13013921 (P.T.A.B. Aug. 2, 2016)

Ex Parte Guilfoyle

Patent Trial and Appeal BoardAug 2, 2016

13013921 (P.T.A.B. Aug. 2, 2016)

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. 13/013,921 01/26/2011 KENNETH GUILFOYLE 78001-2 CON 9636 90638 7590 08/03/2016 Seyfarth Shaw LLP TWO SEAPORT LANE, SUITE 300 BOSTON, MA 02210 EXAMINER WONG, STEVEN B ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 08/03/2016 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 KENNETH GUILFOYLE ____________ Appeal 2014-007596 Application 13/013,921 Technology Center 3700 ____________ Before KEN B. BARRETT, WILLIAM A. CAPP, and SEAN P. O’HANLON, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1–12, 14, 15, 21, and 22 as unpatentable under 35 U.S.C. § 103(a) over Brandon (US D438,269 S; iss. Feb. 27, 2001) and either Tomar (US 4,660,830; iss. April 28, 1987) or Williams (US 5,123,659; iss. June 23, 1992). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2014-007596 Application 13/013,921 2 THE INVENTION Appellant’s invention relates to the game of baseball. Spec. 1. Claim 21, reproduced below, is illustrative of the subject matter on appeal. 21. An instructional ball, comprising: a inner core; an outer cover, wherein the ball has an generally ellipsoid shape, a longitudinal axis, and a generally circular transverse crosssection along a transverse axis; the inner core is in the center of the body; and the cover is two pieces of material that transversely cross about the longitudinal axis when applied around the outer core. OPINION Unpatentability of Claims 1–12, 14, 15, 21, and 22 Appellant argues claims 1–12, 14, 15, 21, and 22 as a group. Appeal Br. 4–7. We select claim 21 as representative. See 37 C.F.R. § 41.37(c)(1)(iv)(2015). The Examiner finds that Brandon discloses a ball with a generally ellipsoid shape that is continuous and smooth. Final Action 2; see also Non- Final Action July 31, 2012, pp. 3–4. The Examiner relies alternatively on either Tomar or Williams as disclosing that it is well known in the art to form a baseball/softball with an inner and outer core as well as teaching a cover with a conventional two piece appearance with stitching thereon. Id. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to provide Brandon’s ball with a core. Id. According to the Examiner, a person of ordinary skill in the art would have done this to more closely simulate the Appeal 2014-007596 Application 13/013,921 3 construction of a baseball and provide a particular weighting and resiliency for the ball and more closely simulate a conventional baseball cover. Id. Appellant traverses the Examiner’s rejection by first arguing that Brandon is a design patent and teaches nothing regarding the structural features of a traditional baseball. Appeal Br. 5. Appellant also contends that Brandon teaches away from more conventional baseballs such as Tomar or Williams. Id. at 6. In this regard, Appellant argues that Brandon is merely for “tossing,” not “throwing,” and that a person of ordinary skill in the art would not be inclined to add a weighted core to a ball meant for tossing. Id. Appellant also argues the Brandon assumes a “football” shape and that footballs are functionally and structurally different from baseballs. Id. Appellant also argues that the prior art does not teach an instructional ball with a generally ellipsoid shape, but with the structural features of a baseball, and with two pieces of material that transversely cross about the longitudinal axis when applied around the outer core. Id. Finally, Appellant argues that Brandon is a disjointed, non-continuous structure with a “baseball” portion that is differentiated from its “football” portion. Id. at 7; Reply Br. 3.1 In response, the Examiner directs our attention to Figure 5 of Brandon, which the Examiner characterizes as disclosing a generally ellipsoid shape with a longitudinal axis and a generally circular transverse cross-section. Ans. 2; Brandon, Fig. 5. With respect to Appellant’s argument regarding an ellipsoid shape combined with conventional baseball 1 For reasons that are unclear to us, the first page of Appellant’s Reply Brief bears a page number at the bottom of the page of “3.” Citations to the Reply Brief are to the page numbers indicated at the bottom of the page, instead of the actual page number arrived at by counting the pages. Appeal 2014-007596 Application 13/013,921 4 structural features, the Examiner points out that the rejection is based on a combination of references and that the combination of Brandon and either Tomar or Williams teaches a ball that is generally ellipsoidal in shape. Id. at 5. The Examiner points to the depiction of stitching in Figure 5 of Brandon as suggesting to a person of ordinary skill in the art to include structural features of a baseball such as those taught by Tomar or Williams. Id. Appellant’s arguments regarding individual claim elements that are missing from one reference in a combination rejection is not persuasive. It is well settled that non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellant’s argument that there is no motivation to combine the art also is not persuasive. We agree with the Examiner that the depiction of baseball stitching in Figure 5 of Brandon would have suggested the combination with the structural features of a conventional baseball. Appellant’s “teaching away” argument is without merit. A reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellant does not direct us to any disclosure in either Brandon, Tomar, or Williams that criticizes, discredits, or discourages the development of an instruction ball with the structural features of a conventional baseball, but with an ellipsoidal shape. Appeal 2014-007596 Application 13/013,921 5 With respect to Appellant’s argument regarding “tossing” as opposed to “throwing,” we note that claim 21 is an apparatus claim and there are no functional limitations in the claim regarding the manner in which the claimed instructional ball is intended to be used. Thus, Appellant’s argument is not commensurate with the scope of the claims. Also, Appellant fails to articulate any meaningful distinction between manually propelling a projectile via an arm motion so that one manner of propulsion is a “toss” and another is a “throw.” Neither does Appellant explain how merely “tossing” the ball will fail to provide the desired instruction on how to throw a gyro- ball pitch. However and in any event, it is not necessary for the prior art to serve the same purpose as that disclosed in Appellant’s Specification in order to support the conclusion that the claimed subject matter would have been obvious. See In re Linter, 458 F.2d 1013, 1016 (CCPA 1972). “A reference may be read for all that it teaches, including uses beyond its primary purpose.” In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012), citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-421 (2007). Here, the design of Brandon readily lends itself to being combined with the structural features of a conventional baseball to teach the claimed invention. Finally, with respect to Appellant’s argument that Brandon is a disjointed, non-continuous structure with a “baseball” portion that is differentiated from its “football” portion, we note that claim 21 merely requires that the claimed instructional ball is “generally” ellipsoid in shape. Claims App. 2 It is well settled that words of approximation, such as 2 Claim 22 depends from claim 21 and adds the limitation: “wherein the generally ellipsoid shape continuous and smooth.” Claims App. Contrary to our rules, Appellant neglected to argue claim 22 under a separate sub- heading. 37 C.F.R. § 41.37(c)(1)(iv). Nevertheless, we have considered Appeal 2014-007596 Application 13/013,921 6 “generally,” are descriptive terms commonly used in patent claims to avoid a strict numerical boundary to the specified parameter. See Anchor Wall Sys. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1311 (Fed. Cir. 2003). We have reviewed Figure 5 of Brandon and agree with the Examiner that the ball depicted therein is “generally” ellipsoid in shape. Furthermore, the Examiner points out, correctly, that Brandon provides a smooth, continuous surface, using broad, but reasonable interpretations of “smooth” and “continuous.” Ans. 6. The Examiner observes, correctly, that Brandon’s ball exhibits no gaps or spaces that would tend to establish a discontinuity. Id. We have considered the other arguments raised by Appellant and find them to be without merit. Accordingly, we sustain the Examiner’s unpatentability rejection of claims 1–12, 14, 15, 21, and 22. DECISION The decision of the Examiner to reject claims 1–12, 14, 15, 21, and 22 is 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 Appellant’s argument for the patentability of claim 22 and consider it to be without merit. Moreover, claim 22, as written, is indefinite as no claim can depend from itself. 35 U.S.C. § 112(a). For purposes of this appeal, we will assume that Appellant intended claim 22 to depend from claim 21. As we affirm the art-based rejection, we do not reach the indefiniteness issue.