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Ex parte DECKER - Page 8
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Board of Patent Appeals and Interferences > 1997 > Ex parte DECKER - Page 8
Appeal No. 96-1820
Application No. 08/189,140
regulation baseball, and in the claims he describes his invention
by way of specific dimensions (claims 1 through 3) and
dimensional relationships (claim 4), as well as in the material
from which the core is made (claim 4). From our perspective,
this establishes criticality to the degree necessary to require
focus upon the fact that while the prior art discloses baseballs
sized smaller than regulation baseballs, this is not the extent
of the limitations recited in the appellant’s claims. The only
suggestion for making the core of the baseball in accordance with
the dimensional and material limitations recited in claims 1 and
4 is found via the luxury of the hindsight provided one who first
viewed the appellant’s disclosure. This, of course, is
impermissible as a basis for rejecting the claims. See In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir.
1992).
It therefore is our conclusion that the teachings of the
prior art relied upon fail to establish a prima facie case of
obviousness with regard to the subject matter of independent
claims 1 and 4, and we therefore will not sustain the rejection
of these claims or, it follows, of dependent claims 2 and 3.
In view of the fact that a prima facie case of obviousness
has not been established by the applied prior art, there is no
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Last modified: November 3, 2007
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