Ex Parte Williams

Patent Trial and Appeal Board

Jun 7, 2016

12819941 (P.T.A.B. Jun. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/819,941 06/21/2010
20995 7590 06/09/2016
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
Taly Williams
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.
TALY.OOlCl 1193
EXAMINER
LEGESSE, NINI F
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
06/09/2016 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte T ALY WILLIAMS
Appeal2013-002240
Application 12/819,941
Technology Center 3700
Before MICHAEL L. HOELTER, LYNNE H. BROWNE, and
GORDON D. KINDER, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Taly Williams (Appellant) appeals under 35 U.S.C. § 134 from the
rejection of claims 11, 12, 19, 20, 24, and 25 under 35 U.S.C. § 102(b) as
anticipated by Carlson (US 5,954,598, iss. Sept. 21, 1999). 1 We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Claims 13, 16, and 17 are canceled by Appellant. See Appeal Br. 8.
Accordingly, the Examiner withdraws the rejection of these claims under 35
U.S.C. § 103(a). Ans. 5. In addition, the Examiner withdraws the rejection
of claims 16 and 17 under 35 U.S.C. § 112, first and second paragraphs, for
the same reason. Id. The Examiner further withdraws the double patenting
rejection of claims 11 and 12 under 35 U.S.C. § 101 in view of the Terminal
Disclaimer filed February 21, 2012. Id.
Appeal2013-002240
Application 12/819,941
CLAIMED SUBJECT MATTER
Claim 11, reproduced below, is illustrative of the claimed subject
matter:
11. A method of improving the ability of a user to move an object
as a result of athletic movement that relates to striking an item,
compnsmg:
securing a device to one of (1) a forearm of the user
between a wrist and an elbow, (2) an upper arm of the user
between an elbow and a shoulder and (3) an upper leg of the user
between a knee and a hip, said device defining a point of focus,
wherein the device is configured to secure to an attachment site
of the user;
wherein the device positions the point of focus that
extends longitudinally with respect to said one of the forearm,
the upper arm or the upper leg of the user beyond the attachment
site and beyond the hand, elbow or knee, respectively, of the user
at a location which is substantially constant with respect to the
attachment site of the user; and
moving the point of focus through at least a portion of a
forward movement and at least a portion of a follow-though
movement following a point of contact so that the point of focus
is substantially continuously within the field of vision of the user;
wherein the point of focus does not contact the item during
a movement sequence.
DISCUSSION
Claims 11 and 12
Regarding independent claim 11, the Examiner finds, inter alia, that
"[ d]uring normal use and operation of the Carlson device, the claimed
method steps are inherently performed." Final Act. 7.
Noting that "Carlson teaches or suggests maintaining the target [(i.e.
element 236)] of the device disclosed therein essentially fixed during use,"
Appellant argues that Carlson fails to disclose "inter alia, 'moving the point
of focus through at least a portion of a forward movement and at least a
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Application 12/819,941
portion of a follow-though movement following a point of contact so that the
point of focus is substantially continuously within the field of vision of the
user."' Appeal Br. 13 (citing Carlson 1:53-55) (emphasis omitted).
Carlson states, "[i]t is considered by skilled batters to be preferable to
keep the upper lead arm in an essentially fixed position while swinging the
bat." Carlson 1:53-55. Carlson further states:
After the invention has been attached to the batter and the target
positioned, a ball is pitched toward the batter, and the batter
moves his arms, elbows and upper body to place the target in the
expected path of the ball, at the position where the ball should be
hit. If the batter has successfully judged the trajectory of the ball
and positioned his body accordingly, the ball will strike the
target. The batter need not swing the bat during use of the
invention. Once the batter has practiced targeting and
positioning with the invention, when he follows through with a
swing he should be able to more accurately hit the oncoming ball
with the sweet spot of the bat.
Id. at 1:67-2:11. Thus, in Carlson, although the point of focus (i.e., 236) is
moved and, as noted by the Examiner, the point of focus "clearly stays
within the user's field of vision during the use of the device" (Ans. 6),
Carlson does not specify that the point of focus is moved "through at least a
portion of a forward movement and at least a portion of a follow-though
movement following a point of contact," as required by claim 11.
The fact that Carlson's device during its normal use and operation
may accidentally perform this method step is insufficient to support a
finding that Carlson implicitly or inherently discloses moving the point of
focus in the manner claimed. While an apparatus claim may be unpatentable
over a prior device of like construction that is capable of performing the
same function; it is otherwise with a method patent. The mere possession of
an apparatus does not teach or suggest all the possible processes to which it
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Application 12/819,941
may be adapted. See Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403,
424--425 (1902).
For this reason, we do not sustain the Examiner's decision rejecting
independent claim 11, and claim 12 which depends therefrom.
Claims 19, 20, 24, and 25
Regarding independent claim 19, the Examiner finds, inter alia, that
Carlson discloses "a point of focus as claimed (236 in one embodiment and
combination of elements 620 & 900 in another embodiment)." Final Act. 7.
Noting that "it is in fact a stated purpose of Carlson for a ball to hit the
target that extends from the device," Appellant argues that "Carlson fails to
disclose, inter alia, 'wherein the point of focus is not configured to contact
the item during a movement sequence."' Appeal Br. 14 (emphasis omitted).
Carlson states:
After the invention has been attached to the batter and the target
position, a ball is pitched toward the batter, and the batter moves
his arms, elbows and upper body to place the target in the
expected path of the ball, at the position where the ball should be
hit. If the batter has successfully judged the trajectory of the ball
and positioned his body accordingly, the ball will strike the
target.
Carlson 1:67-2:6. Thus, Appellant is correct. Carlson's device is
configured to contact the item, rather than not configured to contact the
target. Accordingly, the Examiner's finding is in error.
For this reason, we do not sustain the Examiner's decision rejecting
claim 19, and claims 20, 24, and 25 which depend therefrom.
DECISION
The Examiner's rejection of claims 11, 12, 19, 20, 24, and 25 is
REVERSED.
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Application 12/819,941
REVERSED
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