Appeal No. 2001-1661 Page 8
Application No. 09/144,654
Claims 25 to 32
We will not sustain the rejection of claims 25 to 32 under 35 U.S.C. § 103.
In the rejection of claims 25 to 32 the examiner determined (answer, pp. 4-5 and 7)
that the claimed "practice backboard for returning balls hit against said backboard" was
readable on Light's sports trainer 10 since mirror 38 has a sufficiently large mass to return
a tennis ball when it is hit. The appellant disagrees.
We find ourselves in agreement with the appellant on this issue. While clearly the
mirror 38 of Light's sports trainer 10 would stop a tennis ball, it is our view that there is
insufficient evidence to establish that the mirror 38 is inherently capable of returning a
tennis ball hit against the mirror to the player to enable that player to practice as set forth in
claims 25 to 32. Thus, even if the video camera of Newland were added to Light's sports
trainer 10 it would not arrive at the claimed invention.
Since the subject matter of claims 25 to 32 is not suggested by the applied prior art
for the reasons set forth above, the decision of the examiner to reject claims 25 to 32
under 35 U.S.C. § 103 is reversed.
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