Ex parte Shifferaw

Board of Patent Appeals and Interferences

Jun 28, 1999

08428863 (B.P.A.I. Jun. 28, 1999)

Application for patent filed April 25, 1995. According to appellant, the1
application is a continuation-in-part of Application 08/088,191, filed
July 6, 1993, now abandoned, which is a continuation-in-part of Application 07/912,552,
filed July 13, 1992, now U.S. Patent No. 5,277,675, issued
January 11, 1994.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.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 TESSEMA D. SHIFFERAW
__________
Appeal No. 98-2771
Application 08/428,8631
___________
ON BRIEF
___________
Before FRANKFORT, STAAB and NASE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 20, all the claims pending in
the application. In the examiner’s answer, page 14, it is
Appeal No. 98-2771
Application 08/428,863
2
indicated that claims 17 through 19 now stand objected to and
would be allowable if rewritten in independent form. In
addition, it has
been noted on page 2 of the examiner’s answer that the
rejection
of claims 7 and 8 under 35 U.S.C. § 112, second paragraph, has
been withdrawn. Accordingly, only the examiner’s prior art
rejections of claims 1 through 16 and 20 under 35 U.S.C. § 103
remain for our consideration on appeal.
Appellant’s invention is directed to a resilient,
portable, stand alone, exercise board that can be used for a
variety of exercises such as running in place, aerobic
exercise and jumping. Independent claims 1 and 14 are
representative of the subject matter on appeal and a copy of
those claims, as they appear in the Appendix to appellant’s
brief, is attached to this decision.
The prior art references relied upon by the examiner in
rejecting the appealed claims are:
Appeal No. 98-2771
Application 08/428,863
Our understanding of these foreign language documents is based upon a2
translation prepared by the U.S. Patent and Trademark Office. A copy of those
translations accompanies this decision.
3
Oaks
4,037,834 Jul. 26, 1977
Mansfield 4,199,136 Apr. 22,
1980
Wilson 4,323,231 Apr. 6,
1982
Puckett et al. (Puckett) 5,273,510 Dec. 28,
1993
Gvoich 5,387,166 Feb. 7,
1995
Marcolin 2,631,067 Jan. 20,
1977
(German Offenlegungsschrift)2
Morozov et al. (Morozov) 700,149 Dec. 15,
1979
(Soviet Union)
Claims 1 through 3, 7 through 10 and 13 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Morozov in
view of Oaks.
Appeal No. 98-2771
Application 08/428,863
4
Claim 4 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Morozov in view of Oaks as applied to claim
1 above, and further in view of Mansfield.
Claims 5 and 6 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Morozov in view of Oaks as applied to
claim 1 above, and further in view of Marcolin.
Claims 11 and 12 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Morozov in view of Oaks as applied to
claim 10 above, and further in view of Puckett.
Claims 14 and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Gvoich.
Claim 15 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Gvoich in view of Oaks.
Claim 16 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Gvoich in view of Oaks as applied to claim
15 above, and further in view of Wilson.
Appeal No. 98-2771
Application 08/428,863
5
Reference is made to the examiner’s answer (Paper No. 20,
mailed July 21, 1997) and supplemental examiner’s letters
(Paper Nos. 22 and 24) for the examiner's reasoning in support
of the above-noted rejections and to the appeal brief (Paper
No. 19, filed April 25, 1997), reply brief (Paper No. 21,
filed September 29, 1997) and letter (Paper No. 23) for
appellant’s arguments thereagainst.
OPINION
Our evaluation of the obviousness issues raised in this
appeal has included a careful assessment of appellant’s
specification and claims, the applied prior art references,
and the respective positions advanced by appellant and the
examiner. As a consequence of our review, we have come to the
conclusions which follow.
With regard to the examiner’s rejection of claims 1
through 3, 7 through 10 and 13 under 35 U.S.C. § 103 based on
Morozov in view of Oaks, appellant has argued (brief, pages 5-
6) that the device shown in Morozov is not an exercise board,
Appeal No. 98-2771
Application 08/428,863
6
but rather is a section of acrobatic running track. In
addition, appellant argues that if Morozov and Oaks were
combined, the result would be an acrobatic running track
section having a flat, rigid board supported by springs
extending between a pair of longitudinally extending frame
members, and not a stand alone, portable exercise board as
appellant has provided. We find these arguments to be
unpersuasive. In the first place, we view the entire
acrobatic running track seen in Figures 1 and 2 of Morozov to
be a “portable, stand alone exercise board” which comprises a
plurality of sections, each of which sections includes a
generally rectangular, “substantially rigid” platform (4)
sized as required in appellant’s claim 1 and a plurality of
supports or feet (seen in Figure 2) affixed to the underside
of the platform and positioned “toward corners of the
platform.” Each of the sections also includes at least a pair
of arched springs (3) of resilient spring material extending
between the feet adjacent opposing side margins of the
platform and imparting an upwardly convex contour to the
platform while permitting the platform to flex with a
resilient action in response to the weight of a person who is
Appeal No. 98-2771
Application 08/428,863
7
exercising on the board. As an alternative position, we note
that, prior to assembly of the track sections into the
formation seen in Figures 1 and 2, each of the individual
sections of the acrobatic track in Morozov would, in our
opinion, qualify as a portable, stand alone, exercise board as
broadly set forth in appellant’s claim 1 on appeal.
While it is true that Morozov does not expressly describe
the rectangular platform of each of the sections therein as
being “substantially rigid,” we nonetheless conclude from the
disclosure of Morozov as a whole that the platform (4) of each
of the sections of the run-up acrobatic track therein would
have been understood by one of ordinary skill in the art as
being “substantially rigid.” Note particularly, the
translation of Morozov at page 3, lines 6-8, where it is noted
that the carpet covering (7) of each track section is
“stapled... on the edges of the panel” or platform (4); page
3, lines 11-12, where it is indicated that the panels or
platforms (4) are capable of transferring the spring efforts
of one panel to another during the athlete’s push; and page 3,
lines 17-20, where it is indicated that the weight of the
Appeal No. 98-2771
Application 08/428,863
8
athlete is “evenly spread through the panel 4 on the spring
elements 3,” all of which statements clearly convey the
perception that the panel or platform (4) of Morozov is
“substantially rigid.” Moreover, we also agree with the
examiner that it would have been obvious to one of ordinary
skill in the art, considering the collective teachings of
Morozov and Oaks, to make the platforms/panels (4)
of the track in Morozov “substantially rigid” so as to provide
a rigid, stable feel to the surface portion of the acrobatic
running track during use thereof by an athlete.
Based on the foregoing, we will sustain the examiner’s
rejection of claim 1 on appeal under 35 U.S.C. § 103. In
addition, we note that, in accordance with appellant’s
grouping of the claims (brief, page 4) and the statement of
page 6 of the brief, claims 2, 3, 9, 10 and 13 will fall with
claim 1.
Regarding the examiner’s rejection of appellant’s claims
7 and 8 under 35 U.S.C. § 103 on the basis of the combined
teachings of Morozov and Oaks, we must agree with appellant
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Application 08/428,863
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(brief, page 6) that the applied references do not teach or
suggest forming the arched bars and the platform “as a unitary
one-piece structure” (claim 7), or forming the arched bars and
the feet “as a unitary one-piece structure” (claim 8).
Accordingly, we will not sustain the examiner’s rejection of
these claims under 35 U.S.C. § 103 based on the teachings of
Morozov and Oaks.
Claim 4 on appeal sets forth that the arched bars of
resilient spring material are “fabricated of a material
selected from the group consisting of spring steel, fiberglass
and polyurethane.” In rejecting this claim the examiner has
relied upon Morozov and Oaks as applied to claim 1 above,
taken further in view of Mansfield. In the examiner’s opinion
(answer, page 5), Mansfield teaches that it is known in the
art to make spring elements out of aluminum, fiberglass or
polycarbonate (col. 3, lines 5-13). From this purported
teaching, the examiner urges that it would have been obvious
to one of ordinary skill in the art at the time of appellant’s
invention to make the bars/springs (3) of Morozov out of
fiberglass. Morozov specifically notes (translation, page 3)
Appeal No. 98-2771
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10
that the spring elements therein are “made of several layers
of plywood glued together.” Our review of Mansfield indicates
that this reference discloses making the flexible, semi-rigid
plate or platform (12) of the exercise device therein of
aluminum (col. 2, line 60), or other material like plastics,
such as fiberglass or polycarbonate (col. 3, lines 11-13).
Like appellant, we see nothing in these references which would
have been suggestive to one of ordinary skill in the art of
making the springs (3) of Morozov out of fiberglass. If
anything, it would appear to us that the collective teachings
of the applied references would have led an artisan to make
the platform (4) of Morozov out of a flexible, semi-rigid
material such as fiberglass, not the spring elements (3).
Thus, we will not sustain the examiner’s rejection of claim 4
under 35 U.S.C.
§ 103.
We next look to the examiner’s rejection of claims 5 and
6 under 35 U.S.C. § 103 as being unpatentable over Morozov in
view of Oaks as applied to claim 1 above, and further in view
of Marcolin, the German reference. Recognizing that the
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Application 08/428,863
11
exercise board/track of Morozov as modified by Oaks does not
disclose, teach or suggest the formation of resilient feet as
specified in claims 5 and 6 on appeal, the examiner turns to
Marcolin (pointing specifically to Figure 6) and urges that
this reference discloses that it is known in the art of
exercise boards to provide bars of resilient spring material
and to form the feet of such exercise boards by bending the
bars to form resilient feet that are bent under the corner
portions of the platform. Relying on this teaching, the
examiner has concluded that it would have been obvious to one
of ordinary skill in the art to provide the platform of
Morozov in view of Oaks with resilient feet formed as in
Marcolin, in order to have feet which provide the required
reaction and bending necessary to the use of the platform, and
which are easily manufactured. Appellant’s arguments on page
7 of the brief appear to be directed to the embodiment of
Marcolin seen in Figure 1, and not to the embodiment seen in
Figure 6 that was relied upon by the examiner. As a result,
the arguments presented by appellant do not address the
rejection made by the examiner and are clearly not persuasive
of any error on the examiner’s part. Under the circumstances,
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Application 08/428,863
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we are compelled to sustain the examiner’s rejection of claims
5 and 6 under
35 U.S.C. § 103.
Claims 11 and 12 on appeal stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Morozov in view of Oaks as
applied to claims 1 and 10 above, further in view of Puckett.
In the examiner’s opinion, it would have been obvious to one
of ordinary skill in the art, based on the applied references,
to use ethylene vinyl acetate for the pad (6) of Morozov.
Puckett discloses the use of ethylene vinyl acetate (col. 3,
lines 36-37) for the pad (70) of a platform-type exercise aid.
Appellant’s argument regarding claims 11 and 12 is found on
page 7 of the brief, wherein it is urged that there is no
suggestion in the applied references of using that particular
material in an exercise board having the other features of
appellant’s invention. We find this argument unpersuasive,
because it appears to put forth the position that the prior
art must expressly teach or suggest exactly what appellant has
done. We, of course, agree with appellant that there must be
some teaching or incentive in the prior art for suggesting the
Appeal No. 98-2771
Application 08/428,863
13
desirability of a combination under 35 U.S.C. § 103. However,
contrary to appellant’s position, we do not believe that it is
necessary that a device shown in one reference must be
physically inserted into the device shown in the other, or
that the claimed invention must be expressly suggested in any
one or all of the applied references. Rather, the test for
obviousness is what the combined teachings of the references
would have fairly suggested to those of ordinary skill in the
art. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981).
With respect to claims 11 and 12 of the present case,
given the disclosure in Morozov that the soft pad (6) therein
should be of “porlon type” (translation, page 3), i.e, made of
a soft plastic foam material, the teaching in Oaks (col. 3,
lines 22-24) of a pad (23) formed of closed cell soft foam
rubber, and the teaching in Puckett of a pad formed of
ethylene vinyl acetate, we must agree with the examiner that
it would have been obvious to one of ordinary skill in the art
at the time of appellant’s invention to form the pad (6) of
Morozov of a material of the type specified in appellant’s
Appeal No. 98-2771
Application 08/428,863
14
claim 11 on appeal. Thus, we will sustain the examiner’s
rejection of claim 11 under 35 U.S.C.
§ 103. Appellant (brief, page 4) has grouped claim 12 with
claim 11, from which it depends, accordingly, claim 12 will
fall with claim 11.
Independent claim 14 and dependent claim 20 have been
rejected by the examiner under 35 U.S.C. § 103 as being
unpatentable over Gvoich alone. The examiner’s position with
respect to claim 14 is set forth on page 7 of the answer as
follows
Gvoich teaches an exercise board comprising a
platform 22 made of plastic with an upwardly convex
arch and a plurality of feet 102, 103 on the under
side of the platform (Figure 1, 2 and column 4 lines
1-16). Gvoich discloses the claimed invention
except for the plastic being fiber reinforced. It
would have been obvious to one having ordinary skill
in the art at the time the invention was made to
make the plastic fiber reinforced since it was known
in the art that fiber reinforcement provides added
strength to a material.
Like appellant (reply brief, page 5), we find the
examiner's bare assertion in this regard to be without any
factual underpinnings in the applied prior art and that the
Appeal No. 98-2771
Application 08/428,863
15
examiner’s position is based on unfounded assumptions stemming
from the use of impermissible hindsight. It is by now well
settled that a rejection based on § 103 must rest on a factual
basis, with the facts being interpreted without hindsight
reconstruction of the invention from the prior art. In making
this evaluation, the examiner has the initial duty of
supplying the factual basis for the rejection she advances.
She may not, because she doubts that the invention is
patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in the
factual basis. See In re Warner, 379 F.2d 1011, 1017, 154
USPQ 173, 178 (CCPA 1967). Absent the required factual basis
on the examiner's part, we refuse to sustain the rejection of
appellant's claim 14 under 35 U.S.C. § 103. It follows that
the examiner's rejection of claim 20, which depend from claim
14, will also not be sustained.
Having reviewed both Oaks and Wilson, as respectively
applied by the examiner under 35 U.S.C. § 103 against
dependent claims 15 and 16, we note that these references
provide no teaching or suggestion regarding the deficiencies
Appeal No. 98-2771
Application 08/428,863
16
in the examiner’s position with respect to independent claim
14 discussed above. Accordingly, we also find the examiner’s
position to be untenable with regard to dependent claims 15
and 16, and, for that reason, refuse to sustain the examiner’s
rejections of claims 15 and 16 under 35 U.S.C. § 103.
Pursuant to 37 CFR § 1.196(b), we enter the following new
grounds of rejection against claims 14 through 16 on appeal.
Claim 14 is rejected under 35 U.S.C. § 103 as being
unpatentable over Gvoich in view of Mansfield or Marcolin. In
this regard, we observe that Gvoich discloses an exercise
board which includes a resilient, upwardly arched platform
(22) fabricated from a resilient and flexible plastic (col. 4,
lines 5-14). Gvoich makes no mention of fiber reinforced
plastic for making the arched resilient platform. However,
Mansfield and Marcolin each disclose exercise boards similar
to that of appellant wherein the flexible, resilient platform
of the device is formed of plastic and, more specifically, is
formed of fiberglass-reinforced plastic. Note Mansfield
column 3, lines 5-13, and the translation of Marcolin at page
Appeal No. 98-2771
Application 08/428,863
17
5, lines 8-10. Given the similarity in the use and operation
of the exercise boards and platforms thereof in Gvoich,
Mansfield and Marcolin, we are of the opinion that it would
have been obvious to one of ordinary skill in the art at the
time of appellant’s invention to make the flexible, resilient
platform (22) of Gvoich out of fiberglass-reinforced plastic
material as taught in either Mansfield or Marcolin, so as to
gain the advantages of strength and enhanced elastic
flexibility mentioned in Marcolin.
Claims 15 and 16 are rejected under 35 U.S.C. § 103 as
being unpatentable over Gvoich in view of Mansfield or
Marcolin as applied to claim 14 above, and further in view of
Oaks and Morozov. Mansfield, Oaks and Morozov each disclose
an exercise board wherein the platform is provided with a
resilient pad on the upper side thereof so as to assist in
relieving the impact of the user’s feet on the otherwise hard
surface of the relatively rigid platform and in providing the
upper surface of the platform with a degree of frictional
resistance. Note particularly, Oaks, column 3, lines 22-35,
and Mansfield, column 2, lines 60-62. Thus, viewing the
Appeal No. 98-2771
Application 08/428,863
18
collective teachings of the applied references, we consider
that it would have been obvious to one of ordinary skill in
the art to provide the flexible, semi-rigid platform of Gvoich
(as modified above) with a resilient pad on the upper surface
thereof so as to gain the advantages taught or suggested in
Mansfield, Oaks and Morozov. As for the dimensional
limitations set forth in claim 15, we consider that providing
a platform and pad in Gvoich (as modified) wherein the
thickness of the pad and platform are each “on the order of
1/4 inch” would have been obvious to one of ordinary skill in
the art given the teachings and suggestions of the applied
prior art references. Note particularly, the showing in
Figures 1 and 2 of Mansfield that the pad (14) and platform
(12) are generally of the same thickness, and the discussion
in Mansfield (col. 3, lines 44-48) concerning platforms (32,
34) made of fiberglass sheet having thicknesses of 3/16 inch
or 5/16 inch, both of which are “on the order of 1/4 inch.”
To summarize our decision, we note that 1) the examiner's
rejection of claims 1 through 3, 7 through 10 and 13 under
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Application 08/428,863
19
35 U.S.C. § 103 has been sustained with regard to claims 1
through 3, 9, 10 and 13, but has not been sustained with
regard claims 7 and 8; 2) the examiner's rejection of claim 4
under
35 U.S.C. § 103 has not been sustained; 3) the examiner’s
rejections of claims 5, 6, 11 and 12 under 35 U.S.C. § 103
have been sustained; and 4) the examiner’s rejections of
claims 14, 15, 16 and 20 under 35 U.S.C. § 103 have not been
sustained. Thus, the decision of the examiner has been
affirmed-in-part.
In addition, this panel of the Board, pursuant to 37 CFR
§ 1.196(b), has entered new grounds of rejection against
claims 14 through 16 on appeal.
In addition to affirming the examiner’s rejection of one
or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec.
1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63,
122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides, “A new
Appeal No. 98-2771
Application 08/428,863
20
ground of rejection shall not be considered final for purposes
of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date of the
original decision . . . .
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in
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Application 08/428,863
21
order to preserve the right to seek review under 35 U.S.C. §§
141 or 145 with respect to the affirmed rejection, the
effective date of the affirmance is deferred until conclusion
of the prosecution before the examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is
overcome.
If the appellant elects prosecution before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned
to the Board of Patent Appeals and Interferences for final
action on the affirmed rejection, including any timely request
for reconsideration thereof.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART, 37 CFR § 1.196(b)
Appeal No. 98-2771
Application 08/428,863
22
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
CEF/kis
FLEHR, HOHBACH, TEST,
ALBRITTON & HERBERT
Suite 3400
Four Embarcadero Center
San Francisco, CA 94111
Appeal No. 98-2771
Application 08/428,863
23
APPENDIX
1. A portable, stand alone exercise board, comprising a
generally rectangular, substantially rigid platform having an
upper surface of sufficient lateral extent to receive a person
who is exercising, a plurality of feet positioned toward
corners of the platform on the under side of the platform and
Appeal No. 98-2771
Application 08/428,863
24
engagable with a supporting surface, and a pair of arched bars
of resilient spring material extending between the feet along
opposing side margins of the platform and imparting an
upwardly convex contour to the platform while permitting the
platform to flex with a resilient action in response to the
weight of a person who is exercising on the board.
14. An exercise board, comprising a platform of fiber
reinforced plastic formed with an upwardly convex arch and an
upper surface of sufficient lateral extent to receive a person
who is exercising, and a plurality of feet on the under side
of the platform and engagable with a supporting surface, the
fiber reinforced plastic permitting the platform to flex with
a resilient action in response to the weight of a person who
is exercising on the board.