Ex Parte Presezzi

Patent Trial and Appeal Board

Oct 28, 2013

12291260 (P.T.A.B. Oct. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte VALERIO PRESEZZI
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Appeal 2011-013001
Application 12/291,260
Technology Center 3700
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Before ANNETTE R. REIMERS, SCOTT A. DANIELS, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 17-20 under 35 U.S.C. § 103(a) as being
unpatentable over Johnson (U.S. 5,373,595; iss. Dec. 20, 1994) and Welch
(U.S. 4,193,149; iss. Mar. 18, 1980). Claims 1-16 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claim 17 is the sole independent claim and is reproduced below:
17. A variable morphology putting green, including a
covering element and means for varying a level or height of a
plurality of regions of said covering element with respect to a
base thereof for defining an undulating pattern in said covering
element, wherein said means comprise a plurality of adjoining
cushion element units, each said unit including a plurality of
adjoining substantially parallelepipedal inflatable and deflatable
cushion elements, some of which are designed for assuming a
fully inflated operating condition and some of which are
designed for assuming a fully deflated operation condition, said
cushion elements being filled-in by a filling-in fluid supplied by
a tube system including a plurality of discrete separated tubes,
each tube of said system being controlled by a respective fluid
controlling valve, all said valves being mounted on a valve
block, each said valve being coupled both to a respective
compressor and to a respective de-compressor for inflating and
deflating each said cushion element, said compressor and
decompressor communicating through each said valve to each
said cushion element through a respective said tube.

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OPINION
Claim 17
The Examiner finds that Johnson discloses each of the features recited
in claim 17 except a compressor used to inflate each cushion element and a
de-compressor used to deflate each cushion element. Ans. 3-4. The
Examiner finds that Welch discloses a compressor and a de-compressor for
filling and emptying a mattress and proposes modifying Johnson
accordingly. Ans. 4.
Appellant argues that the Examiner erred in rejecting claim 17 in view
of Johnson and Welch because the references are not directed to a “putting
green” as recited in the preamble of claim 1. Br. 5. The Examiner explains
that the preamble simply defines an intended use of the structure fully
defined by the body of the claim and is not considered to provide a claim
limitation. Ans. 6. Appellant contends that the recitation of a “putting
green” in the preamble imposes a structural limitation on the claimed device
requiring “a relatively smooth surface” because “for a golf ball to roll across
a surface in response to the impact of a golf club, the surface must be
smooth.” Br. 5. In response, the Examiner explains that a putting green
does not require any specific degree of smoothness and, to the contrary,
putting greens are inherently rough to some degree. Ans. 6. We are not
convinced that the unspecified degree of smoothness alleged by Appellant
defines a structural limitation of a putting green necessary to give meaning
to the claim.
Thus, Appellant has failed to persuasively explain why the preamble
“is necessary to give life, meaning, and vitality” to claim 17. See Pitney
Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999).
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Where, as here, the body of the claim defines a complete structure and the
preamble appears to recite only a purpose or intended use for the invention,
the preamble cannot be relied on to constitute or explain a claim limitation.
See id. Therefore, the recitation of a “putting green” in the preamble of
claim 17 does not distinguish from the structure described by the cited
references.
Appellant additionally argues that the device of Johnson could not be
used as a putting green because air flow through the perforated top would
interfere with a golf ball. Br. 5. In response, the Examiner explains that
although air can flow through the perforated top in Johnson, there is no
requirement that air flow actually occurs. Ans. 5. Appellant does not
challenge the Examiner’s explanation and, therefore, does not apprise us of
Examiner error.
Appellant further argues that Johnson discloses a single valve 30, not
the multiple valves required by claim 17. Br. 5-6. This argument does not
apprise us of Examiner error because the Examiner explains that the valve
30 in Johnson includes additional valves (flow needle assemblies) 46a-f
(Ans. 7) and Appellant does not explain why these valves 46a-f do not
satisfy the limitations of claim 17. See Johnson, col. 14, ll. 24-29.
Appellant also argues that the single valve 30 in Johnson controls air
flow to a manifold 50, not directly to each air cell 109, and that Johnson
does not suggest providing an individual valve for each individual air cell.
Br. 5-6. Claim 17 does not require that the valves provide air directly to the
cushion elements. The claim allows for intervening elements, such as a
manifold, to provide air from the valves to the cushion elements. Claim 17
also does not require an individual valve for each individual cushion
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element. The claim requires that “each tube of said system [is] controlled by
a respective fluid controlling valve” with “said compressor and
decompressor communicating through each said valve to each said cushion
element through a respective said tube.” The claim allows for an individual
valve to provide communication between the compressor/de-compressor and
multiple cushion elements. Moreover, Johnson explains that “[i]t should be
understood that though six passageways are depicted, it is contemplated as
within the invention to have any convenient number of passageways
connected to any convenient number of air support cells.” Johnson, col. 10,
ll. 53-57. Thus, Johnson also suggests use of an individual valve for each
individual air cell.
Appellant additionally argues that Johnson does not disclose a
compressor or de-compressor as claimed. Br. 5, 6. This argument is not
persuasive because, as noted above, the Examiner does not rely on Johnson
disclosing a compressor or a de-compressor and, instead, relies on Welch for
this finding. Ans. 4. Appellant also argues “Welch’s round tubes do not
make obvious the parallelpipedal structure of the cushions of the putting
green pointed out in clam 17.” Br. 6. This argument is also not persuasive
because the Examiner relies on Johnson, not Welch, for this finding. Ans. 4.
For the reasons set forth above, we sustain the rejection of claim 17.
Claim 18 depends from claim 17 and is not argued separately. We also
sustain the rejection of claim 18.
Claim 19
Claim 19 depends from claim 18, and ultimately from claim 17.
Appellant argues that Johnson does not teach or suggest the features of claim
19. Br. 6. This argument is not persuasive because the Examiner does not
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rely on Johnson as disclosing these features. Instead, the Examiner finds
that Welch discloses the additional features recited in claim 19 and proposes
modifying Johnson accordingly. Br. 4-5. Thus, we also sustain the rejection
of claim 19.
Claim 20
Claim 20 depends from claim 17. Appellant alleges that the features
of claim 20 are not suggested by Johnson or Welch. Br. 7. Appellant makes
no attempt to point out where the Examiner’s findings relative to the
presence of those elements in the prior art or in the combination of the
teachings of the prior art are deficient. Such arguments are insufficient to
apprise us of error in the rejection. See In re Lovin, 652 F.3d 1349 (Fed. Cir.
2011) (“we hold that the Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and naked assertion that the corresponding elements were
not found in the prior art.”). Thus, we also sustain the rejection of claim 20.

DECISION
We AFFIRM the Examiner’s decision to reject claims 17-20.
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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