10274301 (B.P.A.I. Dec. 13, 2011)

Ex Parte Britto et al

Board of Patent Appeals and InterferencesDec 13, 2011

10274301 (B.P.A.I. Dec. 13, 2011)

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. 10/274,301 10/18/2002 Eric Britto T0522.70001US00 3982 7590 12/13/2011 Eric S. Britto True Bounce, Inc. 56 Conduit Street New Bedford, MA 02745 EXAMINER CHAMBERS, MICHAEL S ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 12/13/2011 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE 1 ___________ 2 3 BEFORE THE BOARD OF PATENT APPEALS 4 AND INTERFERENCES 5 ___________ 6 7 Ex parte ERIC BRITTO and WAYNE D. NEWTON 8 ___________ 9 10 Appeal 2009-013967 11 Application 10/274,301 12 Technology Center 3700 13 ___________ 14 15 16 Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 17 MEREDITH C. PETRAVICK, Administrative Patent Judges. 18 FETTING, Administrative Patent Judge. 19 DECISION ON APPEAL 20 21 Appeal 2009-013967 Application 10/274,301 2 STATEMENT OF THE CASE1 1 Eric Britto and Wayne D. Newton (Appellants) seek review under 2 35 U.S.C. § 134 of the final rejection of claims 1-5, 7, 9, 10, 13-15, 17, 18, 3 20, 21, 23, 24, 26-36, and 39-49, all of the claims pending in the application 4 on appeal. We have jurisdiction pursuant to 35 U.S.C. § 6(b). 5 Appellants’ application is directed to a polymer basketball backboard. 6 Exemplary claim 1 is reproduced below [some paragraphing added]. 7 1. A basketball goal assembly comprising: 8 a basketball backboard comprising 9 a polymer sheet constructed and arranged to serve as a 10 basketball backboard and 11 including a plurality of voids, 12 none of which are for affixing a basketball rim or a 13 support mechanism to the polymer sheet, 14 where the voids reduce a bounce characteristic of a 15 region of the polymer sheet as compared to a 16 bounce characteristic of an otherwise identical 17 region of a polymer sheet having no voids; 18 a basketball rim affixed to the basketball backboard; and 19 a support mechanism on which the basketball backboard is 20 mounted, 21 wherein the polymer sheet has dimensions making the 22 basketball backboard suitable for official basketball league use, 23 and 24 wherein the basketball goal assembly is mounted indoors as 25 part of a basketball court. 26 1 We refer to Appellants’ Appeal Brief (“App. Br.,” filed June 5, 2009, correcting an Appeal Brief filed June 29, 2007, in turn correcting an Appeal Brief filed February 1, 2007) and Reply Brief (“Reply Br.,” filed August 13, 2007), and the Examiner’s Answer (“Ans.,” mailed August 13, 2007). Appeal 2009-013967 Application 10/274,301 3 EVIDENCE 1 The Examiner relies upon the following prior art as evidence of 2 unpatentability: 3 Albach US 2,363,634 Nov. 28, 1944 Sheftel US 2,986,395 May 30, 1961 Sheets US 3,233,898 Feb. 8, 1966 Hying US 5,839,982 Nov. 24, 1998 4 Anti-vandalism perforated plate backboard minibasket, Mondo Iberica, 5 Jul. 31, 2002, www.mondoiberica.es/MondoENG/Catalogo/Baloncesto/ 6 PK880.htm, (hereinafter “Mondo”). 7 Steel Fan-Shaped Backboard with Goal from Sportsplay, Cannon, Aug. 8 5, 2007, http://web.archive.org/webI20021123074714/ 9 cannonsports.com/scripts/Product3.asp?Category=Basketball 10 (hereinafter “Cannon”). 11 Perforated Plastic, Ametco, Sep. 24, 2004, www.ametco.com/ 12 perfplastic/index.html (hereinafter “Ametco”). 13 TrueBounce Backboards, TrueBounce, Jun. 10, 2005, 14 www.truebounce.com/tbstory.htm (hereinafter “TrueBounce”). 15 GROUNDS OF REJECTION 16 Claims 1, 2, 7, 10, 14, 20, 21, and 24 stand rejected under 35 U.S.C. 17 § 103(a) as unpatentable over TrueBounce and Hying.2 18 Claims 1-5, 7, 9, 10, 13-15, 17, 18, 20, 21, 23, and 24 stand rejected 19 under 35 U.S.C. § 103(a) as unpatentable over Admitted Prior Art and 20 Hying. 21 Claims 1, 2, 7, 9, 10, 13-15, 21, 23, 24, 26, 27, 29, 33-36, and 39 22 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Sheftel and 23 Ametco. 24 2 This rejection nominally also includes claims 6 and 25, but these claims are cancelled. Appeal 2009-013967 Application 10/274,301 4 Claims 3-5, 17, 18, and 30-32 stand rejected under 35 U.S.C. § 103(a) 1 as unpatentable over the prior art applied to claim 1, supra, and Cannon.3 2 Claim 20 stands rejected under 35 U.S.C. § 103(a) as being 3 unpatentable over the prior art applied to claim 15, supra, and Hying. 4 Claim 28 stands rejected under 35 U.S.C. § 103(a) as being 5 unpatentable over the prior art applied to claim 27, supra, and Hying. 6 Claims 40-49 stand rejected under 35 U.S.C. § 103(a) as unpatentable 7 over Admitted Prior Art, Hying, and Sheets. 8 Claims 40-49 stand rejected under 35 U.S.C. § 103(a) as unpatentable 9 over Sheftel, Ametco, and Albach. 10 ISSUES 11 The primary issues of obviousness turn on whether it was predictable 12 to make known prior art backboards with polymer and whether it was 13 predictable to mount those indoors, either in general, or in a fixed manner. 14 FACTS PERTINENT TO THE ISSUES 15 The following enumerated Findings of Fact (FF) are believed to be 16 supported by a preponderance of the evidence. 17 Facts Related to the Prior Art 18 TrueBounce 19 01. TrueBounce is directed to the history of the TrueBounce 20 company. 21 02. The TrueBounce president knew of perforated backboards as a 22 child. TrueBounce 2, para. 3. 23 Hying 24 03. Hying is directed to basketball backboards. Hying, col. 1, l. 13. 25 3 This rejection nominally includes claim 19, but this claim is cancelled. Appeal 2009-013967 Application 10/274,301 5 04. Hying states that basketball backboards are commonly made from 1 plastic material such as acrylic. Hying, col. 1, ll. 26-27. 2 05. Hying’s Fig. 3 shows that a basketball backboard may be mounted 3 on a portable structure that may be moved on wheels. 4 Sheftel 5 06. Sheftel is directed to basketball goals. Sheftel, col. 1, ll. 15. 6 07. Sheftel describes perforating the backboard to decrease wind 7 resistance. Sheftel, col. 3, ll. 64-66. 8 08. Sheftel’s basketball goal has wheels for portability and is for both 9 indoor and outdoor use. Sheftel, col. 3, l. 67 – col. 4, l. 1. 10 Ametco 11 09. Ametco describes perforated plastic products. Ametco 1. 12 10. Ametco describes perforated plastic as being suitable to many of 13 the same applications as perforated metal, while being both lighter 14 and more corrosion resistant than metal. Ametco 1. 15 Facts Related to Appellants’ Response filed December 2005 16 11. This response is directed to overcoming a rejection over 17 TrueBounce. 18 12. Appellants acknowledge the contents of the TrueBounce website, 19 but state that the contract in question was entered into in 1999, 20 and was for basketball backboards made from wood and 21 perforated metal, but not polymer. Response 9. 22 ANALYSIS 23 All of the arguments contend that making the backboard structurally 24 recited in the claims with polymer and placing it indoors patentably 25 distinguishes over the prior art. TrueBounce, the admitted prior art, and 26 Appeal 2009-013967 Application 10/274,301 6 Sheftel each describe the backboard with voids as recited in the claims. 1 TrueBounce further provides evidence that the backboard bounce 2 characteristics were altered with whatever material was used in the admitted 3 prior instances of backboards with voids, and thus the bounce characteristic 4 alteration is inherent in adding voids to a backboard. 5 [O]ur recent decision in Schering Corp. v. Geneva 6 Pharmaceuticals, Inc., 339 F.3d [1373,] 1377-78 [(Fed. Cir. 7 2003)], has clarified any confusion on this score. Simply put, 8 the fact that a characteristic is a necessary feature or result of a 9 prior-art embodiment (that is itself sufficiently described and 10 enabled) is enough for inherent anticipation, even if that fact 11 was unknown at the time of the prior invention. See, e.g., id. at 12 1378; Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347 13 (Fed. Cir. 1999) (“The discovery of a previously unappreciated 14 property of a prior art composition, or of a scientific 15 explanation for the prior art's functioning, does not render the 16 old composition patentably new to the discoverer.”). 17 Toro Co. v. Deere & Co., 355 F.3d 1313, 1321 (Fed. Cir. 2004). 18 Hying and Ametco each show that it was predictable to use polymer 19 material for such backboards. Hying and Sheftel each show that it was 20 predictable to roll such a backboard with voids onto any accessible 21 basketball court, whether indoor or outdoor. The clear reason for rolling 22 such a goal between indoors and outdoors would have been to avoid 23 additional investment in goals. 24 The issue then is whether it was predictable, for those claims that 25 recite methods for actually affixing the backboard to an indoor court or 26 courts having such structures affixed indoors, to so affix the backboard. For 27 these claims, we agree with Appellants that there is no evidence that one of 28 ordinary skill would have considered doing so. We also agree that the 29 Appeal 2009-013967 Application 10/274,301 7 declarations provide further evidence that one of ordinary skill would not 1 have affixed such a backboard indoors. 2 We are unpersuaded by Appellants’ arguments regarding affixing in 3 claims 14 and 40 and the claims depending therefrom. App. Br. 14, 24. 4 These claims are directed to the goal assembly itself, not the structure on 5 which it is placed. Thus, in claims 14 and 40, the wherein clause, reciting 6 that the goal assembly is affixed, is therefore a step of placement rather than 7 a structural limitation. “[A]pparatus claims cover what a device is, not what 8 a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 9 1464, 1468 (Fed. Cir. 1990). 10 CONCLUSIONS OF LAW 11 The rejection of claims 1, 2, 7, 10, and 14 under 35 U.S.C. § 103(a) as 12 unpatentable over TrueBounce and Hying is proper. 13 The rejection of claims 20, 21, and 24 under 35 U.S.C. § 103(a) as 14 unpatentable over TrueBounce and Hying is improper. 15 The rejection of claims 1-5, 7, 9, 10, 13, and 14 under 35 U.S.C. 16 § 103(a) as unpatentable over Admitted Prior Art and Hying is proper. 17 The rejection of claims 15, 17, 18, 20, 21, 23, and 24 under 35 U.S.C. 18 § 103(a) as unpatentable over Admitted Prior Art and Hying is improper. 19 The rejection of claims 1, 2, 7, 9, 10, 13, and 14 under 35 U.S.C. 20 § 103(a) as unpatentable over Sheftel and Ametco is proper. 21 The rejection of claims 15, 21, 23, 24, 26, 27, 29, 33-36, and 39 under 22 35 U.S.C. § 103(a) as unpatentable over Sheftel and Ametco is improper. 23 The rejection of claims 3-5 under 35 U.S.C. § 103(a) as unpatentable 24 over the prior art applied to claim 1, supra, and Cannon is proper. 25 Appeal 2009-013967 Application 10/274,301 8 The rejection of claims 17, 18, and 30-32 under 35 U.S.C. § 103(a) as 1 unpatentable over the prior art applied to claim 1, supra, and Cannon is 2 improper. 3 The rejection of claim 20 under 35 U.S.C. § 103(a) as unpatentable 4 over the prior art applied to claim 15, supra, and Hying is improper. 5 The rejection of claim 28 under 35 U.S.C. § 103(a) as unpatentable 6 over the prior art applied to claim 27, supra, and Hying is improper. 7 The rejection of claims 40-44 under 35 U.S.C. § 103(a) as 8 unpatentable over Admitted Prior Art, Hying, and Sheets is proper. 9 The rejection of claims 45-49 under 35 U.S.C. § 103(a) as 10 unpatentable over Admitted Prior Art, Hying, and Sheets is improper. 11 The rejection of claims 40-44 under 35 U.S.C. § 103(a) as 12 unpatentable over Sheftel, Ametco, and Albach is proper. 13 The rejection of claims 45-49 under 35 U.S.C. § 103(a) as 14 unpatentable over Sheftel, Ametco, and Albach is improper. 15 DECISION 16 The rejection of claims 1-5, 7, 9, 10, 13, 14, and 40-44 is affirmed. 17 The rejection of claims 15, 17, 18, 20, 21, 23, 24, 26-36, 39, and 45-18 49 is reversed. 19 No time period for taking any subsequent action in connection with 20 this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 21 § 1.136(a)(1)(iv). 22 23 AFFIRMED-IN-PART 24 25 26 nlk 27