Appeal 2007-1694
Application 10/124,103
Claims 1, 3, 4, 7, 8, 11, and 15 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Conley. Claims 1, 3, 4, 7, 8, 11, and 15 are
grouped together (Supplemental Br. 7).1 Therefore, we limit our discussion
to representative claim 1. Claims 3, 4, 7, 8, 11, and 15 will stand or fall
together with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner finds that Conley teaches a device that comprises an
object with a vent as set forth in Appellant’s claim 1 (Answer 3). We agree.
Appellant asserts that “the game ball of the Conley reference has no
relation to and could not be used as a golf exercise and practice device and
certainly would not be an object used for striking by a golf club” (Br. 6). As
discussed above, we find that the intended use of the device is not a
limitation on the claimed device. Accordingly, we are not persuaded by
Appellant’s argument.
We are also not persuaded by Appellant’s intimation that the size of
Conley’s ball is outside the scope of the device set forth in claim 1 (id.).
Claim 1 requires that the device comprise an object that is “at least as large
as a conventional softball” (claim 1, emphasis added). Conley’s ball is at
least as large as a conventional softball.
For the foregoing reasons we find that the Examiner set forth a prima
facie case that claim 1 is anticipated by Conley, which Appellant has not
rebutted. Therefore, we affirm the rejection of claim 1 under 35 U.S.C
1 The Examiner found Appellant’s Brief defective with regard to the
recitation of, inter alia, the grouping of claims (Notice of Non-Compliance
with 37 CFR [§] 1.192(c)). Appellant’s Supplemental Brief clearly sets
forth Appellant’s intended claim grouping (see Supplemental Br. 7).
Accordingly, we have grouped the claims as set forth in Appellant’s
Supplemental Brief.
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