Appeal No. 2005-0297 Page 4
Application No. 09/772,689
balance, and intermediate weight and balance do not render claims 10 and 11
indefinite. The rejection under 35 U.S.C. § 112, second paragraph, is reversed.
The examiner’s rejection of claim 10 under 35 U.S.C. § 103 as being
unpatentable over Pomilia in view of DiSieno and Fujii suffers from the same flaw
evident in the indefiniteness rejection, namely, reading out the language “method for
helping a baseball player who is accustomed to an aluminum bat to adapt to a wood
bat.”1 Pomilia discloses a baseball training bat comprising a tubular member 12 of
constant diameter and weight to length ratio along its length and having a shaft or hitting
portion 16 which is substantially thinner than that of a conventional bat as well as a
weight which is heavier than that of a conventional bat for use in practice to develop
batting strength, bat speed and hand-eye coordination. Pomilia provides no teaching or
suggestion of helping a player who is accustomed to an aluminum bat to adapt to a
wood bat, or providing an intermediate total weight and intermediate balance in the
training bat which are between said aluminum bat and said wood bat, as called for in
claim 10. DiSieno and Fujii likewise lack such teaching or suggestion. We thus
conclude that, even if the references were combined as proposed by the examiner,
appellant’s claimed invention would not result. The rejection is reversed.
CONCLUSION
1 It is elementary that to support an obviousness rejection, all of the claim limitations must be
taught or suggested by the prior art applied (see In re Royka, 490 F.2d 981, 984-85, 180 USPQ 580, 582-
83 (CCPA 1974)) and that all words in a claim must be considered in judging the patentability of that claim
against the prior art (In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970)).
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