Ex Parte Anderle et alDownload PDFPatent Trials and Appeals BoardApr 24, 201914877810 - (D) (P.T.A.B. Apr. 24, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/877,810 10/07/2015 34055 7590 04/26/2019 PERKINS COIE LLP - LOS General POST OFFICE BOX 1247 SEATTLE, WA 98111-1247 FIRST NAMED INVENTOR John Anderle 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 113507-8109.USOO 1561 EXAMINER ARYANPOUR, MITRA ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 04/26/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): patentprocurement@perkinscoie.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN ANDERLE, DEWEY CHAUVIN, LINDA HUNT, GRANT DOUGLAS, IAN MONTGOMERY, and TREVOR ANDERSON Appeal2018-007235 Application 14/877,810 1 Technology Center 3700 Before STEFAN STAICOVICI, WILLIAM A. CAPP, and LEE L. STEPINA, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE- Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's decision in the Final Office Action (dated June 5, 2017, hereinafter "Final Act.") rejecting claims 1, 3-7, and 21. 2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b ). 1 Easton Diamond Sports, LLC is the applicant and is identified as the real party in interest in Appellants' Appeal Brief ( filed Jan. 3, 2018, hereinafter "Appeal Br."). Appeal Br. 2. 2 Claim 2 is canceled and claims 8-20 are withdrawn. Appeal Br. 3. Appeal2018-007235 Application 14/877,810 We REVERSE. SUMMARY OF DECISION INVENTION Appellants' invention relates to "a ball bat having an adjustable- weight cap." Spec. para. 20. Sole independent claim 1 is representative of the claimed invention and reads as follows: 1. A ball bat comprising: a body including a handle end and a distal end; an end cap attached to the distal end, the end cap comprising a bore having an upper threaded portion, a lower threaded portion, and an unthreaded portion positioned between the upper threaded portion and the lower threaded portion; a weighted element positioned in the end cap; and a fastener removably retaining the weighted element to the end cap, wherein the fastener extends through the weighted element and comprises an upper threaded portion, a lower threaded portion, and an unthreaded portion positioned between the upper threaded portion and the lower threaded portion, and wherein the upper threaded portion of the fastener is configured to engage the upper threaded portion of the bore and the lower threaded portion of the fastener is configured to engage the lower threaded portion of the bore. REJECTION The Examiner rejects claims 1, 3-7, and 21 under 35 U.S.C. § 103 as being unpatentable over LaChance et al. (US 6,569,042 B2, iss. May 27, 2003, hereinafter "LaChance") and Matson (US 1,026,990, iss. May 21, 1912). ANALYSIS 2 Appeal2018-007235 Application 14/877,810 The Examiner finds LaChance discloses a ball bat 10 including, inter alia, a handle end 24, a distal end 44, an end cap 46 attached to distal end 44, a weighted element 72 located within end cap 46, and a fastener 70 for retaining weighted element 72 to cap 46. Final Act. 2-3 ( citing LaChance, Fig. 1 ). However, according to the Examiner, LaChance "does not expressly disclose the particular arrangement of the threads formed on the fastener." Id. at 3. Nonetheless, the Examiner finds Matson discloses a ball bat 1 including, inter alia, a handle end portion 2, a distal end, weighted elements 14, an end cap 3, 10 having a bore, and fastener 6 for retaining weighted elements 14. Id. ( citing Matson, Figs. 2, 3). The Examiner further finds that Matson's fastener 6 and the bore of end cap 3, 10 are assembled via corresponding upper threaded portions 9, 11, lower threaded portions 7, and unthreaded portions 15. Id. (citing Matson, Fig. 2). Thus, the Examiner concludes that: In view of Matson it would have been obvious to one of ordinary skill in the art to have substituted one known method of attaching a weighted end cap on the distal end of La Chance et al with another in order to achieve the predictable result of adding and securing a weight end cap on the distal end of La Chance et al bat in order to target strength training for an end user. Id. ( emphasis omitted). Appellants argue that the Examiner's rejection "does not address the limitation[] 'end cap comprising a bore having an upper threaded portion, a lower threaded portion, and an unthreaded portion positioned between the upper threaded portion and the lower threaded portion."' Appeal Br. 16. According to Appellants, Figure 2 of LaChance "does not show any features 3 Appeal2018-007235 Application 14/877,810 that could be considered Appellant's claimed 'bore' or the threaded and unthreaded portions recited in claim 1." Id. at 13. In response, the Examiner explains that end cap 46 of LaChance includes "a bore (the end cap is hollow for receiving a plurality of weights and it also includes an opening or bore for receiving a threaded male member 70." Examiner Answer 4 (dated May 8, 2018, hereinafter "Ans.") (citing LaChance, col. 3, 11. 40-57). The Examiner also provides an annotated Figure 2 of LaChance, as shown below: ) r~:n1:c;.iab·tv· na-ta§ns thf; pll~.reHty~ -of 74 70 74a Figure 2 of LaChance, as annotated by the Examiner, illustrates end cap 46 having an inner surface 46c, threaded male member 70, weighted elements 72, a threaded nut, and a bore formed in the bat for securing threaded male 4 Appeal2018-007235 Application 14/877,810 member 70. Id. at 5. According to the Examiner, LaChance "shows the end cap is attached to the distal end as claimed and includes a screw and corresponding opening or bore for retaining the weight(s) in the end cap of the bat." Id. at 31. More specifically, the Examiner explains that in LaChance, "in order to secure the threaded male member (70) to the end cap [ 46] and bat, a threaded nut is used which conveys to the user that an opening is formed in the end of the barrel in order to receive the threaded male member and the threaded nut." Id. at 16. We appreciate the Examiner's position that "[ o ]ne of ordinary skill in the art would form the threads in the bore to match the threads of the screw." Id. at 26. We also agree with the Examiner that it is "common sense" to "form[] the bore threads to conform to the shape of the screw threads." Id. at 14; see also id. at 20 ("The claimed bore conforms to the shape of the screw, this is well recognized and well understood in the fastener arts."). However, because the Examiner's rejection "only substitut[es] the screw taught by Matson for the LaChance ... screw" (see id. at 22 (emphasis added)), it is not clear how cap 46 of LaChance, as modified by Matson, includes a bore having upper and lower threaded portions and an intermediate unthreaded portion, as recited by claim 1. More specifically, we appreciate that in the Examiner's rejection, because inner surface 46c of cap 46 of LaChance is threaded, cap 46 then includes a bore that is configured to engage upper threaded portion 9 of Matson's screw 6. See LaChance, col. 3, 11. 47--48. However, as threaded male member 70 of LaChance is "positioned axially within distal end 44" of bat 10, the bore receiving threaded male member 70 is not located in cap 46, but rather in distal end 44 of bat 10. See id., col. 3, 11. 48--49. Hence, a 5 Appeal2018-007235 Application 14/877,810 person of ordinary skill in the art would readily recognize that when substituting Matson's screw 6 for LaChance's threaded male member 70, Matson's lower threaded portion 7 would engage a bore in distal end 44 of bat 10, rather than cap 46, as required by claim 1. Hence, at most, cap 46 of the combined teachings of LaChance and Matson discloses a cap including a bore having an upper threaded portion that is configured to engage an upper portion 9 of Matson's screw 6 and an unthreaded portion, that is, the opening receiving Matson's screw 6. Stated differently, LaChance's bore of cap 46, as modified by Matson, does not include upper and lower threaded portions and an intermediate unthreaded portion, as required by claim 1. We, thus, agree with Appellants that LaChance, as modified by Matson, "simply does not teach 'an end cap comprising a bore,' as claimed." Reply Brief 3 (filed July 5, 2018, hereinafter "Reply Br."). Although the Examiner acknowledges that "the cap portion disclosed by LaChance ... will require modifications in order to accommodate a different type of screw," we note that the Examiner does not provide an adequate explanation of what such modifications entail. Ans. 22. Specifically, the Examiner's rejection does not modify cap 46 of LaChance. Rather, "[t]he screw structure of the Matson patent ... [ is merely] substituted into the end cap structure [ 46] of' LaChance and, according to the Examiner, "[ s ]ubstituting one known threaded screw for another would have been obvious to one of ordinary skill in the art." Id. at 3 1. As such, for the foregoing reasons, we find that the Examiner's legal conclusion of obviousness is not supported by sufficient factual evidence, and thus, cannot stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that "[t]he legal conclusion of obviousness must be 6 Appeal2018-007235 Application 14/877,810 supported by facts. Where the legal conclusion is not supported by facts it cannot stand."). Therefore, we do not sustain the rejection under 35 U.S.C. § 103 of independent claim 1, and its respective dependent claims 3-7 and 21 as unpatentable over LaChance and Matson. SUMMARY The Examiner's decision to reject claims 1, 3-7, and 21 under 35 U.S.C. § 103 as unpatentable over LaChance and Matson is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation