Ex parte EDWARD A. SCHROEDER

Board of Patent Appeals and Interferences

Jul 31, 1997

07921645 (B.P.A.I. Jul. 31, 1997)

Application for patent filed July 30, 1992. According to1
the appellant, the application is a continuation-in-part of
Application 07/889,124, filed May 27, 1992, now abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte EDWARD A. SCHROEDER
____________
Appeal No. 95-0575
Application 07/921,6451
____________
HEARD: June 10, 1997
____________
Before FRANKFORT, STAAB, and McQUADE, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1 through
10, 13 through 20 and 22 through 24, all of the claims pending in
the application.
The invention relates to “an adjustable height basketball
backboard support system wherein the basketball backboard is
mounted to a support post through a parallelogram linkage and
Appeal No. 95-0575
Application No. 07/921,645
2
wherein a counter-weight is utilized to allow for easy raising
and lowering [of] the height of the basketball backboard”
(specification, page 2). Claims 1, 14, 20 and 24, the four
independent claims on appeal, are illustrative. Copies of these
claims as submitted with the appellant’s main brief (Paper No.
10) are appended hereto.
The prior art items relied upon by the examiner as evidence
of obviousness are:
Cardarelli 452,211 May 12, 1891
Bottorff 3,341,197 Sep. 12, 1967
Sinner 3,722,886 Mar. 27, 1973
Bearson et al. (Bearson) 3,765,676 Oct. 16, 1973
Wilson et al. (Wilson) 4,145,044 Mar. 20, 1979
Haston et al. (Haston) 4,526,367 July 2, 1985
Barisa 4,702,450 Oct. 27, 1987
Grable 4,759,545 Jul. 26, 1988
Nye 4,781,375 Nov. 1, 1988
Friesen 4,801,142 Jan. 31, 1989
Lykens 4,941,661 July 17, 1990
Exhibit A - three photographs of an adjustable basketball
backboard system which is alleged by the examiner “to have been
Appeal No. 95-0575
Application No. 07/921,645
The photographs were submitted in Design Application2
07/672,595 on March 19, 1991, the filing date of the application.
This design application is referred to on page 2 of the
appellant’s specification, and has since matured into U.S. Patent
No. Des. 343,883, granted February 1, 1994. The appellant has
not disputed that the adjustable basketball backboard support
system shown in the photographs is prior art with respect to the
subject matter recited in the appealed claims. Indeed, the
appellant concedes that the system shown in the photographs is
that illustrated in the design patent (see page 7 in the main
brief), which patent is prior art with respect to the subject
matter recited in the appealed claims under 35 U.S.C. § 102(e).
In an apparent attempt to simplify his discussion of the system
shown in the photographs, the examiner seems to have prepared a
“Sketch A” of the system with reference numbers added (see the
first Office action, page 2). Although the record before us does
not contain a copy of the sketch, the examiner’s discussion of
the prior art system is clear enough for us to proceed and review
the merits of the appealed rejections.
3
in public use at least as early as March 19, 1991” (first Office
action, Paper No. 3, page 2) 2
The claims on appeal stand rejected under 35 U.S.C. § 103 as
follows:
a) claims 1 through 3, 5 and 10 as being unpatentable over
Exhibit A;
b) claims 3, 4, 20, 22 and 23 as being unpatentable over
Exhibit A in view of Bearson and Barisa;
c) claims 1 through 3 and 6 through 10 as being unpatentable
over Exhibit A in view of Bottorff, Haston, Wilson, Sinner and
Grable;
d) claim 13 as being unpatentable over Exhibit A in view of
Nye;
Appeal No. 95-0575
Application No. 07/921,645
The record (Paper No. 13) indicates that the examiner has3
refused entry of the appellant’s reply brief (Paper No. 12).
Thus, we have not considered the arguments advanced in the reply
brief in reviewing the merits of the examiner’s rejections.
4
e) claim 13 as being unpatentable over Exhibit A in view of
Bearson and Barisa, and further in view of Nye;
f) claims 14, 15 and 18 as being unpatentable over Exhibit A
in view of Nye, and further in view of Lykens, Friesen and
Cardarelli;
g) claims 16 and 17 as being unpatentable over Exhibit A in
view of Nye, Lykens, Friesen and Cardarelli, and further in view
of Bearson and Barisa;
h) claim 19 as being unpatentable over Exhibit A in view of
Nye, Lykens, Friesen and Cardarelli, and further in view of
Bottorff, Haston, Wilson, Sinner and Grable; and
i) claim 24 as being unpatentable over Exhibit A in view of
Lykens, Friesen and Cardarelli.
Reference is made to the final rejection (Paper No. 6) and
to the main and supplemental answers (Paper Nos. 11 and 18) for
the examiner’s position in support of these rejections, and to
the main and supplemental reply briefs (Paper Nos. 10 and 14) for
the appellant’s position thereagainst.3
Having carefully considered the scope and content of the
applied prior art, the level of ordinary skill in the art as
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Application No. 07/921,645
5
demonstrated by the applied prior art, the differences between
the claimed invention and the applied prior art and the
respective viewpoints advanced by the appellant and the examiner,
we conclude that none of the appealed rejections is well founded.
Independent claim 1 recites an adjustable basketball
backboard support system comprising, inter alia, a backboard, a
support member, a parallelogram linkage system interconnecting
the backboard and the support member, an adjustment means
including an adjustment link, and a counter-weight means for
applying a primary force to the parallelogram linkage system in
opposition to and substantially equal to the force applied to the
parallelogram linkage system by the weight of the backboard. The
examiner concedes that the adjustable basketball backboard system
shown in Exhibit A does not meet the limitation in claim 1
requiring the adjustment link to include the counter-weight means
(see page 2 in the final rejection). In this regard, the
examiner notes that the corresponding counter-weight means in the
Exhibit A system is mounted at the end of an extension of one of
the links in the parallelogram linkage system. Nonetheless, the
examiner concludes that the prior art counter-weight means
“could” be mounted on the adjustment link, and that it would have
been an obvious matter of choice to so mount it, “this being no
Appeal No. 95-0575
Application No. 07/921,645
6
more than a change of form or design without a change of
function” (final rejection, page 2).
Rejections based on 35 U.S.C. § 103 must rest on a factual
basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177-78
(CCPA 1967). In making such a rejection, the examiner has the
initial duty of supplying the requisite factual basis and may
not, because of doubts that the invention is patentable, resort
to speculation, unfounded assumptions or hindsight reconstruction
to supply deficiencies in the factual basis. Id.
In the present case, the examiner has failed to advance any
factual basis to support the conclusion that it would have been
obvious to one of ordinary skill in the art to modify the Exhibit
A adjustable basketball backboard system in the manner proposed.
The mere fact that the prior art could be so modified would not
have made the modification obvious unless the prior art suggested
the desirability of the modification (see In re Gordon, 733 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984)). Exhibit A
contains no such suggestion.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103 rejection of claim 1, or of claims 2, 3, 5 and 10 which
depend therefrom, as being unpatentable over Exhibit A.
Bearson, Barisa, Bottorff, Haston, Wilson, Sinner and/or
Grable, applied by the examiner to meet other features of the
Appeal No. 95-0575
Application No. 07/921,645
7
claimed invention, do not overcome the foregoing deficiency in
Exhibit A with respect to the subject matter recited in claim 1.
Accordingly, we shall not sustain the standing 35 U.S.C. § 103 of
claims 3 and 4, which depend from claim 1, as being unpatentable
over Exhibit A in view of Bearson and Barisa, or the standing
35 U.S.C. § 103 rejection of claim 1, and of claims 2, 3 and 6
through 10 which depend therefrom, as being unpatentable over
Exhibit A in view of Bottorff, Haston, Wilson, Sinner and Grable.
Independent claim 20 recites an adjustable basketball
backboard support system comprising, inter alia, a parallelogram
linkage system for interconnecting a backboard and a support
member, adjustment means for adjustably connecting one of the
links of the parallelogram linkage system to the support member,
and a counter-weight means including a mass on the adjustment
means. The examiner concedes that the adjustable basketball
backboard system shown in Exhibit A does not meet the limitation
in claim 20 requiring “varying means for adjusting the connection
of said adjustment means to said one link to vary said forces
applied by said mass” (see page 3 in the final rejection).
According to the examiner, it would have been obvious to one of
ordinary skill in the art to provide the system shown in Exhibit
A with such a varying means in view of Bearson and Barisa (see
page 3 in the final rejection).
Appeal No. 95-0575
Application No. 07/921,645
8
The examiner cites Bearson for its disclosure of an
adjustable basketball backboard support system wherein the weight
of the backboard is counterbalanced by a pair of adjustable
torsion springs, and Barisa for its disclosure of an adjustable
parallelogram support system for a viewing device wherein one of
the parallelogram links has an extension which mounts an
adjustably positioned weight to counterbalance the weight of the
viewing device. There is nothing in these disparate teachings
which would have suggested providing the adjustable basketball
backboard system shown in Exhibit A with a varying means of the
sort defined in claim 20.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103 rejection of claim 20, or of claims 22 and 23 which depend
therefrom, as being unpatentable over Exhibit A in view of
Bearson and Barisa.
We shall not sustain the standing 35 U.S.C. § 103 rejections
of claim 13, which depends from claim 1, as being unpatentable
over Exhibit A in view of Nye, and as being unpatentable over
Exhibit A in view of Bearson and Barisa, and further in view of
Nye. Nye, Bearson and/or Barisa, applied by the examiner to meet
other features of the claimed invention, do not overcome the
above discussed deficiency in Exhibit A with respect to the
subject matter recited in parent claim 1.
Appeal No. 95-0575
Application No. 07/921,645
9
Independent claim 14 recites an adjustable basketball
backboard support system comprising, inter alia, a parallelogram
linkage system for interconnecting a backboard and a support
member, and adjustment means for adjustably connecting one of the
links of the parallelogram linkage system to the support member.
The examiner concedes that the adjustable basketball backboard
system shown in Exhibit A, as proposed to be modified in view of
Nye, does not meet the limitation in claim 14 requiring the
adjustment means to include “a clamp mounted to said support
[member] and having a plurality of holes defining a plurality of
heights of said backboard for mounting to said support member”
(see page 5 in the final rejection). According to the examiner,
it would have been obvious to one of ordinary skill in the art to
provide the system shown in Exhibit A with such a clamp in view
of Lykens, Friesen and Cardarelli (see pages 5 and 6 in the final
rejection).
The examiner cites Lykens for its disclosure of an
adjustable basketball backboard support system mounted to a
support member by clamps, Friesen for its disclosure of a winch-
operated adjustable basketball backboard support system mounted
to a support member, and Cardarelli for its disclosure of an
adjustable electric lamp mounted to a support member by clamps.
There is nothing in these disparate teachings which would have
Appeal No. 95-0575
Application No. 07/921,645
10
suggested providing the adjustable basketball backboard system
shown in Exhibit A with a clamp of the type specifically defined
in claim 14.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103 rejection of claim 14, or of claims 15 and 18 which depend
therefrom, as being unpatentable over Exhibit A in view of Nye,
and further in view of Lykens, Friesen and Cardarelli.
Since Bearson, Barisa, Bottorff, Haston, Wilson, Sinner
and/or Grable, applied by the examiner to meet other features of
the claimed invention, do not overcome the foregoing deficiency
in Exhibit A, Nye, Lykens, Friesen and Cardarelli with respect to
the subject matter recited in claim 14, we shall not sustain the
standing 35 U.S.C. § 103 of claims 16 and 17, which depend from
claim 14, as being unpatentable over Exhibit A in view of Nye,
Lykens, Friesen and Cardarelli, and further in view of Bearson
and Barisa, or the standing 35 U.S.C. § 103 rejection of claim
19, which depends from claim 14, as being unpatentable over
Exhibit A in view of Nye, Lykens, Friesen and Cardarelli, and
further in view of Bottorff, Haston, Wilson, Sinner and Grable.
Independent claim 24 recites an adjustable basketball
backboard support system comprising, inter alia, a backboard, a
support member, a parallelogram linkage system interconnecting
the backboard and the support member, adjustment means for
Appeal No. 95-0575
Application No. 07/921,645
11
adjustably connecting one of the links of the parallelogram
linkage system to the support member, and a mounting means
including a clamp similar to the one recited in claim 14. As was
the case with the rejection of claim 14, the examiner has
concluded that it would have been obvious to one of ordinary
skill in the art to provide the adjustable basketball backboard
system shown in Exhibit A with such clamp in view of Lykens,
Friesen and Cardarelli. Here again, however, there is nothing in
the disparate teachings of these three references which would
have suggested the proposed modification.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103 rejection of claim 24 as being unpatentable over Exhibit A
in view of Lykens, Friesen and Cardarelli.
The following rejection is entered pursuant to 37 CFR
§ 1.196(b).
Claims 1 through 10, 13 through 20 and 22 through 24 are
rejected under 35 U.S.C. § 112, second paragraph, as failing to
particularly point out and distinctly claim the subject matter
the appellant regards as the invention.
The second paragraph of 35 U.S.C. § 112 requires claims to
set out and circumscribe a particular area with a reasonable
degree of precision and particularity. In re Johnson, 558 F.2d
1008, 1015, 194 USPQ 187, 193 (CCPA 1977). The purpose of this
Appeal No. 95-0575
Application No. 07/921,645
12
requirement is to provide those who would endeavor, in future
enterprise, to approach the area circumscribed by the claims of a
patent with the adequate notice demanded by due process of law,
so that they may more readily and accurately determine the
boundaries of protection involved and evaluate the possibility of
infringement and dominance. In re Hammack, 427 F.2d 1378, 1382,
166 USPQ 204, 208 (CCPA 1970).
The appealed claims fail to set out and circumscribe a
particular area with a reasonable degree of precision and
particularity for the following reasons.
In claim 1, the term “said one link” lacks a proper
antecedent basis, and it is not clear whether the subsequent
recitation of “one of said links” refers to “said one link.”
In claims 2, 4 and 10, the term “said one link” lacks a
proper antecedent basis.
In claims 3, 4, 16, 20, 22 and 23 the term “said forces”
lacks a proper antecedent basis.
In claim 14, it is unclear whether the backboard and support
member are intended to be part of the claimed combination.
Although the preamble of claim 14 indicates that these elements
are not part of the claimed combination, the body of claim 14
Appeal No. 95-0575
Application No. 07/921,645
The term “said support” in claims 14, 17 and 23 should be4
--said support member-- for consistency with preceding claim
terminology.
13
recites “a clamp mounted to said support [member ].” Also in4
claim 14 and in claim 24, the recitation of “a pin adjustably
securing said adjustment means in at least one of said holes” is
confusing and appears to inaccurately depict the function of the
pin as described in the specification (see page 6).
In claim 24, the recitation of the “adjustment means”
and “mounting means” as separate elements is confusing since the
underlying specification indicates that the mounting means, at
least insofar as it is defined in claim 24, is part of the
adjustment means.
Claims 5 through 9, 13, 15, 17 through 19 are indefinite by
virtue of their dependency from indefinite parent claims.
In summary and for the above reasons:
a) the decision of the examiner to reject claims 1 through
10, 13 through 20 and 22 through 24 under 35 U.S.C. § 103 is
reversed; and
b) a new 35 U.S.C. § 112, second paragraph, rejection of
claims 1 through 10, 13 through 20 and 22 through 24 is entered
pursuant to 37 CFR § 1.196(b).
Appeal No. 95-0575
Application No. 07/921,645
14
Any request for reconsideration or modification of this
decision by the Board of Patent Appeals and Interferences based
upon the same record must be filed within one month from the date
of the decision (37 CFR § 1.197). Should appellant elect to have
further prosecution before the examiner in response to the new
rejection under 37 CFR § 1.196(b) by way of amendment or showing
of facts, or both, not previously of record, a shortened
statutory period for making such response is hereby set to expire
two months from the date of this decision.
Appeal No. 95-0575
Application No. 07/921,645
15
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 37 CFR § 1.196(b)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 95-0575
Application No. 07/921,645
16
Barnes & Thornburg
Franklin Tower
1401 Eye Street, NW
Suite 500
Washington, D.C. 20005
Appeal No. 95-0575
Application No. 07/921,645
17
JPM/jrg
Appeal No. 95-0575
Application No. 07/921,645
1
APPENDIX
1. An adjustable basketball backboard support system comprising:
a basketball backboard;
a support member;
a parallelogram linkage system including at least
two parallel links pivotally interconnecting the basketball
backboard and the support member;
adjustment means including an adjustment link
interconnecting said one link and said support member for
adjustably connecting one of said links to said support member to
determine the height of the basketball backboard; and
wherein said adjustment link includes a
counterweight means for applying a primary force to said
parallelogram linkage system in opposition to and substantially
equal to a force applied to said parallelogram linkage system by
the weight of the basketball backboard.
14. An adjustable basketball backboard support system for
mounting a basketball backboard to a support member comprising:
a parallelogram linkage system including at least
two parallel links pivotally interconnecting the basketball
backboard and the support member;

a bracket for mounting said linkage system to
said support member;
adjustment means for adjustably connecting one of
said links to said support member to determine the height of the
basketball backboard;
said adjustment means including a clamp mounted to
said support and having a plurality of holes defining a plurality
of heights of said backboard for mounting to said support member
and a pin adjustably securing said adjustment means in at least
one of said holes; and
Appeal No. 95-0575
Application No. 07/921,645
2
a counter-weight means connected to one of said
links for applying a force to said parallelogram linkage system
in opposition to a force to be applied to said parallelogram
linkage system by the weight of the basketball backboard.
20. An adjustable basketball backboard support system for
mounting a basketball backboard to a support member comprising:
a parallelogram linkage system including at least
two parallel links pivotally interconnecting the basketball
backboard and the support member;

adjustment means for adjustably connecting one of
said links to said support member to determine the height of the
basketball backboard;
a counter-weight means including a mass on said
adjustment means for applying a force to said parallelogram
linkage system in opposition to a force to be applied to said
parallelogram linkage system by the weight of the basketball
backboard; and
varying means for adjusting the connection of said
adjustment means to said one link to vary said forces applied by
said mass.
24. An adjustable basketball backboard support system
comprising:
a basketball backboard;
a support member;
a parallelogram linkage system including at least
two parallel links pivotally interconnecting the basketball
backboard and the support member;
adjustment means for adjustably connecting one of
said links to said support member to determine the height of the
basketball backboard; and
mounting means including a C clamp attached to
said support member and having a plurality of holes defining a
plurality of heights of said backboard and including a pin
adjustably securing said adjustment means in at least one of said
holes.
APPEAL NO. 95-0575 - JUDGE McQUADE
APPLICATION NO. 07/921,645
APJ McQUADE
APJ STAAB
APJ FRANKFORT
DECISION: REVERSED 37 CFR § 1.196(b)
3 MEMBER CONFERENCE
Typed By: Jenine Gillis
DRAFT TYPED: 17 Jun 98
FINAL TYPED: