Appeal 2007-0052
Application 10/438,053
In order to determine whether Johnsen sufficiently describes the
claimed subject matter to constitute an anticipatory reference, we must focus
our attention on the claimed invention. Appellant’s claim 1, like all of the
claims before us in this appeal, is directed to a golf putting practice device,
not to a method of using a golf putting practice device. Accordingly, to
anticipate claim 1, Johnsen need only provide an enabling disclosure of a
golf putting practice device, that is, a device capable of use in golf putting
practice. It is not necessary that Johnsen describe a method of using the
disclosed ball controller in golf putting practice, much less in the particular
manner intended and described by Appellant. It is well settled that the
recitation of an intended use for an old product does not make a claim to that
old product patentable. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
1429, 1431 (Fed. Cir. 1997).
Appellant’s arguments, which, as discussed above, focus on Johnsen’s
failure to describe use of the ball controller in golf putting practice in the
manner described by Appellant and do not challenge the Examiner’s
findings that Johnsen’s ball controller meets all the structural limitations of
claim 1 (Answer 3) and is capable of use as a golf putting practice device by
performing as a target for a golf ball (Answer 4), are not commensurate with
the scope of claim 1, which is directed to a device and not a method, and do
not highlight any deficiency in Johnsen as an anticipatory reference of the
claimed subject matter. The anticipation rejection of claim 1, and claims 2-
7, 14, 17, and 18 standing or falling with claim 1, is sustained.
The obviousness rejection
Claims 9, 10, and 13 depend directly or indirectly from claim 1 and
recite specific dimensions. The Examiner addresses these limitations by
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