Ex Parte Anderle et al

Patent Trials and Appeals Board

Apr 24, 2019

14877810 - (D) (P.T.A.B. Apr. 24, 2019)

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2 Claim 2 is canceled and claims 8-20 are withdrawn.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
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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
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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:
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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
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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
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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
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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
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