Ex Parte Bonner

Patent Trial and Appeal Board

Sep 18, 2017

14231787 (P.T.A.B. Sep. 18, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/231,787 04/01/2014 Cindi Bear Bonner 10280-002US1 4208
96039 7590 09/20/2017
Mennier Parlin Rr Piirfman T T C
EXAMINER
999 Peachtree Street NE VENNE, DANIEL V
Suite 1300
Atlanta, GA 30309 ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
09/20/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@mcciplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CINDI BEAR BONNER
Appeal 2016-001433
Application 14/231,7871
Technology Center 3600
Before BARBARA A. BENOIT, AMBER L. HAGY, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3—7, 9, 11—14, 17—29, and 32—34, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellant’s Brief (“App. Br.”) identifies Fitness OnBoard, Inc. as the real
party in interest. App. Br. 3.
Appeal 2016-001433
Application 14/231,787
CLAIMED SUBJECT MATTER
The claims are directed to a stand up paddleboard (“SUP”) that
incorporates strength training using exercise tubing. Spec. H 43 44. The
SUP is generally similar to a traditional SUP, but additionally includes
attachment areas providing connecting points for exercise tubing (e.g.,
resistance bands). The exercise tubing can be used to allow strength training
exercises to be performed while balancing on the SUP in the water. Spec.
145.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A stand up paddleboard (SUP) exercise system,
comprising:
a. a SUP, wherein the SUP comprises:
a floating body having a bow end, a stem end, a top surface
and a bottom surface; and
at least one attachment region located on the top surface,
wherein at least one attachment member is located within the
attachment region; and wherein the SUP exercise system further
comprises:
b. an elastic exercise tubing or band connected to the
attachment member; and
c. a plurality of handles, each handle formed by a
portion of the tubing or band, or attached to the elastic exercise
tubing or band.
App. Br. 23 (Claims Appendix).
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Appeal 2016-001433
Application 14/231,787
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lipman
Blancher
Wiginton
Eckert et al.
US 8,590,478 B2
US 8,721,507 B2
US 2008/0108260 Al
US 2012/0122357 Al
Nov. 26, 2013
May 13, 2014
May 8, 2008
May 17, 2012
Thera-Band Resistance Band & Tubing Instruction Manual, Vol. 4,
2006 (“Thera-Band”)
REJECTIONS
Claims 1, 9, 17, 18, and 20—24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lipman, Wiginton, and Blancher. Final
Act. 2—5.
Claims 19, 25, and 32—34 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lipman, Wiginton, Blancher, and Thera-Band.
Final Act. 5.
Claims 1, 3, 6—9, 11-14, 17, 18, and 20—24 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Eckert, Wiginton, and Blancher.
Final Act. 5—7.
Claims 19, 25—29, and 32—34 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Eckert, Wiginton, Blancher, and Thera-Band.
Final Act. 7—8.
ISSUE
Has the Examiner erred in finding Appellant’s Rule 132 Declaration
insufficient to overcome the rejections under 35 U.S.C. § 103(a)?
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Appeal 2016-001433
Application 14/231,787
ANALYSIS
Independent claims 1, 9, 22, and 32, are rejected under 35 U.S.C.
§ 103(a) based on two separate, but overlapping combinations of prior art.
The first rejection combines the teachings of Lipman, Wiginton, and
Blancher. The second rejection combines Eckert, Wiginton, and Blancher.
The Examiner finds Lipman and Eckert each teach the use of stand up
paddleboards. Final Act. 2—3 (Lipman), 5—6 (Eckert). The Examiner further
finds Wiginton discloses improving balance through the use of a flexible
strap connected to an attachment member within an attachment region of a
surfboard. Final Act. 3 (in combination with Lipman), 6 (in combination
with Eckert). The Examiner finds Blancher discloses the use of a portable
resistance band system which is attached to a flat board having a balance
element that compels the use of stabilizer muscles to maintain balance while
rocking and sliding. Final Act. 3, 6. The Examiner finds a person of
ordinary skill in the art would have found it obvious to combine the
teachings of the references to arrive at the claimed invention because it
combines known features to achieve expected results. Final Act. 4, 6—7.
Appellant s Declaration
Appellant does not dispute the references teach or suggest the
structural limitations recited in the independent claims.2 Instead, Appellant
contends, inter alia, even if prima facie obviousness has been established,
2 We note Appellant contests the Examiner’s finding that the method steps
recited in independent claim 9 are inherent in the function of a device
produced by the combined teachings of the cited references. Although we
need not address that argument here, we note the Examiner has not identified
any evidence, nor is any apparent to us, that the steps recited in claim 9
would have been inherently performed in any such device.
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Appeal 2016-001433
Application 14/231,787
the Examiner has erred by failing to properly consider rebuttal evidence of
non-obviousness in the form of a Declaration of Shane Perrin submitted
under 37 C.F.R. § 1.132 (“the Perrin Declaration”) with its January 30, 2015
response. More particularly, Appellant argues the Perrin Declaration
provides evidence and opinion showing unexpected results achieved by the
claimed invention. App. Br. 10. According to Appellant, the Examiner
“summarily dismisses the entire declaration” without providing an adequate
explanation. App. Br. 14—15. We agree with Appellant.
Objective evidence of non-obviousness submitted by a patent
applicant must be considered. In re Sernaker, 702 F.2d 989, 996 (Fed. Cir.
1983). In order to have significant probative value, there must be a nexus
between the merits of the claimed invention and the submitted evidence.
M.P.E.P. § 716.01(b) (citing Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985)). Objective
evidence may also take the form of opinion testimony from an expert.
M.P.E.P. § 716.01 (c)(III).
According to his Declaration, Mr. Perrin is an expert in the field of
standup paddleboards and resistance band fitness, holding certifications from
the World Paddle Association and World Standup Paddleboard Association.
Perrin Decl. Tflf 1—5. Mr. Perrin avers familiarity with the contents of
Appellant’s application, a commercial embodiment of Appellant’s invention,
and the prior art cited by the Examiner in rejecting Appellant’s claims.
Perrin Decl. Tflf 6—7. Mr. Perrin further provides background regarding the
operation and use of stand up paddleboards, explaining that due to
movement arising from water undulation, an SUP is unrestricted in
rotational and directional movement, and provides excellent core muscle
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Appeal 2016-001433
Application 14/231,787
exercise. Perrin Decl. 19. Against this background, Mr. Perrin then opines
that the claimed exercise system achieves “a much better than expected
extremity workout using its attached bands versus what would be expected
from the theoretical combination of Lipman or Eckert, Wiginton, and
Blancher.” Perrin 111. Mr. Perrin further opines that “the water based
platform significantly changes the physical character of the user’s extremity
resistance workout by altering how the user interacts with the attached
resistance tubes or bands [in a way] not appreciated by [the prior art
references].” Id.
Here, in finding the Perrin Declaration insufficient to overcome the
obviousness determination, the Examiner finds:
Regarding appellant's alleged unexpected results, the
affidavit/declaration submitted for evidence does not include any
facts to substantiate the statements made by the submitter and
merely conveys the submitter's opinions that the claimed device
provides an exercise improvement that is not realized by the prior
art. Insufficient factual evidence showing unexpected results as
a secondary consideration to overcome the prior art has been
introduced by appellant.
Ans. 6. We find this analysis flawed in two key respects.
First, the Examiner characterizes Mr. Perrin’s statements as
“merely . . . opinions,” and accords it no weight for that reason. Such an
approach is inconsistent with both case law and Office policy which requires
that “opinion testimony is entitled to consideration and some weight so long
as the opinion is not on the ultimate legal conclusion at issue.”
M.P.E.P. § 716.01 (c)(III). Mr. Perrin’s declaration offers no opinion on the
legal conclusion of obviousness. Rather, it establishes his qualifications as
an expert, and offers his opinion and underlying reasoning for how and why
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Application 14/231,787
the claimed invention achieves unexpected results. It is impermissible for
the Examiner to reject the evidence provided in the declaration simply
because it takes the form of opinion testimony. The Examiner’s analysis
seems to suggest that unexpected results can only be established with test
data. Although test data demonstrating unexpected results will often have
more probative value than mere opinion testimony, we are unware of any
precedent that requires the use of test data to establish unexpected results.
That Appellant has not produced test data to support Mr. Perrin’s opinions
does not mean that his opinions have no probative value.
Second, we disagree with the Examiner that the declaration is devoid
of factual support, and we find Appellant’s arguments persuasive on this
point. Appellant argues, and we agree, “[statements 1—9 demonstrate that
Mr. Perrin factually established his credentials and provided relevant factual
statements about SUP behavior.” Reply Br. 2. We also agree with
Appellant that “[o]nly after providing] these facts, did Mr. Perrin opine on
the prior art and the unexpected results over that art.” Id. In particular, Mr.
Perrin provided his opinion that the water-based platform provides a “much
better than expected extremity workout,” and supported that opinion by
explaining that the claimed exercise system “significantly changes the
physical character of the user’s extremity resistance workout.” Perrin Decl.
111.
Because the Examiner has erred by failing to appropriately assign
probative weight to the Perrin Declaration, we do not sustain the rejections
of independent claims 1, 9, 22, and 32 under 35 U.S.C. § 103(a). For the
same reasons, we do not sustain the rejections of claims 3—7, 11—14, 17—21,
23—29, and 33—34, which depend therefrom.
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Application 14/231,787
DECISION
We reverse the Examiner’s rejection of claims 1, 3—7, 9, 11—14, 17—
29, and 32-34.
REVERSED
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