Ex Parte Davidson et al

Patent Trial and Appeal Board

May 26, 2016

12925400 (P.T.A.B. May. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/925,400 10/20/2010
26530 7590 05/31/2016
LADAS & PARRY LLP
224 SOUTH MICHIGAN A VENUE
SUITE 1600
CHICAGO, IL 60604
FIRST NAMED INVENTOR
Thomas Davidson
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CU-8711 JPL 8754
EXAMINER
ARYANPOUR, MITRA
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
05/31/2016 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):
ChicagoUSPTO@ladas.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS DAVIDSON and CLIFFORD DAVIDSON
Appeal2013-003065
Application 12/925,400
Technology Center 3700
Before EDWARD A. BROWN, BRANDON J. WARNER, and
MICHAEL L. WOODS, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Thomas Davidson and Clifford Davidson ("Appellants") appeal under
35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-20 and
47----67, which are all the pending claims. Appeal Br. 3. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2013-003065
Application 12/925,400
CLAIMED SUBJECT MATTER
Appellants' disclosed invention relates to products and methods
effective for ocular enhancement conditioning of users, such as athletes.
See, e.g., Spec. 1. 1 Claims 1, 6, 20, 4 7, and 49 are independent. Claims 1
and 12,2 reproduced below with emphasis added, are illustrative of the
subject matter on appeal.
1. A method for training a user of an activity in which one
or more objects are projected towards the user, away from the
user, or at some angle by the user at differing velocity ranges
compnsmg:
a. projecting a set of objects towards, away from or at an
angle by the user at a first velocity range, then,
b. projecting a set of objects towards, away from or at an
angle by the user at a second velocity range greater than the
first velocity range, and effective to enhance the ocular focus of
the user as to the projected objects in the second velocity range,
and,
c. wherein steps (a) and (b) are carried out in
substantially continuous succession within each velocity range
and from one velocity range to another, and being performed in
a session comprising an object being projected from about
every 2 seconds to about every 60 seconds with a total of from
about 2 objects to about 10,000 objects.
We note that Appellants' Specification does not provide line or
paragraph numbering; accordingly, reference herein is made only to page
numbers.
2 We note that the structural limitations of the apparatus recited in
dependent claims 12-19 and independent claim 20 are substantially similar
(see Appeal Br., Claims App.), and that Appellants choose to argue these
limitations in the context of dependent claims 12-19, as discussed infra.
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Application 12/925,400
12. The method of claim 1 comprising the use of an air
actuated projecting apparatus effective for propelling balls at
timed intervals and at selected velocities which comprises:
a bin for holding a plurality of balls;
an air source for generating air pressure;
selecting means in communication with said bin for
periodically selecting one of said plurality of balls;
dispensing means having a ball from the exit area of the
dispensing means to a pressurizable ball propelling area
comprising a restrictor means in which the ball is seated until
enough pressure is developed to propel the ball through the
restrictor means[;] and
a barrel means having first and second ends, and
contiguous with the restrictor means at the first end for
receiving a ball propelled through the restrictor means, and in
which said barrel means is effective for shooting a ball
propelled through the restrictor means from its second end on a
trajectory, and
wherein said ball delivering means, or a portion thereof,
is transparent and effective to enable a person to see a ball
traverse the delivering means to enter the pressurizable ball
propelling area, and/or optionally to hear same.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Phillips
Actor
Bonaventura
us 5,496,025
us 5,507 ,271
US 6,447,408 Bl
3
Mar. 5, 1996
Apr. 16, 1996
Sept. 10, 2002
Appeal2013-003065
Application 12/925,400
REJECTIONS
The following rejections are before us for review:
I. Claims 47----67 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement. Final Act. 2.
II. Claims 1-11 and 47----67 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Bonaventura and Actor. Id. at 3-5.
III. Claims 12-19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bonaventura, Actor, and Phillips. Id. at
5-12.
IV. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Phillips and Actor. Id. at 12-13.
ANALYSIS
Rejection I - Claims 47-67 as lacking written description
The Examiner found that some claims include subject matter that was
not sufficiently described in the Specification as originally filed, specifically
"a fourth set of ball-shaped objects at fourth velocity and fourth frequency or
fifth set of ball-shaped objects." Final Act. 2 (underlining omitted). In
particular, the Examiner identified independent claim 4 7 (and thus claims
48, 53, 58, 59, and 64 based on their dependency therefrom) and claim 57 as
including this subject matter, where both claims recite a fourth set of
objects. 3 Id.; see also Appeal Br., Claims App.
3 We note that unidentified claims 51 and 54--5 7 also recite a fourth set
of objects, and unidentified claim 52 recites a fifth set of objects. See
Appeal Br., Claims App. Neither the Examiner nor Appellants specifically
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Application 12/925,400
Appellants contend that the Specification adequately describes this
subject matter. See Appeal Br. 26-27 (citing Spec. 25-28 (which describes,
albeit not in the same words, a fourth round using a fourth set of objects)).
In the Answer, the Examiner neither makes further mention of this particular
subject matter nor disputes the citations provided by Appellants. See
Ans. 4---6, 39--40 (no discussion of a fourth round using a fourth set ofball-
shaped objects at fourth velocity and fourth frequency). Accordingly, we do
not sustain the rejection under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement, based on this particular
subject matter as applied against claims 47, 48, 53, 57-59, and 64.
The Examiner also found that independent claim 49 (and thus claims
50-52, 54--57, 60-63, and 65----67 based on their dependency therefrom)
includes subject matter identified as the "limitation in (a) line 4" that was not
sufficiently described in the Specification as originally filed. Final Act. 2.
This limitation involves a user visually tracking an object on its trajectory
"from its point of projection to a point substantially near the user."4 Appeal
Br., Claims App. In the Answer, the Examiner expounds on this finding in
greater detail. See Ans. 5, 39--40.
addresses the subject matter of these claims; we will not do so for the first
time as part of the present appeal, as the Patent Trial and Appeal Board is
primarily a tribunal of appellate review. See Ex Parte Frye, 94 USPQ2d
1072, 1075-77 (BPAI 2010) (precedential).
4 We note that independent claim 47 (and thus claims 48, 53, 58, 59,
and 64 based on their dependency therefrom) includes the same limitation.
See Appeal Br., Claims App. However, no finding in this respect was made
in the rejection, and we will not extend such a finding to these claims for the
first time as part of the present appeal. Compare Final Act. 2, with Ans. 5,
39--40; see Frye, 94 USPQ2d at 1075-77.
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Appeal2013-003065
Application 12/925,400
Appellants do not contest this finding in the Appeal Brief~ and do not
submit a Reply Brief to argue against the additional explanation; thus,
Appellants do not apprise us of error. See Appeal Br. 26-27. Accordingly,
we summarily sustain the rejection under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement, based on this
particular subject matter as applied against claims 49-52, 54--57, 60-63, and
65----67. See In re Berger, 279 F.3d 975 (Fed. Cir. 2002).
Also in the Answer, the Examiner makes new findings to support the
rejection of the claims as lacking written description, identifying subject
matter such as arrangement of steps and combinations of colors, markings,
and/or numbers. See Ans. 5----6, 39--40. These findings were not presented in
the rejection, from which the present appeal is taken, and they are not made
part of any new ground of rejection in the Answer. Compare id., with Final
Act. 2. Therefore, such findings are not before us for review as part of the
present appeal. Accordingly, any written description rejection based
thereon, to which Appellants have not responded on the record before us, is
untimely and is not ripe for appellate adjudication. See Frye, 94 USPQ2d at
1075-77.
Rejection II - Claims 1-11 and 47-67 as unpatentable
over Bonaventura and Actor
Appellants argue against the rejection of claims 1-11 and 47----67
together as a group. See Appeal Br. 27-31. We select independent claim 1
as representative of the issues that Appellants present in the appeal of this
rejection, with claims 2-11and47----67 standing or falling therewith. See
37 C.F.R. § 41.37(c)(l)(iv).
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Application 12/925,400
The Examiner determined that a combination of teachings from
Bonaventura and Actor renders obvious the limitations of claim 1. Final
Act. 1; see also Ans. 6-8. Appellants argue that the Examiner's reliance on
Bonaventura is in error. See Appeal Br. 27-31. In particular, Appellants
assert that Bonaventura does not sufficiently teach the projecting steps being
performed in "a session," as recited in the claim. See id. We are not
persuaded by Appellants' arguments.
The claim limitation at issue recites that the projecting steps be
''performed in a session comprising an object being projected from about
every 2 seconds to about every 60 seconds with a total of from about 2
objects to about 10,000 objects." Appeal Br., Claims App. (emphasis
added). As the Examiner correctly notes, the plain language of the claim
identifies "a session" as encompassing a huge expanse of time and quantity
of objects-spanning from as little as 2 objects in 4 seconds to as much as
10,000 objects in 600,000 seconds (10,000 minutes, 166.67 hours, or 6.94
days), or any duration in between. See Ans. 41. We agree with the
Examiner that Appellants have not persuasively explained how
Bonaventura's training regimen, which one of ordinary skill in the art would
logically understand to take place within some designated time period,
would not be accomplished within such an expansive "session" as recited in
the claim.5 Moreover, we note that Bonaventura provides express disclosure
5 We note that an ordinary meaning of "session" is simply "a meeting
or period devoted to a particular activity"-in this case, the training period
during which the projecting steps are performed. See Merriam-Webster's
Collegiate Dictionary (11th ed. 2003). This ordinary meaning is consistent
with the claim language and Appellants' Specification, which does not
impart any special definition to compel a different, or narrower, construction
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Application 12/925,400
that supports the Examiner's finding that Bonaventura discloses that its
projecting steps are performed in a "single training session." See Final
Act. 3; Ans. 7-8; Bonaventura, col. 5, 11. 31-36 (claim 1).
In other words, based on the underlying record before us, we see no
persuasive reason why the training regimen of Bonaventura cannot be fairly
characterized as being performed in "a session" under the broadest
reasonable interpretation of this claim term, and Appellants do not present
sufficient factual evidence or technical reasoning to convince us otherwise.
The Examiner's findings, particularly with respect to Bonaventura disclosing
a training regimen with projecting steps being performed in "a session"
(interval during training or designated time period), are supported by a
preponderance of the evidence, as discussed supra and as detailed in the
Examiner's Answer. See Ans. 6-8, 41--42.
Appellants' additional argument regarding Actor's specific ball
trajectories is also unpersuasive because it does not address the rejection as
presented. See Appeal Br. 30-31. Actor was relied on for teaching a range
of a total number of objects being projected at a given interval, not for any
specifics relating to balls or trajectories. See Final Act. 3; Ans. 7. Thus,
Appellants' asserted distinctions based on Actor's erratic trajectories of
whiffle balls (which, incidentally, are still encompassed within the projected
"objects" recited in the claim) are not germane to the teachings of Actor
relied on in the rejection and do not apprise us of error. See Ans. 43.
of "a session," as recited in the claim. See Spec. 10. Thus, the Examiner's
interpretation of "a session" as being an "interval during training" (Ans. 7)
or a "designated time period" (id. at 8) is reasonable.
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Application 12/925,400
After careful consideration of all the evidence, Appellants' arguments
do not apprise us of error in the Examiner's findings or reasoning for the
conclusion of obviousness in the rejection presented. Accordingly, we
sustain the rejection of claim 1, and claims 2-11 and 47-67 falling
therewith, under 35 U.S.C. § 103(a) as being unpatentable over Bonaventura
and Actor.
Rejection III - Claims 12-19 as unpatentable
over Bonaventura, Actor, and Phillips
Appellants argue against the rejection of claims 12-19 together as a
group. See Appeal Br. 31. We select claim 12 as representative of the
issues that Appellants present in the appeal of this rejection, with claims
13-19 standing or falling therewith.
With respect to Rejection III, Appellants initially reiterate their
argument presented in the context of Rejection II, discussed in detail supra,
regarding Bonaventura's asserted lack of a teaching that the projecting steps
be performed in "a session," as recited in the base claim. Appeal Br. 31.
For the same reasons discussed supra, we are not apprised of a deficiency in
the teachings of Bonaventura relied on in the rejection.
Appellants also present an additional argument against this rejection,
asserting that Phillips is deficient "in not disclosing a restrictor means 110 as
described in [Appellants'] claimed invention with reference, for example, to
page 20 in the as filed Specification, and with reference to Figs. 4, 5 and 6."
Appeal Br. 31 (emphasis omitted). The claim limitation at issue recites that
the method comprises using a projecting apparatus that includes "a
pressurizable ball propelling area comprising a restrictor means in which the
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Application 12/925,400
ball is seated until enough pressure is developed to propel the ball through
the restrictor means." Appeal Br., Claims App. (emphasis added). But we
note that the structural details that Appellants assert to be lacking in
Phillips-namely, "in which the restrictor means 110 is fitted with a variable
orifice 160 comprising first 166 and second 168 semicircular portions which
can be fitted together to form an annulus 170, and which may include mating
expansion tabs 1 72, 17 4, to adjust the size of the orifice 160"-are not
recited in the claim. Appeal Br. 31.
This argument is not convincing because, as the Examiner correctly
states, "the features upon which [Appellants] rel[y] (i.e., the specific
structure of the restrictor means) are not recited in the rejected claim[]."
Ans. 44 (emphasis added). As stated by our reviewing court in In re Hiniker
Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), "the name of the game is the
claim." It is well established that limitations not appearing in the claim
cannot be relied upon for patentability. See In re Self, 671 F.2d 1344, 1348
(CCPA 1982). Thus, the Examiner is correct in noting that "[a]lthough the
claims are interpreted in light of the specification, limitations from the
specification are not read into the claims."6 Ans. 44 (citing In re Van Geuns,
988 F.2d 1181, 1184 (Fed. Cir. 1993)).
6 We note that such limitations from the Specification, including the
specific structure of the restrictor means (and equivalents thereof), may be
relevant ifthe claim were construed to invoke the construction of 35 U.S.C.
§ 112, sixth paragraph. But we also note that, on the record before us, the
Examiner has made it clear that the claim has been interpreted as not
invoking the construction of 35 U.S.C. § 112, sixth paragraph, and that
Appellants do not urge that it should be interpreted in such a manner. See
Ans. 44. Thus, unless and until the claim were to require such structure,
either by invoking the construction of 35 U.S.C. § 112, sixth paragraph, or
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Application 12/925,400
After careful consideration of all the evidence, Appellants' arguments
do not apprise us of error in the Examiner's findings or reasoning for the
conclusion of obviousness in the rejection presented. Accordingly, we
sustain the rejection of claim 12, and claims 13-19 falling therewith, under
35 U.S.C. § 103(a) as being unpatentable over Bonaventura, Actor, and
Phillips.
Rejection IV - Claim 20 as unpatentable over Phillips and Actor
With respect to the rejection of claim 20, Appellants do not set forth
any additional substantive arguments separate from the arguments discussed
supra, asserting only that the combination of references is insufficient "for
the very same reasons set out above." Appeal Br. 32.
As discussed in detail supra, Appellants' arguments do not apprise us
of insufficiency or other error in the Examiner's findings or conclusion of
obviousness. Accordingly, for the same reasons, we sustain the rejection of
claim 20 under 35 U.S.C. § 103(a) as being unpatentable over Phillips and
Actor.
by reciting the specific structure of the restrictor means, we agree with the
Examiner that the restrictor of Phillips meets the broadest reasonable
interpretation of the "restrictor means" as recited in the claim. See id.
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Application 12/925,400
DECISION
The Examiner's decision to reject claims 47----67 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement is REVERSED as to claims 47, 48, 53, 58, 59, and 64, and is
AFFIRMED as to claims 49-52, 54--57, 60----63, and 65----67, as set forth
above.
The Examiner's decision to reject claims 1-11 and 47----67 under
35 U.S.C. § 103(a) as being unpatentable over Bonaventura and Actor is
AFFIRMED.
The Examiner's decision to reject claims 12-19 under 35 U.S.C.
§ 103(a) as being unpatentable over Bonaventura, Actor, and Phillips is
AFFIRMED.
The Examiner's decision to reject claim 20 under 35 U.S.C. § 103(a)
as being unpatentable over Phillips and Actor is AFFIRMED.
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)(l )(iv).
AFFIRMED
12