Ex Parte Hojo et al

Board of Patent Appeals and Interferences

Sep 2, 2009

10758019 (B.P.A.I. Sep. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte HIROYUKI HOJO and RYUSUKE NAKANISHI
__________

Appeal 2009-004973
Application 10/758,019
Technology Center 3700
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Decided: September 2, 2009
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Before ERIC GRIMES, RICHARD M. LEBOVITZ, and STEPHEN
WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
balance practicing machine. The Patent Examiner rejected the claims for
obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
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STATEMENT OF THE CASE
The invention “relates to a balance practicing machine used to
practice balancing the body and to provide exercise for the user.” (Spec.
¶ 1.) In the prior art, “[a] machine has been disclosed which provides the
same type of movement encountered when riding a horse, thus making it
possible to practice balancing without the restrictions of location and
weather associated with actual horseback riding.” (Id. at ¶ 2.) The present
invention is said to improve on the prior art by providing “a drive
mechanism that imparts a swinging motion to a seat, expandable and
contractible members attached to a seating surface of the seat, and a
mechanism to expand and contract the expandable and contractible
members.” (Id. at ¶ 6.)
Claims 1-11, 13-18 and 20-24, which are all the pending claims, are
on appeal. Independent claims 1 and 18 read as follows:
1. A balance practicing machine comprising:
a seat on which a user sits;
a drive mechanism that imparts a swinging motion to said seat;
an expandable and contractible member provided at a location of said
seat corresponding to thighs of the user sitting on said seat; and
a mechanism that automatically repeatedly expands and contracts said
expandable and contractible member in alternately repeating
upwardly-outwardly and downwardly-inwardly directions during the
operation of the drive mechanism to provide compound motion to the
seat.

18. A balance practicing machine comprising:
a seat;
a drive mechanism that imparts a swinging motion to said seat;
a moving device that is repeatedly actuated during operation of said
drive mechanism to provide compound motion to said seat,
wherein said moving device comprises:
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an expandable and contractible member provided at a location of said
seat corresponding to thighs of the user sitting on said seat; and
a mechanism that automatically repeatedly expands and contracts said
expandable and contractible member in alternately repeating
upwardly-outwardly and downwardly-inwardly directions during
operation of the drive mechanism to provide compound motion to the
seat.

The Examiner rejected claims 1-11, 13-18 and 20-24 under 35 U.S.C.
§ 103(a) as unpatentable over the combined teachings of Yamaguchi1 and
Friedson.2

OBVIOUSNESS
The Issue
The Examiner found that Yamaguchi’s riding simulator machine had
a saddle shaped seat, a drive mechanism, elevator, and swinging motion, but
that Yamaguchi’s machine did not have an expandable and contractible
member on the seating surface. (Ans. 3.) The Examiner found that
Friedson’s collapsible saddle assembly had an inflatable/deflatable bladder,
adjustable to a selected size. (Id. at 3-4.) The Examiner concluded it would
have been obvious to add such bladders to Yamaguchi’s machine for the
purposes of providing user comfort and enhancing the seat’s motion during
operation. (Id. at 4.) The Examiner interpreted Appellants’ claim term
“repeatedly” as not limiting “how or how often, and/or when the mechanism
‘repeatedly’ expands and contracts the member.” (Id. at 4, emphasis

1 U.S. Patent No. 4,988,300, issued to Masaaki Yamaguchi et al., Jan. 29,
1991.
2 U.S. Patent No. 6,332,307 B1, issued to Ronald S. Friedson, Dec. 25,
2001.
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omitted.) The Examiner interpreted the claim term “during operation” as a
statement of intended use, and concluded it did not define a structural
difference from the combined teachings of the prior art. (Id. at 5.)
Appellants contend that (i) the claimed balance practicing machine
would not have resulted from the combined teachings of the two references
(App. Br. 7-8); (ii) the Examiner did not provide factual evidence to support
the conclusion that it would have been obvious to repeatedly expand and
contract Friedson’s bladder 25 during use of Yamaguchi’s machine (id. at 8-
11); and (iii) nothing in the cited prior art would have led one of ordinary
skill to make the modification suggested by the Examiner (id. at 11-12). As
Appellants read Friedson, cavity 21 may contain a bladder that can be
expanded or contracted so as to accommodate a different user or equestrian
application. (Id. at 7-8.) However, Friedson did “not teach or suggest that
the cavity should be, or even could be, expanded or contracted during
operation of the drive mechanism . . . much less repeatedly expanded and
contracted during operation of the exercising device.” (Id. at 8, emphasis
omitted.)
The issue in this appeal is whether the Examiner established that the
claimed machine would have resulted from the combined teachings of
Yamaguchi and Friedson.

Findings of Fact
Yamaguchi
1. Yamaguchi described a riding simulator. (Abstract.)
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2. Yamaguchi’s riding simulator had an artificial horse body 2 (col. 3, ll.
56-59), with a saddle 31 (col. 4, ll. 43-45), and a drive mechanism 16
that imparted a swinging motion to the body (col. 4, ll. 5-26).

Friedson
3. Friedson described a collapsible saddle assembly with an expandable
and contractible air bladder 25. (Col. 4, l. 64 – col. 5, l. 7.)
4. Friedson’s air bladder had a “valved opening” into which a “pump
adapter” of a conventional pump could be inserted. (Id.)
5. Friedson’s air bladder could be “inflated to a selected size” by
inserting an adapter and using a conventional pump, or a bleed valve
could be used to deflate the bladder “to accommodate a different user
or equestrian application.” (Id.)

Principles of Law
When determining whether a claim is obvious, an Examiner must
make “a searching comparison of the claimed invention – including all its
limitations – with the teaching of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995).

Analysis
Appellants’ machine comprises at least four elements: (1) a seat, (2) a
drive mechanism, (3) an expandable and contractible member, and (4) “a
mechanism that automatically repeatedly expands and contracts said
expandable and contractible member . . . .” The dispute concerns elements
(3) and (4). Appellants argue that even if Friedson’s air bladder were added
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to Yamaguchi’s riding simulator, the addition would not provide element (4)
of the claim.
We interpret element (4) to define a mechanism, and we therefore do
not agree with the Examiner’s interpretation that element (4) does not define
a structural difference from the prior art. The claim defines element (4)’s
mechanism as one that functions “automatically . . . during operation of the
drive mechanism.” Friedson described an air bladder equipped with a valve
opening into which a pump adapter could be inserted for inflation, and a
bleed valve with which the bladder could be deflated. The Examiner did not
find that Friedson’s inflation/deflation mechanism functioned automatically,
and did not explain how it would have been obvious to provide automatic
function to the device resulting from the combination of the prior art
teachings. We find that the rejection did not account for all the claimed
elements and conclude that a prima facie case of obviousness was not
established.

CONCLUSIONS OF LAW
On the findings in this record, the Examiner has not established that
the claimed machine would have resulted from the combined teachings of
Yamaguchi and Friedson.

SUMMARY
We reverse the rejection of claims 1-11, 13-18 and 20-24 under 35
U.S.C. § 103(a) as unpatentable over the combined teachings of Yamaguchi
and Friedson.

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Application 10/758,019

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REVERSED

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