Ex Parte Nugent

Patent Trials and Appeals Board

Aug 27, 2013

11887093 - (D) (P.T.A.B. Aug. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/887,093 09/24/2007 Richard Joseph John Nugent 1132
7590 08/27/2013
John Wiley Hortor
Pennington Moore Wilkinson Bell & Dunbar
215 S. Monroe St
2nd Floor
Tallahassee, FL 32312
EXAMINER
GRAHAM, MARK S
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
08/27/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD JOSEPH JOHN NUGENT
____________

Appeal 2011-008614
Application 11/887,093
Technology Center 3700
____________

Before LYNNE H. BROWNE, ANNETTE R. REIMERS and
RICHARD E. RICE, Administrative Patent Judges.

RICE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008614
Application 11/887,093

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STATEMENT OF THE CASE
Richard Joseph John Nugent (Appellant) seeks our review under
35 U.S.C. § 134 of the Examiner’s final rejection of claim 1. Br. 1.1 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claim 1 is reproduced below:
1. A sports practicing apparatus for
practicing close ball control, including a plurality
of generally planar elements arranged in a
generally circular array, wherein the planar
elements are generally rectangular and identical
and are adapted to be releasably secured together
linearly by coupling means configured to
simultaneously create an electrical and
mechanical connection between adjacent planar
elements, each planar element having thereon an
impact face having at least one target area facing

1 The Notice of Appeal filed September 27, 2010 states that Appellant
“hereby appeals to the Board of Patent Appeals and Interferences [now the
Patent Trial and Appeal Board] from the last decision of the examiner.”
From the Examiner’s Answer, we understand that claims 1-5, 7-16 and 18-
21 stand rejected. Ans. 2. Appellant states in the Appeal Brief that “[t]he
appeal is made as to claim 1” (Br. 1) and argues the patentability of only that
claim (id. at 1-11). (Because the Appeal brief lacks page numbers, we cite
to the Appeal Brief as if its pages were numbered consecutively beginning
on the first page). Since the Appeal Brief unequivocally indicates that
Appellant does not intend to pursue an appeal from the rejection of claims 2-
5, 7-16 and 18-21, we DISMISS the appeal as to those claims. See Ex parte
Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008) (precedential). We note that
§ 1215.03 of the Manual of Patent Examining Procedure states that a
“withdrawal of the appeal as to some of the claims on appeal operates as an
authorization to cancel those claims from the application.”
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Application 11/887,093

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in an inward direction toward the center of said
circular array, the apparatus including means to
selectively activate individual target areas
sequentially in a predetermined or random manner,
the target areas being responsive to being hit by a
ball impacting on the target area to deactivate the
impacted target area and to activate the next
individual target area in the sequence.
Br., Claims App’x (emphasis added).

REFERENCES RELIED ON BY THE EXAMINER2
Hay WO 0018479 A1 Apr. 6, 2000
Doepner US 6,581,931 Bl Jun. 24, 2003

THE REJECTIONS
Claim 1 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hay and Doepner.

ANALYSIS
The Final Office Action states that claim 1 is rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hay and Doepner, but contains no
further explanation of the rejection. Final Office Action, dated March 24,
2010, p. 2. Appellant correctly argues, as a threshold issue, that this
statement “does not provide any explanation as to how the combination of
Hay and Doepner renders claim 1 obvious.” Br. 6. Appellant contends that
the USPTO “has failed to set forth any articulated reasoning as to why the
cited combination renders claim 1 obvious.” Id. at 10.

2 As the Appeal concerns only claim 1, we list just the references relied on
by the Examiner in rejecting that claim.
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Application 11/887,093

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In the Examiner’s Answer to the Appeal Brief, the Examiner provides
the following explanation of the rejection:
Hay discloses a sports practicing device for practicing
close ball control, primarily for soccer, comprising rectangular
planar elements as shown in Fig. 2 which may be connected to
one another to form a generally circular array as shown in Fig.
5 such that a player may practice from within the circular array.
(It is understood that applicant’s use of the term “linearly” is
meant to connote that the elements are connected in a line
though not a straight one.) The planar elements have indicia
indicated target areas as can be seen in Fig. 2 which are
selectively activated to inform the user where to aim a ball and
then are deactivated in favor of a subsequent target area once
the first target area has been impacted, (page 9, lines 21-32).
Regarding the coupling, note Figs. 3 and 5 of Hay which show
that the panels are adapted to be secured to one another.
Inherently, this will require an electrical coupling of some sort
as well for the device to operate. Hay does not discuss whether
such a coupling is “releasably secured . . . simultaneously.”
However, as disclosed by Doepner it is known when coupling
game boards to provide the mechanical and electrical
connection as a simultaneous connection. It would have been
obvious to one of ordinary skill in the art to provide the
connection for Hay’s boards as a releaseably secured
simultaneous electrical/mechanical connection in the same
manner to make them easily detachable and portable . . . .
Ans. 4.
Appellant’s independent analysis of the applied references as set forth
in the Appeal Brief appears to have anticipated the Examiner’s explanation.
Appellant argues that Hay is from the same field of soccer training devices
as the present invention and discloses multiple target walls, but fails to
disclose any mechanism that mechanically or electrically connects the
adjacent target walls together. Br. 6-7. Appellant further argues that
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Application 11/887,093

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Doepner discloses a pinball-type game playing surface comprising adjacent
panels that interlock by pressing male and female dovetail joints together.
Id. at 8-9. Appellant acknowledges: “The dovetail joints [of Doepner] also
including [sic] mating electrical connections, so that when the panels are
pressed together a mechanical and electrical connection is simultaneously
made.” Id. at 9.
As Appellant’s independent analysis of the applied references appears
to be consistent with the Examiner’s analysis, and because Appellant did not
file a Reply Brief asserting issues not raised in the Appeal Brief or prejudice
from the lack of an earlier explanation of the rejection, we consider
Appellant’s threshold issue to be moot on the record before us.
Appellant also raises the issue of whether Doepner is nonanalogous
art. Id. at 9-10. Appellant argues that the present invention’s function is the
training of soccer players, specifically, close ball control, and that Doepner’s
function of “[providing] a modular pinball-type game that allows a child to
imaginatively create new board layouts . . . is simply not the same.” Id.
(citing In re Clay, 966 F.2d 656 (Fed. Cir. 1992)). Appellant contends that
Doepner is nonanalogous art (assertedly because it is not from the same field
of endeavor as the present invention and does not seek to solve the same
problem as the present invention) and that therefore the USPTO has failed to
establish a prima facie case of obviousness. Id. at 10.
The Examiner’s position is that Doepner qualifies as analogous art
because it is reasonably pertinent to the particular problem with which
Appellant was concerned. Ans. 7-8. The Examiner finds that “Doepner
discloses a game device comprising a plurality of game boards wherein it
necessary [sic] to mechanically and electrically connect one to the other to
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allow the game unit to function” and determines that “[t]his is the same
problem faced by the ordinarily skilled artisan in connecting the Hay game
boards and therefore is reasonably pertinent to the particular problem with
which [Appellant] was concerned.” Id. at 8 (referencing Doepner, col. 1,
ll. 28-45). The Examiner adds that “[t]he solution proposed by Doepner is to
provide a simultaneous mechanical/electrical connection,” which “has the
inherent advantage of ease of connection of the game boards and therefore
would have been an obvious choice for the ordinarily skilled artisan
addressing the issue of connecting Hay’s game boards.” Id.
The USPTO and its reviewing courts have developed and applied a
two-step “test” to determine whether a prior art reference is “analogous” art
and therefore may be used as evidence with respect to a question of
obviousness under § 103. In re Wood, 599 F.2d 1032 (CCPA 1979). Under
this two-step test, if a reference is reasonably pertinent to the particular
problem the inventor was trying to solve, then the reference is analogous and
therefore may be used as evidence of obviousness. Id.
Appellant’s invention is directed to a soccer training apparatus
comprising a ring formed by joining together a plurality of planar elements
or panels, each of which includes a target area. See Br. 3 (referencing Spec.
5 and figs. 1 and 3). The Specification describes a preferred embodiment
having a cam-activated clamp 4 that effects a mechanical connection
between adjacent panels. Spec. 5 (“The apparatus 1 comprises an array of
six interlocking planar elements or panels 2, which . . . are joined together
using coupling or connecting means which in this embodiment is a cam
activated clamp 4 . . . .”). As further described in the Specification, each
panel includes a rebound board 3 having sensors to detect the impact of a
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soccer ball hit and “male and female electrical connectors 6 at each end to
facilitate quick and simple assembly.” Id.
“A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor’s endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor’s attention in considering his problem.” Clay, 966 F.2d at 659
(citations omitted). “In other words, ‘familiar items may have obvious uses
beyond their primary purposes.’” In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (quoting KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 420 (2007)). Our reviewing court
therefore ha[s] concluded, for example, that an inventor
considering a hinge and latch mechanism for portable
computers would naturally look to references employing other
“housings, hinges, latches, springs, etc.,” which in that case
came from areas such as “a desktop telephone directory, a piano
lid, a kitchen cabinet, a washing machine cabinet, a wooden
furniture cabinet, or a two-part housing for storing audio
cassettes.”

ICON Health, 496 F.3d at 1380 (quoting In re Paulsen, 30 F.3d 1475, 1481-
82 (Fed.Cir.1994)).
Here, an inventor considering mechanical and electrical connectors
for coupling adjacent soccer-target panels would naturally look for
references employing mechanical and electrical connectors for coupling
other types of panels, including Doepner’s interlocking pinball-type game
panels that interlock by pressing male and female dovetail joints together.
See Br. 8-9. The problem that Appellant was trying to solve is not limited to
the function of training of soccer players, but rather includes the problem of
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Application 11/887,093

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mechanically and electrically connecting adjacent panels. As such,
Appellant has not persuaded us that Doepner is nonanalogous art.
Accordingly, we sustain the rejection of claim 1 under 35 U.S.C.
§ 103(a) as being unpatentable over Hay and Doepner.

DECISION
We affirm the rejection of claim 1.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (1)(iv).

AFFIRMED
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