Litania Sports Group, Inc.Download PDFPatent Trials and Appeals BoardMay 6, 20202020000010 (P.T.A.B. May. 6, 2020) 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. 15/696,232 09/06/2017 Erin L. Powers LITANIA 1090 7723 7590 05/06/2020 PHILIP L BATEMAN P O BOX 1105 DECATUR, IL 62525 EXAMINER KLAYMAN, AMIR ARIE ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 05/06/2020 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 ERIN L. POWERS, GREGORY W. LUEBBERING, and JACOB L. WHITTAKER Appeal 2020-000010 Application 15/696,232 Technology Center 3700 ____________ Before MICHAEL L. HOELTER, BENJAMIN D. M. WOOD, and BRANDON J. WARNER, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–10, 16, and 17, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Litania Sports Group, Inc.” Appeal Br. 1. Appeal 2020-000010 Application 15/696,232 2 CLAIMED SUBJECT MATTER The disclosed subject matter “relates to basketball goal assemblies.” Spec. ¶ 1. Apparatus claims 1 and 6 are independent. Claim 1 is illustrative of the claims on appeal, and is reproduced below. 1. A basketball goal assembly comprising: (a) a vertical cylindrical mast suspended from a support; (b) a backstop having a front and a back; (c) a rim attached to the front of the backstop; (d) at least one mounting bracket attached to the back of the backstop; (e) at least two horizontal U-bolts with open ends straddling the mast and attached to a mounting bracket; and (f) an elongated and integral safety bracket having a longitudinal axis, the safety bracket attached to the mast with the longitudinal axis vertical and transversely straddling one of the U-bolts, the safety bracket sequentially comprising: (i) an upper base section with a hole for attachment to the mast; (ii) an upper riser section ; (iii) a wave section having an upper crest extending away from the mast, a trough extending toward the mast, and a lower crest extending away from the mast; (iv) a lower riser section; and (v) a lower base section with a hole for attachment to the mast; the straddled U-bolt fitting tightly under the upper crest of the wave section with its open ends directed toward the mast and abutting the upper riser section and the trough of the wave section. EVIDENCE Name Reference Date Teas, Sr. (“Teas”) US 2,317,825 April 27, 1943 Mandujano D 438,093 S Feb. 27, 2001 Applicant’s Admitted Prior Art as evidenced by Appellant’s Figure 1 and associated description (including Spec. ¶¶ 4, 17) (“AAPA”). Appeal 2020-000010 Application 15/696,232 3 REJECTIONS Claims 1–10, 16, and 17 are rejected under 35 U.S.C. § 103 as unpatentable over AAPA and Teas. Claims 1–10, 16, and 17 are rejected under 35 U.S.C. § 103 as unpatentable over AAPA and Mandujano. ANALYSIS The rejection of claims 1–10, 16, and 17 as unpatentable over AAPA and Teas Both independent claims 1 and 6 recite a basketball goal assembly including an elongated safety bracket having upper and lower crests separated by an intermediate trough. The Examiner relies on AAPA for disclosing limitations (a) thru (e) (i.e., mast, backstop, rim, mounting brackets, and U-bolts) but acknowledges that “AAPA does not disclose (f)” (i.e., the safety bracket). Final Act. 2–3. The Examiner relies on Teas for disclosure of a bracket meeting the structural limitations of element (f). Final Act. 3–4. The Examiner’s stated reason to combine such teachings is “that a skilled artisan would have been motivated by Teas’ suggestion to use connection means that includes such fastening means [as] spurs and short flanges, and in connection there-with provide an improved spur which is more rigid and which is supported with one of its faces perpendicular to the flange.” Final Act. 4 (referencing Teas 1:20–28). It is understood that the Examiner is not replacing AAPA’s U-bolts with Teas’ connector, and also that Teas’s bracket is employed in the manner disclosed by Appellant. Regardless, the Examiner does not elaborate (nor is it self-evident) how Teas’ teaching of a “more rigid” spur Appeal 2020-000010 Application 15/696,232 4 (not necessarily a stronger spur) would have motivated a skilled person to combine Teas’ bracket with AAPA in the manner recited. On this point, Appellant contends, “[a] patent composed of several elements is not proved obvious merely by demonstrating that each element was, independently, known in the prior art.” [quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)]. The Examiner has demonstrated that a clamp similar in shape to the Appellant’s safety bracket is known in the prior art, but has failed to show why a person skilled in the art would have used the clamp for a completely different purpose in a completely different setting. Appeal Br. 3. In short, “Appellant has never asserted that the safety bracket itself is patentable and has never disputed the safety bracket is similar in structure to the clamps disclosed in Teas and Mandujano.” Reply Br. 2. Furthermore, Appellant contends that if a secure connection is warranted (i.e., in addition to the known use of U-bolts), then “one possible option might be to straddle one of the U-bolts with a conventional pipe clamp having a single pocket” (i.e., “crest”). Appeal Br. 4. In other words, “there would be no reason to use a clamp with two pockets” as recited if a “more rigid” attachment is desired, as the Examiner proposes. Appeal Br. 4; Final Act. 4. Appellant further contends that the Examiner’s proposed use of Teas’ bracket would change its principle of operation. This is because, “[t]he purpose of the Teas clamp is to prevent movement [whereas t]he safety bracket of the Appellant’s basketball goal assembly allows movement of the U-bolt.” Appeal Br. 4–5; see also Teas 1:2–3 (“for securing into position electric conductors”), 1:19–20 (“is supporting the cable and the strap also in position”). Hence, as per Appellant, Appellant’s safety bracket is employed in a manner contrary to the teachings of Teas. See Appeal Br. 4, 5. Appeal 2020-000010 Application 15/696,232 5 Appellant further challenges the Examiner’s combination because Teas is not analogous art. See Appeal Br. 5. For example, Teas “is not in the field of basketball goals” and Teas “is not reasonably pertinent to the problem of basketball goals slipping off vertical masts.” Appeal Br. 5. The Examiner rebuts these assertions stating that “claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.” Ans. 4 (referencing In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997); see also id. at 5. While such guidance is indeed correct, the Examiner’s application thereof is misplaced because Schreiber, and its teachings, pertain to a rejection based on anticipation, not obviousness as presently before us. See Final Act. 2. Regarding the requirements of an obviousness rejection, the Supreme Court has provided guidance stating: it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known. KSR, 550 U.S. at 418–19. Thus, the fact that the recited structure is known, by itself, is insufficient because it is also “important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR, 550 U.S. at 418. It is this that Appellant finds lacking. See Appeal and Reply Briefs generally. In other words, unlike the anticipation standard expressed above by the Examiner, a rejection based on obviousness warrants some articulated rationale for the Examiner’s suggested combination Appeal 2020-000010 Application 15/696,232 6 because the fact that the various parts themselves exist separately is not, in and of itself, a sufficient basis for an obviousness rejection. The Examiner further states, “[i]t is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.” Ans. 4 (citation and emphasis omitted); see also Ans. 8 (“[A]ppellant uses an old and known bracket device”). While this maxim is not disputed, the Supreme Court expressed it as “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. Here, the familiar element in question is Teas’ bracket, and Teas teaches the known method (which yields predictable results) of holding a structure in place. See Teas 1:2–3, 1:19–20. However, as Appellant has pointed out above, “[t]he purpose of the Teas clamp is to prevent movement [whereas t]he safety bracket of the Appellant’s basketball goal assembly allows movement of the U-bolt.” Appeal Br. 4–5. The Examiner does not address this different function, or why one skilled in the art would have understood Teas’ bracket as predictably performing such function based on the record relied upon. See, e.g., Ans. 7 (“Teas was designed and intended for improvement in securement of a bracket to a support surface”). Hence, the Examiner focuses solely on Teas’ securement properties (see also Final Act. 4), and does not make clear why it would have been obvious to combine Teas’ bracket with AAPA in the manner recited, absent impermissible hindsight (see Appeal Br. 5). The Examiner also states that “[n]owhere in the claims is there any mention, or any limitations, regarding ‘allows’ movement of the U-bolt, as argued by [A]ppellant.” Ans. 6. However, claim 1 recites straddling the U- Appeal 2020-000010 Application 15/696,232 7 bolt “under the upper crest . . . and abutting the upper riser section” with gravity determining whether the U-bolt moves or not. Claim 6 is even more specific, reciting a similar placement of the U-bolt and stating, “in the event the backstop and U-bolts slip downwardly along the mast.” Hence, the Examiner’s assertion that “[n]owhere in the claims is there any mention, or any limitations, regarding ‘allows’ movement of the U-bolt, as argued by [A]ppellant” (Ans. 6) is not a wholly accurate description of the claims on appeal. The Examiner further states that Appellant “most notably ignores the structure of Teas’ bracket.” Ans. 6. However, as discussed above, Appellant is focusing attention on the Examiner’s stated reason to combine Teas with AAPA, “and has never disputed the safety bracket is similar in structure to the clamp[] disclosed in Teas.” Reply Br. 2. The Examiner further disputes Appellant’s assertion that the use of Teas’ bracket in the manner recited “will change the principle operation of clamping.” Ans. 6; see also id. at 7. However, “clamping” is normally understood to denote immobility, and Appellant’s claims are not directed to resisting movement of the U-bolts as explained above.2 Regardless, the focus of Appellant’s arguments is to the effect that the Examiner’s reason to combine is lacking, and there is merit to Appellant’s argument on this point. For example, the Examiner states that “Teas was designed and intended for improvement in securement of a bracket to a support surface.” Ans. 7. Even 2 As support, one dictionary defines “clamp” as “a device designed to bind or constrict . . . so as to hold them firmly.” Merriam Webster, https:// www.merriam-webster.com/dictionary/clamp. Another defines “clamp” as “a device . . . for strengthening or supporting objects or fastening them together.” Dictionary.com, https://www.dictionary.com/browse/clamp#. Appeal 2020-000010 Application 15/696,232 8 should Teas provide improved securement (i.e., “provide an improved spur which is more rigid,” (Final Act. 4)), the Examiner still does not make clear how incorporating a more rigid spur is a reason to combine Teas with AAPA when: (a) there is no reference or suggestion in the cited art of a need to supplement the U-bolts which are already provided and, (b) it is not otherwise self-evident how having a more rigid spur would have somehow prompted one skilled in the art to combine Teas’ bracket with AAPA. Additionally, the Examiner states that “there is nothing” in Teas that might suggest to one skilled in the art that Teas’ bracket “could not be operated with one of the crests clamping a wire (U-bolt).” Ans. 7. We agree that Teas might be capable of being operated as indicated, but the more fundamental question asked by Appellant is why one would have been motivated to combined Teas with AAPA. See Appeal Brief generally. This important question asked by Appellant goes to the heart of the Examiner’s obviousness rejection, and it remains unanswered. Accordingly, and based on the record presented, we are not persuaded the Examiner has provided “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” as is required. KSR, 550 U.S. at 418. We reverse the rejection of claims 1–10, 16, and 17 as being obvious in view of AAPA and Teas. The rejection of claims 1–10, 16, and 17 as unpatentable over AAPA and Mandujano Mandujano is a design patent entitled “Electrical and Aluminum Tubing Clamp.” The claim is for a “clamp, as shown and described.” As mentioned above, the ordinary and customary definition of “clamp” involves immobility. In fact, the Examiner agrees with this Appeal 2020-000010 Application 15/696,232 9 assessment, stating that the reason to combine AAPA and Mandujano is “to obtain the predictable results of utilizing a clamp/lock/immobilizer/holder that [is] configured to hold a bolt (or any other fastening means) upon a strut/support/pole in the same manner.” Final Act. 9. Hence, the first portion of the Examiner’s reason is one of locking or holding (i.e., avoiding slippage or movement) which has previously been discussed. The latter part of this reason is directed to the manner by which Mandujano’s device is to be attached to a pole. See also Ans. 8. As also discussed above, it is not evident as to how Mandujano’s method of attachment to a pole (whether via spurs, bolts, or otherwise) would prompt one skilled in the art to combine AAPA and Mandujano in the manner recited. Again, Appellant is not disputing structure, but a lack of a reason to combine. See Reply Br. 2 (“Appellant is claiming a basketball goal assembly, not a safety bracket”). Appellant repeats many of the arguments presented above (see Appeal Br. 6–8) and the Examiner’s Answer comingles Teas and Mandujano together in the Examiner’s response (see Ans. 3–8). Thus, we decline to duplicate here our analysis above, which is equally applicable to the cited combination of AAPA and Mandujano. Hence, for similar reasons already expressed, we do not sustain the Examiner’s rejection of claims 1–10, 16, and 17 as being obvious in view of AAPA and Mandujano. Appeal 2020-000010 Application 15/696,232 10 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–10, 16, 17 103 AAPA, Teas 1–10, 16, 17 1–10, 16, 17 103 AAPA, Mandujano 1–10, 16, 17 Overall Outcome 1–10, 16, 17 REVERSED Copy with citationCopy as parenthetical citation