Ex Parte Muderick

Board of Patent Appeals and Interferences

Sep 10, 2009

11564585 (B.P.A.I. Sep. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte AARON MUDERICK
__________

Appeal 2009-008907
Application 11/564,585
Technology Center 3700
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Decided: September 10, 2009
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Before ERIC GRIMES, LORA M. GREEN, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
exercise putty kit and methods of using it. The Examiner has rejected the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

Appeal 2009-008907
Application 11/564,585

STATEMENT OF THE CASE
Claims 21-35 are on appeal. Claims 21, 25, and 31 are the only
independent claims and read as follows:
21. A method of exercise or manipulative therapy comprising the
steps of:
a. obtaining a mass of putty comprising a reaction product of a
polysiloxane and either a boron- or tin-containing compound, said mass of
putty having a first stiffness;
b. introducing to said mass of putty a hardening paste comprising a
hydroxide selected from the group consisting of zinc hydroxide, magnesium
hydroxide and combinations thereof, said hardening paste having a stiffness
that is less than said first stiffness;
c. physically manipulating said mass of putty with said hardening
paste to create a combined mass having a stiffness that exceeds said first
stiffness; and
d. physically manipulating said combined mass, thereby
accomplishing said exercise or manipulative therapy.

25. An exercise putty kit for providing manipulative therapy of
varying difficulty to a user, comprising:
a. a mass of putty comprising a reaction product of a polysiloxane and
either a boron- or tin-containing compound, said mass of putty having a first
stiffness;
b. a packet of softening paste comprising a compound selected from
the group consisting of 9-octadecenoic acid, C17 monounsaturated fatty acid,
C18 monounsaturated fatty acid and combinations thereof; and
c. a packet of hardening paste comprising a compound selected from
the group consisting of zinc hydroxide, magnesium hydroxide and
combinations thereof, said hardening paste having a stiffness that is less than
said first stiffness.

31. A method of exercise or manipulative therapy comprising the
steps of:
a. obtaining a mass of putty containing a reaction product of a
polysiloxane and either a boron- or tin-containing compound;
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Application 11/564,585

b. introducing a stiffness-adjusting paste to said mass of putty, said
stiffness-adjusting paste having a lesser stiffness than said mass of putty;
c. physically manipulating said mass of putty with said stiffness-
adjusting paste to create a combined mass which exhibits a change in
stiffness relative to said mass of putty of between 3-7 x 10-2 mm as
measured on a Williams plastometer, when said stiffness-adjusting paste is
0.1% of the weight of said mass of putty; and
d. physically manipulating said combined mass, thereby
accomplishing said exercise or manipulative therapy.
OBVIOUSNESS
Issue
The Examiner has rejected claims 21-35 under 35 U.S.C. § 103(a) as
being obvious in view of Gibbon1 and Bachmeier.2
The Examiner finds that “Gibbon teaches the invention as
substantially claimed. … However, Gibbon fails to disclose: the hardening
paste comprising magnesium hydroxide/metal hydroxide salt” (Answer 4).
The Examiner finds that “Bachmeier teaches the hardening paste comprising
magnesium hydroxide/metal hydroxide salt” (id.). The Examiner concludes
that “it would have been obvious to one of ordinary skill in the art … to
substitute Gibbon’s hardening paste with Bachmeier’s magnesium hydroxide
hardening means in order to provide alternative hardening means for altering
the material properties of the putty mass” (id. at 5).
Appellant contends that the Examiner erred in finding that one of skill
in the art would be motivated to combine Bachmeier’s magnesium
hydroxide hardener/binder with Gibbon’s therapeutic putty, with a
reasonable expectation of success (Appeal Br. 6-8).

1 Gibbon, US 5,693,689, Dec. 2, 1997.
2 Bachmeier et al., US 2006/0093726 A1, May 4, 2006.
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Appeal 2009-008907
Application 11/564,585

The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion one of skill in the art would have
been motivated to combine Bachmeier’s magnesium hydroxide
hardener/binder with Gibbon’s therapeutic putty, with a reasonable
expectation of success?
Findings of Fact
1. Gibbon discloses
a method of manipulative therapy … by which a first malleable
mass having a first color and stiffness is supplied to a patient.
A second malleable mass having a second color and stiffness
different from that of the first mass is also supplied to the
patient, and the patient is directed to knead or manipulate the
two putties together. The putty is kneaded or manipulated until
such time as the two masses are completely blended to yield a
combined mass having a uniform color and stiffness which is
intermediate the stiffnesses of the first and second masses.
Preferably, the malleable masses provided to the patient are
based on borosiloxane.
(Gibbon, col. 1, ll. 47-58.)
2. Gibbon discloses that “the second malleable mass is significantly
smaller and has a stiffness greater than that of the first malleable mass” (id.
at col. 1, ll. 60-62).
3. Bachmeier discloses making an animal feedblock by “injecting
steam into a binder to heat the binder, blending the heated binder with a dry
ingredients mixture …, and compressing the ingredients mixture”
(Bachmeier, ¶ 0006).
4. Bachmeier discloses that

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Application 11/564,585

[a]dditional ingredients that may be added to the dry ingredients
mixture include hardeners or binding agents such as magnesium
oxide, calcium oxide, precipitated chalk, ferrous carbonate,
calcium hydroxide, [or] magnesium hydroxide.
(Id. at ¶ 0013.)
Principles of Law
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993).
“In determining whether obviousness is established by combining the
teachings of the prior art, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal quotations
omitted).
Analysis
Claim 21 is directed to a method of exercise or manipulative therapy
comprising mixing a hardening paste comprising zinc hydroxide or
magnesium hydroxide with putty that is a reaction product of a polysiloxane
and either a boron- or tin-containing compound. The Examiner concludes
that it would have been obvious “to substitute Gibbon’s hardening paste with
Bachmeier’s magnesium hydroxide hardening means in order to provide
alternative hardening means for altering the material properties of the putty”
(Answer 5). The Examiner reasons that
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Bachmeier states that magnesium hydroxide is a binding
agent. According to the National Cancer Institute Dictionary of
Terms, binding agent is defined as “A substance that makes a
loose mixture stick together. …” As such, one of ordinary skill
in the art would recognize that magnesium hydroxide would
have a predictable result of increasing the stiffness of the putty
mass.
(Id. at 12.)
Appellant contends that one of skill in the art would not have been
motivated to combine Bachmeier’s magnesium hydroxide hardener/binder
with Gibbon’s therapeutic putty, with a reasonable expectation of success, to
arrive at the invention of claim 21 (Appeal Br. 6-8). In particular, Appellant
argues that “[t]here is no teaching in either Bachmeier or Gibbon indicating
that magnesium hydroxide would be an appropriate hardener for putty. The
silicon chemistry of the claimed exercise putty is vastly different from the
organic chemistry of the dried grains of Bachmeier. They contain none of
the same ingredients.” (Id. at 7.)
Appellant’s arguments are persuasive. Gibbon discloses the use of a
stiffening putty to stiffen an initial mass of putty, while Bachmeier discloses
magnesium hydroxide as a hardening or binding agent for an animal
feedblock made from dried ingredients. The Examiner has not adequately
explained why Bachmeier’s disclosure of magnesium hydroxide as a
hardening or binding agent for an animal feedblock would have suggested its
use as the stiffening putty of Gibbon, or why one of skill in the art would
have had a reasonable expectation of success in making the substitution.
Thus, the rejection of claim 21 as being obvious in view of Gibbon and
Bachmeier is reversed.
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Claim 25 is directed to an exercise putty kit that comprises, among
other things, a mass of putty comprising a reaction product of a polysiloxane
and either a boron- or tin-containing compound and a packet of hardening
paste comprising zinc hydroxide or magnesium hydroxide. The rejection of
claim 25 as being obvious in view of Gibbon and Bachmeier is reversed for
the reasons discussed above.
Claim 31 is directed to a method of exercise or manipulative therapy
comprising introducing a stiffness-adjusting paste to a mass of putty
containing a reaction product of a polysiloxane and either a boron- or tin-
containing compound. Claim 31 also requires that the stiffness adjusting
paste has a lesser stiffness than the mass of putty, and that the combined
mass has a change in stiffness relative to the original mass of putty of 3-7 x
10-2 mm.
Although claim 31 does not require that the hardening paste contains a
hydroxide as in claim 21, the Examiner relies on Bachmeier’s magnesium
hydroxide as suggesting the use of hardening paste with a stiffness less than
that of an initial mass of putty to obtain a mass of putty with increased
stiffness (Answer 4). As discussed above, however, the Examiner has not
adequately explained why one of skill in the art would have been motivated
to substitute Bachmeier’s hardening/binding agent for Gibbon’s stiffening
putty. The rejection of claim 31 as being obvious in view of Gibbon and
Bachmeier is reversed.
Claims 22-24, 26-30, and 32-35 depend from one of claims 21, 25 or
31. The rejection of claims 22-24, 26-30, and 32-35 is reversed for the
reasons discussed above.
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Appeal 2009-008907
Application 11/564,585

Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
one of skill in the art would be motivated to combine Bachmeier’s
magnesium hydroxide hardener/binder with Gibbon’s therapeutic putty, with
a reasonable expectation of success.
SUMMARY
We reverse the rejection of claims 21-35 under 35 U.S.C. § 103(a) as
being obvious in view of Gibbon and Bachmeier.

REVERSED

cdc

AARON MUDERICK
125 CONWAY AVE
NARBERTH PA 19072
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