Ex Parte Laliberty

Patent Trial and Appeal BoardSep 16, 2014

12164509 (P.T.A.B. Sep. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/164,509 06/30/2008 Ronald P. Laliberty P0R8483US01NJ 1463 23378 7590 09/17/2014 BRADLEY ARANT BOULT CUMMINGS LLP INTELLECTUAL PROPERTY DEPARTMENT 1819 FIFTH AVENUE NORTH BIRMINGHAM, AL 35203-2104 EXAMINER WONG, STEVEN B ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 09/17/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ___________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ___________ Ex parte RONALD P. LALIBERTY ___________ Appeal 2012-0078501 Application 12/164,5092 Technology Center 3700 ___________ Before MURRIEL E. CRAWFORD, KEVIN W. CHERRY, and JAMES A. WORTH, Administrative Patent Judges. CHERRY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Ronald P. Laliberty (Appellant) seeks review under 35 U.S.C. § 134 of a final rejection of claims 1–15, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. 1 Our decision references Appellant’s Appeal Brief (“App. Br.”), filed October 31, 2011, and Reply Brief (“Reply Br.”), filed April 13, 2012, and the Examiner’s Answer (“Ans.”), mailed February 14, 2012. 2 Appellant identifies Russell Brands, LLC as the real party in interest (App. Br. 1). Appeal 2012-007850 Application 12/164,509 2 Appellant’s claimed invention relates to a process of manufacturing “a multi-layered game ball having a foamed intermediate layer” (Spec. ¶ 2). Claim 1, which is reproduced below, is illustrative of the subject matter on appeal. 1. A method for forming an inflatable ball carcass having a sponge layer, the method comprising: providing an inflatable bladder and a plurality of outer layer sheets; providing two foamed sponge layer sheets, each foamed sponge layer sheet having a first side and a second side, and a plurality of leaves extending from a center, the leaves shaped so that the foamed sponge layer sheet can be folded into substantially the shape of a hemisphere with substantially no gap remaining between each pair of adjacent leaves; placing the outer layer sheets on the first side of each foamed sponge layer sheet so that the foamed sponge layer sheet is substantially covered by the outer layer sheets; placing the bladder on the second side of each foamed sponge layer sheet so that the foamed sponge layer sheets substantially cover the bladder to form a semi-finished ball carcass; and heat molding the semi-finished ball carcass to form an inflatable ball carcass having a sponge layer. (App. Br. 13, Claims App’x.) Rejections Claims 1–10, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Feeney (US 6,406,389 B1, iss. June 18, 2002), Ou (US 2008/0139349 A1, pub. June 12, 2008), and Lin (US 7,137,915 B2, iss. Nov. 21, 2006). Claims 11–13 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Feeney, Ou, Lin, and Winterbauer (US 2,609,202, iss. Sept. 2, 1952). Appeal 2012-007850 Application 12/164,509 3 ANALYSIS Appellant argues claims 1–15 as a group (App. Br. 6, 11). We select claim 1 as representative, and claims 2–15 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011). We are persuaded by Appellant’s arguments that the combination of Feeney, Ou, and Lin fails to disclose “foamed sponge layer sheets” as recited in claim 1 (App. Br. 6–11; Reply Br. 5–10). The Specification defines a “foamable” material as “capable of later being foamed,” (Spec. ¶ 4), and a “foamed” material as having “already been foamed” (Spec. ¶ 51). The Examiner states that Feeney and Ou teach “foaming of the foam layer after application to the bladder” (Ans. 5), so the Examiner relies on Lin to disclose forming “the foam layer before application to the bladder” (id.). The Examiner bases this finding on two facts: (1) Lin’s use of the phrase “foam covered carcass” and (2) that “Lin never describes the layer as being foamable and never states that during the manufacture of the ball that the layer undergoes a foaming process” (Ans. 7). The Examiner finds that “[l]acking any teaching to the contrary one of ordinary skill in the art must interpret the layer (30) in the light as described in the specification and that is a foamed carcass layer” (id.). We find that there is insufficient evidence that the process of Lin used material that already had been foamed, and that Lin’s disclosure points in a different direction when read in the context of Lin’s improvement over the prior art method. Lin discloses a sports ball with a foam covered carcass and a method for making such a ball (Lin, Abstract). Lin teaches that the problem with the prior art foam covered sports balls was that “the foam covered carcass easily forms unevenly and has a high defective ratio because of the vulcanizing Appeal 2012-007850 Application 12/164,509 4 speed, foaming speed and inadequate mold air exhaust during vulcanization” (Lin, col. 1, ll. 25–28). Thus, Lin discloses that “foaming” occurs “during vulcanization” of the rubber, and is directed to the problem of preventing the surface of the carcass from becoming uneven during this process. In Lin’s sports ball, colored rubber ink is brushed on the foam carcass such that it covers the foam carcass (id., col. 1, ll. 41–43). Lin discloses that the foam carcass is “vulcanized” and “[t]he colored rubber ink layer covers the uneven foam carcass layer to form an even foam surface” (id., col. 1, ll. 43– 48). Lin also describes in detail the composition of the colored rubber ink layer (id., col. 2, ll. 24–34). Lin also explains that “[a]fter vulcanizing, the colored rubber ink layer (40) becomes even and dense,” and “[a]lthough the foam carcass layer (30) is uneven after vulcanizing, the even and dense colored rubber ink layer (40) covers the foam carcass layer (30) to form an even foam covered carcass” (id., col. 2, ll. 37–42). We note that the only change to the process that Lin describes as “prior art” is the application to the colored rubber ink layer to the “foam covered carcass” (Compare Lin, Fig. 3 with Lin, Fig. 5). We further note that Lin describes the foam layer in the disclosed embodiment of the invention as suffering from the same problem as the prior art, that is, the foam is uneven, but Lin discloses that the colored rubber ink layer is “even and dense” and covers the “foam carcass layer” to form “an even foam covered carcass” (col. 2, ll. 37–42). Further, Lin provides a detailed description of the colored rubber layer (Lin, col. 2, ll. 24–34) and repeatedly emphasizes and focuses the advantages of colored rubber layer as solving the problems in the prior art (id. at col. 1, ll. 46–48 and col. 2, ll. 37–50). Thus, the reasonable conclusion is that Lin simply adds a step of applying a Appeal 2012-007850 Application 12/164,509 5 colorized rubber ink layer to the prior art process of using foamable layers (prior to vulcanization), not that Lin replaces the prior art process with foamed layers and adds a colorized rubber layer (App. Br. 8–11, Reply Br. 5–9). The Examiner’s conclusions to the contrary are not founded on facts, but only on speculation. This is improper. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Accordingly, we do not sustain the Examiner’s rejections of claims 1–15 under 35 U.S.C. § 103(a) as unpatentable. DECISION The Examiner’s rejections of claims 1–15 under 35 U.S.C. § 103(a) as unpatentable are reversed. REVERSED llw