Ex Parte Cruz

Patent Trial and Appeal Board

Mar 29, 2018

14530566 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/530,566 10/31/2014
45848 7590
MICHAEL W. GOLTRY
15615 North 71st Street
Suite 106
Scottsdale, AZ 85254
04/02/2018
FIRST NAMED INVENTOR
Jacob Cruz
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.
6257-Al 7715
EXAMINER
ARYANPOUR, MITRA
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
04/02/2018 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):
mg@pgpct.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACOB CRUZ
Appeal2017-007386
Application 14/530,566
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jacob Cruz ("Appellant") appeals under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting claims 21-30, which are all the pending
claims. See Appeal Br. 1. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.
Appeal2017-007386
Application 14/530,566
CLAIMED SUBJECT MATTER
Appellant's disclosed invention relates to "a swing training device and
method of use." Spec. i-f 2. Claims 21, 23, and 25 are independent.
Claim 21, reproduced below, is representative of the subject matter on
appeal.
21. A training device, comprising:
a bat, the bat includes a barrel having an outer end;
a ball-retaining member, the ball-retaining member is
deflectable, is mounted to the barrel, and is located alongside
the barrel inboard of the outer end;
a ball, the ball is carried by the ball-retaining member,
and the ball-retaining member exerts a retentive force against
the ball releasably retaining the ball to the ball-retaining
member alongside the barrel inboard of the outer end; and
the ball acts on the ball-retaining member with a
deflecting force sufficient to overcome the retentive force to
deflect the ball-retaining member to release the ball from the
ball-retaining member at a hitting zone, when the barrel is
swung rotationally through the hitting zone leading with the
ball alongside the barrel inboard of the outer end with a
momentum sufficient to impart the deflecting force to the ball,
for promoting a technically proper swing of the bat through a
hitting zone.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Gen jack
Ob lack
us 3,169,019
us 6,076,829
2
Feb.9, 1965
June 20, 2000
Appeal2017-007386
Application 14/530,566
REJECTION
The following rejection is before us for review: Claims 21-30 stand
rejected under 35 U.S.C. § 103 as being unpatentable over Genjack and
Oblack. Final Act. 2---6.
ANALYSIS
Appellant argues the rejection of independent claims 21, 23, and 25
together, and does not present any separate arguments for dependent
claims 22, 24, or 26-30. See Appeal Br. 8-13. We select independent
claim 21 as representative of the issues that Appellant presents in this
appeal, with claims 22-30 standing or falling therewith. See 37 C.F.R.
§ 41.37(c)(l)(iv).
In rejecting claim 21, the Examiner found that Genjack discloses a
device including a bat, a ball-retaining member, and a ball. See Final Act. 2.
The Examiner acknowledged that "Genjack does not expressly disclose the
ball-retaining member being formed of a deflectable material so that the
ball-retaining member exerts a retentive force against the ball releasably
retaining the ball to the ball-retaining member." Id. However, the Examiner
found that Oblack discloses "a ball holder having a first and second pair of
arms formed of a thin, arcuate generally C-shaped tab[,] which extend
outwardly and then inwardly, wherein the arms are equally spaced and are
formed of deflectable material which naturally exerts a retentive force
against the ball." Id. at 3. The Examiner concluded that, given the teachings
of the prior art, it would have been obvious "to have substituted one known
ball holder for another to achieve the predictable result of releasably holding
a ball on a bat." Id.
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Application 14/530,566
Appellant argues that the Examiner's proposed combination of
Genjack and Oblack is improper. See Appeal Br. 9--13; Reply Br. 1-16. In
particular, Appellant asserts that "the [E]xaminer has cited no motivation in
the prior art for a reason to modify a shallow cup that does not exert a
retentive force against a ball with one that does exert a retentive force
against a ball in relation to a bat." Appeal Br. 11; see also id. at 12-13
(asserting "Genjack lacks a teaching or suggestion that would motivate one
of ordinary skill to change the Genjack cup from one that does not exert a
retentive force to a ball in relation to a bat to one that does exert a retentive
force against the ball"). According to Appellant, "[ t ]he only source of this
motivation is Appellant's disclosure." Id. at 10-11; see also id. at 12
(asserting that, "[i]n the absence of Appellant's disclosure, one of ordinary
skill would have no reason to combine Oblack with Genjack"). This line of
argument is not persuasive for two reasons. First, Appellant appears to urge
us to apply a strict teaching, suggestion, or motivation ("TSM") test for
obviousness. Rigid application of the TSM test was expressly disavowed by
the Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398,
415, 419 (2007). Second, the argument does not address the Examiner's
articulated reasoning for the conclusion of obviousness.
Here, as discussed supra, the Examiner articulated adequate reasoning
based on rational underpinnings for modifying Genjack's device to include
the ball-retaining member of Ob lack. See Final Act. 3 (reasoning that
replacing Genjack's ball-retaining member with Oblack's ball-retaining
member would "achieve the predictable result of releasably holding a ball on
a bat"). Although Appellant asserts that "the alleged predictable result
called for by the [E]xaminer of releasably holding the ball to the bat is
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Application 14/530,566
neither a predictable result, nor a legitimate reason for combining Oblack
with Genjack" (Appeal Br. 12), Appellant does not provide any factual
evidence or persuasive technical reasoning to explain why the proposed
combination would yield anything other than a result that would have been
predictable to one of ordinary skill in the art. In other words, we are not
persuaded that the proposed modification of Genjack's device to include the
ball-retaining member of Oblack amounts to "more than the simple
substitution of one known element for another or the mere application of a
known technique to a piece of prior art ready for the improvement." KSR,
550 U.S. at 417.
Moreover, Appellant does not identify any knowledge relied upon by
the Examiner that was gleaned only from Appellant's disclosure and that
was not otherwise within the level of ordinary skill at the time of the
invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (so
long as a conclusion of obviousness is based on a reconstruction that "takes
into account only knowledge which was within the level of ordinary skill at
the time the claimed invention was made and does not include knowledge
gleaned only from [Appellant's] disclosure, such a reconstruction is
proper"). Thus, Appellant's assertion of hindsight is unsupported.
Appellant also argues that Genjack and Oblack teach away from each
other. See Appeal Br. 10; Reply Br. 3, 4. In particular, Appellant asserts
that "Genjack requires a shallow cup that does not exert a retentive force
against the ball, whereas Oblack's cup, i.e. Oblack's retaining member, snap
fits around a ball and exerts a retentive force against the ball for releasably
retaining the ball to the retaining member." Appeal Br. 10 (emphasis
omitted). According to Appellant, the "Genjack and Oblack cups are
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Application 14/530,566
completely different cups and function differently from one another." Id.
This argument is not persuasive of error because it does not point out why a
person of ordinary skill, upon reading the reference, would be led in a
direction divergent from the path taken by Appellant. See In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994). Appellant does not identify, nor do we
discern, any passage in Genjack or Oblack that criticizes, discredits, or
otherwise discourages the combination of teachings proposed by the
Examiner. See In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004) (prior art
does not teach away from claimed subject matter merely by disclosing a
different solution unless the prior art also criticizes, discredits or otherwise
discourages the solution claimed). To the extent that Genjack and Oblack
teach different ball-retaining members, Appellant does not persuasively
explain why such disclosure criticizes, discredits, or otherwise discourages
using Oblack's ball-retaining member in place of Genjack's ball retaining
member.
Appellant argues that the proposed modification of Genjack would
render the device "unworkable for its intended purpose with a bat, which is
to provide a cup that is small and shallow that does not exert a retentive
force against the ball to enable a user to flip the ball into the air while
holding the bat horizontally with the cup open upwardly." Appeal Br. 11
(emphasis omitted). In particular, Appellant asserts that modifying Gen jack
to include "a cup that does exert a retentive force against the ball for
releasably retaining the ball to the cup, such as the Oblack cup, would
inherently disable the Genjack cup from working for its intended purpose in
conjunction with a bat." Id. This argument is unpersuasive.
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Gen jack discloses that an intended purpose of the invention "is the
provision of game apparatus including a ball bat which enables a child to
grasp the bat properly for batting and then to flip the ball into the air without
releasing his grip in order to swing at the ball in accordance with correct
batting procedure." Genjack, col. 1, 11. 17-21; see also id., 1. 12 (disclosing
that an object of the invention is to allow an individual to "practice batting in
order to improve it"). Oblack discloses that "[t]he ball engaging means
is ... designed to release the ball when the shaft is held near its proximal
end and swung." Oblack, col. 1, 11. 47--49; see also id., col. 2, 11. 63---65
(disclosing "swinging said shaft while holding said proximal end[,] thereby
causing said ball to be released from said ball engaging means"). In other
words, Oblack's ball engaging means (i.e., ball-retaining member) applies a
retentive force to hold the ball, but still allows the ball to be released when a
user manipulates the device. In this regard, Appellant offers no factual
evidence or persuasive technical reasoning to explain why substituting
Oblack's ball-retaining member for Genjack's would change the principle of
operation of Genjack's device such that it would no longer be satisfactory
for flipping a ball into the air without releasing a grip on the device in order
to swing at the ball for batting practice. Thus, we do not agree with
Appellant that modifying Genjack's device to include the ball-retaining
member of Ob lack would render Genjack's device unsatisfactory for its
intended purpose.
Appellant also argues that "Genjack and Oblack is an improper
combination because these references never recognized Appellant's stated
problem that would have suggested Appellant's solution." Appeal Br. 12.
In particular, Appellant asserts that "[ n ]either Gen jack nor Ob lack recognize
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a hitting zone or the problem of a technically improper swing of a bat
through a hitting zone." Id. This argument is unpersuasive. The reason to
modify a reference may often prompt a person of ordinary skill in the art to
do what the inventor has done, but for a different purpose or to solve a
different problem; it is not necessary that the prior art suggest the
modification to achieve the same advantage or result discovered by an
applicant. See In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006).
After careful consideration of all the evidence, Appellant's arguments
do not apprise us of error in the Examiner's findings or reasoning in support
of the conclusion of obviousness. We sustain the rejection of claim 21, and
of claims 22-30 falling therewith, under 35 U.S.C. § 103 as being
unpatentable over Genjack and Oblack.
DECISION
We AFFIRM the Examiner's decision rejecting claims 21-30 under
35 U.S.C. § 103 as being unpatentable over Genjack and Oblack.
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)(l )(iv).
AFFIRMED
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