Appeal 2007-1694
Application 10/124,103
The Examiner finds that “[w]hen Spector’s plug . . . is removed
Spector discloses the claimed device. . .” (Answer 3). We agree.
Appellant asserts that “there is no disclosure of a ball the size of a
softball being hit by a golf club” (Br. 7). We are not persuaded by this
argument. Claim 1 requires an object that is “at least as large as a
conventional softball” (claim 1, emphasis added). Spector’s ball is at least
as large as a conventional softball. In addition, for the reasons discussed
above, claim 1 does not require that the object be hit with a golf club.
For the foregoing reasons we find that the Examiner set forth a prima
facie case that claim 1 is anticipated by Spector, which Appellant has not
rebutted. Therefore, we affirm the rejection of claim 1 under 35 U.S.C
§ 102(b) as anticipated by Spector. Claims 4, 6-8, 10, 11, 13, and 15 fall
together with claim 1.
Claims 2, 5, 9, 12, and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Spector. Claims 2, 5, 9, 12, and 14 are grouped together
(Supplemental Br. 7). Therefore, we limit our discussion to representative
claim 2. Claims 5, 9, 12, and 14 will stand or fall together with claim 2.
37 C.F.R. § 41.37(c)(1)(vii).
Spector 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 3-4). 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 fill the ball” (Answer 4). We
agree. “[I]t is not inventive to discover the optimum or workable ranges by
routine experimentation.” Aller, 220 F.2d at 456, 105 USPQ at 235.
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