Ex parte Schaubach

Board of Patent Appeals and Interferences

Nov 4, 1999

08400129 (B.P.A.I. Nov. 4, 1999)

Application for patent filed March 6, 1995. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAMES P. SCHAUBACH
____________
Appeal No. 1999-1987
Application No. 08/400,1291
____________
ON BRIEF
____________
Before CALVERT, NASE, and BAHR, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 to 11, 17 to 22 and 25 to 27. Dependent
Appeal No. 1999-1987 Page 2
Application No. 08/400,129
While the "Summary of Action" section of the final2
rejection (Paper No. 23, mailed December 24, 1996) states that
claim 24 is rejected, no rejection of claim 24 is set forth
therein or in the preceding nonfinal Office action (Paper No.
21, mailed March 21, 1996).
claim 24 has not been rejected. Claims 12 to 16 and 23 have2
been canceled.
We AFFIRM-IN-PART and enter a new rejection pursuant to
37 CFR § 1.196(b).
BACKGROUND
The appellant's invention relates to a batting practice
apparatus. An understanding of the invention can be derived
from a reading of exemplary claim 1, a copy of which appears
in the opinion section below.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Albert 3,086,775 Apr. 23,
1963
Alexander 3,531,115 Sep.
29, 1970
Hutt et al. 3,729,195 Apr. 24,
1973
Appeal No. 1999-1987 Page 3
Application No. 08/400,129
(Hutt)
McGuckin et al. 5,165,682 Nov. 24,
1992
(McGuckin)
Claims 1 to 3, 7 and 8 stand rejected under 35 U.S.C. §
103 as being unpatentable over Alexander in view of Albert.
Claims 4 to 6 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Alexander and Albert as applied to
claim 1 above, and further in view of Hutt.
Claims 9 to 11 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Alexander and Albert as applied to
claim 1 above, and further in view of McGuckin.
Claims 17 to 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over McGuckin in view of Albert.
Claims 21, 22, 25 and 26 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Alexander in view of McGuckin
and Albert.
Appeal No. 1999-1987 Page 4
Application No. 08/400,129
Claim 27 stands rejected under 35 U.S.C. § 103 as being
unpatentable over McGuckin in view of Alexander.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the nonfinal Office action
(Paper No. 21, mailed March 21, 1996) and the answer (Paper
No. 31, mailed December 21, 1998) for the examiner's complete
reasoning in support of the rejections, and to the brief
(Paper No. 27, filed April 7, 1998) for the appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
Appeal No. 1999-1987 Page 5
Application No. 08/400,129
The test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary
skill in the art. See In re Young, 927 F.2d 588, 591, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). Moreover, in
evaluating such references it is proper to take into account
not only the specific teachings of the references but also the
inferences which one skilled in the art would reasonably be
expected to draw therefrom. In re Preda, 401 F.2d 825, 826,
159 USPQ 342, 344 (CCPA 1968).
With this as background, we turn to the examiner's
rejections of the claims on appeal.
Appeal No. 1999-1987 Page 6
Application No. 08/400,129
Claims 1 to 3
We sustain the rejection of claims 1 to 3 under 35 U.S.C.
§ 103.
Claim 1 reads as follows:
Batting practice apparatus for repeated,
rotationally-swinging presentation of a simulated ball to
a practicing batter, said apparatus comprising:
a. a flexible tether having proximal and distal
ends; b. a substantially spherical, mechanical
energy- absorbing mass affixed to said tether's distal
end; and, c. an elongate, moderately flexible
sleeve disposed in concentric relation with said tether,
adjacent said tether's distal end.
Alexander discloses a batting practice device 10. As
shown in Figures 1 and 2, the batting practice device 10
includes a ball 12, a line 14 made of light clothes line cord,
and a swivel 16 fastened to a handle 18 by a pivot bolt 20.
As shown in Figure 4, the ball is made of fairly dense sponge
rubber and is secured to the line 14 by knots 42, 50.
Alexander teaches (column, 3, lines 23-40) that sometimes it
is desirable to use a ball having less resiliency and more
weight than the sponge rubber ball 12. In that case,
Appeal No. 1999-1987 Page 7
Application No. 08/400,129
Alexander discloses a heavier ball 12'. As shown in Figure 5,
the heavier ball 12' is attached to the line 14 via two
lengths 76, 78 of an elastic cord formed of elastic strands
with a covering of cloth fabric braided suitably to permit
expansion and contraction of the cord.
Albert discloses a baseball practice device. As shown in
Figure 2, the baseball practice device includes a baseball 25,
a length of linked chain 23, a rubber bumper 21 and a length
of rubber tubing or hose 30 which extends over the lower
portion of the chain 23 and engages at one end with the
baseball 25. Albert teaches (column 1, lines 43-46, and
column 2, lines 26-28) that the length of rubber tubing or
hose 30 provides protection for the bat and eliminates whips
in the chain which would otherwise occur when the ball is
struck.
After the scope and content of the prior art are
determined, the differences between the prior art and the
claims at issue are to be ascertained. Graham v. John Deere
Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
Appeal No. 1999-1987 Page 8
Application No. 08/400,129
Based on our analysis and review of Alexander and claims
1 to 3, it is our opinion that the only difference is the
limitation in claim 1 that the batting practice apparatus
includes "an elongate, moderately flexible sleeve disposed in
concentric relation with said tether, adjacent said tether's
distal end."
In applying the above-noted test for obviousness with
regard to this difference, we reach the conclusion that it
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to have provided the
batting practice device of Alexander with a length of rubber
tubing or hose extending over the lower portion of Alexander's
line 14 and engaging at one end with the ball 12, 12' as
suggested by the teachings of Albert so as to eliminate whips
in the line 14 which would otherwise occur when the ball is
struck.
Additionally, it is well settled that a disclosure that
anticipates under 35 U.S.C. § 102 also renders the claim
unpatentable under 35 U.S.C. § 103, for "anticipation is the
Appeal No. 1999-1987 Page 9
Application No. 08/400,129
The statement of purpose or intended use of the3
invention set forth in the preamble is not a claim limitation
since the appellant has defined a complete invention in the
claim body. See Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d
1550, 1553 (Fed. Cir. 1997), cited in Pitney Bowes Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161,
1165-66 (Fed. Cir. 1999); In re Sinex, 309 F.2d 488, 492, 135
USPQ 302, 305 (CCPA 1962). There is an extensive body of
precedent on the question of whether a statement in a claim of
purpose or intended use constitutes a limitation for purposes
of patentability. See generally Kropa v. Robie, 187 F.2d 150,
155-59, 88 USPQ 478, 483-87 (CCPA 1951) and the authority
cited therein, and cases compiled in 2 Chisum, Patents §
8.06[1][d] (1991). Such statements often, although not
necessarily, appear in the claim's preamble. See In re
Stencel, 828 F.2d 751, 754, 4 USPQ2d 1071, 1073 (Fed. Cir.
1987).
epitome of obviousness." Jones v. Hardy, 727 F.2d 1524, 1529,
220 USPQ 1021, 1025 (Fed. Cir. 1984). See also In re
Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982);
In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA
1974).
In this case, it is our view that claims 1 to 3, are
anticipated by Albert under 35 U.S.C. § 102(b). In that
regard, claim 1 reads on Albert as follows: Batting practice
apparatus for repeated, rotationally-swinging presentation of
a simulated ball to a practicing batter , said apparatus3
Appeal No. 1999-1987 Page 10
Application No. 08/400,129
comprising: a. a flexible tether (i.e., Albert's chain 23)
having proximal and distal ends; b. a substantially spherical,
mechanical energy-absorbing mass (i.e., Albert's ball 25)
affixed to said tether's distal end; and, c. an elongate,
moderately flexible sleeve (i.e., Albert's rubber tubing or
hose 30) disposed in concentric relation with said tether,
adjacent said tether's distal end. The limitation of claim 2
reads on Albert as follows: said tether has means for being
grasped at its proximal end (i.e., Albert's bumper 21). The
limitation of claim 3 reads on Albert as follows: said
mechanical energy-absorbing mass is a spherical, resilient
ball (i.e., Albert's baseball 25).
With respect to claim 1, the appellant argues (brief, pp.
9-13) that there is no teaching, suggestion, incentive or
motivation to combine the teachings of Alexander and Albert.
We do not agree.
While there must be some teaching, reason, suggestion, or
motivation to combine existing elements to produce the claimed
device, it is not necessary that the cited references or prior
Appeal No. 1999-1987 Page 11
Application No. 08/400,129
art specifically suggest making the combination (see B.F.
Goodrich Co. v. Aircraft Braking Systems Corp., 72 F.3d 1577,
1583, 37 USPQ2d 1314, 1319 (Fed. Cir. 1996) and In re Nilssen,
851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988)) as
the appellant would apparently have us believe. Rather, as
set forth above, the test for obviousness is what the combined
teachings of the references would have suggested to one of
ordinary skill in the art. See In re Young, 927 F.2d 588,
591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). Thus, this
argument by the appellant is not persuasive that any error in
the determination regarding the obviousness of claim 1 has
occurred. As long as some motivation or suggestion to combine
the references is provided by the prior art taken as a whole,
the law does not require that the references be combined for
the reasons contemplated by the inventor. See In re Dillon,
919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990)(en
banc), cert. denied, 500 U.S. 904 (1991) and In re Beattie,
974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992).
In this case, we have concluded that for the reasons set forth
above, the combined teachings of Alexander and Albert do
Appeal No. 1999-1987 Page 12
Application No. 08/400,129
The Patent and Trademark Office (PTO) applies to the4
verbiage of the claims before it the broadest reasonable
meaning of the words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description
contained in the appellant's specification. In re Morris, 127
(continued...)
provide the necessary teaching, reason, suggestion, and
motivation to have combine their existing elements to produce
the claimed invention.
Further with respect to claim 1, the appellant argues
(brief, pp. 13-14) that Albert's rubber tubing or hose 30 is
not a "moderately flexible" sleeve as recited in claim 1. We
do not agree.
In view of the purpose of Albert's rubber tubing or hose
30 (i.e., to provide protection for the bat and to eliminate
whips in the chain which would otherwise occur when the ball
is struck), we reach the conclusion that the limitation
"moderately flexible" is readable on Albert's rubber tubing or
hose 30. In that regard, the phrase "moderately flexible"
must be given its broadest reasonable meaning. Since the4
Appeal No. 1999-1987 Page 13
Application No. 08/400,129
(...continued)4
F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997). See
also In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed.
Cir. 1983).
appellant's written description provides no enlightenment by
way of definitions or otherwise as to the intended meaning of
"moderately flexible," we must look at the standard dictionary
meanings of those words. The American Heritage Dictionary,
Second College Edition, (1982) defines (1) "flexible" as
"Capable of being bent or flexed; pliable" and (2) "moderate"
as "Within reasonable limits; not excessive or extreme." We
find that Albert's rubber tubing or hose 30 is inherently a
structure that is capable of being bent or flexed within
reasonable limits. Thus, we conclude that the limitation
"moderately flexible" is readable on Albert's rubber tubing or
hose 30.
With respect to claims 2 and 3, the appellant argues
(brief, p. 15) that these dependent claims have essentially
been rejected for a lack of novelty under 35 U.S.C. § 102. We
do not agree. While the examiner did state (nonfinal Office
action, p. 2) that Alexander clearly shows the structure as
Appeal No. 1999-1987 Page 14
Application No. 08/400,129
defined in claims 2 and 3, this statement was clearly meant to
mean only that the additional limitations set forth in claims
2 and 3 are met by the teachings of Alexander. Thus, the
subject matter of claims 2 and 3 are rendered obvious under 35
U.S.C. § 103 on the same basis as set forth above.
For the reasons set forth above, the decision of the
examiner to reject claims 1 to 3 under 35 U.S.C. § 103 is
affirmed.
Claim 7
We sustain the rejection of claim 7 under 35 U.S.C. §
103.
Claim 7 reads as follows:
The apparatus of Claim 1, wherein said tether
comprises an inner core of a plurality of linearly
resilient strands, and an outer linearly extendable,
fabric sheath.
The appellant argues (brief, pp. 16-17) that the true
tether in both of Alexander's disclosed embodiments is line 14
which is clearly nonresilient. We do not agree for the
Appeal No. 1999-1987 Page 15
Application No. 08/400,129
following reason. In the Figure 5 embodiment of Alexander,
the tether comprises both line 14 and the two portions 76, 78
of elastic cord. Since the elastic cord of Alexander is
formed of elastic strands with a covering of cloth fabric
braided suitably to permit expansion and contraction of the
cord, it is our determination that the limitations of claim 7
read on the Figure 5 embodiment of Alexander.
For the reasons set forth above, the decision of the
examiner to reject claim 7 under 35 U.S.C. § 103 is affirmed.
Claim 8
We sustain the rejection of claim 8 under 35 U.S.C. §
103.
Claim 8 reads as follows:
The apparatus of Claim 1, wherein said sleeve is
sufficiently durable not to be damaged by a bat's impact
and wherein said sleeve is further sufficiently flexible
to yield when so hit and, at once, shape-retaining, to
resist wrapping around a bat and to return immediately to
a substantially linear configuration after such an
impact.
Appeal No. 1999-1987 Page 16
Application No. 08/400,129
The appellant argues (brief, pp. 17-19) that the
limitations of claim 8 are not suggested or taught by Albert's
rubber tubing or hose 30. We do not agree. In that regard,
we find that Albert's rubber tubing or hose 30 is inherently a
structure that is (1) sufficiently durable not to be damaged
by a bat's impact, (2) sufficiently flexible to yield when so
hit and, (3) shape-retaining to resist wrapping around a bat
and to return immediately to a substantially linear
configuration after such an impact. Thus, we conclude that
the limitations of claim 8 are readable on Albert's rubber
tubing or hose 30.
For the reasons set forth above, the decision of the
examiner to reject claim 8 under 35 U.S.C. § 103 is affirmed.
Claims 4 to 6
We sustain the rejection of claims 4 to 6 under 35 U.S.C.
§ 103.
Appeal No. 1999-1987 Page 17
Application No. 08/400,129
In addition to the teachings of Alexander and Albert, the
examiner relies upon the additional teachings of Hutt in
rejecting claims 4 to 6. Hutt's invention relates to the
attachment of a line to a ball. Hutt teaches (column 1, lines
10-20) that
[t]here are many games and sporting apparatus
requiring the attachment of a line, whether the line be a
cord, a length of elastic, or the like. In most cases,
the ball used is of the tennis ball type but it will be
appreciated that the invention is intended to be extended
to other suitable balls.
Previously, the attachment of the line to a ball
suffered from many disadvantages, the tearing of the ball
from the attachment being the most important. In
addition, many a game was spoiled by the twisting of the
line, which also caused premature breaking of the line.
As shown in the drawing, a hollow ball 10 (e.g., a tennis
ball) is connected to a line 20. The ball has a hole 12 which
snugly accommodates the raised portion 14 of an integral unit
comprising a base 16 and the raised portion 14. An orifice 18
extends right through the base to receive the line 20 which
also passes through a bullet-shaped element 22 and is knotted
or otherwise anchored thereto. The other end of the line 20
is provided with a hook 24 or the like for attachment to a
sporting apparatus or game.
Appeal No. 1999-1987 Page 18
Application No. 08/400,129
Claim 4 reads as follows: "The apparatus of Claim 3,
wherein said ball is hollow."
In applying the above-noted test for obviousness, we
additionally conclude that it would have been further obvious
at the time the invention was made to a person having ordinary
skill in the art to have modified the ball in Alexander's
device to be hollow as suggested and taught by Hutt to provide
improved anchoring of the ball to the line.
The appellant argues (brief, pp. 19-21) that (1) Hutt is
non-analogous art, and (2) there is no suggestion to combine
the ball of Hutt with the apparatus of Alexander. We do not
agree.
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
Appeal No. 1999-1987 Page 19
Application No. 08/400,129
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). In the present instance,
we are informed by the appellant's originally filed
specification (p. 1) that the invention relates generally to
training equipment for baseball and related games. Hutt's
invention is directed to many games and sporting apparatus
that require the attachment of a line, whether the line be a
cord, a length of elastic, or the like, to a ball and thus
falls into the former category of the Wood test. Moreover,
since one problem with which the appellant's invention deals
with is the connection of the tether with the ball, Hutt's
invention logically would have commended itself to an
artisan's attention in considering that problem. Thus, we
conclude that Hutt is analogous art.
It is our conclusion that there is suggestion to combine
the ball of Hutt with the apparatus of Alexander. In that
regard, Hutt clearly teaches the advantages of connecting a
tether line to a hollow ball and thus supplies the necessary
Appeal No. 1999-1987 Page 20
Application No. 08/400,129
As noted previously, the law does not require that the5
references be combined for the reasons contemplated by the
inventor.
See page 7 of the appellant's brief.6
motivation for modifying Alexander. In this case, we have5
concluded that for the reasons set forth above, the combined
teachings of Alexander, Albert and Hutt do provide the
necessary teaching, reason, suggestion, and motivation to have
combined their existing elements to produce the claimed
invention.
For the reasons set forth above, the decision of the
examiner to reject claim 4 under 35 U.S.C. § 103 is affirmed.
The appellant has grouped claims 4 to 6 as standing or
falling together. Thereby, in accordance with 37 CFR 6
§ 1.192(c)(7), claims 5 and 6 fall with claim 4. Thus, it
follows that the decision of the examiner to reject claims 5
and 6 under 35 U.S.C. § 103 is also affirmed.
Appeal No. 1999-1987 Page 21
Application No. 08/400,129
Claims 9 to 11
We sustain the rejection of claims 9 to 11 under 35
U.S.C.
§ 103.
In addition to the teachings of Alexander and Albert, the
examiner relies upon the additional teachings of McGuckin in
rejecting claims 9 to 11. McGuckin's invention relates
generally to reflex skill development devices for use in
athletic games, particularly baseball and methods for using
such devices. In particular, Figure 1 is a pictorial view
illustrating two athletes using the reflex skill device of
McGuckin in a batting practice function. As shown in Figure
3, the reflex skill development device comprises a hollow ball
40 attached by a resilient tether 17 to a loop, handle or
enlargement of the tether 19. Ball 40 comprises a resilient
cover 58 with a plurality of perforations 56 therethrough.
McGuckin teaches that the tether 17 is preferably constructed
in two parts of two dissimilar materials. A first part 38
(also called a short tether) of short stretchable material is
attached at one end to the ball 40 through perforations 56 and
Appeal No. 1999-1987 Page 22
Application No. 08/400,129
then attached at a second end through a swivel arrangement 27
to a second part 21 of the tether. The short tether 38 is
most preferably of a stretchable material forgiving enough to
allow a stretch ratio in the range of about 3:1 to about 4:1.
Additionally, in the batting function as illustrated in Figure
1, should the batter miss the ball with the bat and strike the
short tether, the tether will stretch during its wrapping
around the bat such that injury to the pitcher will be
prevented. An extended rubber tubing (e.g., surgical tubing)
with an internal diameter of 1/16 inches and an external
diameter of 1/4 to 5/16 inches has been found by McGuckin to
perform adequately. The short tether may be covered by a
braided material, however the weave of such braided material
should be such as to allow for the required stretch
capability. The second part 21 of the tether line (also
called an adjusting line) is preferably of a smaller light
gauge material, most preferably multibraided nylon. The
adjusting line 21 is in turn attached to the handle 19.
Claim 9
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Application No. 08/400,129
Claim 9 reads as follows: "The apparatus of Claim 1,
further including means within the length of said tether for
preventing twisting."
In applying the above-noted test for obviousness, we
additionally conclude that it would have been further obvious
at the time the invention was made to a person having ordinary
skill in the art to have modified Alexander's line 14 to
include a swivel arrangement therein as suggested and taught
by McGuckin's swivel arrangement 27 in line 14 to provide the
self evident advantage thereof. Moreover, in applying the
above-noted test for obviousness, we additionally conclude
that it would have been obvious at the time the invention was
made to a person having ordinary skill in the art to have
provided McGuckin's device with a length of rubber tubing or
hose extending over the short tether portion 38 and engaging
at one end with the ball 40 as suggested by the teachings of
Albert so as to eliminate whips in the short tether portion 38
which would otherwise occur when the ball is struck.
Appeal No. 1999-1987 Page 24
Application No. 08/400,129
See page 7 of the appellant's brief.7
The appellant argues (brief, pp. 24-25) that it would not
have been obvious to have provided McGuckin's swivel
arrangement 27 in Alexander's line 14 since Alexander already
includes a swivel 16. We do not agree for the following
reasons. First, the McGuckin's swivel arrangement 27 is not
duplicative of Alexander's swivel 16 since each would permit
swiveling about different axes. Second, McGuckin's swivel
arrangement 27 is a known alternative to Alexander's swivel 16
and thus it would have been obvious at the time the invention
was made to a person having ordinary skill in the art to have
replaced Alexander's swivel 16 with McGuckin's swivel
arrangement 27.
For the reasons set forth above, the decision of the
examiner to reject claim 9 under 35 U.S.C. § 103 is affirmed.
Claim 11
The appellant has grouped claims 9 and 11 as standing or
falling together. Thereby, in accordance with 37 CFR 7
Appeal No. 1999-1987 Page 25
Application No. 08/400,129
§ 1.192(c)(7), claim 11 falls with claim 9. Thus, it follows
that the decision of the examiner to reject claim 11 under
35 U.S.C. § 103 is also affirmed.
Claim 10
Claim 10 reads as follows: "The apparatus of Claim 1,
wherein said tether is further comprised of a substantially
nonresilient proximal portion having proximal and distal ends,
and a linearly resilient distal portion having proximal and
distal ends."
In our view, these additional limitations read on the
Figure 5 embodiment of Alexander wherein the tether comprises
both line 14 (i.e., a substantially nonresilient proximal
portion having proximal and distal ends) and the two portions
76, 78 of elastic cord (i.e., a linearly resilient distal
portion having proximal and distal ends). Moreover, in
applying the above-noted test for obviousness, we additionally
conclude that it would have been further obvious at the time
the invention was made to a person having ordinary skill in
the art to have modified Alexander's line 14 to include both a
Appeal No. 1999-1987 Page 26
Application No. 08/400,129
short tether, a swivel arrangement and an adjusting line as
suggested and taught by McGuckin's tether 17 having a short
tether 38, a swivel arrangement 27 and an adjusting line 21 to
provide the self evident advantage thereof.
The appellant argues (brief, pp. 21-23) that (1) there is
no incentive or suggestion to have combined the teachings of
McGuckin with Alexander, and (2) the introduction of
McGuckin's short tether 38 into Alexander's tether would be
superfluous. We do not agree for the following reasons.
First, McGuckin's two part tether with swivel arrangement 27
is a known alternative to Alexander's tether and thus it would
have been obvious at the time the invention was made to a
person having ordinary skill in the art to have replaced
Alexander's tether with McGuckin's tether 17. Second,
McGuckin's tether 17 would not be superfluous in the
Alexander's Figure 4 embodiment. Lastly, the additional
limitations of claim 10 are readable on the Figure 5
embodiment of Alexander as set forth above.
Appeal No. 1999-1987 Page 27
Application No. 08/400,129
For the reasons set forth above, the decision of the
examiner to reject claim 10 under 35 U.S.C. § 103 is affirmed.
Claims 17 to 22
We will not sustain the rejection of claims 17 to 22
under 35 U.S.C. § 103.
Claims 17 to 22 include the limitation that the tether
"slides freely" within a moderately flexible sleeve.
Clearly this limitation is not met by any of the applied
prior art. Specifically, there is no disclosure in Albert
that his chain 23 "slides freely" within the rubber tubing or
hose 30.
Since all the limitations of claims 17 to 22 are not
suggested by the applied prior art for the reasons set forth
above, the decision of the examiner to reject claims 17 to 22
under 35 U.S.C. § 103 is reversed.
Claim 25
Appeal No. 1999-1987 Page 28
Application No. 08/400,129
We sustain the rejection of claim 25 under 35 U.S.C. §
103.
Claim 25 reads as follows:
Batting practice apparatus for repeated,
rotationally-swinging presentation of a simulated ball to
a practicing batter, said apparatus comprising:
a. a flexible tether having proximal and distal
ends, said tether being comprised of a substantially
nonresilient proximal portion and a linearly resilient
distal portion;
b. a substantially spherical, mechanical
energy-absorbing mass affixed to said tether's distal
end; and,
c. a sleeve disposed in concentric relation with
said tether, and adjacent said tether's distal end,
wherein said sleeve is sufficiently durable not to be
damaged by a bat's impact, and wherein said sleeve is
further sufficiently flexible to yield when so hit and,
at once, shape-retaining, to resist wrapping around a bat
and to return immediately to a substantially linear
configuration after said bat's impact.
In applying the above-noted test for obviousness with
respect to claim 25, we reach the conclusion that it would
have been obvious at the time the invention was made to a
person having ordinary skill in the art to have (1) provided
the batting practice device of Alexander with a length of
rubber tubing or hose extending over the lower portion of
Appeal No. 1999-1987 Page 29
Application No. 08/400,129
Alexander's line 14 and engaging at one end with the ball 12,
12' as suggested by the teachings of Albert so as to eliminate
whips in the line 14 which would otherwise occur when the ball
is struck, and (2) modified Alexander's line 14 to include
both a short tether, a swivel arrangement and an adjusting
line as suggested and taught by McGuckin's tether 17 having a
short tether 38, a swivel arrangement 27 and an adjusting line
21 to provide the self evident advantage thereof. Moreover,
in applying the test for obviousness, we additionally conclude
that it would have been obvious at the time the invention was
made to a person having ordinary skill in the art to have
provided McGuckin's device with a length of rubber tubing or
hose extending over the short tether portion 38 and engaging
at one end with the ball 40 as suggested by the teachings of
Albert so as to eliminate whips in the short tether portion 38
which would otherwise occur when the ball is struck.
The arguments set forth by the appellant in the brief
(pp. 36-38) are unpersuasive since the applied prior art is
suggestive of the claimed invention for the reasons set forth
above and in our previous discussions of claims 1, 8 and 10.
Appeal No. 1999-1987 Page 30
Application No. 08/400,129
Accordingly, the decision of the examiner to reject claim 25
under 35 U.S.C. § 103 is affirmed.
Appeal No. 1999-1987 Page 31
Application No. 08/400,129
Claim 26
We now turn to the rejection of claim 26. However, for
reasons stated infra in our new rejection under the second
paragraph of Section 112 entered under the provisions of 37 CFR
1.196(b), no reasonably definite meaning can be ascribed to
certain language appearing in the claim. As the court in In re
Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970)
stated:
[a]ll words in a claim must be considered in judging the
patentability of that claim against the prior art. If no
reasonably definite meaning can be ascribed to certain
terms in the claim, the subject matter does not become
obvious --the claim becomes indefinite.
In comparing the claimed subject matter with the applied
prior art, it is apparent to us that considerable speculations
and assumptions are necessary in order to determine what in
fact is being claimed. Since a rejection based on prior art
cannot be based on speculations and assumptions, see In re
Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962), we
are constrained to reverse, pro forma, the examiner's
rejection of claim 26 under
Appeal No. 1999-1987 Page 32
Application No. 08/400,129
35 U.S.C. § 103. We hasten to add that this is a procedural
reversal rather than one based upon the merits of the section
103 rejection.
Claim 27
We sustain the rejection of claim 27 under 35 U.S.C. §
103.
Claim 27 reads as follows:
Batting practice apparatus for repeated,
rotationally-swinging presentation of a simulated ball to
a practicing batter, said apparatus comprising:
a. a flexible tether having proximal and distal
ends, said tether being comprised of a substantially
nonresilient proximal portion and a linearly resilient
distal portion, wherein said linearly resilient portion
of said tether comprises an inner core of a plurality of
linearly resilient strands, and an outer linearly
extendable, fabric sheath; and,
b. a substantially spherical, mechanical
energy-absorbing mass affixed to said tether's distal
end.

In applying the above-noted test for obviousness with
respect to claim 27, we reach the conclusion that it would
have been obvious at the time the invention was made to a
Appeal No. 1999-1987 Page 33
Application No. 08/400,129
A disclosure that anticipates under 35 U.S.C. § 102 also8
renders the claim unpatentable under 35 U.S.C. § 103, for
"anticipation is the epitome of obviousness." See page 7,
supra.
person having ordinary skill in the art to have modified
McGuckin's device so that the connection between his tether
and ball is made in the manner suggested and taught by
Alexander's Figure 5 embodiment. Moreover, it is our view
that claim 27 is obvious from Alexander alone since claim 27
is anticipated by Alexander under 35 U.S.C. § 102(b). In8
that regard, claim 27 reads on Alexander as follows: Batting
practice apparatus for repeated, rotationally-swinging
presentation of a simulated ball to a
Appeal No. 1999-1987 Page 34
Application No. 08/400,129
practicing batter, said apparatus comprising: a. a flexible
tether (i.e., Alexander's line 14 and two portions 76, 78 of
elastic cord) having proximal and distal ends, said tether
being comprised of a substantially nonresilient proximal
portion (i.e., Alexander's line 14) and a linearly resilient
distal portion (i.e., Alexander's two portions 76, 78 of
elastic cord), wherein said linearly resilient portion of said
tether comprises an inner core of a plurality of linearly
resilient strands (i.e., Alexander's two portions 76, 78 of
elastic cord include elastic strands), and an outer linearly
extendable, fabric sheath (i.e., Alexander's two portions 76,
78 of elastic cord include a covering of cloth fabric over the
elastic strands); and, b. a substantially spherical,
mechanical energy-absorbing mass (i.e., Alexander's ball 12')
affixed to said tether's distal end.
The arguments set forth by the appellant in the brief
(pp. 40-42) are unpersuasive since the applied prior art is
suggestive of the claimed invention for the reasons set forth
above and in our previous discussion of claim 7. Accordingly,
Appeal No. 1999-1987 Page 35
Application No. 08/400,129
the decision of the examiner to reject claim 27 under 35
U.S.C. § 103 is affirmed.
New ground of rejection
Under the provisions of 37 CFR § 1.196(b), we enter the
following new ground of rejection.
Claims 24 and 26 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which the appellant regards as the invention.
Claims are considered to be definite, as required by the
second paragraph of 35 U.S.C. § 112, when they define the
metes and bounds of a claimed invention with a reasonable
degree of precision and particularity. See In re Venezia, 530
F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976).
In this case, we are unable to determine the metes and
bounds of claims 24 and 26 with a reasonable degree of
precision and particularity for the following reasons. With
Appeal No. 1999-1987 Page 36
Application No. 08/400,129
respect to claim 24, we consider this claim to be indefinite
since it depends from canceled claim 23. Thus, it is unclear
to us which, if any, limitations are being incorporated by
reference. With respect to claim 26, we consider this claim
to be indefinite since there is no antecedent basis for "said
twisting preventing means." Thus, it is unclear to us if the
appellant intended to include a twisting preventing means in
the claimed combination or intended to refer to another
element (e.g., nonresilient tether portion).
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 11, 25 and 27 under 35 U.S.C. § 103 is affirmed;
the decision of the examiner to reject claims 17 to 22 and 26
under 35 U.S.C. § 103 is reversed; and a new rejection of
claims 24 and 26 under 35 U.S.C. § 112, second paragraph, has
been added pursuant to provisions of 37 CFR § 1.196(b).
In addition to affirming the examiner's rejection of one
or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b). 37 CFR § 1.196(b)
Appeal No. 1999-1987 Page 37
Application No. 08/400,129
provides, "[a] new ground of rejection shall not be considered
final for purposes of judicial review."

Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date of the
original decision . . . .
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §§
Appeal No. 1999-1987 Page 38
Application No. 08/400,129
141 or 145 with respect to the affirmed rejection, 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 rejection is
overcome.
If the 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 rejection, including any timely request
for rehearing thereof.
Appeal No. 1999-1987 Page 39
Application No. 08/400,129
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART; 37 CFR § 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1999-1987 Page 40
Application No. 08/400,129
JOSEPH E. GERBER
GERBER RITCHEY & O'BANION
400 CAPITAL MALL
SUITE 1550
SACRAMENTO, CA 95814
APPEAL NO. 1999-1987 - JUDGE NASE
APPLICATION NO. 08/400,129
APJ NASE
APJ CALVERT
APJ BAHR
DECISION: AFFIRMED-IN-PART;
37 CFR § 1.196(b)
Prepared By: Gloria Henderson
DRAFT TYPED: 02 Nov 99
FINAL TYPED: