Miguel Barahona Torres

Patent Trials and Appeals Board

Nov 24, 2020

2020003140 (P.T.A.B. Nov. 24, 2020)

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.
15/415,280 01/25/2017 Miguel Angel Barahona Torres D7330CIP 2754
27851 7590 11/24/2020
BENJAMIN A. ADLER
8011 CANDLE LANE
HOUSTON, TX 77071
EXAMINER
PENG, RAYSHUN K.
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
11/24/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Ben@adlerandassociates.com
Colleen@adlerandassociates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MIGUEL ANGEL BARAHONA TORRES
____________

Appeal 2020-003140
Application 15/415,280
Technology Center 3700
____________

Before JOHN C. KERINS, STEFAN STAICOVICI, and
NATHAN A. ENGELS, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Aug. 14, 2019, hereinafter “Final
Act.”) rejecting claims 1–5, 8–13, and 16–18. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42.
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Application 15/415,280

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INVENTION
Appellant’s invention relates to ball racquets. Spec. 1, l. 16.
Claims 1 and 10 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A racquet, comprising:
a head frame having a curved side portion, a straight top
portion and a curved bottom portion;
a handle with a length of about 35 inches to about 55
inches that is affixed to the head frame in opposition to said
side portion between the straight top portion and the curved
bottom portion at an angle of about 140° to about 150° with a
distal end of the top portion;
a plurality of openings equally spaced through the head
frame and a portion of the handle; and
a plurality of strings comprising a net passing through
said openings.

REJECTION

The Examiner rejects claims 1–5, 8–13, and 16–18 under 35 U.S.C.
§ 103 as being unpatentable over Gibello,2 Kim,3 and Biehl.4

ANALYSIS
Appellant has not presented arguments for the patentability of claims
2–5, 8–13, and 16–18 apart from independent claim 1. See Appeal Br. 12.
Thus, we select claim 1 as representative, and the remaining claims stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).

2 Gibello, US 4,478,416, issued Oct. 23, 1984.
3 Kim et al., US 2010/0248859 A1, published Sept. 30, 2010.
4 Biehl et al., US 4,360,201, issued Nov. 23, 1982.
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As illustrated below in the Examiner’s annotated Figure 3 of Gibello,
the Examiner finds that Gibello discloses a racquet with many of the
limitations of independent claim 1 including, inter alia, “a head frame
having a curved side portion . . . and a curved bottom portion . . . and a
plurality of strings” forming a net. Final Act. 2 (citing Gibello, Fig. 2).

The Examiner’s annotated Figure 3 of Gibello illustrates a racquet
with a curved bottom portion, a curved side portion, and angles β' and γ
formed between longitudinal axis Z' and major axis X' and minor axis Y',
respectively. Id. at 3.
The Examiner further finds that because Gibello’s “beta and gamma
[angles have a] value of between 40-50 degrees . . . the angle between the
handle and the top portion would be between 130-140 degrees.” Id (citing
Gibello, col. 5, ll. 62–67). Thus, the Examiner concludes that “one of
ordinary skill in the art would readily recognize the handle can be made to
be positioned at an angle of 140-150 degrees to allow the strings to work in a
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balanced and uniform manner even in non-optimal strokes.” Id (citing
Gibello, col. 5, ll. 32–35).
In response, Appellant argues that “the Examiner errs in stating that
the range of 130-140 degrees disclosed in Gibello is the same as in the
Applicant’s invention.” Appeal Brief (filed Oct. 30, 2019, hereinafter
“Appeal Br.”) 6. According to Appellant, “the corresponding angle of 130-
140 degrees between the Z' axis and the X' axis is toward the side portion
and the top portion at Z' axis and Y' axis, or Z' and X' axis,” whereas “in
Applicant’s invention, the angle of 130-140 degrees is between the top
portion and the handle.” Id. at 7 (citing Gibello, Fig. 3).
We are not persuaded by Appellant’s arguments because the
Examiner is correct that, even though “the 130-140 degrees of [the angles
of] Gibello may be toward the side portion and top portion as noted by
[A]ppellant, it is not clear how this prevents Gibello from disclosing the
claimed angle between the handle and top portion.” Examiner’s Answer
(dated Jan. 23, 2020, hereinafter “Ans.”) 3. As support for this position, the
Examiner provides a further annotated Figure 3 of Gibello, as shown below:
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Application 15/415,280

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The Examiner’s annotated Figure 3 of Gibello illustrates a racquet
with a curved top portion, angle β' of 40o–50o formed between longitudinal
axis Z' and major axis X', and complementary angle of 130o–140 o between
longitudinal axis Z' (handle) and a tangent to the curved top portion that is
parallel to major axis X'. Id. at 4.
In particular, we agree with the Examiner that because the tangent to
the top curved portion is parallel to major axis X' and the angle β' formed
between major axis X' and longitudinal axis Z' is 40o–50o, a skilled artisan
would recognize that the resulting complementary angle between
longitudinal axis Z' and the tangent to the top curved portion is 130o–140o.
See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962) (explaining that an
artisan must be presumed to know something about the art apart from what
the reference discloses). Thus, the Examiner is correct that “one of ordinary
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skill would recognize the angle between the handle and the top portion is
130-140 degrees which is within range of the claimed about 140-150
degrees.” Ans. 3; see also Final Act. 18. Therefore, Gibello’s “handle is set
at a 130-140 degree angle relative to the top portion.” Ans. 3.
We further do not agree with Appellant’s position that “in order to
keep an angle of 130-140 degrees between the top portion and the bottom
portion . . . Gibello requires that the shaft 112 be moved so that the
longitudinal axis Z' and the minor axis Y' are superimposed.” Appeal Br. 7
(emphasis omitted). As discussed supra, because Gibello already discloses
that the angle between the handle, i.e., longitudinal axis Z', and the tangent
to the top curved portion is 130o–140o, “no modification to Gibello is
necessary to achieve the claimed angle between the top portion and the
handle.” Ans. 4. Therefore, as such a modification is not required by the
Examiner’s rejection, we are not persuaded by Appellant’s argument that
“the salient feature of the primary reference Gibello, i.e., the 40-50 degree
requirement,” which provides “the ability to personalize the racket by
adjusting the beta and gamma angles for players of normal, tall and short
stature,” is removed. Appeal Br. 8 (citing Gibello, 5, ll. 61–68).
Furthermore, we are not persuaded by Appellant’s position that, in
contrast to Gibello, “the longitudinal axis does not extend into the racquet
head and does not intersect the major and minor axes in the head but
intersects outside the head.” Appeal Br. 9; see also Reply Brief (filed Mar.
23, 2020, hereinafter “Reply Br.”) 2–3. The Examiner is correct that such
“limitations are never claimed” (see Ans. 5) and limitations not appearing in
the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344,
1348 (CCPA 1982). As stated by our reviewing court in In re Hiniker Co.,
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150 F.3d 1362, 1369 (Fed. Cir. 1998), “the name of the game is the claim.”
Moreover, even though “Appellant’s racket is positioned such that its
longitudinal axis does not extend into the racket head and does not intersect
the major and minor axes within the head,” it is improper to confine the
claim to the embodiments found in the Specification. See SuperGuide Corp.
v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim. For example, a particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”).
As to Appellant’s concern regarding Gibello’s rib 20, although we
appreciate that the racquet defined in claim 1 does not recite such a rib (see
Appeal Br. 11), we note that the use of the term “comprising” in the
preamble of independent claim 1 allows for the presence of additional
structural elements not recited in the claim, i.e., rib 20. See Genentech, Inc.
v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (explaining that
“comprising” is a term of art used in claim language which means that the
named elements are essential, but other elements may be added and still
form a construct within the scope of the claim); see also Final Act. 20
(“[T]he fact that Gibello has a rib does not take away from the fact that the
limitations are taught by Gibello.”).
Lastly, we do not agree with Appellant’s argument that the
modification of Gibello’s racquet, according to Kim and Biehl, is a
“suggestion . . . to reposition the shaft . . . [that] requires repositioning the
shaft in Gibello so that the Ź axis coincides with the Ý axis.” Appeal Br. 11
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(emphasis added); see also Reply Br. 5–6. Obviousness does not require
that all of the features of the secondary reference be bodily incorporated into
the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). In
this case, the Examiner employs Kim to disclose a plurality of openings and
Biehl to disclose a straight (flat) top portion. See Final Act. 4–5 (citing Kim,
Fig. 2; Biehl, col. 3, l. 35, Fig. 1). Thus, the Examiner is correct that “it is
unclear why such a suggestion would be necessary as this is not the
modification noted by the combination.” Ans. 6 (emphasis added).
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 1 as unpatentable over Gibello, Kim, and
Biehl. Claims 2–5, 8–13, and 16–18 fall with claim 1.

CONCLUSION

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 8–13,
16–18
103 Gibello, Kim, Biehl 1–5, 8–
13, 16–18

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