Ex Parte Turos

Board of Patent Appeals and Interferences

May 19, 2011

10719458 (B.P.A.I. May. 19, 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.
10/719,458 11/21/2003 Kenneth Turos 2067.016CIP 3957
59306 7590 05/19/2011
LAW OFFICE OF RAY R. REGAN, P.A.
P.O. BOX 1442
CORRALES, NM 87048
EXAMINER
ARYANPOUR, MITRA
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
05/19/2011 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
BOARD OF PATENT APPEALS AND INTERFERENCES
____________

Ex parte SUN SYSTEMS, INC.
(Application 10/719,458)
____________

Appeal 2010-005673
from Technology Center 3700
____________

Before RICHARD TORCZON, SALLY C. MEDLEY and JAMESON LEE,
Administrative Patent Judges.

TORCZON, Administrative Patent Judge.

DECISION ON APPEAL
The appellant (Sun) appeals under 35 U.S.C. 134(a) from the final
rejection of claims 10 and 12-17. We REVERSE.
OPINION
INTRODUCTION
The examiner has rejected claims 10 and 12-17 as encompassing
subject matter that would have been obvious in view of a patent to Ciesar.
1

The board previously decided an appeal in this application, in which the
board reversed an anticipation rejection based on the Ciesar patent, affirmed

1
J.G. Ciesar, J.W. Kendall & S.A. Massing, Batting swing trainer and
method, US 6,949,036 (2005).
Appeal 2010-005673 Application 10/719,458

2
obviousness rejections based on the Ciesar patent and entered two new
grounds of rejection, one of which was an obviousness rejection of claim 1
based on the Ciesar patent.
2

CLAIMED SUBJECT MATTER
Claim 10, the sole pending independent claim, defines the invention
as:
3

A system for improving batting efficiency, comprising:
a plurality of heads of varying weight adapted to strike a
baseball,
wherein one or more of the plurality of heads is
substantially hollow;
a handle threadably engageable with the plurality of
heads;
means for controlling acoustics mountable on one or
more of the plurality of heads;
means for eliminating deformation of the plurality of
substantially hollow heads;
a sleeve slidably engageable with the handle; and
a grip knob fixedly connected to an end of the handle.

Because Sun frames its arguments in terms of claim 10, we treat claim 10 as
representative of the other claims on appeal.
4
Claim 10 includes two
limitations that facially invoke treatment as means-plus-function
limitations.
5
Sun identifies an end cap 22 as the means for controlling
acoustics and a plug 33 as the means for eliminating deformation.
6

2
Ex parte Sun Systems, Inc., App. No. 2008-3514 (BPAI 23 September
2008). Inexplicably, neither Sun nor the examiner listed this decision as a
related appeal.
3
App. Br. 16 (Claims Appendix), confirmed at Ans. 2.
4
37 C.F.R. § 41.37(c)(1)(vii).
5
35 U.S.C. 112(6); Lighting World, Inc. v. Birchwood Lighting, Inc.,
382 F.3d 1354, 1362 (Fed. Cir. 2004) (explaining presumption).
6
App. Br. 4.
Appeal 2010-005673 Application 10/719,458

3
Sun's Figure 1B perspective
view (right) shows an embodiment of
Sun's system for improving batting
efficiency.
7
In the figure, the sleeved end
cap 22 is inserted in a terminal end of a
tube 12, while the plug 33 extends about
two inches into the hollow tube 12 and
adjacent to a handle 34 to improve the
contact between threads on the
tube 12 and the threads in the
handle 34.
8
Sun's Figure 2
(below) shows a side cross-
sectional view of the tube 12 with
the plug 33 inserted in to reinforce
the threaded portion.
9
The specification
states that the cap 22 is stamped with the
weight of the bat,
10
but this feature does not appear to relate to the function
recited in the claim and is thus not limiting.
11
The
plug 33 is substantially shock-absorbing to
eliminate bat
deformation and
reverberations from

7
Amdts. to Spec. 3 (filed 21 November 2003).
8
Spec. 6-7.
9
Amdts. to Spec. 3 (filed 21 November 2003).
10
Spec. 5:19-24.
11
In re Schreiber, 128 F.3d 1473, 1479 (Fed. Cir. 1997).
Appeal 2010-005673 Application 10/719,458

4
ball impact. The phrase "eliminate bat deformation" means at least
avoidance of stripping in the threaded portions of the bat, of bending of bat
components, and of alteration in the form or shape of the bat. The plug 33
may be metal.
12
The plug 33 is also said to improve the acoustic properties
of the bat,
13
but again this function is not included in the claim.
THE CIESAR PATENT
The Ciesar patent discloses a device and system for teaching a person
the proper way to swing a baseball bat.
14
Ciesar
Figures 7 and 8 (left) provide a perspective view and
an exploded view, respectively, of a second
embodiment of Ciesar's bat.
15
Ciesar
teaches a bat with a handle 14, a
hollow shaft 12 and a head 16. The
head has a receptacle 38 that
receives a cap 40 at one end of
the bat. A weighted rod 34 is
seated in the shaft 12 and fixed to
the head 16.
16

Ciesar Figure 9 is a cross-
sectional view
(right) through the
handle 14, showing

12
Amdts. to Spec. 3 (filed 21 November 2003).
13
Spec. 6.
14
Ciesar 1:7-8.
15
Ciesar 4:53-56.
16
Ciesar 5:7-53.
Appeal 2010-005673 Application 10/719,458

5
the weighted rod 34 concentrically within a core 32 and the shaft 12.
17
The
examiner associates the claimed means for controlling acoustics with
Ciesar's sleeved cap 40 and the claimed means for eliminating deformation
with Ciesar's weighted rod 34.
18

ANALYSIS
Effect of the earlier board decision
As an initial matter, Sun argues that the examiner improperly rejected
claim 10 when prosecution reopened after the board's decision. The earlier
decision reversed the anticipation rejection of claims 1, 2, 8-10 and 12-17,
and entered a new obviousness rejection for claim 1 based on the same
reference, but did not also reject the other claims as obvious. Sun canceled
claims 1-9 and 11 following the decision.
19
Sun contends that the effect of
the board's decision is that claim 10 is allowable and thus the rejection is
improper.
20
Sun is mistaken.
Entry of a new ground of rejection is permissive, not mandatory.
21

Hence, a board opinion may reflect all, some or none
22
of the possible new
grounds for rejecting a claim. It is well-established that, in subsequent
prosecution, an examiner is not precluded from entering any ground of

17
Ciesar 5:54-60.
18
Ans. 3 & 6-7.
19
Reply to Notice 3 (filed 7 April 2009).
20
App. Br. 3-5.
21
37 C.F.R. § 41.50(b): "Should the Board have knowledge of any grounds
not involved in the appeal for rejecting any pending claim, it may include in
its opinion a statement to that effect…." (emphasis added).
22
For example, it would rarely make sense procedurally to add a new ground
of rejection for a claim when the examiner's rejection has been affirmed.
Appeal 2010-005673 Application 10/719,458

6
rejection that was not reversed on appeal.
23
Indeed, appellate decisions may
raise an inference of unpatentability without deciding the issue.
24
In the
present case, the prior board panel expressly addressed claim 1 without
addressing claim 10. In response to Sun's cancellation of claim 1, the
examiner opted to use the board's rejection of claim 1 as an spur for rejecting
claim 10 instead. The examiner's rejection of claim 10 is not procedurally
improper.
Equivalent structure
The equivalence of Ciesar's weighted rod and Sun's plug is a weak
point in the rejection. The examiner concedes that the rod and the plug are
not structurally equivalent,
25
but would it have been obvious to modify
Ciesar to obtain the plug or an equivalent structure? Structures are
equivalent if they perform the identical function in substantially the same
way with substantially the same result.
26

Sun's plug prevents deformation of the bat by reinforcing the threaded
portion of the tube from within. Ciesar's rod is within the shaft and
conceivably reinforces the shaft where it is present. Ciesar's Figure 9
teaches that the rod can extend into the handle (thus reinforcing the length of
the bat). The reinforcing, however, is incidental to the weighting function of
the rod and is mediated by the core between the rod and the shaft. By

23
In re Lister, 583 F.3d 1307, 1317 n.4 (Fed. Cir. 2009); In re Clemens,
622 F.2d 1029, 1039 n. 20 (CCPA 1980).
24
DSW, Inc. v. Shoe Pavilion, Inc., 537 F.3d 1342, 1347 n.3 (Fed. Cir.
2008); In re Steele, 305 F.2d 859, 863 (CCPA 1962).
25
Ans. 6-7.
26
Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1364 (Fed. Cir.
2000).
Appeal 2010-005673 Application 10/719,458

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contrast, Sun's plug is short (about two inches) and tightly coupled with the
tube to provide significant but very localized reinforcement. The two
structures do not prevent deformation in substantially the same way.
HOLDING
The rejection of claim 10 over the Ciesar patent was well within the
examiner's authority, but Ciesar does not teach or suggest a modification that
would result in a structure equivalent to Sun's claimed means for eliminating
deformation.
REVERSED

For Sun Systems, Inc.: Ray R. Regan, LAW OFFICE OF RAY R. REGAN, P.A.,
of Corrales, New Mexico.

For the Commissioner of Patents: Mitra Aryanpour, with Gene Kim and
Xuan M. Thai, TECHNOLOGY CENTER 3700, of Alexandria, Virginia.