Ex Parte Zandman-Zeman

Patent Trial and Appeal Board

Nov 9, 2017

12914481 (P.T.A.B. Nov. 9, 2017)

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.
12/914,481 10/28/2010 Ari M. Schuhmann Zandman-Zeman 99993-392474 5876
23342 7590 11/14/2017
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: 22 - IP Docketing
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
GINSBERG, OREN ISAAC
ART UNIT PAPER NUMBER
OPQA
NOTIFICATION DATE DELIVERY MODE
11/14/2017 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):
ipefiling@kilpatricktownsend.com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARI M. SCHUHMANN ZANDMAN-ZEMAN
Appeal 2015-002904
Application 12/914,4811
Technology Center 3700
Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1—22. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to the Appellant, the real party in interest “is the assignee,
Rubberbanditz LLC.” Appeal Br. 1.
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Application 12/914,481
STATEMENT OF THE CASE
Subject Matter on Appeal
The Appellant’s “invention relates to exercise devices and methods
incorporating one or more circular elastic bands.” Spec. 11.
Claims 1, 6, and 14 are the independent claims on appeal. Claims 1
and 14, reproduced below, are illustrative of the subject matter on appeal.
1. An exercise apparatus comprising:
a solid continuous circular elastic band; and
an attachment attached to the band;
wherein the band comprises a flat inner surface and a flat
outer surface; and
wherein the attachment is a handle, a carabiner, or a
gripping device.
14. A method of exercising the human body, comprising:
(a) providing a solid continuous circular elastic band
having a flat inner surface and a flat outer surface, wherein the
band comprises multiple layers of an elastic material;
(b) simultaneously exerting (i) a first force against the
inner surface of the band at a first location on the band, and (ii)
a second force against the inner surface of the band at a second
location on the band; where the first force and the second force
are not exerted in the same direction, thereby stretching the
band and causing the band to resist the simultaneous exertion of
the first force and the second force.
Petitionable Matter
The Appellant seeks review of the Examiner’s objection to the
drawings. Appeal Br. 19-20. However, this matter is reviewable by petition
under 37 C.F.R. § 1.181 (see Manual of Patent Examining Procedure
§§ 1002, 1002.02(c)(4), 1201 (9th ed. rev. 7, Nov. 2015)) and is not within
the jurisdiction of the Board. See also In re Mindick, 371 F.2d 892, 894
(CCPA 1967).
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Rejections
I. Claims 14—20 and 22 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to non-statutory subject matter.
II. Claims 1, 2, 4—8, and 11—22 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Tee (US 4,909,505, iss. Mar. 20, 1990) and
Tustin (US 2004/0067827 Al, pub. Apr. 8, 2004).
III. Claim 3 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Tee, Tustin, and Flynn (US 2004/0204302 Al, pub.
Oct. 14, 2004).
IV. Claim 9 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Tee, Tustin, and Mabry (US 6,561,930 B2, iss. May 13,
2003).
V. Claim 10 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Tee, Tustin, and Kaiser (US 4,565,367, iss. Jan. 21, 1986).
ANALYSIS
Rejection I
The Appellant argues that claims 14—20 and 22 are directed to
statutory subject matter. Appeal Br. 8—11; Reply Br. 1—3. We agree.
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty.
Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assn for
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Application 12/914,481
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013)).
In judging whether independent claim 14 falls within the excluded
category of abstract ideas, we are guided by the Supreme Court’s two-step
framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. If so, we then
consider the elements of the claim both individually and as “an ordered
combination” to determine whether the additional elements “transform the
nature of the claim” into a patent-eligible application of the abstract idea. Id.
This is a search for an “inventive concept,” an element or combination of
elements sufficient to ensure that the claim amounts to “significantly more”
than the abstract idea itself. Id.
Here, the Examiner’s Answer was mailed on October 22, 2014, which
was after the date Alice was decided. The Answer fails to set forth whether
are claims are directed to a patent-ineligible abstract idea and whether the
claims include an element or combination of elements that amounts to
“significantly more” than any abstract idea. The Examiner only appears to
apply the machine-or-transformation test. See Ans. 7—9. However, in
determining patent eligibility “the machine-or-transformation test is a useful
and important clue, an investigative tool,” but “not the sole test for deciding
whether an invention is a patent-eligible ‘process.’” See Bilski v. Kappos,
130 S. Ct. 3218, 3227 (2010). Accordingly, we determine that an
incomplete analysis has been presented before us. See Appeal Br. 10-11.
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Moreover, under the first step of the Alice analysis, independent claim
14 recites a method of exercising the human body; it is not directed to
judicially excepted subject matter. Accordingly, claim 14 and the claims
depending therefrom are not ineligible for patenting.
Thus, we do not sustain the Examiner’s rejection of claims 14—20 and
22 because the claimed invention is directed to non-statutory subject matter.
Rejection II
Independent Claim 1 and Dependent Claims 2 and 5
The Appellant argues that the “solid continuous circular elastic band,”
as recited in claim 1, cannot be construed to read on Tee’s elastomeric
structure, which is formed in a loop by joining its ends together with a tube
or bonding its ends together with an adhesive. Appeal Br. 11—13; see Tee,
Fig. 1A, col. 4,11. 18—31. The Examiner determines, when properly
construing the term “solid continuous” in the phrase “solid continuous
circular elastic band,” the phrase reads on Tee’s elastomeric structure having
bonded ends. See Ans. 9-11.
At the outset, we note that the Specification does not explicitly define
the terms “solid” or “continuous.” As such, the Examiner properly turns to a
dictionary to understand the meaning of the terms. See id. at 10. The
Examiner cites to the online version of the Merriam-Webster dictionary,
which defines “‘solid’ as ‘having no break or interruption[]’” and
“‘continuous’ as ‘continuing without stopping’ or ‘marked by uninterrupted
extension in space, time, or sequence.’” Id. We determine that these
definitions are consistent with the broadest reasonable interpretation of the
claimed terms in light of the Specification as they would be interpreted by
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one of ordinary skill in the art. See also In re Am. Acad, of Sci. Tech. Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004). We also note, that the Appellant does
not argue that the definitions provided by the Examiner are improper.
The Examiner finds that Tee’s band forms a 360 degree loop by
having ends that are permanently affixed together and, as such, Tee’s band
does not have a break or interruption and continues without stopping. See
Final Act. 8; Ans. 10. Hence, the Examiner finds that Tee’s band
corresponds to the claimed “solid continuous circular elastic band.”
The Appellant asserts, “the [Specification clearly states that an
advantage of the claimed ‘solid continuous circular elastic band’ is that it
allows ‘the band to slowly peel over time rather than snap, thereby providing
exceptional durability and safety.’” Appeal Br. 13 (citing Spec. 134). The
Appellant adds that the stated advantage runs counter to Tee’s band, which
would break at its seam and snap. See id. at 13; Reply Br. 3^4. The
Appellant’s argument is not persuasive of Examiner error. Despite the
Appellant’s position to the contrary, there is no reason why Tee’s band must
break at its bonded ends and snap. See Ans. 11. And, there is no evidence
of record that the bonded ends of Tee’s band would prevent the band from
slowly peeling over time rather than snapping.
Thus, we sustain the Examiner’s rejection of independent claim 1 as
unpatentable over Tee and Tustin. The Appellant does not separately argue
the rejection of dependent claims 2 and 5. As such, we likewise sustain the
Examiner’s rejection of dependent claims 2 and 5 as unpatentable over Tee
and Tustin.
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Independent Claims 6 and 14 and Dependent Claims 4, 7, 8, 11—13,
15—18, 21, and 22
The Appellant argues that claim 4, which depends form claim 1, and
recites, “the band comprises multiple layers of an elastic material,” does not
correspond to the overlapping bonded ends of Tustin’s band 10. See Reply
Br. 4—5 (citing Tustin, Fig. 1,142). The Appellant’s argument is not
persuasive of Examiner error. In this case, we agree with the Examiner that
the overlapping bonded ends of Tustin’s band 10, which include two layers
of elastic material, corresponds to the claimed “multiple layers.” See
Ans. 12—13; see also Spec., Fig. 7,163 (“The stopper 720 may be
positioned between layers of the top 710.”).
Thus, we sustain the Examiner’s rejection of claim 4 as unpatentable
over Tee and Tustin.2
For the rejection of independent claims 6 and 14, the Appellant relies
on the same arguments presented for rejection of independent claim 1 and
dependent claim 4. See Appeal Br. 14—15. For the same reasons as
discussed above, we determine that the Appellant’s arguments are not
persuasive of Examiner error. Thus, we sustain the Examiner’s rejection of
independent claims 6 and 14. The Appellant does not separately argue the
rejection of claims 7, 8, 11—13, 15—18, 21, and 22, which either directly or
indirectly depend from one of claims 6 and 14. As such, we likewise sustain
2 Because we have sustained the Examiner’s rejection of claim 4 as
unpatentable over Tee and Tustin, we determine it is moot whether the
Examiner’s additional finding that Tustin’s disclosure in paragraph 48 also
corresponds to the limitation of claim 4. See Final Act. 4, 8; Appeal Br. 14—
15.
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the Examiner’s rejection of claims 7, 8, 11—13, 15—18, 21, and 22 as
unpatentable over Tee and Tustin.
Dependent Claim 19
The Appellant argues that Tustin fails to teach the limitation of claim
19, which depends from method claim 14, and recites, “wherein
simultaneously exerting the first force and the second force comprises
performing a core twist exercise.” See Appeal Br. 15. The Appellant
contends that Tustin teaches core bending exercises, and that core bending
exercises and core twisting exercises are “two completely different things.”
See id.
In response, the Examiner cites to the online version of the Merriam-
Webster dictionary to define “‘twist’ as ‘to bend or turn (something) in order
to change its shape.’” Ans. 13. The Examiner finds “a ‘core twist’ exercise
as understood by one of ordinary skill in the art would include abdominal
bending exercises.” Id.
We determine that the Examiner’s proffered definition of “twist”
results in a understanding of the claimed term “core twist exercise,” which is
inconsistent with the broadest reasonable interpretation in light of the
Specification as it would be interpreted by one of ordinary skill in the art.
See also In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d at 1364.
First, we note that the Examiner’s proffered definition of “twist” is
directed to “English Language Learners.” Twist Definition, MERRIAM-
WEBSTER.COM, https://www.merriam-webster.com/dictionary/twist (last
visited Nov. 8, 2017). As such, the definition is not directed to one versed in
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the English language or to one of ordinary skill in the art (i.e., exercise
devices and methods).
Second, we note that the Specification discloses an example — as
shown in Figure 10E — of a user performing a core twist exercise with a
band. Spec. 1 84; see Appeal Br. 15. Figure 10E depicts a frontal view of a
user of band 100 twisting (i.e., rotating) at the user’s core about a vertical
mid-line (e.g., spine). See Spec. 1 84 (“While holding the hand and arms
steady, the user may twist the body 1044 in order to perform a core twist to
acquire resistance in a horizontal plane.”).
Third, we determine that the broadest reasonable interpretation of
“core twist exercise” consistent with and in light of the Specification, as it
would be interpreted by one of ordinary skill in the art, as a rotation about
the longitudinal axis (e.g., spine) of an exerciser’s core. The foregoing is
consistent with the use of the definition of “twist” as it pertains to human
movement, particularly in the exercise art. For example, “twist” is defined
as “[m]ove one’s body so that the shoulders and hips are facing in different
directions.” Twist Definition, https://en.oxforddictionaries.com/defmition
/us/twist (last visited Nov. 8, 2017); see Twist Definition 5, THE
AMERICAN HERITAGE DICTIONARY, https://ahdictionary.com/word
/search.html?q=Twist (“To cause to rotate or turn in another direction:
twisted their heads around at the sound of the doorbell.”) (last visited
Nov. 8, 2017).
Turning to the Examiner’s reliance on Tustin’s teachings, the
Examiner finds that Tustin’s disclosure of an exercise band user performing
upper abdominal curls and side oblique raises corresponds to the claimed
“core twist exercise.” Ans. 14 (citing Tustin || 100-102). We disagree.
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The relied upon exercises in Tustin do not include a rotation about the
longitudinal axis (e.g., spine) of an exerciser’s core. See Appeal Br. 15.
We also note that the Examiner concludes that the claimed “core twist
exercise” is “well known in the art and would have been obvious to one of
ordinary skill in the art at the time of invention in order to target specific
areas and muscles of a user’s body so as to achieve a more versatile or
rigorous exercise routine.” Final Act. 6. However, even if we were to agree
with the Examiner that a “core twist exercise” — when the term is properly
interpreted — is well known in the art, the Examiner fails to adequately
explain why one of ordinary skill in the art would have performed the core
twist exercise with the claimed band as required by claim 19. See also
Appeal Br. 17.
Thus, we do not sustain the Examiner’s rejection of claim 19 as
unpatentable over Tee and Tustin.
Dependent Claim 20
The Appellant argues that Tustin fails to teach the limitation of claim
20, which depends from method claim 14, and recites “wherein
simultaneously exerting the first force and the second force comprises
performing a starfish exercise.” See Appeal Br. 15. The Appellant argues
that the Specification defines the claim term “starfish exercise” in paragraph
90. Id. at 16-17 ; see Spec., Figs. 12A—B. We agree. We also agree with
the Appellant that the Examiner incorrectly finds that Tustin’s teaching in
Figures 2a—3b (Final Act. 5), showing a user exercising with a band,
corresponds to the claimed “starfish exercise” when the term is properly
interpreted. Appeal Br. 16—17.
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Additionally, the Examiner finds: a starfish exercise is well known in
the art (see Final Act. 6); Tustin’s teachings are directed to a user
performing exercises using an elastic band, where the band is positioned
around the user’s body at different contact points (Ans. 15); and, a skilled
artisan “could engage the elastic band on the body and perform a particular
movement in order to exercise a specific muscle” (id.). The Examiner
concludes that “one of ordinary skill in the art would arrive at performing a
‘starfish exercise’ in light of the teachings of Tustin.” Id.', see Final Act. 6.
The Examiner’s conclusion is not adequately supported. For the
purposes of this appeal only, even if we were to assume that a “starfish
exercise” — when the term is properly interpreted — is well known in the
art, the Examiner fails to adequately explain why one of ordinary skill in the
art would have performed the starfish exercise with the claimed band as
required by claim 20. See Appeal Br. 17. For example, the Examiner fails
to explain how the evidence of record — in particular Tustin — shows an
exercise that is similar to a “starfish exercise,” i.e., “a multi-planar exercise
that engages multiple muscle groups-upper body, lower body, and core-in a
single movement” (Spec. 190). See also Reply Br. 5.
Thus, we do not sustain the Examiner’s rejection of claim 20 as
unpatentable over Tee and Tustin.
Rejections III—V
The Appellant includes separate headings in the Appeal Brief for
Rejection III, IV, and V. See Appeal Br. 18. For each ground of rejection,
the Appellant relies on the same arguments presented for the rejection of
independent claims 1 and 6. See id. Additionally, the Appellant asserts that
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Flynn, Mabry, and Kaiser do not cure the deficiencies in the rejection of
independent claims 1 and 6. Id. at 18, 19. For the reasons discussed above,
we determine no such deficiencies exist in the rejection of independent
claims 1 and 6. Thus, we sustain the Examiner’s rejections of: claim 3 as
unpatentable over Tee, Tustin, and Flynn; claim 9 as unpatentable over Tee,
Tustin, and Mabry; and claim 10 as unpatentable over Tee, Tustin, and
Kaiser.
DECISION
We REVERSE the Examiner’s decision rejecting claims 14—20 and
22 under 35 U.S.C. § 101 and claims 19 and 20 under 35 U.S.C. § 103(a).
We AFFIRM the Examiner’s decision rejecting claims 1—18, 21, and
22 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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