Ex Parte Guenther et al

Board of Patent Appeals and Interferences

Jan 30, 2012

10625325 (B.P.A.I. Jan. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DOUGLAS G. GUENTHER, KEVIN L. KRYSIAK,
and KEVIN J. MURPHY
____________

Appeal 2010-000306
Application 10/625,325
Technology Center 3700
____________

Before JOHN C. KERINS, STEVEN D.A. McCARTHY and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-14 and 51-64. More specifically:
claims 1-3, 5, 7, 9, 10, and 51-64 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Horkan (US 5,570,882, iss. Nov.
5, 1996) and Martin (US 4,570,931, iss. Feb. 18, 1986);
claims 4, 8, 11, 12, and 14 are rejected under § 103(a) as being
unpatentable over Horkan, Martin, and Feeney (US 6,283,881 B1, iss.
Sept. 4, 2001);
claim 6 is rejected under § 103(a) as being unpatentable over
Horkan, Martin, and Finley (US 4,991,842, iss. Feb. 12, 1991); and
claims 1-14 and 51-64 are provisionally rejected on the ground
of nonstatutory obviousness-type double patenting as being
unpatentable over claims 51 and 53-65 of copending Application No.
11/018,628.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We
REVERSE.

CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim and representative of the subject
matter on appeal. Claim 1, with emphasis added, recites:
1. A football comprising:
a casing having a laced region; and
an outwardly extending lacing coupled to the laced
region of the casing, the lacing having an exposed surface, at
least a portion of the exposed surface of the lacing having a
pebbled texture that is highly grippable when directly contacted
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by a user's hand, the football being configured for use in
competitive play.

ANALYSIS
Rejections of claims 1-3, 5, 7, 9, 10, and 51-64 as unpatentable over Horkan
and Martin
The Examiner does not find that the laces of Horkan’s football have a
pebbled texture as recited in claim 1, but the laces are modified as compared
to a conventional lacing of a football. Ans. 3-4. Horkan’s football laces
have loop, or a combination of hook and loop, fasteners thereon; and are
used in combination with a glove having mating fasteners positioned at the
fingertips of the glove. Horkan, col. 2, ll. 24-28, 33-40, figs. 1-5. The
Examiner looks to Martin’s disclosure, which teaches projections (a pebbled
texture) on the surface of a basketball, to remedy the deficiency of Horkan
with respect to claim 1. See Ans. 4. The Examiner concludes:
because Horkan teaches that it is known in the art
of footballs to modify the texture of the surface of
the laces and Martin teaches that a pebbled surface
is a well known means for improving the grip on
the surface of a ball, it would have been obvious to
one of ordinary skill in the art to modify the laces
of a conventional football by providing a pebbled
surface therefor in order to improve the grip by a
user on a conventional football.
Ans. 4.
The Appellants contend that the modification of Horkan’s laces with a
pebbled texture on a portion of the lacing’s exposed surface as called for in
claim 1 is not obvious because the combination would defeat Horkan’s
purpose. See App. Br. 11, 14. Where the proposed modification would
render the prior art invention being modified unsatisfactory for its intended
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purpose, the proposed modification would not have been obvious. See Tec
Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999).
The Appellants contend that Horkan “teaches a high level of grip-ability
only between the gloved fingertips of the user and the lacing of the training
football, and NOT the lacing of the football with other locations of the
gloved user's hands.” App. Br. 10. The Appellants point out seven excerpts
from Horkan’s disclosure to support their contention as to Horkan’s
teaching, including:
“I have invented a training aid in the form of a
modified football and glove. The modified
football utilizes lacing having one element of a
Velcro® fastener combination thereon. A flexible
glove has the complementary mating elements
of Velcro® fastener combination only at the
fingertips thereof. The use of the Velcro[®] only
on the laces forces the gloved user to properly
grasp the football only at such laces.” Col. 1, lines
41-48.
App. Br. 9-10. The Appellants further contend combining Martin’s pebbled
texture to the laces of Horkan’s football would eliminate Horkan’s intent and
objective because “it would not urge the user's fingertips into proper
engagement with the laces of the football, and therefore, would not train the
user on the proper way to grasp a football. . . . Rather, the combination of
Horkan and Martin would render the entire football essentially the same to
the user in terms of grasping, and would not urge a user's grasp into proper
alignment.” App. Br. 11. For example, having a pebbled texture on the
exposed surface of the laces provides the same textured surface to the user’s
finger tips as the user’s palms. See App. Br. 12, Reply Br. 6.
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The Examiner reasons that Horkan’s general teaching is that “it is
known to modify the laces of a football by applying a textured surface
thereto in order to improve the grippability of the laces.” Ans. 9. In this
case, the Examiner’s reliance on Horkan’s general teaching is unreasonable.
For the foregoing reasons, the result of replacing the hooks or loops
on the laces of Horkan’s football with projections of Martin’s basketball
would be unsatisfactory for Horkan’s intended purpose. Accordingly, the
Examiner’s conclusion of obviousness is not persuasive as it lacks rational
underpinning. Thus, the Examiner’s rejection of claims 1-3, 5, 7, 9, 10, and
51-64 as unpatentable over Horkan and Martin is not sustained.
The disclosures of Feeney and Finley do not remedy the deficiency of the
combined teachings of Horkan and Martin with respect to claim 1
The Examiner finds that Feeney discloses a game ball construction
including a plurality of differently shaped projections on the surface of the
ball (Ans. 5), and that Finley discloses “grip enhanced basketball where the
projections are randomly placed.” Ans. 6. Neither of these findings
remedies the deficiency as pointed out in connection with the rejection of
claim 1. Thus, the Examiner’s rejection of claims 4, 8, 11, 12, and 14 as
unpatentable over Horkan, Martin, and Feeney, and claim 6 as unpatentable
over Horkan, Martin, and Finley are not sustained.
Rejection of claims 1-14 and 51-64 provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as unpatentable over claims
51 and 53-65 of copending Application No. 11/018,628
We acknowledge that the Appellants do not offer arguments against
this rejection. Instead the Appellants appear willing “to submit a terminal
disclaimer to obviate the double patenting rejection as necessary.” App. Br.
23. It is also notable that all other grounds of rejection have been reversed;
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and, the present application has an earlier filing date than the copending
Application. See MPEP § 804.
The decision to enter additional rejections against the claims of the
application or to withdraw the provisional double-patenting rejection lies
with the Examiner. If the Examiner chooses to withdraw the provisional
rejection, the propriety of the rejection will become moot. Under these
circumstances, we have the authority to decline to address the rejection.
We decline to address the provisional rejection of claims 1-14 and 51-
64 on the ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 51 and 53-65 of copending Application No.
11/018,628.

DECISION
We REVERSE the Examiner’s decision rejecting: claims 1-3, 5, 7, 9,
10, and 51-64 under § 103(a) as being unpatentable over Horkan and Martin;
claims 4, 8, 11, 12, and 14 under § 103(a) as being unpatentable over
Horkan, Martin, and Feeney; and claim 6 under § 103(a) as being
unpatentable over Horkan, Martin, and Finley.
We DECLINE to address the Examiner’s decision provisionally
rejecting claims 1-14 and 51-64 on the ground of nonstatutory obviousness-
type double patenting as being unpatentable over claims 51 and 53-65 of
copending Application No. 11/018,628.

REVERSED

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