Appeal 2006-2155
Application 10/747,179
Examiner does not provide the required reasoning as to why one of ordinary skill
in the art, when interpreting the Appellant’s claim terms “stationary” and “fixed”
in light of the Specification and prosecution history, would have considered the
terms to require the permanence argued by the Examiner and, consequently, lack
adequate written descriptive support in the Appellant’s original disclosure.
Accordingly, we find that the Examiner has not carried the burden of
establishing a prima facie case of lack of compliance with the 35 U.S.C. § 112, first
paragraph, written description requirement.
Rejection under 35 U.S.C. § 102(b)
The Appellant argues the claims in the following groups: 1) claims 1, 2,
and 14; 2) claim 3; 3) claims 4 and 8; 4) claim 5; 5) claims 6, 7 and 15; 6) claims 9,
12, 13, 16, 19, and 20, and 7) claims 10, 11, 17, and 18 (Br. 16-22). We therefore,
limit our discussion of the affirmed rejections to the one claim in each group, i.e.,
claims 1, 3, 8, 10, 15 and 16. The other claims in each group for which the
rejection is affirmed fall with the discussed claim in that group. See
37 C.F.R. § 41.37(c)(1)(vii)(2004).
Claim 1
McKee discloses a base (210) having received therein a tee (220) with a
football tip-shaped indentation (230) and, in front of the indentation, a first
surface (226) (col. 10, ll. 47-53). As shown in figure 13C, when a football placed
in the indentation is kicked, at least the lower tip of the football necessarily will
strike the first surface.
The Appellant argues that McKee’s tee is pivotable in use (Br. 17). The
pivotable embodiment (figs. 13A and B) is not relevant to the Appellant’s claimed
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