Ex Parte Pohrer

Board of Patent Appeals and Interferences

Mar 23, 2004

09692641 (B.P.A.I. Mar. 23, 2004)

1 In rendering this decision, we have considered Appellants’ arguments presented in the Brief filed
May 15, 2003 and the Reply Brief filed September 10, 2003.
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written for publication and is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex Parte CHRISTOPHER M. POHRER
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Appeal No. 2004-0050
Application No. 09/692,641
_______________
ON BRIEF
_______________
Before OWENS, TIMM and JEFFREY T. SMITH, Administrative Patent Judge.
JEFFREY T. SMITH, Administrative Patent Judge.
Decision on appeal under 35 U.S.C. § 134
Applicant appeals the decision of the Primary Examiner’s refusal to allow
claims 1 to 10, 19 and 20, all of the pending claims in the application. We have
jurisdiction under 35 U.S.C. § 134.1
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Application No. 09/692,641
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THE INVENTION
The Appellant’s claimed invention relates to a method of adjusting the height
of a volleyball net. The method comprises securing two net standards in an upright
position to a support surface. The net standards comprise a lower post section and an
upper post section. The upper post section is slidably connected to the lower post
section for telescoping movement. The method comprises operatively connecting a
net-supporting cable to the upper post sections of the net standards in a manner so that
a net extends downward from the net-supporting cable. The method further comprises
tensioning the net-supporting cable to a net-supporting tension which is sufficiently
great that the elevation of the two ends of the net’s upper edge margin does not
exceed the elevation of the mid-point of the net’s upper edge margin by more than
approximately 3/4" (2 cm) when the ends of the net’s upper edge margin are at
approximately the same elevation. The method also comprises moving the upper post
section of the net standards between a raised and lowered position without reducing
the tension of the cable below the net-supporting tension. (Brief, pp. 2-3). Claim 1
and 10 which are representative of the invention are reproduced below:
1. A method of adjusting the height of a volleyball net comprising:
securing first and second net standards to a support surface, such as a floor, in
a manner so that the net standards extend up from the support surface in a generally
upright position, each net standard comprising a lower post section and an upper post
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Application No. 09/692,641
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section slidably connected to the lower post section for telescoping movement of the
upper post section relative to the lower post section along a post axis between a raised
position and a lowered position;
providing a net and cable assembly comprising a net and a net-supporting
cable, the net having an upper edge margin and a cable-receiving sleeve at its upper
edge margin, the upper edge margin having first and second ends and a mid-point
midway between the first and second ends, the net-supporting cable extending through
the cable-receiving sleeve of the net;
operatively connecting the net-supporting cable to the upper post sections of
the first and second net standards in a manner so that the net is between the first and
second net standards and extends downward from the net-supporting cable;
tensioning the net-supporting cable to a net-supporting tension which is
sufficiently great that the elevation of the first and second ends of the net’s upper
edge margin does not exceed the elevation of the mid-point of the net’s upper edge
margin by more than approximately 3/4" (2 cm) when the first and second ends of the
net’s upper edge margin are at approximately the same elevation; and
moving the upper post sections of the first and second net standards between
their raised and lowered positions without reducing the tension of the cable below the
net-supporting tension.
10. A method of adjusting the height of a volleyball net comprising:
securing first and second net standards to a support surface, such as a floor, in
a manner so that the net standards extend up from the support surface in a generally
upright position, each net standard comprising a lower post section, an upper post
section slidably connected to the lower post section for telescoping movement of the
upper post section relative to the lower post section along a post axis between a raised
position and a lowered position, and a drive mechanism operable to move the upper
post section between its raised and lowered positions;
providing a net and cable assembly comprising a net and a net-supporting
cable, the net having an upper edge margin and a cable-receiving sleeve at its upper
edge margin, the upper edge margin having first and second ends and a mid-point
midway between the first and second ends, the net-supporting cable extending through
the cable-receiving sleeve of the net;
operatively connecting the net-supporting cable to the upper post sections of
the first and second net standards in a manner so that the net is between the first and
second net standards and extends downward from the net-supporting cable;
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providing a tensioning mechanism on the upper post section of the first net
standard;
using the tensioning mechanism to tension the net-supporting cable between
the upper post sections of the first and second net standards to a net-supporting
tension which is sufficiently great that the elevation of the first and second ends of the
net’s upper edge margin does not exceed the elevation of the mid-point of the net’s
upper edge margin by more than approximately 3/4" (2 cm) when the first and second
ends of the net’s upper edge margin are at approximately the same elevation;
operating the drive mechanism of the first net standard to move the upper post
section of the first net standard between its raised and lowered positions without
reducing the tension of the cable below the net-supporting tension, and to move the
tensioning mechanism therewith; and
operating the drive mechanism of the second net standard to move the upper
post section of the second net standard between its raised and lowered positions
without reducing the tension of the cable below the net-supporting tension.
CITED REFERENCES
As evidence of unpatentability, the Examiner relies on the following
references:
Senoh 4,122,451 Oct. 24, 1978
Burns 4,153,247 May 08, 1979
Koole 5,308,085 May 03, 1994
The Examiner rejected claims 1 to 6, 8 to 10, 19 and 20 under 35 U.S.C.
§ 103(a) as obvious over the combination of Koole and Burns; and claim 7 under
35 U.S.C. § 103(a) as obvious over the combination of Koole, Burns and Senoh.
(Answer, pp. 3-5).
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OPINION
We reverse the aforementioned rejections. We need to address only the
independent claims, i.e., claims 1 and 10. In rejecting the subject matter of claims 1
and 10, the Examiner’s relies on the combination of Koole and Burns. Therefore, we
will limit our discussion to these references.
To hold an invention obvious in view of a combination of references, there
must be some suggestion, motivation, or teaching in the prior art that would have led a
person of ordinary skill in the art to select the reference teachings and combine them
in a way that would produce the claimed invention. See, e.g., Heidelberger
Druckmaschinen AG v. Hantscho Commercial Prods., Inc., 21 F.3d 1068, 1072, 30
USPQ2d 1377, 1379 (Fed. Cir. 1994) (When the patent invention is made by
combining known components to achieve a new system, the prior art must provide a
suggestion, or motivation to make such a combination.); Northern Telecom v.
Datapoint Corp., 908 F.2d 931, 934, 15 USPQ2d 1321, 1323 (Fed. Cir. 1990) (It is
insufficient to establish a prima facie case of obviousness based on prior art
references disclosing the components of a patented device, either separately or used in
other combinations; there must be some teaching, suggestion, or incentive to make the
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combination made by the inventor.); Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d
1044, 1044, 1051, 5 USPQ 1434, 1438 (Fed. Cir. 1988).
The Examiner rejected the claimed subject matter over the combination of
Koole and Burns. According to the Examiner, Koole discloses two uprights (net
standards) that comprise a lower post section and an upper post section. The
Examiner asserts that the upper post section comprises the net attachment means and
tensioning mechanism and is slidably connected to the lower post section for
telescoping movement. (Answer, p. 4). The Examiner acknowledges that Koole does
not disclose the specifics of the net. (Answer, p. 4). The Examiner cited the Burns
reference to establish that cables used to tension the net are conventional and used on
movable sleeves that can be raised and lowered. (Answer, p. 4). The Examiner
asserts that Koole as modified by the teachings of Burns meets the structural
limitations of the claimed invention. (Answer, p. 5). The Examiner further asserts the
claimed method steps would have been met by a user of the modified invention of
Koole which is inherently capable of height adjustment both before and after
tensioning of the net-supporting cable. (Answer, p. 5).
We cannot uphold the Examiner’s rejection. The method of appealed claims 1
and 10 requires tensioning the net-supporting cable to a net-supporting tension. The
net-supporting tension is described as a tension that is sufficiently great that the
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elevation of the two ends of the net’s upper edge margin does not exceed the elevation
of the mid-point of the net’s upper edge margin by more than approximately 3/4" (2
cm) when the ends of the net’s upper edge margin are at approximately the same
elevation. The Examiner has not addressed this limitation of the claimed invention.
Likewise, the Examiner does not address the step of raising or lowering the upper
section of the net standards without reducing the tension of the net-supporting cable
from the net-supporting tension. The Examiner’s conclusion that the modified
invention of Koole is inherently capable of height adjustment both before and after
tensioning of the net-supporting cable does not indicate that the tension meets the
requirements of the claimed invention. Assuming the Examiner is correct, there is no
evidence that a person of ordinary skill in the art would have necessarily used a
tension that is sufficient to meet the present claims. Inherency cannot be established
by probabilities or possibilities. See In re Oelrich, 666 F.2d 578, 581, 212 USPQ
323, 326 (CCPA 1981). As stated in In re Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d
1955, 1957 (Fed. Cir. 1993) (quoting from In re Oelrich, 666 F.2d at 581, 212 USPQ
at 326), “[t]he mere fact that a certain thing may result from a given set of
circumstances is not sufficient [to establish inherency]” (emphasis in original). Under
these circumstance, we cannot conclude that the Examiner has met the minimum
threshold of establishing.
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Appeal No. 2004-0050
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CONCLUSION
Based on our consideration of the totality of the record before us, we reverse
the rejections of claims 1 to 10, 19 and 20 for the lack of the presentation of a prima
facie case of obviousness.
REVERSED
)
TERRY J. OWENS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CATHERINE TIMM ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
JTS/kis
Appeal No. 2004-0050
Application No. 09/692,641
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