Ex Parte Lynch

Board of Patent Appeals and Interferences

Jan 30, 2004

09570507 (B.P.A.I. Jan. 30, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAMES P. LYNCH
____________
Appeal No. 2004-0350
Application No. 09/570,507
____________
ON BRIEF
____________
Before GARRIS, PAK, and TIMM, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 1-3, 5-11, and 14-16 which are all of the claims remaining
in the application.
The subject matter on appeal relates to a recreational
apparatus or game which comprises a base, a ladder fabricated from
horizontal rungs and vertical struts which are interconnected with
couplers, and a projectile having a flaccid spacer with massive
terminators at either end, whereby the projectile may be tossed
Appeal No. 2004-0350
Application No. 09/570,507
1 On page 5 of the brief, the Appellant has identified
three separate claim groupings, namely, (1) claims 1-3 and 5-11,
(2) claim 14 and (3) claims 15 and 16. Accordingly, in our
assessment of the above noted rejections, we will focus on the
independent claims in these respective claim groupings with
respect to which the dependent claims will stand or fall. See
37 CFR § 1.192(c)(7)(2002).
2 Via paper no. 21, the Examiner has indicated that the
reply brief has been entered and considered but that the
documents submitted therewith as secondary evidence have not been
entered. It follows that we have not considered these non-
entered documents in our disposition of this appeal.
2
to said ladder and wrapped thereabout. Further details of this
appealed subject matter are set forth in the appealed independent
claims which are claims 1, 10, 14 and 15. A copy of these claims,
taken from the Appellant’s brief, is appended to this decision.
The references set forth below are relied upon by the Examiner
as evidence of obviousness:
Hailer et al. (Hailer) 4,932,657 June 12, 1990
Kraushaar 5,165,694 Nov. 24, 1992
Schmidt 5,539,957 July 30, 1996
Claims 1-3, 5-11 and 14 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kraushaar in view of Hailer,
and claims 15 and 16 stand correspondingly rejected over these
references and further in view of Schmidt.1
We refer to the brief and reply brief2 and to the answer for
Appeal No. 2004-0350
Application No. 09/570,507
3
a complete exposition of the opposing viewpoints expressed by the
Appellant and the Examiner concerning these rejections.
OPINION
For the reasons which follow, we will sustain the Examiner’s
rejection of claims 1-3, 5-11 and 14 but not his rejection of
claims 15 and 16.
Relative to the game apparatus of Kraushaar, appealed
independent claims 1, 10 and 14 share a common distinction in that
they require a ladder or target fabricated from tubular material
such as horizontal rungs and vertical struts interconnected with
couplers therefor. In contrast, patentee’s game apparatus is
fabricated from horizontal rungs which are supported by vertical
walls. However, we conclude that it would have been obvious for
one having ordinary skill in the art to fabricate Kraushaar’s
apparatus with tubular material to thereby form a base and ladder
having horizontal rungs and vertical struts interconnected with
couplers in accordance with the teachings of Hailer (e.g., see
Figure 1 and the disclosure relating thereto including lines
7-35 in column 3). The so-fabricated apparatus of Kraushaar
would thereby possess the benefits of being easily broken down,
Appeal No. 2004-0350
Application No. 09/570,507
4
transported and set up as taught by Hailer (e.g., see lines 6-9
in column 2 and the paragraph bridging columns 2 and 3).
It is the Appellant’s position that an artisan would not have
possessed the level of skill necessary to combine the teachings
of Kraushaar and Hailer in the manner discussed above. We find
no persuasive merit in this position, however, since it is
contraindicated by the Hailer disclosure which is specifically
directed to an artisan with an ordinary level of skill and which
is specifically concerned with fabricating a game apparatus from
tubular materials. We are also unconvinced by the Appellant’s
argument that the combination proposed above is contrary to
Kraushaar and other prior art of record which illustrate that,
in games involving tossing devices, “targets were thought by those
in the art to be massive in order to remain stationary and survive
repeated impacts from a weighted projectile” (brief, page 16).
Again, the Hailer reference contraindicates this argument since
the tubular-fabricated apparatus thereof is used in conjunction
with thrown, hit or kicked balls such as baseballs, footballs and
soccer balls (e.g., see lines 5-13 in column 1).
With respect to appealed independent claim 1 specifically,
the Appellant further argues that the applied prior art contains
Appeal No. 2004-0350
Application No. 09/570,507
5
no teaching or suggestion of a projectile having the here claimed
feature concerning flaccid spacer length. This argument, which
is also applicable to appealed independent claim 10, is not well
taken. Kraushaar explicitly teaches that his web member, which
reads on the Appellant’s claimed flaccid spacer, “is provided with
a sufficient length so that when caught on a cross bar it can wrap
around one or two cross bars at the same time” (column 2, lines 4-
7; emphasis added). A web member length which is sufficient to
wrap around two cross bars at the same time would correspond to
the flaccid spacer length defined by the independent claims under
consideration.
The additional argument concerning appealed independent
claim 14 relates to the requirement that the horizontal rungs each
individually possesses a length twice that of the respective
vertical struts. Because the length of these vertical struts
defines the spacing between the horizontal rungs, the claim feature
under consideration involves the parameter of horizontal rung
length relative to vertical spacing between the rungs.
Significantly, Kraushaar evinces that the parameter of rung-
length relative to the spacing between rungs is recognized in this
game art as a result-effective variable (e.g., see Figure 1 in
comparison with Figure 5 and the respective disclosures relating
Appeal No. 2004-0350
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thereto). It is well settled that, generally speaking, it would
have been obvious for an artisan with ordinary skill to develop
workable or even optimum values for such result-effective
parameters. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934,
1936-37 (Fed. Cir. 1990); In re Boesch, 617 F.2d 272, 276, 205 USPQ
215, 219 (CCPA 1980); In re Aller, 220 F.2d 454, 456, 105 USPQ 233,
235 (CCPA 1955). We conclude, therefore, that it would have been
obvious for the artisan to provide the Kraushaar apparatus, as
modified above, with workable values for the parameter under
consideration including those wherein the horizontal rungs are each
individually twice the length of the respective vertical struts as
required by claim 14.
In light of the foregoing, it is our ultimate determination
that the Kraushaar and Hailer references establish a prima facie
case of obviousness with respect to independent claims 1, 10 and 14
which the Appellant has failed to successfully rebut with argument
and/or evidence of nonobviousness. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). As a
consequence, we hereby sustain the section 103 rejection of claims
1-3, 5-11 and 14 as being obvious over Kraushaar in view of Hailer.
Appeal No. 2004-0350
Application No. 09/570,507
7
We reach a different conclusion regarding the section 103
rejection of claims 15 and 16 as being unpatentable over Kraushaar
in view of Hailer and further in view of Schmidt. As presented
in the answer, this rejection does not include a discussion of the
Schmidt reference. However, in the Office action mailed April 23,
2002 as paper no. 14, the Examiner expresses his obviousness
conclusion in the following manner:
Regarding claim 15, although the Hailer
base does not have pivoting legs, it would have
been an obvious matter of design choice to
substitute pivoting legs for the Kraushaar game
as modified above since it has generally been
recognized that the concept of making elements
adjustable involves only routine skill in the
art. Moreover, it would have been obvious to
provide pivoting legs in view of Schmidt who
shows in Figures 4 and 5 that it is old and
well-known in the art to collapse a base by
using pivotally attaching tubular members to
make the target more easily stored.
The Examiner’s conclusion of obviousness lacks persuasive
merit. Of the prior art here applied by the Examiner, only the
Schmidt reference contains any teaching or suggestion relating
to a pivot feature of any kind. However, the Examiner does not
identify and we do not independently perceive any disclosure in
this reference which would have suggested providing the modified
Kraushaar apparatus discussed above with couplers which pivotally
Appeal No. 2004-0350
Application No. 09/570,507
8
attach the horizontally extending legs to the ladder so as to
permit the perpendicular to parallel pivoting movement required
by independent claim 15. While Schmidt may show a coupler which
pivotally attaches a horizontal leg to a vertical tubular member
(e.g., see elements 39, 17 and 19 in Figure 1), this coupler is
completely different from and not substitutable for the coupler
which attaches Hailer’s horizontal leg 21 to the vertical frame
sections 19 of his target frame 14.
Viewed from this perspective, it seems clear that the
rejection under review is based upon impermissible hindsight
wherein that which is taught only by the inventor is used against
its teacher. W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540,
1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert denied, 469 U.S.
851 (1984). We cannot sustain, therefore, the Examiner’s § 103
rejection of claims 15 and 16 as being unpatentable over Kraushaar
in view of Hailer and further in view of Schmidt.
The decision of the Examiner is affirmed-in-part.
Appeal No. 2004-0350
Application No. 09/570,507
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No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )
BRG/jrg
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Application No. 09/570,507
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ALBERT W. WATKINS
30844 NE 1ST AVENUE
ST. JOSEPH, MN 56374
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APPENDIX
1. A recreational apparatus which enables participation by
diverse persons of all skill levels and which encourages
interpersonal communications and personal development, and
which further may be disassembled to be stored compactly and
re-assembled quickly, and which is resistant to the exterior
environment, comprising:
a base for providing structural support upon a surface;
a ladder extending vertically therefrom fabricated from a
lightweight, rigid, resilient tubular material, having first and
second horizontal rungs and first, second, third and fourth
vertical struts, said vertical struts having a first length;
a first coupler retaining said first and second vertical
struts to a first end of said first horizontal rung;
a second coupler retaining said third and fourth vertical
struts to a second end of said first horizontal rung distal to said
first end of said first horizontal rung;
a third coupler retaining said second vertical strut to a
first end of said second horizontal rung;
a fourth coupler retaining said fourth vertical strut to a
second end of said second horizontal rung distal to said first end
of said second horizontal rung;
said first, second, third and fourth couplers coupling either
permanently or removably;
and
a projectile having a flaccid spacer equal to the length of
said first and second vertical struts in combination and massive
terminators at either end of said flaccid spacer,
whereby said projectile may be tossed to said ladder and
subsequently wrapped thereabout.
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Application No. 09/570,507
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10. A game having an aerial projectile and a target,
said aerial projectile formed of two massive ends and a
flaccid connector therebetween, wherein the improvement
comprises:
at least two primarily horizontal rungs within said
target able to support said aerial projectile thereon,
said rungs terminated at both ends with primarily vertical
supports and spaced from each other by a first predetermined
distance;
said target comprised entirely of tubular and resilient
material which is simultaneously light weight, weather
resistant, and of low aerodynamic cross-section, to
subsequently withstand the rigors of weather including high
winds; and
said flaccid connector having a length twice said first
predetermined distance.
14. A recreational apparatus which enables
participation by diverse persons of all skill levels and
which encourages interpersonal communications and personal
development, and which further may be disassembled to be
stored compactly and re-assembled quickly, and which is
resistant to the exterior environment, comprising:
a base for providing structural support upon a surface;
a ladder extending vertically therefrom fabricated
from a lightweight, rigid, resilient tubular material,
having first and second horizontal rungs and first, second,
third and fourth vertical struts having a first length,
said first and second horizontal rungs each individually
twice said first length;
a first coupler retaining said first and second
vertical struts to a first end of said first horizontal
rung;
a second coupler retaining said third and fourth
vertical struts to a second end of said first horizontal
rung distal to said first end of said first horizontal
rung;
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Application No. 09/570,507
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a third coupler retaining said second vertical strut
to a first end of said second horizontal rung;
a fourth coupler retaining said fourth vertical strut
to a second end of said second horizontal rung distal to
said first end of said second horizontal rung;
said first, second, third and fourth couplers coupling
either permanently or removably; and
a projectile having a flaccid spacer and massive
terminators at either end of said flaccid spacer,
whereby said projectile may be tossed to said ladder
and subsequently wrapped thereabout.
15. A recreational apparatus which enables
participation by diverse persons of all skill levels and
which encourages interpersonal communications and personal
development, and which further may be disassembled to be
stored compactly and re-assembled quickly, and which is
resistant to the exterior environment, comprising:
a base comprising first and second horizontally
extending legs, said first and second legs extending
parallel in an operative position for providing structural
support upon a surface;
a ladder extending vertically therefrom fabricated
from a lightweight, rigid, resilient tubular material,
having first and second horizontal rungs and first, second,
third and fourth vertical struts;
a first coupler retaining said first and second
vertical struts to a first end of said first horizontal
rung;
a second coupler retaining said third and fourth
vertical struts to a second end of said first horizontal
rung distal to said first end of said first horizontal
rung;
a third coupler retaining said second vertical strut
to a first end of said second horizontal rung;
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Application No. 09/570,507
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a fourth coupler retaining said fourth vertical strut
to a second end of said second horizontal rung distal to
said first end of said second horizontal rung;
said first, second, third and fourth couplers coupling
either permanently or removably;
fifth and sixth couplers respectively pivotally
attaching said first and second horizontally extending legs
to said ladder wherein said first and second horizontally
extending legs are pivotal from generally perpendicular to
said ladder in said operative position to parallel to said
ladder for storage; and
a projectile having a flaccid spacer and massive
terminators at either end of said flaccid spacer,
whereby said projectile may be tossed to said ladder
and subsequently wrapped thereabout.