Martin Sarkees

Patent Trials and Appeals Board

May 27, 2020

2019006336 (P.T.A.B. May. 27, 2020)

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.
15/160,461 05/20/2016 Martin Sarkees SRK-001 1099
52554 7590 05/27/2020
Southeast IP Group, LLC.
P.O. Box 14156
GREENVILLE, SC 29610
EXAMINER
DAVISON, LAURA L
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
05/27/2020 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 MARTIN SARKEES
____________

Appeal 2019-006336
Application 15/160,461
Technology Center 3700
____________

Before STEFAN STAICOVICI, BRETT C. MARTIN, and
WILLIAM A. CAPP, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Aug. 7, 2018, hereinafter “Final
Act.”) rejecting claims 1, 3, 4, and 6–82 under 35 U.S.C. § 103 as being

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The inventor, Martin Sarkees, is identified as the real
party in interest in Appellant’s Appeal Brief (filed Apr. 5, 2019, hereinafter
“Br.”). Br. 1.
2 Claims 2, 5, and 9–24 are canceled. Br. 10–12, Appendix 1.
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unpatentable over Centurion,3 Vargas,4 and Canning.5 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.

INVENTION
Appellant’s invention is directed to a tackling dummy for “practicing
and teaching blocking and tackling techniques” in contact sports. Spec. 1, ll.
5–7.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A tackling dummy comprising:
a resilient cushion member having a shape of a
human torso, including a main body member having a
length and with a left and right upper arm extending
outwardly from an upper portion of said main body
member, wherein said left upper arm extends from a left
side of said main body member and said right upper arm
extends from a right side of said main body member;
a pair of leg members extending generally
downwardly and outwardly from a bottom portion of said
main body member, so said body member is free-
standing:
a tight-fitting external cover that is disposed to
cover said resilient cushion member on all sides thereof;
and
a pair of target pads attached to said external cover
and positioned on said main body member on both sides

3 2015 Podium 4 Sport Catalog, page 117, “Centurion Tackle Dummy.”
4 Vargas, US 9,017,227 B1, issued Apr. 28, 2015.
5 Canning, US 2,904,337, issued Sept. 15, 1959.
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thereof between said upper arms and said leg members,
wherein each of said target pads has an L-shape cross
section and extends outwardly from said external cover
on one side and a front portion of said main body
member; and
further including a pair of handles on a rear side
thereof, so that said tackling dummy may be held by a
person grasping said handles on said rear side thereof.

ANALYSIS
Appellant does not present arguments for the patentability of claims 3,
4, and 6–8 apart from claim 1. See Br. 3–7. Therefore, in accordance with
37 C.F.R. § 41.37(c)(1)(iv), we select claim 1 as the representative claim to
decide the appeal of the rejection of these claims, with claims 3, 4, and 6–8
standing or falling with claim 1.
The Examiner finds that Centurion discloses tackling dummy 1
including most of the limitations of independent claim 1, and, to better
illustrate each disclosed element, annotates Centurion’s Figure, as shown
below:

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The Examiner’s annotated Figure of Centurion illustrates tackling
dummy 1 including main body member 2, left and right arm members 3, 4,
left and right leg members 5, 6, target indicia 7, and user (player) 8 engaging
tackling dummy 1 in a conventional rugby tackle. Final Act. 2–3, 6.
However, the Examiner finds that Centurion does not disclose “a pair
of L-shaped target pads and a pair of handles.” Id. at 3. Nonetheless, the
Examiner finds that the conventional rugby tackle illustrated in Centurion’s
Figure constitutes “an L-shaped target location” extending along a side of
main body member 2, which is engaged by the user’s head, and a front
portion, which is engaged by user’s shoulder. Id.; Compare Centurion,
Figure with, Appellant’s Figure 2. The Examiner further finds that Vargas
discloses attaching pads 41a, 43a, and/or 46a to the exterior of main body
member 40 in order to mark targets for a user to engage with his or her body
and Canning discloses a tackling dummy having a pair of handles 15–19 on
its rear side. Id. at 3–5 (citing Vargas, col. 2, ll. 55–57, Fig. 1; Canning, col.
2, ll. 1–16, Fig. 1).
Thus, the Examiner concludes that it would have been obvious for a
person of ordinary skill in the art to provide target pads, as taught by Vargas,
to the L-shaped location of Centurion’s tackling dummy, “in order to mark
Centurion’s intended target location for correctly performing a conventional
rugby tackle.” Id. at 4 (citing Vargas, col. 2, ll. 55–57; Centurion, Figure).
The Examiner also determines that it would have been obvious for a skilled
artisan to further modify Centurion’s tackling dummy, as modified by
Vargas, “by adding a pair of handles as taught by Canning to . . . [its] rear
side . . . so that the dummy may be used in tackling practice by one player
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while the dummy is held upright by a coach or other player.” Id. at 5 (citing
Canning, col. 2, ll. 12–15).
Appellant argues that the combined teachings of Vargas and
Centurion do not disclose “alteration of the pads of Vargas so they are 1) L-
shaped or 2) each cover a front and side portion,” as called for by claim 1.
Br. 4. According to Appellant, Centurion does not disclose target pads and
the pads of Vargas are for reinforcing karate blows, which are different from
tackling, and, thus, are not “L-shaped,” but rather disc-shaped. Id.
Appellant’s arguments are not persuasive because “[n]on-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references. [Each
reference] must be read, not in isolation, but for what it fairly teaches in
combination with the prior art as a whole.” See In re Merck & Co. Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986). In this case, because an artisan must be
presumed to know something about the art apart from what the references
disclose, the Examiner is correct in relying on Centurion’s Figure as a
disclosure of an “L-shaped location” extending along a side and a front
portion covering “an intended target region for performing a conventional
rugby tackle.” Ans. 4–5;6 see also In re Jacoby, 309 F.2d 513, 516 (CCPA
1962). We further agree with the Examiner’s finding that Vargas’s pads
41a, 43a, 46a “mark targets [for a user] on the larger striking pad [40].”
Ans. 6 (emphasis added) (citing Vargas, col. 2, ll. 55–58); see also Vargas,
Fig. 1. Hence, although Vargas’s pads are circular, because the target region
in the tackling dummy of Centurion is L-shaped when performing a

6 Examiner Answer, dated June 7, 2019.
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conventional rugby tackle, the pads of the Centurion tackling dummy, as
modified by Vargas, will likewise be L-shaped in order to “visually
instruct[] the user with respect to the intended target region[] . . . when
performing a conventional rugby tackle.” Ans. 6. Moreover, even though
we appreciate Appellant’s position that the pads of Vargas are for
reinforcing karate blows, and not conventional tackles, the Examiner is not
proposing to use the particular construction or structure of Vargas’s pads,
but rather is relying on Vargas’s disclosure of “visually identify[ing] target
locations by means of target pads.” Ans. 7; see also In re Sneed, 710 F.2d
1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review.”).
Appellant further argues that Vargas’s portable striking device is non-
analogous art because it is not in the same field of endeavor as Appellant’s
“dummy to teach proper tackling” and “is not concerned with proper
tackling technique at all.” Br. 5–6.
The Federal Circuit has explained that “[t]he analogous art inquiry is a
factual one, requiring inquiry into the similarities of the problems and the
closeness of the subject matter as viewed by a person of ordinary skill in the
art.” Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1360 (Fed.
Cir. 2014).
Criteria for determining whether prior art is analogous may be
summarized as “(1) whether the art is from the same field of
endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor’s endeavor,
whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.”
Id. at 1359 (quoting In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992)).
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Here, we appreciate Appellant’s position that Vargas’s “portable
striking device that must be attached to a tree, pole, or other fixed vertical
surface” is not in the same field of endeavor as Appellant’s free-standing
tackling dummy. Br. 5 (emphasis omitted). However, in light of the
rejection as made, we agree with the Examiner’s current statement of the
relevant problem and purpose in the context of the overall invention—
“marking intended target locations.” Ans. 9; Compare Vargas, col. 2, ll. 55–
56 (“mark targets for a user”) with, Spec. 12, ll. 20–21 (“in order to provide
a clear target for the player’s shoulder”).
In contrast, Appellants’ statement of the problem and purpose of the
overall invention, i.e., “teaching proper tackling technique,” would focus the
analysis not on the problem or purpose at issue but on the specific
application and setting identified in the Specification—“a tackling dummy
. . . used for teaching a tackling technique.” Br. 6; Spec. 6, ll. 19–23. The
analogous prior art should not be so limited. See Graham v. John Deere Co.
of Kansas City, 383 U.S. 1, 35 (1966) (rejecting the argument that the cited
references were not “pertinent prior art” and stating that “[t]he problems
confronting [the patentee] and the insecticide industry were not insecticide
problems; they were mechanical closure problems”). Accordingly, the
Examiner is correct that Vargas is analogous art, and properly considered its
teachings in determining that the subject matter of claim 1 would have been
obvious.
Finally, Appellant argues that “Vargas teaches away from being
utilized as a free-standing punching bag, as specifically recited in claim 1.”
Br. 7. According to Appellant,
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[T]he Vargas reference teaches away from the proposed
combination, as the Vargas striking pad, when in use, is not
free-standing, and obviates any need for handles allowing a
person to support the tackling dummy. Indeed, the Vargas fixed
striking pad is utterly useless in performing a tackle because it
cannot be taken to the ground, as is required for a tackle
dummy.
Id.
We are not persuaded because Appellant does not point to any
passage in Vargas that “criticize[s], discredit[s] or otherwise discourage[s]”
attaching target pads, as taught by Vargas, to Centurion’s tackling dummy.
See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art does not
teach away from claimed subject matter merely by disclosing a different
solution to a similar problem unless the prior art also criticizes, discredits or
otherwise discourages the solution claimed). In particular, we note that
Vargas’s explicit disclosure of marking target locations for a user would not
have led a person of ordinary skill away from the Examiner’s modification;
rather, such disclosure would have been instructive. See Vargas, col. 2, ll.
55–56.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103 of independent claim 1 as unpatentable over
Centurion, Vargas, and Canning. Claims 3, 4, and 6–8 fall with claim 1.

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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1, 3, 4, 6–8 103 Centurion, Vargas,
Canning
1, 3, 4, 6–8

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