Ex parte Markham

Board of Patent Appeals and Interferences

Apr 26, 2002

09039466 (B.P.A.I. Apr. 26, 2002)

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and is not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DOUGLAS J. MARKHAM
____________
Appeal No. 2001-2178
Application No. 09/039,466
____________
ON BRIEF
____________
Before McQUADE, NASE and BAHR, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Douglas J. Markham appeals from the final rejection of
claims 1 through 6, all of the claims pending in the
application.
THE INVENTION
The invention relates to “an exercising device which is
. . . readily portable and connectable with a door when it is
Appeal No. 2001-2178
Application No. 09/039,466
2
used” (specification, page 1). Representative claim 1 reads
as follows:
1. In combination with a door of a building structure,
said door being mounted within an opening and being movable
between an open position permitting passage through said
opening to a closed position preventing passage through said
opening, a jamb surrounding said door, said door having an
interior surface and an exterior surface, a doorknob mounted
on said exterior surface, an exercising device comprising:
a loop strap slipped over said doorknob;
an elastic cord connected to said loop strap by a slip
knot attachment, said loop strap being extended from said
exterior surface to directly adjacent but spaced from said
interior surface by being conducted between said door and said
jamb, said elastic cord terminating in a first end and a
second end, said slip knot attachment being tightenable onto
said elastic cord which permits said first end and said second
end to each be stretchable independent of each other;
a first handle assembly attached by first connection
means to said first end; and
a second handle assembly attached by second connection
means to said second end, whereby said first handle and said
second handle are to be grasped by a human with a force to be
applied in a direction away from said door causing stretching
of said elastic cord with said door in said closed position
and said loop strap being secured to said door and said
doorknob.
THE PRIOR ART
The references relied on by the examiner to support the
final rejection are:
Appeal No. 2001-2178
Application No. 09/039,466
An English language translation of this reference,1
prepared on behalf of the United States Patent and Trademark
Office, is appended hereto.
Although the examiner’s answer does not restate the2
final rejection of claims 2 through 4, the record as a whole
shows that the omission was inadvertent.
3
Burke 4,948,117 Aug. 14, 1990
Froelich, Sr. et al. 5,709,630 Jan. 20, 1998

(Froelich)
Hermanson 8,203,510 Apr. 5, 1983
Dutch Patent Document1
THE REJECTIONS
Claims 1 through 4 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Hermanson in view of
Froelich.
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hermanson in view of Froelich and
Burke.
Attention is directed to the appellant’s brief (Paper No.
8) and to the examiner’s answer (Paper No. 9) for the
respective positions of the appellant and the examiner with
regard to the merits of these rejections.2
Appeal No. 2001-2178
Application No. 09/039,466
4
DISCUSSION
Hermanson discloses an exercise device composed of an
expanding unit 1 made of elastic rubber tubing, loops 7
attached to the free ends of the expanding unit, handgrips 10
detachably mounted on the loops 7, a protective sleeve 2
applied about the center of the expanding unit 1 and a
fastening device 4 coupled to the sleeve for affixing the
expanding unit 1 to a support such as a stationary hook or the
crack of a window or door. The fastening device 4 includes an
anchoring loop 3 surrounding the sleeve 2, a woven tape 6'
secured to the anchoring loop, two blocking elements 5 and 5'
disposed within the woven tape 6' and a hang-up ring or loop 6
formed at the free end of the tape 6'. Figures 7, 7' and 8
illustrate the manner in which the fastening device 4 is used
to attach the exercise device to a door or window.
Implicit in the examiner’s explanation of the rejection
of claim 1 (see pages 3 and 4 in the answer) is the concession
that Hermanson does not respond to the limitations in the
claim requiring (1) the elastic cord to be connected to the
loop strap by “a slip knot attachment . . . tightenable onto
said elastic cord which permits said first end and said second
Appeal No. 2001-2178
Application No. 09/039,466
5
end [of the cord] to each be stretchable independent of each
other” and (2) the loop strap to be “slipped over” a doorknob.
Hermanson’s elastic cord (expanding unit 1) is connected to
its loop strap (tape 6' and loop 6) via anchoring loop 3 which
is not disclosed as embodying a slip knot attachment, and the
loop strap (tape 6' and loop 6) is not disclosed as being
slipped over a door knob.
Froelich, applied in combination with Hermanson to
support the rejection of claim 1, discloses an adjustable
rotating resistance exerciser 10 which can be employed in a
variety of exercise devices. The device 240 shown in Figure
11 includes exercisers 10 disposed on the respective ends of a
flexible member 242. Froelich teaches that this device can be
fastened to a stationary member such as a floor by an elastic
band 244 which appears to be secured to the flexible member
242 via a slip knot. In concluding that the subject matter
recited in claim 1 would have been obvious within the meaning
of § 103(a), the examiner states that
[i]n view of [Froelich] and in view of what is
obvious to one of ordinary skill in the art . . . it
is well [known] and would have been obvious to one
of ordinary skill in the art to manufacture the
Appeal No. 2001-2178
Application No. 09/039,466
6
loop/knot of Hermanson as a slip knot. Slip knots
are well [known] connection means.
As to the applicant[’]s claims of a door the
examiner notes that Hermanson discloses a door, as
to the device of Hermanson [including] a door knob
the examiner notes that most doors have door knobs,
and as to the applicant claiming a loop attached to
the door knob the examiner notes that the loop of
Hermanson is capable of being attached to a door
knob [answer, pages 3 and 4].
The slip knot attachment recited in claim 1 is described
in the underlying specification (see pages 5 and 6) as having
particular significance within the context of the claimed
exercising device in that when tightened it causes the two
legs or ends of the elastic cord to function independently of
one another and when loosened it allows the two legs or ends
to function in concert with one another. Slip knots certainly
were well known expedients at the time of the appellant’s
invention as evidenced by Froelich. There is nothing in this
conventional knowledge, however, or in Froelich, which would
have suggested any reason, let alone the particular benefits
contemplated by the appellant, for modifying Hermanson’s
anchoring loop 3 to include a slip knot attachment. The mere
fact that the prior art could be so modified would not have
made the modification obvious unless the prior art suggested
Appeal No. 2001-2178
Application No. 09/039,466
7
the desirability of the modification. In re Gordon, 733 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
Furthermore, although the examiner’s observation that
Hermanson’s loop strap (tape 6' and loop 6) is inherently
capable of being slipped over a door knob is manifestly
reasonable, it is neither dispositive of, nor particularly
relevant to, the issue of whether it would have been obvious
to do so as required by claim 1. In short, the combined
teachings of Hermanson and Froelich do not provide the factual
basis necessary to conclude that it would have been obvious to
modify the manner in which Hermanson’s exercise device is
attached to a door (see Figures 7, 7' and 8) so as to meet the
requirement in claim 1 that the loop strap be slipped over a
knob on the exterior surface of the door. Hence, the
collective disclosures of Hermanson and Froelich do not
warrant a conclusion that the differences between the subject
matter recited in claim 1 and the prior art are such that the
subject matter as a whole would have been obvious at the time
the invention was made to a person having ordinary skill in
the art. Therefore, we shall not sustain the standing 35
U.S.C. § 103(a) rejection of claim 1, and dependent claims 2
Appeal No. 2001-2178
Application No. 09/039,466
8
through 4, as being unpatentable over Hermanson in view of
Froelich.
As Burke’s disclosure of a device for tethering a swimmer
does not cure the foregoing shortcomings of the Hermanson-
Froelich combination with respect to the subject matter
recited in independent claim 1, we shall not sustain the
standing 35 U.S.C. § 103(a) rejection of dependent claims 5
and 6 as being unpatentable over Hermanson in view of Froelich
and Burke.
SUMMARY
The decision of the examiner to reject claims 1 through 6
is reversed.
REVERSED
Appeal No. 2001-2178
Application No. 09/039,466
9
JOHN P. McQUADE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JPM/gjh
JACK C. MUNRO
28720 ROADSIDE DRIVE
SUITE 225
AGOURA HILLS, CA 91301
GJH
Appeal No. 2001-2178
Application No. 09/039,466
APJ McQUADE
APJ NASE
APJ BAHR
REVERSED
November 19, 2002
MAIL COPY OF TRANSLATION WITH
DECISION