Ex Parte Fife

Patent Trial and Appeal Board

Apr 30, 2013

11827419 (P.T.A.B. Apr. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREW P. FIFE
____________

Appeal 2011-003324
Application 11/827,419
Technology Center 3700
____________

Before ANNETTE R. REIMERS, BRADFORD E. KILE, and
CARL M. DeFRANCO Administrative Patent Judges.

KILE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-003324
Application 11/827,419

2

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. §134(a) from a final rejection of
claims 1 – 20.1 App. Br. 1-3. We have jurisdiction under 35 U.S.C. § 6(b).
Appellant’s invention is directed to “a multi-grip dumbbell.” Spec. 1,
l. 9.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A multi-grip dumbbell comprising:

a central handle having a first end and a second
end;

a first weighted head interconnected to the central
handle in proximity to the first end of the central
handle, the first weighted head including a first
weighted end handle, a first weighted side handle,
and a second weighted side handle; and

a second weighted head of approximately equal
shape and weight to the first weighted head, the
second weighted head interconnected to the central
handle in proximity to the second end of the
central handle, the second weighted head
including, a second weighted end handle, a third
weighted side handle, and a fourth weighted side
handle.
App. Br. (Clms. App’x. 14).

1 Appellant identifies claims 1-20 as finally rejected and on appeal. App. Br.
1. In the CLAIMS APPENDIX attached to the Appeal Brief, however,
claim 13 is indicated as “cancel.” App. Br. (Clms. App’x. 15). In the body
of the Appeal Brief, the Examiner’s Answer and the Reply Brief, references
to claim 13 are included. Accordingly, we will consider claim 13 as
remaining a part of the claim set and that the statement “cancel” that appears
in the CLAIMS APPENDIX is a clerical error.
Appeal 2011-003324
Application 11/827,419

3
The Examiner relies on the following references in rejecting the
appealed claims:
Wright US 4,029,312 Jun. 14, 1977
Smith US 5,024,434 Jun. 18, 1991
Roepke US 5,334,113 Aug. 2, 1994

Appellant requests review of the following rejections advanced on
Appeal by the Examiner (Ans. 3):
Claims 1-3, 10, and 14-18 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Smith.
Claims 4-9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Smith in view of Wright.
Claims 11-13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Smith in view of Roepke.
Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Smith.

OPINION
Anticipation – Claims 1-3, 10, and 14-18
Independent claim 1 (the only independent claim on appeal), with
reference to the Specification, pp. 6-15 and Figures 8A – 16C, drawing pp.
8-25, discloses and claims “a multi-grip dumbbell” including a plurality of
weighted handles. App. Br. (Clms. App’x. 14).
Appellant’s Figure 8A reproduced below discloses a pictorial view of
a weighted dumbbell in accordance with one embodiment of the claimed
invention:

App
App

hand
mou
head
side
discl
Smit
first
eal 2011-0
lication 11
Figure 8
le 802, a f
nted on op
s 804, 806
handles 81
The Exa
osure. Sm
h, col. 1, l
Fig. 1 di
and secon
03324
/827,419
A disclose
irst weigh
posing end
includes a
0, 812 and
miner reje
ith disclos
l. 7-8. Fig
scloses a b
d open circ
s a multi-g
ted head 8
s of the c
weighted
816, 818
cts claim 1
es a barbe
. 1 of the S
arbell incl
ular housi
4
rip dumbb
04 and a se
entral hand
end hand
respective
as anticip
ll having a
mith pate
uding a m
ngs 2 and
ell 800 in
cond wei
le 802. E
le 808, 814
ly. Spec.
ated by th
pair of ro
nt is repro
iddle bar 6
4 that tran
cluding a
ghted head
ach of the
and two
6, ll. 21-2
e Smith pa
tatable ha
duced belo
extendin
sition into

central
806
weighted
weighted
7.
tent
ndles.
w:

g between
end bars 8
App
App

and
18 is
assem
17.
and
col.
comp
inter
first
weig
an an
“firs
weig
in Fi
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lication 11
10 respecti
positione
bly is mo
Weight pla
10 and the
4, ll. 37-39
The Exa
rising a c
connected
weighted e
hted side h
notated im
The Exa
t weighted
hted side h
g. 9).” An
03324
/827,419
vely. Smit
d within th
unted wit
tes 16 can
angle of th
.
miner find
entral hand
to the cen
nd handle
andle . . .
age of Fi
miner iden
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andle ((a)
s. 4-5.
h, col. 3, l
e first circ
hin the sec
be operab
e hand gr
s that Smi
le 6 . . . a
tral handle
(18), a fir
.” Ans. 4
g. 9 of the
tifies in th
luding “a f
in Fig.9)”
5
. 57- col. 4
ular housi
ond circul
ly mounte
ips can be
th disclose
first weigh
. . . the fi
st weighte
-5. The Ex
Smith pat
is reprodu
irst weigh
and a “se
, l. 3. A f
ng 2 and a
ar housing
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adjusted.
s “a multi
ted head
rst weighte
d side han
aminer in
ent as follo
ction of F
ted end ha
cond weig
irst hand a
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4. Id., co
e bar exten
Id. col.4,
-grip dum
(2 and 24)
d head in
dle . . . an
cludes in t
ws:

ig. 9 his fi
ndle” and
hted side h
ssembly
ndle
l. 4, ll. 12
sions 8
ll. 8-11 an
bbell

cluding a
d a second
he Answe
nding of a
“a first
andle ((b)
-
d

r

App
App

are d
copy
Ans.
that
comp
the s

Thus
dum
appe
and t
barb
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lication 11

The Exa
isclosed in
of Fig. 1
16.
The Exa
the compo
onents . .
ame funct
Appellan
, Smith do
bbell.” Ap
ars to asse
hat there i
ells are dif
03324
/827,419
miner furt
the Smith
of the Smi
miner find
nents are “
. are capab
ionality as
t contend
es not dis
p. Br. 9.
rt that the
s no distin
ferent type
her finds t
patent an
th patent a
s that the
structural
le of bein
the Appel
s that “Sm
close ‘a m
Appellant
words ‘du
ction betw
s of free w
6
hat all of t
d for clari
s follows:
Smith com
ly the sam
g used in t
lant’s.” A
ith’s devic
ulti-grip du
further no
mbbell’ an
een the tw
eights.”
he recited
fication in

ponents a
e as the Ap
he same m
ns. 16-17.
e is a bar b
mbbell,’
tes that “[t
d ‘barbell
o terms .
Reply Br.
features of
cludes an

re all weig
pellant’s
anner and

ell, not a
or any kin
]he Exami
’ are interc
. . dumbbe
1.
claim 1
annotated
hted and
provide
dumbbell.
d of
ner
hangeable
lls and

Appeal 2011-003324
Application 11/827,419

7
Appellant disputes the Examiner’s finding that the Smith components
are weighted in the sense of recitations in the claimed invention. App. Br.
10. Appellant argues that “[i]n the Examiner’s reasoning, a set screw used
to mount the weights to the end bars in Smith’s device could also be
‘broadly interpreted’ as a weighted head, since even a set screw ‘has some
weight to it.’ Similarly, a facial tissue box or facial tissue could be ‘broadly
interpreted’ as a weighted head. Clearly, this is an absurd statement.
Weighted heads are clearly described in the current application.” Id. at 10.
Appellant continues “[n]o one with even cursory background or
understanding of free weights, weight-lifting exercises, or anything related
to weight lifting would possibly conclude that these circular housings and
rotatably mounted grips are weighted heads or in any way “weighted.” Id. at
11.
A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference. See, e.g., Therasense, Inc. v. Becton Dickinson and Co., 593
F.3d 1325, 1332 (Fed. Cir. 2010); MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
1359, 1371 (Fed. Cir. 2008); Connell v. Sears, Roebuck & Co., 722 F.2d
1542, 1548 (Fed. Cir. 1983); Kalman v. Kimberly-Clark Corp., 713 F.2d
760, 771 (Fed.Cir.1983), cert. denied, 465 U.S. 1026 (1984).
We agree with Appellant. First, we agree with Appellant that there is
an art recognized difference between a dumbbell and a barbell. Second,
claim 1 recites “a central handle” without a recitation of the term “weighted”
and then a first and second “weighted head” with each “weighted head”
having one “weighted end handle” component and two “weighted side
handle” components. As a matter of claim construction, claim 1 itself
Appeal 2011-003324
Application 11/827,419

8
distinguishes between a handle component such as the “central handle” and
weighted handle components such as “weighted end handles” and “weighted
side handles.” The word “weighted” in claim 1 must be considered and
accorded significance. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970)
(“All words of a claim must be considered in judging the patentability of that
claim against the prior art.”) We find as a matter of claim construction that a
“weighted handle”, as recited in claim 1, must have at least a degree of
weight in the sense of a dumbbell function in addition to the function of
providing a hand hold or handle. See, e.g., Phillips v. AWH Corp., 415 F.3d
1303, 1312 (Fed. Cir. 2005)(en banc) (“we look to the words of the claims
themselves . . . to define the scope of the patented invention”) citing with
approval Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996).
We agree with Appellant that Smith does not disclose a “dumbbell” or
“weighted handle” components of a dumbbell as recited in claim 1 and thus
the Smith patent disclosure does not anticipate claim 1. Since claim 1 is not
anticipated, none of the remaining claims in this group (viz. 2, 3, 10 and 14-
18), which directly or ultimately depend from claim 1, can be anticipated.
See, e.g., RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1446
(Fed. Cir. 1984) (“Since claim 3 . . . is dependent upon claim 2, which is not
anticipated, claim 3 cannot be anticipated.”).

Obviousness – Claims 4-9
The Examiner rejects claim 4-9, which ultimately depend from
independent claim 1, on the basis of Smith and Wright. The Wright patent
discloses an exercise device comprising a pair of substantially hollow and
Appeal 2011-003324
Application 11/827,419

9
generally spherical weight members which may be attached to the ends of a
bar. Wright, col. 2, ll. 13-16.
The Examiner in one sentence states that “based on the arguments
detailed above, the combination of Smith in further view of Wright
teaches/suggests the limitations of claims 4-9.” Ans. 19.
The Supreme Court instructs in KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007), citing with approval In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness”). We
find the Examiner’s analysis lacks a rational underpinning with respect to
the recited elements of the claims and the Examiner has failed to establish a
prima facie case of obviousness. In re Rouffet, 149 F.3d 1350, 1355 (Fed.
Cir. 1996).

Obviousness – Claims 11-13
The Examiner rejects claim 11-13, which depend from independent
claim 1, on the basis of Smith and Roepke. The Roepke patent discloses a
multi-position grip system for barbells or the like. Roepke, col.1, ll. 7-9.
The Examiner states in a manner similar to his consideration of claims
4-9 above that “based on the arguments detailed above, the combination of
Smith in further view of Roepke teaches/suggests the limitations of claims
11-13.” Ans. 19.
This bare statement fails to convince us that the Examiner’s rejection
establishes a prima facie case of obviousness of claims 11-13. In re Kahn,
supra.

Appeal 2011-003324
Application 11/827,419

10
Obviousness – Claims 19-20
The Examiner states that “based on the arguments detailed above,
these limitations would have been obvious to one [sic] ordinary skill in the
art as explained above.” Ans. 19.
This statement fails to convince us that the Examiner has established a
prima facie case of obviousness of claims 19 and 20. In re Kahn, supra.

ORDER
The Examiner’s rejection of claims 1-20 is reversed.

REVERSED

Klh