Ex Parte Nascimento et al

Patent Trial and Appeal Board

Sep 24, 2012

11609828 (P.T.A.B. Sep. 24, 2012)

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.
11/609,828 12/12/2006 Christopher J. Nascimento 005127.00604 1744
22909 7590 09/25/2012
BANNER & WITCOFF, LTD.
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
WONG, STEVEN B
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
09/25/2012 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 CHRISTOPHER J. NASCIMENTO,
KAREN NKATHA SPENCER, and GLENN
GEISENDORFER
____________________

Appeal 2010-006215
Application 11/609,828
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, MICHAEL L. HOELTER, and
JOHN W. MORRISON, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006215
Application 11/609,828
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STATEMENT OF THE CASE
Christopher J. Nascimento et al. (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting claims 1-10 under 35 U.S.C.
§ 103(a) as unpatentable over Riddell (US 2,149,465, iss. Mar. 7, 1939) and
Nishihara (US D519,175 S, iss. Apr. 18, 2006). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
The Claimed Subject Matter
Claims 1 and 8, reproduced below, are representative of the claimed
subject matter.
1. A basketball, comprising:
a first panel set extending along a first longitudinal
direction of the basketball;
a second panel set extending along a second longitudinal
direction of the basketball orthogonal to the first
longitudinal direction of the basketball; and
a channel separating the first panel set from the second
panel set, the channel having
a first portion between end edges of the first panel set
and a center portion of the second panel set, wherein the
first portion is substantially parallel to the second
longitudinal direction, and
a second portion between end edges of the second
panel set and a center portion of the first panel set,
wherein the second portion is substantially parallel to the
first longitudinal direction.

8. A basketball, comprising:
a plurality of panels including at least a first set of panels,
wherein each of the first set of panels extends continuously
around substantially the entire circumference of the basketball
and wherein a first end of the first set of panels does not
connect with a second end of the first set of panels, and
a plurality of channels, such that
Appeal 2010-006215
Application 11/609,828
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a channel separates adjacent panels, and
each channel is formed of channel segments that
are substantially straight over a surface of the basketball.
ISSUES
The appeal of the rejection of claim 1 turns on the following issues:
(1) Does Riddell provide disclosure from which one of ordinary
skill in the art would infer that the side of the basketball not
shown in figure 1 “would be similar to that of Figure 1 but
turned 90 degrees,” as asserted by the Examiner? Ans. 5. In
the alternative, would it have been obvious to one of ordinary
skill in the art, familiar with the groove pattern of a
conventional basketball as depicted in Appellants’ figure 1, to
provide Riddell’s basketball with a panel configuration in
which the side of the basketball not shown in Riddell’s figure 1
is the same as that of figure 1, but turned 90 degrees? Id.
(2) Does the Examiner’s determination that it would have been
obvious “to replace the curved channel segments of Riddell
with the straight portions as taught by Nishihara in order to
provide an alternative aesthetic design for the channels” (Ans.
3) have rational underpinnings?
The appeal of the rejection of claim 8 turns on issues (1) and (2) and
the following additional issue:
(3) Does the presence of the unindented seam 13 depicted in
Riddell’s figure 1 preclude a finding that the panels (casing
sections 5) separated by the groove running along the equator
of the basketball as depicted in figure 1 extend “continuously
Appeal 2010-006215
Application 11/609,828
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around substantially the entire circumference of the basketball,”
as called for in claim 8?
FINDINGS PERTINENT TO THE ISSUES
FF1 Riddell illustrates only one half of the basketball in figure 1.
The opposite side of the basketball is not depicted in any of the
drawings.
FF2 Riddell discloses “[t]he casing sections 5, which are preferably
of leather, are similarly coated on their inner surfaces with latex
6, after having been appropriately beveled or skived at their
marginal edges 7.” P. 1, col. 2, ll. 27-31. The Examiner finds
that this disclosure should make it “clear to one of ordinary skill
in the art that the panels (5) are identical and thus the side of the
ball not shown in Figure 1 would be similar to that of Figure 1
but turned 90 degrees.” Ans. 5. Appellants do not dispute that
finding.
FF3 The Examiner states that “the appellant does not argue and
therefore appears to accept that the opposite of the ball mimics
that of the view as shown on page 4 of the Brief but merely
rotated 90 degrees.” Ans. 5. Appellants do not dispute this
statement or make any attempt to point out any
misapprehension on the part of the Examiner as to the
appearance of the side of the “traditional” basketball not shown
in the figure on page 4 of the Appeal Brief.
FF4 The figure on page 4 of the Appeal Brief is a reproduction of
figure 1 of Appellants’ application, which is characterized as “a
front perspective view of a conventional basketball 101.”
Spec., para. [03].
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Application 11/609,828
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FF5 The Examiner determined that, even assuming it were not
“clear to one of ordinary skill in the art that the panels (5) are
identical and thus the side of the ball not shown in Figure 1
would be similar to that of Figure 1 but turned 90 degrees,” “it
would have been obvious to one of ordinary skill in the art to
form the panels with identical shapes in order to provide a panel
configuration that is considered to be conventional for a
basketball.” Ans. 5. Appellants do not dispute this
determination or point out any errors in either the underlying
findings or the reasoning on which it is based.
FF6 Nishihara discloses a basketball design in which all segments of
the grooves, including the short segments connecting the
longitudinal grooves that do not pass through the poles, are
substantially straight.
FF7 Riddell illustrates an “unindented seam” 13 in figures 1 and 9
connecting the sharply curved segments of grooves 15. P. 1,
col. 1, ll. 50-52.
ANALYSIS
Claim 1
In contesting the rejection of claim 1, Appellants argue that “no view
of the other side of the basketball is provided in Riddell.” App. Br. 6. Thus,
according to Appellants, even if Riddell is modified as proposed by the
Examiner, “there is no support in Riddell for end edges of the second panel
set and the configuration thereof.” Id.
Although Riddell only depicts one side of the basketball (FF1), the
Examiner found that a person of ordinary skill in the art would have inferred
from the teachings of Riddell that the opposite side of the basketball would
Appeal 2010-006215
Application 11/609,828
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mimic the side shown in figure 1, but turned 90 degrees (FF2), and, further,
set forth findings and reasoning explaining why, in the alternative, it would
have been obvious to a person of ordinary skill in the art to form Riddell’s
basketball with identical panels to provide a panel configuration that is
conventional for a basketball (FF5). Appellants do not dispute any of the
underlying findings or point out any error in the reasoning or conclusion of
the Examiner regarding the configuration of the other side of the ball of
Riddell that would have been inferred by or obvious to a person of ordinary
skill in the art. The Examiner further set forth specific findings to show that
a “traditional” or “conventional” basketball as shown and described in
Appellants’ figure 1 and on page 4 of Appellants’ Appeal Brief has an
opposite side that mimics the side shown in Appellants’ figure 1 but rotated
90 degrees. FF3, FF4. Appellants do not dispute any of the Examiner’s
findings.
In short, Appellants do not specifically point out any error in either
the Examiner’s finding that a person of ordinary skill in the art would have
inferred that the other side of the basketball depicted in figure 1 of Riddell
mimics the view shown in figure 1 but rotated 90 degrees or the Examiner’s
determination, in the alternative, that such a basketball configuration would
have been obvious to a person of ordinary skill in the art. Such a basketball,
modified as proposed by the Examiner to replace the curved channel
segments with the straight portions as taught by Nishihara, has a channel
(groove 15) having both a first portion as called for in claim 1 substantially
parallel to the second longitudinal direction and a second portion as called
for in claim 1 substantially parallel to the first longitudinal direction. One of
those channel portions would be on the side shown in figure 1 of Riddell (in
Appeal 2010-006215
Application 11/609,828
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place of the sharply curved segment of channel 15) and the other of the
channel portions would be on the opposite side of the ball.
Accordingly, we next address the question of whether the Examiner’s
articulated reason for the proposed modification has rational underpinnings.
Nishihara’s disclosure of a basketball design in which all segments of
the grooves, including the short segments connecting the longitudinal
grooves that do not pass through the poles, are substantially straight (FF6)
provides rational underpinnings for the Examiner’s determination that it
would have been obvious “to replace the curved channel segments of Riddell
with the straight portions as taught by Nishihara in order to provide an
alternative aesthetic design for the channels.” Appellants assert that their
Specification provides support for advantages achieved from the claimed
channel configuration. App. Br. 7; Reply Br. 4. For the reasons articulated
by the Examiner on pages 7 and 8 of the Answer, these arguments do not
persuade us that the Examiner’s articulated reason (i.e., “to provide an
alternative aesthetic design”) is unsound or lacks rational underpinnings.
We note, in this regard, that the Examiner’s articulated reason is premised
on evidence (i.e., the design patent to Nishihara) of the use in the prior art of
such straight short groove segments in an aesthetic design for a basketball.
For the above reasons, Appellants’ arguments do not apprise us of
error in the Examiner’s rejection of claim 1 as unpatentable over Riddell and
Nishihara. We sustain the rejection of claim 1 and of dependent claims 2-7,
for which Appellants do not assert any separate arguments.
Appeal 2010-006215
Application 11/609,828
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Claim 81
Claim 8 recites that “each of the first set of panels extends
continuously around substantially the entire circumference of the basketball
and wherein a first end of the first set of panels does not connect with a
second end of the first set of panels.”
We agree with the Examiner that the presence of the unindented seam
13 in Riddell’s basketball (see FF7) does not preclude a finding that the
panels (formed by casing sections 5) separated by the groove running along
the equator of the basketball as depicted in figure 1 extend “continuously
around substantially the entire circumference of the basketball,” as called for
in claim 8. As noted by the Examiner (Ans. 6), claim 8 does not specify that
the panel be formed of a single piece of material, as distinguished from two
pieces of material seamed together by an unindented seam. As defined in
claim 8, “a channel separates adjacent panels.” The “unindented seam” 13
does not form a channel, and thus does not separate the casing sections 5
into panels. FF7; compare Riddell, figs. 9 and 10 (depicting an unindented
seam 13 and a groove 15, respectively).
We thus sustain the rejection of claim 8 and of dependent claims 9
and 10, for which Appellants do not assert any separate arguments, as
unpatentable over Riddell and Nishihara.

1 Claim 8 requires channel segments that are “substantially straight over a
surface of the basketball.” Inasmuch as a straight line cannot be extended
over a surface of a sphere, we understand the limitation “substantially
straight over a surface of the basketball” to mean substantially longitudinal
or latitudinal in nature.
Appeal 2010-006215
Application 11/609,828
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DECISION
The Examiner’s decision rejecting claims 1-10 is affirmed.
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)(1)(iv).
AFFIRMED

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