Ex Parte Kaleel et al

Patent Trial and Appeal Board

Nov 18, 2013

12154858 (P.T.A.B. Nov. 18, 2013)

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.
12/154,858 05/27/2008 Edward M. Kaleel BRZ-104 1268
7590 11/19/2013
John R. Benefiel
525 Lewis Street
Birmingham, MI 48009
EXAMINER
CHAMBERS, MICHAEL S
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
11/19/2013 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
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte EDWARD M. KALEEL and SUSAN B. KALEEL
____________________

Appeal 2011-012541
Application 12/154,858
Technology Center 3700
____________________

Before BIBHU R. MOHANTY, PHILIP J. HOFFMANN, and
THOMAS F. SMEGAL, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-012541
Application 12/154,858

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-6.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The rejected claims are directed to an arrangement of a tennis practice
target and counter display with a tennis court. Claim 1, reproduced below, is
the only independent claim.
1. An arrangement of a tennis practice
target and counter display with a tennis court
horizontal playing surface with baseline, side lines
and service line markings defining backcourt and
service areas comprising:
a freely movable target mat lying on one of
said tennis court playing surface areas defined
within said markings, said target mat having a
plurality of horizontally extending distinct target
areas, each target mat area generating a respective
corresponding electrical output signal when
impacted by a tennis ball descending into a contact
therewith; and
an upright counter-display viewable from
one side of said court and receiving said target
respective electrical output signals and having a
plurality of numeric displays each responsive to
signals from a respective target area, each numeric
display totaling and displaying the number of
impacts of a descending ball with a respective
target area in a single practice session.

1 Our decision will refer to Appellants’ Specification (“Spec.,” filed May 27,
2008) and Appeal Brief (“Br.,” filed October 27, 2010), as well as the
Examiner’s Answer (“Ans.,” mailed May 16, 2011).

Appeal 2011-012541
Application 12/154,858

3
THE REJECTIONS
The following rejections made by the Examiner are the subject of this
appeal2:
Claims 1-3, 5, and 6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Zelikovich (US 5,553,860, iss. Sep. 10, 1996); and
Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Zelikovich in view of Chou ‘804 (US 2002/0117804 Al, pub. Aug. 29,
2002).
ANALYSIS
The Examiner rejects independent claim 1 as unpatentable over
Zelikovich (Ans. 4-5). In response, Appellants first argue that Zelikovich
does not teach or suggest the claimed features of “a . . . target mat lying on
one of said tennis court playing surface areas . . ., said target mat having a
plurality of . . . distinct target areas” (Br. 3, 4). As pointed out by the
Examiner, however, Zelikovich teaches a multi-zone sports target 30 that
senses impacts from balls (Ans. 4, referencing Zelikovich, col. 3, l. 59 – col.
4, l. 2), and teaches elsewhere the use of targets that sense ball impacts on
tennis courts (Zelikovich, col. 1, ll. 11-13, 53-56). Thus, we do not find
Appellants’ argument to be persuasive, as Zelikovich does in fact teach a
target mat with a plurality of target areas lying on tennis court playing
surface areas.

2 The Examiner withdrew the rejection of claims 1-3, 5, and 6 under 35
U.S.C. § 103 as unpatentable over Faurot (US 3,874,664, iss. Apr. 1, 1975)
in view of Chou ‘301 (US 2002/0109301 Al, pub. Aug. 15, 2002), and the
rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable over Faurot in
view of Chou ‘301 and further in view of Chou ‘804 (Ans. 3).
Appeal 2011-012541
Application 12/154,858

4
Notwithstanding the above, “[i]t is well settled that the recitation of a
new intended use for an old product does not make a claim to that old
product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)
(citations omitted). In this case, we note that the multi-zone sports target 30
of Zelikovich is capable of lying on tennis court playing surface areas, and
thus the recitation of such a limitation cannot differentiate the claimed target
mat from target 30 of Zelikovich.
Appellants further argue that Zelikovich does not teach or suggest the
claimed features of “an upright counter-display” (Br. 4). We note, however,
that the Examiner points to output unit 38, which includes light/tone unit 44
with light elements 44a, as teaching the claimed display (Ans. 4, referencing
Zelikovich col. 4, ll. 45-54). Appellants do not submit any arguments or
evidence as to why Zelikovich’s output unit does not teach the claimed
display. Thus, we do not find Appellants’ argument to be persuasive.
Based on the foregoing, we sustain the rejection of claim 1.
Appellants do not separately argue the rejections of claims 2 and 4-6
that depend from independent claim 1. Because we sustain the rejection of
claim 1, we also sustain the rejections of claims 2 and 4-6.
Appellants argue, with respect to dependent claim 3, that Zelikovich
does not teach the limitation “a counter numeric display calculating and
displaying numerically the total number of impacts with said plurality of
distinct target areas.” We agree with the Examiner, however, that such a
modification would be obvious to one of ordinary skill, as it would result in
displaying information that has been collected by the target (Ans. 7). Thus,
we do not find Appellants’ argument to be persuasive, and we therefore
sustain the rejection of dependent claim 3.
Appeal 2011-012541
Application 12/154,858

5
DECISION
The Examiner’s rejections of claims 1-6 under 35 U.S.C. § 103(a) are
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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