Ex Parte Schroeder

Board of Patent Appeals and Interferences

Nov 26, 2002

09228076 (B.P.A.I. Nov. 26, 2002)

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for publication and is not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte EDWARD A. SCHROEDER
____________
Appeal No. 2002-1408
Application No. 09/228,076
____________
ON BRIEF
____________
Before ABRAMS, FRANKFORT, and STAAB, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-12,
which are all of the claims pending in this application.
We REVERSE.
Appeal No. 2002-1408
Application No. 09/228,076
1Our understanding of this foreign language document was acquired by means of a PTO
translation, a copy of which is enclosed.
2The appellant has not disputed the examiner’s position that this is a proper reference under
35 U.S.C. § 102.
3A rejection of claims 1-12 on the basis of Dyagesis in view of QUIKSET, Albach and Allbright
(continued...)
BACKGROUND
The appellant’s invention relates to a system for suspending a net such as a
volleyball net over a floor. The structure of the invention is readily apparent from claim
1, the sole independent claim, which has been reproduced below.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Steele 1,778,173 Oct. 14, 1930
Albach 1,919,494 Jul. 25, 1933
Townsend 2,865,634 Dec. 23, 1958
Barnes 3,065,964 Nov. 27, 1962
Allbright 5,215,310 Jun. 1, 1993
USSR Inventor’s Certificate1 SU 1535549 A1 Jan. 15, 1990
(Dyagesis)
QUIK SET Retractable Volleyball System Advertisement Jan. 1, 19992
(QUIK SET)
Claims 1-12 stand rejected under 35 U.S.C. § 103 as being unpatentable over
QUIK SET in view of Albach and Allbright.
Claims 1-12 also stand rejected under 35 U.S.C. § 103 as being unpatentable
over Dyagesis in view of QUIK SET, Townsend and Allbright.3
Appeal No. 2002-1408
Application No. 09/228,076
3(...continued)
which was present in the final rejection (Paper No. 9), was not repeated in the Answer and therefore we
shall consider it as having been withdrawn.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the Answer
(Paper No. 19) for the examiner's complete reasoning in support of the rejections, and
to the Brief (Paper No. 18) and Reply Brief (Paper No. 21) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
The test for obviousness is what the combined teachings of the prior art would
have suggested to one of ordinary skill in the art. See, for example, In re Keller, 642
F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima facie case of
obviousness, it is incumbent upon the examiner to provide a reason why one of
ordinary skill in the art would have been led to modify a prior art reference or to
combine reference teachings to arrive at the claimed invention. See Ex parte Clapp,
227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985). To this end, the requisite motivation
must stem from some teaching, suggestion or inference in the prior art as a whole or
Appeal No. 2002-1408
Application No. 09/228,076
from the knowledge generally available to one of ordinary skill in the art and not from
the appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
Claim 1
An overhead supported system to suspend a net over a floor, the
system comprising:
a net having a longitudinal axis;
a spaced pair of masks pivotally connected to an overhead
structure to pivot about an axis parallel to the longitudinal axis of the net
between a stored position and a play position; and
a pair of braces, each brace coupled to the overhead structure
adjacent a first end, and coupled to the masts adjacent a second end to
lock the masts in the play position, wherein the system does not contact
and is not secured to the floor.
The Rejection Based Upon QUIK SET, Albach And Allbright
This rejection is applied to claims 1-12. The examiner is of the view that
QUIK SET discloses all of the elements in independent claim 1 except for the mast
pivotally connected to an overhead structure, but that it would have been obvious to
one of ordinary skill in the art “to have employed the mast of Albach with the apparatus
of Quik Set in order to permit the apparatus to be easily stored in the ceiling girder
system of the sports area” (Answer, page 3). Allbright is cited for its disclosure of a net
height adjustment device, a feature that is not recited in claim 1. The appellant argues
that there is no suggestion for modifying the QUIK SET system by providing Albach’s
Appeal No. 2002-1408
Application No. 09/228,076
mast and mounting system, and that even if such were done it would not result in the
invention recited in claim 1.
QUIK SET discloses a retractable volleyball net that is suspended between two
masts (legs). Although not shown in the drawing, it would appear that the masts are
attached in some fashion to an overhead structure, for it is stated that “you just push a
button and the system lowers itself to the gym floor,” and then “just snap the tension
braces and you’re ready to play.” As shown in the drawing and explained in the text,
“Rubber Pads are installed on bottom of the legs to completely protect your gym floor.
Won’t scratch or mar floor.” It is clear that the QUIK SET legs are in contact with the
floor when the net is in the play position, and therefore the structure fails to disclose or
teach the limitation in the claim that “the system does not contact and is not secured to
the floor.” In addition, QUIKSET does not show or explain how the structure is
supported, and therefore does not disclose or teach the limitation in claim 1 that the
masts be “pivotally connected to an overhead structure to pivot about an axis parallel to
the longitudinal axis of the net between a stored position and a play position.”
Albach is directed to a basketball backstop supported by a frame B and a frame
brace C. Frame B is pivotally attached to overhead rails D in such a manner as to be
lowered from a stored position where it is essentially parallel to the rails to a play
position where it is perpendicular thereto. The components of the system do not
contact the floor. Considering that the “net” in the Albach device is a basketball net, the
Appeal No. 2002-1408
Application No. 09/228,076
longitudinal axis of which is essentially vertical, frame B pivots perpendicularly to the
axis of the net between storage and playing positions, rather than parallel thereto, as
required by the language of claim 1.
It is conventional to support a basketball backboard entirely from above so that
there is no structure to prevent the players from passing beneath the backboard, which
regularly occurs in the playing of the game. This is not a requirement in volleyball,
however, and the QUIK SET system takes advantage of this by utilizing contact with the
floor for positioning the net and for providing it with stability. We fail to perceive any
teaching, suggestion or incentive which would have led one of ordinary skill in the art to
modify the QUIK SET volleyball support system in the manner proposed by the
examiner, for to do so would necessitate a substantial, if not total, reconstruction of its
components and operation, which would in our view be a disincentive for the artisan to
do so. Moreover, as is pointed out by the appellant on page 6 of the Brief, neither
reference teaches pivoting the masts about an axis parallel to the longitudinal axis of
the net. We are not persuaded by the examiner’s assertion on page 3 of the Answer
that suggestion for the proposed modification is present because such would allow the
volleyball net to easily be stored in the ceiling girder system of the sports area, for this
goal already is achieved in QUIK SET.
The mere fact that the prior art structure could be modified does not make such
a modification obvious unless the prior art suggests the desirability of doing so. See In
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Application No. 09/228,076
re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). According to
our reviewing court:
It is impermissible to use the claimed invention as an instruction manual
or "template" to piece together the teachings of the prior art so that the
claimed invention is rendered obvious. This court has previously stated
that "[o]ne cannot use hindsight reconstruction to pick and choose among
isolated disclosures in the prior art to deprecate the claimed invention"
(citations omitted). In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780,
1784 (Fed. Cir. 199).
It is our view that this is exactly what occurred in the present case. In passing, we point
out that Allbright, which was cited for teaching vertical adjustment of a volleyball net,
supports the net by “one-piece standards mounted in the ground,” so it fails to eliminate
the deficiency in the combination of QUIK SET and Albach.
It therefore is our conclusion that the teachings of the applied references fail to
establish a prima facie case of obviousness with respect to the subject matter recited in
claim 1, and we will not sustain this rejection of claim 1 or of claims 2-12, which depend
therefrom.
The Rejection Based Upon Dyagesis, QUIKSET, Townsend And Allbright
In this rejection the examiner finds that Dyagesis discloses all of the elements
recited in claim 1 except for the platform and ladder, the vertical adjustment means for
the net, and the pivotal mounting of the masts to an overhead structure. The first two of
these limitations are not recited in claim 1. The examiner concludes that in view of
Townsend it would have been obvious to one of ordinary skill in the art to modify
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Dyagesis so that the pivot attachment to the overhead is present. We agree with the
appellant that this conclusion is in error.
Dyagesis discloses a volleyball net in which the masts, while pivotally attached to
the ceiling in the building, are secured in position by being screwed into threaded
sockets in the floor (translation, page 1; Figures 1 and 3). Townsend discloses a
ceiling-mounted support system for a basketball backboard that is similar in basic
structure and operation to that of Albach. On the basis of the same reasoning set out
above with regard to the other rejection of claim 1, we conclude that the combined
teachings of Dyagesis and Townsend fail to establish a prima facie case of
obviousness with regard to the subject matter of claim 1. Further consideration of
QUIK SET and Allbright, which were cited for limitations not present in claim 1, fail to
alter this opinion.
This rejection of claims 1-12 is not sustained.
CONCLUSION
The rejection of claims 1-12 as being unpatentable over QUIK SET in view of
Albach and Allbright is not sustained.
Appeal No. 2002-1408
Application No. 09/228,076
The rejection of claims 1-12 as being unpatentable over Dyagesis in view of
QUIK SET, Townsend and Allbright is not sustained.
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
NEA:pgg
Appeal No. 2002-1408
Application No. 09/228,076
BARNES & THORNBURG
1401 EYE STREET, N.W.
WASHINGTON, DC 20005