Ex Parte Hevesi et alDownload PDFPatent Trial and Appeal BoardMar 21, 201310822159 (P.T.A.B. Mar. 21, 2013) Copy Citation 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. 10/822,159 04/12/2004 INV001John Hevesi 022306.0101PTUS 2644 41434 7590 03/21/2013 PATTON BOGGS LLP 2550 M STREET NW WASHINGTON, DC 20037-1350 EXAMINER SWINEHART, EDWIN L ART UNIT PAPER NUMBER 3617 MAIL DATE DELIVERY MODE 03/21/2013 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 ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JOHN HEVESI and STEVE HORVATH ____________________ Appeal 2010-010943 Application 10/822,159 Technology Center 3600 ____________________ Before: EDWARD A. BROWN, BENJAMIN D. M. WOOD, and JEREMY M. PLENZLER, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-010943 Application 10/822,159 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1, 3-10, 18, and 20-22. Claims 2, 11-17, and 19 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE INVENTION The claims are directed to a kayak paddle blade, shaft and grip. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A paddle comprising: a shaft having a cross-sectional width and at least one recessed portion located on the shaft, the at least one recessed portion being a lesser cross-sectional width than the shaft cross-sectional width thereby creating at least one transverse ridge at the junction of the shaft cross-sectional width and the at least one recessed portion; a blade; and a grip for interlocking in the at least one recessed portion of the shaft, wherein the blade includes (1) a single-piece skeleton having at least three ribs that extend distally from the longitudinal centerline of the single-piece skeleton towards the outer periphery of the blade and ending substantially at the outer periphery of the blade to reinforce the blade both longitudinally and laterally and (2) an outer surface injection molded directly around and enclosing the single-piece skeleton and the at least three ribs, wherein the single-piece skeleton and the outer surface are made of different and/or the same molded materials, wherein the blade is attached to the shaft, and wherein the at least one recessed portion includes a surface profile, and the grip includes a complimentary [sic] surface profile to engage the surface profile of the at least one Appeal 2010-010943 Application 10/822,159 3 recessed portion to removably interlock the grip to the shaft. REFERENCES Sweetland Abbenhouse Bruce US 2,205,769 US 6,796,862 B1 Des. 320,375 Jun. 25, 1940 Sep. 28, 2004 Oct. 1, 1991 REJECTIONS1 Claims 18 and 20-22 stand rejected under 35 U.S.C § 103(a) as unpatentable over Abbenhouse. Ans. 3. Claims 1, 3-6, 9, 10, 18, and 20-22 stand rejected under 35 U.S.C § 103(a) as unpatentable over Abbenhouse and Sweetland. Ans. 4. Claims 7 and 8 stand rejected under 35 U.S.C § 103(a) as unpatentable over Abbenhouse, Sweetland, and Bruce. Ans. 5. ANALYSIS Claims 18 and 20-22 – Obviousness – Abbenhouse Appellants argue claims 18 and 20-22 as a group. Br. 8. We select claim 18 as representative, with claims 20-22 standing or falling with claim 18. 37 C.F.R. § 41.37(c)(1)(vii). Appellants argue that Abbenhouse does not teach a single-piece skeleton having at least three ribs. Br. 7. The Examiner responds that Abbenhouse discloses a skeleton with two ribs, and that the Specification sets forth no criticality for three ribs. Ans. 4, 6. Ordinarily the mere duplication of parts – in this case, the addition of a rib structure – has no patentable significance unless a new and unexpected result is produced. See 1 The Examiner withdrew a rejection of claims 18 and 20-22 under 35 U.S.C. § 112, first paragraph. Ans. 3. Appeal 2010-010943 Application 10/822,159 4 In re Harza, 274 F.2d 669, 671 (CCPA 1960). Appellants have not provided any evidence or persuasive argument that the requirement for three or more ribs has any critical significance and we are therefore not apprised of Examiner error. Appellants next argue that Abbenhouse’s ribs do not extend distally from the longitudinal centerline of the skeleton towards the outer periphery of the paddle blade and end substantially at the outer periphery of the blade. Br. 7. Instead, according to Appellants, Abbenhouse’s blade branches 43 and 44 diverge out toward the blade tip 39, but terminate short of the blade tip. Id. (citing Abbenhouse, col. 3, ll. 18-20). The Examiner responds that the term “ending substantially at said outer periphery” does not require that the ribs extend all the way to the periphery, but requires only that they extend to a position that is close to the periphery, which, as shown in Abbenhouse figure 1a, Abbenhouse satisfies. Ans. 7. We agree with the Examiner’s analysis. As the Examiner states, the term “substantially” may be broadening, in that it denotes approximation. See In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1150-51 (Fed. Cir. 2012) (term “substantially fixed” allows for some movement). Moreover, during prosecution claims are given their broadest reasonable interpretation consistent with the specification, and limitations appearing in the specification are not to be read into the claims. In re Etter, 756 F.2d 852, 858, 225 USPQ 1, 5 (Fed. Cir. 1985). Appellants have not presented any alternative analysis or evidence suggesting that a person of ordinary skill in the art at the time of the invention would have understood the term “ending substantially at said outer periphery” to have a narrower meaning. We therefore agree with the Examiner that this term does not require that the ribs Appeal 2010-010943 Application 10/822,159 5 extend all the way to the periphery, and that the branches of Abbenhouse’s paddle blade satisfy this limitation. Appellants further argue that Abbenhouse does not teach a paddle blade that has a single-piece skeleton that reinforces the paddle blade longitudinally and/or laterally. Br. 8, 15. The Examiner found that the claimed single-piece skeleton reads on Abbenhouse’s molded bifurcated foam core 75, which “is covered top and bottom by a composite skin, and attached to [the] shaft as claimed.” Ans. 3-4; see Abbenhouse, col. 5, ll. 15-18. Appellants assert that “the central foam component in Abbenhouse et al. is NOT load bearing and provides no increase in strength beyond that of allowing a unique shape to be molded in the outer skin.” Br. 8. In response, the Examiner found that the “blade of Abbenhouse et al. will inherently be stronger with the foam core in place, as opposed to its absence,” and thus “it can be said that the foam core will reinforce the blade as claimed.” Ans. 7. We agree with the Examiner. “[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). We find that the Examiner has shown a sound basis for believing that Abbenhouse’s blade will be stronger with the foam core than without it, and therefore that the foam core reinforces the blade as required by claim 18. Appellants respond with attorney argument and assertions unsupported by evidence, to which we give little weight. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). We therefore find that Appellants have not carried their burden. For these reasons, we sustain the rejection of claims 18 and 20-22 as obvious over Abbenhouse. Appeal 2010-010943 Application 10/822,159 6 Claims 1, 3-6, 9, 10, 18, and 20-22 – Obviousness – Abbenhouse and Sweetland Appellants argue claims 1, 3-6, 9, 10, 18, and 20-22 as a group. Br. 9- 10. We select claim 1 as representative, with the remaining claims standing or falling with claim 1. Claim 1 is drawn to a paddle comprising a blade as recited in claim 18, a shaft having “at least one recessed portion,” and “a grip for interlocking in the at least one recessed portion of the shaft.” Br. 14 (Claims Appx.). The Examiner relies on Abbenhouse to teach the blade and shaft, as above, and on Sweetland to teach the claimed grip. Ans. 4. The Examiner determined that it would have been obvious to one of ordinary skill in the art to combine Abbenhouse with Sweetland “to provide a sure grip for the user.” Ans. 5. Appellants argue that while Sweetland’s grip uses pins to resist movement of the grip around the axis of the shaft, and ridges to resist movement along the length of the shaft, Appellants’ grip uses “a unique method of grip interlock that utilizes a single mating surface that incorporates a lock for all axis of available movement.” Br. 10. But, as the Examiner pointed out, claim 1 does not require any particular grip interlock that utilizes a single mating surface, but only that the grip interlock in the “at least one recessed portion of the shaft.” Therefore, Appellants argument is not commensurate in scope with the claim, and is unpersuasive. We sustain the rejection of claims 1, 3-6, 9, 10, 18, and 20-22 as obvious over Abbenhouse and Sweetland. Appeal 2010-010943 Application 10/822,159 7 Claims 7 and 8 – Obviousness – Abbenhouse, Sweetland, and Bruce Appellants argue claims 7 and 8 as a group. Br. 10-11. We select claim 7 as representative, with claim 8 standing or falling with claim 7. Claim 7 depends from claim 1 and additionally recites, “wherein the shaft is bent such that (1) a centerline of a first portion of the shaft is offset from a centerline of a second portion of the shaft by at least one of (i) more than 10 degrees and (ii) less than 17 degrees, and (2) a centerline of a third portion of the shaft [that] bisect[s] the center portion of the first portion of the shaft.” Br. 15 (Claims Appx.). The Examiner relied on Bruce for this additional limitation. Ans. 5-6. The Examiner then determined that it would have been obvious to a person of ordinary skill to combine Bruce with Appenhouse and Sweetland “to provide a more ergonomic shape, as such bent portions are well known for providing a stress reduction to the wrists of the user.” Id. at 6. Appellants respond that “the present application discloses and claims in claim 7 an ergonomic shaft and grip design that aligns the center axis of the blade with the center section of the gripping section.” Br. 11. But we perceive no such requirement in claim 7. First, the claim does not specify which of the first, second or third portion of the shaft is the “gripping section,” or which is the section to which the blade is attached. Second, the claim does not actually limit the angle of offset between the centerlines of the first and second portions, despite purporting to do so.2 Appellants’ 2 This is because the claim encompasses an offset of either “(i) more than 10 degrees,” or “(ii) less than 17 degrees,” so while limitation (i) appears to exclude an offset of 10 degrees or less, limitation (ii) permits such an offset. Likewise, while limitation (ii) excludes an offset of 17 degrees or more, limitation (i) permits such an offset. Essentially, claim 7 encompasses any possible amount of offset, from 0 to 180 degrees. Appeal 2010-010943 Application 10/822,159 8 argument is therefore not commensurate in scope with the claim, and is therefore unpersuasive. We sustain the rejection of claims 7 and 8 as obvious over Abbenhouse, Sweetland, and Bruce. DECISION For the above reasons, the Examiner’s rejection of claims 1, 3-10, 18, and 20-22 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)(1)(iv). AFFIRMED JRG Copy with citationCopy as parenthetical citation