Ex Parte Paulson

Board of Patent Appeals and Interferences

Oct 27, 2003

09479576 (B.P.A.I. Oct. 27, 2003)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte KERRY K. PAULSON
__________
Appeal No. 2003-1387
Application 09/479,576
___________
ON BRIEF
___________
Before COHEN, MCQUADE, and NASE, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Kerry K. Paulson appeals from the final rejection (Paper No.
12) of claims 1 through 5, all of the claims pending in the
application.
THE INVENTION
The invention relates to “a ball throwing machine that is of
minimum size and weight” (specification, page 1). Representative
claim 1 reads as follows:
1. A baseball throwing machine including a frame supporting
at least one ball projecting wheel driven rotationally by an
electric motor and mounting a pneumatic tire having a diameter
ranging between about 15-32cm; a wall depth ranging between about
5-10cm; and a footprint ranging between about 4-13cm.
Appeal No. 2003-138709
Application /479,576
2
THE PRIOR ART
The references relied on by the examiner to support the
final rejection are:
Halstead 3,724,437 Apr. 3, 1973
Greene 4,834,060 May 30, 1989
THE REJECTIONS
Claims 1 through 3 and 5 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Halstead.
Claims 1 through 5 stand rejected under U.S.C. § 103(a) as
being unpatentable over Greene in view of Halstead.
Attention is directed to the appellant’s main and reply
briefs (Paper Nos. 14 and 16) and to the examiner’s final
rejection and answer (Paper Nos. 12 and 15) for the respective
positions of the appellant and the examiner regarding the merits
of these rejections.
DISCUSSION
Halstead discloses “a ball throwing machine . . . for
pitching balls to a batter and for throwing fly or ground balls
to fielders” (column 1, lines 5 through 8). The machine 10,
which is portable, includes a frame 12, a pair of counter-
rotating wheels 14 and 16, and separate variable speed motors 22
for independently driving the wheels. Halstead teaches that
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Application /479,576
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[a]s shown in FIG. 2, wheels 14, 16 are positioned so
that the space between the peripheries thereof is
slightly less than the diameter of ball 102. The ball
engaging portions 104 of wheels 14, 16 are constructed
from a resilient material having a low coefficient of
friction, preferably are pneumatic tires as shown in
FIG. 2, to minimize scuffing of the ball [column 4,
lines 14 through 20].
Green, noting “[t]he widespread interest in ball sports,
particularly baseball and tennis” (column 1, lines 12 and 13),
discloses a portable, lightweight ball throwing apparatus 10
which includes a pair of counter-rotating wheels 48 equipped with
cylindrical elastomeric tires 49, a pair of motors 35 for driving
the wheels and an on-board 12-volt battery for powering the
motors.
In applying Halstead alone to reject claims 1 through 3 and
5 and Greene in view of Halstead to reject claims 1 through 5,
the examiner concedes that neither reference discloses the
particular wheel dimensions set forth in independent claim 1.
Indeed, neither Halstead nor Green provides any relevant
information as to wheel dimensions. The examiner nonetheless
concludes that the subject matter recited in claim 1 would have
been obvious within the meaning of § 103(a) because
one of ordinary skill would know that the wheels should
be an appropriate size based on the projectile to be
launched. And one would also know that it is desirable
for these [baseball or ball] throwing machines to be
small and lightweight so they can be easily
Appeal No. 2003-138709
Application /479,576
4
transported. Based on these considerations, it is
believed that one of ordinary skill would be able to
determine through routine experimentation that
providing tires of a diameter of about 15-32 cm, wall
depth of 5-10 cm, and a footprint of 4-13 cm would be
appropriate [final rejection, page 2 and page 3].
Rejections based on 35 U.S.C. § 103(a) must rest on a
factual basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173,
177-78 (CCPA 1967). In making such a rejection, the examiner has
the initial duty of supplying the requisite factual basis and may
not, because of doubts that the invention is patentable, resort
to speculation, unfounded assumptions or hindsight reconstruction
to supply deficiencies in the factual basis. Id.
In the present case, the rationale employed by the examiner
to supply the above noted dimensional deficiencies of Halstead
and Greene relative to the subject matter recited in claim 1
finds little, if any, factual support in the fair teachings of
these references, and instead rests essentially on speculation,
unfounded assumptions and hindsight reconstruction. Accordingly,
we shall not sustain the standing 35 U.S.C. § 103(a) rejection of
claim 1, and dependent claims 2, 3 and 5, as being unpatentable
over Halstead, or the standing 35 U.S.C. § 103(a) rejection of
claim 1, and dependent claims 2 through 5, as being unpatentable
over Greene in view of Halstead.
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Application /479,576
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SUMMARY
The decision of the examiner to reject claims 1 through 5 is
reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
JOHN P. MCQUADE )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
JPM/kis
Appeal No. 2003-138709
Application /479,576
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OLIVER D. OLSON
OLSON & OLSON
2400 S W 4TH AVENUE
PORTLAND, OR 97201