AARON CHAMBERLAIN

Patent Trials and Appeals Board

Jul 20, 2021

2021000737 (P.T.A.B. Jul. 20, 2021)

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.
15/988,477 05/24/2018 AARON CHAMBERLAIN MSH-1206 1084
8131 7590 07/20/2021
MCKELLAR IP LAW, PLLC
784 SOUTH POSEYVILLE ROAD
MIDLAND, MI 48640
EXAMINER
GLENN, CHRISTOPHER A.
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
07/20/2021 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 AARON CHAMBERLAIN
Appeal 2021-000737
Application 15/988,477
Technology Center 3700
Before JILL D. HILL, CARL M. DEFRANCO, and LEE L. STEPINA,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–11 and 13–23.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as the inventor,
Aaron Chamberlain. Br. 2.
2 Claim 12 is withdrawn from consideration. Final Act. 1.
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BACKGROUND
Appellant’s invention relates to a variable moment of inertia bat
fitting device. Claims 1 and 13 are independent. Claim 1, reproduced
below, illustrates the claimed subject matter:
1. A moment of inertia ball bat structure fitting device, said
device comprising:
a unitary ball bat structure that has been modified in the
following manner:
said ball bat structure having a near end and a distal end,
said ball bat structure having a handle region near said near end
and a barrel region near said distal end, said barrel region having
a span for a mass to be positioned, said span having a lesser
diameter shaft than said barrel of said ball bat structure, said span
having a length in a range of 5 ½ inches to 7 ½ inches;
said span having a mass encirculating said shaft, said mass
being adjustable for said length of said span, said mass being
capable of being secured on said shaft at any predetermined
position on said shaft;
said unitary ball bat structure containing a swing output
metric sensor.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Dirksing US 4,819,935 Apr. 11, 1989
Mabry US 2003/0114257 A1 June 19, 2003
Nutter US 2005/0153797 A1 July 14, 2005
Libonati  US 7,297,078 B2  Nov. 20, 2007 
Kuwabara US 2013/0085022 A1 Apr. 4, 2013
REJECTIONS
I. Claims 13–23 stand rejected under 35 U.S.C. § 112(b) as being
indefinite.
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II. Claims 1–5 and 9 stand rejected under 35 U.S.C. § 103 as
unpatentable over Dirksing and Libonati.
III. Claim 6 stands rejected under 35 U.S.C. § 103 as unpatentable
over Dirksing, Libonati, and Mabry.
IV. Claims 7 and 8 stand rejected under 35 U.S.C. § 103 as
unpatentable over Dirksing, Libonati, and Nutter.
V. Claims 10 and 11 stand rejected under 35 U.S.C. § 103 as
unpatentable over Dirksing, Libonati, and Kuwabara.
VI. Claims 13–17 and 21 stand rejected under 35 U.S.C. § 103 as
unpatentable over Dirksing.
VII. Claims 18 stands rejected under 35 U.S.C. § 103 as
unpatentable over Dirksing and Mabry.
VIII. Claims 19 and 20 stand rejected under 35 U.S.C. § 103 as
unpatentable over Dirksing and Nutter.
IX. Claims 22 and 23 stand rejected under 35 U.S.C. § 103 as
unpatentable over Dirksing and Kuwabara.
ANALYSIS
Rejection I; Indefiniteness
Appellant does not address the pending indefiniteness rejection, which
we, therefore, summarily sustain. See Appeal Br. 3.3

3 Although Appellant’s Claim Appendix lists claim 13 with the limitation “a
range” in an apparent attempt to address the 35 U.S.C. § 112(b) rejection,
there is no Advisory Action indicating that an amendment to claim 13
adding this language was submitted and approved by the Examiner as per 37
C.F.R. § 1.116. We, therefore, treat claim 13 as not including the limitation
“a range.”
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Rejection II; Obviousness based on Dirksing and Libonati
The Examiner finds that Dirksing discloses many of the limitations of
claim 1, including a mass on a reduced diameter span, but not (1) a unitary
structure having the recited span range, or (2) a sensor. Final Act. 4. The
Examiner finds that a unitary structure would have been an obvious
engineering/design choice. Id. (citing In re Larson, 340 F.2d 965, 968
(CCPA 1965)). The Examiner contends that a range of about 5½ to about
7½ inches would have been optimizing a workable range by routine
experimentation. Id. at 5 (citing In re Aller, 220 F.2d 454, 456 (CCPA
1955)). The Examiner also finds that Libonati discloses a unitary ball bat
structure and a sensor, and concludes that modifying Dirksing to include the
unitary structure and sensor of Libonati would have been an obvious design
choice and a simple substitution obtaining predictable results. Id. (citing
Dirksing, 4:26–33).
Appellant argues that the neither Dirksing nor Libonati disclose
determining optimal moment of inertia, and their bats “do not have the
structure for making such a determination.” Appeal Br. 3. Further
Appellant argues, nothing in the bat structures of Dirksing or Libonati
“would lead one to the device of the instant invention.” Id. In particular,
Appellant argues that there is nothing in the references that suggests a
structure that is used for optimal MOI detection. Id. at 4.
The Examiner responds that the claims do not recite “optimal moment
of inertia” and that the combined teachings of the references suggest the
claimed structure. Ans. 3 (emphasis omitted).
Appellant’s argument does not persuade us of Examiner error.
Appellant’s Specification discloses that “moment of inertia is a physics term
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that is related to a body's resistance to angular velocity. In layman’s terms,
the greater the mass at the collision-end of the body, the greater resistance it
will have to the force colliding with it.” Spec. 2:22–26. Dirksing discloses
that “resistance experienced by the batter is proportional to the angular
velocity with which the bat is moved,” and that “a batter must swing the bat
faster to simulate additional bat weight.” Dirksing, 2:11–14. Dirksing
proposes an alternative to a faster bat swing which uses ballast means 11 that
is repositionable and maintained in “a particular position along adjustment
stem 13.” Id. at 5:26–28; see also Final Act. 4. Although Dirksing does not
use the term MOI, it discloses the relation between angular velocity and
positioning a mass at various locations along a bat, consistent with
Appellant’s disclosure. Appellant does not explain adequately a difference
between the “physics” that is occurring in Dirksing and the MOI attained by
a bat having the claimed structure.
Appellant also argues that the claimed unitary structure addresses
problems that occur in Dirksing’s bat and the Examiner’s “obvious
engineering choice” reasoning is based on speculation. Appeal Br. 4–5.
We are not persuaded by Appellant’s argument. Dirksing discloses
that bat handle 12 “can be made of various materials (e.g. wood, metal,
plastic, reinforced fiberglass, and the like), provided such material exhibits
sufficient strength,” and that ballast retention means 14 can “be made of the
same material as handle 12.” Dirksing, 3:63–66; 5:1–2. Dirksing also
discloses that adjustment stem 13 “can similarly be made of various
sufficiently strong materials (e.g. metal, plastic, fiberglass, hard rubber, and
the like).” Id. at 4:19–22. Given that Dirksing uses the same material for
each component of the bat, and given that Libonati provides guidance to
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make a device unitary, we find no reason to believe a person of ordinary
skill in the art would have had any difficulty in making the bat as a unitary
structure, or that doing so would have yielded anything other a predictable
result, as the Examiner finds. Furthermore, Appellants do not assert that
making a unitary bat structure would have been unpredictable or that doing
so would have been beyond the level of ordinary skill in the art.
As for Appellant’s contention that Libonati does not disclose certain
limitations such as “the weighted mass” that is “secured on the span,”
(Appeal Br. 5), this argument fails for at least two reasons. First, the
Examiner relies on Dirksing for these limitations and relies on Libonati to
disclose that a unitary device is known. Final Act. 5. Second, the
Examiner's rejection need not directly physically substitute the bat of
Libonati, along with a replica ball or any other components, into Dirksing’s
arrangement. See In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012).
We have considered all of Appellant’s arguments, but we find the
Examiner to have the better position for the reasons explained above.
Accordingly, we sustain the rejection of claim 1, and claims 2–5 and 9
depending therefrom, which Appellant does not argue separately. See
Appeal Br. 6.
Rejections III–V, Dirksing, Libonati, Mabry, Nutter, Kuwabara
Appellant does not make arguments for the patentability of claims 6–
8, 10, and 11 aside from those discussed above regarding claim 1. See
Appeal Br. 6. Accordingly, for the same reasons, we sustain the rejection of
claims 6–8, 10, and 11 (Rejections III–V).

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Rejection VI; Obviousness based on Dirksing
Claim 13 is similar to claim 1, but does not require a unitary bat
structure and a swing output metric sensor. See Appeal Br. 8–10 (Claims
App.). The Examiner makes the same findings as to Dirksing and relies on
the same reasoning (optimization) to modify Dirksing. Final Act. 11–12.
Appellant does not make arguments for the patentability of claim 13 aside
from those discussed above regarding claim 1, which we found
unpersuasive. See Appeal Br. 6. Because Appellant does not persuade us of
Examiner error, we sustain the rejection of claim 13, and claims 14–17 and
21 depending therefrom and that are not argued separately.
Rejections VII–IX, Dirksing, Mabry, Nutter, Kuwabara
Appellant does not make arguments for the patentability of claims 18–
20, 22, and 23 aside from those discussed above regarding claim 1. See
Appeal Br. 6. Accordingly, for the same reasons, we sustain the rejection of
claims 18–20, 22, and 23 (Rejections VII–IX).
CONCLUSION
The Examiner’s rejections are affirmed.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
13–23 112(b) indefiniteness 13–23
1–5, 9 103 Dirksing, Libonati, 1–5, 9
6 103 Dirksing, Libonati,
Mabry
6
7, 8 103 Dirksing, Libonati,
Nutter
7, 8
10, 11 103 Dirksing, Libonati,
Kuwabara
10, 11
13–17, 21 103 Dirksing 13–17, 21
18 103 Dirksing, Mabry 18
19, 20 103 Dirksing, Nutter 19, 20
22, 23 103 Dirksing, Kuwabara 22, 23
Overall
Outcome
1–11, 13–23
TIME PERIOD FOR RESPONSE
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