10912205 (P.T.A.B. Feb. 21, 2014)

Ex Parte Talafous

Patent Trial and Appeal BoardFeb 21, 2014

10912205 (P.T.A.B. Feb. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/912,205 08/04/2004 Dean C. Talafous T742.101.101 2379 28020 7590 02/21/2014 GRAY, PLANT, MOOTY, MOOTY & BENNETT, P.A. P.O. BOX 2906 MINNEAPOLIS, MN 55402-0906 EXAMINER NGUYEN, KIEN T ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 02/21/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DEAN C. TALAFOUS ____________ Appeal 2011-012233 Application 10/912,205 Technology Center 3700 ____________ Before JOHN C. KERINS, BART A. GERSTENBLITH, and FRANCES L. IPPOLITO, Administrative Patent Judges. GERSTENBLITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012233 Application 10/912,205 2 STATEMENT OF THE CASE Dean C. Talafous (“Appellant”) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-32. We have jurisdiction under 35 U.S.C. § 6(b). Claimed Subject Matter Claims 1, 19, 28, and 29 are the independent claims on appeal. Claim 1 is illustrative of the claimed subject matter and is reproduced below. 1. An inclined skating ramp, comprising an artificial ice skating surface supported by an inclined frame, used to improve the speed and quickness of a skater. Br. 17, Claims App’x. References The Examiner relies upon the following prior art references: Mackovjak US 5,897,457 Apr. 27, 1999 Park US 6,139,438 Oct. 31, 2000 Anderson US 6,526,614 B2 Mar. 4, 2003 Pernal US 6,676,529 B2 Jan. 13, 2004 Widrick US 6,866,589 B1 Mar. 15, 2005 Rejections Appellant seeks review of the following rejections: I. Claims 1-11, 15-19, 28, and 29 are rejected under 35 U.S.C. § 103(a) as unpatentable over Pernal and Park; II. Claims 20-27 are rejected under 35 U.S.C. § 103(a) as unpatentable over Pernal, Park, and Mackovjak; III. Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over Pernal, Park, and Anderson; Appeal 2011-012233 Application 10/912,205 3 IV. Claims 12 and 13 are rejected under 35 U.S.C. § 103(a) as unpatentable over Pernal, Park, and Widrick; and V. Claims 30-32 are rejected under 35 U.S.C. § 103(a) as unpatentable over Pernal, Park, and Mackovjak. SUMMARY OF DECISION We REVERSE. OPINION Each of the rejections before us is based on the Examiner’s combination of at least Pernal and Park. The Examiner found that Pernal discloses many of the elements of the claims, but does not teach a skating surface made from an artificial skating surface. Ans. 4. The Examiner found that Park discloses an artificial ice skating surface. Id. The Examiner concluded that it would have been obvious to one of ordinary skill in the art “to modify the skating surface of Pernal with the artificial ice skating surface as taught by Park . . . for the purpose of allowing different type of skater using [sic] the ramp.” Id. Appellant raises several arguments in response to the Examiner’s rejections, including that it would not have been obvious to modify Pernal based on Park for the reason relied upon by the Examiner. See, e.g., Br. 6. On the record before us, we agree that the Examiner has not articulated a reason supported by a rational underpinning that does not derive from Appellant’s disclosure. Modifying Pernal’s surface to allow different types of skaters to use the surface essentially relies upon Appellant’s intended use of the device and appears to derive from Appellant’s Specification, which discloses using Park’s surface. See Appeal 2011-012233 Application 10/912,205 4 Spec. 5:13-17 (citing Park). “When prior art references require selective combination by the court to render obvious a subsequent invention, there must be some reason for the combination other than the hindsight gleaned from the invention itself.” Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143 (Fed. Cir. 1985).1 Further, because each rejection relies upon the combination of Pernal and Park, each suffers from the same deficiency. Accordingly, we do not sustain the rejections. DECISION We REVERSE the Examiner’s decision rejecting claims 1-32. REVERSED hh 1 We also note that the Examiner failed to consider properly Appellant’s rebuttal evidence, submitted in the form of the Declaration of Michael A. Bondi, dated Dec. 26, 2008. The Examiner stated: “the statements failed to address the core issue of the present application is [sic] that the above rejections of the pending claims clearly presented a prima facie case regarding the obviousness of the claimed invention.” Ans. 7. Appellant submitted the Bondi Declaration as objective evidence of non-obviousness, which seems to address directly the core issue before us—whether the claims would have been obvious to one of ordinary skill in the art at the time of invention. Further, whether scientific or statistical data could “support the claimed invention in an objective manner” as noted by the Examiner (id. at 8), the lack of such data does not provide a reason, in and of itself, for the Examiner’s failure to address meaningfully Appellant’s evidence.