Ex Parte Ball

Board of Patent Appeals and Interferences

Mar 24, 2011

10290778 (B.P.A.I. Mar. 24, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM T. BALL
____________

Appeal 2009-011705
Application 10/290,778
Technology Center 3600
____________

Before WILLIAM F. PATE III, MICHAEL W. O’NEILL, and
FRED A. SILVERBERG, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
William T. Ball (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting:
(1) claims 1-3, 7, and 14 under 35 U.S.C.
§ 102(b) as anticipated by Weis (U.S. Patent No.
6,186,522 B1, issued Feb. 13, 2001);
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(2) claims 1, 2, and 14 under 35 U.S.C.
§ 102(b) as anticipated by Samuels (U.S. Patent
No. 4,842,289, issued Jan. 27, 1989);
(3) claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Weis and Lello (U.S. Patent No.
4,114,915, issued Sep. 19, 1978);
(4) claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Weis and Schmaedeke (U.S.
Patent No. 3,909,031, issued Sep. 30, 1975);
(5) claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Weis and Hickin (U.S. Patent
No. 4,726,597, issued Feb. 23, 1988);1
(6) claims 8, 9, and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Weis and Gillett
(U.S. Design Patent No. Des. 272,285, issued Jan.
17, 1984);2
(7) claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Weis, Gillett, and Lello;
(8) claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Weis, Gillett, and Schmaedeke;
and
(9) claim 12 under 35 U.S.C. § 103(a) as
unpatentable over of Weis, Gillett, and Hickin.

We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE

1 We removed the reference to Gillett (U.S. Design Patent No. Des. 272,285,
issued Jan. 17, 1984) from the statement of this rejection. The reference to
Gillett in the heading of the rejection on page 8 of the Examiner’s Answer
appears to be an error because the body of the rejection does not mention
Gillet and Gillet was not applied in the rejection of claim 1.
2 We removed claim 11 from the claim listing of this rejection because the
body of the rejection does not discuss the subject matter of claim 11 and the
Examiner’s Answer separately rejects claim 11 on pages 10-11 by applying
Lello to the subject matter of claim 11.
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The Invention
The claimed invention is to a device for transporting, either ski
equipment alone or together with skis, to a ski slope with a ski rack.
Claims 1, 8, and 14, reproduced below, with emphasis added, are
representative of the subject matter on appeal.
1. A device for transporting ski equipment
to a ski slope with a ski rack comprising:
a housing for receiving skis and ski
equipment having sidewalls;
an open end, and an opposite closed end,
and means for transporting the device mounted on
the housing; and
a swing door pivotally connected to the
housing and positioned to cover the open end of
the housing when the swing door is in a closed
position.

8. A device for transporting skis and ski
equipment to a ski slope with a ski rack
comprising:
a housing for receiving the skis and ski
equipment having sidewalls, an open end, an
opposite closed end, and means for transporting
the device mounted on the housing; and
a storage container connected to a sidewall
of the housing.

14. A device for transporting ski equipment
to a ski slope with a ski rack comprising:
a housing for receiving skis within the
housing and means for transporting the device
mounted on the housing; and
a securing element attached to the housing
for retaining the skis within the housing.

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Issue
The determinative issue in this appeal is:
Whether Weis alone, Samuels alone, and Weis in view of Gillet
disclose a housing capable of receiving skis.
OPINION
Analysis
Anticipation based on Weis
Appellant contends that Weis does not disclose claim 1’s recitation of
“a housing for receiving skis and ski equipment”, that the Examiner has not
given the recitation due weight, and that the Examiner reads the recitation
out of the claim. App. Br. 6. Consequently, Appellant contends that Weis
does not disclose each and every element of claim 1 to anticipate the claim.
App. Br. 7. Appellant also contends that claim 14 contains a similar
limitation to claim 1 and therefore, Weis does not anticipate claim 14. Id.
The Examiner posits that Weis anticipates claims 1-3, 7, and 14. Ans.
4-5. The Examiner also posits that Weis discloses a housing 12 having
holding means 132 therein and ski equipment, such as ski poles, would fit
adequately into the holding means 132. Ans. 4-5. The Examiner also posits
that “the intended use of the invention is irrelevant.” Ans. 5.
We agree with Appellants that Weis does not anticipate claims 1-3, 7,
and 14. The Examiner incorrectly states that the intended use of the
invention is irrelevant. It is well settled that a reference used to reject a
claim must be capable of performing the claim’s recited intended use. Here,
the preambles of both claims 1 and 14 recite “[a] device for transporting ski
equipment to a ski slope with a ski rack.” In giving “ski equipment” its
broadest reasonable interpretation, we note that the recitation of “ski
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equipment” encompasses skis. Since the body of claim 1 recites “a housing
for receiving skis and ski equipment” and the body of claim 14 recites of “a
housing for receiving skis within the housing,” we construe the preamble of
claims 1 and 14, respectively, as limiting since in each case the preamble
gives life, meaning, and vitality to the body of the claim. See Catalina
Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir.
2002), quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
1305 (Fed. Cir. 1999) (The preamble may be construed as limiting “if it
recites essential structure or steps, or if it is ‘necessary to give life, meaning,
and vitality’ to the claim.”)
The Examiner found Weis to be capable of receiving ski equipment,
such as ski poles. However, the Examiner failed to address Weis’ capability
of receiving skis. Based upon our construction supra that the claim
preambles of claims 1 and 14 are limiting, we find that the Examiner erred
because Weis’ housing 12 is not capable of receiving skis and patentable
weight must be given to claim 1’s recitation of “a housing for receiving skis”
and claim 14’s recitation of “a housing for receiving skis within the
housing.” Weis’ housing 12 has a club holding interior body assembly 132,
comprised of upper, middle, and lower bulkheads 134, 136, and 138 each
having holes 142 for holding tubes 140. While we agree with the Examiner
that the tubes 140 in the holes 142 in the upper, middle, and lower bulkheads
134, 136, and 138 of the club holding interior body assembly 132 of Weis
would be capable of holding ski equipment, such as ski poles, the club
holding interior body assembly 132 within Weis’ housing 12 would not
allow the golf club carrier 10 to receive skis.
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In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 1-3, 7, and 14 under 35 U.S.C. § 102(b) as anticipated by Weis.
Since the rejections of claims 4-6 are based upon the same erroneous finding
that the housing of Weis is capable of performing the recited intended use of
being for receiving skis and since none of Lello, Schmaedeke, and Hickin
cure the defect of Weis, we also do not sustain the Examiner’s rejections of
claim 4 under 35 U.S.C. § 103(a) as unpatentable over Weis and Lello, claim
5 under 35 U.S.C. § 103(a) as unpatentable over Weis and Schmaedeke, and
claim 6 under 35 U.S.C. § 103(a) as unpatentable over Weis and Hickin.
Anticipation based on Samuels
Appellant contends that Samuels’ housing “cannot receive skis as is
required by claim 1.” App Br. 8. Appellant also contends that claim 14 is
novel over Samuels for the same reasons as set forth with respect to Weis.
App. Br. 8-9.
The Examiner posits that Samuels anticipates claims 1, 2, and 14.
Ans. 6. The Examiner also posits that Samuels discloses “a housing
composed of panels (9, 11, 13, 15, 17) for receiving ski equipment, see
Column 1, lines 36-41, having sidewalls (15, 17).” Id.
We agree with Appellant that Samuels does not anticipate claims 1, 2,
and 14. As noted supra, we are construing the preamble of claims 1 and 14
as limiting since in each case the preamble gives life, meaning, and vitality
to the recitations in the body of the claims. The Examiner found Samuels’
housing to be capable of receiving ski equipment. However, the Examiner
failed to address whether Samuels’ housing is capable of receiving skis.
Based upon our construction of the claim language supra, we find that
Samuels’ housing (9, 11, 13, 15, 17, and 25) does not meet claim 1’s
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language of being “for receiving skis” and claim 14’s language of being “for
receiving skis within the housing” because patentable weight must be given
to these claim recitations. As is clearly shown by Samuels’ Figure 2, the
housing (9, 11, 13, 15, 17, and 25) of the portable ski locker 1 does not
receive the skis 54 as the skis 54 are received outside of the housing by the
ski enclosure 39 and the clamping device 41. Samuels’ housing (9, 11, 13,
15, 17, and 25) is not capable of receiving skis 54, moreover any normally
sized skis, because of the height of the locker 1 and the compartment divider
shelf 5.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 1, 2, and 14 under 35 U.S.C. § 102(b) as anticipated by Samuels.
Obviousness based on Weis and Gillet
Appellant contends that the Examiner’s proposed combination of
Weis and Gillet fails to disclose “a housing for receiving skis and ski
equipment.” App. Br. 16. More particularly, Appellant contends that
neither Weis’ tubes 140 nor Gillet’s tubes, as shown in Figure 4, are capable
of receiving skis. Id. Appellant contends that even if Weis were modified
by Gillet, the proposed combination would still not result in the claimed
invention because neither Weis nor Gillet teaches a housing capable of
receiving skis. App. Br. 16.
The Examiner posits that claim 8 is unpatentable over Weis and
Gillet. Ans. 8. The Examiner also posits that Weis discloses a housing (12)
having side panels (18, 20), wherein the housing has a means (132) for
securing sports equipment received in the housing (12). Ans. 9.
We agree with Appellant that neither Weis nor Gillet discloses a
housing capable of receiving skis. The preamble of claim 8 recites “[a]
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device for transporting skis and ski equipment to a ski slope with a ski rack.”
The body of claim 8 recites of “a housing for receiving the skis and ski
equipment.” We construe the preamble of claim 8 as limiting since the
preamble gives life, meaning, and vitality to the recitations in the body of the
claim. In other words, patentable weight must be given to claim 8’s
recitation of “a housing for receiving the skis and ski equipment.” As
discussed supra, the club holding interior body assembly 132 within Weis’
housing 12 prevents the golf club carrier 10 from being capable of receiving
skis. Gillet fails to cure the defect of Weis because Gillet’s Figure 4 clearly
shows a substantially closed interior having a row of open tubes which
would not be capable of receiving skis. Thus, based upon our construction
of the claim language supra, even if Weis and Gillet were combined, the
resulting device would not have a housing capable of receiving skis because
neither Weis nor Gillet discloses a housing capable of receiving skis.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 8, 9, and 13 under 35 U.S.C. § 103(a) as anticipated by Weis and
Gillet. Since the rejections of claims 10-12 are based upon the same
erroneous finding that the housing of Weis is capable of performing the
recited intended use of being for receiving skis and since none of Lello,
Schmaedeke, and Hickin cure the deficiency of Weis and Gillet, we also do
not sustain the Examiner’s rejections of claim 10 under 35 U.S.C. § 103(a)
as unpatentable over Weis, Gillett, and Lello, claim 11 under 35 U.S.C.
§ 103(a) as unpatentable over Weis, Gillett, and Schmaedeke, and claim 12
under 35 U.S.C. § 103(a) as unpatentable over of Weis, Gillett, and Hickin.

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CONCLUSION
Weis alone, Samuels alone, and Weis in view of Gillet do not disclose
a housing capable of receiving skis.

DECISION
We reverse the Examiner’s rejections of: claims 1-3, 7, and 14 under
35 U.S.C. § 102(b) as anticipated by Weis; claims 1, 2, and 14 under 35
U.S.C. § 102(b) as anticipated by Samuels; claim 4 under 35 U.S.C. § 103(a)
as unpatentable over Weis and Lello; claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Weis and Schmaedeke; claim 6 under 35 U.S.C. § 103(a)
as unpatentable over Weis and Hickin; claims 8, 9, and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Weis and Gillett; claim 10 under 35 U.S.C.
§ 103(a) as unpatentable over Weis, Gillett, and Lello; claim 11 under 35
U.S.C. § 103(a) as unpatentable over Weis, Gillett, and Schmaedeke; and
claim 12 under 35 U.S.C. § 103(a) as unpatentable over of Weis, Gillett, and
Hickin.

REVERSED

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