Appeal No. 2000-0852 Page 4
Application No. 09/061,314
the reference. See Kalman v. Kimberly-Clark Corp, 713 F.2d 760, 772, 218 USPQ 781,
789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
The appellant’s invention is directed to improving a baseball batter’s swing by
providing a self-righting target to be impacted by a swinging bat. Independent claims 1
and 9 stand rejected as being anticipated by Wolfe, which is directed to a practicing
device roughly in the shape of a person, which is intended to be struck with the user’s
“punch or kick” (Abstract, line 6). It is the examiner’s position that the appellant’s claim
language reads on the Wolfe device, and thus the claims are anticipated thereby. In the
course of this rejection, the examiner has considered the head to be the target. As to
claim 1, the appellant has advanced several arguments on pages 5 and 6 of the Brief and
pages 2 and 3 of the Reply Brief. However, we find none of them to be persuasive.
The first argument is that Wolfe fails to disclose a target for accepting swing
impacts from a baseball bat, as required by the claim, because such a functional use is not
explicitly taught in the patent. With regard to this, we first point out that claim 1 requires
only that there be a “target,” and there is no dispute that one of ordinary skill in the art would
have recognized that the head in the Wolfe device constitutes a “target,” albeit that it is
explicitly disclosed only in the context of being capable of accepting impacts from punches
and kicks. Insofar as striking the head with a bat is concerned, it is only necessary that the
reference include structure capable of performing the recited function in order to meet the
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