Ex parte Spector

Board of Patent Appeals and Interferences

Apr 22, 1999

08630669 (B.P.A.I. Apr. 22, 1999)

Application for patent filed April 10, 1996.1
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not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte DONALD SPECTOR
__________
Appeal No. 98-1194
Application 08/630,6691
___________
ON BRIEF
___________
Before ABRAMS, PATE, and McQUADE, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Donald Spector originally took this appeal from the final
rejection of claims 1 through 8. Subsequently, the appellant
amended claim 1 and canceled 2 through 6. Thus, the appeal
now involves claims 1, 7 and 8, the only claims presently
Appeal No. 98-1194
Application 08/630,669

2
pending in the application.
The invention relates to "pneumatic playballs in which an
inflated bladder is confined within an outer casing, and more
particularly to a playball of this type which has the
appearance of the decapitated head of a humanoid, an animal-
like or fanciful figure" (specification, page 1). Claim 1 is
illustrative and reads as follows:
1. A pneumatic play ball in a kickable size that looks
like the head of a humanoid, an animal-like or fanciful
figure, said playball comprising:
A. a spherically shaped hollow casing molded of
flexible foam plastic material, said casing having a smooth
spherical inner surface and an irregular outer surface
contoured to define the features of the head of the figure;
and
B. a bladder confined within the casing and inflated
therein to conform to the spherical inner surface of the
casing whereby the resultant pneumatic ball resembles a
decapitated head of the figure which is kickable by a player
who is then metaphorically kicking the figure, the playball
having a diameter close to that of a soccer ball or a
basketball, said bladder being a rubber balloon, said casing
being provided with a slit to admit into the casing the
balloon in its deflated state, said balloon having a neck
which projects from the slit for mouth inflation, after which
the neck is tied and pushed under the slit.
Appeal No. 98-1194
Application 08/630,669

Although the examiner has relied on U.S. Patent No.2
3,923,304 to Warren in the answer (Paper No. 14, see page 5)
to support his position, he has not included this patent in
the statement of the rejection on appeal. Where a reference
is relied on to support a rejection, whether or not in a minor
capacity, there is no excuse for not positively including the
reference in the statement of the rejection. In re Hoch, 428
F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
Accordingly, we have not considered the teachings of Warren in
reviewing the merits of the examiner's rejection.
3
The references relied upon by the examiner as evidence of
obviousness are:2
Eiseman 1,216,425 Feb. 20, 1917
Casey et al. (Casey) 2,324,277 Jul. 13,
1943
Claims 1, 7 and 8 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Eiseman in view of Casey and vice
versa.
Reference is made to the appellant's main and reply
briefs (Paper Nos. 12 and 15) and to the examiner's answer
(Paper No. 14) for the respective positions of the appellant
and the examiner with regard to the merits of this rejection.
Eiseman discloses an inflatable toy comprising "a casing
[10] of fabric or like inelastic material of oval, egg-shape
or other elongated form and a substantially spherical
inflatable balloon [17] within the casing, the balloon being
Appeal No. 98-1194
Application 08/630,669

4
formed of thin elastic rubber and adapted, when inflated, to
conform to the outline of the elongated casing" (page 1, lines
23 through 30). The casing contains a slit 13 for
accommodating the nipple or neck of the balloon.
Casey discloses an inflated rubber playing ball 10
bearing simulated human or animal facial features. In this
regard, Casey teaches that
[t]he mold cavities are designed so that during the
vulcanizing process internal pressure will force
portions of the wall of ball 10 into irregular,
relatively shallow, recesses to form portions on the
outer surface of the ball projecting sufficiently to
provide the desired design. These projections may
be formed to simulate the eyes 11, 11, nose 12,
mouth 13, ears 14, 14, hair 15, etc., of the
irregular features of the so-called man in the moon,
substantially as shown [page 1, column 1, lines 25
through 34].
In explaining the rejection on appeal, the examiner
states
that
Eiseman merely differs from appellant's ball in
the simulation only of the head, the type of
material used for the casing, and the ball being
spherical in shape. Casey clearly teaches
simulating only of the head, spherical shape, and an
elastomeric material for a ball device. It would
have been obvious to one of ordinary skill in the
art at the time of appellant's invention to
incorporate the features taught by Casey in the
Eiseman ball as obvious alternatives in design
Appeal No. 98-1194
Application 08/630,669

5
choice of well-known features for ball devices.
Further, the use of an elastomeric material would be
for better bounce and water resistance.
With respect to Casey in view of Eiseman, Casey
merely differs from the invention in lacking of an
inflatable bladder and a slit for the insertion of
the bladder. Eiseman clearly discloses such
conventional features for ball constructions. It
would have been obvious to one of ordinary skill in
the art at the time of appellant's invention to make
the ball of Casey with the conventional features of
an outer casing and an inflatable bladder as
disclosed by Eiseman as also in obvious alternative
design choice in ball constructions notoriously
well-known to those of ordinary [skill] in the ball
construction art. Further, the use of a bladder
would be for the purpose of providing a "second
skin" for holding the air in the ball [answer, pages
4 and 5].
Given the disparate natures of the balls disclosed by
Eiseman and Casey, however, it is apparent that the reference
combinations proposed by the examiner stem only from an
impermissible hindsight reconstruction of the appellant's
invention wherein the examiner has used the claims as a
template to selectively piece together isolated disclosures in
the prior art. Moreover, even if the proposed reference
combinations were made, the resulting balls would still not
meet the limitation in independent claim 1 requiring the
spherically shaped hollow casing to be molded of flexible foam
plastic material. We are therefore constrained to conclude
Appeal No. 98-1194
Application 08/630,669

6
that the combined teachings of Eiseman and Casey fail to
establish a prima facie case of obviousness with respect to
the subject matter recited in claim 1 and in claims 7 and 8
which depend therefrom.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of these claims.
Appeal No. 98-1194
Application 08/630,669

7
The decision of the examiner is reversed.
REVERSED
)
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
WILLIAM F. PATE, III )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. McQUADE )
Administrative Patent Judge )

JPM/caw
Appeal No. 98-1194
Application 08/630,669

8
Michael Ebert
Hopgood, Calimafde, Kalil, Blaustein
and Judlowe
60 East 42nd Street
New York, NY 10165