Ex Parte Gottlieb

Patent Trial and Appeal Board

Nov 7, 2017

13347806 (P.T.A.B. Nov. 7, 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.
13/347,806 01/11/2012 Steve Gottlieb SGI 9337
63893 7590
DOUGLAS J. VISNIUS
18024 Falcon Green Court
ORLANDO, EL 32820-2712
11/09/2017 EXAMINER
TRAVERS, MATTHEW P
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
11/09/2017 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):
apexmasterworks @ gmail. com
sfnlhafnap @ yahoo, com
dvisnius @ bellsouth. net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVE GOTTLIEB
Appeal 2016-001790
Application 13/347,806
Technology Center 3700
Before JOHN C. KERINS, GEORGE R. HOSKINS, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Steve Gottlieb (“Appellant”) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1—9 and 27—37. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2016-001790
Application 13/347,806
THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to “human powered paddles.” Spec. 11.
Claim 1, reproduced below, is illustrative of the claimed subject matter.
1. A system comprising:
a relief fabricated into at least one of a solid
front side and a solid back side of a paddle blade on
a paddle blade’s border; and
an impact absorbent material securely fastened to
the relief on the at least one of the solid front side and a solid
back side [back side] of the paddle blade and the paddle blade’s
border.
REJECTIONS
1) Claims 4, 6, 30, and 37 are rejected under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description
requirement.
2) Claims 8 and 34 are rejected under 35 U.S.C. § 112, second
paragraph as indefinite.1
3) Claims 1—3, 5, and 7—9 are rejected under 35 U.S.C. § 102(b) as
anticipated by Grenadier (US 4,128,239, issued Dec. 5, 1978).
4) Claims 4, 6, and 27—37 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Grenadier.
DISCUSSION
Rejection 1
Claim 4 recites “the paddle shaft is at least 2 times longer than the
paddle blade’s longest dimension and shorter than 20 times the paddle
1 In the Answer, the Examiner withdrew an indefmiteness rejection of claims
6, 27—33, and 35—37 under 35 U.S.C. § 112, second paragraph. Ans.
3^4.
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Application 13/347,806
blade’s longest dimension.” Appeal Br. (Claims App.). Claim 6 depends
from claim 4. Id. Claims 30 and 37 contain the same limitation as claim 4.
Id. The Examiner determines that the claims do not comply with the written
description requirement because Appellant’s Specification “lacks any
mention of the paddle shaft’s specific length, and not one of the figures
portrays even a portion of the shaft’s length falling within this range.” Final
Act. 2. The Examiner additionally determines that the limitation in claim
37, “the impact absorbent material extends at least a quarter way up the
paddle blade’s length from the paddle blade’s end opposite the paddle
shaft,” is not supported by the Specification. Id. at 3. The Examiner notes
that the Specification discloses “‘the impact absorbent material may cover at
least a distal lower two fifths of the paddle blade’s border with respect to a
paddle shaft.’” Id. (citing Spec. 14, Fig. 8).
Appellant argues that these claims find written description support in
paragraph 32 of the Specification. Appeal Br. 5. Appellant argues that one
skilled in the art “would recognize in applicant’s disclosure a description of
the invention defined by the claims or they are not one skilled in the art.” Id.
For the following reasons, we sustain the rejection of claims 4, 6, 30, and 37.
The first paragraph of 35 U.S.C. § 112 contains a written description
requirement that is separate and distinct from the enablement requirement.
AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1340 (Fed. Cir. 2010)
(en banc). To satisfy the written description requirement, the Specification
must describe the claimed invention in sufficient detail that one skilled in the
art can reasonably conclude that the inventor had possession of the claimed
invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562—63 (Fed. Cir.
1991). Specifically, the Specification must describe the claimed invention in
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Application 13/347,806
a manner understandable to a person of ordinary skill in the art and show
that the inventor actually invented the claimed invention. Id.; Ariad, 598
F.3d at 1351.
Paragraph 32 of the Specification, upon which Appellant relies for
written description support of claims 4, 6, 30, and 37 provides:
In one embodiment, the impact absorbent material
28 aids in protecting a watercraft’s side (not shown) from
damage when the paddle blade 36 carrying the paddle blade’s
border 26 with the impact absorbent material 28 is used.
For example, SUP boards can be damaged by a prior art
paddle blade striking the side of the board. In contrast,
the impact absorbent material 28 on the paddle blade’s
border 26 would aid in protecting the watercraft’s side
during a similar paddle blade strike of the SUP board
because it can elastically deform and/or absorb energy
generated by the paddle blade strike.
Spec. 132.
This paragraph is silent regarding the length of the paddle shaft in relation to
the paddle blade’s dimensions as recited in claims 4, 6, 30, and 37. Further,
this paragraph does not describe the distance that the impact absorbent
material extends up the paddle board as recited in claim 37. We also note
that claims 11 and 16 as originally filed recite that the impact absorbent
material is on “at least a distal lower two fifths of the paddle blade’s border.”
Claims filed January 11, 2012. Appellant does not address the
inconsistency between claim 37 and the description of the length of impact
absorbent material in paragraph 4 of the Specification or in originally filed
claims 11 and 16.
We sustain the Examiner’s written description rejection of claims 4, 6,
30, and 37, which is supported by a preponderance of the evidence. The
evidence cited by Appellant in opposition fails to persuade us that the
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Specification describes the claimed invention in sufficient detail such that
one skilled in the art could reasonably conclude that Appellant possessed the
invention recited in claims 4, 6, 30, and 37.
Rejection 2
Claims 8 and 34 recite “the paddle blade’s materials are designed for
water use.” Appeal Br. (Claims App.). The Examiner determines that this
limitation is indefinite because “[i]t is unclear what distinguishes a material
‘designed for water use’ from one not designed for water use.” Ans. 5. The
Examiner explains that whether a material is designed for water use “is at
least partially dependent upon an intended outcome of its use in that
application. For example, a material may dissolve in water and still be
considered to be designed for use in water if dissolving is the intended
outcome.” Final Act. 2—A.
Appellant contends that indefmiteness under 35 U.S.C. § 112, second
paragraph must be analyzed in light of the Specification. Appeal Br. 6—7.
Appellant argues that the language of claim 8 is not unclear because
paragraphs 32, 35—37, 39, and 42 of the Specification “disclose
embodiments operating in water based environment[s].” Id. at 7. In
response, the Examiner notes that Appellant’s “arguments affirm that the
claimed paddle is intended for use in a water environment, they do not
address the fact that the scope of materials defined by the limitation
‘designed for water use’ is not clear and thus indefinite.” Ans. 5.
While we appreciate the Examiner’s reference to material that can
dissolve in water, Appellant’s Specification is directed to “paddles used by
people to propel a watercraft such as a canoe.” Spec. 12. Thus, the paddle
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blade as recited in claim 8 must be fabricated from a material capable of use
in water for propelling a watercraft. See In re Packard, 751 F.3d 1307, 1312
(Fed. Cir. 2014) (explaining that indefiniteness is evaluated “based on the
perspective of one of ordinary skill in the art in view of the entire written
description”). In light of the Specification, we determine that one of
ordinary skill in the art would understand the scope of claims 8 and 34. We,
thus, do not sustain the rejection of claims 8 and 34 under 35 U.S.C. § 112,
second paragraph.
Rejection 3
In the determining that Grenadier anticipates claim 1, the Examiner
specifically finds that Grenadier discloses “a solid . . . front side and a solid
back side ... of a paddle.” Final Act. 4 (emphasis added) (citing Grenadier,
2:15—16, 21—24). The Examiner asserts that “the word ‘solid’ is not
synonymous with ‘having no holes’, and it has not been interpreted as such
herein.” Id. at 9.
Appellant contends that “the paddle faces of Grenadier require holes
in contrast to the claimed solid faces.” Appeal Br. 15. Appellant directs us
to openings 15 and 115 illustrated in Figures 1—5 of Grenadier in support of
this contention. Id.
Grenadier discloses a paddle construction with through holes 15 or
115 between the front and back surfaces. See Grenadier, Figures 1—5,
2:46-48, 3:55—56. The Examiner does not direct us to any embodiment in
Grenadier without holes in the front and/or back surfaces of the paddle.
Appellant’s drawings illustrate a paddle with a front surface with
various raised features but no holes or recesses extending below the front
surface into or through the paddle. Spec. Figs. 2, 11. Although the
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Examiner asserts that “solid” is not synonymous with having no holes, the
Examiner does not offer a proposed construction of “solid” that supports a
finding that paddles, such as disclosed in Grenadier, with holes extending
below the front or back surface, has a solid front side or a solid back side.
The Examiner’s finding that Grenadier discloses a paddle with a solid front
side and solid back side is, thus, not supported by a preponderance of the
evidence. We do not sustain the rejection of claim 1 and claims 2—3, 5, and
7—9 which depend from claim 1.
Rejection 4
Claims 4 and 6
The Examiner rejects claims 4 and 6 as unpatentable over Grenadier.
Final Act. 5—6. Claims 4 and 6 depend from claim 1. Appeal Br. (Claims
App.). The rejection is based, in part, on the unsupported finding made with
respect to claim 1 that Grenadier discloses a paddle with a solid front side
and solid backside. We, thus, do not sustain the rejection of claims 4 and 6
for the same reasons stated above for claim 1.
Claims 36 and 37
Independent claim 36, like claim 1, recites “a solid-front-side and a
solid-back-side of the paddle blade.” Appeal Br. (Claims App.). The
Examiner similarly relies on Grenadier in rejecting claim 36. Final Act. 8.
Appellant relies on the same argument as for claim 1. Appeal Br. 15. We,
thus, do not sustain the rejection of claim 36 and claim 37 which depends
from claim 36 for the same reasons stated above for claim 1.
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Claims 27—35
The Examiner finds that Grenadier discloses the limitations of
independent claim 27 except the front side and back side of the paddle blade
“are not necessarily angled away from only one side of the paddle shaft’s
longitudinal axis.” Final Act. 6. Nonetheless, the Examiner determines it
would have been obvious to alter “the shape of the Grenadier paddle since it
has been held that the configuration of a claimed product is a matter of
choice which a person of ordinary skill in the art would find obvious absent
persuasive evidence that the particular configuration of the claimed product
is significant.” Id. at 6—7.
Appellant contends that modifying Grenadier’s paddle as proposed by
the Examiner “would improperly change the principle of operation of
Grenadier.” Appeal Br. 14. In support of this contention, Appellant argues
that Grenadier discloses “that handle extension 14 is in plane with face
portion 12/112 or 16/116 ... [so that] both the forehand and backhand
strokes will strike the ball similarly on face portion 12/112.” Id. Appellant
asserts that the result of the Examiner’s modification would be the ball
leaving the paddle at “an unintentional angle.” Id. For the following
reasons, we do not sustain the rejection of claim 27.
Unlike Appellant’s invention, which is directed to paddles for
propelling watercraft, Grenadier discloses a “paddle construction for striking
a ball during play in a ball game.” Grenadier, Abstract, Figs. 1, 2, 4.
Grenadier also discloses that a problem with then existing paddles was a ball
deflecting from the racket “at an unintentional angle.” Id. at 1:22.
In the Answer, the Examiner does not address the Appellant’s
arguments that modifying Grenadier as proposed in the rejection would
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Application 13/347,806
result in a paddle that would deflect the ball differently depending on
whether the user was hitting the ball with a forehand or a backhand stroke.
See Ans. 6. We are not persuaded that the Examiner has adequately
explained why is would be an obvious matter of design choice to modify
Grenadier’s paddle, as proposed in the rejection, in light of Appellant’s
argument that the modification would change the principle of operation of
Grenadier’s paddle. We, thus, do not sustain the rejection of claim 27. We
also do not sustain the rejection of claims 28—35 which depend from claim
27 for the same reasons.
DECISION
The Examiner’s decision rejecting claims 4, 6, 30, and 37 under
35 U.S.C. § 112, first paragraph is affirmed.
The Examiner’s decision rejecting claims 8 and 34 under 35 U.S.C.
§112, second paragraph is reversed.
The Examiner decision rejecting claims 1—9 and 27—37 under
35 U.S.C. § 102(b) or 35 U.S.C. § 103(a) is reversed.
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-IN-PART
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