12986355 (P.T.A.B. May. 20, 2016)

Ex Parte Staten et al

Patent Trial and Appeal BoardMay 20, 2016

12986355 (P.T.A.B. May. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/986,355 01107/2011 26096 7590 05/24/2016 CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 FIRST NAMED INVENTOR Kenneth E. Staten UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 67086-093US3 6175 EXAMINER CHAMBERS, MICHAELS ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 05/24/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): ptodocket@cgolaw.com cgolaw@yahoo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KENNETH E. STATEN, GRANT ROGERS, JACOB ROGERS, and KYLER. CAMP Appeal2014-000747 Application 12/986,355 Technology Center 3700 Before CHARLES N. GREENHUT, THOMAS F. SMEGAL, and LISA M. GUIJT, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants appeal under 35 U.S.C. Â§ 134 from a rejection of claims 1- 28. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm-in-part. The claims are directed to a football sled with blocking pad. Claim 1, reproduced below, is illustrative of the claimed subject matter: Appeal2014-000747 Application 12/986,355 1. A blocking sled comprising: a sled frame; an arm mounted to said sled frame, said arm extending longitudinally from said sled frame in a direction along a longitudinal axis; and a blocking pad having at least one handhold mounted to said arm, said blocking pad facing in the direction of the longitudinal axis. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Kamow Moran Rogers Krause Brown Rusch us 3,087,630 us 3,329,428 us 3,827,690 US 2002/0147061 Al US 7,056,238 Bl US 2011/0263354 Al REJECTIONS 1' 2 Apr. 30, 1963 July 4, 1967 Aug. 6, 1974 Oct. 10, 2002 June 6, 2006 Oct. 27, 2011 Claims 1, 26 and 27 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Rusch and Brown. Final Act. 5. Claims 1, 26 and 27 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Moran and Brown. Final Act. 6. 1 The rejections under 35 U.S.C. Â§ 112 stand withdrawn. Adv. Act. Apr. 23, 2013. 2 Appellants do not contest the provisional obviousness-type double patenting rejections on applications 12/971,160 and 12/971,183, both of which now stand issued. We do not reach the provisional rejections and leave the appropriateness of a non-provisional double patenting rejection for the Examiner's consideration. In re Mott, 539 F.2d 1291, 1295---6 (CCPA 1976) ("Once the provisional rejection has been made, there is nothing the examiner and the applicant must do until the other application issues.") 2 Appeal2014-000747 Application 12/986,355 Claims 1, 7, 23, 26 and 27 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Rogers and Brown. Final Act. 6. Claims 2-14, 24 and 25 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Rogers, Brown and Krause. Final Act. 7. Claims 2, 4, and 6-10 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Moran, Brown and Karnow. Final Act. 9. OPINION Claims 1, 10, 23, 26 and 27 Independent claim 1 is rejected on any one of Rusch, Moran and Rogers, in view of Brown. Independent claim 10 is rejected on Moran, Brown, and Karnow. Appellants' first, second and fourth arguments concerning the Examiner's combination of Rusch and Brown stem from a similar premise: Rusch is intended to train defensive players against cut blocking. Based on this premise, Appellants argue that (1) there is no reason to make the modification proposed (App. Br. 3--4), (2) Rusch teaches away from handholds (App. Br. 4), and (3) the proposed modification would render Rusch unsatisfactory for its intended purpose (App. Br 5). We cannot agree with any of these arguments for the following reasons, respectively: ( 1) As the Examiner correctly points out, the addition of Brown's pockets 19 or "handhold[s]" improves the versatility of the device in that it can be used to practice additional blocking maneuvers, "eliminate[ing] the need for secondary pieces[s] of equipment." Final Act. 6; Ans. 18. (2) Rusch discloses an alternative arrangement without criticizing or discrediting the solution claimed including handholds. See In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004). (3) We see no reason why the Rusch device could not continue to be used for its intended purpose to 3 Appeal2014-000747 Application 12/986,355 train defenders against cut blocking, as the Examiner's proposed modification of introducing pockets or handholds has little to do with the triggering system Rusch developed for that purpose. See Rusch, Figs. 4A- D; p. 2, paras. 22-23. Where the Examiner's rejection is based on Moran instead of Rusch, Appellants argue that there is no sufficient reason to modify Moran's device with the handholds of Brown because Moran is concerned with simulating a forward charge of opponents. App. Br. 6-7. Appellants argue handholds would render Moran 3 unsatisfactory for its intended purpose because handholds would not aid in Moran's purpose. First, as above, we agree with the Examiner that pockets or handholds improve the versatility of the pad. Final Act. 7; Ans. 20-22. Appellants do not apprise us of why training techniques appropriate for a forwardly charging opponent are exclusive of those for using handholds. Moran is concerned with training both defensive and offensive players. Moran, col. 1, 11. 9-10. Brown, like Moran, is also concerned with charging opponents. Brown, col. 2, 11. 30-31. Even if handholds do not aid in Moran's ability to simulate forward movement itself, there is no reason handholds would render Moran's device unsatisfactory for simulating forward charging. With respect to Rogers, Appellants make a similar argument to that advanced concerning Moran. Instead of focusing on Moran's forward movement, Appellants point out that Rogers desires upward movement. App. Br. 8. As with Moran, we see no reason handholds would prevent the type of moment deemed desirable in Rogers. Rogers' comment concerning having hands pinched by the spring 62 (App. Br. 8, citing Rogers, col. 6, 11. 3 Appellants' arguments against "Rusch" in the section of the Brief directed to the Moran and Brown combination are presumed to refer to "Moran." 4 Appeal2014-000747 Application 12/986,355 10-12) involves touting a benefit of enclosing tubes 56 and 52. 4 It is not reasonably regarded as a discussion of blocking technique and, in any case, spring 62 is not similarly located to Brown's pockets 19. Regarding each of the rejections discussed above, Appellants argue that Brown teaches away from the proposed modification because Brown teaches away from using sleds. App. Br. 4, 6, 9. The portion of Brown cited by Appellants in support of this argument (col. 2, 11. 26-34) refers generally to "these devices," meaning those previously listed by Brown, which include both devices using sleds and hand-held devices (col. 1, 1. 55---col. 2, 1. 25). Although Brown goes on to discuss a hand-held embodiment, the cited portion of Brown does not make any disparaging or critical remarks concerning sleds in particular. As such, we are not apprised of any teaching away in Brown from combination with sled-type devices. Regarding claim 10, as rejected on Moran, Brown and Karnow, Appellants argue adding the Karnow base in place of Moran's sled would prevent selective wall mounting as desired by ivforan. App. Br. 11. ivforan repositions the sled for selective wall mounting by removing only the rear support barrel bolts. See Fig. 5; col. 2, 1. 40. If Karnow's lift truck 5 were employed in a floor-mounted arrangement (Ans. 29) the entire barrel 11 may instead need to be removed, making wall-mounting somewhat less convenient, but not prohibited. This may be a design tradeoff but would not defeat any of the main objectives stated by Moran involving the ability to train linemen. Moran, col. 1, 11. 8-29. Concerning claim 27, Appellants additionally contend Rusch lacks a "primary contact surface" because "Rusch moves between a few distinct 4 Incorrectly referenced as 26 and 28 in line 9. See Rogers, col. 5, 11. 5-53; col. 6, 11. 15-16. 5 Appeal2014-000747 Application 12/986,355 positions that expose different areas of the blocking pillar." App. Br. 5. Appellants do not direct our attention to any specific definition of a "primary contact surface." The forwardly facing surface of Rusch is reasonably regarded as such because it is the primary, first or main surface to confront the trainee. This is unchanged by the fact that the pad may pivot downwardly or the fact that the trainee may maneuver away from the front surface of the pad. Rusch, paras. 4, 18. Appellants do not apprise us of any structural distinction over Rusch introduced by the term "primary contact surface." We therefore conclude the phrase "primary contact surface" amounts essentially to a descriptive name for the front of a blocking pad. See K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999), accord IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000). For the reasons discussed above, we affirm the Examiner's rejection of claim 1 based on any one of Rusch, Moran and Rogers, in view of Brown. We affirm the Examiner's rejection of claim l 0 based on ivforan, Brown and Kamow. We affirm the Examiner's rejection of claim 27 based on Rusch and Brown. We also affirm the Examiner's rejection of claim 10 on Rogers, Brown and Krause, the Examiner's rejections of claims 23 and 26, and the Examiner's rejection of claim 27 on Moran or Rogers in view of Brown, because none of these rejections are separately argued. See 37 C.F.R. Â§ 41.37(c)(iv); see also Hyatt v. Dudas, 551 F. 3d 1307, 1314 (Fed. Cir. 2008)("[T]he applicant can waive appeal of a ground of rejection, and can waive the right to demand additional subgrouping of claims within a given appealed ground.") 6 Appeal2014-000747 Application 12/986,355 Claims 6-8 Regarding claim 6, Appellants argue "no arm in Krause moves vertically relative to any sled frame." App. Br. 10. The Examiner correctly explains the operation of the Krause device. Ans. 24-25. However, the Examiner does not identify how Krause's teachings are applied to Rogers to yield the claimed subject matter. Perhaps the Examiner considered the post 13 of Rogers replaceable with the vertically movable telescoping post 18, 21, 22 and column 26, 27, 28 arrangement of Krause. However, this is only speculation because the Examiner's basis for rejecting claim 6 is not clear on the record before us. A rejection must be set forth in sufficiently articulate and informative manner as to meet the notice requirement ofÂ§ 132, such as by identifying where or how each limitation of the rejected claims is met by the prior art references. In re Jung, 637 F. 3d 1356, 1363 (Fed. Cir. 2011); see also 37 C.F.R. Â§ l.104(c)(2) ("\Vhen a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified."); Gechter v. Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997)(PTO must create a record that includes "specific fact findings for each contested limitation and satisfactory explanations for such findings."). It is neither our place, nor Appellants' burden, to speculate as to the basis for rejecting claims. In re Stepan, 660 F.3d 1341, 1345 (Fed. Cir. 201 l)(It is the PTO' s obligation to provide timely notice to the applicant of all matters of fact and law asserted.). 7 Appeal2014-000747 Application 12/986,355 Regarding the rejections of claim 7 based on Rogers and Brown, or Rogers, Brown and Krause, Appellants correctly argue that the Examiner has not demonstrated "lateral" movability in either Rogers (Final Act. 7) or Krause (Final Act. 8). App. Br. 9, 10. The Examiner reproduces a reasonable definition of "lateral" (Ans. 25) but does not reasonably apply it. We cannot agree with the Examiner that pivotability about a fixed point (Ans. 22; Rogers, Fig. 9) amounts to movability in a lateral direction. The Specification clearly demonstrates these terms should not be considered interchangeable. Cf claim 2 and claim 7; Spec., paras. 24--28. Pivoting movement in the longitudinal direction, as that direction is defined in claim 1, cannot reasonably be considered to also be in the lateral direction according to dependent claim 7 because these directions are not reasonably regarded as the same on the Krause device. See Ans. 25, citing Krause, Fig. 5. Further, Krause, like Appellants, considers a different direction as "lateral." Krause, p. 2, para. 24. Although prior-art nomenclature is not necessarily controlling, [p ]rior art references may be "indicative of what all those skilled in the art generally believe a certain term means . . . [and] can often help to demonstrate how a disputed term is used by those skilled in the art." Accordingly, the PTO's interpretation of claim terms should not be so broad that it conflicts with the meaning given to identical terms in other patents from analogous art. In re Cortright, 165 F. 3d 1353, 1358 (Fed. Cir. 1999). Regarding claim 8, Appellants correctly argue "no arm in Kamow or Moran is ... secured to a rear portion of a sled frame." App. Br. 12. The Examiner again does not identify any "arm" in the Examiner's proposed combination (Ans. 29 (instead stating "the blocking pad is attached ... ")) and there does not appear to be any attachment at the rear of the Kamow 8 Appeal2014-000747 Application 12/986,355 frame, modified as proposed by the Examiner. See Ans. 29 (addressing the 4.5.3 argument under the heading directed to 4.5.1--4.5.2). For the reasons discussed above, we reverse the rejection of claim 6 based on Rogers, Brown and Krause; we reverse the rejections of claim 7, based on either Rogers and Brown, or Rogers, Brown and Krause; we reverse the rejection of claim 8 based on Rogers, Brown and Krause by virtue of its dependency from claim 7; we reverse the rejection of claim 8 based on Moran, Brown and Kamow. We sustain the rejection of claims 6 and 7 based on Moran, Brown and Kamow because it is not separately argued. See Hyatt v. Dudas, supra. Claims 2 and 12 Appellants argue that neither Kamow nor Krause discloses a device that pivots through an arc defined by a pivot axis. App. Br. 10, 11. Appellants state this conclusion without any explanation of why Appellants believe it to be true. We are not apprised of any specific definition of "pad axis" and understand the term to refer, consistently with Appellants Specification, to any axis about which the pad rotates. See, e.g., Fig. 5 (axis P). The Krause device has a similar axis along pin 33. The Kamow device has an omnidirectional pivot (Final Act. 9) and when incorporated into Moran (Ans. 29) would appear to yield a "blocking pad is pivotable through an arc defined about a pad axis" as that phrase would reasonably be understood by one skilled in the art when read in light of the Specification. Appellants have not apprised us of any reason why either of the Examiner's proposed combinations, whether based on Kamow or Krause, would not have yielded the subject matter of claims 2 and 12. Accordingly, we sustain the Examiner's rejections of claims 2 and 12. 9 Appeal2014-000747 Application 12/986,355 Claims 4 and 13 Appellants argue that neither Krause nor Kamow disclose a device movable between forwardly and rearwardly canted positions. App. Br. 10, 12. In rejecting the claims based, in part, on Krause, the Examiner acknowledges the absence of any disclosure of the full range of motion in Krause. Final Act. 8. The Examiner reasoned that despite this potential difference between the claimed subject matter and the prior art, the claimed subject matter would still have been obvious because this difference results from simply optimizing the range of motion of the Krause device to that desired. The Examiner's reasoning and conclusion in this regard stands uncontroverted. The Examiner correctly found Kamow's device to have full range of motion. The direction Kamow refers to as "pitch" is reasonably understood to allow movement Appellants describe as "cant[]." Appellants do not apprise us of any reason Kamow's provision of pitch, both forward and backwards, when incorporated into ivforan, would not yield an arrangement wherein a pad is "movable between a forwardly canted position and a rearwardly canted position relative to said arm." Accordingly we sustain the Examiner's rejections of claims 4 and 13. Claims 5 and 11 Appellants correctly argue that "[t]he rejection provides no reason to include [the recited] damper." App. Br. 10. The obviousness analysis is more than simply showing that each limitation is found in the prior art. KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) ("a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art"). The Examiner 10 Appeal2014-000747 Application 12/986,355 must also consider "whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue." Id. (citing In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)). As there is no indication in the record that the Examiner considered whether there would have been a reason to combine the prior-art elements in the manner claimed, we do not sustain the Examiner's rejection of claims 5 and 11. Claim 9 Appellants argue that none of Kamow, Moran or Krause discloses an "arm ... moveable in a vertical and lateral direction." App. Br. 10, 12. Appellants, apparently inadvertently, also argue limitations pertaining to rear arm securement, present in claim 8, and discussed above, but not recited in claim 9. App. Br. 12. The Examiner found vertical movability by virtue of the pivotability of either of the Kamow or Krause structures. Final Act. 8, 9; Ans. 26, 28. Appellants do not address the Examiner's position in this regard, and the Examiner's claim interpretation and factual findings stand uncontroverted. Accordingly, we are not apprised of error in the Examiner's rejections of claim 9. Claim 25 Appellants argue that "no arm in Krause engages a downwardly facing surface of a blocking pad." App. Br. 11. The Examiner points out this was acknowledged in the Examiner's rejection. Ans. 27; Final Act. 9. Appellants' contention that "[a] player would [] dangerously strike the boom 3 2 when contacting the dummy" if Krause's boom 3 2 were rearranged to engage a downwardly facing surface of the blocking pad is premised on bodily incorporation of the relative sizes of Krause's pad and boom into Rogers-a modification not proposed by the Examiner. App. Br. 11. The 11 Appeal2014-000747 Application 12/986,355 Examiner points to an arrangement where the pad and boom could be combined in a way so as not to endanger the player. Ans. 27 (reproducing a figure from Rusch). Appellants do not traverse the Examiner's position in this regard. "It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements." In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). We are not apprised of error in the Examiner's rejections of claim 25. Claims 3, 23, and 24 Claims 3, 23 and 24 are not separately argued. DECISION We affirm the rejections of: claims 1, 26 and 27 under 35 U.S.C. Â§ 103(a) as being unpatentable over Rusch and Brown; claims 1, 26 and 27 under 35 U.S.C. Â§ 103(a) as being unpatentable over Moran and Brown claims 1, 23, 26 and 27 under 35 U.S.C. Â§ 103(a) as being unpatentable over Rogers and Brown; claims 2--4, 9, 10, 12-14, 24 and 25 under 35 U.S.C. Â§ 103(a) as being unpatentable over Rogers, Brown and Krause; and claims 2, 4, 6, 7, 9 and 10 under 35 U.S.C. Â§ 103(a) as being unpatentable over Moran, Brown and Kamow. 12 Appeal2014-000747 Application 12/986,355 We reverse the rejections of: claim 7 under 35 U.S.C. Â§ 103(a) as being unpatentable over Rogers and Brown; claims 5-8 and 11under35 U.S.C. Â§ 103(a) as being unpatentable over Rogers, Brown and Krause; and claim 8 under 35 U.S.C. Â§ 103(a) as being unpatentable over Moran, Brown and Kamow. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 13