Ex Parte Pinto

Patent Trial and Appeal Board

Jan 12, 2018

14451270 (P.T.A.B. Jan. 12, 2018)

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.
14/451,270 08/04/2014 Ademilson Pereira Pinto TRIG.002US 1760
79101 7590
Keith E. Taber
5801 Bent Creek Trail
Dallas, TX 75252
EXAMINER
WONG, STEVEN B
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
01/17/2018 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):
keithetaber@ gmail.com
ange. viola @ ipparalegals .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADEMILSON PEREIRA PINTO
Appeal 2017-004096
Application 14/451,270
Technology Center 3700
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals under 35 U.S.C.
§ 134(a) from the Examiner’s rejection of claims 1—20. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
According to Appellant, the invention “relates generally [to] sports
balls, such as those used to play, practice[,] or train for soccer.” Spec. 11.
1 According to Appellant, the real party in interest is Trig Group, LLC.
Appeal Br. 2.
Appeal 2017-004096
Application 14/451,270
Claims 1 and 15 are the only independent claims on appeal. We reproduce
claim 1, below, as illustrative of the appealed claims.
1. A ball comprising:
a bladder;
a lining attached to the bladder;
panels attached to the lining, the panels being made of a
skin and a backing layer;
the ball having a circumference between 68 cm and 70
cm and a weight of 410 grams to 450 grams and a rebound in
the range of 70 cm to 97 cm at 20°C.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. claims 1, 4, 6, 8, 10, and 12 under 35 U.S.C. § 103 as
unpatentable over Appellant’s Admitted Prior Art (“AAPA”)
and Chan (US 6,039,662, iss. Mar. 21, 2000);
II. claims 2, 3, 5, 7, 9, 11, 13, and 14 under 35 U.S.C. § 103 as
unpatentable over AAPA, Chan, and Sing
(US 2013/0035182 Al, pub. Feb. 7, 2013);
III. claims 15 and 18 under 35 U.S.C. § 103 as unpatentable over
AAPA, Chan, and Maziarz (US 2009/0093327 Al, pub. Apr. 9,
2009); and
IV. claims 16, 17, 19, and 20 under 35 U.S.C. § 103 as
unpatentable over AAPA, Chan, Maziarz, and Sing.
2
Appeal 2017-004096
Application 14/451,270
ANALYSIS
Rejection I
As set forth above, independent claim 1 recites, among other
recitations, “the ball having ... a rebound in the range of 70 cm to 97 cm.”
Appeal Br., Claims App. With respect to the rejection of claim 1, the
Examiner determines the following regarding Chan:
[Chan teaches that its ball, as compared to other known balls,]
is softer feeling and more comfortable to a human body striking
or struck by the ball during play. [Chan] also states that the
rebound of the ball is more moderate and absorbs more impact
upon the outer surface of the ball. Thus, Chan teaches that it is
known in the art of soccer to form the ball such that the rebound
characteristics are reduced compared to the FIFA standard.
Given this teaching, it would have been obvious to one of
ordinary skill in the art to reduce the rebound characteristics of
the ball. . . disclosed by . . . [the Admitted Prior Art] in order to
provide a softer, more comfortable ball for the user. The
particular rebound range as recited [in claim 1 ] is considered to
be obvious given the teachings of Chan[,] and the lack of a
showing of a new and unexpected result obtained by the
particular [claimed] range.
Answer 2 (citing Chan col. 4,11. 1—14, 26—31).
Appellant argues that the Examiner’s determinations are in error,
because “Chan does not reference rebound in any of the discussion of softer
feel and comfort. . . . [T]he the only reference in Chan to rebound is that
[the rebound] is within FIFA specifications.” Reply Br. 5 (citing Chan
col. 4,11. 30-31) (“The rebound is also more moderate and dropped within
the FIFA specification so required.”); see also Appeal Br. 7—8. Further,
Appellant’s disclosure describes that a ball with the claimed circumference
and weight corresponds to a “standard” (i.e., within FIFA specifications)
size 5 outdoor soccer ball. Answer 2 (citing Specification 7 (Table 1), 8
3
Appeal 2017-004096
Application 14/451,270
(Table 5)). However, Appellant’s disclosure describes that the rebound for a
standard ball is in the range of “125—155 cm.” Specification 7 (Table 3).
Thus, the standard ball’s rebound range is greater than, and does not overlap
with, the claimed rebound that ranges from 70 cm to 97 cm.
Based on our review of the record, we do not sustain the Examiner’s
obviousness rejection of claim 1. As set forth above, the Examiner
determines that, because Chan discloses a ball that “is softer feeling and
more comfortable to a human body striking or struck by the ball during
play” (Answer 2), it would have been obvious to provide a ball with a
rebound from 70 cm to 97 cm, as recited in claim 1. While the Examiner
adequately supports the determination that Chan describes a ball within
FIFA specifications that feels softer, the Examiner does not support
adequately the determination that Chan teaches a ball with a lower-than-
normal rebound, or even that there is any relationship between the feel of a
ball and the ball’s rebound. In particular, the Examiner does not bring to our
attention any evidence, or a sufficiently reasoned analysis, tending to prove
that a ball with a lower rebound feels softer, and no portion of Chan cited by
the Examiner supports this determination. For example, lines 1—14 of
Chan’s column 4 fail to mention the term “rebound,” while lines 31—32, as
stated above, discusses that the ball’s rebound is within FIFA specifications,
and does not discuss softness. Chan col. 4,11. 1—14, 31—32.
Thus, based on the foregoing, the Examiner does not support
adequately the determination that it would have been obvious to modify the
standard soccer ball described in Appellant’s Specification, based on Chan,
so as to have a rebound in the claimed range. Therefore, we do not sustain
the rejection of claim 1, and we do not sustain the rejection of claims 4, 6, 8,
4
Appeal 2017-004096
Application 14/451,270
10, and 12 that depend from claim 1 and which the Examiner rejects based
on the same references as claim 1.
Rejection II
Claims 2, 3, 5, 7, 9, 11, 13, and 14 depend from claim 1. Inasmuch as
the Examiner does not establish that Sing remedies the above deficiency in
claim 1 ’s rejection, we do not sustain the obviousness rejection of the
dependent claims.
Rejection III
Independent claim 15 recites, among other recitations, “the ball
having a circumference between 58 cm and 61 cm[,] ... a weight of 350
grams to 380 grams[,] and a rebound in the range of 65 cm to 95 cm.”
Appeal Br., Claims App. With respect to the rejection of claim 15, the
Examiner determines the following:
Chan teaches that it is known in the art of soccer balls to reduce
the rebound characteristics of the ball in order to provide a
softer ball that [provides] less of an injury risk. It would have
been obvious to one of ordinary skill in the art to reduce the
rebound characteristics of the ball of the combination in order
to provide a softer ball for the users.
Answer 4. The Examiner also determines that to “merely identify a softness
range is considered to be obvious given the teachings of Chan and because
the appellant has not shown the criticality for that particular range by the
demonstration of a new and unexpected result.” Id. at 8.
For reasons similar to those discussed above with respect to claim 1,
we do not sustain the Examiner’s obviousness rejection. More specifically,
the Examiner does not support adequately the determination that Chan
teaches a ball with a lower-than-normal rebound, or even that there is any
relationship between a softer-feeling ball and the ball’s rebound. Thus, we
5
Appeal 2017-004096
Application 14/451,270
do not sustain the rejection of claim 15, or the rejection of claim 18 that
depends from claim 15.
Rejection IV
Claims 16, 17, 19, and 20 depend from claim 15. Inasmuch as the
Examiner does not establish that Sing remedies the above deficiency in
claim 15’s rejection, we do not sustain the obviousness rejection of the
dependent claims.
DECISION
We REVERSE the Examiner’s obviousness rejections of claims 1—20.
REVERSED
6