Ex Parte Crump et al

Board of Patent Appeals and Interferences

Feb 6, 2012

12478648 (B.P.A.I. Feb. 6, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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Ex parte DONALD CRUMP and WILLIAM YOUNG 8
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Appeal 2012-002863 11
Application 12/478,648 12
Technology Center 3700 13
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Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 17
MICHAEL W. KIM, Administrative Patent Judges. 18
FETTING, Administrative Patent Judge. 19
DECISION ON APPEAL 20
Appeal 2012-002863
Application 12/478,648

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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed May 27, 2011) and the Examiner’s Answer (“Ans.,” mailed
August 24, 2011).
Donald Crump and William Young (Appellants) seek review under 2
35 U.S.C. § 134 (2002) of a final rejection of claims 1, 2, 4-6, and 9-22, the 3
only claims pending in the application on appeal. We have jurisdiction over 4
the appeal pursuant to 35 U.S.C. § 6(b) (2002). 5
The Appellants invented a jump shot tool configured to cradle a cue 6
stick for shooting billiards jump shots (Specification ¶ 0006). 7
An understanding of the invention can be derived from a reading of 8
exemplary claim 1, which is reproduced below [bracketed matter and some 9
paragraphing added]. 10
1. A jump shot tool for shooting a billiards jump shot, said 11
jump shot tool comprising: 12
[1] a cue stick support portion 13
located at a top end of said jump shot tool 14
and 15
configured to cradle a cue stick 16
a predefined distance above a surface of a billiards 17
table 18
while shooting the jump shot; 19
[2] a bottom end portion 20
located on an opposite end of the jump shot tool from the 21
cue stick support portion, 22
said bottom end portion comprising 23
Appeal 2012-002863
Application 12/478,648

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a rounded tip 1
configured to sit on the surface of the 2
billiards table 3
while shooting the jump shot; 4
and 5
[3] a grip portion of the jump shot tool 6
located adjacent the bottom end portion of said jump shot 7
tool 8
and 9
configured to be grasped in a player's hand 10
to hold the jump shot tool against the surface of the 11
billiards table 12
while shooting the jump shot; 13
[4] wherein said grip portion is configured 14
to have two sides 15
that taper inwards towards each other, 16
from bottom to top; 17
and 18
[5] wherein said predefined distance is at least 5 inches; 19
and 20
[6] wherein the cue stick support portion is configured 21
to cradle the cue stick at two contact points, 22
and 23
the cue stick support portion has a vee angle 24
of no more than 60 degrees 25
as measured at the two contact points. 26
The Examiner relies upon the following prior art: 27
Lodrick US 5,645,490 Jul. 8, 1997
Appeal 2012-002863
Application 12/478,648

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William GB 2,131,703 A Jun. 27, 1984
Claims 15, 16, 20, and 21 stand rejected under 35 U.S.C. § 112, first 1
paragraph, as lacking a supporting written description within the original 2
disclosure. 3
Claims 16 and 21 stand rejected under 35 U.S.C. § 112, second 4
paragraph, as failing to particularly point out and distinctly claim the 5
invention.2 6
Claims 1, 2, 4-6, and 9-12 stand rejected under 35 U.S.C. § 103(a) as 7
unpatentable over William. 8
Claims 1, 2, 4-6, and 9-22 stand rejected under 35 U.S.C. § 103(a) as 9
unpatentable over Lodrick. 10
ISSUES 11
The issue of written description turns primarily on whether the originally 12
filed disclosure described an upper limit for a vee angle of 45 degrees. The 13
issue of indefiniteness turns primarily on whether the antecedent basis for a 14
limitation must be positively recited. The issue of obviousness is 15
uncontested as to Lodrick and so there is no issue as to whether the claims 16
are obvious over the prior art. 17
FACTS PERTINENT TO THE ISSUES 18
The following enumerated Findings of Fact (FF) are believed to be 19
supported by a preponderance of evidence. 20

2 A rejection of claim 2 was withdrawn at Answer 14.
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Facts Related to the Disclosure 1
01. The originally filed disclosure did not describe an upper limit 2
for a vee angle of 45 degrees. 3
ANALYSIS 4
Claims 15, 16, 20, and 21 rejected under 35 U.S.C. § 112, first paragraph, 5
as lacking a supporting written description within the original disclosure. 6
We are not persuaded by the Appellants’ argument that support for the 7
vee angle being no more than 45 degrees is found at Specification ¶ 0044, 8
reciting “various other embodiments may have vee angles within any range 9
between or including the two bounds of 20 to 90 degrees.” App. Br. 7. 10
We adopt the Examiner’s findings and analysis from Answer 14 and 11
reach a similar legal conclusion. Nothing in the originally filed disclosure 12
describes having an upper limit of 45 degrees. These claims were added by 13
amendment filed July 7, 2010. The portion of paragraph 0044 cited by 14
Appellants only shows that the vee angle may be anywhere within a range of 15
20 to 90 degrees, and does not support an upper limit for such an angle at the 16
particular claimed embodiment of 45 degrees. 17
Claims 16 and 21 rejected under 35 U.S.C. § 112, second paragraph, as 18
failing to particularly point out and distinctly claim the invention. 19
We are persuaded by the Appellants’ argument that antecedent basis is 20
provided in the parent claims. App. Br. 8. There is no requirement the 21
antecedent basis be phrased in any particular manner as suggested by the 22
Examiner. 23
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Claims 1, 2, 4-6, and 9-22 rejected under 35 U.S.C. § 103(a) as 1
unpatentable over Lodrick. 2
As the Examiner found at Answer 15, Appellants do not contest this 3
rejection. Thus we summarily affirm this rejection. 4
Claims 1, 2, 4-6, and 9-12 rejected under 35 U.S.C. § 103(a) as 5
unpatentable over William. 6
We need not reach this rejection as it is cumulative with the Lodrick 7
obviousness rejection. 8
CONCLUSIONS OF LAW 9
The rejection of claims 15, 16, 20, and 21 under 35 U.S.C. § 112, first 10
paragraph, as lacking a supporting written description within the original 11
disclosure is proper. 12
The rejection of claims 16 and 21 under 35 U.S.C. § 112, second 13
paragraph, as failing to particularly point out and distinctly claim the 14
invention is improper. 15
The rejection of claims 1, 2, 4-6, and 9-22 under 35 U.S.C. § 103(a) as 16
unpatentable over Lodrick is proper. 17
We do not reach the cumulative issue of whether the rejection of claims 18
1, 2, 4-6, and 9-12 under 35 U.S.C. § 103(a) as unpatentable over William is 19
proper. 20
DECISION 21
The rejection of claims 1, 2, 4-6, and 9-22 is affirmed. 22
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Application 12/478,648

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No time period for taking any subsequent action in connection with this 1
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 2
§ 1.136(a)(1)(iv) (2007). 3
4
AFFIRMED 5
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mls 8