Appeal No. 2006-0709
Application No. 10/780,805
bat for improving the ability to hit a ball. The bat of Owen
comprises the presently claimed barrel, transition and handle
sections. As recognized by the examiner, the barrel section of
Owen’s bat does not have a diameter less than 2 1/4 inches, as
presently claimed. However, as correctly pointed out by the
examiner, Owen expressly teaches that the bat may vary in
diameter, length and weight. Hence, although the smallest
diameter of the barrel section disclosed by Owen is 2 1/4 inches,
we are convinced that it would have been obvious for one of
ordinary skill in the art to make the barrel section of Owen’s
bat have a diameter of slightly less than 2 1/4 inches, which is
all that is required by claim 1 on appeal. It is well settled
that, where patentability is predicated upon a change in a
condition of the prior art, such as a change in size, the
applicant must establish that the change is critical, i.e., it
leads to an unexpected result. In re Woodruff, 919 F.2d 1575,
1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990) and In re Aller, 220
F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
In the present case, appellant has proffered no objective
evidence which establishes that a bat having a barrel section
slightly smaller in diameter than a conventional bat produces an
4
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007