Ex Parte Adams et al

Board of Patent Appeals and Interferences

Jun 21, 2009

10825184 (B.P.A.I. Jun. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JONATHAN R. ADAMS and ROBERT W. ADAMS
____________

Appeal 2009-000594
Application 10/825,184
Technology Center 3700
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Decided:1 June 22, 2009
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Before DONALD E. ADAMS, ERIC GRIMES, and FRANCISCO C.
PRATS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-000594
Application 10/825,184

This appeal under 35 U.S.C. § 134 involves claims 1, 2, 10, and 11,
the only claims pending in this application. We have jurisdiction under
35 U.S.C. § 6(b).

STATEMENT OF THE CASE
The claims are directed to a method of playing lacrosse. Claims 1, 2,
10, and 11 read as follows:
Claim 1: A method of playing lacrosse, wherein one or
more lacrosse players is capable of intentionally adjusting the length of their
lacrosse stick during a lacrosse game without leaving the lacrosse playing
field.

Claim 2: A method of playing lacrosse, wherein one or
more lacrosse players is capable of intentionally adjusting the length of their
lacrosse stick without using any separate tools.

Claim 10: A method of playing lacrosse comprising:
using a lacrosse stick to play a lacrosse game on a lacrosse playing
field, the lacrosse stick comprising a shaft and a head, the head being
coupled to one end of the shaft and adapted to receive a lacrosse ball; and
non-destructively adjusting the length of the shaft of the lacrosse stick one or
more times during the game without leaving the lacrosse playing field.

Claim 11: A method of playing lacrosse comprising:
using a lacrosse stick to play a lacrosse game on a lacrosse playing
field, the lacrosse stick comprising a shaft and a head, the head being
coupled to one end of the shaft and adapted to receive a lacrosse ball; and
non-destructively adjusting the length of the lacrosse stick one or
more times during the game without using any separate tools.

The Examiner relies on the following evidence:
Dill et al. US 5,935,026 Aug. 10, 1999

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Application 10/825,184

The rejections presented by the Examiner are as follows:
1. Claims 1 and 2 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Dill.
2. Claims 10 and 11 stand rejected under 35 U.S.C § 103(a) as unpatentable
over Dill.
We affirm.

Anticipation:
PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
On appeal to this Board, Appellants must show that the Examiner has
not sustained the required burden. See Ex parte Yamaguchi, 88 USPQ2d
1606, 1608 and 1614 (BPAI 2008) (precedential); Ex parte Fu, 89 USPQ2d
1115, 1118 and 1123 (BPAI 2008) (precedential); Ex parte Catan, 83
USPQ2d 1569, 1570 and 1577 (BPAI 2007) (precedential); Ex parte Smith,
83 USPQ2d 1509, 1512-1514, 1519 (BPAI 2007) (precedential).
Because the hallmark of anticipation is prior invention, the
prior art reference – in order to anticipate under 35 U.S.C. §
102 – must not only disclose all elements of the claim within
the four corners of the document, but must also disclose those
elements “arranged as in the claim.” Connell v. Sears, Roebuck
& Co., 722 F.2d 1542, 1548 (Fed.Cir.1983).

Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).
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Application 10/825,184

Claim 1:
ISSUE
Have Appellants shown that the Examiner erred in finding that Dill
teaches a method of playing lacrosse in which a player is capable of
adjusting the length of a lacrosse stick during a game, without leaving the
playing field?

FINDINGS OF FACT
FF 1. Dill teaches a lacrosse stick “having improved playability
characteristics” (Dill, Abstract).
FF 2. More specifically, Dill teaches a lacrosse stick that provides the
player with tactile stimuli which informs the player of the orientation of the
head frame without the need for visual observation. “Thus, the player’s
attention need not be diverted from the field of play or the ball in order to
establish proper orientation of the head frame of the stick for reception of the
ball” (Dill, col. 2, ll. 43-46).
FF 3. For clarity we reproduce Dill’s figure 4 below:

FIG. 4 is a diagrammatic partially exploded right side view of an
embodiment of Dill’s invention (Dill, col. 3, ll. 44-46).
FF 4. Dill teaches a lacrosse stick, wherein the lacrosse player has the
opportunity to include or omit element 604 from the lacrosse stick (Dill, col.
4, l. 65 - col. 5, l. 15).

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Application 10/825,184

ANALYSIS
Appellants contend that “Dill does not disclose adjusting the length of
a lacrosse stick during a game and without leaving the playing field” (App.
Br. 11). Instead, Appellants contend that “[a]ny lacrosse player would
immediately know that the Dill concept is not to be performed on the
playing field during a game” because Dill teaches that the lacrosse stick
must be broken apart and a new shaft piece inserted between the shaft and
the head (id.; see also Reply Br. 3). Appellants fail to identify, and we do
not find, a teaching in Dill that the length of the lacrosse stick cannot be
changed without leaving the playing field. Accordingly, we are not
persuaded by Appellants’ contention to the contrary.

CONCLUSION OF LAW
Dill does not teach that the length of its lacrosse stick cannot be
changed during a game, without leaving the playing field.
The rejection of claim 1 under 35 U.S.C. § 102(b) as being anticipated
by Dill is affirmed.

Claim 2:
ISSUE
Have Appellants shown that the Examiner erred in finding that Dill
teaches a method of playing lacrosse in which a player is capable of
intentionally adjusting the length of a lacrosse stick without using any
separate tools?

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Application 10/825,184

FINDINGS OF FACT
FF 5. Dill teaches that the “forward portion 604 [of the stick] is provided
with fixation means 605, such as a plug, whereby said forward portion 604
may be secured to the forward end 603 of the straight butt section 602” (Dill,
col. 5, ll. 2-5).

ANALYSIS
For the reasons set forth above, we find that Dill teaches a lacrosse
stick whose length can be adjusted while playing lacrosse.
Appellants contend that Dill “requires the use of separate tools (e.g., a
screwdriver) to strongly affix the rear end via a fixation means 605” (App.
Br. 12). We are not persuaded. Dill expressly states that the fixation means
is a “plug” (FF 5). Accordingly, we are not persuaded by Appellants’
unsupported contention that “a person skilled in the art would know that a
plug alone will not keep the lacrosse stick in one piece when playing
lacrosse because the stick could fly apart into separate pieces during
vigorous play. Instead, a screw or other fixation means is needed” (App. Br.
12).

CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in finding that Dill
teaches a method of playing lacrosse in which a player is capable of
intentionally adjusting the length of a lacrosse stick without using any
separate tools.
The rejection of claim 2 under 35 U.S.C. § 102(b) as being anticipated
by Dill is affirmed.
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Appeal 2009-000594
Application 10/825,184

Obviousness:
Claims 10 and 11:
ISSUE
Does Dill teach away from non-destructively adjusting the length of
the shaft of a lacrosse stick while playing lacrosse?

PRINCIPLES OF LAW
“In proceedings before the Patent and Trademark Office, the
Examiner bears the burden of establishing a prima facie case of obviousness
based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir.
1992). On appeal to this Board, Appellants must show that the Examiner
has not sustained the required burden. See Ex parte Yamaguchi, 88 USPQ2d
1606, 1608 and 1614 (BPAI 2008) (precedential); Ex parte Fu, 89 USPQ2d
1115, 1118 and 1123 (BPAI 2008) (precedential); Ex parte Catan, 83
USPQ2d 1569, 1570 and 1577 (BPAI 2007) (precedential); Ex parte Smith,
83 USPQ2d 1509, 1512-1514, 1519 (BPAI 2007) (precedential).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.

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Application 10/825,184

Id. at 421. It is proper to “take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.” Id. at 418. See also
id. at 421 (“A person of ordinary skill is also a person of ordinary creativity,
not an automaton.”). “In determining whether obviousness is established by
combining the teachings of the prior art, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.” In re GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal
quotations omitted).

ANALYSIS
For the reasons set forth above, we find that Dill teaches a lacrosse
stick whose length can be adjusted while playing lacrosse. In addition, as
discussed above, we find that Dill teaches the adjustment of the length of a
lacrosse stick without the use of separate tools.
Appellants contend that Dill teaches a lacrosse stick that requires a
destructive action (e.g., the breaking apart of the stick) to increase the length
of the stick (App. Br. 13). According to Appellants, this action requires the
stick to be inoperable during the adjustment period (App. Br. 14). We are
not persuaded.
We recognize that claims 10 and 11 use the term non-destructively
adjusting the length of the shaft of a lacrosse stick. We note, however, that
Dill does not require the lacrosse stick to be destroyed in order to increase its
length. Instead, Dill states that a lacrosse player has the opportunity to
include or omit element 604 from the lacrosse stick (FF 3). In other words,
the lacrosse stick may be lengthened through the use of element 604, or
shortened through the omission of element 604 as many times as the player
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may desire during the course of a game. Therefore, while the inclusion or
omission of element 604, may require an intermediate step wherein elements
602 and 702 are not joined, the stick is not destroyed, instead it may be
readily connected to have a longer length (thereby including element 604) or
a shorter length (thereby omitting element 604). Accordingly, we find that
Dill’s modification to lengthen or shorten the length of a lacrosse stick is a
non-destructive adjustment.
Further, while Dill’s stick may be inoperable during the adjustment
period, Appellants have failed to identify, and we do not find, a teaching in
Dill that requires the player to leave the field during the adjustment period.

CONCLUSION OF LAW
Dill does not teach away from non-destructively adjusting the length
of the shaft of a lacrosse stick while playing lacrosse.
The rejection of claims 10 and 11 under 35 U.S.C § 103(a) as
unpatentable over Dill is affirmed.

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).

AFFIRMED

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