 29
We have jurisdiction under 35 U.S.C. § 6(b) (2002). 30
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The Appellant claims a device for practicing pitching including a 1
batter mannequin that is implemented to rotate to a right-handed batting 2
position or a left-handed batting position. A preferred embodiment includes 3
a turntable on which the batter mannequin is disposed and a fixed home 4
plate about which the batter mannequin rotates. 5
The sole independent claim 45 reads as follows: 6
45. A system for practicing pitching, comprising: 7
a batter mannequin which rotates to a right handed 8
batting position or to a left handed batting position. 9
10
The prior art relied upon by the Examiner in rejecting the claims is: 11
Bowen 376,628 Jan. 17, 1888 12
Rideout 3,525,525 Aug. 25, 1970 13
14
The Examiner rejected claims 45-50 and 52-55 under 35 U.S.C. 15
§ 102(b) as lacking novelty over Rideout. 16
The Examiner also rejected claim 51 under 35 U.S.C. § 103(a) as 17
unpatentable over Rideout in view of Bowen. 18
We AFFIRM-IN-PART. 19
20
ISSUES 21
The following issues have been raised in the present appeal. 22
1. Whether the Appellant has shown that the Examiner erred in 23
rejecting claims 45-50 and 52-55 as lacking novelty over Rideout. 24
2. Whether the Appellant has shown that the Examiner erred in 25
rejecting claim 51 as unpatentable over Rideout in view of Bowen. 26
27
Appeal 2008-0034
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FINDINGS OF FACT 1
The record supports the following findings of fact (FF) by a 2
preponderance of the evidence. 3
1. Rideout discloses a toy baseball game including a playing piece 4
30 mounted on a turntable 20 and a fixed plate 16 that is disposed around the 5
playing piece (Figs. 1 and 2; Col. 1, ll. 53-65). 6
2. Rideout also illustrates that the playing piece 30 is a right-7
handed batter (Fig. 2). 8
3. Bowen discloses a toy money box including a left-handed batter 9
figurine C that includes a rotatable head X (Figs. 3 and 4; Pg. 1, ll. 72-81). 10
11
PRINCIPLES OF LAW 12
“A claim is anticipated only if each and every element as set forth in 13
the claim is found, either expressly or inherently described, in a single prior 14
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 15
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over 16
the prior art under 35 U.S.C. § 102 begins with a determination of the scope 17
of the claim. We determine the scope of the claims in patent applications 18
not solely on the basis of the claim language, but upon giving claims their 19
broadest reasonable construction in light of the specification as it would be 20
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. 21
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim 22
must then be compared with the prior art. 23
“Section 103 forbids issuance of a patent when ‘the differences 24
between the subject matter sought to be patented and the prior art are such 25
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that the subject matter as a whole would have been obvious at the time the 1
invention was made to a person having ordinary skill in the art to which said 2
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 3
1734 (2007). In KSR, the Supreme Court noted that “[t]o facilitate review, 4
this analysis should be made explicit,” but “the analysis need not seek out 5
precise teachings directed to the specific subject matter of the challenged 6
claim” KSR, 127 S.Ct. at 1741, citing In re Kahn, 441 F.3d 977, 988 (Fed. 7
Cir. 2006). 8
9
ANALYSIS 10
Claims 45-50 and 52-55 11
The Examiner rejected claims 45-50 and 52-55 as lacking novelty 12
over Rideout (Ans. 3 and 4). The Appellant argues each of the rejected 13
claims separately, and thus, we address each of these arguments in detail 14
infra. 15
16
Claim 45 17
In rejecting independent claim 45, the Examiner contends that Rideout 18
discloses a batter mannequin 30 which rotates to a right-handed position or 19
to a left-handed position citing Column 3, lines 26-30 of Rideout (Ans. 3 and 20
5). Rather than arguing that Rideout does not disclose a batter mannequin, 21
the Appellant argues that Rideout merely discloses a batter that neither 22
rotates to a right-handed batting position nor a left-handed batting position 23
(Appeal Br. 5; Reply Br. 6 and 7). The Appellant also argues that the 24
Examiner has misconstrued the disclosure of Rideout in that the cited 25
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portion of Rideout relates to positioning a ball-projecting block 114 to 1
represent a right-handed batter or a left-handed batter, but that the cited 2
portion of Rideout does not relate to the batter mannequin itself (Appeal Br. 3
5 and 6; Reply Br. 7). The Appellant further argues that the batter of 4
Rideout is a fixed toy figure, and as such, cannot change batting hands 5
(Appeal Br. 5; Reply Br. 7). 6
Initially, we concur with the Appellant that the Examiner 7
misconstrued the Rideout reference in that the cited portion relied upon for 8
disclosing the right and left-handed batting positions is related to the bulk 9
projecting block 114 and not to the batter 30. However, it is also noted that 10
Rideout does disclose that the batter 30 is mounted on a rotatable carousel 11
20 so that the batter can be rotated to the position shown in Figure 1 in 12
which the batter is in a right-handed batting position. Although Rideout 13
does not disclose rotation of the batter to a left-handed batting position, we 14
note that independent claim 1 uses the alternative term “or”. Hence, 15
independent claim 45 does not require rotation of the batter to both a right-16
handed batting position and a left-handed batting position as argued by the 17
Appellant (Reply Br. 7). Instead, claim 45 is satisfied upon rotation of the 18
batter to either a right-handed or a left-handed batting position, the right-19
handed position being disclosed in Rideout (FF 1 and 2). 20
The Appellant’s argument seeking to distinguish the right or left-21
handedness of the batter from the right or left “batting position” recited in 22
claim 1 is noted (Reply Br. 7). In particular, the Appellant contends that the 23
term “batting position” requires the batter to assume “a specific physical 24
relationship with respect to the plate and with respect to the catcher” (Reply 25
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Br. 7). However, we note that claim 45 does not recite a plate or a catcher, 1
much less define the specific physical relationship between them. In 2
essence, the Appellant is arguing that we should interpret the term “batting 3
position” as requiring such specified physical relationship between the 4
batter, a catcher and a plate. 5
We decline to adopt such a restricted construction of the term “batting 6
position” as advocated by the Appellant. The Appellant is reminded that 7
during prosecution, the Examiner and the Board are required to give claims 8
their broadest reasonable construction in light of the specification as it would 9
be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. 10
Tech. Ctr., 367 F.3d at 1364 (stating giving broad construction to claim 11
terms is not unreasonable during examination because the applicant can 12
amend the claims). Thus, because Figure 1 of Rideout clearly shows the 13
batter 30 in the appropriate position on the modeled baseball diamond for 14
batting, we find that Rideout discloses a batter in a “batting position” as 15
claimed. 16
The Appellant’s additional argument that the batter figure of Rideout 17
is a fixed toy figure, and as such, cannot possibly change batting hands is 18
also noted (Appeal Br. 5; Reply Br. 7). However, the Appellant’s argument 19
fails from the outset because it is not based on limitations appearing in claim 20
1, which merely recites rotation of the batter mannequin to a right-handed 21
batting position or to a left-handed batting position. In re Self, 671 F.2d 22
1344, 1348 (CCPA 1982). Therefore, in view of the above, the Appellant 23
has not shown that the Examiner erred in rejecting independent claim 45 as 24
lacking novelty over Rideout. 25
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Claim 46 1
In rejecting claim 46, the Examiner contends that Rideout shows a 2
fixed plate (i.e. field 16) that is disposed in front of the batter 30 and that the 3
batter rotates about the fixed plate (Ans. 3 and 5). The Appellant argues that 4
the recited “fixed plate” refers to a home plate so that it is improper for the 5
Examiner to interpret the field 16 as corresponding to the recited fixed plate 6
(Appeal Br. 6). In support, the Appellant refers to the Specification of the 7
application which states “[t]urntable 26 rotates about a fixed plate 32 (home 8
plate) which is disposed in front of batter mannequin 22,” and statements 9
regarding the batter being positioned in relationship to the fixed plate like 10
the actual game of baseball (App. Br. 6 and 7; Reply Br. 8; Spec. 9, ll. 27-11
30). 12
The Examiner contends that the field 16 corresponding to the fixed 13
plate is all around the batter 30 (including the front of the batter) and further 14
contends that the Appellant is arguing limitations not in the claim 46 which 15
merely requires the plate to be fixed, but does not recite a particular shape or 16
form of the fixed plate (Ans. 5). We agree. 17
While there is some support in the Specification for interpreting the 18
limitation “fixed plate” to only refer to the home plate, we find that the cited 19
passage with the parenthetical does not clearly limit the definition of the 20
fixed plate as argued. If the Appellant intended for fixed plate to refer to a 21
fixed home plate, the Appellant had the opportunity to amend the claims 22
accordingly during prosecution. Thus, in giving the term “fixed plate” the 23
broadest reasonable construction in light of the specification, we find that 24
Rideout discloses this limitation and that the Appellant has failed to establish 25
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that the Examiner erred in rejecting dependent claim 46 as lacking novelty 1
over Rideout. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d at 1364. 2
3
Claim 47 4
With respect to claim 47, the Appellant relies on arguments presented 5
relative to independent claim 45 (App. Br. 7). The Appellant also contends 6
that in contrast to the Examiner’s Answer, limitations are not being read into 7
the claims other than the proper definition of the claim words (Reply Br. 9). 8
The Appellant refers to the term “catcher” as an example. However, the 9
relevance of this argument to claim 47 in particular is not clear because there 10
is no dispute as to the meaning of the terms in claim 47 and “catcher” is not 11
recited in the claim. Therefore, the Appellant has not established Examiner 12
erred in rejecting claim 47 as lacking novelty over Rideout. 13
14
Claim 48 15
The Examiner asserts that Rideout discloses a batter mannequin 16
having a body which faces the center of the turntable as recited in claim 48 17
(Ans. 3 and 6). The Appellant argues that in Rideout, the batter’s body faces 18
about 90° away from the center of rotation 24 of the rotor 20, and thus, does 19
not disclose this limitation (Appeal Br. 7; Reply Br. 10; Figs. 1, 2 and 4). 20
We agree. 21
Figure 2 of Rideout clearly shows that the batter 30 is positioned so 22
that his body faces a tangential direction of the turntable, and his body does 23
not face the center of the turntable as recited in claim 48 (Appeal Br. 7; 24
Reply Br. 10). Therefore, because Rideout does not disclose each and every 25
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limitation of claim 48, the Appellant has shown that the Examiner erred in 1
rejecting claim 48 as lacking novelty over Rideout. 2
3
Claim 49 4
In rejecting claim 49, the Examiner states that the turntable of Rideout 5
is capable of rotating not only to 180°, but also to 360° to position the batter 6
(Ans. 6). The Appellant argues that the batter of Rideout rotates around the 7
bases of a diamond, and because the batter is fixed, it cannot go from a right-8
handed batter to a left-handed batter regardless of the amount of rotation of 9
the turntable (Appeal Br. 8; Reply Br. 11). We agree with the Appellant. 10
It is noted that dependent claim 49 specifically recites rotation of the 11
turntable to position the batter in the “right-handed and left-handed batting 12
positions” (emphasis added), thereby reciting both right and left-handed 13
batting positions (in contrast to independent claim 45 which recites these 14
positions using the alternative language “or”). Rideout clearly does not 15
disclose a left-handed batting position. Therefore, the Appellant has shown 16
that the Examiner erred in rejecting dependent claim 49 as lacking novelty 17
over Rideout. 18
19
Claim 50 20
In response to the Examiner’s rejection of dependent claim 50, the 21
Appellant again relies upon the argument that the recited “fixed plate” refers 22
to a home plate (Appeal Br. 9; Reply Br. 12). However, this argument is not 23
persuasive as discussed above relative to dependent claim 46. Thus, the 24
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Appellant has not shown that the Examiner erred in rejecting claim 50 as 1
lacking novelty over Rideout. 2
3
Claim 52 4
In rejecting dependent claim 52, the Examiner asserts that the batter 5
shown in Figure 1 of Rideout has both a left looking face and a right looking 6
face (Ans. 3). However, as argued by the Appellant, the basis for the 7
Examiner's assertion is unclear (Appeal Br. 10; Reply Br. 13). In fact, 8
Figure 2 of Rideout appears to show a batter with a single face that is 9
looking to the right, not both to the left and to the right. Thus, the Appellant 10
has shown that the Examiner erred in rejecting claim 52 as lacking novelty 11
over Rideout. 12
13
Claim 53 14
In response to the Examiner’s rejection of dependent claim 53 which 15
recites that the batter mannequin has a body which, when viewed from the 16
front, is bilaterally symmetrical about a vertical median plane, the Appellant 17
notes that Rideout batter is holding a bat over one shoulder as shown in 18
Figures 1, 2, and 4 so that it is not bilaterally symmetrical (Appeal Br. 10 19
and 11; Reply Br. 13 and 14). The Appellant also argues that the recited 20
feature allows the batter to assume both a right-handed batting position and a 21
left-handed batting position (Appeal Br. 10; Reply Br. 13). However, it is 22
noted that claim 53 merely requires the batter to have a bilaterally 23
symmetrical body, and does not specify that the batter’s body is positioned 24
to be bilaterally symmetrical about the vertical median plane which is what 25
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the Appellant is essentially arguing. In this regard, it is noted that the body 1
of the batter as shown in Figures 2 and 4 of Rideout is bilaterally 2
symmetrical about a vertical median plane in that each side of the body 3
includes a portion of the torso as well as an arm and a leg, etc. Thus, the 4
Appellant has not shown that the Examiner erred in rejecting dependent 5
claim 53 as lacking novelty over Rideout. 6
7
Claim 54 8
In rejecting dependent claim 54 which recites a fixed plate disposed in 9
front of the batter mannequin and a catcher mannequin disposed behind the 10
batter mannequin, the Examiner notes that Rideout discloses various 11
mannequins 158, 160, 162 and 164 for catching the ball as satisfying the 12
claim limitation (Ans. 6). In response, the Appellant again contends that 13
Rideout does not disclose a home plate as argued relative to dependent claim 14
46 discussed supra, and further contends that Rideout does not teach a 15
catcher mannequin that is disposed behind the batter mannequin as claimed 16
(Appeal Br. 11; Reply Br. 14). In this regard, the Appellant notes that the 17
Specification clearly defines the limitation “disposed behind said batter 18
mannequin” to mean a relationship wherein the batter is disposed between 19
the pitching area and the catcher as in an actual game of baseball or softball 20
(Appeal Br. 11-12; Reply Br. 10; Spec. 10, ll. 21-26). 21
We concur with the Appellant because the cited portion of the 22
Specification clearly defines “disposed behind said batter mannequin”. 23
While the Examiner’s finding that Rideout discloses various mannequins 24
158, 160, 162 and 164 for catching the ball is correct, these disclosed 25
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mannequins are not in the proper positional relationship recited in claim 54 1
as defined in the Specification. 2
Thus, in view of the definition of the recited positional relationship 3
between the catcher and the batter which is defined in the Specification, we 4
agree with the Appellant that Rideout does not disclose claim 54. Thus, the 5
Appellant has shown that the Examiner erred in rejecting dependent claim 6
54 as lacking novelty over Rideout. 7
8
Claim 55 9
In regards to the Examiner’s rejection of dependent claim 55, we find 10
that Rideout fails to disclose the right-handed and left-handed batting 11
positions as discussed relative to dependent claim 49, a batter having both 12
the left looking face and a right looking face as discussed relative to 13
dependent claim 52, or a catcher disposed behind the batter as discussed 14
relative to dependent claim 54. Therefore, the Appellant has shown that the 15
Examiner erred in rejecting dependent claim 55. 16
17
Claim 51 18
Dependent claim 51 recites that the batter mannequin has a rotatable 19
head, the rotatable head automatically assuming a left-looking position when 20
the batter mannequin is in a right-handed batting position, and automatically 21
assuming a right-looking position when the batter mannequin is in a left-22
handed batting position. 23
The Examiner rejected dependent claim 51 as unpatentable over 24
Rideout in view of Bowen which discloses a coin money box with a left-25
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handed batter having a rotatable head (Ans. 4). The Examiner contends that 1
it would have been obvious to one of ordinary skill in the art to provide a 2
rotatable head as disclosed in Bowen on the batter of Rideout to make the 3
game of Rideout more realistic (Ans. 5). 4
While the Examiner has articulated a reason with rational 5
underpinnings for combining the references in the manner suggested, we 6
find that such a combination still fails to render obvious the recited invention 7
of claim 51. We note that claim 51 requires automatic rotation of the head 8
based on the batting position of the batter (either right-handed or left-9
handed). While Bowen does disclose a left-handed batting position, both 10
Rideout and Bowman disclose fixed batting positions and do not suggest 11
changing the batting position of the batter. Therefore, the Examiner has not 12
established that claim 51 is unpatentable over Rideout and Bowen, and the 13
Appellant has shown that the Examiner erred. 14
15
CONCLUSIONS 16
1. The Appellant has not shown that the Examiner erred in 17
rejecting claims 45-47, 50 and 53 as lacking novelty over Rideout. 18
2. The Appellant has shown that the Examiner erred in rejecting 19
claims 48, 49 and 52, 54 and 55 as lacking novelty over Rideout. 20
3. The Appellant has shown that the Examiner erred in rejecting 21
claim 51 as unpatentable over Rideout in view of Bowen. 22
23
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ORDER 1
1. The Examiner’s rejection of claims 45-47, 50 and 53 is 2
AFFIRMED. 3
2. The Examiner’s rejections of claim 48, 49, 51, 52, 54 and 55 are 4
REVERSED. 5
No time period for taking any subsequent action in connection with 6
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 7
§ 1.136(a)(1)(iv) (2007). 8
9
AFFIRMED-IN-PART 10
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vsh 14
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TED MASTERS 17
TED MASTERS & ASSOCIATES, INC. 18
5121 SPICEWOOD DRIVE 19
CHARLOTTE, NC 28227-0313 20
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