Ex Parte Rigoli

Board of Patent Appeals and Interferences

Jun 22, 2011

11023074 (B.P.A.I. Jun. 22, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MICHAEL RIGOLI
____________________

Appeal 2010-001806
Application 11/023,074
Technology Center 3700
____________________

Before: KEVIN F. TURNER, STEPHEN C. SIU, and
PHILLIP J. KAUFFMAN, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001806
Application 11/023,074
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
8, 11-14, 16-20, and 22-35. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and ENTER A NEW GROUND OF
REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R.
§ 41.50(b).

THE INVENTION
Appellant’s claimed invention “relates generally to sporting goods,
namely sticks, shafts and bats for sports such as hockey, lacrosse, field
hockey, golf, baseball, softball, polo and fishing.” Spec. 1:8-10.
Independent claim 1, reproduced below, is representative of the claimed
subject matter (emphasis added):
1. A sports stick comprising:
a handle; and
a shaft wherein said shaft includes at least one internal
portion containing at least one cutaway area and an external
surface.

REJECTIONS
Appellant seeks review of the following rejections:
1. Rejection of claims 14, 16-20, 22-24, and 32-35 under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
2. Rejection of claim 1 under 35 U.S.C. § 102(b) as anticipated by
Svoma (US 5,551,689; issued September 3, 1996).
3. Rejection of claims 1, 3, 5-8, 18-20, 22, 25-27, 29-31, 34, and 35
under 35 U.S.C. § 102(b) as anticipated by Haute Stick Lacrosse, Titanium
Appeal 2010-001806
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RailGun, http://www.hautestick.com/LaxGear/LaxShaft/RailGun/RailGun-
Main.html, (hereinafter “Haute Stick”).
1

4. Rejection of claims 2, 4, 17, 23, and 24 under 35 U.S.C. § 103(a) as
unpatentable over Haute Stick.
5. Rejection of claims 11-14, 16, and 28 under 35 U.S.C. § 103(a) as
unpatentable over Haute Stick and Brine (US 6,752,730 B1; issued June 22,
2004).

ISSUE
The issue presented by this appeal is whether a person of ordinary
skill in the art would understand what is claimed when claim 1 is read in
light of the Specification.

NEW GROUND OF REJECTION
We enter a new ground of rejection for claims 1-8, 11-14, 16-20, and
22-35 under 35 U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the subject matter which
Appellant regards as the invention.
2

1
The Examiner explains in the Office Action that is the subject of this
appeal, claim 3 was subject to the third ground of rejection, and in the
Answer claim 3 was removed from the third ground of rejection and added
to the fourth ground of rejection. Ans. 2. We see no evidence such change
was approved by a Technology Center Director or designee, and we
consequently consider claim 3 to be subject to the third ground of rejection
only. See Ans. 25.
2
The Board enters a new ground of rejection at its discretion, and no
inference should be drawn from a failure to exercise that discretion against
other pending claims in this application. See 37 C.F.R. § 41.50(b); see also
Manual of Patent Examining Procedure (MPEP) § 1213.02 (8th ed., rev. 8,
July 2010).
Appeal 2010-001806
Application 11/023,074
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Independent claim 1 calls for a shaft that includes at least one internal
portion “containing at least one cutaway area and an external surface”
(emphasis added).
3
The recited phrase does not include any punctuation,
such as a comma, setting off the term “external surface” from the rest of the
phrase. Accordingly, the context of the phrase is that the at least one
internal portion contains both the at least one cutaway and the external
surface.
Appellant’s Specification does not provide a lexicographical
definition for “containing.” The word “contain” is commonly understood to
mean “to have within: hold,” such as “the box contained only some old
papers.” WEBSTER’S UNABRIDGED DICTIONARY (1996) (“contain,” vb.
definition 2a;). Appellant’s Specification uses the word “contain” consistent
with the common meaning, such as, the shaft containing cutouts in that the
shaft has cutouts within it. See, e.g., Spec. 5:21-24; 7:18-19. In re Zletz,
893 F.2d 319, 321 (Fed. Cir. 1989) (the words of the claim must be given
their plain meaning unless the plain meaning is inconsistent with the
specification).
Appellant’s Specification describes the internal portion of the shaft as
containing an area for mounting a striking surface, such as a blade type
striking surface for a hockey stick, or the head of a lacrosse stick. Spec.
6:11-14, 19-20; 9:20-23; 16:11-20; figs. 7A, 10, 11. Further, Appellant’s
Specification describes the cutaway areas of the shaft as areas that allow air

3
Appellant’s Specification describes, a shaft “wherein the shaft includes at
least one internal portion containing an area for mounting a striking surface
at least one cutaway area and an external surface.” Spec. 16:16-18. This
suggests that Appellant may have intended for claim 1 to read “said shaft
includes at least one internal portion, at least one cutaway area, and an
external surface.” However, we must analyze the claim as written.
Appeal 2010-001806
Application 11/023,074
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flow through the shaft. Spec. 10:18-11:1; see also Spec. 14:17-15:8. A
person of ordinary skill in the art would recognize that in order to provide air
flow through the shaft, the cutaway area must provide a flow path for air that
includes two openings (an entry and an exit for the air) through the exterior
of the shaft.
Appellant’s Specification describes that the “external surface” of the
shaft may have a variety of configurations, such as a cylindrical or
hexagonal shape, or two opposing arcuate sides and two flat sides. Spec.
10:12-17; 16:11-20. A person of ordinary skill in the art, reading the claims
in light of Appellant’s Specification, would understand that the external
surface of the shaft is the outermost portion of the shaft that defines the
shaft’s shape.
Claim 1 calls for the internal portion of the shaft to have within it
(contain) the at least one cutaway area and the external surface of the shaft.
4

Though a portion of the cutaway area is within the internal portion of the
shaft, the cutaway area cannot be within the internal portion of the shaft as
the entry and exit to the cutaway area must be through the exterior surface of
the shaft. Further, the external surface of that shaft, which is the outermost
surface of the shaft, cannot be within the internal portion of the shaft.
Because the internal portion of the shaft does not have within it (contain) the
at least one cutaway area and the external surface of the shaft, a person of
ordinary skill in the art would not understand what is claimed when claim 1
is read in light of the Specification.

4
Appellant’s Specification refers to the internal portion as “containing an
area for mounting a striking surface” (Spec. 16:11-20), but does not refer to
the internal portion as “containing” the cutaway area or the external surface
(Spec. passim).
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Accordingly, independent claims 1 is indefinite, and claims 2 -8, 11-
14, 16-20, and 22-35 are indefinite by virtue of their dependence from
independent claim 1.

ANALYSIS
Rejection of claims 14, 16-20, 22-24, 32-35 under 35 U.S.C. § 112, second
paragraph as being indefinite
Claims 17, 18, 22-24, and 34
Because we hold all of the claims on appeal indefinite under
35 U.S.C. § 112, second paragraph, we find it imprudent to speculate as to
the scope of the additional limitations of claims 17, 18, 22-24, and 34. Thus,
we reverse the Examiner’s rejection of these claims under 35 U.S.C. § 112,
second paragraph. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962)
(“the examiner and the Board were wrong in relying on what at best were
speculative assumptions as to the meaning of the claims”). Our reversal is
not based on the merits of the rejection.
Claims 14, 16, 19, 20, 32, 33, and 35
Appellant elected not to traverse the Examiner’s rejection of claims
14, 16, 19, 20, 32, 33, and 35 under 35 U.S.C. § 112, second paragraph.
App. Br. 16. Because Appellant makes no arguments against this rejection
of these claims, we sustain this rejection of claims 14, 16, 19, 20, 32, 33, and
35. Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(citing Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008) (the Board
may treat as waived arguments appellant failed to present).

Appeal 2010-001806
Application 11/023,074
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Remaining Rejections
5

Claim 35
Appellant elected not to traverse the rejection of claim 35 under 35
U.S.C. § 102(b) as anticipated by Haute Stick. App. Br. 29. Given that
Appellant has presented no arguments, we sustain this rejection of claim 35.
Claim 28
Claim 28 was rejected as unpatentable over Haute Stick and Brine.
See Ans. 9; see also Office Action mailed September 27, 2007, p. 8.
Appellant acknowledges that claim 28 is rejected in the Status of Claims
section (App. Br. 2); however Appellant presents no arguments regarding
the rejection of claim 28 (App. Br. passim). Given that Appellant has
presented no arguments, we sustain the rejection of claim 28.
Claims 1-8, 11-14, 16-20, 22-27, and 29-34
Because our new ground of rejection holds all of the claims on appeal
indefinite under 35 U.S.C. § 112, second paragraph, we find it imprudent to
speculate as to the scope of these claims in order to reach a decision
regarding the Examiner’s art rejections, and we therefore reverse the
rejections of the remaining claims.

CONCLUSION OF LAW
A person of ordinary skill in the art would not understand what is
claimed when claim 1 is read in light of the Specification.

DECISION
We enter a NEW GROUND OF REJECTION of claims 1-8, 11-14,
16-20, and 22-35 under 35 U.S.C. § 112, second paragraph, as being

5
The second through fifth rejections, supra.
Appeal 2010-001806
Application 11/023,074
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indefinite for failing to particularly point out and distinctly claim the subject
matter which Appellant regards as the invention.
We reverse the Examiner’s decision to reject claims 17, 18, 22-24 and
34 under 35 U.S.C. § 112, second paragraph as being indefinite.
We affirm the Examiner’s decision to reject claims 14, 16, 19, 20, 32,
33 and 35 under 35 U.S.C. § 112, second paragraph as being indefinite.
We reverse the rejection of claim 1 under 35 U.S.C. § 102(b) as
anticipated by Svoma.
We reverse the rejection of claims 1, 3, 5-8, 18-20, 22, 25-27, 29-31,
and 34 under 35 U.S.C. § 102(b) as anticipated Haute Stick.
We affirm the rejection of claim 35 under 35 U.S.C. § 102(b) as
anticipated by Haute Stick.
We reverse the rejection of claims 2, 4, 17, 23, and 24 under 35
U.S.C. § 103(a) as unpatentable over Haute Stick.
We reverse the rejection of claims 11-14, and 16 under 35 U.S.C.
§ 103(a) as unpatentable over Haute Stick and Brine.
We affirm the rejection of claim 28 under 35 U.S.C. § 103(a) as
unpatentable over Haute Stick and Brine.
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejections of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that, TO AVOID
TERMINATION OF THE APPEAL AS TO THE REJECTED CLAIMS,
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Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new grounds of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Should Appellant elects to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review of the Patent Office’s decision under 35 U.S.C. § 141 (Appeal to the
Court of Appeals for the Federal Circuit) or under 35 U.S.C. § 145 (Civil
action to obtain patent) with respect to the affirmed rejections, the effective
date of the affirmance is deferred until conclusion of the prosecution before
the Examiner unless, as a mere incident to the limited prosecution, the
affirmed rejections are overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejections, including any timely request for
rehearing thereof.
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).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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