Ex Parte Summerfield - Page 3



         Appeal No. 2006-1946                                                       
         Application No. 10/437,580                                                 

         claims in each group stand or fall with the claim we address               
          See 37 CFR § 41.37(c)(1)(vii)(2004).                                      
                                      Claim 1                                       
              Douglas discloses, in the background of the invention                 
         section (col. 1, lines 32-46):                                             
                   Desirably, hockey pucks should exhibit the quality of            
              being “dead” objects on the ice.  That is, the pucks should           
              have little or no bounce to them.  Such bounciness is                 
              determined by the coefficient of restitution exhibited by             
              the puck.  The lower the coefficient of restitution, the              
              less bounce the puck will have.  Thus, the puck, upon                 
              hitting an object such as the ice ring wall, will drop to             
              the ice rather than rebounding quickly from the wall.                 
              Heretofore, hockey pucks have had to be frozen prior to               
              a game in order to lower the coefficient of restitution.              
              However, during the game, the pucks warm up and therefore,            
              the coefficient of restitution increases, resulting in the            
              same adverse properties which were initially eliminated with          
              the freezing of the puck.                                             
         Douglas’ invention is “a hockey puck which [due to the inventive           
         rubber composition] acts like a ‘dead’ object and does not have            
         to be frozen to have a low coefficient of restitution” (col. 2,            
         lines 30-32).                                                              
              Kennedy discloses a golf ball having an integral temperature          
         sensor comprising “a stamp or mark that changes color at a                 
         predetermined temperature, allowing a golfer to determine the              
         approximate temperature of a golf ball and hence its suitability           
         for play” (¶ 0001).  Kennedy teaches that “knowing the                     
         temperature of a golf ball is useful in that it allows a golfer            
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