Ex Parte May et al

Patent Trial and Appeal Board

Jan 15, 2019

14159524 (P.T.A.B. Jan. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/159,524 01/21/2014 Roger Delano May II
36787 7590 01/17/2019
BL YNN L. SHIDELER
THE BLK LAW GROUP
3500 BROKKTREE ROAD
SUITE 200
WEXFORD, PA 15090
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
DCP-May-1601 5289
EXAMINER
GRAHAM, MARKS
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
01/17/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents@BLKLawGroup.com
cbelleci@BLKLawGroup.com
blynn@BLKLawGroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT DELANO MAY II and BOBBY JOHN LAMM
Appeal2018-000749
Application 14/159,524 1
Technology Center 3700
Before STEFAN STAICOVICI, LEE L. STEPINA, and
AR THUR M. PESLAK, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Roger Delano May II and Bobby John Lamm ("Appellants") appeal under
35 U.S.C. § 134(a) from the Examiner's decision in the Final Office Action (dated
Oct. 11, 2016, hereinafter "Final Act.") rejecting claims 11-3 0. 2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
1 Roger Delano May II and Bobby John Lamm are identified as the real parties in
interest in Appellants' Appeal Brief (filed May 12, 2017, hereinafter "Appeal
Br."). Appeal Br. 2.
2 Claim 1-10 are cancelled. See Appellants' Amendment, filed Aug. 16, 2016, at
page 2.
Appeal2018-000749
Application 14/159,524
We REVERSE.
SUMMARY OF DECISION
INVENTION
Appellants' invention is related "to a sports training device that focuses on
proper balance and hip rotation." Spec. 1, 11. 6-7.
Claims 11 and 24 are independent. Claim 11 is illustrative of the claimed
invention and reads as follows:
11. A sports training device comprising:
a base configured to rest on a surface, the base including a base
first side extending in a first direction from a centerline of the sports
training device with a first base extension extending laterally from a
distal end of the base first side, a base second side extending in a
second direction from the centerline of the sports training device with
a second base extension extending laterally from a distal end of the
base second side, wherein the first base extension and the second base
extension are coupled together only at one end via the base first side
and the base second side, wherein a feet boundary is formed in
between the first base extension and the second base extension
whereby a user practicing with the sports training device may place
their feet within the feet boundary during practice and wherein the
base first side and the base second side are configured to be behind
the user in use;
a support structure extending from the base from the centerline
of the sports training device and extending in a substantially vertical
position relative to the surface in which the base is configured to rest
on;and
a top portion attached to the support structure, wherein the top
portion comprises a top first side extending in the first direction from
the centerline of the sports training device and a top second side
extending in the second direction from the centerline of the sports
training device, wherein the top first side and the top second side are
substantially parallel with the surface, wherein the top first side
comprises a first top extension extending laterally and cantilevered
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Application 14/159,524
from the top first side and is substantially perpendicular relative to the
top first side, and the top second side comprises a top second
extension extending laterally and cantilevered from the top second
side in substantially the same direction as the first top extension,
wherein a waist boundary is formed in between the first top
extension and the second extension, whereby a user practicing with
the sports training device may place their waist within the waist
boundary between extending portions of the cantilevered first top
extension and the cantilevered second top extension during practice
whereby a vertical plane extending through the user's waist during at
least part of practice will extend simultaneously through both the
cantilevered first top extension and the cantilevered second top
extension.
REJECTIONS
I. The Examiner rejects claims 11 and 12 under 35 U.S.C. § 103 as being
unpatentable over Groves (US 8,088,020 B2, iss. Jan. 3, 2012) and Sheldon
et al. (US 3,215,438, iss. Nov. 2, 1965, hereinafter "Sheldon").
II. The Examiner rejects claims 13-17 and 21-25 under 35 U.S.C. § 103 as
being unpatentable over Groves, Sheldon, and Collins (US 6,497,627 B2,
iss. Dec. 24, 2002).
III. The Examiner rejects claims 18-20 and 26-30 under 35 U.S.C. § 103 as
being unpatentable over Groves, Sheldon, Collins, and Rose et al. (US
7,204,766 Bl, iss. Apr. 17, 2007, hereinafter "Rose").
ANALYSIS
Rejection I
The Examiner finds that Groves discloses most of the limitations of
independent claim 11, but "does not disclose a top portion as claimed but it is
known in the art as disclosed by Sheldon to provide a top portion 32 parallel with
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Application 14/159,524
the surface" including, inter alia, "an adjustable length first top side 33 and second
top side 34 ... first and second lateral cantilevered extensions 43, 44 perpendicular
to the top portion forming a waist boundary wherein a vertical plane will pass
through the user's waist." Final Act. 2 (citing Sheldon, Figs. 2, 13). The Examiner
then concludes that "[i]t would have been obvious to one of ordinary skill in the art
to have provided Groves' device with such a feature as well to obtain the
advantages sought by Sheldon in practicing a golf swing." Id.
Appellants argue that a skilled artisan would not provide Sheldon's hip
engaging elements to Groves' device "because such would destroy the intended
operation of the Groves[' device] ... in which the user places his hips in a variety
of locations relative to the apparatus depending upon the particular swing being
practiced." Appeal Br. 17.
The Examiner responds that because "[b ]oth Groves and Sheldon disclose a
golf training device designed to aid the user in practicing a proper stance" and
"[b ]oth use a swivel mechanism to allow the upper portion of the device to be
adjusted to the user," a skilled artisan "seeking to provide [the] Groves training
device with a hip movement aid would have obviously have seen fit to have used a
hip movement aid as disclosed in Sheldon's training aid to accomplish this
purpose." Examiner Answer 6 (dated Aug. 30, 2017, hereinafter "Ans.").
According to the Examiner, "[ t ]he use of such a hip movement aid does not
'destroy' the intended operation of Grove's device" because "it would have been
an obvious step to one of ordinary skill in the art to have employed Sheldon's hip
movement aid to help teach proper hip movement in addition to the posture
training." Id.
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Application 14/159,524
Groves disclose a "golf swing training apparatus" that "is easily adaptable to
different configurations" "to properly position a golfer's head, torso, arms, or
virtually any other body part that needs corrective manipulation during a golf
stance or swing." Groves, col. 1, 11. 15-16, col. 4, 11. 61---64. For example, as
correctly noted by Appellants, Groves illustrates in Figures 6-8 that its device is
being used to position a golfer's back, hip, and knees, respectively. See Reply
Brief 4---6 (filed Oct. 30, 2017, hereinafter "Reply Br."); see also Groves, col. 4, 11.
37-53. In contrast, Sheldon's training device is used to position and, thus, train
only a golfer's hips for "acquiring correct pivoting form." See Sheldon, col. 1, 1.
11, Fig. 2.
As such, in light of Groves' object and purpose-to position correctly
various body parts of a golfer that require correction during a golf swing or
stance-it would not have been obvious to a person of ordinary skill in the art to
modify the device of Groves to include the hip aid device of Sheldon because such
a modification would not maintain the purpose of Groves' device to train different
body parts, but merely limit its use to a single body part, namely, a golfer's hips.
See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326
(Fed. Cir. 2009) (noting that the "predictable result" discussed in KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398 (2007), also means "that the combination would have
worked for its intended purpose"); see also In re Gordon, 733 F.2d 900, 902 (Fed.
Cir. 1984). Accordingly, we agree with Appellants that "[i]ncluding the waist
engaging element [ of Sheldon to the device of Groves] would not allow the
alternative configurations [of Groves] to be used." Reply Br. 9.
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Hence, for the foregoing reasons, we do not sustain the rejection under 35
U.S.C. § 103 of claims 11 and 12 as unpatentable over the combined teachings of
Groves and Sheldon.
Rejections II and III
The Examiner's use of the Collins and Rose disclosures does not remedy the
deficiency of the Examiner's Groves and Sheldon combination discussed supra.
See Final Act. 3-5. Therefore, for the reasons discussed above, we also do not
sustain the rejections under 35 U.S.C. § 103 of claims 13-17 and 21-25 as
unpatentable over Groves, Sheldon, and Collins and of claims 18-20 and 26-30 as
unpatentable over Groves, Sheldon, Collins, and Rose.
SUMMARY
The Examiner's decision to reject claims 11-30 under 35 U.S.C. § 103 is
reversed.
REVERSED
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