Ex Parte Lincir

Board of Patent Appeals and Interferences

Sep 29, 2009

10955512 - (D) (B.P.A.I. Sep. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TOM I. LINCIR
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Appeal 2009-007853
Application 10/955,512
Technology Center 3700
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Decided: September 29, 2009
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Before TONI R. SCHEINER, DEMETRA J. MILLS, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-11, directed to a polyurethane coated weight core. We have
jurisdiction under 35 U.S.C. § 6(b).
Appeal 2009-007853
Application 10/955,512

STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal:
1. A polyurethane coated apertured weighted core comprising:
a core having a hole at its center disposed to receive a bar for lifting
and supporting said core, at least one aperture located on the periphery of
said core which is adapted to conform to a user’s hand in order to allow
lifting of the core, a polyurethane coating disposed over the entirety of said
apertured core wherein the gripable interior surface of said polyurethane
coated aperture is provided with a gripable surface which possesses
sufficient friction to allow a user to safely lift the core.

The Examiner rejected the claims as follows:
(A) Claims 1-4 and 10 under 35 U.S.C. § 103(a) as unpatentable over Lien
et al. (US 2002/0091044 A1, published July 11, 2002), Iron Grip
Barbell (promotional brochure for urethane coated weight plates,
distributed April 10, 1997 by Iron Grip Barbell Company) and
Eckmann (US 5,823,922, issued October 20, 1998).

(B) Claims 5 and 11 under 35 U.S.C. § 103(a) as unpatentable over Lien,
Iron Grip Barbell, Eckmann, and Osterman (US 6,071,214, issued
June 6, 2000).

(C) Claims 6-9 under 35 U.S.C. § 103(a) as unpatentable over Lien, Iron
Grip Barbell, Eckmann, and Harms et al. (US 2005/0054496 A1,
published March 10, 2005).

We affirm.
REJECTION (A)
Issue
Claims 1-4 and 10 stand rejected as unpatentable over Lien, Iron Grip
Barbell, and Eckmann.
The Examiner finds that Lien discloses a polyurethane coated
weighted core with a peripheral aperture to allow lifting of the core, but
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“does not disclose that the polyurethane coating is disposed over the entirety
of the apertured core wherein the gripable interior surface of the
polyurethane coated aperture is provided with a gripable surface which
possesses sufficient friction to allow a user to safely lift the core” (Ans. 3).
However, the Examiner finds that Iron Grip Barbell also discloses a
weighted core with apertures coated with a protective coating, in this case
urethane, while Eckmann discloses a dumbbell completely coated with a
layer of flocked polyurethane.
The Examiner concluded that it would have been obvious to
completely coat the apertured plates of Lien and/or Iron Grip Barbell,
including the aperture surfaces, with polyurethane or flocked polyurethane,
as such protective coatings are conventional for weight training equipment,
and that this would have provided a gripable surface with sufficient friction
to allow a user to safely lift the core (id. at 4).
Appellant’s position is that “[t]he Examiner’s contention that the
property of being gripable with sufficient friction to allow a user to safely
lift the core may be inherent of the polyurethane coating teaches away from
the instant invention” (App. Br. 5), and the Examiner’s rejection improperly
relies on the combination of non-analogous art (id.).
The issue raised by this rejection is whether Appellant has established
that the Examiner erred in concluding that a polyurethane coated apertured
weighted core, where the polyurethane coated interior surface of the aperture
has a gripable surface of sufficient friction to allow a user to safely lift the
core, would have been obvious over the combined teachings of Lien, Iron
Grip Barbell, and Eckmann.

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Application 10/955,512

Findings of Fact
FF1 Claim 1 is directed to a weighted core with a hole at its center
to receive a bar for lifting and supporting the core, at least one aperture
located on the periphery of said core adapted to conform to a user’s hand in
order to allow lifting of the core, and a polyurethane coating over the entire
apertured core “wherein the gripable interior surface of said polyurethane
coated aperture is provided with a gripable surface which possesses
sufficient friction to allow a user to safely lift the core.”
FF2 Lien teaches that “[o]ne major problem with free weight lifting
and a cause of many accidental injuries is that it is difficult to pick up a
weight plate, particularly disc-shaped plates having flat sides” without it
“slipping out of the grasp of the user”(Lien ¶ 4).
FF3 Lien describes a weight plate with “a planar body having a
central opening for receiving a barbell or dumbbell” (Lien ¶ 12) and “at least
one grip opening formed adjacent the peripheral edge of the weight plate . . .
[which] is adapted to receive one or more fingers of an average human hand
for securely grasping and lifting the weight plate” (id. at ¶ 13).
FF4 Lien’s weight plate “may be cast, rubber coated and/or
polyurethane coated” (Lien ¶ 23).
FF5 Lien does not specify whether or not the coating extends over
the entire weight plate.
FF6 The Iron Grip Barbell brochure discloses steel weight plates
“encased in” urethane “that won’t scuff, scratch, mar or chip equipment,
walls or floors” (Iron Grip Barbell brochure, 2nd page). The Iron Grip
Barbell weight plates are pictured immediately below:
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This image of Iron Grip Barbell’s weight plates shows “integrated handgrips
that provide a safe, user-friendly means for lifting and carrying” the coated
weight plates (id.).
FF7 Eckmann discloses an iron dumbbell, cast in one piece, and
“coated with a resilient material such as polyurethane, or Neoprene . . .
[which] can be flocked” (Eckmann, col. 1, ll. 52-53; col. 3, ll. 18-19).
FF8 The coating “insulate[s] the cast iron from the hand of the user,
. . . minimize[s] the danger of injury, . . . enhance[s] the appearance of the
dumbbell” (Eckmann, col. 2, ll. 3-5), and “provide[s] a rubbery surface” (id.
at col. 4, ll. 3-4).
Principles of Law
A reference must be read, not in isolation, but for what it fairly
teaches in combination with the prior art as a whole. In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). “In many fields it may be that
there is little discussion of obvious techniques or combinations, and it often
may be the case that market demand . . . will drive design trends.” KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). “[I]f a technique has been
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill.”
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Id. at 417. Similarly, “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” Id. at 416.
As long as some suggestion to combine the elements is provided by
the prior art as a whole, the law does not require that they be combined for
the reason or advantage contemplated by the inventor. In re Beattie, 974
F.2d 1309, 1312 (Fed. Cir. 1992); In re Kronig, 539 F.2d 1300, 1304 (CCPA
1976).
Analysis
We find no error in the Examiner’s conclusion that the claimed
invention would have been obvious over the combined teachings of Lien,
Iron Grip Barbell, and Eckmann. We are not persuaded otherwise by
Appellant’s arguments.
Appellant argues that “[t]he Examiner’s contention that the property
of being gripable with sufficient friction to allow a user to safely lift the core
may be inherent of the polyurethane coating teaches away from the instant
invention since these surfaces are seen to require that sufficient friction be
applied to same in order to provide safe usage” (App. Br. 5).
If we understand Appellant’s argument, it is that Appellant considered
a polyurethane coating alone on the aperture to be inadequate to provide
sufficient friction to grip a weight plate safely, so “sufficient friction” can’t
be an inherent property of a polyurethane coating per se. This argument is
not persuasive. The claims merely require that “the gripable interior surface
of said polyurethane coated aperture is provided with a gripable surface
which possesses sufficient friction to allow a user to safely lift the core”
(FF1). The Lien and Iron Grip Barbell references teach that their coated
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apertured weight plates can be safely and securely lifted and carried (FF3,
FF5). The Examiner reasonably believed, based on these disclosures, that
the Lien and Iron Grip Barbell weight plates, especially when coated as in
Eckmann, would therefore have “gripable surface[s] which possess[ ]
sufficient friction to allow a user to safely lift” them, as required by the
claims. Appellant has not provided evidence to the contrary, or otherwise
explained how the references “teach away” from the claimed invention, i.e.,
how the references would have led one of skill in the art down a divergent
path.1
Moreover, Eckmann provides evidence that it is conventional to coat
weights with a layer of flocked polyurethane (FF7, FF8). We agree with the
Examiner that it would have been obvious for one skilled in the art to coat
the apertured weight plates Lien and/or Iron Grip Barbell with flocked
polyurethane for the reasons identified by Eckmann: e.g., to insulate a user
from the metal core, provide protection from injury, enhance the esthetic
appearance of the dumbell, and to provide a rubbery surface (FF8). Even if
we accept, for the sake of argument, that one skilled in the art would not
expect a flocked surface to enhance gripability absent an express statement
by Eckmann, the law does not require that teachings be combined for the
same reason or advantage contemplated by the inventor. See Beattie, 974 at
1312; Kronig, 539 F.2d at 1304.

1 A prior art reference teaches away from a claimed invention “when a
person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
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Finally, we are not persuaded by Appellant’s contention that “it is
inappropriate to combine the teachings of Lien et al. directed to a weight
plate, the teachings of Iron Grip, likewise directed to a weight plate . . . ,
with Eckmann that is directed to a non-analogous dumbbell device” (App.
Br. 5). On the contrary, we find that the references relied on by the
Examiner are reasonably characterized as being from the same field of
endeavor, as all three are directed to weights (dumbbells and barbell plates)
used for strength training, and moreover, all three are concerned with the
safety and durability of the weights (FF3, FF6, FF8).
Conclusions of Law
Appellant has not established that the Examiner erred in concluding
that a polyurethane coated apertured weighted core, where the polyurethane
coated interior surface of the aperture has a gripable surface of sufficient
friction to allow a user to safely lift the core, would have been obvious over
the combined teachings of Lien, Iron Grip Barbell, and Eckmann.

REJECTION (B)
Issue
Claims 5 and 11 stand rejected as unpatentable over Lien, Iron Grip
Barbell, Eckmann, and Osterman (Ans. 6).
The issue raised by this rejection is whether Appellant has established
that the Examiner erred in concluding that a polyurethane coated apertured
weighted core, where the polyurethane coated interior surface of the aperture
has a land and groove texture, would have been obvious over the combined
teachings of Lien, Iron Grip Barbell, Eckmann, and Osterman.

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Additional Findings of Fact
FF9 Osterman discloses an exercise device for exercising the hands,
wrists, and arms (Osterman, col. 2, ll. 12-13). The device has polyurethane
hand grips which are “roughened, checked, dimpled, or varied in some other
manner in order to aid in gripping” (id. at col. 5, ll. 19-20).
Analysis
The Examiner finds that Lien, as modified by Iron Grip Barbell and
Eckmenn, “discloses the invention as claimed except for the interior surface
of the polyurethane aperture/slot compris[ing] lands and grooves” (Ans. 5).
However, the Examiner finds that Osterman discloses an exercise device
with surfaces that are “roughened, checked, [or] dimpled . . . to aid in
gripping” (id.), and that a checked surface comprises lands and grooves.
The Examiner concludes that it would have been obvious “to provide the
polyurethane gripable surface of [Lien, modified by Iron Grip Barbell and
Eckmann] . . . with a checked surface comprising lands and grooves, since
Osterman teaches that providing a polyurethane gripable surface with a
checked exterior surface aids in gripping” (id.).
Appellant contends that Osterman is “non-analogous and improperly
combinable . . . with either Lien et al, Iron Grip or Eckmann since it neither
teaches a dumbbell or a weighted core” (App. Br. 6).
Appellant’s argument is not persuasive. We find that the references
relied on by the Examiner are reasonably characterized as being from the
same field of endeavor, as all are directed to exercise equipment requiring
griping with the hands (FF3, FF6, FF7, FF9).
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Conclusions of Law
Appellant has not established that the Examiner erred in concluding
that a polyurethane coated apertured weighted core, where the polyurethane
coated interior surface of the aperture has a land and groove texture, would
have been obvious over the combined teachings of Lien, Iron Grip Barbell,
Eckmann, and Osterman.

REJECTION (C)
Issue
Claims 6-9 stand rejected as unpatentable over Lien, Iron Grip
Barbell, Eckmann, and Harms (Ans. 5-6).
The issue raised by this rejection is whether Appellant has established
that the Examiner erred in concluding that a polyurethane coated apertured
weighted core, where the polyurethane coating is applied by injection
molding, cast molding, open pour molding, or compression molding, would
have been obvious over the combined teachings of Lien, Iron Grip Barbell,
Eckmann, and Harms.
Findings of Fact
FF10 Claims 6-9 depend from claim 1 and specify that the
polyurethane coating is applied by employing various methods.
FF11 Harms discloses a polyurethane coated dumbbell, and teaches
that the coating may be applied in a variety of ways, including injection
molding, pour molding, spraying, etc. (Harms ¶ 26).
Analysis
The Examiner acknowledges that the Lien, Iron Grip Barbell, and
Eckmann references don’t specify the actual method of coating the weights.
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However, the Examiner finds that Harms discloses that polyurethane
coatings may be applied to dumbbells in a number of ways, including
injection molding and pour molding (Ans. 6).
We agree with the Examiner’s conclusion that it would have been
obvious to use any of these conventional techniques to coat the Lien and/or
Iron Grip Barbells.
We are not persuaded by otherwise by Appellant’s contention that the
references are non-analogous, and therefore not properly combinable (App.
Br. 8). Again, we find that the references relied on by the Examiner are
reasonably characterized as being from the same field of endeavor, as all
four are directed to coated weights (dumbbells and barbell plates) used for
strength training (FF3, FF6, FF8, FF11).
Conclusions of Law
Appellant has not established that the Examiner erred in concluding
that a polyurethane coated apertured weighted core, where the polyurethane
coating is applied by injection molding, cast molding, open pour molding, or
compression molding, would have been obvious over the combined
teachings of Lien, Iron Grip Barbell, Eckmann, and Harms.

SUMMARY
(A) The rejection of claims 1-4 and 10 under 35 U.S.C. § 103(a) as
unpatentable over Lien, Iron Grip Barbell, and Eckmann is affirmed.

(B) The rejection of claims 5 and 11 under 35 U.S.C. § 103(a) as
unpatentable over Lien, Iron Grip Barbell, Eckmann, and Osterman is
affirmed.

(C) The rejection of claims 6-9 under 35 U.S.C. § 103(a) as unpatentable
over Lien, Iron Grip Barbell, Eckmann, and Harms is 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)(1)(iv)(2006).
AFFIRMED

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