Ex Parte Levine et al

Board of Patent Appeals and Interferences

May 1, 2009

10336399 (B.P.A.I. May. 1, 2009)

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.
10/336,399 01/06/2003 Joseph Sheldon Levine 4415P2916 6514
23504 7590 05/01/2009
WEISS & MOY PC
4204 NORTH BROWN AVENUE
SCOTTSDALE, AZ 85251
EXAMINER
WONG, STEVEN B
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
05/01/2009 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSEPH SHELDON LEVINE and
REBECCA HOPE MCMURROUGH
____________

Appeal 2008-5655
Application 10/336,399
Technology Center 3711
____________

Decided: 1 May 1, 2009
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and RICHARD M.
LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as provided for in 37 C.F.R. § 1.304, begins to run from the decided
date shown on this page of the decision. The time period does not run from
the Mail Date (paper delivery) or Notification Date (electronic delivery).

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This is a decision on appeal2 from the Examiner’s final rejection of
claims 22-24. Jurisdiction for this appeal is under 35 U.S.C. § 6(b). We
affirm.
STATEMENT OF THE CASE
The claims are directed to a rubber fitness ball with a raised world
map on its surface. According to the Specification, the fitness ball will make
the user feel as if he’s “on top of the World” (Spec. 1).
Claims 22-24 are pending and stand rejected by the Examiner as
follows:
• Claims 22-24 under 35 U.S.C. § 103(a) as obvious in view of
George (U.S. Pat. No. 2,635,358, Apr. 21, 1953), Casey (U.S. Pat. No.
2,324,277, Jul. 13, 1943), and Snyder (U.S. Pat. No. 3,225,461, Dec. 28,
1965) (Ans. 3); and
• Claims 22-24 under 35 U.S.C. § 103(a) as obvious in view of
George, Landini (U.S. Pat. No. 1,740,927, Dec. 24, 1929), and Snyder (Ans.
4).
Claims 22-24 read as follows:
22. A global world map fitness ball comprising an inflated
global world map rubber fitness ball having a global world map
image on a surface thereof that has raised land masses and
raised borders of said raised land masses, bodies of water
having surfaces lower than surfaces of said raised land masses
and said raised borders of said raised land masses, and raised
grid lines representing longitude and latitude lines of said
global world map image extending both over portions of said
raised land masses and said raised borders of said raised land
masses and over portions of the lower surfaces of said bodies of
water, said inflated global world map rubber fitness ball having

2 An oral hearing was held Mar. 18, 2009.
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a resiliency to permit a person to sit or lean on said inflated
global world map rubber fitness ball.
23. The fitness ball of Claim 22 wherein land, water and ice
of said global world map image have the colors green, blue and
white respectively.
24. The fitness ball of Claim 22 wherein said global world
map fitness ball having a diameter greater than 35 cm.

ISSUES ON APPEAL
There are two principles issues in this appeal:
Did the Examiner err in combining non-analogous prior art in
concluding that the claimed invention was prima facie obvious?
Does the recitation of “fitness ball” in claim 22 distinguish the
claimed invention from the prior art?

PRINCIPLES OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966).
“Often, it will be necessary . . . to look to interrelated teachings of
multiple [references] . . . and the background knowledge possessed by a
person having ordinary skill in the art, all in order to determine whether
there was an apparent reason to combine the known elements in the fashion
claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, ___, 127 S. Ct. 1727,
1740-41 (2007). “[T]his analysis should be made explicit” (id.), and it “can
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be important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.” Id.
Precise teachings directed to the specific subject matter of a claim are
not required to reach a conclusion of obviousness. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. at __, 127 S. Ct. at 1741. “[T]he teaching, motivation, or
suggestion may be implicit from the prior art as a whole, rather than
expressly stated in the references. . . . The test for an implicit showing is
what the combined teachings, knowledge of one of ordinary skill in the art,
and the nature of the problem to be solved as a whole would have suggested
to those of ordinary skill in the art.” In re Kahn, 441 F.3d 977, 987-988
(Fed. Cir. 2006).
Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
. . . Whether the rejection is based on “inherency” under 35
U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. §
103, jointly or alternatively, the burden of proof is the same,
and its fairness is evidenced by the PTO’s inability to
manufacture products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (footnote omitted).
Although § 103 does not define what is meant by “prior art”
this determination is frequently couched in terms of whether the
art is analogous or not, i.e., whether the art is “too remote to be
treated as prior art.” In re Sovish, 769 F.2d 738, 741 (Fed. Cir.
1985).
. . . .
Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of
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endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor's endeavor,
whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved. In re
Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In re Wood, 599
F.2d 1032, 1036 (CCPA 1979).
In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992).

OBVIOUSNESS OVER GEORGE, CASEY, AND SNYDER
Claims 22-24 stand rejected under 35 U.S.C. § 103(a) as obvious in
view of George, Casey, and Snyder (Ans. 3).

Findings of Fact (“FF”)
Scope and content of the prior art
The George patent
1. George describes an inflatable global map (George, at col. 1, ll. 3-8 and
43-47). The map “can be an educational toy or novelty” (id. at col. 2, ll. 18-
19).
2. The map “is formed of sections connected together at their edges and
reinforced with seams or with a band” (George, at col. 1, ll. 4-7).
3. Figs. 4 and 5 show the global map with raised outside bands or seams
(George, at col. 1, ll. 37-30) “along the ends of latitude and longitudinal
markings of the map” (id. at col. 2, ll. 9-13).
4. The map is made from printed sections which “are cut from rubber,
plastic, rubberized cloth or any other suitable material” (George, at col. 2, ll.
4-6).
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The Casey patent
5. The Casey patent describes a hollow rubber playing ball “having irregular
design features thereon, for example, in simulation of human or animal
facial features without materially affecting the balance of the ball” (Casey, at
col. 1, ll. 1-8).
6. The ball is molded so that the ball’s outer surface has raised projections
to provide the desired design (Casey, at col. 1, ll. 25-37).
The Snyder patent
7. Snyder “relates to globes, normally terrestrial ones, having the land
masses in relief on their generally spherical outer surface suitably colored to
designate political subdivisions or the like . . . together with lines
corresponding to parallels and meridians of latitude and longitude” (Snyder,
at col. 1, ll. 9-16).
8. The “relief globe” (Snyder, at col. 1, 39-40) is made of plastic sheet
materials “having projecting portions corresponding to land masses and
adjacent spherical portions corresponding to water masses (id. at col. 5, ll.
36-39).
Differences between the prior art and the claimed invention
9. Claims 22 is directed to an “inflated global world map fitness ball having
a global world map image” that comprises:
10. ● raised land masses and raised borders of the land masses;
11. ● bodies of water having surfaces lower than the raised land masses;
12. ● raised grid lines representing longitude and latitude lines; and
13. ● “having a resiliency to permit a person to sit or lean on said inflated
world map rubber fitness ball.”
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14. Claim 23 is to the fitness ball of claim 22 where “land, water and ice . . .
have the colors green, blue and white respectively.”
15. Claim 24 is to the fitness ball of claim 22 where the ball has “a diameter
greater than 35 cm.”
Claim 22
16. George describes an inflatable global map ball with raised longitude and
latitude lines (FF2, 3) as in claim 22 (FF12)
17. George’s ball does not have raised land masses and sunken water bodies
as does the ball of claim 22 (Ans. 3-4; FF10, 11).
18. Each of George and Casey teach balls of made of rubber or plastic
materials (FF4, 5) which would have “a resiliency to permit a person to sit or
lean on” the ball as recited in claim 22 (FF13)
Claim 23
19. George does not state that its land masses, water, and ice are colored as
in claim 23.
Claim 24
20. Neither George nor Casey discloses the diameter of their ball nor a
diameter of 35 cm as recited in claim 24.
Reason to combine
Claim 22
21. Although George’s inflated global map lacks raised land masses and
lowered water bodies as recited in claim 22 (FF10, 11), Snyder teaches that
relief maps with raised “projecting” land masses were conventional and thus
would have been routinely incorporated on any map in order to depict its
topography (FF7-8; Ans. 3-4). “By raising the land masses, the . . . present
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bodies of water [would have] surfaces lower than the raised borders of land
masses” as required by claim 22 (Ans. 4).
22. Casey also discloses that it was known to raise surface portions of a ball
to simulate a design in three-dimension (FF5-6; Ans. 3).
Claim 23
23. Snyder describes coloring a relief map in order to allow users to
distinguish the various map features (FF7). Thus, persons of ordinary skill
in the art would have been prompted to color the land masses on George’s
map for the advantages disclosed by Snyder, meeting the corresponding
limitation of claim 23 (Ans. 4).
Claim 24
24. The Examiner finds:
[I]t would have been obvious to one of ordinary skill in the art
to form the globe of George with a diameter greater than 35 cm
in order to provide a large globe that people can easily see. The
particular dimension of greater than 35 cm has been determined
to be obvious lacking a demonstration of the criticality for this
particular dimension by a showing of a new and unexpected
result obtained therefrom. In re Aller 105 USPQ 233.
(Ans. 4.)
Analysis
The differences between George and the claimed subject matter are
that George does not describe an inflated globe with raised land masses and
lowered water bodies (claim 22), colored geographical features (claim 23),
and with a diameter of 35 cm (claim 24) (FF17, 19, 20) as recited in the
claims. However, the Examiner has provided a reasoned basis for finding
that such modifications would have been obvious to persons of ordinary skill
in the art (FF21-24). As the Examiner’s findings are fact-based and logical,
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we conclude there is sufficient evidence to establish prima facie obviousness
of claims 22-24.
Appellants argue that cited prior art “cannot be validly combined”
(App. Br. 7). Appellants state “George’s ball is a beach ball and not a
fitness ball. Casey’s ball is a playing ball and not a fitness ball. Snyder is
not even any kind of a ball, but only a globe” (id.). See also App. Br. 9.
A reference is considered to be “prior art” to the claimed invention if
it is in the same field of endeavor or reasonably pertinent to the problem
addressed by the inventor. Clay, 966 F.2d at 658-59. As both George and
Snyder involved global maps, persons of ordinary skill in the art would have
considered them to be reasonably pertinent and/or in the same field of
endeavor and therefore would have combined by them as did the Examiner
in finding the claimed subject matter obvious. Casey’s teachings are also
reasonably pertinent to and/or in the same endeavor to George since, as
admitted by Appellants, both patents involve balls (“George’s ball is a beach
ball”; “Casey’s ball is a playing ball”) (App. Br. 7). It is unnecessary that
there be an explicit suggestion to combine the references as long as there is a
logical reason for doing so as there is here. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. at __, 127 S. Ct. at 1741.
Appellants also contend that “none of the three references . . .
disclose, suggest or teach the use of a ‘rubber fitness’ ball as now defined
in” independent claim 22 (App. Br. 8). Appellants state “it is not possible to
have pins P in a rubber fitness ball or to mount a rubber fitness ball on a
mount M” as in Snyder “and still use the fitness ball” (App. Br. 9).
While Snyder describes its globe as mounted with pins, this teaching
was not relied upon by the Examiner in the rejection. Rather, the Examiner
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cited Snyder for its description of a globe with relief features that would
have been routinely incorporated on to any map, including on George’s
inflatable map (FF21).
Other than defining the fitness ball by the material (“rubber”) from
which it is made, Appellants have not defined nor described the fitness ball
in such a way as to distinguish it from the ball described in George or Casey.
As both references teach balls made of rubber (FF4, 5), persons of ordinary
skill in the art would have reasonably believed that such balls possessed “a
resiliency to permit a person to sit or lean on” as recited in claim 22 and
could serve as fitness balls. Appellants have not provided evidence to prove
otherwise. In re Best, 562 F.2d at 1255.
Appellants contend that the limitations recited in claims 23 and 24 are
not disclosed or suggested by the combination of references cited by the
Examiner (App. Br. 10). However, the Examiner cited explicit teachings
that would have led persons of skill in the art to modify George to have
arrived at the particularly claimed limitations (FF23-24). Appellants have
not identified a defect in the Examiner’s findings nor reasoning which we
conclude are supported by the evidence of record.

OBVIOUSNESS OVER GEORGE, LANDINI, AND SNYDER
Claims 22-24 stand rejected under 35 U.S.C. § 103(a) as obvious in
view of George, Landini, and Snyder (Ans. 4).

Scope and content of the prior art
The George and Snyder patents are described above (FF1-4, 7, & 8).
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The Landini patent
25. Landini describes an air-inflated globe map that can be made of rubber
or other suitable elastic material (Landini, 1, ll. 1-5 and 60-63).
26. The map can be a relief map (Landini, at 1, ll. 67-68).
27. The globe map can be mounted on a pedestal (Landini, 1, ll. 54-57).

Differences between the prior art and the claimed invention
28. The limitations of claims 22-24 are summarized in findings of fact 9-15.
29. The differences between George and the subject matter of claims 22-24
are summarized in findings 16-20.

Reason to combine
Claim 22
30. The reason to combine the George and Snyder patents to arrive at the
limitations recited in claim 22 is summarized in finding of fact 21. (See
Ans. 5.)
31. Landini also teaches that a global map can be relief map (FF26), i.e.,
with raised land masses, and thus is combined with George for the same
reasons as Snyder (Ans. 5).

Claim 23
32. The reason to combine the George and Snyder patents to arrive at the
color limitation recited in claim 23 is summarized in finding of fact 23. (See
Ans. 5.)

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Claim 24
33. The reason to combine the George and Snyder patents to arrive at the
color limitation recited in claim 24 is summarized in finding of fact 24. (See
Ans. 5.)
Analysis
As with the previous rejection, the differences between George and
the claimed subject matter are that George does not describe an inflated
globe with raised land masses and lowered water bodies (claim 22), colored
geographical features (claim 23), and with a diameter of 35 cm (claim 24) as
recited in the claims. The Examiner’s reasons for combining Snyder with
George to reach the claimed limitations absent from the George patent are
the same as with the first obviousness rejection (Ans. 5). Landini is further
cited for teaching an inflatable rubber globe with raised land masses (FF25,
26) as in claim 22, providing additional evidence that it was well-known in
the art to depict land masses as raised projections (Ans. 5).
Appellants contend that the references are non-analogous “since
Landini, like Snyder, also discloses a mounted globe and not a free standing
ball nor a free standing global world map rubber fitness ball as defined by”
the claims (App. Br. 9).
Appellants have not applied the correct standard for determining what
is non-analogous art. As indicated above, references do not necessarily have
to be in the field of endeavor to be combined as long as they would be
considered reasonably pertinent to the claimed invention. Clay, 966 F.2d at
658-59. In this case, the claims relate to global relief maps as does each of
George, Snyder, and Landini. All three cited references therefore would
have been considered pertinent to the design of a global relief map,
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regardless of the ultimate use the map was put to. As for Appellants’
contention that Landini is not pertinent since it “shows the fixed mounting of
the globe to a pedestal” (App. Br. 9), the Examiner cited Landini for its
disclosure of a map with relief features, not a rubber fitness ball.
Both Snyder and Landini teach balls made of rubber (FF4, 25).
Persons of ordinary skill in the art would have reasonably believed that such
rubber balls possessed “a resiliency to permit a person to sit or lean on” as
recited in claim 22 and could serve as fitness balls. Appellants have not
provided evidence to prove otherwise. In re Best, 562 F.2d at 1255.
Appellants contend that the limitations recited in claims 23 and 24 are
not disclosed or suggested by the combination of references cited by the
Examiner (App. Br. 10). However, the Examiner cited explicit teachings
that would have led persons of skill in the art to modify George to have
arrived at the particularly claimed limitations (FF23, 24). Appellants have
not identified a defect in the Examiner’s findings nor reasoning which we
conclude are supported by the evidence of record.

CONCLUSIONS OF LAW
The Examiner did not err in combining the cited references to reach
the conclusion the claims were obvious.
The recitation of “fitness ball” in claim 22 does not distinguish the
claimed invention from the cited prior art.
The rejections of claims 22-24 under 35 U.S.C. § 103(a) as obvious
over the cited prior art are affirmed.

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

lp

WEISS & MOY PC
4204 NORTH BROWN AVENUE
SCOTTSDALE AZ 85251