Ex parte OH

Board of Patent Appeals and Interferences

Oct 29, 2001

09431944 (B.P.A.I. Oct. 29, 2001)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOSHUA OH
____________
Appeal No. 2001-2102
Application No. 09/431,944
____________
ON BRIEF
____________
Before CALVERT, ABRAMS, and NASE, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 21
to 30. The other claims remaining in the application, 1 to 4,
7 to 10, 13, 17 and 20, have been allowed.
The claims on appeal are drawn to a hockey-stop
facilitating in-line skate (claims 21 to 28) and a method of
in-line skating (claims 29 and 30), and are reproduced in the
appendix of appellant's brief.
Appeal No. 2001-2102
Application No. 09/431,944
2
The reference applied in the final rejection is:
Pratt 5,183,276 Feb. 2,
1993
Claims 21 to 30 stand finally rejected as unpatentable
over Pratt, under 35 U.S.C. § 103(a).
We will first consider claim 21, which reads:
21. A hockey-stop facilitating in-line skate comprised of:
a foot-retention member;
a primary-wheel assembly affixed to the bottom of said
foot-retention member;
said primary-wheel assembly having a wheel-mounting frame
and a plurality of primary wheels positioned in a longitudinal
alignment; and
an auxiliary-wheel assembly having an auxiliary wheel
rotatably mounted on said skate in a position raised at least
one-half inch relative a plurality of said primary wheels at
the side of said longitudinal alignment of primary wheels.
Pratt discloses an in-line skate having a foot-retention
member (boot) 12, a primary-wheel assembly affixed to the
bottom of the foot-retention member and having a wheel-
mounting frame 16 and a plurality of longitudinally aligned
primary wheels 18, and an auxiliary wheel 40 rotatably mounted
Appeal No. 2001-2102
Application No. 09/431,944
Although the claims are not rejected under 35 U.S.C. 1
§ 112, second paragraph, this language is less than precise as
to exactly what dimension the "at least one-half inch" is
intended to represent. In view of appellant's specification,
we interpret this language (and similar language in claims 25
and 30) as meaning that the bottom of the auxiliary wheel is
spaced the recited distance above a ground plane passing
through the bottom of the primary wheels and perpendicular to
the longitudinal plane in which the primary wheels lie.
3
at the side of the primary wheels with its bottom surface 41
spaced from the ground 24 by a distance H when the wheels 181
are positioned vertically. The Pratt apparatus differs from
claim 21 in that distance H is disclosed as being "e.g.,1
about 0.25 inch" (col. 4, line 18), whereas claim 21 recites
that the auxiliary wheel is mounted "in a position raised at
least one-half inch relative [to] a plurality of said primary
wheels."1
As to this difference, the examiner takes the position
that (answer, page 4):
It would have been obvious to one of ordinary skill
in the art at the time the instant invention was
made to have modified the in-line skate of Pratt by
raising the height of the auxiliary wheel relative
to the primary wheels any desired amount including
0.5 inches and 1.0 inches by incorporating smaller
diameter auxiliary wheels and/or by changing the
size and relative dimensions of the auxiliary wheel
mounting bracket as necessary and desirable to
provide the user with more freedom to lean and
Appeal No. 2001-2102
Application No. 09/431,944
4
balance during turns and other maneuvers such as the
hockey-style stopping maneuver.
Noting Pratt's disclosure at col. 4, lines 22 to 29, that
auxiliary wheels of other diameters may be used, the examiner
further states (answer, page 7):
one of ordinary skill in the art at the time the
instant invention was made would have been able to
conclude that Pratt's teaching to use different
sized wheels would have led one of ordinary skill in
the art to conclude that wheels of any size could be
used, including wheels of smaller diameter and
having higher height above the surface to provide a
more stabilizing skating stance for, say, an
experienced in-line skater who was nevertheless
engaged in learning to skate tight turns and jumps
that required more inclined skating angles, such as
would occur in learning to skate in emulation of
figure skating on ice, and other like sport skating.
Appellant argues that one of ordinary skill would not
have found it obvious to increase the ground clearance of
Pratt's auxiliary wheel 40 beyond the 0.25 inch amount
disclosed, because the Pratt auxiliary wheel is used as a
training wheel, to assist the skater to maintain balance
without falling, and to increase the clearance to one-half
inch or more would allow the skate to tip too far. Appellant
argues that such a modification would not have been obvious
Appeal No. 2001-2102
Application No. 09/431,944
Appellant cites In re Kramer, 18 USPQ2d 1415, 1416 (Fed.2
Cir. 1991) for this proposition, although Kramer was
designated by the Court as "not citable as precedent."
5
because it would render the Pratt device inoperable for its
intended purpose.2
Although Pratt discloses that the height (ground
clearance) shown may be varied by mounting larger diameter
wheels (thereby decreasing H ) (col. 4, lines 23 to 27), we do1
not consider that Pratt necessarily teaches away from
substituting smaller diameter wheels (increasing H ), because1
Pratt states at col. 4, lines 28 to 30, that "the user may
vary the height, H , as needed, and as balance acclimation1
improves." In light of this disclosure, one of ordinary skill
would be led to increase H "as balance acclimation improves."1
Nevertheless, we will not sustain the rejection. "Even
when obviousness is based on a single reference, there must be
a showing of a suggestion or motivation to modify the
teachings of that reference." In re Kotzab, 217 F.3d 1365,
1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000). In the
present case, the examiner has adduced no evidence to support
the conclusion that it would have been obvious to increase the
Appeal No. 2001-2102
Application No. 09/431,944
Claims 25 to 28 and 30 recite a greater clearance of at3
least one inch.
6
H dimension of Pratt's apparatus to at least one-half inch,1
as claimed. While the examiner states, as quoted supra, that
having a greater ground clearance for the auxiliary wheel
would have obvious for an experienced in-line skater learning
to skate tight turns and jumps, no evidence is cited in
support of this statement, e.g., to show or suggest that such
an experienced skater would use a skate with an auxiliary
wheel or other device to assist in maintaining balance.
Accordingly, we will not sustain the rejection of claim
21, nor of claims 22 to 30, all of which include similar
limitations concerning the position of the auxiliary wheel
above the ground.3
Conclusion
The examiner's decision to reject claims 21 to 30 is
reversed.
REVERSED
IAN A. CALVERT )
Appeal No. 2001-2102
Application No. 09/431,944
7
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
IAC/LBG
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