Ex Parte Bolster

Board of Patent Appeals and Interferences

Sep 13, 2007

10895515 (B.P.A.I. Sep. 13, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRIAN BOLSTER
____________

Appeal 2007-0195
Application 10/895,515
Technology Center 3600
____________

Decided: September 13, 2007
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and
ANTON W. FETTING, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Brian Bolster (Appellant) originally appealed under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1-6 and 8-21. Claim 10 was
canceled in the Amendment filed May 4, 2006, said Amendment having
been entered (see Communication mailed May 19, 2006). Accordingly, this
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Application 10/895,515

appeal involves only claims 1-6, 8, 9, and 11-21, the only pending claims.
We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).
Appellant’s claimed invention is directed to aquatic propulsion
systems and methods of manufacturing such aquatic propulsion systems and,
in particular, to training aids for swimming (Specification 1:5-6).
Appellant's invention seeks to place the anatomy, and in particular the hand,
forearms, fingertips, and elbow, of a swimmer in the most efficient position
for providing a uniform application of force on the pulling surface and an
increased surface area for holding water to generate more power and speed
(Specification 2:1-4 and 15-17). This efficient position is generally known
as the "paddle-blade position" (Specification 2:4-5). Independent claims 1
and 11 are illustrative of the claimed invention and read as follows:
1. An aquatic propulsion device comprising:
a hand support surface on a hand support;
and
a linking element extending from the hand
support, the linking element being located and
adapted to receive the wrist of a user and set the
hand and forearm of the user in a predetermined
alignment.
11. A method of manufacturing a propulsion
device for a hand, the method comprising the steps
of:
providing a hand support surface on a hand
support for placing a hand in a paddle-blade
position, a linking element being located and
adapted to receive the wrist of a user and the hand
and forearm of the user in a predetermined
alignment; and
providing securing means for removably
securing the hand to the device.
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Appellant seeks review of the Examiner’s rejections of claims 1-3, 5,
6, 8, 11-16, 18, 20, and 21 under 35 U.S.C. § 102(b) as anticipated by
Liveoak (US 5,842,896, issued December 1, 1998) and claims 4, 9, 17, and
19 under 35 U.S.C. § 103(a) as unpatentable over Liveoak in view of
Richmond (US 4,493,663, issued January 15, 1985).
The Examiner provides reasoning in support of the rejections in the
Answer (mailed June 20, 2006). Appellant presents opposing arguments in
the Appeal Brief (filed May 31, 2006) and Reply Brief (filed August 21,
2006).

THE ISSUES
With respect to the anticipation rejection, the following issues are
presented to us:
1. Are Liveoak's supports 22 and 24, relied on by the Examiner as
making up the linking element, adapted to receive the wrist of a user?
Appellant argues the wrist is received between the supports 22, 24 and
not by the supports 22, 24 themselves (Appeal Br. 4).

2. Are Liveoak's supports 22, 24 adapted to set the hand and forearm of
the user in a predetermined alignment?
Appellant argues that, because of the space (aperture 16) in which
Liveoak receives the wrist, a user can grip Liveoak's handgrip 17 in a
manner that causes the user's hand and forearm to be in any of a number of
random alignments, not in the claimed predetermined alignment (Appeal Br.
4). Appellant further argues Liveoak does not set the wrist in a
predetermined alignment, by virtue of the flexibility of the device (Liveoak,
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col. 2, ll. 64-66) and that supports 22a, 24a are not "rigid or fully bracing"
(Reply Br. 5).

3. Does Liveoak disclose or suggest the claimed paddle-blade position
(claims 5, 11, 12, 21)?
Appellant contends Liveoak does not disclose a hand support
comprising a convex surface so the hand is aligned in the paddle-blade
position, as so defined, and as known in the art (Appeal Br. 5 and Reply Br.
6).

With respect to the obviousness rejection, the following additional
issues are presented:
4. Would it have been obvious to modify Liveoak to add flanges to the
support surface (end 26) to more securely hold the forearm?
Appellant argues that Liveoak expressly moved away from the tight
gripping members taught by the prior art, such as Richmond (Appeal Br. 6-
7).

5. Would it have been obvious to modify Liveoak to make the
propulsion surface (either side 30 or side 32 of paddle 12)
substantially planar?
Appellant argues the flexibility of Liveoak renders the modification to
make the propulsion surface planar unreasonable given that the planarity
would not be maintained under paddling force (Reply Br. 7).

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THE FACTS
FF1 Appellant's Specification defines the "paddle-blade position" as "the
most efficient position of the hand, forearm, fingertips, and elbow . . . . that
provides a uniform application of force on the pulling surface and an
increased surface area for holding water, resulting in the generation of more
power and speed" (Specification 2:1-5). This "paddle-blade position" is one
with a positive rake (i.e., with the wrist bent forward so the palm is inclined
toward the lower side of the forearm), as illustrated, for example, in Fig. 4,
which is described as depicting the "paddle-blade position" (Specification
7:1-2). Appellant discloses that, "[t]o place the hand in the paddle-blade
position," a linking element 11 aligns the propulsion surface 7 and hand
support 9 in fixed relation at an acute angle from the mean surface of
propulsion surface 7 to a support platform 13 (Specification 5:14-16).
Appellant further discloses that the linking element 11 "may be arranged in
relation to the support platform 13 at an angle of about 10 to 15 degrees
from horizontal, for example" (emphasis ours) (Specification 5:16-18).
Appellant's Specification does not define the "paddle-blade position" as
requiring a 10 to 15 degree angle. According to Appellant, other non-
adjustable angles to place the hand in other desired positions are within the
scope of the invention (Specification 5:18-19).

FF2 Liveoak's paddle 10 flexes similarly to fins worn on the feet of scuba
divers when moved through the water (col. 2, ll. 64-66).

FF3 As illustrated in Fig. 1, Liveoak's paddle includes a paddle blade 12
and first and second apertures 14 and 16 for use with one hand and arm of a
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user (Liveoak, col. 2, ll. 58-60). The first aperture 14 is positioned closer to
edge 18 of paddle blade 12, "with the second aperture 16 defined by a
support region 19 having converging supports 22 and 24 that terminate at a
reinforced end region 26, which generally bears against the upper forearm of
the user near elbow 29" (Liveoak, col. 3, ll. 24-29). The user inserts a hand
through aperture 16 and lays the hand on paddle blade 12. The hand can be
inserted through aperture 16 from the lower side 32 and engage the upper
side 30 of the paddle blade 12 (to achieve a configuration of a spoon paddle
with a positive angle or rake) or inserted through aperture 16 from the upper
side 30 and engage the lower side 32 of the paddle (to achieve a negative
angle or rake) (col. 3, ll. 56-64). The user can insert fingers through aperture
14 and grip handgrip 17 if desired (col. 3, ll. 36-42). A cover 28 may be
fitted generally over paddle blade 12 and a portion of aperture 16 and allows
another mode of use where the user does not hold grip 17, but simply
extends his/her hand against paddle blade 12 (col. 3, ll. 44-48).

FF4 Liveoak's converging supports 22, 24 terminate in reinforced end
region 26, which generally bears against the upper forearm near elbow 29
(Liveoak, col. 3, ll. 27-29). During maneuvering and rapid paddling, regions
22a, 24a of supports 22, 24 may temporarily be brought to bear against the
upper forearm (col. 3, ll. 30-33).

FF5 According to Liveoak,
end region 26 and the adjacent regions 22a and 24a
of supports 22 and 24, respectively, generally bear
against the forearm near the inner region of an
elbow of a user so that a lower side of end region
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26 and an upper side of grip 17 cooperate to
provide support for the wrist of a user, which
otherwise would be bent backwards from the strain
of using the paddle.
(Liveoak, col. 4, ll. 3-9.)

FF6 Liveoak's paddle is of curved configuration having an upper side 30
and a lower side 32. Fig. 2a shows a dihedral curvature extending laterally
across upper side 30, with dashed line 31 showing a spoon shaped curvature
of side 32. (Liveoak, col. 3, ll. 51-55.) Liveoak's paddle surfaces, on both
sides 30 and 32, have several raised or contoured regions to strengthen the
paddle and assist in its use (Liveoak, col. 4, ll. 18-20). Specifically, raised
regions 34, 36 (reinforcement and tactile indication and lateral engagement
for digits) and 50, 52 (further reinforcement) and raised rounded ridge 60
(reinforcement and abrasion resistance) all have stated functions (col. 4, ll.
20-43). Neither the upper side 30 nor the lower side 32 of Liveoak's paddle
blade 12 is substantially planar.

FF7 One of the objects of Liveoak is a reversible paddle providing two
different types of paddling configurations (col. 2, ll. 29-30). We understand
these two different types of paddling configurations to be the positive and
negative rake configurations (FF3).

FF8 Richmond is relied on by the Examiner for a suggestion to modify
Liveoak to add flanges to the support surface (end 26) to more securely hold
the forearm and to provide a substantially planar propulsion surface to
provide a flat blade which does not cup water and increase resistance to
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removing the paddle blade from the water in an upward manner (Answer 5).
Richmond's one-handed paddle comprises a U-shaped member 30 and foam
member 31 having an opening defined by opening extensions 33, 34, the
spacing between extensions 33, 34 being such that the arm of the user can be
slipped between the extensions because of the resiliency of the foam so the
arm is securely and safely held in position in the arm brace portion 13
(Richmond, col. 2, ll. 29-47). Richmond's blade portion 11 comprises three
webbed portions 14, 15, and 16 separated by reinforcing ribs 17 and 18
(Richmond, col. 2, ll. 11-13). The upper and lower surfaces of the webbed
portions appear to be planar, thereby rendering Richmond's propulsion
surface substantially planar, with the exception of the reinforcing ribs 17 and
18.

FF9 The ordinary and customary meaning of the term "receive" is "a) to let
enter; admit b) to have room for; hold; contain" (Webster's New World
Dictionary 1184-85 (David B. Guralnik ed., 2nd Coll. Ed., Simon &
Schuster, Inc. 1984).

FF10 Appellant's Specification does not define the term "receive" or
provide any disclosure that would indicate the term "receive" is to be
interpreted in any manner other than its ordinary and customary meaning.

DISCUSSION
We determine the scope of the claims in patent applications "not
solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction 'in light of the specification as it would be
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interpreted by one of ordinary skill in the art.'" Phillips v. AWH Corp., 415
F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) (en banc)
(quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70
USPQ2d 1827, 1830 (Fed. Cir. 2004)). In the absence of any indication in
Appellant's Specification that "receive" in claims 1 and 11 is to be
interpreted in any manner other than its ordinary and customary meaning
(FF10), we interpret "receive" in accordance with its ordinary and customary
definition as to let enter, admit, have room for, hold, or contain (FF9).
As the hand and wrist of the user of Liveoak's paddle are inserted into
aperture 16, defined in part by supports 22, 24 (FF3), they are "received" by
the element made up of converging supports 22, 24 in the sense that supports
22, 24 define aperture 16 and thus have room for, let enter, or admit the hand
and wrist. Actual contact is not required but, in any event, is satisfied by
Liveoak (FF5). We thus conclude that Liveoak's supports 22 and 24, relied
on by the Examiner as making up the linking element, are adapted to receive
the wrist of a user.
We turn next to the issue of whether Liveoak's supports 22, 24 are
adapted to set the hand and forearm of the user in a predetermined
alignment, as called for in claim 1. Appellant's argument that, because of
the space (aperture 16) in which Liveoak receives the wrist, a user can grip
Liveoak's handgrip 17 in a manner that causes the user's hand and forearm to
be in any of a number of random alignments, not in the claimed
predetermined alignment, is not persuasive of error in the Examiner's
anticipation rejection. Note, for example, that the same can reasonably be
said of Appellant's device, because a user is not prevented from positioning
the hand and wrist in positions not following the contour of hand support 9
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and linking element 11. In any event, it is clear from Liveoak's disclosure of
the use of the paddle 10 that the upper forearm of the user bears against end
region 26 and regions 22a and 24a of converging supports 22 and 24, while
an upper side of grip 17, in cooperation with cover 28 when used in a mode
where the user does not hold grip 17, provides support for the hand of the
user (FF3, FF4, and FF5), thereby setting the hand and forearm of the user in
a predetermined alignment, as called for in claim 1.
Appellant's argument that Liveoak does not set the wrist in a
predetermined alignment, by virtue of the flexibility of the device (FF2), that
the support discussed at column 4, lines 3-9 (FF5) does not preclude the
device from allowing articulation, and that, accordingly, supports 22a, 24a
are not "rigid or fully bracing" (Reply Br. 5) is not commensurate in scope
with claims 1 and 11, which do not preclude articulation or require "rigid or
fully bracing" support and preclusion of all movement. It is well established
that limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671 F.2d 1344, 1348, 213 USPQ 1, 5 (CCPA 1982).
The final issue raised by Appellant against the anticipation rejection,
specifically with respect to claims 5, 11, 12, and 21, is whether Liveoak
discloses the claimed "paddle-blade position." Appellant's argument seems
to imply a 10-15 degree angle is required (see Appeal Br. 5 and Reply Br.
6). The claims are not so limited and the Specification does not define
"paddle-blade position" so narrowly. Rather, Appellant's Specification
appears to require simply a positive and acute rake angle (FF1), which is
shown by Liveoak (FF3), in the mode of use where the hand is inserted
through aperture 16 from the bottom side 32 (col. 3, ll. 56-60). We thus
conclude Liveoak discloses the claimed "paddle-blade position." As for the
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limitation in claim 5 that the hand support comprises a convex surface, the
upper side 30 of Liveoak's paddle blade 12 is convex, as illustrated in Figs. 2
and 2a (FF6). Thus, Liveoak satisfies the limitation.
For the reasons set forth above, Appellant's arguments do not
demonstrate the Examiner erred in rejecting claims 1-3, 5, 6, 8, 11-16, 18,
20, and 21 as anticipated by Liveoak. The rejection is sustained.
We reach the opposite conclusion with respect to the rejection of
claims 4, 9, 17, and 19 as unpatentable over Liveoak in view of Richmond.
Both of the modifications proposed by the Examiner would thwart the
objective of Liveoak to achieve a paddle capable of providing two different
paddling configurations, namely, a positive rake configuration and a
negative rake configuration (FF7). Specifically, the provision of flanges on
Liveoak's support platform (end region 26) for receiving a user's forearm
would limit the use of Liveoak's paddle to a single paddling configuration.
Likewise, the curved configuration of Liveoak's paddle blade 12 having an
upper side 30 with a dihedral curvature and a lower side 32 with a spoon
shaped curvature is instrumental in providing two different paddling
configurations for Liveoak's paddle. To eliminate the curvature of either the
upper side 30 or the lower side 32 to provide a substantially planar
propulsion surface would be counter to the objective of Liveoak. Where the
proposed modification would render the prior art invention being modified
unsatisfactory for its intended purpose, the proposed modification would not
have been obvious. See Tec Air Inc. v. Denso Mfg. Michigan Inc., 192 F.3d
1353, 1360, 52 USPQ2d 1294, 1298 (Fed. Cir. 1999); In re Gordon, 733
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Further, a reference
teaches away from a modification when a person of ordinary skill, upon
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examining the reference, would be discouraged from making such
modification. In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed.
Cir. 1994). A person of ordinary skill in the art would have been
discouraged from making the modifications to Liveoak proposed by the
Examiner because they would appear to thwart the objective of Liveoak of
achieving a paddle providing two different paddling configurations. The
modification, therefore, would not have been obvious. The rejection of
claims 4, 9, 17, and 19 as unpatentable over Liveoak in view of Richmond is
reversed.

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SUMMARY
The decision of the Examiner is affirmed-in-part. Specifically,
decision is affirmed with respect to the rejection of claims 1-3, 5, 6, 8, 11-
16, 18, 20, and 21 as anticipated by Liveoak and reversed as to the rejection
of claims 4, 9, 17, and 19 as unpatentable over Liveoak in view of
Richmond.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2006).
AFFIRMED-IN-PART

JRG

GANZ LAW, P.C.
P. O. BOX 2200
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