Ex parte Rogers et al.

Board of Patent Appeals and Interferences

Aug 10, 1998

08306688 (B.P.A.I. Aug. 10, 1998)

Application for patent filed September 15, 1994. 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journal and (2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KENNETH D. ROGERS and RANDOLPH B. ROBINSON
____________
Appeal No. 96-3611
Application No. 08/306,6881
____________
ON BRIEF
____________
Before THOMAS, HAIRSTON and BARRETT, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 6, 8 and 9. In a first Amendment After Final (paper
number 7), claims 1, 4 and 9 were amended, and claims 2 and 3
were canceled. In response to this amendment, the examiner
allowed claims 4 and 9 (paper number 8). In a second Amendment
After Final (paper number 10), claims 4 and 8 were amended. In a
third Amendment After Final (paper number 14), claims 5 and 6
Appeal No. 96-3611
Application No. 08/306,688
2
were canceled. In a subsequent communication (paper number 16),
the examiner indicated that claims 4, 8 and 9 now stand allowed.
Accordingly, claim 1 is the only claim on appeal.
The disclosed invention relates to a transparent tube for
displaying a baseball bat.
Claim 1 reads as follows:
1. Apparatus for displaying a collectable baseball bat
comprising:
an elongated transparent tube having an internal surface
greater in cross-section than any portion of the collectable
baseball bat, whereby the collectable baseball bat may be
inserted in said tube with either end of the collectable baseball
bat foremost;
the length of said tube exceeding the length of the
collectable baseball bat;
a pair of identical closures formed of a resilient plastic
material;
each closure defining a peripheral flange constructed and
arranged to snugly engage either end of said tube;
each closure having an internally projecting flange portion
defining a concave surface resiliently adapted to engage the
adjacent end of the collectable baseball bat when inserted in
said tube, whereby the collectable baseball bat is resiliently
supported between said concave surfaces when both said closures
are respectively applied to the ends of said tube.
Appeal No. 96-3611
Application No. 08/306,688
3
The references relied on by the examiner are:
Luebke 4,380,290 Apr. 19, 1983
Mroz 4,890,731 Jan. 2, 1990
Hager 5,082,110 Jan. 21, 1992
Claim 1 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Luebke in view of Mroz and Hager.
Reference is made to the briefs and the answer for the
respective positions of the appellants and the examiner.
OPINION
The obviousness rejection of claim 1 is reversed.
We agree with appellants’ arguments (Brief, pages 5 and 6)
that the housing 12 in Luebke is not “transparent,” that the end
caps 18 and 20 are not formed from a “resilient plastic
material,” that the end caps 18 and 20 do not have “an internally
projecting flange with concave surfaces to resiliently engage the
opposite ends of the inserted skis,” and that one end of the skis
is “engaged by a partition 35 which is movable along the length
of the housing 12.” With respect to the suitcase-styled carrying
case 10 in Mroz for carrying bats, we agree with appellants’
argument (Brief, page 6) that “[t]here is no way that the Mroz
carrying case could be utilized as a . . . transparent display
case which completely encloses a baseball bat as set forth in
Claim 1.” Although Hager discloses a concave-shaped pedestal 17
Appeal No. 96-3611
Application No. 08/306,688
In view of the lack of a prima facie case of obviousness,2
we see no need to comment on appellants’ evidence of commercial
success.
4
to seat a baseball 10, we agree with appellants (Brief, page 7)
that “[t]here is no elongated tube, and no ‘internally projecting
flange portion defining a concave surface to engage the adjacent
end of the collectable bat’ on each end closure as set forth in
Claim 1.”
In the final analysis, we agree with appellants that “the
references, taken as a whole, do not suggest the subject matter
of Claim 1,” and that the examiner has resorted to impermissible
“hindsight” to demonstrate the obviousness of the claimed subject
matter (Brief, page 7). The 35 U.S.C. § 103 rejection of claim 1
is reversed because the examiner has failed to present a prima
facie case of obviousness.2
Appeal No. 96-3611
Application No. 08/306,688
5
DECISION
The decision of the examiner rejecting claim 1 under
35 U.S.C. § 103 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LEE E. BARRETT )
Administrative Patent Judge )
Appeal No. 96-3611
Application No. 08/306,688
6
Wilbur A. Schaich
COX & SMITH INCORPORATED
112 East Pecan Street Suite 1800
San Antonio, TX 78205
KWH/jrg
JENINE GILLIS

Appeal No. 96-3611
Serial No. 08/306,688
Judge Hairston
Judge Barrett

Judge Thomas
Received: 04 Aug 98
Typed: 05 Aug 98

DECISION: REVERSED

Send Reference(s): Yes No
or Translation(s)
Panel Change: Yes No
3-Person Conf. Yes No
Heard: Yes No
Remanded: Yes No
Index Sheet-2901 Rejection(s): ___________
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