Ex Parte Munoz et al

Patent Trial and Appeal Board

Jun 24, 2013

12290570 (P.T.A.B. Jun. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte LESLIE-AMBER MUNOZ and MARGARET ANN SWEET
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Appeal 2011-007340
Application 12/290,570
Technology Center 3700
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Before PHILLIP J. KAUFFMAN, BART A. GERSTENBLITH, and
NEIL A. SMITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Leslie-Amber Munoz and Margaret Ann Sweet (“Appellants”) appeal
under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-20.
We have jurisdiction under 35 U.S.C. § 6(b).
The Claimed Subject Matter
Claim 1 is the sole independent claim on appeal. Claim 1 is
representative of the claimed subject matter and is reproduced below.
1. An exercise hoop for rotation in contact with, and
by gyration of, a portion of a user’s body surrounded by the
hoop comprising an annular shaped body containing a weight
and having an outer covering of material softer than said body
and cushioning contact of an inner surface of the hoop with the
surrounded portions of the body.
References
The Examiner relies upon the following prior art references:
Ozeryansky US 4,052,982 Oct. 11, 1977
Sassak US 6,059,632 May 9, 2000
Kessler US 6,494,760 B1 Dec. 17, 2002
Kim WO 03/002212 A1 Jan. 9, 2003
Rejections
The Examiner makes the following rejections:
I. Claims 1-4 and 7-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kessler and Ozeryansky; and
II. Claims 1, 5, and 6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sassak and Kim.
SUMMARY OF DECISION
We AFFIRM.
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OPINION
Rejection I
The Examiner concluded that the combination of Kessler and
Ozeryansky rendered obvious the subject matter of claims 1-4 and 7-20.
Ans. 3-6. The Examiner found that Kessler discloses most of the elements
of the claims, but “fails to teach providing an outer covering of material
softer than the body and capable of cushioning of an inner surface of the
hoop with the surrounded portions of the user’s body.” Id. at 3. The
Examiner found that Ozeryansky discloses a hula hoop including a metal
hoop covered by a coating of resilient material, preferably foam rubber,
which the Examiner found to be known for its cushioning effects. Id. The
Examiner determined that it would have been obvious to one of ordinary
skill in the art at the time of invention “to provide Kessler with a padded
material such as the foam rubber of Ozeryansky in order to provide added
comfort to a user.” Id. at 3-4.
Appellants raise several arguments in response to this rejection. First,
Appellants assert that Ozeryansky does not disclose a hoop with a surface
that provides the claimed cushioning contact. App. Br. 7. Second,
Appellants contend that Ozeryansky’s teaching is “contrary to the teaching
of Applicants” because Ozeryansky wants to “drive the inside outer surface
of the hoop towards the waist and compress the skin . . ., but only wants the
outermost portion of the protrusions to contact the waist.” Id. Third,
Appellants assert that, in light of the above, “[t]here is no ‘reasonable
rationale’ by which the combination of Kessler and Ozeryansky renders the
cushioned hoop of Appellants’ Claim 1 obvious.” Id.
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We address each of Appellants’ arguments. Ozeryansky discloses a
massage hoop that is described as “a substantially rigid rod 14, preferably of
metal, bent formed into a hoop and having a coating 12 of resilient material,
preferably foam plastic or foam rubber, and formed into the hoop member
8.” Ozeryansky, col. 4, ll. 4-7; fig. 3. The Examiner found that the foam
rubber coating is softer than the metal rod. Ans. 7. Even though
Ozeryansky discloses that it is the protrusions on the inside outer surface
that contact the waist of the user (Ozeryansky, col. 2, ll. 55-60), the
Examiner’s combination is not based on employing the foam rubber and the
protrusions. Rather, the Examiner simply relied upon Ozeryansky as
disclosing a hoop with an outer covering of a material that is softer than the
inner body of the hoop. Ans. 3, 7-8. We find that the Examiner’s finding
that foam rubber is softer than metal is supported by a preponderance of the
evidence.
Additionally, the Examiner found that because the foam rubber
coating is softer than the inner metal rod, it “would therefore provide a
degree of cushioning from the more rigid inner annular hoop.” Id. at 8.
Claim 1 recites that the outer covering of softer material provides cushioning
contact of the inner surface of the hoop with the body, but it does not require
a specific amount or type of cushioning. Thus, we find that the Examiner’s
finding—that the use of a material for the outer cover (e.g., the foam rubber
at issue here) that is softer than the inner material (e.g., the metal rod at issue
here) provides some degree of cushioning—is supported by a preponderance
of the evidence.
Finally, the Examiner determined that one of ordinary skill in the art
would have been prompted to provide the hoop of Kessler with the foam
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rubber of Ozeryansky to provide added comfort to a user. Ans. 3-4.
Because we agree with the Examiner’s finding that the use of an outer
material that is softer than an inner material would provide some degree of
cushioning, the logical inference that the cushioning would provide “added
comfort to a user” and hence prompt one of ordinary skill in the art to
combine these elements of the applied references is based on a rational
underpinning.
Accordingly, we sustain Rejection I.
Rejection II
The Examiner concluded that the combination of Sassak and Kim
rendered obvious the subject matter of claims 1, 5, and 6. Ans. 6. The
Examiner found that Sassak discloses most of the elements of the claims, but
“fails to teach a weight in the annular body, and further fails to teach the
weight comprising metal balls.” Id. The Examiner found that Kim teaches
the desirability of providing metal balls “as weights in an exercise hoop in
order to enhance exercise and provide vibration stimulation during use.” Id.
(citation omitted). The Examiner determined that it would have been
obvious to one of ordinary skill in the art at the time of invention “to provide
Sassak with metal balls as taught by Kim in order to enhance exercise and
provide vibration stimulation during use.” Id.
Appellants raise several arguments in response to this rejection. First,
Appellants contend that Sassak does not disclose an outer covering of
material softer than the body and cushioning contact as claimed. App. Br.
11. Rather, Appellants note that Sassak’s outer covering is only decorative
and not capable of cushioning contact. Id. Second, Appellants assert that
Kim does not disclose the use of a hoop that is in rotating contact with a
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user’s body as claimed; rather, Kim discloses a belt that contacts the user’s
body and the balls within the hoop rotate while the hoop does not. Id.
Further, Appellants contend that the purpose of the balls is to double the
vibration applied to the protrusions on the belt as the balls contact the bosses
in the hoop. Id. at 11-12. Accordingly, Appellants contend that the
Examiner’s rationale to combine is based on the unsupported assumptions
that:
(1) if the balls are located in a ring that rotates around the waist,
they will operate in the same fashion as balls in Kim’s ring;
(2) the balls alone produce a vibration, which is contrary to
Kim’s teaching that vibration is caused by the balls contacting
the bosses in the ring; (3) causing vibration is of consequence to
either Sassak or Appellants.
Id. at 12.
We address each of Appellants’ arguments. Sassak discloses that the
hoop
is formed from a single length of high strength plastic and
includes a decorative outer sheath or fabric preferably
comprised of a non-stretchable material such as nylon 12. . . .
[t]he non-stretchable fabric 12 is comprised of an inner layer of
nylon 14 which is disposed over an outer surface 16 of a tubular
plastic hoop portion 18 of the hula hoop 10. An intermediate
layer of webbing 20 is disposed over the nylon layer 14, and a
second nylon layer 22 is disposed over the intermediate layer of
webbing 20. The resulting fabric 12 forms a very durable yet
soft, decorative covering for the plastic hoop portion 18.
Sassak, col. 3, ll. 5-17 (emphasis added). As reflected above, Sassak’s
decorative covering is soft as compared to the high strength plastic hoop.
See id.; Ans. 8 (“S[a]ssak describes the fabric as ‘soft’”). Therefore we find
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that the Examiner’s finding that it “would provide a degree of cushioning
against the body” (Ans. 8) is supported by a preponderance of the evidence.
We do not find Appellants’ additional arguments persuasive. Kim
discloses a “hula hoop which allows waist exercise.” Kim at 1, ll. 5-6; see
id. at ll. 29-30 (same). Kim also discloses that the hula hoop comprises a
circular ring containing a plurality of balls therein. Id. at 3, ll. 9-10. The
balls have a “predetermined weight . . . so that they can perform circular
motions with inertia . . . .” Id. at 3, l. 30 – 4, l. 1. Kim further describes that
“it is most preferred that the waist exercise be performed so that all the balls
32 uniformly rotate in the circular ring in a state where the balls are in
contact with one another.” Id. at 6, ll. 27-30. As reflected above, Kim
discloses providing a hula hoop, including the balls with a predetermined
weight, which function to allow “waist exercise.”1 Thus, that the hoop itself
does not rotate around the user’s body, does not negate the Examiner’s
finding that Kim discloses the use of a hoop with a weight (balls) that
enhances exercise. See Ans. 6. Thus, we agree with the Examiner that one
of ordinary skill in the art would understand that combining the weight
(balls) of Kim in the hoop of Sassak would provide enhanced exercise. See
id.
The Examiner determined that one of ordinary skill in the art would
have been prompted to combine these elements of Sassak and Kim for two
reasons: (1) to enhance exercise and (2) to provide vibration stimulation
during use. Id. As discussed above, we agree that the Examiner’s first

1 Kim also discloses that in addition to waist exercise, the use of the hula
hoop “assists cartilages of the spine in being restored to their normal
positions through relaxation of the spine.” Kim at 1, ll. 6-7.
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reason to combine—to enhance exercise—is based on a rational
underpinning. Thus, we need not decide whether the Examiner’s second
rationale—to provide vibration stimulation during use—is similarly
rationally based because enhancing exercise is a sufficient reason, in and of
itself, as to why one of ordinary skill in the art would have been prompted to
combine the teachings of Sassak and Kim as discussed above.2
Accordingly, we sustain Rejection II.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1-20.
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).

AFFIRMED

mls

2 In light of our discussion above, we need not address Appellants’
additional arguments as to whether the balls alone produce a vibration or
whether achieving a vibration is of consequence to Sassak or Appellants.