Ex Parte Ziemkowski et alDownload PDFPatent Trial and Appeal BoardMar 24, 201411726057 (P.T.A.B. Mar. 24, 2014) Copy Citation 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. 11/726,057 03/20/2007 Theodore B. Ziemkowski 7936 7590 03/24/2014 DAVID W. BOYD 458 N. BRISBANE AVE. GREELEY, CO 80634 EXAMINER ARYANPOUR, MITRA ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 03/24/2014 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 THEODORE B. ZIEMKOWSKI and DAVID W. BOYD ____________ Appeal 2012-004819 Application 11/726,057 Technology Center 3700 ____________ Before MURRIEL E. CRAWFORD, GAY ANN SPAHN, and BART A. GERSTENBLITH, Administrative Patent Judges. SPAHN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1, 3-7, and 9-14. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2012-004819 Application 11/726,057 2 Claimed Subject Matter Claim 1, reproduced below in a reformatted version, with emphasis and paragraph identifiers added, is illustrative of the appealed subject matter. 1. A perimeter boundary for a sport court, comprising: [(a)] at least four elongate flexible segments configured to form a rectangle having four comers, first and second of the comers being at ends of a first side of the rectangle, the first side including a preselected point; and [(b)] a hypotenuse distance indicator placed on one of the boundary segments not included between the first and second corners, the hypotenuse distance indicator placed a hypotenuse distance from a point on the boundary defining a third one of the corners, wherein the hypotenuse distance is the distance between the third corner of the rectangle and the preselected point on the first side; [(c)] wherein the perimeter boundary is configured to separate so that the perimeter boundary is open and has two ends, and is further configured to reattach when in use so that the perimeter boundary forms a closed, endless loop; and [(d)] wherein each segment marks a portion of the court perimeter during play of the sport. Independent claim 7 is also directed to “[a] perimeter boundary for a sport court” and includes, inter alia, at least two hypotenuse distance indicators placed on the perimeter boundary, each hypotenuse distance indicator being a hypotenuse distance from a point on the boundary defining a respective one of the corners, wherein the hypotenuse distance is the distance between the respective corner and a respective preselected point on an initial side of the rectangle. App. Br., Clms. App’x. Appeal 2012-004819 Application 11/726,057 3 Rejections The following Examiner’s rejections are before us for review: I. claims 1, 3-5, 7, 9-12, and 14 under 35 U.S.C. § 102(b) as anticipated by Vircks (US 6,141,880, issued Nov. 7, 2000); and II. claims 6 and 13 under 35 U.S.C. § 103(a) as unpatentable over Vircks. OPINION Rejection I – Anticipation based on Vircks Claims 1 and 3-5 The Examiner finds that Vircks anticipates claim 1 by disclosing a perimeter boundary for a sport court including, inter alia, a hypotenuse distance indicator (302a) placed on one of the boundary segments not included between the first and second corners (one end of 302a is placed on the 3rd corner which is on the top left side of the court), the hypotenuse distance indicator placed a hypotenuse distance from a point on the boundary defining a third one of the corners, wherein the hypotenuse distance is the distance between the third corner (304 on the top left hand side of the court) of the rectangle and the preselected point on the first side (304 bottom right hand side of the court). Ans. 4-5. Appellants argue that Vircks does not disclose paragraph (b) of claim 1 as quoted supra. See App. Br. 7. Appellants explain that the Specification defines a hypotenuse distance indicator 207 to be “a mark made on boundary 200” and is formed in any of the following ways: (1) “using an indelible ink or paint of a color that contrasts with the boundary material”; (2) “weaving fibers of a contrasting color into boundary 200”; (3) “a device crimped or clamped onto boundary 200 at the proper location”; and (4) “may Appeal 2012-004819 Application 11/726,057 4 be formed in some other way.” See para. [0025]; see also id. Thus, Appellants also argue that the Examiner’s reliance on Vircks’s diagonal length 302a of cord 302 to correspond to the claimed hypotenuse distance indicator is misplaced, because “Vircks’ segment 302a is not a mark.” Id. The Examiner responds that “[i]t appears [A]ppellant[s are] interpreting the hypotenuse distance indicator to be of a very unique type of marking,” and “the patent to Vircks in the embodiment of figure 6 shows the marking to be a removable marking (302a).” Ans. 10. However, the Examiner further responds that “[t]he claims as presented do not require the ‘kind of marking’ to be for example a black-circular permanent dot,” and “a marking is a form of indicia which visually aids the user as in the instant applica[tion] to locate a point on the cord or the continuous segment.” Id. Based on the foregoing, the Examiner’s position is that “element (302a) described by Vircks meets this limitation.” Id. The Examiner does not appear to contest Appellants’ argument that a hypotenuse distance indicator is a mark, but Appellants and the Examiner disagree on what constitutes a mark, i.e., the Examiner’s position being that Vircks’s diagonal length 302a of cord 302 constitutes a mark and Appellants arguing that it does not. An ordinary and customary meaning of the noun “mark” is “a visible impression, stain, etc[.], on a surface, such as a spot or scratch,” and an ordinary and customary meaning of the word “indicia” is “distinguishing markings or signs; indications.” Collins English Dictionary – Complete & Unabridged, 10th Edition, William Collins Sons & Co., © 2009, available at www.dictionary.com (last visited: March 16, 2014). Based on the ordinary and customary meaning of the word “mark,” we are persuaded by Appellants’ arguments. One of ordinary skill in the art would Appeal 2012-004819 Application 11/726,057 5 agree that the Examiner’s finding that Vircks’s diagonal length 302a of cord 302 is a mark is unreasonable because a diagonal length 302a of cord 302 is not “a visible impression, stain, etc[.], on a surface, such as a spot or scratch.” Accordingly, we do not sustain the Examiner’s rejection of independent claim 1, and claims 3-5 which depend therefrom, under 35 U.S.C. § 102(b) as anticipated by Vircks. Claims 7, 9-12, and 14 The Examiner finds that Vircks anticipates claim 7 by disclosing, inter alia: at least two hypotenuse distance indicators (the first and second ends of element 302a which define the hypotenuse distance between the first preselected point on the first or initial side or segment and the third corner; and the second preselected point on the first or initial side or segment and the fourth corner, so the ends of element 302a is placed on the perimeter boundary which happens to also be the markings on the first and second corners of the first side of the perimeter boundary) placed on the perimeter boundary, each hypotenuse distance indicator being a hypotenuse distance from a point (first and second ends of the first or initial side 302c, alternatively any of the other sides can be considered the initial or first side) on the boundary defining a respective one of the corners, wherein the hypotenuse distance is the distance between the respective corner (by way of example the 3rd corner 304 positioned on the top left hand side of the court) and a respective preselected point (end positioned on right-side of 302c positioned on the bottom of the court) on an initial side (bottom 302c) of the rectangle. Ans. 6. Appeal 2012-004819 Application 11/726,057 6 Appellants argue that “[c]laim 7 recites elements similar to those disclosed above with respect to claim 1, and claim 7 is not anticipated by Vircks for similar reasons.” App. Br. 9. For the same reasons as discussed supra with respect to claim 1, we do not sustain the Examiner’s rejection of independent claim 7, and claims 9-12 and 14 which depend therefrom, under 35 U.S.C. § 102(b) as anticipated by Vircks. Rejection II – Obviousness based on Vircks The Examiner’s rejection of claims 6 and 13, which depend directly from claims 1 and 7, respectively, relies on the erroneous finding that Vircks’s diagonal length 302a of cord 302 constitutes a hypotenuse distance indicator. For the rejection of claims 6 and 13, Appellants rely on the arguments set forth against the rejection of claims 1 and 7 as discussed supra. For the same reasons as discussed supra with respect to the rejection of claims 1 and 7, we do not sustain the Examiner’s rejection of claims 6 and 13 under 35 U.S.C. § 103(a) as unpatentable over Vircks. DECISION We reverse the Examiner’s decision to reject claims 1, 3-7, and 9-14. REVERSED hh Copy with citationCopy as parenthetical citation