Ex Parte Manser

Board of Patent Appeals and Interferences

Mar 11, 2010

10772014 (B.P.A.I. Mar. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte KARL MANSER
____________________

Appeal 2009-005349
Application 10/772,014
Technology Center 3700
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Decided: March 11, 2010
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Before: WILLIAM F. PATE III, STEVEN D.A. MCCARTHY, and
KEN B. BARRETT, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
9-13. We have jurisdiction under 35 U.S.C. § 6(b).
The claims are directed to a belt kit for a treadmill. Claim 9,
reproduced below, is illustrative of the claimed subject matter:
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9. A belt kit for a treadmill, the belt kit comprising:
at least two separate belts dimensioned for use on the
treadmill, the at least two separate belts each comprising a base
having a plurality of projections extending upward from the
base;
a first belt of the at least two separate belts having a first
continuous, consistent surface;
a second belt of the at least two separate belts having a
second continuous, consistent surface,
wherein the first and the second surfaces are different
from each other in at least one of a size of the plurality of
projections and a surface treatment,
the first belt and the second belt are dimensioned for
direct foot contact, and
the first belt is dimensioned to impart proprioceptive
demands on the foot, ankle and lower leg different from those
of the second belt.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kim
Dolan
Shorten
Naruse
US 4,925,183
US 5,066,000
US 6,029,962
US 6,210,349 B1
May 15, 1990
Nov. 19, 1991
Feb. 29, 2000
Apr. 3, 2001

REJECTIONS
Claims 9, 10 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kim, Dolan, and Naruse. Ans. 3.
Claims 11 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kim, Dolan, Naruse, and Shorten. Ans. 4.
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OPINION
Appellant contends that the Examiner erred in concluding that the
subject matter of claim 9 would have been obvious over the combination of
Kim, Dolan and Naruse. App. Br. 5-7. Claims 10 and 12 are argued solely
based upon their dependency from claim 9. Regarding the rejection of
claims 11 and 13, Appellant only repeats the arguments proffered regarding
claim 9 and contends that Shorten fails to remedy the allegged deficiencies.
App. Br. 7.
Claim 9 involves no more than the predictable use of prior art
elements according to their known functions. The Examiner did not err in
concluding that the subject matter of claim 9 would have been obvious to
one having ordinary skill in the art over the combination of Kim, Dolan and
Naruse. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Appellant and the Examiner agree that Kim does not disclose multiple
belts with different surfaces. App. Br. 5; Ans. 5. Appellant contends that
Kim’s surface irregularities are not designed to impart proprioceptive
demands on the foot, ankle and lower leg. App. Br. 5-6. While features of an
apparatus may be recited either structurally or functionally, claims directed
to an apparatus must be distinguished from the prior art in terms of structure
rather than function. See e.g., In re Schreiber, 128 F.3d at 1477-78. The
Specification indicates that the plurality of projections provided on the mat
or belt which force the user to balance himself or herself in space, are
responsible for placing the proprioceptive demands upon the user’s foot,
ankle or leg. Spec. 2:7 – 4:15. The Examiner reasonably found that the
uneven surface (at 250) of Kim’s belt, having high-and-low zones and
bumps, which cause the user to keep a bike in balance, thereby forcing the
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stomach, back and rest of the body to exercise by constantly making
adjustments, would perform this claimed function. Ans. 3; Kim col. 1, ll. 20-
32; col. 4, ll. 53-56. While Kim does not explicitly state that the belt could
be used for direct foot contact or to impart proprioceptive demands on the
foot, ankle and lower leg, Appellant has not met his burden of establishing
that Kim would not perform this function. See In re Swinehart, 439 F.2d
210, 212-213 (CCPA 1971). The mere recitation of the material or article
intended to be worked upon by the apparatus being claimed does not impart
patentability to the claims. See e.g., In re Otto, 312 F.2d 937, 940 (C.C.P.A.
1963); In re Lampert, 245 F.2d 253, 256 (C.C.P.A. 1957); In re Rishoi, 197
F.2d 342, 345 (C.C.P.A. 1952).
Appellant further contends that one of ordinary skill in the art would
have no reason to combine the teachings of Kim and Dolan because doing so
would render Kim inoperable for its intended purpose of riding a bicycle.
App. Br. 6. Treadmills are notoriously known as devices for running or
walking on. While the bicycle is an important part of Kim’s invention, it
would have been obvious to one of ordinary skill in the art that if a user
desired to instead run or walk on a more “realistic” and less “monotonous”
surface, the bicycle could be omitted or Kim’s teaching of providing a
bumpy surface could be applied to an ordinary treadmill. See Kim col. 1, ll.
16-17; col. 2, l. 5.
Appellant further contends that, in implementing the Examiner’s
proposed combination of Kim and Dolan, one of ordinary skill in the art
would not arrive at the claimed first and second belts. Appellant contends
one would instead arrive at a single belt having different consecutive
surfaces. App. Br. 6. The fact that the combined teachings of the applied
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references may render unclaimed subject matter obvious does not establish
that the Examiner erred in concluding that those teachings render the
claimed subject matter obvious. Combining the teachings of references does
not mandate combination of their specific structures. In re Nievelt, 482 F.2d
965, 968 (CCPA 1973). One of ordinary skill in the art would understand
that Dolan’s teaching of providing multiple surfaces on a track for patients
with balance problems to traverse could be implemented in a treadmill, such
as Kim’s, not only by providing a single belt with multiple surfaces as
Appellant suggests, but also by providing multiple belts. See Dolan col. 1, ll.
6-9; col. 2, ll. 11-13 and 17-19.
Appellant’s sole contention regarding Naruse, that it does not remedy
any of the alleged deficiencies of the combination of Kim and Dolan, is
moot since Kim and Dolan do not posses any of the alleged deficiencies.
App. Br. 6-7.
DECISION
For the above reasons, the Examiner’s rejection of claims 9-13 are
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2009).

AFFIRMED
Vsh

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