Ex Parte NugentDownload PDFPatent Trial and Appeal BoardAug 27, 201311887093 (P.T.A.B. Aug. 27, 2013) Copy Citation 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 2 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.” Appeal 2011-008614 Application 11/887,093 3 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. Appeal 2011-008614 Application 11/887,093 4 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 Appeal 2011-008614 Application 11/887,093 5 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 Appeal 2011-008614 Application 11/887,093 6 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 Appeal 2011-008614 Application 11/887,093 7 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 Appeal 2011-008614 Application 11/887,093 8 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 ke Copy with citationCopy as parenthetical citation