Appeal No. 2005-0297 Page 3
Application No. 09/772,689
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
The basis of the examiner’s rejection of claims 10 and 11 is that,
since no boundaries have been set or established in this
application as originally filed as to what weight a wood or
aluminum bat should or could have, and since it is well
known that the wood and the aluminum bat can have the
same weight, then it is unclear how one would compare the
weights in order to establish an “intermediate” weight? In the
instant when the wood and aluminum bat do not have the
same weight, it is unclear what weight range appellant’s
training bat should be compared to? Therefore, it is
impossible to compare the present training bat to other bats
[answer, page 3].
The basic flaw in the examiner’s reasoning is that the examiner appears to have
improperly read out of the claim the language “method for helping a baseball player who
is accustomed to an aluminum bat to adapt to a wood bat.” A person of ordinary skill in
the field of baseball seeking to help a player transition from an aluminum bat to which
he or she is accustomed to a wood bat would of course know the identities of the are
between the total weights and balances of said aluminum and wood bats. We thus
conclude that the references to aluminum bat weight and balance, wood bat weight and
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