Ex parte Rappaport

Board of Patent Appeals and Interferences

Mar 5, 1998

08383996 (B.P.A.I. Mar. 5, 1998)

Application for patent filed February 6, 1995. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MARK RAPPAPORT
____________
Appeal No. 97-0767
Application No. 08/383,9961
____________
ON BRIEF
____________
Before MEISTER, ABRAMS, and CRAWFORD, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Mark Rappaport (the appellant) appeals from claims 1-3 and
8-10. Claims 4-7, the only other claims present in the
application, have been indicated as being allowable subject to
the requirement that they be rewritten to include all the subject
matter of the claims from which they depend. We affirm.
Appeal No. 97-0767
Application No. 08/383,996
Translation attached.2
2
The appellant’s invention pertains to an air-pressurized
baseball bat. Independent claim 10 is further illustrative of
the appealed subject matter and reads as follows:
10. An air-pressurized baseball bat useable by children to
strike an oncoming ball so that it is driven a relatively great
distance, said bat comprising:
A. a hollow striker section defined by a shell of thin,
flexible synthetic plastic film material impermeable to air
having a shape and size similar to that of a striker section of a
conventional baseball bat;
B. a handle section joined to the striker section;
and
C. a valve mounted on the bat through which air is injected
into the striker section to produce a compressed air change
therein well above atmospheric pressure whereby the charge of
compressed air acts as a pneumatic spring and said shell acts as
a taut spring-loaded trampoline sheet causing a ball impinging
thereon to rebound and be driven a relatively long distance.
The references relied on by the examiner are:
Tanigawa 52-37126 Mar. 22, 1977
(Japanese application)2
Fox 2 146 538 Apr. 24, 1985
(UK application)
Appeal No. 97-0767
Application No. 08/383,996
A supplemental reply brief filed on September 30, 19963
(Paper No. 14) has not been entered by the examiner (see Paper
Nos. 15 and 18).
3
Claims 1-3 and 8-10 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Fox in view of Tanigawa. The examiner
considers that it would have been obvious to provide the bat of
Fox with a valve for pressurizing the interior thereof in view of
the teachings of Tanigawa.
Rather than reiterate the arguments of the appellant and
examiner in support of their respective positions, reference is
made to the brief, reply brief, answer and supplemental answer
for the full exposition thereof.3
OPINION
We have carefully reviewed the appellant's invention as
described in the specification, the appealed claims, the prior
art applied by the examiner and the respective positions advanced
by the appellant in the brief and supplemental brief and by the
examiner in the answer and supplemental answer. This review
leads us to conclude that the prior art relied on by the examiner
establishes the obviousness of the appealed subject matter within
the meaning of 35 U.S.C. § 103.
Appeal No. 97-0767
Application No. 08/383,996
4
The main thrust of the appellant’s position is
that

Fox fails to disclose an empty Coca Cola
bottle (envelope) that is “hermetically
sealed” so that it can sustain a charge of
compressed air.

There is a vast difference between a
sealed bat envelope that is not air tight and
one that is, for only the latter can hold a
charge of compressed air “well above
atmospheric pressure.” Moreover, Fox shows
no means to inject compressed air into his
empty Coca Cola bottle and in no way
contemplates pressurizing the bottle.

* * *

To justify his Section 103 rejection,
the Examiner says it would be obvious to the
skilled artisan to fully seal Fox’s Coca Cola
bottle envelope and to add a valve thereto in
view of Tanigawa who shows a hollow bat
(metal, wood or plastic) which is pressurized
by gas admitted through a valve in the handle
of the bat.

In Tanigawa the entire, relatively rigid bat
is pressurized, not just a thin skinned plastic
film bottle section in the manner of the present
invention which in the absence of internal
pressure would collapse. Nothing in this
reference suggests to one skilled in the art a
modification of Fox to recreate the claimed
invention by heretically sealing the plastic
bottle and adding a valve thereto. [Reply brief,
pages 1 and 2.]
Appeal No. 97-0767
Application No. 08/383,996
5
We are unpersuaded by the appellant’s arguments. While
there must be some teaching, reason, suggestion, or motivation to
combine existing elements to produce the claimed device (see,
e.g., ACS-Hospital Systems, Inc. v. Montefiore Hospital, 732 F.2d
1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984)), it not necessary
that the cited references or prior art specifically suggest
making the combination (B.F. Goodrich Co. V. Aircraft Braking
Systems Corp., 72 F.3d 1577, 1583, 37 USPQ2d 1314, 1319 (Fed.
Cir. 1996) and In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500,
1502 (Fed. Cir. 1988)). Rather the test for obviousness is what
the combined teachings of the references would have suggested to
one of ordinary skill in the art. In re Young, 927 F.2d 588,
591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642
F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
Here, Fox discloses a light-weight baseball bat useable by
children (page 1, line 7) to strike a ball including a striker
section 12 defined by a shell of thin, flexible synthetic plastic
film (i.e., a conventional two liter plastic beverage bottle as
disclosed on page 1, lines 50, 107, 108) which is threaded into a
handle section 10 (see Fig. 2). The artisan would reasonably
infer that the bottle forming the striker portion 12 of Fox was
Appeal No. 97-0767
Application No. 08/383,996
6
filled with air (albeit non-pressurized). Tanigawa discloses a
bat which may be made of plastic (translation, page 2, line 3)
having a hollow section that may be “provided only at the
internal area corresponding to the ball-hitting section”
(translation, page 2, lines 17 and 18), which hollow section may
be filled with pressurized air for the purpose of preventing
dents, cracks, etc. from occurring when a ball is hit with the
bat (translation, page 1, lines 18-25). Tanigawa further teaches
a one-way feed valve 7 which, although illustrated in Fig. 2 as
being in conjunction with a safety valve 5, may be separate
therefrom (translation, page 5, lines 17-20). Although Tanigawa
illustrates the valve as being placed within a container 4 which
in turn is placed in a recess 3 in the end of the handle of the
bat, it is stated therein that it “is possible to configure the
present invention without the container (4) by embedding the
other components of the valve mechanism in the grip of the bat’s
main body (1)” (translation, page 7, lines 21-24). In our view,
one of ordinary skill in this art would have found it obvious to
seal, and provide a valve for, the striker section 12 of the bat
of Fox in order that it can be pressurized so as to achieve
Tanigawa’s expressly stated advantage of preventing cracks.
Appeal No. 97-0767
Application No. 08/383,996
7
As to the appellant’s contention that Fox fails to expressly
state that his envelope or bottle is hermetically sealed and
lacks a means to inject air therein, we observe that
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d
1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986). Here, the
rejection is based on the combined teachings of Fox and Tanigawa,
and it is Tanigawa who clearly teaches that the hollow striker
section should be sealed and provided with a valve to inject air
under pressure therein. In this regard, it should be noted that
all of the features of the secondary reference need not be bodily
incorporated into the primary reference (see In re Keller, 642
F.2d at 425, 208 USPQ at 881) and the artisan is not compelled to
blindly follow the teaching of one prior art reference over the
other without the exercise of independent judgment (Lear Siegler,
Inc. v. Aeroquip Corp., 733 F.2d 881, 889, 221 USPQ 1025, 1032
(Fed. Cir. 1984)).
It is also the appellant’s contention that the relied on
prior art does not teach a bat having trampoline-like
characteristics. We must point out, however, that all the
utilities or benefits of the claimed invention need not be
Appeal No. 97-0767
Application No. 08/383,996
8
explicitly disclosed by the prior art references to render the
claim unpatentable under section 103 (see In re Dillon, 919 F.2d
688, 692, 696, 16 USPQ2d 1897, 1901, 1904 (Fed. Cir. 1990) (in
banc), cert. denied, 500 U.S. 904 (1991)) and “[t]he fact that
appellant has recognized another advantage which would flow
naturally from following the suggestion of the prior art cannot
be the basis for patentability when the differences would
otherwise have been obvious” (Ex parte Obiaya, 227 USPQ 58 (BPAI
1985), aff'd.mem., 795 F.2d 1017 (Fed. Cir. 1986)). Similarly,
the mere recognition of latent properties in an otherwise obvious
product in the prior art does not render such a product
unobvious. See In re Prindle, 297 F.2d 251, 254, 132 USPQ 282,
283-84 (CCPA 1962).
With respect to claim 3 the appellant notes that Fox does
not teach a valve formed by a rubber plug that is penetrable by a
hypodermic needle. While this is true, the appellant has not
disputed the examiner’s position that such valves are common and
well known and that it would have been obvious to utilize such a
valve in the bat of Fox, as modified by Tanigawa.
Appeal No. 97-0767
Application No. 08/383,996
9
As to claim 8 the appellant also argues that Fox does not
teach that his shell is formed of polycarbonate material.
However, page 8 of the appellant’s specification merely states
that the shell may be formed of a synthetic plastic material
“such as polycarbonate or PET that is impermeable to air”
(emphasis ours), leading us to conclude that the selection of the
particular plastic material is an obvious matter engineering
design choice. After all, artisans must be presumed to know
something about the art apart from what the references disclose
(see In re Jacoby, 309 F.2d 513, 516, 135 USPQ 317, 319 (CCPA
1962)) and the conclusion of obviousness may be made from "common
knowledge and common sense" of the person of ordinary skill in
the art (see In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549
(CCPA 1969)).
As to claim 9 the appellant argues that Fox does not teach a
handle section that “is hollow and molded of high-strength
synthetic plastic” (brief, page 4). We observe, however, that
Appeal No. 97-0767
Application No. 08/383,996
10
Fox in lines 125 and 126 of page 1 states that the handle 10 is
an “elongate tubular plastics member” and this handle is clearly
depicted in Figs. 3 and 4 to be hollow. Noting that the
appellant has provided no particular definition of “high-
strength,” we are of the opinion that a handle made of a plastic
material which had sufficient strength to be used in the manner
depicted in Fig. 1 of Fox, can be considered to be formed of a
“high-strength” plastic as broadly claimed. In any event, the
artisan as a matter of common sense (see In re Bozek, supra)
would have made the handle of a “high-strength” plastic material
so as to enable the bat to function in the manner intended.
Appeal No. 97-0767
Application No. 08/383,996
11
In view of the foregoing we will sustain the examiner’s
rejection of the appealed claims under 35 U.S.C. § 103 based on
the combined teachings of Fox and Tanigawa.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-0767
Application No. 08/383,996
12
MICHAEL EBERT
C/O HOPGOOD CALIMAFDE ET AL
60 E 42ND STREET
NEW YORK, NY 10165
Appeal No. 97-0767
Application No. 08/383,996
13
JMM/jrg
APPEAL NO. 97-0767 - JUDGE MEISTER
APPLICATION NO. 08/383,996
APJ MEISTER
APJ ABRAMS
APJ CRAWFORD
DECISION: AFFIRMED
Typed By: Jenine Gillis
DRAFT TYPED: 25 Nov 98
FINAL TYPED: