Appeal No. 2004-1195
Application No. 09/766,165
reasons expressed in the Answer. Accordingly, we will sustain
the examiner's rejection of the appealed claims under § 102
and § 103.
We consider first the examiner's rejection under § 112,
second paragraph. According to the examiner, the terms
"‘corresponding' and ‘comparable' are indefinite in describing
sport balls that are to be compared to the instant invention"
(page 2 of Final rejection of January 13, 2003, first paragraph).
The examiner explains that "it would be impossible for the
manufacturer to maintain the identical structure and just merely
add the inflation mechanism to a sport ball" (page 3 of Answer,
last paragraph). However, the examiner's reasoning misses the
point that it is not the structure of the ball that corresponds
to or is comparable with a ball without an inflation mechanism.
Rather, the claims require that it is the "rebound
characteristics" that are comparable to a ball not containing the
inflation mechanism. Hence, it does not bear upon the
definiteness of the claim language that "the addition of the
self-contained inflation mechanism would require modifications to
the sport ball such as increased wall thickness for balancing"
(id.).
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