Ex Parte TJOA

Board of Patent Appeals and Interferences

Mar 3, 2010

09319243 (B.P.A.I. Mar. 3, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte PING LIONG TJOA 8
___________ 9
10
Appeal 2009-010006 11
Application 09/319,243 12
Technology Center 3600 13
___________ 14
15
Decided: March 4, 2010 16
___________ 17
18
19
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 20
JOSEPH A. FISCHETTI, Administrative Patent Judges. 21
22
FETTING, Administrative Patent Judge. 23
24
25
DECISION ON APPEAL 26
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STATEMENT OF THE CASE 1
Ping Liong Tjoa (Appellant) seeks review under 35 U.S.C. § 134 2
(2002) of a final rejection of claims 12 and 14-23, the only claims pending in 3
the application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
7
SUMMARY OF DECISION1 8
We AFFIRM. 9
10
THE INVENTION 11
The Appellant invented a training apparatus (Spec. 1:First ¶). 12
An understanding of the invention can be derived from a reading of 13
exemplary claim 12, which is reproduced below [bracketed matter and some 14
paragraphing added]. 15
12. A training apparatus for massaging the palms and for 16
promoting body bearing and motion, comprising: 17
[1] an intermediate element formed as a rod; and 18
[2] identical end elements, 19
[2a] each situated at a respective end of said intermediate 20
element, 21
[2b] wherein each end element has 22
a spherical region, 23
the diameter of which is adapted to the palm 24
of the hand of a training person with a 25
nondiscontinuous spherical surface remote 26
from said intermediate element, 27

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed August 28, 2006) and Reply Brief (“Reply Br.,” filed March 21,
2007), and the Examiner’s Answer (“Ans.,” mailed January 30, 2007).
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a turning region and 1
a conversely concave region on its side toward said 2
intermediate element, 3
said turning region making a steady 4
transition into said conversely concave 5
region, 6
[2c] wherein said conversely concave region making a 7
steady transition to said intermediate element, and 8
[2d] wherein the total length of the training apparatus 9
between and including said spherical regions is 10
approximately in the range of the length of the shoulder 11
span of the person using it. 12
13
THE REJECTIONS 14
The Examiner relies upon the following prior art: 15
Bosko US 3,334,899 Aug. 8, 1967 16
Jackson US 4,002,163 Jan. 11, 1977 17
Coallier US 5,580,336 Dec. 3, 1996 18
Claims 12, 14-16, and 22-23 stand rejected under 35 U.S.C. § 102(b) 19
as anticipated by Bosko. 20
Claim 17 stands rejected under 35 U.S.C. § 103(a) as unpatentable 21
over Bosko and Coallier. 22
Claims 18-21 stand rejected under 35 U.S.C. § 103(a) as unpatentable 23
over Bosko and Jackson. 24
25
ARGUMENTS 26
The Appellant argues these claims as a group. Accordingly, we select 27
claim 12 as representative of the group. 37 C.F.R. § 41.37(c)(1)(vii) (2009). 28
The Appellant contends that a dumbbell is too short to read on the 29
claim and a barbell would be too massive and heavy. Appeal Br. 3. As to 30
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the obviousness rejections, the Appellant does not argue that the art fails to 1
read on the claims, but instead argues that the declarations offered for 2
secondary evidence have not been considered. 3
4
ISSUES 5
The issue of whether the Appellant has sustained its burden of 6
showing that the Examiner erred in rejecting claims 12, 14-16, and 22-23 7
under 35 U.S.C. § 102(b) as anticipated by Bosko turns on whether Bosko 8
describes a device as recited in the claims. 9
The issue of whether the Appellant has sustained its burden of 10
showing that the Examiner erred in rejecting claim 17 under 35 U.S.C. § 11
103(a) as unpatentable over Bosko and Coallier and claims 18-21 under 35 12
U.S.C. § 103(a) as unpatentable over Bosko and Jackson turns on whether 13
the evidence of secondary considerations overcomes a prima facie case for 14
obviousness. 15
16
FACTS PERTINENT TO THE ISSUES 17
The following enumerated Findings of Fact (FF) are believed to be 18
supported by a preponderance of the evidence. 19
Facts Related to Claim Construction 20
01. The disclosure contains no lexicographic definition of 21
“adapted.” 22
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02. The ordinary and customary meaning of “adapt” is to make 1
suitable to or fit for a specific use or situation. “Adapted” is the 2
intransitive form of adapt.2 3
Facts Related to the Prior Art 4
Bosko 5
03. Bosko is directed to a simply constructed dumbbell type device 6
that may be quickly converted into a barbell. Bosko 1:14-17. 7
04. Bosko portrays in its Figure 7 a bar with a spherical element on 8
each end having a turning region and a conversely concave region 9
on its side toward said intermediate element. Each turning region 10
makes a steady transition into the conversely concave region. The 11
conversely concave region makes a steady transition to the bar. 12
05. Bosko describes how the weight and size of its device can be 13
altered at the user’s discretion. Bosko 3:40-45. 14
Coallier 15
06. Coallier is directed to a small exercising device (Coallier 1:4) 16
that is formed by a bar with a spherical end element on each end 17
(Coallier Fig. 1). 18
Jackson 19
07. Jackson is directed to an exerciser that also massages certain 20
body parts. Jackson 1:6-10. 21
Facts Related To Secondary Considerations 22
08. The Appellant filed two declarations of commercial success as 23
evidence of secondary considerations of non-obviousness for our 24
consideration. 25

2 American Heritage Dictionary of the English Language (4th ed. 2000).
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PRINCIPLES OF LAW 1
Claim Construction 2
During examination of a patent application, pending claims are 3
given their broadest reasonable construction consistent with the 4
specification. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In 5
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). 6
Limitations appearing in the specification but not recited in the claim 7
are not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 8
1364, 1369 (Fed. Cir. 2003) (claims must be interpreted “in view of the 9
specification” without importing limitations from the specification into the 10
claims unnecessarily). See also Tex. Digital, 308 F.3d 1200, 1204-05 (Fed. 11
Cir. 2002). 12
Although a patent applicant is entitled to be his or her own 13
lexicographer of patent claim terms, in ex parte prosecution it must be 14
within limits. In re Corr, 347 F.2d 578, 580 (CCPA 1965). The applicant 15
must do so by placing such definitions in the specification with sufficient 16
clarity to provide a person of ordinary skill in the art with clear and precise 17
notice of the meaning that is to be construed. See also In re Paulsen, 30 18
F.3d 1475, 1480 (Fed. Cir. 1994) (although an inventor is free to define the 19
specific terms used to describe the invention, this must be done with 20
reasonable clarity, deliberateness, and precision; where an inventor chooses 21
to give terms uncommon meanings, the inventor must set out any 22
uncommon definition in some manner within the patent disclosure so as to 23
give one of ordinary skill in the art notice of the change). 24
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Anticipation 1
"A claim is anticipated only if each and every element as set forth in 2
the claim is found, either expressly or inherently described, in a single prior 3
art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 4
628, 631 (Fed. Cir. 1987). "When a claim covers several structures or 5
compositions, either generically or as alternatives, the claim is deemed 6
anticipated if any of the structures or compositions within the scope of the 7
claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351 (Fed. 8
Cir. 2001). "The identical invention must be shown in as complete detail as 9
is contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 10
1226, 1236 (Fed. Cir. 1989). The elements must be arranged as required by 11
the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology 12
is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). 13
Obviousness 14
A claimed invention is unpatentable if the differences between it and 15
the prior art are “such that the subject matter as a whole would have been 16
obvious at the time the invention was made to a person having ordinary skill 17
in the art.” 35 U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 550 18
U.S. 398, 406 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966). 19
In Graham, the Court held that the obviousness analysis is bottomed 20
on several basic factual inquiries: “[(1)] the scope and content of the prior art 21
are to be determined; [(2)] differences between the prior art and the claims at 22
issue are to be ascertained; and [(3)] the level of ordinary skill in the 23
pertinent art resolved.” 383 U.S. at 17. See also KSR, 550 U.S. at 406. 24
“The combination of familiar elements according to known methods is likely 25
to be obvious when it does no more than yield predictable results.” Id. at 26
416. 27
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ANALYSIS 1
Claims 12, 14-16, and 22-23 rejected under 35 U.S.C. § 102(b) as 2
anticipated by Bosko. 3
The Examiner found that Bosko described a rod with two spherical 4
ends where the rod was generally of the length of a shoulder span. Ans. 3. 5
The Appellant argued that Bosko’s barbell was too massive and heavy. 6
Appeal Br. 3. The Examiner responded that Bosko describes how the parts 7
may be of any practical size. Ans. 5. 8
We agree with the Examiner that Bosk portrays in its Figure 7 a bar 9
with a spherical element on each end. FF 04. Accordingly, Bosko’s barbell 10
structurally meets the limitations of claim 12. Apparently the only dispute is 11
to the term “adapted” in limitation [2b] requiring the diameter to be adapted 12
to the palm of the hand. 13
First, as to the argument regarding weight, the claim requires the 14
diameter be adapted, not the weight. As to whether Bosko is too massive to 15
be adapted to the palm, we must first construe the term “adapted.” 16
The disclosure contains no lexicographic definition of “adapted.” FF 17
01. The ordinary and customary meaning of “adapt” is to make suitable to 18
or fit for a specific use or situation. “Adapted” is the intransitive form of 19
adapt. FF 02. Thus, the limitation requires that the end element have a 20
diameter such that it is suitable to or fit for the palm of the hand. There are 21
no other criteria in the claim regarding such suitability. So far as we can see, 22
the only general requirement for such suitability is that the palm be able to 23
contact the surface. So, we construe the term adapted to the palm of the 24
hand to mean structured so the palm can be in contact with. 25
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Clearly, the spherical elements in Bosko’s Figure 7 allow such contact. 1
As to the Appellant’s argument that a barbell is too massive, there is no 2
mention in the claim of mass being one of the criteria. Further, as the 3
Examiner found, the weight and size of Bosko’s spherical elements can be at 4
the user’s discretion. FF 05. 5
Claim 17 rejected under 35 U.S.C. § 103(a) as unpatentable over Bosko and 6
Coallier. 7
Claims 18-21 rejected under 35 U.S.C. § 103(a) as unpatentable over Bosko 8
and Jackson. 9
The Appellant submitted two declarations as evidence of commercial 10
success. FF 08. The Appellant argues that the Examiner did not give these 11
declarations adequate consideration. Appeal Br. 5. The Examiner found 12
that the declarations did not provide evidence of non-obviousness over the 13
applied prior art. Ans. 7. We agree that the declarations provide no 14
comparison with the structures in the prior art and therefore present no 15
evidence of how the claim is not obvious over the prior art. The declarations 16
state that the claimed structure provides utility, but do not provide any 17
evidence that the structures in the prior art would not have been equally 18
useful, particularly to breadth of possible embodiments that would be within 19
the claim scope. 20
21
CONCLUSIONS OF LAW 22
The Appellant has not sustained its burden of showing that the 23
Examiner erred in rejecting claims 12, 14-16, and 22-23 under 35 U.S.C. § 24
102(b) as anticipated by Bosko. 25
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The Appellant has not sustained its burden of showing that the 1
Examiner erred in rejecting claim 17 under 35 U.S.C. § 103(a) as 2
unpatentable over Bosko and Coallier. 3
The Appellant has not sustained its burden of showing that the 4
Examiner erred in rejecting claims 18-21 under 35 U.S.C. § 103(a) as 5
unpatentable over Bosko and Jackson. 6
7
DECISION 8
To summarize, our decision is as follows. 9
• The rejection of claims 12, 14-16, and 22-23 under 35 U.S.C. § 102(b) 10
as anticipated by Bosko is sustained. 11
• The rejection of claim 17 under 35 U.S.C. § 103(a) as unpatentable 12
over Bosko and Coallier is sustained. 13
• The rejection of claims 18-21 under 35 U.S.C. § 103(a) as 14
unpatentable over Bosko and Jackson is sustained. 15
No time period for taking any subsequent action in connection with 16
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 17
18
AFFIRMED 19
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