Appeal No. 2004-1322
Application No. 10/014,297
with Maurer’s ball performs the function of measuring the duration
of flight when the ball is thrown (e.g., see the abstract and lines
6-11 in column 1) which is not a predetermined time period as
required by each of the appealed claims. Stated otherwise, while
patentee’s desideratum for measuring flight duration may be
predetermined, the time period of this flight duration is not and
cannot be predetermined. Indeed, the fact that this flight
duration time period cannot be predetermined is the very problem
which necessitated development of Maurer’s timing device.
According to the Examiner, “since applicant failed to recite
any particular feature of the timer to support the desired
function, it is submitted that the timer of Maurer is capable of
performing the stated function” (answer, pages 4-5). This is
incorrect. Each of the independent claims on appeal expressly
requires a timer capable of performing the function “measuring
at least one predetermined time period,” and, contrary to the
Examiner’s apparent belief, this functional requirement is not
somehow vitiated by the absence of claim recitation concerning
structural features of the timer. See In re Ludtke, 441 F.2d 660,
664, 169 USPQ 563, 566 (CCPA 1971). Moreover, as previously
discussed, the timing device of Maurer unquestionably
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