Ex Parte Peek

Board of Patent Appeals and Interferences

Mar 26, 2007

10762413 (B.P.A.I. Mar. 26, 2007)

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for publication and is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte IAN PEEK
____________________

Appeal 2006-3098
Application 10/762,4131
Technology Center 3700
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Decided: March 26, 2007
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Before: JENNIFER D. BAHR, STUART S. LEVY, and ROBERT E.
NAPPI, Administrative Patent Judges.

LEVY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection
of claim 11. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
Appellant invented a golf training apparatus (Specification 3). In
particular, the invention resides in a golf apparatus for practicing straight

1 Application filed January 22, 2004. The real party in interest is Mr. Yan
Peek.
Appeal 2006-3098
Application 10/762,413

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hits with a rack, which has a rod aligned horizontally and parallel to the
desired hitting direction. The rod is fastened to a rack at a distance to the
rack, such that the golf club may be swung through underneath the rod. The
training apparatus is also suited for the short game, i.e., for shorter
approaching hits (id.).
The only claim under appeal reads as follows:
11. A golf training apparatus for practicing straight hits,
comprising:
an upright rack made of a rigid material; and
a rod provided on said upright rack and aligned substantially horizontally
and parallel to a desired hitting direction, said rod being arranged at a
distance to said upright rack such that a golf club is swingable through
underneath said rod, and while said rack being rigid said rod being inflatable
such that touching said inflatable rod by a golfer is harmless and not
accompanied by a risk of injuries.

The Examiner rejected claim 11 under 35 U.S.C. § 103(a) (2004).
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Elson 3,768,501 Oct. 30, 1973

Appellant contends that the claimed subject matter would not have
been obvious. More specifically, Appellant contends that Elson deals with a
valve for inflating balloons, and is therefore non-analogous art. It is argued
(Br. 5) that Elson is not from the same field of endeavor as the golf training
apparatus of the present invention and that Elson is directed to an improved
inflation mechanism, which is not reasonably pertinent to the particular
problem with which the inventor of the present invention is involved. The
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Application 10/762,413

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Examiner contends (Answer 3) that in Elson’s "inflatable balloon element 10
fails to be in a rod shape." The Examiner asserts that it is known to make
balloons in a cylindrical shape and that the intended use of the apparatus
does not differentiate the claimed apparatus from the prior art, and that
Elson's device is capable of being used as a training device.
We reverse.
ISSUE
Has Appellant shown that the Examiner has failed to establish a prima
facie case of obviousness of claim 11 as being unpatentable over Elson?
The issue turns on whether Elson is analogous art.

FINDINGS OF FACT
1. Appellant invented a golf training apparatus (Specification 2).
2. 85% of golfers swing the ball from outside to inside. Executing a
swing from outside to inside is called a slice. An exact direction of flight is
only obtained if the club is guided in a plane in the intended direction of the
flight of the ball (id.).
3. Elson is directed to an improved inflation valve mechanism for
balloons and similar low pressure inflation devices (col. 1, ll. 43-45).
4. As shown in Fig. 1, element 10 of Elson represents a conventional
inflatable balloon (col. 3, l. 25).
5. Tank 33 contains compressed helium (col. 4, l. 23).

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PRINCIPLES OF LAW
On appeal, Appellant bears the burden of showing that the Examiner
has not established a prima facie case of non-obviousness. See In re Kahn,
441 F.3d 977, 987-988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006); DyStar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, Co., 464 F.3d
1356, 1360-1361, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006).
The test for non-analogous art is first whether the art is within the
field of the inventor's endeavor and, if not, whether it is reasonably pertinent
to the problem with which the inventor was involved. In re Wood, 599 F.2d
1032, 1036, 202 USPQ 171, 174 (CCPA 1979). A reference is reasonably
pertinent if, even though it may be in a different field of endeavor, it
logically would have commended itself to an inventor's attention in
considering his problem because of the matter with which it deals. In re
Clay, 966 F.2d 656, 659, 23 USPQ2d 1058, 1061 (Fed. Cir. 1992).

ANALYSIS
If the rejection were under 35 U.S.C. § 102(e) we would have agreed
with the Examiner that the intended use of the structure would not
differentiate the claimed apparatus from the applied prior art. However, as
noted by the Examiner, Elson does not describe all of the limitations of
claim 11 because Elson does not disclose the balloon to be in a rod shape.
As a result, the Examiner rejects the claim under 35 U.S.C. § 103(a) on the
basis that it would have been obvious to have used a cylindrical shaped
balloon as the inflatable rod. However, in order to modify the reference to
meet the claimed invention, it is necessary that the reference be analogous
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art. From our review of the record, we agree with the Appellant (Br. 4) that
Elson is not analogous art for the following reasons.
Elson is directed to a valve mechanism for inflating balloons. The
valve mechanism is not in the same field of endeavor as a golf training aid.
In addition, because Elson is directed to a valve for inflating balloons, Elson
is not reasonably related to the problem Appellant is directed to, i.e., a
training apparatus for practicing straight hits of a golf ball. Since Elson is
not analogous art it would not have been obvious to modify Eslon to arrive
at the claimed invention.

CONCLUSION OF LAW
On the record before us, Appellant has shown that the Examiner erred
in holding that Elson would have suggested to an artisan the invention of
claim 11.
DECISION
The Examiner's rejection of claim 11 is reversed.

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REVERSED

JRG
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STRIKER, STRIKER & STENBY
103 East Neck Road
Huntington, NY 11743
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