Ex Parte Guenther et al

Board of Patent Appeals and Interferences

Sep 8, 2010

11018628 (B.P.A.I. Sep. 8, 2010)

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.
11/018,628 12/21/2004 Douglas G. Guenther WT0161 1149
7590 09/08/2010
Wilson Sporting Goods Co.
8750 W. Bryn Mawr Ave.
Chicago, IL 60631
EXAMINER
WONG, STEVEN B
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
09/08/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

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

Appeal 2009-013758
Application 11/018,628
Technology Center 3700
____________________

Before: WILLIAM F. PATE III, JOHN C. KERINS, and
STEVEN D.A. MCCARTHY, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-013758
Application 11/018,628
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 51
and 53-65. App. Br. 4. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to a laced game ball. Claim 51, reproduced
below, is illustrative of the claimed subject matter:
51. A game ball comprising:

a casing having a laced region; and

a lacing coupled to the laced region of the casing, the
lacing having an exposed surface and a plurality of spaced-apart
projections extending over at least a portion of the exposed
surface, the spaced-apart projections defining a plurality of
valleys, the projections being pebble-like projections having a
height of between 0.002 and 0.250 inches, the exposed surface
of the lacing being highly grippable when directly contacted by
a user’s hands.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Martin
Finley
Horkan
US 4,570,931
US 4,991,842
US 5,570,882
Feb. 18, 1986
Feb. 12, 1991
Nov. 5, 1996

REJECTIONS
Claims 51, 53-59 and 61-65 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Horkan and Martin. Ans. 4.
Claim 60 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Horkan, Martin, and Finley. Ans. 6.
Appeal 2009-013758
Application 11/018,628
3
ISSUE
Appellants have elected not to address the provisional double
patenting rejection at this time. Ans. 3. Thus, the sole issue presented in this
appeal is whether the Examiner erred by rejecting claim 51 as being
unpatentable over Horkan and Martin.

ANALYSIS
Appellants contend that Horkan would not have suggested to one of
ordinary skill in the art to look at other arrangements for the laces, such as
Martin’s pebbled grip, that would improve a user’s ability to grip and control
a football. App. Br. 14. This argument is persuasive.
Horkan discloses a football 100 with lacing 110 using hook 122 or
loop 120 elements to engage complementary hook 122 or loop 120 elements
of a glove 200 worn by the user. Horkan col. 2, ll. 24-50. Horkan teaches
only one specific arrangement, complementary hook and loop elements used
with a glove to improve the user’s grasp of a football and thereby encourage
proper gripping. Horkan col. 1, ll. 41-67. Rather than modifying the texture
of ordinary laces, or a structure resembling ordinary laces, Horkan
essentially replaces conventional laces with an entirely different structure. Cf
e.g., Horkan col. 2, ll. 51-52 with Spec. p. 16, para. [00051], figs. 1, 2, 11.
Thus, we cannot agree with the Examiner that one of ordinary skill in the art
would understand “the general teaching of Horkan [to be] that it is known in
the art to modify the laces of a football by applying a textured surface in
order to improve the grippability of the laces.” Ans. 9. We find nothing in
the prior art or in the understanding of one of ordinary skill that would have
rendered obvious “a plurality of spaced-apart projections extending over at
Appeal 2009-013758
Application 11/018,628
4
least a portion of the exposed surface [of a game ball lacing]” in
combination with the other elements recited in claim.

CONCLUSION OF LAW
The Examiner erred in rejecting independent claim 51 as being
unpatentable over Horkan and Martin. As claims 53-59 and 61-65 depend
from claim 51, the rejection of these claims as being unpatentable over
Horkan and Martin is also reversed.
Finley, as applied by the Examiner, fails to cure the deficiencies of
Horkan and Martin. Thus the rejection of claim 60 also cannot be sustained.

DECISION
For the above reasons, the Examiner’s rejections of claims 51 and 53-
65 are reversed.

REVERSED

nlk

Wilson Sporting Goods Co.
8750 W. Bryn Mawr Ave.
Chicago IL 60631