Ex parte TANAKA

Board of Patent Appeals and Interferences

Sep 30, 1998

08574330 (B.P.A.I. Sep. 30, 1998)

Application for patent filed December 18, 1995. 1
Finally rejected claim 5 has been canceled.2
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journal and (2) is not binding precedent of the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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KOUICHI TANAKA
____________
Appeal No. 98-1033
Application No. 08/574,3301
____________
ON BRIEF
____________
Before McCANDLISH, MEISTER, and STAAB, Administrative Patent
Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 4
and 6.2
Appeal No. 98-1033
Application No. 08/574,330
2
The Invention
Appellant’s invention pertains to an improvement to a
metallic baseball bat. Conventional metallic baseball bats
(see Prior Art Figure 2) include annular polishing streaks 11
on the barrel of the bat, which, according to appellant, lower
adherence between the ball and the bat, so that adherence
between the ball and the bat is decreased. Appellants contend
that this results in decreased spin being imparted to the
ball, which in turn leads to decreased flying distance
(specification, paragraph spanning pages 1 and 2).
Appellant’s solution to this alleged problem is to orient the
polishing streaks longitudinally along the barrel of the bat
(see Figure 1). Appellant asserts that orienting the
polishing streaks longitudinally has the opposite effect,
namely, minimizing slippage between the ball and the bat, and
providing greater adherence between the ball and the bat.
This, according to appellant, allows spin to be more easily
imparted to the ball, resulting in increased flying distance
Appeal No. 98-1033
Application No. 08/574,330
3
(specification, page 2). Independent claim 4 is illustrative
of the appealed subject matter and reads as follows:
4. A metallic ball bat comprising:
a metal handle section; and
a metal barrel section extending from said handle
section, wherein a plurality of longitudinal polishing grooves
are formed in an exterior surface of said metal barrel
section.
The Prior Art
The following references of record are relied upon by the
examiner in support of a rejection under 35 U.S.C. § 103:
Gubbins 805,132 Nov. 21,
1905
Easton et al. (Easton) 4,177,989 Dec. 11,
1979
Carr 4,763,900 Aug.
16, 1988
Easton discloses a metallic baseball bat. Easton is
silent as to the presence or absence of polishing grooves on
the barrel of the bat.
Appeal No. 98-1033
Application No. 08/574,330
4
Gubbins pertains to a baseball bat “to lessen the hitting
of fouls by the batsmen” (lines 9-10). Gubbins states (lines
10-39):
To effect this object, a sleeve of corrugated rubber
fabric is placed upon the striking or body portion
of the bat and serves to prevent the glance or
angular rebound of the ball by which fouls are
produced.
. . .
. . . The body [of the bat] is covered with a
sleeve consisting of an inner layer of cloth known
as “friction-cloth,” as indicated at 8, and an outer
layer of corrugated rubber, (indicated at 9,) the
corrugations extending lengthwise of the bat. The
cloth is cemented or otherwise suitably fastened to
the bat and holds the rubber firmly in place.
In the case of this bat the corrugations contact
with the ball and tend to hold it from the lateral
Appeal No. 98-1033
Application No. 08/574,330
5
bound which causes fouls and to impel it in a
straight and fair direction on a line. The knocking
of fouls and high flies is thus prevented in a
measure.
Although the invention as shown and described
has a rubber cover, the same idea may be applied by
the use of corrugated leather or other material.
Carr discloses a baseball bat having a roughed striking
surface. More specifically, Carr provides surface roughening
characteristics that promote the tendency of the ball to spin
when struck off-center or struck a glancing blow. This
promotion of spin enhances the tendency of the ball to deviate
from its expected flight path when struck off-center (column
1, lines 6-19). According to Carr, this enhanced tendency of
the ball to deviate from its expected flight path may be used,
for example, by batters and coaches in the analysis and
improvement of batting skills by making the batter and coach
more aware of striking the ball off-center (column 1, lines
51-66).
Appeal No. 98-1033
Application No. 08/574,330
6
The Rejection
Claims 4 and 6 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Easton in view of Gubbins and Carr.
The examiner’s rationale in rejecting the claims is found
on page 2 of the final rejection and reads as follows:
Easton discloses the claimed bat with the
exception of the longitudinal grooves. However, as
disclosed by Gubbins it is known in the art to
provide bats with a streaked surface for the
purposes espoused by the applicant. Furthermore, as
Carr teaches[,] it is known in the art to provide
such grip enhancing grooves directly on the bat
surface. It would have been obvious to one of
ordinary skill in the art to have provided Easton’s
bat with a streaked surface directly on the bat as
well for the reasons espoused by Gubbins and Carr.
Opinion
Appeal No. 98-1033
Application No. 08/574,330
7
The key question, in our view, is what one of ordinary
skill in the art would have derived from Gubbins. On the one
hand, it appears that the examiner regards Gubbins as teaching
that the provision of longitudinal grooves alone would be
sufficient to bring about Gubbins objective of holding the
ball from lateral bounds which causes fouls. On the other
hand, appellant has taken the position that
[t]he intended purpose of the Gubbins sleeve is to
contact and hold the ball in order to reduce fouls,
and not to enhance the spin which is imparted to the
ball. The materials selected for the sleeve [of
Gubbins] are intended to be softer than the
underlying bat surface which is formed of wood. It
is submitted that, even at the time of the Gubbins
invention, it would have been possible to form
grooves in the surface of a wooden bat. However,
this would not have served the intended purpose of
the Gubbins invention. [Brief, page 5.]
Appeal No. 98-1033
Application No. 08/574,330
While we appreciate that Gubbins also states that “other3
materials” (lines 38-39) may be used, we do not think this
disclosure is particularly helpful to the examiner’s position
when read in context.
8
Thus, appellant reads Gubbins as teaching that the material of
the sleeve, as well as its longitudinal grooves, are of
importance in achieving the Gubbins’ objective of lessening
the hitting of foul balls.
We think the appellant’s view of Gubbins is the better
one. Gubbins’ objective is to hold the ball to the bat to
prevent it from bounding away laterally. To achieve this
objective, Gubbins teaches providing a corrugated rubber or
corrugated leather sleeve over the hitting surface of an
“ordinary” (presumably wooden) bat. In our view, one of
ordinary skill in the art would have logically concluded from
this that the relatively soft nature of the sleeve plays a
role in achieving Gubbins purpose. This being the case, we3
do not believe the ordinarily skilled artisan would have
discarded Gubbins’ soft sleeve in adapting a modern metallic
bat for Gubbins’ purpose. Nothing in Carr convinces us
otherwise. Thus, we do not regard the combined teachings of
Appeal No. 98-1033
Application No. 08/574,330
9
the applied references as suggesting the provision of
longitudinally oriented polishing grooves on the exterior
surface of a metallic bat, as now claimed.
In approaching the question of obviousness, it is
improper to consider the references in less than their
entireties, i.e., to disregard disclosures in the references
that diverge from and teach away from the invention at hand.
W. L. Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d
1540, 1540, 220 USPQ 303, 311 (Fed. Cir. 1983). Further, it
is impermissible to use the claims as a frame and the prior
art references as a mosaic to piece together a facsimile of
the claimed invention. Uniroyal, Inc. v. Rudkin-Wiley Corp.,
837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988). In our opinion, this is
precisely what the examiner has done in arriving at his
conclusion that the subject matter of the appealed claims
would have been obvious to one of ordinary skill in view of
the teachings of the applied references.
Appeal No. 98-1033
Application No. 08/574,330
10
In light of the foregoing, we cannot sustain the
examiner’s rejection.
The decision of the examiner is reversed.
Appeal No. 98-1033
Application No. 08/574,330
11
No period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
REVERSE
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge
)
)
)
)
) BOARD OF PATENT
JAMES M. MEISTER ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
LJS/jlb
Appeal No. 98-1033
Application No. 08/574,330
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