Appeal No. 2004-1195
Application No. 09/766,165
be used in the design and development phase, as well as
during quality control, to determine if an inflated
ball will have rebound problems [page 11, lines 15-22].
Appealed claims 1-26 stand rejected under 35 U.S.C. § 112,
second paragraph. Claims 1, 2, 8, 9, 18-21 and 24-26 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by Weiss.
Claims 3-7, 10-17, 22, 23 and 32 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Weiss. In addition, claims
27-31 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Adair.1
Appellants present the following groups of claims at
pages 5 and 6 of the principal brief: (I) claims 1, 2, 8, 9 and
18-20; (II) claims 21 and 24-26; (III) claims 3-7; (IV) claims
10-17, 22, 23 and 32; and (V) claims 17-31. Appellants submit
that the claims in each of the five groups stand or fall
together.
We have thoroughly reviewed the respective positions
advanced by appellants and the examiner. In so doing, we find
that the examiner's § 112 rejection is not sustainable. However,
we fully concur with the examiner that the claimed subject matter
is unpatentable over the cited prior art for essentially those
1 The § 103 rejection of claims 27-31 over Adair has been
inadvertently omitted in the statement of the grounds of
rejection in the Examiner's Answer.
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