Ex Parte Patterson

Board of Patent Appeals and Interferences

Aug 9, 2007

10438053 (B.P.A.I. Aug. 9, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte Owen M. Patterson
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Appeal 2007-0052
Application 10/438,053
Technology Center 3700
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Decided: August 9, 2007
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
JENNIFER D. BAHR, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Owen M. Patterson (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-7, 9, 10, 13-15, 17, and 18.
Claims 19, 20, 23, and 24 stand allowed and claims 8, 11, 12, and 16 stand
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Application 10/438,053

objected to as depending from rejected claims. No other claims are pending.
We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).
Appellant’s claimed invention is directed to a device used for
improving the putting stroke of a golfer. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A golf putting practice device comprising;
a) a disc;
b) said disc having an annular top
portion and an annular bottom portion;
c) said annular top portion having a top
edge and said annular bottom portion having a
bottom edge;
d) said annular top and bottom portion
forming an outer annular peripheral edge;
e) said disc having a central opening
extending through from said top edge to said
bottom edge;
f) said central opening at said top edge
having a diameter substantially greater than said
central opening at said bottom edge; and
g) said outer annular peripheral edge
projecting between said bottom edge and said top
edge and spaced a substantial distance from said
top and bottom edges.
The Examiner relies upon the following as evidence of
unpatentability:
Johnsen US 6,279,245 B1 Aug. 28, 2001
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Appellant seeks review of the Examiner’s rejections of claims 1-7, 14,
17, and 18 under 35 U.S.C. § 102(b)1 as anticipated by Johnsen and claims
9, 10, 13, and 15 under 35 U.S.C. § 103(a) as unpatentable over Johnsen.
The Examiner provides reasoning in support of the rejections in the
Answer (mailed June 2, 2006). Appellant presents opposing arguments in
the Appeal Brief (filed May 10, 2006) and Reply Brief (filed July 19, 2006).

OPINION
The anticipation rejection
Appellant argues all the claims rejected under 35 U.S.C. § 102
together as a group. Therefore, in accordance with 37 C.F.R.
§ 41.37(c)(1)(vii), we have selected claim 1 as the representative claim to
decide the appeal of the anticipation rejection, with claims 2-7, 14, 17, and
18 standing or falling with claim 1.
The Examiner (Answer 3) explains where the elements of claim 1 are
disclosed in Johnsen by labeling them in the marked-up Figs. 3 and 4 of
Johnsen appended to the Examiner’s Answer and Appellant does not dispute
these findings. Appellant’s only argument is that Johnsen, a golf ball
measuring device, is not an enabling disclosure of Appellant’s claimed
invention, a golf putting practice device. According to Appellant (Appeal
Br. 7-8), Johnsen enables a hand held measuring device but provides no
disclosure of using such as a golf putting practice device and “[n]o evidence
is provided that a person of ordinary skill in the art would somehow decide
to place the Johnson device on the ground and begin putting golf balls

1 Appellant does not dispute that Johnsen is available as prior art against
Appellant’s claims under 35 U.S.C. § 102(b).
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against it.” Therefore, according to Appellant, Johnsen cannot be considered
enabling for a golf putting device because “to use it in such a manner would
require an undue amount of experimentation” (Appeal Br. 8).
The Examiner asserts that “Johnsen’s device is clearly capable of
performing as a target for a golf ball (a fact not disputed by appellant) and
absent some claimed structural difference it anticipates the claims” (Answer
4). Indeed, Appellant has not specifically disputed that Johnsen’s device is
capable of such use as asserted by the Examiner. Rather, Appellant focuses
on the fact that Johnsen does not actually teach such use. The Examiner
characterizes the difference between Johnsen and Appellant’s claims as one
of intended use only and points out that “[i]f the prior art structure is capable
of performing the intended use, then it meets the claim” (Answer 4).
In light of the contentions by Appellant and the Examiner, the issue
presented for us to decide is whether Appellant has demonstrated that
Johnsen does not provide an enabling disclosure of the subject matter of
Appellant’s claim 1 and, thus, does not anticipate the subject matter of
claim 1. For the reasons that follow, the Examiner has the better argument.
To be prior art under 35 U.S.C. § 102, a reference must put the
anticipating subject matter at issue into the possession of the public through
an enabling disclosure. Chester v. Miller, 906 F.2d 1574, 1576 n.2, 15
USPQ2d 1333, 1336 n.2 (Fed. Cir. 1990). “Such possession is effected if
one of ordinary skill in the art could have combined the publication's
description of the invention with his own knowledge to make the claimed
invention.” In re Donohue, 766 F.2d 531, 533, 226 USPQ 619, 621 (Fed.
Cir. 1985).
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In order to determine whether Johnsen sufficiently describes the
claimed subject matter to constitute an anticipatory reference, we must focus
our attention on the claimed invention. Appellant’s claim 1, like all of the
claims before us in this appeal, is directed to a golf putting practice device,
not to a method of using a golf putting practice device. Accordingly, to
anticipate claim 1, Johnsen need only provide an enabling disclosure of a
golf putting practice device, that is, a device capable of use in golf putting
practice. It is not necessary that Johnsen describe a method of using the
disclosed ball controller in golf putting practice, much less in the particular
manner intended and described by Appellant. It is well settled that the
recitation of an intended use for an old product does not make a claim to that
old product patentable. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
1429, 1431 (Fed. Cir. 1997).
Appellant’s arguments, which, as discussed above, focus on Johnsen’s
failure to describe use of the ball controller in golf putting practice in the
manner described by Appellant and do not challenge the Examiner’s
findings that Johnsen’s ball controller meets all the structural limitations of
claim 1 (Answer 3) and is capable of use as a golf putting practice device by
performing as a target for a golf ball (Answer 4), are not commensurate with
the scope of claim 1, which is directed to a device and not a method, and do
not highlight any deficiency in Johnsen as an anticipatory reference of the
claimed subject matter. The anticipation rejection of claim 1, and claims 2-
7, 14, 17, and 18 standing or falling with claim 1, is sustained.
The obviousness rejection
Claims 9, 10, and 13 depend directly or indirectly from claim 1 and
recite specific dimensions. The Examiner addresses these limitations by
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noting that “it is apparent from Johnsen’s figures that his dimensions are
approximately those claimed as can be seen by the relative size of the golf
ball and asserting that “[a]bsent a showing of unexpected results the claimed
dimensions would have been obvious to the ordinarily skilled artisan
depending on the compactness desired in the device and the weight desired
in the device” (Answer 3).
Appellant argues that Johnsen, in stressing the importance of
compactness of the overall device, teaches away from modification
regarding the size of Johnsen’s device to arrive at the claimed overall disc
diameter recited in claims 9 and 10 (Appeal Br. 9). Appellant’s position is
not well taken.
Specifically, the teachings of Johnsen to which Appellant refers are
that the measuring tool must be readily available during the golf game and
thus must be capable of being readily fetched up from the pocket of the
trousers, for example, and must be solid and stable so normal use does not
reduce its accuracy (Johnsen, col. 3, ll. 11-18) and that “the ball controller
shall be able to be received in a manner requiring little space for example in
the user’s pocket, and which in addition is relatively light in weight and
relatively simple to produce” (Johnsen, col. 3, ll. 63-67). We understand
from these teachings that the ball controller must be relatively light in
weight and must be sized so as to be capable of fitting in and being fetched
from a user’s pocket. A ball controller having a diameter within the range of
about 3 to about 4 inches, as recited in claim 9, or about 3.586 inches, as
recited in claim 10, with a maximum thickness (wall thickness c) of 6 mm
(0.234 inches) would be capable of fitting in and being fetched from a user’s
trouser pocket and thus falls within the teachings of Johnsen.
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Johnsen does not specify a value for the overall disc diameter of the
ball controller, but does disclose a cavity diameter d3 of 42.82 mm (1.686
inches). As illustrated in Fig. 3, the overall diameter of Johnsen’s ball
controller is about 1.75 times the cavity diameter, or about 3 inches, thereby
supporting the Examiner’s finding that the overall diameter of Johnsen’s ball
controller is approximately that recited in Appellant’s claims. Thus, as
Appellant has not alleged, much less proven, that the claimed diameter
produces unexpected results, we find no error in the Examiner’s
determination that an overall disc diameter as recited in claims 9 and 10 for
Johnsen’s ball controller would have been obvious. See In re Woodruff, 919
F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990) (where the
difference between the claimed invention and the prior art is some range or
other variable within the claims, the applicant must show that the particular
range is critical, generally by showing that the claimed range achieves
unexpected results relative to the prior art range). The rejection of claims 9
and 10 is sustained.
Appellant argues that, since the interior diameter of Johnsen is
specifically dimensioned to accurately measure a golf ball, modification of
Johnsen to arrive at the central opening height recited in claim 13 would
render Johnsen’s device inoperative for its intended purpose (Appeal Br.
10). This argument is not well founded.
Johnsen teaches that a wall thickness c (central opening height) of 6
mm (0.234 inches) and an axial length l of inner face 14a of 3 mm are
shown, but that the length l can be increased to, for example, 4-5 mm
(Johnsen, col. 6, ll. 54-58). Such an increase would seemingly increase the
wall thickness c to 7-8 mm (0.275 inches to 0.314 inches). This appears to
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fall within the range of “about from 0.3 inch to about 0.5 inch” recited in
claim 13. We thus find no error in the Examiner’s determination that the
claimed range would have been obvious. The rejection of claim 13 is
sustained.
With respect to claim 15, Appellant argues “[i]t is not understood why
one of ordinary skill in the art would modify a golf ball measuring device by
constructing it from a material that produces a certain sound when contacted
by a golf ball” and the rejection is thus improper (Appeal Br. 9). With
respect to this limitation, the Examiner points out that “Appellant states that
his preferred density produces an audible sound upon contact with a golf
ball. However, inherently Johnsen’s device will also produce a sound and
therefore the claimed density cannot be considered to produce the
unexpected result of a sound” (Answer 5). Specifically, Appellant’s
Specification attributes the creation of a “sound similar to that of a golf ball
dropping into a cup on an actual golf course green” to the rolling of the ball
up the outer peripheral edge 34 and into opening 42 of the device D in the
embodiment of Figs. 7-10 (Specification 9:7-14). In fact, Appellant’s
Specification is silent with respect to material and material properties and
density is not even mentioned in Appellant’s Specification, though it is
recited in original claim 15.2 Appellant’s description reasonably supports
the Examiner’s position that the creation of the sound is dependent on
dropping of the ball through the center opening and not on the particular
material or density of the material. Accordingly, Appellant’s argument does

2 Appellant has not explained the density scale “about from 75D to about
95D” referred to in claim 15. Fiber and fabric densities are often expressed
in a denier scale, or 75D, for example, but Appellant’s disc is not disclosed
as made from fibers or fabric.
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not demonstrate error on the part of the Examiner in rejecting claim 15 as
unpatentable over Johnsen. The rejection is sustained.

SUMMARY
The decision of the Examiner to reject claims 1-7, 9, 10, 13-15, 17,
and 18 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) (2006).
AFFIRMED

JRG

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