Appeal No. 97-0394
Application 08/353,083
structural relationships between the fingertip positioner (claims
1 and 8) or insert (claim 5) and the bowling ball. Thus, the 2
examiner’s position that the functional language is entitled to
little, if any, weight (see pages 3 through 7 in the answer) is
not well taken.
Clearly, Rowland’s disclosure of a thumb pad in combination
with a bowling ball does not expressly meet the above limitations
in claims 1, 5 and 8. Moreover, the illustration of the bowling
ball portion 16 and thumb pad 10 in Rowland’s Figure 1 renders
unduly speculative, and indeed seems to refute, the examiner’s
apparent determination that these elements meet the limitations
in question under principles of inherency. This being the case,
the examiner’s finding that the subject matter recited in
independent claims 1, 5 and 8, and in dependent claims 2 through
4, 6 and 7, is anticipated by Rowland cannot
stand. Accordingly, we shall not sustain the standing 35 U.S.C.
§ 102(b) rejection of these claims.
2The recitation of these positive structural relationships
belie the examiner’s determination that “Claims 5-8 are drawn to
merely an insert . . . and do not require the particulars of a
bowling ball” (answer, Paper No. 10, page 4).
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