Ex Parte Page et al

Board of Patent Appeals and Interferences

Mar 28, 2012

11312216 (B.P.A.I. Mar. 28, 2012)

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.
11/312,216 12/19/2005 Chris S. Page 005127.00581 5587
22909 7590 03/29/2012
BANNER & WITCOFF, LTD.
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
WONG, STEVEN B
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
03/29/2012 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 CHRIS S. PAGE, PAUL A. GAUDIO,
GEOFFREY CHARLES RAYNAK, and CHARLES D. KRAEUTER
____________

Appeal 2010-005077
Application 11/312,216
Technology Center 3700
____________

Before PHILLIP J. KAUFFMAN, MICHAEL C. ASTORINO, and
MICHAEL L. HOELTER, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005077
Application 11/312,216

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STATEMENT OF THE CASE
The Appellants originally appealed under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting claims 37-63. The Appellants state
“[c]laims 50-59 stand rejected but are not being appealed at this time.” App.
Br. 2. Thus, the Appellants have elected not to appeal the rejections of
claims 50-59, and are considered withdrawn from the appeal. We suggest
that the Examiner cancel these claims upon return of jurisdiction of this
application to the Examiner. See Ex Parte Ghuman, 88 USPQ2d 1478, 1480
(BPAI 2008) (precedential), MPEP § 1215.03. Only claims 37-49 and 60-63
are involved in this appeal. We have jurisdiction over the appeal under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.

REJECTIONS
Claims 37-41, 43-49, 60, 62 and 63 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Poegel (US D485,316 S, issued Jan. 13, 2004)
and Morrison (US 6,752,732 B2, issued Jun. 22, 2004).
Claims 42 and 61 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Poegel, Morrison and Williams (US 3,858,876, issued
Jan. 7, 1975).

CLAIMED SUBJECT MATTER
Claims 37 and 60 are the independent claims on appeal. Claim 60 is
illustrative of the subject matter on appeal. Claim 60, recites:
60. A basketball, comprising:
a plurality of more than eight panels extending
longitudinally across the basketball, wherein at
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Application 11/312,216

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least two of the panels converge at a first pole of
the basketball and at a second pole of the
basketball opposite the first pole;
a plurality of seams, wherein a seam separates
each panel from an adjacent panel; and
a plurality of hand alignment cues provided at a
surface of the basketball, wherein separate hand
alignment cues are arranged between the first pole
and the second pole and are located at the seams,
wherein each of the plurality of seams intersects a
distinct one of the plurality of hand alignment
cues.

OPINION
Claims 37-49
Claim 37 recites a basketball including “each of a plurality of
junctions between the rotational alignment cue and the plurality of seams
includes a distinct one of the separate portions of the rotational speed cue.”
The Specification states that the rotational speed cue
may be formed from a plurality of spaced markers
or other indicia arranged parallel with the
rotational alignment cue. The markers or other
indicia are positioned such that, if the ball is
thrown with a high rotational speed, the markers
will appear to the player as a solid line. If,
however, the ball is shot with a low rotational
speed, then the player will be able to individually
distinguish the markers during flight.
Spec. para. [08]; see also para. [18]. The Specification also states that
“[rotational speed cue] markers 24 may have a texture that is different from
a majority of the surface area of the ball 10.” Spec. para. [27].
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Application 11/312,216

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The Examiner finds Poegel’s Figures 1 and 2 depict a basketball
having two parallel lines, which correspond to the rotational alignment cue
as called for by claim 37. Ans. 3. The Examiner also finds Poegel’s Figures
depict broken lines on the basketball, which correspond to seams as called
for by claim 37. See Ans. 3, see also Supp. App. Br. 3 (providing an
annotated version of Poegel’s Figures 1 and 2)1. As such, according to the
Examiner’s findings, for claim 37 to read on Poegel’s basketball, each
junction between the rotational alignment cue (two parallel lines) and the
plurality of seams (broken lines on the basketball) must include a distinct
one of the separate portions of the rotational speed cue. The Examiner finds
that Poegel’s hand markings correspond to the rotational speed cue. Ans. 3.
The Appellants contend Poegel’s hand markings cover some but not
every alleged junction. See Supp. App. Br. 4. As shown in Poegel’s Figures
5 and 6, the hand markings are not located at each junction between the
rotational alignment cue (two parallel lines) and the plurality of seams
(broken lines). As such, the Appellant’s contention is persuasive.
Further, the Examiner finds that Morrison teaches an increased
number of panels. This finding does not remedy the deficiency in the
disclosure of Poegel with regard to the hand markings covering each
junction between the rotational alignment cue and the plurality of seams.
Ans. 4. Thus, the rejection of claim 37 and dependent claims 38-41 and 43-
49, as unpatentable over Poegel and Morrison, is not sustained.
Turning to claim 42, which depends from claim 37, the Examiner
finds Williams discloses a training basketball including textured markings

1 Citations to Supp. App. Br. refer to the Response to Notice of Non-
Compliant Appeal Brief, filed June 11, 2009.
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Application 11/312,216

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from the normal outer surface of the basketball. Ans. 5; Williams, col. 2, l.
61-col. 3, l. 4. The Examiner does not explain how these findings might
remedy the deficiency of the combined teachings of Poegel and Morrison
pointed out in connection with the rejection of claim 37. See Ans. 5. For the
reasons provided above, the rejection of claim 42 as unpatentable over
Poegel, Morrison, and Williams is not sustained.

Claims 60-63
We have considered the Appellants’ arguments for this ground of
rejection and do not find them persuasive. Supp. App. Br. 4, Reply Br. 4.
The Appellants reproduce the last limitation of claim 60, i.e., “a plurality of
hand alignment cues provided at a surface of the basketball, . . .”, and assert
that “Poegel, Morrison or the other cited secondary references alone or in
combination” do not teach the reproduced claim limitation. Supp. App. Br.
4; see Reply Br. 4. Our reviewing court has held that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art. See In re Lovin,
99 USPQ2d 1373 (Fed. Cir. 2011).
Furthermore, the Examiner has determined that Poegel’s Figures 1, 2,
5, and 6 teach “a plurality of hand alignment cues comprising the imprint of
a hand and a plurality of arrows. Note the Figures of Poegel showing each
of the seams being intersected by one of these cues.” Ans. 7; see Ans. 5; see
also figs. 3, 4. More particularly, Poegel’s Figures depict four handprints
and four arrows, which correspond to a plurality of hand alignment cues;
and, six of these are depicted as intersecting the seams of the basketball. As
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such, the Examiner’s determination that the combined teachings of Poegel
and Morrison result in “each of the plurality of seams intersect[ing] a
distinct one of the plurality of hand alignment cues” as called for in claim 60
has a rational basis. Thus, the rejection of claim 60 as unpatentable over
Poegel and Morrison is sustained.
The Appellants contend that the rejections of claims 62 and 63 as
unpatentable over Poegel and Morrison, and claim 61 as unpatentable over
Poegel, Morrison, and Williams are allowable for at least the same reasons
as claim 60 and the further patentable features recited therein. Supp. App.
Br. 4-5. The Appellants’ contentions are not persuasive for the same reasons
as provided above. See also Lovin at 1373. Thus, the rejections of claims
62 and 63 as unpatentable over Poegel and Morrison, and claim 61 as
unpatentable over Poegel, Morrison, and Williams are sustained.

DECISION
We REVERSE the rejections of claims 37-41 and 43-49 as
unpatentable over Poegel and Morrison, and claim 42 as unpatentable over
Poegel, Morrison and Williams.
We AFFIRM the rejections of claims 60, 62 and 63 as unpatentable
over Poegel and Morrison, and claim 61 as unpatentable over Poegel,
Morrison and Williams.
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-IN-PART
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