Appeal 2007-1694
Application 10/124,103
§ 102(b) as anticipated by Conley. Claims 3, 4, 7, 8, 11, and 15 fall together
with claim 1.
Claims 2, 5, and 9 stand rejected under 35 U.S.C § 103(a) as
unpatentable over Conley. Claims 2, 5, and 9 are grouped together
(Supplemental Br. 7). Therefore, we limit our discussion to representative
claim 2. Claims 5 and 9 will stand or fall together with claim 2.
37 C.F.R. § 41.37(c)(1)(vii).
Conley is relied upon as set forth above. The Examiner finds that
Conley does not teach a vent size having a diameter of 4 – 10 mm as
required by claim 2 (Answer 3). The Examiner finds, however, that “absent
a showing of unexpected results the claimed 4mm to 10mm size would have
been obvious to the ordinarily skilled artisan depending on the ease with
which one wished to allow air to vent from the ball” (id.). We agree.
Conley teaches that the vent “has sufficiently small openings to prevent the
filler material . . . from passing through the vent . . . while permitting free
flow of air within the shell . . .” (Conley, col. 3, ll. 13-16). A minor
modification of the prior art, such as limiting the device to a particular size,
does not distinguish the claimed product from the prior art. See KSR Int’l
Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007)
(It is proper to “take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.”). See also id. at 1742, 82
USPQ2d at 1397 (“A person of ordinary skill is also a person of ordinary
creativity, not an automaton.”). As set forth in In re Aller, 220 F.2d 454,
456, 105 USPQ 233, 235 (CCPA 1955), “it is not inventive to discover the
optimum or workable ranges by routine experimentation.”
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