Ex Parte Pommereau

Board of Patent Appeals and Interferences

Sep 15, 2011

10525900 (B.P.A.I. Sep. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/525,900 02/25/2005 Claude Pommereau 1606.72574 9652
24978 7590 09/15/2011
GREER, BURNS & CRAIN
300 S WACKER DR
25TH FLOOR
CHICAGO, IL 60606
EXAMINER
BUTLER, MICHAEL E
ART UNIT PAPER NUMBER
3653
MAIL DATE DELIVERY MODE
09/15/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CLAUDE POMMEREAU
____________

Appeal 2011-000261
Application 10/525,900
Technology Center 3600
____________

Before KEN B. BARRETT, EDWARD A. BROWN and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE 1
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s 2
decision finally rejecting claims 1, 7, 8, 15, 16, 28 and 29. More 3
specifically, the Examiner maintains five grounds of rejection: 4
I. claims 1, 7, 8, 15, 16, 28 and 29 under 35 U.S.C. § 112, 5
second paragraph, as being indefinite; 6
II. claims 1, 7 and 8 under 35 U.S.C. § 102(b) as being 7
anticipated by Smith (US 5,624,325, issued Apr. 29, 1997); 8
III. claims 1, 15 and 16 under § 102(b) as being anticipated 9
by Wang (US 5,549,518, issued Aug. 27, 1996); 10
IV. claims 1, 28 and 29 under 35 U.S.C. § 103(a) as being 11
unpatentable over Smith and Hodgin (US 3,738,662, issued 12
June 12, 1973); and 13
V. claims 1, 28 and 29 under § 103(a) as being unpatentable 14
over Wang and Hodgin. 15
We summarily affirm rejection I. The Appellant does not contend that 16
the rejection is incorrect, or should otherwise be withdrawn. See Br. 17. In 17
addition, the Appellant intends to amend the language in claim 1, which the 18
Examiner rejected as indefinite. Br. 17. 19
We do not sustain rejections II-V. 20
21
THE INVENTION 22
Claim 1 is the sole independent claim and representative of the claims 23
on appeal. Claim 1, with italics added, recites 24
1. A golf ball dispenser comprising an upper 25
container to contain golf balls and a flange to 26
receive the balls coming from the container and 27
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supply a dispenser arm with balls one by one, such 1
dispenser arm being arranged substantially 2
vertically in a rest position and comprising means, 3
arranged in the upper part close to the flange to 4
receive balls one by one from the container, a 5
lower end intended to dispense balls, and a 6
pivoting means arranged in the upper end of the 7
dispenser arm close to the flange for pivoting 8
around a horizontal axis during a golf ball 9
dispensing from said rest position to a dispensing 10
position, said dispensing arm returning to said rest 11
position from said dispensing position without a 12
spring or a counterweight. 13
14
ISSUES 15
The Appellant has separately addressed the rejections of claim 1 under 16
§ 102(b) as anticipated by Wang and under § 102(b) as anticipated by Smith. 17
Br. 8-14. The Appellant has also separately addressed the rejections of 18
claims 1 and 29 under § 103(a) as unpatentable over Wang and Hodgin, and 19
under § 103(a) as unpatentable over Smith and Hodgin. Br. 14-16. The 20
Appellant has not presented separate arguments for dependent claims 7, 8, 21
15, 16 and 28 under any ground of rejection, so those dependent claims 22
stand or fall with their parent claims. See 37 C.F.R. § 41.37(c)(1)(vii). 23
This appeal turns on the following issues. 24
First, does Smith disclose the “pivoting means” as 25
recited in claim 1? Br. 10, 12-13. 26
Second, does Wang disclose the “pivoting means” as 27
recited in claim 1? Br. 8-10. 28
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Third, would the combined teachings of Smith and 1
Hodgin have rendered obvious the “pivoting means” as recited 2
in claim 1? 3
Fourth, would the combined teachings of Wang and 4
Hodgin have rendered obvious the “pivoting means” as recited 5
in claim 1? 6
7
ANALYSIS 8
Claim 1 recites “a pivoting means arranged in the upper end of the 9
dispenser arm close to the flange for pivoting around a horizontal axis 10
during a golf ball dispensing from said rest position to a dispensing 11
position.” We determine the scope of the claims in patent applications not 12
solely on the basis of the claim language, but upon giving claims “their 13
broadest reasonable interpretation consistent with the specification” and “in 14
light of the specification as it would be interpreted by one of ordinary skill in 15
the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 16
2004). We interpret the recited arrangement of the pivoting means to be 17
located at the upper end of the dispensing arm throughout the dispensing 18
arm’s range of motion from the rest position to a dispensing position. 19
20
First and Third Issues 21
Smith discloses a golf ball teeing apparatus 10 including a storage 22
container 16, fixed channel 18, and a movable channel arm 20 to repeatedly 23
place a golf ball 24 on a tee 22. Smith, col. 4, ll. 12-14, 26-28. Golf balls 24 24
travel a downward path from storage container 16 to the fixed channel 18 via 25
gravitational forces. See Smith, col. 5, ll. 5-9, fig. 1. Fixed channel 18 and 26
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channel arm 20 are aligned so that one golf ball 24 rests against base 74 1
when the channel arm 20 is in a retracted position. Smith, col. 6, ll. 7-14. A 2
pivotable connector 48 facilitates the pivoting of channel arm 20 from a 3
retracted position to an extended position. See Smith, col. 5, ll. 22-25. The 4
retracted position (resting position) is illustrated in Figure 1 and the 5
extended position (dispensing position) is illustrated in Figure 2. 6
The Examiner finds Smith’s pivotable connector 48 is “arranged in 7
the upper end of the dispenser arm.” Ans. 4. The Examiner appears to rely 8
on Smith’s Figure 2, which depicts golf ball teeing apparatus 10 in a 9
dispensing position having “a pivot in the upper end of the arm.” Ans. 9. 10
The Examiner reasons the orientation of Smith’s channel arm 20 in the 11
dispensing position (Smith’s Figure 2) is one position where the pivot is 12
arranged in the upper portion of the arm. Ans. 9. 13
The Appellant appears to rely on Smith’s resting position (Smith’s 14
Figure 1) to point out that Smith’s “arm 20 pivots about a pivot 48 located at 15
the lower end of the arm.” Br. 13; See Br. 10. As such, the Appellant 16
contends that Smith does not disclose “a pivoting means arranged in the 17
upper end of the dispenser arm close to the flange for pivoting around a 18
horizontal axis during a golf ball dispensing from said rest position to a 19
dispensing position” as recited in claim 1. Br. 12-13, see Br. 9, 10. The 20
Appellant’s contention is correct because pivot 48 is not located at the upper 21
end of the dispensing arm throughout the dispensing arm’s range of motion 22
from the rest position to a dispensing position. Br. 13. 23
Turning to the rejection under § 103(a) as being unpatentable over 24
Smith and Hodgin, the Examiner does not alter any previous findings from 25
Smith. The Examiner does include a finding that Hodgin’s Figures 5 and 6 26
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depict a band style ring (cup 38) that is further apart than two unlabeled wire 1
type rings (guide track 80). Ans. 5, 10; Hodgin, col. 4, ll. 2-7, figs. 3, 5. 2
The Examiner concludes “[i]t would have been obvious at the time of the 3
invention for Smith to use rings to slow the ball and avert the ball bouncing 4
off the arm or tee as taught by Hodgin.” Ans. 5. Even if the Examiner’s 5
finding and conclusion were correct, neither the finding nor the conclusion 6
remedies the deficiency in Smith’s disclosure as pointed out above. Thus, 7
the Examiner’s conclusion of obviousness as to the rejection under § 103(a) 8
as being unpatentable over Smith and Hodgin lacks rational underpinning. 9
10
Second and Fourth Issues 11
Wang discloses a golf ball dispensing device including a pivot track 3, 12
including a pivot 31, unloading lever 32, a balancing lever 33, concave 13
portion 34, and an arcuate portion 35. Wang, col. 2, ll. 20-38. Wang’s 14
Figures 1-3 depict the pivot track 3 in a resting position. Wang’s Figure 4 15
depicts the pivot track 3 in a dispensing position. Wang, col. 2, ll. 48-52. 16
The Examiner finds that Wang discloses that the pivot 31 is arranged 17
in the upper end of the pivot track 3 in the dispensing position. Ans. 4, 7. 18
The Examiner reasons the orientation of Wang’s pivot track 3 in the 19
dispensing position (Wang’s Figure 2) is one position where the pivot is 20
arranged in the upper portion of the arm. Ans. 7-8. 21
The Appellant appears to rely on Wang’s Figures 1-3, which depict 22
pivot 31 arranged at the lower end of pivot track 3 in the dispensing position. 23
Ans. 9. As such, the Appellant contends Wang does not disclose “a pivoting 24
means arranged in the upper end of the dispenser arm close to the flange for 25
pivoting around a horizontal axis during a golf ball dispensing from said rest 26
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position to a dispensing position” as recited in claim 1. See Br. 9. The 1
Appellant’s contention is correct because pivot 31 is not located at the upper 2
end of the dispensing arm throughout the dispensing arm’s range of motion 3
from the rest position to a dispensing position. See Br. 9-11. 4
Turning to the rejection under § 103(a) as being unpatentable over 5
Wang and Hodgin, the Examiner does not alter any previous findings from 6
Wang. The Examiner does include a finding that Hodgin’s Figures 5 and 6 7
depict a band style ring (cup 38) that is further apart than two unlabeled wire 8
type rings (guide track 80). Ans. 5-6, 9-10. The Examiner concludes “[i]t 9
would have been obvious at the time of the invention for Wang to use rings 10
to slow the ball and avert the ball bouncing off the arm or tee as taught by 11
Hodgin.” Ans. 6. Even if the Examiner’s finding and conclusion were 12
correct, neither the finding nor the conclusion remedies the deficiency in 13
Wang’s disclosure as pointed out above. Thus, the Examiner’s conclusion 14
of obviousness as to the rejection under § 103(a) as being unpatentable over 15
Wang and Hodgin lacks rational underpinning. 16
17
CONCLUSION 18
First, Smith does not disclose the “pivoting means” as recited in claim 19
1. We do not sustain the rejection of claims 1, 7 and 8 under § 102(b) as 20
being anticipated by Smith. 21
Second, Wang does not disclose the “pivoting means” as recited in 22
claim 1. We do not sustain the rejection of claims 1, 15 and 16 under 23
§ 102(b) as being anticipated by Wang. 24
Third, the combined teachings of Smith and Hodgin would not have 25
rendered obvious the “pivoting means” as recited in claim 1. We do not 26
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sustain the rejection of claims 1, 28 and 29 under § 103(a) as being 1
unpatentable over Smith and Hodgin. 2
Fourth, the combined teachings of Wang and Hodgin would not have 3
rendered obvious the “pivoting means” as recited in claim 1. We do not 4
sustain the rejection of claims 1, 28 and 29 under § 103(a) as being 5
unpatentable over Wang and Hodgin. 6
7
DECISION 8
We AFFIRM the Examiner’s decision finally rejecting claim 1, 7, 8, 9
15, 16, 28 and 29. 10
No time period for taking any subsequent action in connection with 11
this appeal may be extended under 37 C.F.R. § 1.136(a). See § 1.136(a)(1). 12
13
AFFIRMED 14
15
16
17
Klh 18