Ex parte Miggins

Board of Patent Appeals and Interferences

Aug 13, 1999

08864442 (B.P.A.I. Aug. 13, 1999)

Application for patent filed May 28, 1997. According to1
the appellant, the application is a continuation of
Application No. 08/656,087, filed May 31, 1996, now abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LAWRENCE E. MIGGINS
____________
Appeal No. 1999-1978
Application No. 08/864,4421
____________
ON BRIEF
____________
Before CALVERT, ABRAMS, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 3, 5 and 8 through 11, which are all of
the claims pending in this application.
We REVERSE.
Appeal No. 1999-1978 Page 2
Application No. 08/864,442
BACKGROUND
The appellant's invention relates to a weighted practice
bat. An understanding of the invention can be derived from a
reading of exemplary claim 1, which appears in the appendix to
the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Hamilton 3,521,883 July 28,
1970
Worst 4,331,330 May 25,
1982
Dirksing et al. 4,819,935 Apr. 11,
1989
Claims 1, 5 and 9 through 11 stand rejected under 35
U.S.C. § 103 as being unpatentable over Hamilton in view of
Worst.
Claims 3 and 8 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Hamilton in view of Worst as applied
to claim 1 above, and further in view of Dirksing.
Appeal No. 1999-1978 Page 3
Application No. 08/864,442
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (Paper No. 21,
mailed December 21, 1998) for the examiner's complete
reasoning in support of the rejections, and to the brief
(Paper No. 20, filed October 27, 1998) for the appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. Upon evaluation of all the evidence before us, it
is our conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness
with respect to the claims under appeal. Accordingly, we will
not sustain the examiner's rejection of claims 1, 3, 5 and 8
through 11 under 35 U.S.C. § 103. Our reasoning for this
determination follows.
Appeal No. 1999-1978 Page 4
Application No. 08/864,442
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that would
have led one of ordinary skill in the art to combine the
relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
The appellant argues that the applied prior art does not
suggest the claimed subject matter. We agree.
All the claims under appeal require a weighted ring
"permanently secured" to/on the barrel of a bat. It is our
view that the applied prior art does not teach or suggest a
weighted ring "permanently secured" to/on the barrel of a bat.
In that regard, Hamilton teaches a weighted ring 10 removably
clamped in various ways to the barrel of a bat 9. In fact,
Hamilton teaches (column 1, lines 23-64) that the bat may be a
Appeal No. 1999-1978 Page 5
Application No. 08/864,442
regulation baseball bat, the bat is weighted with a removable
weight, and that an object of his invention is to provide a
means for non-destructively weighting a regulation baseball
bat. Thus, it is our view that Hamilton does not teach or
suggest "permanently securing" the weighted ring 10 to the bat
9 in the manner recited in the claims under appeal. We have
also reviewed the references to Worst and Dirksing but find
nothing therein which makes up for the deficiency of Hamilton
discussed above.
Since all the limitations of the claims under appeal are
not taught or suggested by the applied prior art for the
reason stated above, the decision of the examiner to reject
claims 1, 3, 5 and 8 through 11 under 35 U.S.C. § 103 is
reversed.
CONCLUSION
Appeal No. 1999-1978 Page 6
Application No. 08/864,442
To summarize, the decision of the examiner to reject
claims 1, 3, 5 and 8 through 11 under 35 U.S.C. § 103 is
reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1999-1978 Page 7
Application No. 08/864,442
DOUGLAS W. ROMMELMANN
PRAVEL HEWITT KIMBALL & KRIEGER
1177 WEST LOOP SOUTH
10TH FLOOR
HOUSTON, TX 77027-9095x
APPEAL NO. 1999-1978 - JUDGE NASE
APPLICATION NO. 08/864,442
APJ NASE
APJ CALVERT
APJ ABRAMS
DECISION: REVERSED
Prepared By: Gloria Henderson
DRAFT TYPED: 12 Aug 99
FINAL TYPED:
Gloria: Change panel order