Ex Parte No Data

Board of Patent Appeals and Interferences

May 16, 2006

90005117 (B.P.A.I. May. 16, 2006)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

Paper
Filed by:
Trial Division Merits Panel Filed
P.O. Box 1450
Alexandria VA 22313-1450
Tel: 571-272-9797
Fax: 571-273-0042

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ICON HEALTH AND FITNESS, INC.
__________

Appeal No. 2006-0790
Reexamination Control No. 90/005,117
___________

HEARD: April 6, 2006
___________

Before SCHAFER, DELMENDO, and GAUDETTE, Administrative Patent
Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL UNDER
35 U.S.C. §§ 134 & 306

This is a decision on an appeal under 35 U.S.C. §§ 134 and
306 (2006) from the examiner’s final rejection of claims 1
through 13 (final Office action mailed March 13, 2000), which
are all of the claims pending in the above-identified
Appeal No. 2006-0790
Reexamination Control No. 90/005,117

reexamination proceeding.1 Because the examiner has made out a
prima facie case of obviousness with respect to claims 1 through
12 and since the appellant (patent owner) has failed to direct
us to persuasive evidence in rebuttal, we affirm as to these
claims. With respect to claim 13, however, we reverse because
the examiner has not met the initial burden of proving a
5
prima
facie case of obviousness.
Accordingly, the examiner’s decision is affirmed in part.

The Appealed Subject Matter 10
The subject matter on appeal relates to a treadmill having,
inter alia, “a base reorientable from a first position in which
the user performs exercises and a second position or storage
position in which the base may be further reoriented for
transport about a support surface.” (‘624 patent at column 1,
lines 5-9.) In one embodiment, the treadmill comprises a
specified support structure, tread base, handle means, roller
means, and a gas spring for stably retaining the tread base in a
second (or storage) position. (Claims 1-12.) In another
15

1 This proceeding is a reexamination of United States
Patent 5,676,624 (hereinafter ‘624 patent) issued to Watterson
et al. on October 14, 1997, based on application 08/594,271
filed on January 30, 1996.
2
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embodiment, the treadmill comprises a specified support
structure, tread base, handle means, roller means, and means for
stably retaining the tread base in a second (or storage)
position, wherein the treadmill is configured to have a center
of gravity positioned relative to the roller means and handle
means to facilitate rotation of the treadmill about the roller
means upon application of a rotational force by a user to the
handle means. (Claim 13.)
5
10

The References
The examiner relies on the following prior art documents as
evidence of unpatentability:
Day 931,394 Aug. 17, 1909
15
20

Teague, Jr. 4,370,766 Feb. 1, 1983
(Teague)

Dalebout et al. 4,913,396 Apr. 3, 1990
(Dalebout)

Damark International, Inc.: The Great Deal Company! 6 (Nov. 17,
1994)(Damark).

25

The Examiner’s Rejections
The appealed claims stand rejected under 35 U.S.C. § 103(a)
as follows:
3
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Reexamination Control No. 90/005,117

I. claims 1 through 3 and 10 through 12 as
unpatentable over the combined teachings of
Damark and Teague (examiner’s answer mailed on
May 24, 2005 at 3; final Office action at 2);
5
10
II. claims 4 through 9 as unpatentable over the
combined teachings of Damark, Teague, and
Dalebout (answer at 3; final Office action at 3);
and
III. claim 13 as unpatentable over the combined
teachings of Damark and Day (answer at 3; final
Office action at 3-4).
For the reasons discussed below, we affirm rejections I and
II but not III.

Findings of Fact215
20

We make the following findings of fact by at least a
preponderance of the evidence.
1. The appellant states that: (i) claims 1 through 3 and
10 through 12 stand or fall together with respect to
rejection I; and (ii) claims 4 through 9 stand or fall

2 In the “Discussion” section below, we number our findings
of fact as “FF__.”
4
Appeal No. 2006-0790
Reexamination Control No. 90/005,117

together with respect to rejection II. (Substitute
appeal brief filed on December 31, 2001 at 7.)
Rejection I: Claims 1-3 & 10-12 over Damark & Teague
2. Appealed claim 1 reads:
1. A treadmill comprising: 5
10
15
20
25
30
35
support structure having a base for stably
positioning on a support surface to be free
standing and having upright structure extending
upwardly from said base;
a tread base having a frame that includes a
front, a rear, a left side, a right side and an
endless belt positioned between said left side
and said right side, said frame being connected
to said support structure to be moveable about an
axis of rotation spaced from said front toward
said rear between a first position in which said
endless belt is position [sic] for operation by a
user positioned thereon and a second position in
which said rear of said frame is positioned
toward said support structure;
handle means associated with said support
structure positioned for grasping by a user for
moving said support structure with said tread
base in said second position between a use
position in which said support structure has said
base positioned on said support surface for
stably positioning said support structure on a
support surface and a moving position in which
said support structure is rotatably displaced
from said use position;
roller means adapted to said base for
engagement with said support surface when said
support structure is reoriented to said moving
position for movement of said support structure
by user on said support surface; and
a gas spring connected between the tread
base and the upright structure to assist in
stably retaining said tread base in said second
position relative to said upright structure with
5
Appeal No. 2006-0790
Reexamination Control No. 90/005,117

said tread base in said second position.

3. The examiner did not find that the limitation “a gas
spring connected between the tread base and the
upright structure to assist in stably retaining said
tread base in said second position relative to said
upright structure with said tread base in said second
position” in appealed claim 1 invoked 35 U.S.C. § 112,
¶6.
5
10
15
20
4. The appellant never challenged the examiner’s
interpretation of the last clause of appealed claim 1
(or any other clause in the appealed claims) as
invoking the strictures of 35 U.S.C. § 112, ¶6.
5. At oral argument held on April 6, 2006, the
appellant’s counsel was asked whether the last clause
in appealed claim 1 invoked 35 U.S.C. § 112, ¶6.
6. In response to the question, the appellant’s counsel
confirmed that the last clause of appealed claim 1 did
not invoke the strictures of 35 U.S.C. § 112, ¶6.
7. Damark discloses a manual treadmill identified as
“Wilson Manual Treadmill” comprising: a base that
necessarily includes a frame having a front, a rear,
left side, and a right side with an endless belt
6
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Reexamination Control No. 90/005,117

positioned between the left side and the right side;
and a handle extending from the base.
8. Damark further teaches that the treadmill may be
folded vertically.
9. The appellant acknowledges Damark’s disclosure as
follows (request for reexamination filed on September
25, 1998 at 3):
5
10
15
20
25
The Damark reference depicts a manual folding
treadmill having a tread base rotatably attached
to an upright support structure, wherein the
point of attachment is intermediate the front and
rear of the tread base.

10. Damark also describes the provision of front wheels to
allow easy movement and easy storage of the treadmill.
11. The examiner determined that Damark “discloses all the
limitations of the claims, except for a gas spring
connected between the tread base and the upright
structure to assist in stably retaining said tread
base in said second position relative to said upright
structure with said tread base in said second
position.” (Final Office action at 2.)
12. The appellant does not dispute the examiner’s
determination that Damark “discloses all the
limitations of the claims, except for a gas spring
7
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Reexamination Control No. 90/005,117

connected between the tread base and the upright
structure to assist in stably retaining said tread
base in said second position relative to said upright
structure with said tread base in said second
position.” (Substitute appeal brief at 7-11.) 5
10
15
20
13. Teague describes a recess or cabinet bed of the type
in which a bed is mounted at its head upon a
counterbalancing mechanism provided to support the bed
as it swings between its horizontal or “open position”
in use and its vertical or “closed position” in
storage. (Column 1, lines 5-11; Figures 1-4.)
14. Teague teaches that the bed includes an improved
counterbalancing mechanism facilitating movement
between these two stable positions. (Column 1, lines
12-68.)
15. As part of the counterbalancing mechanism, Teague
teaches (column 2, line 1 to column 3, line 68) the
use of gas springs 56, which “provide the lifting
force or moment to move the bed up to the position
where its center of gravity passes over the pivot
axis, but when the bed continues to move toward the
fully closed position, the springs reverse their
8
Appeal No. 2006-0790
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action and act against that continued movement”
(column 2, lines 4-8; emphasis added).
16. The function of the gas springs 56 is more
specifically described in Teague as follows (column 4,
lines 1-22): 5
10
When the bed is moved from its open position
to a balanced position wherein its center of
gravity 61 is directly over its pivot axis, and
upon further movement the gas springs continue to
act as compression springs but their action is
reversed. Hence, the springs act against the
force of gravity which moves the bed to its fully
closed position.
During the movement of the bed from its open
position to the position wherein its center of
gravity 61 is over its pivot axis 13, each lever
50 is swung to a position wherein its pivot 52 is
in alignment with the lever pivot 48 and the gas
spring pivot 58 so that the gas springs are
nearly fully extended and they are exerting no
moment of force. However, as bed 2 continues to
swing clockwise around its pivot axis to its
fully closed position, each of levers 50
continues to swing clockwise around its pivot
axis 48 and pivot 52 moves along an arcuate path
beyond its position in alignment with pivots 58
and 48.
15
20
25
That further swinging movement of lever
50 causes the gas springs to be subjected to
compression and they act against and cushion the
action of gravity as the bed moves to its fully 30
closed or rest position...[Emphasis added.]

17. The only disclosure in the ‘624 patent under
reexamination with respect to a “gas spring”
9
Appeal No. 2006-0790
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associating the tread base with the upright structure
is found at column 15, lines 3-28.
18. The inventors disclose that gas spring 505 of the ‘624
patent is part of a lift assist assembly. (Column 15,
lines 3-28.) 5
10
15
19. The inventors disclose the function or purpose of the
gas spring as follows: “The force and the torque (TF)
exerted by the spring 505 is selected so that the
resulting required lifting force (LF) may be nominal
(e.g. 5 to 20 pounds).” (Column 15, lines 22-24.)
20. Teague teaches that the gas springs, like the gas
spring described in the ‘624 patent, provide a lifting
force. (Column 2, lines 3-8.)
21. Appealed claim 1 does not limit the degree or manner
in which the gas spring “assist[s] in stably
retaining” the tread base at the storage position.
22. The appellant has not proffered any evidence (e.g.,
declaration evidence) that would support the
allegation that Teague’s gas spring does not “assist”
in stable retention. 20
10
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23. Teague expressly teaches that the bed has two stable
positions (operating and storage positions). (Column
1, lines 37-39.)

5
10
15
20
25
30
Rejection II: Claims 4-9 over Damark, Teague, & Dalebout
24. Claim 4 depends from claim 3, which depends from claim
2, which in turn depends from claim 1.
25. Claims 2 through 4 recite:
2. The treadmill of claim 1 wherein said
base includes a left portion positioned proximate
said left side and a right portion positioned
proximate said right side, wherein said left
portion and said right portion each have a
forward end spaced outwardly from said upright
member, and wherein said roller means includes a
wheel rotatably attached to said forward end of
said left portion and a wheel rotatably attached
to said forward end of said right portion.

3. The treadmill of claim 2, wherein said
upright structure includes a left upright member
and a right upright member, said right upright
member being spaced from and in general alignment
with said left upright member.

4. The treadmill of claim 3, wherein said
handle means includes a left handle mechanically
associated with said left upright member and a
right handle mechanically associated with said
right upright member.

11
Appeal No. 2006-0790
Reexamination Control No. 90/005,117

26. The appellant does not dispute the examiner’s findings
with respect to Dalebout. (Substitute appeal brief at
11.)
27. With respect to rejection II, the appellant refers to
the same arguments made against the basic combination
of Damark and Teague.
5

Rejection III: Claim 13 over Damark & Day
28. Claim 13 recites:
13. A treadmill comprising: 10
15
20
25
30
support structure having a base for stably
positioning on a support surface to be free
standing and having upright structure extending
upwardly from said base;
a tread base having a frame that includes a
front, a rear, a left side, a right side and an
endless belt positioned between said left side
and said right side, said frame being connected
to said support structure to be movable between a
first position in which said endless belt is
positioned for operation by a user positioned
thereon and a second position in which said rear
of said frame is positioned toward said support
structure;
handle means associated with said support
structure positioned for grasping by a user for
moving said support structure with said tread
base in said second position between a use
position in which said support structure has said
base positioned on said support surface for
stably positioning said support structure on a
support surface and a moving position in which
said support structure is rotatably displaced
from said use position;
12
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roller means adapted to said base for
engagement with said support surface when said
support structure is reoriented to said moving
position for movement of said support structure
by the user on said support surface; 5
10
15
20
means for stably retaining said tread base
in said second position relative to said upright
structure with said tread base in said second
position; and
wherein said treadmill is configured to have
a center of gravity positioned relative to said
roller means and said handle means to facilitate
rotation of said treadmill about said wheel means
upon application of a rotational force by the
user to said handle means.

29. Unlike claim 1, claim 13 does not include the
limitations with respect to the “gas spring”
component.
30. Appealed claim 13 recites that “said treadmill is
configured to have a center of gravity positioned
relative to said roller means and said handle means to
facilitate rotation of said treadmill about said wheel
means upon application of a rotational force by the
user to said handle means.” (Emphasis added.) 25
31. The examiner took the position that Damark discloses
every limitation of appealed claim 13 except for the
claim limitation “means for stably retaining said
tread base in said second position relative to said
13
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Reexamination Control No. 90/005,117

upright structure with said tread base in said second
position.” (Final Office action at 4.)
32. Day teaches an exercising device which may be folded
into a storage position and retained in such position
by use of set screws 16. (Page 2, lines 20-56;
Figures 1-2.)
5
10
15
33. The examiner alleged (answer at 6):
It is inherent that Damark’s treadmill (see
figure) is heavier at the roller means and as
broadly claimed, Damarks’s [sic] center of
gravity is positioned relative to said roller
means and said handle means to facilitate
rotation of said treadmill about said wheel means
upon application of a rotational force by the
user to said handle means.

34. The appellant asserted (substitute appeal brief at
13):
[T]here is no teaching, suggestion, or motivation
in Damark of distributing the components of the
treadmill such that the treadmill has a center of
gravity that assists the user in tipping or
rotating the treadmill onto the wheels for
transport. In fact, there is no mention or
discussion whatsoever in the Damark reference
regarding the placement of specific components,
weight distribution or center of gravity, much
less the benefit (
20
25
i.e., making it easier for the
user to rotate or tip the treadmill onto its
wheels, which is more significant in relation to
heavier, motorized treadmills) that is achieved
and claimed by appellant.
30

14
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Reexamination Control No. 90/005,117

35. The examiner did not identify any evidence or
persuasive technical reasoning to establish that when
rotational force is applied to the handle means of
Damark’s treadmill, the center of gravity is
positioned such that the treadmill necessarily rotates
about the wheels.
5

Discussion
Grouping of Claims
Prior to addressing the merits, we note the appellant’s
statements that: (i) claims 1 through 3 and 10 through 12 stand
or fall together with respect to rejection I; and (ii) claims 4
through 9 stand or fall together with respect to rejection II.
(FF1; Appeal brief filed on December 31, 2001 at 7.) We
therefore select claims 1 and 4 as representative of each of the
two groups of claims rejected in grounds I and II, respectively,
and confine our discussion to these representative claims.
10
15
See
37 CFR § 41.37(c)(vii)(2005)(effective September 13, 2004).

20 Rejection I: Claims 1-3 & 10-12 over Damark & Teague
For convenience, appealed claim 1 is reproduced again as
follows (FF2):
15
Appeal No. 2006-0790
Reexamination Control No. 90/005,117

1. A treadmill comprising:
support structure having a base for stably
positioning on a support surface to be free standing
and having upright structure extending upwardly from
said base; 5
10
15
20
25
30
35
a tread base having a frame that includes a
front, a rear, a left side, a right side and an
endless belt positioned between said left side and
said right side, said frame being connected to said
support structure to be moveable about an axis of
rotation spaced from said front toward said rear
between a first position in which said endless belt is
position [sic] for operation by a user positioned
thereon and a second position in which said rear of
said frame is positioned toward said support
structure;
handle means associated with said support
structure positioned for grasping by a user for moving
said support structure with said tread base in said
second position between a use position in which said
support structure has said base positioned on said
support surface for stably positioning said support
structure on a support surface and a moving position
in which said support structure is rotatably displaced
from said use position;
roller means adapted to said base for engagement
with said support surface when said support structure
is reoriented to said moving position for movement of
said support structure by user on said support
surface; and
a gas spring connected between the tread base and
the upright structure to assist in stably retaining
said tread base in said second position relative to
said upright structure with said tread base in said
second position.

We start with claim construction. Specifically, we must
first consider the scope and meaning of certain contested claim
limitations. Gechter v. Davidson, 116 F.3d 1454, 1457, 1460
n.3, 43 USPQ2d 1030, 1032, 1035 n.3 (Fed. Cir. 1997); In re 40
16
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Reexamination Control No. 90/005,117

Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1674 (Fed. Cir.
1994).
Appealed claim 1 recites in part (last clause): “a gas
spring connected between the tread base and the upright
structure to assist in stably retaining said tread base in said
second position relative to said upright structure with said
tread base in said second position.” (FF2.) The examiner did
not hold that this clause invoked 35 U.S.C. § 112, ¶6. (FF3.)
The appellant never challenged the examiner’s interpretation of
this clause (or any other clause in the appealed claims) in this
regard. (FF4.) In fact, at oral argument held on April 6,
2006, the appellant’s counsel was questioned whether the last
clause in appealed claim 1 invoked 35 U.S.C. § 112, ¶6. (FF5.)
In response, the appellant’s counsel confirmed that it did not.
(FF6.) Thus, it is appropriate, as the examiner has done so
here, to give the language of this clause its broadest
reasonable interpretation consistent with the accompanying
specification.
5
10
15
In re American Academy of Science Tech Center,
367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004)(“The
‘broadest reasonable construction’ rule applies to
reexaminations as well as initial examinations.”).
20
17
Appeal No. 2006-0790
Reexamination Control No. 90/005,117

Damark discloses a manual treadmill identified as “Wilson
Manual Treadmill” comprising: a base that necessarily includes a
frame having a front, a rear, left side, and a right side with
an endless belt positioned between the left side and the right
side; and a handle extending from the base. (FF7.) Damark
further teaches that the treadmill may be folded vertically.
(FF8.) Indeed, we note that the appellant acknowledges Damark’s
disclosure as follows (FF9; request for reexamination filed on
September 25, 1998 at 3):
5
10
15
20
25
The Damark reference depicts a manual folding
treadmill having a tread base rotatably attached to an
upright support structure, wherein the point of
attachment is intermediate the front and rear of the
tread base.

Damark also describes the provision of front wheels to allow
easy movement and easy storage of the treadmill. (FF10.) That
Damark discloses the above elements or limitations has not been
contested.
After considering the scope and content of the prior art
relative to the claimed invention, the examiner determined that
Damark “discloses all the limitations of the claims, except for
a gas spring connected between the tread base and the upright
structure to assist in stably retaining said tread base in said
second position relative to said upright structure with said
18
Appeal No. 2006-0790
Reexamination Control No. 90/005,117

tread base in said second position.” (FF11; final Office action
at 2.) Again, the appellant does not dispute the examiner’s
determination in this regard. (FF12.)
Notwithstanding this difference, the examiner concluded
that the subject matter of appealed claim 1 would have been
obvious to a person having ordinary skill in the art within the
meaning of 35 U.S.C. § 103(a). Specifically, the examiner
relied on the teachings of Teague to account for the sole
difference between the invention recited in appealed claim 1 and
Damark.
5
10
15
20
Teague describes a recess or cabinet bed of the type in
which a bed is mounted at its head upon a counterbalancing
mechanism provided to support the bed as it swings between its
horizontal or “open position” in use and its vertical or “closed
position” in storage. (FF13; column 1, lines 5-11; Figures 1-
4.) Teague teaches that the bed includes an improved
counterbalancing mechanism facilitating movement between these
two stable positions. (FF14; column 1, lines 12-68.) As part
of the counterbalancing mechanism, Teague teaches (FF15; column
2, line 1 to column 3, line 68) the use of gas springs 56, which
“provide the lifting force or moment to move the bed up to the
position where its center of gravity passes over the pivot
19
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axis...” (Column 2, lines 4-6.) Teague also describes an
additional feature for the gas springs as follows: “[W]hen the
bed continues to move toward the fully closed position, the
springs reverse their action and act against that continued
movement” (column 2, lines 6-8). The function of the gas
springs 56 is more specifically described in Teague as follows
(FF16; column 4, lines 1-22):
5
10
When the bed is moved from its open position to a
balanced position wherein its center of gravity 61 is
directly over its pivot axis, and upon further
movement the gas springs continue to act as
compression springs but their action is reversed.
Hence, the springs act against the force of gravity
which moves the bed to its fully closed position.
During the movement of the bed from its open
position to the position wherein its center of gravity
61 is over its pivot axis 13, each lever 50 is swung
to a position wherein its pivot 52 is in alignment
with the lever pivot 48 and the gas spring pivot 58 so
that the gas springs are nearly fully extended and
they are exerting no moment of force. However, as bed
2 continues to swing clockwise around its pivot axis
to its fully closed position, each of levers 50
continues to swing clockwise around its pivot axis 48
and pivot 52 moves along an arcuate path beyond its
position in alignment with pivots 58 and 48.
15
20
25
That
further swinging movement of lever 50 causes the gas
springs to be subjected to compression and they act
against and cushion the action of gravity as the bed
moves to its fully closed or rest position...[Emphasis
added.]
30

Based on this evidence, we conclude (as did the examiner)
that one of ordinary skill in the art would have been led to
20
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combine the teachings of Damark and Teague so as to arrive at a
treadmill encompassed by appealed claim 1. Specifically, we
hold that one of ordinary skill in the art would have found the
requisite motivation, suggestion, or teaching in the prior art
to provide Teague’s counterbalancing mechanism including gas
springs 56 in the treadmill described in Damark in order to
obtain all of the advantages described in Teague. In light of
the prior art teachings as a whole, a person having ordinary
skill in the art would have had a reasonable expectation that
incorporation of Teague’s counterbalancing mechanism in the
treadmill described in Damark, which opens in use and closes in
storage in a manner similar to that described for Teague’s bed,
would decrease the lifting moment required to store the
treadmill while ensuring that the tread base is stably retained
in the storage position.
5
10
15
20
We appreciate that Teague discloses the use of the
counterbalancing mechanism in a bed rather than a treadmill as
in Damark. This fact alone, however, does not preclude a
determination that a person having ordinary skill in the art
would have combined the teachings of the two references. Two
tests for determining whether a prior art reference is analogous
are as follows: (1) whether the art is from the same field of
21
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endeavor, regardless of the problem addressed; and (2) if the
reference is not within the inventor’s endeavor, whether the
reference is reasonably pertinent to the particular problem with
which the inventor is involved. In re Bigio, 381 F.3d 1320,
1325, 72 USPQ2d 1209, 1211-12 (Fed. Cir. 2004); In re Clay, 966
F.2d 656, 659, 23 USPQ2d 1058, 1060 (Fed. Cir. 1992).
5
10
15
20
Here, the appellant’s recited purpose for the “gas spring”
element recited in appealed claim 1 is “to assist in stably
retaining said tread base in said second position relative to
said upright structure with said tread base in said second
position [i.e., closed position].” Furthermore, the only
disclosure in the ‘624 patent under reexamination with respect
to a “gas spring” associating the tread base with the upright
structure is found at column 15, lines 3-28. (FF17.) There,
the inventors disclose that the gas spring 505 is part of a lift
assist assembly. (FF18.) In particular, the inventors disclose
the function or purpose of the gas spring as follows: “The force
and the torque (TF) exerted by the spring 505 is selected so
that the resulting required lifting force (LF) may be nominal
(e.g. 5 to 20 pounds).” (FF19; column 15, lines 22-24.)
Because Teague’s gas springs are said to act against
“continued movement” of the rotating body to its storage
22
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position (column 2, lines 3-8), they are provided for the same
or similar purpose as that recited in appealed claim 1 (i.e.,
“to assist in stably retaining said tread base in said second
position relative to said upright structure with said tread base
in said second position”). Moreover, Teague teaches that the
gas springs, like the gas spring described in the ‘624 patent,
provide a lifting force. (FF20; column 2, lines 3-8.) Thus,
Teague’s gas spring functions in the same or similar manner as
the appellant’s gas spring. It follows then that Teague’s
teachings with respect to the lift assembly including gas
springs are “reasonably pertinent to the particular problem
[providing an element that assists in stable retention of a
rotatable body at a storage position and assisting in the lift
of the rotating body to its storage position] with which the
inventor is involved.” Under these circumstances, we reject the
appellant’s contention (substitute appeal brief at 10; reply
brief filed on July 22, 2005 at 3-4) that Teague is nonanalogous
art.
5
10
15
20
The appellant also urges that because Teague teaches that
the gas spring exerts a force resisting the force of gravity
(which, according to Teague, retains the bed in the storage
position), its teachings are diametrically opposed to the
23
Appeal No. 2006-0790
Reexamination Control No. 90/005,117

characteristic of the gas spring recited in appealed claim 1
(“to assist in stably retaining said tread base in said second
position relative to said upright structure with said tread base
in said second position”). (Reply brief at 2-3.)
We do not find this argument persuasive. Appealed claim 1
does not limit the degree or manner in which the gas spring
“assist[s] in stably retaining” the tread base at the storage
position. (FF21.) As already pointed out, Teague teaches that
“when the bed continues to move toward the fully closed
position, the [gas] springs reverse their action and
5
act against 10
that continued movement.” (Column 2, lines 6-8; emphasis
added.) Thus, without the gas springs, the lifting force and
the momentum of the rotating body (i.e., “continued movement”)
in Teague would necessarily cause the body to extend beyond the
storage position. Giving the disputed claim limitation its
broadest reasonable interpretation, we determine that Teague’s
gas spring would reasonably appear to “assist” in stable
retention of the rotating body. In this regard, the appellant
has not proffered any evidence (e.g., declaration evidence) that
would support the allegation that Teague’s gas spring does not
“assist” in stable
15
20
retention. (FF22.) Mere attorney arguments
or conclusory statements do not take the place of evidence.
24
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Reexamination Control No. 90/005,117

See, e.g., In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362,
1365 (Fed. Cir. 1997).
It is important to emphasize that Teague expressly teaches
that the bed has two stable positions (operating and storage
positions). (FF23; column 1, lines 37-39.) Also, Teague’s gas
springs provide lift assist, just like the gas springs claimed
and described in the appellant’s own patent under reexamination
(column 15, lines 3-28). (FF18.) While Teague’s “springs act
against the force of gravity which
5
moves the bed to its fully
closed position” (column 4, lines 5-7),3 there is no declaration
evidence to establish that Teague’s gas spring does not stably
retain the bed in the upright or storage position.
10
The appellant’s reliance (substitute appeal brief at 8-9)
on In re Dembiczak, 175 F.3d 994, 50 USPQ2d 1614 (Fed. Cir.
1999) is misplaced. In In re Dembiczak, the claims recited an
orange, premanufactured decorative bag simulating the general
appearance of the outer surface of a pumpkin having facial
indicia thereon.
15
In re Dembiczak, 175 F.3d at 997, 50 USPQ2d at

3 The appellant refers to Teague column 1, lines 50-51 for
the proposition that “gravity tends to hold the bed in its fully
closed position.” (Reply brief at 3.) We note, however, that
the relied upon disclosure does not relate to Teague’s
counterbalancing mechanism but to other prior art. (Column 1,
lines 46-68.)
25
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Reexamination Control No. 90/005,117

1615. The claims were rejected as obvious over conventional
trash bags in view of two references: one describing “how to
teach children to make a ‘Crepe Paper Jack-O-Lantern’ out of a
strip of orange crepe paper, construction paper cut-outs in the
shape of facial features, and ‘wadded newspapers’ as filling”;
and another “describing a method of making a ‘paper bag pumpkin’
by stuffing a bag with newspapers, painting it orange, and then
painting on facial features with black paint.”
5
In re Dembiczak,
175 F.3d at 997-998, 50 USPQ2d at 1615-1616. The court reversed
because there was no identification of any suggestion, teaching
or motivation to combine the references or “specific--or even
inferential--findings concerning the identification of the
relevant art, the level of ordinary skill in the art, the nature
of the problem to be solved, or any other factual findings that
might serve to support a proper obviousness analysis.”
10
In re 15
Dembiczak, 175 F.3d at 1000, 50 USPQ2d at 1618.
In contrast to In re Dembiczak, Teague provides the
requisite motivation, suggestion, or teaching for one of
ordinary skill in the art to combine the references and thus
arrive at a treadmill encompassed by appealed claim 1. As we
discussed above, Teague teaches that a particular
counterbalancing mechanism including gas springs decreases the
20
26
Appeal No. 2006-0790
Reexamination Control No. 90/005,117

lifting moment required to move a rotatable body (bed mattress)
into its storage position while ensuring that the body does not
continue its movement beyond its storage position. Although
Teague relates to a counterbalancing mechanism in the context of
a bed, it constitutes analogous art because the counterbalancing
mechanism including gas springs addresses the same or similar
problem as the gas spring assembly disclosed in the ‘624 patent.
5
For these reasons, we hold that the examiner has made out a
prima facie case of obviousness and since the appellant has
failed to direct us to persuasive evidence in rebuttal, we
uphold the examiner’s rejection on this ground.
10

Rejection II: Claims 4-9 over Damark, Teague, & Dalebout
Claim 4 depends from claim 3, which depends from claim 2,
which in turn depends from claim 1. (FF24-25.) 15
20
25
2. The treadmill of claim 1 wherein said base
includes a left portion positioned proximate said left
side and a right portion positioned proximate said
right side, wherein said left portion and said right
portion each have a forward end spaced outwardly from
said upright member, and wherein said roller means
includes a wheel rotatably attached to said forward
end of said left portion and a wheel rotatably
attached to said forward end of said right portion.

3. The treadmill of claim 2, wherein said
upright structure includes a left upright member and a
right upright member, said right upright member being
27
Appeal No. 2006-0790
Reexamination Control No. 90/005,117

spaced from and in general alignment with said left
upright member.

4. The treadmill of claim 3, wherein said handle
means includes a left handle mechanically associated
with said left upright member and a right handle
mechanically associated with said right upright
member.
5
10
15
20

The appellant does not dispute the examiner’s findings with
respect to Dalebout. (FF26; substitute appeal brief at 11.)
Nor does the appellant assert that one of ordinary skill in the
art would not have found it obvious to combine Dalebout with
Damark and Teague. Rather, the appellant refers to the same
arguments made against the basic combination of Damark and
Teague as discussed in rejection I. (FF27.)
For reasons already discussed in rejection I, we detect no
error in the examiner’s basic combination of Damark and Teague.
Accordingly, we uphold the examiner’s rejection of appealed
claim 4 as well.

Rejection III: Claim 13 over Damark & Day
Claim 13 recites (FF28):
13. A treadmill comprising:
25 support structure having a base for stably
positioning on a support surface to be free standing
and having upright structure extending upwardly from
said base;
a tread base having a frame that includes a
28
Appeal No. 2006-0790
Reexamination Control No. 90/005,117

front, a rear, a left side, a right side and an
endless belt positioned between said left side and
said right side, said frame being connected to said
support structure to be movable between a first
position in which said endless belt is positioned for
operation by a user positioned thereon and a second
position in which said rear of said frame is
positioned toward said support structure;
5
10
15
20
25
30
35
handle means associated with said support
structure positioned for grasping by a user for moving
said support structure with said tread base in said
second position between a use position in which said
support structure has said base positioned on said
support surface for stably positioning said support
structure on a support surface and a moving position
in which said support structure is rotatably displaced
from said use position;
roller means adapted to said base for engagement
with said support surface when said support structure
is reoriented to said moving position for movement of
said support structure by the user on said support
surface;
means for stably retaining said tread base in
said second position relative to said upright
structure with said tread base in said second
position; and
wherein said treadmill is configured to have a
center of gravity positioned relative to said roller
means and said handle means to facilitate rotation of
said treadmill about said wheel means upon application
of a rotational force by the user to said handle
means.

Unlike claim 1, claim 13 does not include the limitations
with respect to the “gas spring” component. (FF29.) Instead,
claim 13 recites (FF30) that “said treadmill is configured to
have a center of gravity positioned relative to said roller
means and said handle means to facilitate rotation of said
29
Appeal No. 2006-0790
Reexamination Control No. 90/005,117

treadmill about said wheel means upon application of a
rotational force by the user to said handle means.” (Emphasis
added.)
The examiner took the position that Damark discloses every
limitation of appealed claim 13 except for the claim limitation
“means for stably retaining said tread base in said second
position relative to said upright structure with said tread base
in said second position.” (FF31; final Office action at 4.) To
account for this difference, the examiner relied on the
teachings of Day.
5
10
15
20

4
As to the limitation “said treadmill is configured to have
a center of gravity positioned relative to said roller means and
said handle means to facilitate rotation of said treadmill about
said wheel means upon application of a rotational force by the
user to said handle means” (last recited element), the examiner
alleged (FF33; answer at 6):
It is inherent that Damark’s treadmill (see figure) is
heavier at the roller means and as broadly claimed,
Damarks’s [sic] center of gravity is positioned
relative to said roller means and said handle means to
facilitate rotation of said treadmill about said wheel
means upon application of a rotational force by the
user to said handle means.

4 Day teaches an exercising device which may be folded into
a storage position and retained in such position by use of set
screws 16. (FF32; page 2, lines 20-56; Figures 1-2.)
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Appeal No. 2006-0790
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The appellant, on the other hand, asserted (FF34;
substitute appeal brief at 13):
[T]here is no teaching, suggestion, or motivation in
Damark of distributing the components of the treadmill
such that the treadmill has a center of gravity that
assists the user in tipping or rotating the treadmill
onto the wheels for transport. In fact, there is no
mention or discussion whatsoever in the Damark
reference regarding the placement of specific
components, weight distribution or center of gravity,
much less benefit (
5
10
i.e., making it easier for the user
to rotate or tip the treadmill onto its wheels, which
is more significant in relation to heavier, motorized
treadmills) that is achieved and claimed by appellant. 15
20

We agree with the appellant on this issue. The contested
claim limitation calls for the treadmill to be “configured to
have a center of gravity positioned relative to said roller
means and said handle means to facilitate rotation of said
treadmill about said wheel means upon application of a
rotational force by the user to said handle means.” While the
examiner alleged that this limitation would be “inherent” in
Damark, it is well settled that inherency may not be established
by mere probabilities or possibilities and that it is
insufficient to merely show that a certain thing
25
may result from
a given set of circumstances. In re Robertson, 169 F.3d 743,
745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999); accord
MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365, 52
31
Appeal No. 2006-0790
Reexamination Control No. 90/005,117

USPQ2d 1303, 1305 (Fed. Cir. 1999).
Here, the examiner has not identified any evidence or
persuasive technical reasoning to establish that when rotational
force is applied to the handle means of Damark’s treadmill, the
center of gravity is positioned to facilitate rotation of the
treadmill about the wheels. (FF35.) Mere conjecture or
speculation is not enough to shift the burden of proof to the
appellant.
5
Accordingly, we hold that the examiner has failed to carry
the initial burden of proving a prima facie case of obviousness
within the meaning of 35 U.S.C. § 103(a) as to appealed claim
13.
10
In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-
78 (Fed. Cir. 1984).

15
20

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Appeal No. 2006-0790
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Order
In sum, it is ORDERED that:
the 35 U.S.C. § 103(a) rejection of claims 1 through 3 and
10 through 12 as unpatentable over the combined teachings of
Damark and Teague is AFFIRMED; 5
the 35 U.S.C. § 103(a) rejection of claims 4 through 9 as
unpatentable over the combined teachings of Damark, Teague, and
Dalebout is AFFIRMED;
the 35 U.S.C. § 103(a) rejection of claim 13 as
unpatentable over the combined teachings of Damark and Day is 10
REVERSED.
The decision of the examiner to reject claims 1 through 13
is therefore AFFIRMED IN PART.

15
20

33
Appeal No. 2006-0790
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Time for Taking Action
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv).
5
10
15
20
25
30
35
AFFIRMED IN PART

Richard E. Schafer )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Romulo H. Delmendo )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
Linda M. Gaudette )
Administrative Patent Judge )

Rhd/lp

34
Appeal No. 2006-0790
Reexamination Control No. 90/005,117

WORKMAN NYDEGGER
F/K/A WORKMAN NYDEGGER & SEELEY)
60 EAST SOUTH TEMPLE
1000 EAGLE GATE TOWER
SALT LAKE CITY UT 84111 5
35