Ex Parte Widerman et al

Patent Trial and Appeal Board

Feb 10, 2013

10852321 (P.T.A.B. Feb. 10, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PAUL WIDERMAN and DOUGLAS LENARD
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Appeal 2010-010905
Application 10/852,321
Technology Center 3700
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Before: LINDA E. HORNER, BENJAMIN D. M. WOOD, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

WOOD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
19-20 and 27-29. Claims 1-18, 21-26 and 30-31 have been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
THE INVENTION
The claims are directed to a computer monitor adapted to
accommodate an exercise device, and the combination thereof. Claim 19,
reproduced below, is illustrative of the claimed subject matter:
19. The combination of a monitor and an exercise
device, comprising:
a monitor capable of displaying a moving image, the
monitor having a housing,
an exercise device suitable for weight training and/or
aerobic activity, and
a well integrally formed as one piece within the monitor
housing for accommodating the exercise device and shaped to
conform to a contour of the exercise device and such that the
exercise device is flush with the monitor.

REFERENCES
Kim
Shifferaw
Neil
Brown
US 6,104,445
US 6,682,464 B2
US 6,793,607 B2
US 6,902,517 B1
Aug. 15, 2000
Jan. 27, 2004
Sep. 21, 2004
Jun. 7, 2005

REJECTIONS
Claims 19 and 20 stand rejected under 35 U.S.C § 103(a) as
unpatentable over Kim and Shifferaw. Ans. 3.
Claim 27 stands rejected under 35 U.S.C § 103(a) as unpatentable
over Kim, Shifferaw, and Neil. Ans. 4.
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Claims 28 and 29 stand rejected under 35 U.S.C § 103(a) as
unpatentable over Kim, Shifferaw, Neil, and Brown. Ans. 5.
ANALYSIS
Claims 19 and 20 – Obviousness – Kim and Shifferaw
Appellants argue claims 19 and 20 as a group. Br. 4. We select claim
19 as representative, with claim 20 standing or falling with claim 19.
37 C.F.R. § 41.37(c)(1)(vii).
The Examiner found that Kim discloses a computer monitor with a
well, integrally formed as one piece within the monitor housing, designed
for storing digital storage media. Ans. 3-4 (citing Kim fig. 1); see Kim fig.
3. The Examiner further found that Shifferaw discloses an exercise device –
a dumbbell with generally square plates – suitable for weight training and/or
aerobic activity. Ans. 4 (citing Shifferaw fig. 2, item 13). The Examiner
observed that Shifferaw also discloses a tray for storing the dumbbell, and
that the shape of Shifferaw’s exercise device and storage tray is “virtually
identical” to the shape of Kim’s well. 1 Ans. 6. Therefore, the Examiner
reasoned, Kim’s monitor well does not need to be modified to accommodate
Shifferaw’s exercise device. Ans. 7. The Examiner determined that “it
would [have been] obvious to one of ordinary skill in the art to store
Shifferaw’s weights in Kim’s rack, as Kim’s rack is designed for storage and
Shifferaw’s weights are stored in a rack.” Ans. 9.2

1 Shifferaw depicts the dumbbell sitting in a tray divided into pockets that
are sized and shaped to hold individual dumbbell plates. Shifferaw, col. 2.
ll. 27-30; figs. 1, 2, 6.
2 The Examiner also found that the recording media that Kim’s well is
meant to store could be considered exercise devices, because they can be
picked up and set down and can be thrown like a Frisbee, and the claims do
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Appellants first argue that Kim and Shifferaw are “not concerned with
[and do not] suggest[]” combining Kim’s well with Shifferaw’s exercise
device. Br. 4-5; see also Br. 7-8 (Kim’s media rack “is not disclosed as
adapted for incorporating or supporting an exercise device,” and Shifferaw’s
dumbbell “is not disclosed as adapted for being incorporated into a monitor
housing.”). Further, according to Appellants, “absent Appellants’ discovery
and solution to the problems noted above, it would not make common sense
to one of ordinary skill in the art to modify the monitor of Kim for
accommodating the adjustable dumbbell/barbell of Shifferaw.” Br. 5.
We do not find these arguments persuasive. First, Kim and Shifferaw
need not be “concerned with” or “suggest” the combination that forms the
basis of the Examiner’s prima facie case of obviousness. The Supreme
Court has rejected the rigid requirement of demonstrating a teaching,
suggestion, or motivation to combine the references in order to show
obviousness. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007).
Rather, rejections based on obviousness must be supported by “some
articulated reasoning with some rational underpinning” to combine known
elements in the manner required by the claim. Id. at 418 (citing In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)). Appellants do not directly address the
Examiner’s rationale for the obviousness rejection or show why that
rationale is erroneous or lacking a rational underpinning. The Examiner
reasoned that (1) Kim taught that its well was designed for storage; (2)
Shifferaw’s dumbbell is designed to be stored in a tray having virtually the

not recite any particular design features. Ans. 8. Because we affirm this
rejection on the basis of the Examiner’s primary case for obviousness, the
combination of Kim and Shifferaw, we do not address this alternative
reasoning.
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same shape as Kim’s well, indicating that the well would need little if any
modification to accommodate the dumbbell;3 and therefore (3) it would have
been obvious to a person of ordinary skill to store Shifferaw’s dumbbell in
Kim’s well. See, e.g., Ans. 6-7. We believe that the Examiner’s articulated
reasoning has a rational underpinning and therefore adequately supports the
prima facie case of obviousness. In that regard we find unsupported and
conclusory, and thus deserving of little weight, Appellants’ statement that “it
would not make common sense” to combine Kim and Shifferaw as the
Examiner suggests. Br. 4; In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997).
Appellants next argue that Shifferaw’s dumbbell would not be flush
with Kim’s well. Br. 7. The Examiner responds that “the combination of
Kim’s monitor (see fig. 4), [and] Shifferaw’s similar shaped dumbbell (see
fig. 2) would leave the exercise device of Shifferaw flush with the front of
Kim’s monitor which reads on the claimed feature.” Ans. 8. Appellants do
not show why this finding is incorrect, or dispute that the claim is satisfied
when the exercise device is flush with the front of the monitor.
For the above reasons, we sustain the Examiner’s rejection of claims
19 and 20.
Claim 27 – Obviousness – Kim, Shifferaw, and Neil
The Examiner found that Neil discloses a prerecorded medium for
providing a moving image, for display on the monitor, demonstrating an
exercise routine using the exercise device. Ans. 4 (citing Neil, col. 5,

3 Appellants assert that “although the well of Kim and the dumbbell/barbell
of Shifferaw are rectangular in shape, the proportions are totally different.”
Br. 7. Appellants, however, do not provide any support for this assertion
and thus we are unable to accord it any weight. Geisler, 116 F.3d at 1470.
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ll. 16-29). The Examiner further found that it would have been obvious to
use a prerecorded video of an exercise routine to demonstrate proper
techniques for using the device. Ans. 5. Appellants argue that Neil “is not
concerned with or suggests providing a monitor housing with a well for
accommodating an exercise device.” Br. 9. This argument is not persuasive
because it fails to address the rejection as articulated by the Examiner which
relies on Kim and Shifferaw for teaching these elements. Appellants also
argue that “Neil fails to cure the noted deficiencies in Kim and Shifferaw.”
As discussed above, Appellants have not persuaded us of any deficiencies
with respect to the Examiner’s rejection of claims 19 and 20. Accordingly,
we sustain this rejection.
Claims 28 and 29 – Obviousness – Kim, Shifferaw, Neil, and Brown
Claims 28 and 29 depend from claim 27 and additionally require that
the exercise device be “an elliptically-shaped weight.” Br. 13 (Clms.
Appx.). The Examiner found that Brown discloses an elliptically shaped
weight. Ans. 5, 11 (citing Brown fig. 3, item 12). Brown, however,
describes the weight as only “semi-elliptical,” which is also evident from
Brown figure 1. Because we disagree with the Examiner’s finding that
Brown discloses an elliptical weight and because the Examiner does not
articulate any reason to modify the references to provide an elliptically-
shaped weight, we do not sustain this rejection.
DECISION
For the above reasons, the Examiner’s rejection of claims 19, 20, and
27 is affirmed. The Examiner’s rejection of claims 28 and 29 is reversed.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED-IN-PART

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