Francis Pepe

Patent Trials and Appeals BoardNov 27, 2020

2020002444 (P.T.A.B. Nov. 27, 2020)

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. 15/459,586 03/15/2017 Francis P. Pepe 3SL.51772-NYC 6690 69995 7590 11/27/2020 SCHMEISER, OLSEN & WATTS 3 Manhattanville Road, Suite 105 Purchase, NY 10577 EXAMINER DAVISON, LAURA L ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 11/27/2020 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): 69995@iplawusa.com info@themeolafirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte FRANCIS P. PEPE ____________ Appeal 2020-002444 Application 15/459,586 Technology Center 3700 ____________ Before DANIEL S. SONG, STEFAN STAICOVICI, and ANNETTE R. REIMERS, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE. Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Office Action (mailed Mar. 7, 2019, hereinafter “Final Act.”) rejecting claims 1, 4–6, 8, and 9.2 Appellant’s representative presented Oral arguments on November 10, 2020. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The sole inventor, Francis P. Pepe, is identified as the real party in interest in Appellant’s Appeal Brief (filed Sept. 19, 2019, hereinafter “Appeal Br.”). Appeal Br. 1. 2 Claims 2, 3, 7, and 10–18 are cancelled. Appeal Br., Appendix A. Appeal 2020-002444 Application 15/459,586 2 SUMMARY OF DECISION We REVERSE. INVENTION Appellant’s invention relates to a lacrosse “ball tossing and training device.” Spec. para 1. Claim 1, the sole independent claim, is representative of the claimed invention and reads as follows: 1. A lacrosse ball tossing and training system comprising: a housing having a computer electrically connected to a mechanical hopper, a track leading to a lacrosse ball seating aperture, a ball release mechanism including a paddle passing through an opening in said track to selectively release lacrosse balls to roll down said track, and an elongated ejecting plunger disposed within a casing sized to contact and launch a first lacrosse ball in a vertical direction through a ball release port formed as part of the housing, said housing being elongated along a longitudinal axis, wherein said track is a serpentine track extending in at least two different linear but angled opposing directions along said longitudinal axis within said housing, said track terminating adjacent said lacrosse ball seating aperture, at least one wheel rotatively disposed at a first end of said housing, a first handle disposed at a second end of said housing opposite said first end, said first handle disposed to telescope into and out of said housing, a second handle disposed at a top surface of said housing, said ball release port opening in an upward, angled direction with respect to said longitudinal axis and pointing away from said longitudinal axis, said ball release port being above said first handle and below said second handle, said lacrosse ball seating aperture adjacent said elongated ejecting plunger to position said first lacrosse ball in a stationary position relative to and in line with said elongated ejecting plunger while being contacted by said plunger, Appeal 2020-002444 Application 15/459,586 3 said plunger being selectively actuated by signals received from said computer to contact said first lacrosse ball prior to receiving a second ball delivered from said track delivering a series of lacrosse balls to said lacrosse ball seating aperture, wherein the casing is structured and arranged to be movably connected to and within the housing, while said lacrosse ball seating aperture remains in a fixed position relative to said housing and said ball release port formed as part of said housing, said housing encapsulating said mechanical hopper, said computer, said track, said ball release mechanism and said casing while providing said ball release port and as an exit opening in said housing for said lacrosse balls when said plunger is actuated to launch said first lacrosse ball; at least one sensor designed to be placed onto at least one of said user, the first lacrosse ball, or a lacrosse net such that the sensors are structured and arranged to relay metric data to the computer in connection with a training program software operating on the computer, said at least one sensor being wirelessly connected to said computer; and wherein said computer is adapted to communicate with a mobile device software application in communication with said computer for permitting control of an operation of said ball tossing and training system by the user. REJECTION The Examiner rejects claims 1, 4–6, 8, and 9 under 35 U.S.C. § 103 as being unpatentable over Nickerson,3 Lewis,4 Meade,5 and Rizzo.6 3 Nickerson et al., US 6,167,878 B1, issued Jan. 2, 2001. 4 Lewis et al., US 2015/0352425 A1, published Dec. 10, 2015. 5 Meade, US 5,294,109, issued Mar. 15, 1994. 6 Rizzo et al., US 2013/0104870 A1, published May 2, 2013. Appeal 2020-002444 Application 15/459,586 4 ANALYSIS Independent claim 1 requires, inter alia, “a ball release mechanism including a paddle passing through an opening in said track to selectively release lacrosse balls to roll down said track.” Appeal Br., Claims Appendix A (emphasis added). The Examiner finds that although Nickerson discloses a ball tossing and training system including many of the limitations of independent claim 1, Nickerson fails to disclose “a ball release mechanism including a paddle passing through an opening in the track.” Final Act. 4. Thus, the Examiner turns to Lewis’ disclosure of a ball release mechanism (ball stops 26) for the recited “paddle,” Lewis describing ball stops as a “rod or other member,” which passes though an opening in ramp track 24 to release balls in a selective manner down the track. Id. at 5 (citing Lewis, para. 35, Fig. 2). The Examiner then concludes that [I]t would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the invention of Nickerson by adding a ball release mechanism including a paddle as suggested by Lewis passing through an opening in the track (22 of Nickerson) to selectively release balls to roll down the track, to allow the ball tossing machine to control the projection of the ball without the influence of other balls acting or pushing upon the ball. Id (citing Lewis, para. 35) (emphasis added). Appellant argues that “[t]here is no mention by Lewis of a ‘paddle’ ‘passing through the track’ as required by the claim[].” Appeal Br. 15. Appellant refers to “the telephone interview of May 02, 2019, [where] the [E]xaminer stated that because Lewis mentions the use of a ‘rod or other member’ used with the ‘ball stops 26’ as a ball release mechanism, then the Appeal 2020-002444 Application 15/459,586 5 rod or other member could be used as a paddle passing through the track as required by the claim[].” Id (emphasis added). The Examiner responds that “[t]he rod or other member [in Lewis] reads on the paddle as claimed.” Ans. 8 (Examiner Answer, mailed Nov. 29, 2019, hereinafter “Ans.”). In particular, with respect to Appellant’s reference to the telephone interview of May 02, 2019, the Answer states that “[i]t is not the Examiner’s position that the rod or other member ‘could be used as’ a paddle passing through the track, but that one of ordinary skill in the art would recognize that the rod or other member as described by Lewis is a paddle passing through the track.” Id (emphasis added). We do not agree with the Examiner’s position because under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). In this case, an ordinary and customary meaning of the term “paddle” is “an implement often with a short handle and a broad flat blade that is used for stirring, mixing, or hitting.”7 Such a construction is consistent with Appellant’s disclosure, in particular, Figure 2, which illustrates paddle 320a as having a handle and a flat blade. Accordingly, we do not agree with the Examiner that a skilled artisan, in light of Appellant’s Specification, would reasonably consider a “rod,” such Lewis’ disclosure of a “rod or other member,” to constitute a “paddle,” as called for by independent claim 1. Moreover, the Examiner fails to adequately explain what kind of structure Lewis discloses as the “other 7 Merriam Webster Dictionary Online, https://www.merriam- webster.com/dictionary/paddle (last visited November 4, 2020). Appeal 2020-002444 Application 15/459,586 6 member.” The Examiner’s finding that Lewis’ “other member” somehow constitutes a “paddle,” as understood by a person of ordinary skill in light of Appellant’s Specification, requires speculation on the Examiner’s part. Accordingly, for the foregoing reasons, we find that the Examiner’s legal conclusion of obviousness, based upon the combined teachings of Nickerson and Lewis, 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 supported by facts. Where the legal conclusion is not supported by facts it cannot stand.”). The Examiner’s use of the Meade and Rizzo disclosures does not remedy the deficiency of the Examiner’s combination of Nickerson and Lewis discussed supra. See Final Act. 7–8. Therefore, we do not sustain the rejection under 35 U.S.C. § 103 of claims 1, 4–6, 8, and 9 as unpatentable over Nickerson, Lewis, Meade, and Rizzo. CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4–6, 8, 9 103 Nickerson, Lewis, Meade, Rizzo 1, 4–6, 8, 9 REVERSED