Ex Parte Pelz

Board of Patent Appeals and Interferences

Mar 31, 2009

11066554 (B.P.A.I. Mar. 31, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DAVID T. PELZ
__________

Appeal 2009-0488
Application 11/066,554
Technology Center 3700
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Decided: March 31, 20091
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Before ERIC GRIMES, RICHARD M. LEBOVITZ, and
STEPHEN WALSH, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims 1-10, all of
the pending claims, which are directed to a golf training mat. The Examiner

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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has rejected the claims as anticipated. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
STATEMENT OF THE CASE
The Specification discloses “a golf training mat for practicing short
game shots” (Specification 3). Figure 1 of the Specification is shown below:

Figure 1 shows a top view of the disclosed golf training mat (id. at 5), which
includes “a first position marking 100 for practicing a wedge swing … , a
second position marking 200 associated with practicing a sand swing … and
a third position marking 300 for practicing a chip swing” (id. at 6).
Claim 1 is representative of the appealed claims and reads as follows:
Claim 1: A golf training mat for practicing short game shots
including a wedge swing, a sand swing and a chip swing, consisting
essentially of:
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a ball striking surface including markings associated with foot and
ball positioning:
a first position marking including a front foot marking, a rear foot
marking and a ball marking, the front foot marking and the rear foot marking
being positioned along an alignment axis, wherein the ball marking is
positioned substantially between the front foot marking and the rear foot
marking along a line substantially perpendicular to the alignment axis;
a second position marking including a front foot marking, a rear foot
marking and a ball marking, the front foot marking and the rear foot marking
being positioned along an alignment axis, wherein the ball marking is
positioned substantially in line with the front foot marking along a line
substantially perpendicular to the alignment axis;
a third position marking including a front foot marking, a rear foot
marking and a ball marking, the front foot marking and the rear foot marking
being positioned along an alignment axis, wherein the ball marking is
positioned substantially in line with the rear foot marking along a line
substantially perpendicular to the alignment axis.

ANTICIPATION
Issue
The Examiner has rejected claims 1-10 under 35 U.S.C. § 102(b) as
being anticipated by Dionne.2
The Examiner’s position is that “Dionne discloses a ball-striking
surface including markings associated with foot and ball positioning …
[including] first, second, and third position markings (any combinations of
31 and 32 as shown on Fig. 1) for the front foot and rear foot being
positioned along an alignment axis (see Fig. 1)” (Ans. 3). The Examiner
finds that the “four intersection areas wherein elements 25 are disclosed as
shown on Fig. 1 are the ball markings. Element[s] 40 and 42 are the
alignment axes” (id.). The Examiner concludes that “the Dionne reference

2 Dionne et al., US 5,645,494, July 8, 1997.
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still reads on the claims,” notwithstanding their “consisting essentially of”
transitional phrase (id.).
Appellant argues that the Examiner erred in finding that Dionne
anticipates claim 1 because the claim limits the markings on the golf mat to
those for first, second, and third foot and ball positions, and the markings on
the golf mat of Dionne include a broader range of markings for a wider
range of golf game shots (Appeal Br. 7-8).
The issue presented is: Did the Examiner err in concluding that claim
1 reads on Dionne’s golf mat, which includes markings for more than three
foot and ball positions?
Findings of Fact
1. Dionne discloses an instructional golf mat (Dionne, col. 2, l. 39).
2. Figure 1 of Dionne is shown below:

Figure 1 shows “a top view of an instruction golf mat” (id.).
3. Dionne states:
Top surface 24 also preferably includes a plurality of tee
locations 25 and a grid pattern 30…. Horizontal and vertical
lines 31, 32 form a pattern of squares which can be used to
adjust the ball placement and foot positions in precise
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increments according to the type of club and shot being
practiced. To this end, lines 31, 32 may aid the golfer to
precisely adjust his or her stance for “open” or “closed” stance
shots used to intentionally slice or hook the golf ball.
(Id. at col. 3, l. 60-col. 4, l. 13.)
4. The Specification discloses that each of the three position
markings includes a front foot marking, a rear foot marking, a ball
marking, and a swing guide marking including first and second
parallel lines broken up by the ball marking (id. at 7: 18-20, 9: 5-7,
and 10: 15-17).
Principles of Law
“As a patent term of art, ‘includes’ means ‘comprising.’ … Neither
includes, nor comprising, forecloses additional elements that need not satisfy
the stated claim limitations.” SanDisk Corp. v. Memorex Products, Inc, 415
F.3d 1278, 1284 (Fed. Cir. 2005).
“By using the term ‘consisting essentially of,’ the drafter signals that
the invention necessarily includes the listed ingredients and is open to
unlisted ingredients that do not materially affect the basic and novel
properties of the invention.” PPG Indus. Inc. v. Guardian Indus. Corp, 156
F.3d 1351, 1354 (Fed. Cir. 1998).
“It is axiomatic that claims are given their broadest reasonable
construction consistent with the specification. . . . [A]n applicant who has
not clearly limited his claims is in a weak position to assert a narrow
construction. Therefore, in construing the phrase ‘consisting essentially of’
in appellants’ claims, it is necessary and proper to determine whether their
specification reasonably supports a construction that would include additives
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such as [those in the prior art].” In re Herz, 537 F.2d 549, 551 (CCPA
1976).
Analysis
Claim 1 is directed to a golf training mat “consisting essentially of” a
ball striking surface including three sets of markings associated with foot
and ball positioning.
Appellant argues that the claim is limited to a golf mat having
markings for the first, second, and third foot and ball positions, and that
Dionne does not disclose the invention of claim 1 because the markings on
Dionne’s golf mat are not limited to those three foot and ball positions but
include a much broader range of markings, for a wider range of golf game
shots (Appeal Br. 7-8).
This argument is not persuasive. Claim 1 does not specify that the
markings on the golf training mat consist essentially of first, second, and
third foot and ball position markings. Rather, claim 1 states that the mat
consists essentially of a “surface including markings,” and that the markings
include first, second and third foot and ball positions. In accord with
SanDisk Corp. v. Memorex Products, Inc., the term includes or including is
equivalent to comprising and does not foreclose additional elements. Thus,
the recitation in the claim that the markings include first, second, and third
foot and ball positions does not foreclose the inclusion of additional
markings. The “consisting essentially of” language in the claim specifies
that the golf training mat consists essentially of a ball striking surface, but
the markings printed on the surface are defined using open claim language.
Further, even assuming for the sake of argument that claim 1 recited
markings consisting essentially of those for first, second, and third foot and
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ball positions, Dionne would still anticipate the claim. Appellant argues that
the Specification indicates that the claimed golf mat is designed to practice
short game shots and that markings for other purposes, like Dionne’s
markings for a wider variety of golf game shots, would affect the basic and
novel characteristics of the invention (Appeal Br. 7).
The Specification, however, does not specifically define the basic and
novel properties of the invention nor does it define what elements (i.e.,
markings) would affect those basic and novel properties. Further, the mat in
the Specification’s Figure 1 includes markings other than those for the
recited first, second, and third foot and ball positions. Thus, in the absence
of a definition for the “consisting essentially of” language, we give the claim
its broadest reasonable interpretation in light of the Specification, and
conclude that the product of claim 1 can include markings other than those
expressly recited.
CONCLUSIONS OF LAW
The Examiner did not err in concluding that claim 1 reads on
Dionne’s golf mat, which includes markings for more than three foot and
ball positions.
SUMMARY
We affirm the rejection of claims 1-10 under 35 U.S.C. § 102(b) as
being anticipated by Dionne. Claims 2-10 were not argued separately and
therefore fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

lp

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