2021001799 (P.T.A.B. Oct. 29, 2021)

Robert Marsh

Patent Trials and Appeals BoardOct 29, 2021

2021001799 (P.T.A.B. Oct. 29, 2021)

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. 16/229,791 12/21/2018 Robert E. Marsh 7065 41502 7590 10/29/2021 Robert E. Marsh 7317 West 79th Street Overland Park, KS 66204 EXAMINER LETTERMAN, CATRINA A ART UNIT PAPER NUMBER 3784 MAIL DATE DELIVERY MODE 10/29/2021 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 ROBERT E. MARSH Appeal 2021-001799 Application 16/229,791 Technology Center 3700 Before JENNIFER D. BAHR, STEFAN STAICOVICI, and CHARLES N. GREENHUT, Administrative Patent Judges. GREENHUT, 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 1–16. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and designate a NEW GROUND of rejection. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Robert E. Marsh. Appeal Br. 1. Appeal 2021-001799 Application 16/229,791 2 CLAIMED SUBJECT MATTER The claims are directed to a weighted exercise ribbon. Claim 2, reproduced below along with its parent claim, claim 1, is illustrative of the subject matter involved in this appeal: 1. An exercise ribbon having a weighted portion and substantially unweighted portions at each end of the ribbon, said weighted portion having a weight between 1 and 20 pounds. 2. The exercise ribbon in Claim 1 wherein the sum of the length of said unweighted portions is at least one half of the length of said exercise ribbon. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Proctor US 5,498,218 Mar. 12, 1996 Abdo US 2005/0137063 A1 June 23, 2005 Castel US 2007/0105696 A1 May 10, 2007 Garrett US 2011/0319235 A1 Dec. 29, 2011 REJECTIONS Appellant seeks our review of only the following rejection: Claims 2–4, 10, and 11 are rejected under 35 U.S.C. § 103 as being unpatentable over Abdo and Proctor. Final Act. 11. App. Br. 3. Appellant and the Examiner appears to agree that the remaining issues can be resolved by appropriate amendments. Appeal Br. 3; Adv. Act. As such, Appellant does not seek our review of the following rejections and any arguments directed thereto are considered waived for purposes of this appeal. In re Berger, 279 F.3d 975 (Fed. Cir. 2002) (Affirming the Board’s Appeal 2021-001799 Application 16/229,791 3 affirmance of an uncontested rejection, holding that the appellant had waived the right to contest the rejection by not presenting arguments on appeal to the Board); Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“the applicant can waive appeal of a ground of rejection”). We summarily affirm the following rejections: Claims 2–4 are rejected under 35 U.S.C. § 112(b) as being indefinite. Final Act. 4. Claims 1 and 13–16 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Abdo. Final Act. 5. Claims 1 and 5–9 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Garrett. Final Act. 7. Claim 12 is rejected under 35 U.S.C. § 103 as being unpatentable over Abdo and Castel. Final Act. 14. OPINION The main issue raised concerning the rejection predicated on Abdo and Proctor is whether Proctor is properly considered analogous art. Appeal Br. 7; Reply Br. 2. The Examiner initially states that Proctor is “in a similar field of endeavor.” Final Act. 11. When the analogousness of Proctor is challenged by Appellant, the Examiner responds by pointing out both are “exercising” devices and that Proctor is relied upon only for the length of the straps. Ans. 3–4. Although the first part of the Examiner’s response is relevant to the issue of analogousness, the second part of the Examiner’s response bears little relevance here because “before any prior art can be relied on for any element, it must be analogous prior art,” as Appellant Appeal 2021-001799 Application 16/229,791 4 correctly points out. Reply Br. 2; see MPEP § 2141.01(a)(I)(and cases cited therein). Appellant contends that “the Court of Appeals for the Federal Circuit in Airbus SAS v. Firepass Corporation, [941 F.3d 1374] (Fed. Cir. 2019), provides useful if not dispositive guidance for the analysis of whether Proctor is analogous art.” Appeal Br. 5–6 (underlining omitted). In Airbus, the Court held there was substantial evidence to support the Board’s decision that a reference was not in the same field of endeavor based in part upon the absence of the term “fire:” In view of the Board’s factual findings that (1) the challenged claims are expressly directed to a fire-preventive and fire- suppressive system, and (2) Kotliar does not even recite the word “fire” once throughout the entirety of its disclosure, a reasonable mind could conclude that the ’752 patent and Kotliar are directed to different fields of endeavor—especially for a “common sense” inquiry like this. Airbus at 1381. The Court, however, did not indicate that the mere absence in a prior-art reference of a particular term used in the claim will necessarily result in a finding that the reference is not in the same field of endeavor as the claimed subject matter. Rather, the Court in Airbus reaffirmed the principles set forth in In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) with regard to the field of endeavor prong of the analogous art test where the proper focus is on similarities and differences in structure and function. Airbus at 1380. When similarities and differences in structure and function are considered, there are many more similarities between the claimed subject matter and Proctor than there are differences. Structurally, both are in the form of a “ribbon” and both have discrete central portions abutted by Appeal 2021-001799 Application 16/229,791 5 portions at each end intended to be held by the hands of the user. The only difference in structure is the absence of a “weighted portion” or a “weight” in Proctor. Functionally, both devices are, as the Examiner correctly points out, intended for exercising. Ans. 3. We are not apprised of any evidentiary basis on which Appellant draws the conclusion that Proctor is intended for “massage.” Appeal Br. 6. Indeed, Proctor indicates that, like Appellant’s device, the intended use is resistance training. Proctor col. 5, ll. 2–3, 20–21, 61–63; col. 6, ll. 13–18. Although Appellant may use the term “weighted,” we think it would have been well understood that weights are generally provided in exercise equipment for the purpose of providing resistance to movement. For example, Abdo, which Appellant essentially concedes would be in the same field of endeavor due to the presence of its weight (Appeal Br. 7), discusses using the weight for “resistance training” or to vary “resistance.” Abdo paras. 14–16, 40–44, 50–51. Thus, both Appellant’s device and Proctor’s may be considered to have similar functions: resistance training. The only difference is that the resistance in Appellant’s design is derived from a weight and in Proctor the user provides the resistance with the hands. In essence, Appellant has singled out the one aspect of their device, “weight,” that results in both a structural and functional distinction with respect to Proctor and asserted that one aspect suffices to render Proctor nonanalogous. This methodology is not supported by Airbus. Appellant’s conclusion of nonanalogousness is improperly formulated based on the choice of a particular word “weight” to use for the comparison as opposed to an analysis of the actual structural and functional similarities and differences between Appellant’s device and that of Proctor. Appeal Br. 6–7. When one engages in the latter, proper, analysis, it seems clear that because Proctor Appeal 2021-001799 Application 16/229,791 6 exhibits more similarities in both structure and function as compared to the one identified difference, Proctor falls within the same field of endeavor as Appellant’s claimed subject matter. Appellant also argues that “Abdo does not suggest any issue with weight placement or a need for longer straps. It teaches adequate use of its weighted device . . . .” Appeal Br. 8. It is well-settled that prior-art references applied in an obviousness rejection need not identify their own faults or expressly suggest a modified arrangement to support a conclusion that a modification would have been obvious. Rather, it is appropriate to consider “any need or problem known in the field of endeavor at the time of invention and addressed by the patent.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–29 (Fed. Cir. 2009) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–21 (2007)). Here, Abdo also expressly suggests varying the length of the weighted portion, tube 12, recognizing this length influences tube weight. Abdo para. 34. Abdo also expressly recognizes there will be a need to adjust, for example, the overall circumference of the elongated weight when positioned in a loop to accommodate different users. Abdo para. 33; see, e.g., Abdo Fig. 3. To that end, Abdo provides one or two adjusting buckles 21 on loops 20, 26. Abdo para. 33; Figs. 5, 6. It is reasonable to infer that other exercises illustrated by Abdo may also benefit from similar adjustments. See, e.g., Abdo Figs. 13, 16. Thus, to arrive at the claimed subject matter, one need only adjust the relative sizes of the weight and loops protruding therefrom as is expressly suggested by Abdo. Arriving at the specific dimensions expressly recited in Appellant’s claims may or may not involve more than using Abdo’s buckle or buckles for their stated purpose because Abdo does not provide specific or relative dimensions for the disclosed device. Appeal 2021-001799 Application 16/229,791 7 However, as the Examiner correctly determined, Proctor provides examples of dimensions which are suitable for a human using a similar apparatus in a similar manner. See Final Act. 11 (citing Proctor col. 3, ll. 47–53); see also, e.g., Proctor Figs. 4a–9; Abdo Figs. 14–17. We agree with the Examiner’s conclusion that it would have been obvious to modify Abdo with the Proctor dimension to arrive at the subject matter of claims 2–4, 10, and 11. For the foregoing reasons, we sustain the Examiner’s rejection of claims 2–4, 10, and 11. Because we have supplemented the reasoning of record we designate our affirmance of the Examiner’s rejection as including a “new ground” pursuant to 37 C.F.R. § 41.50(b) so as to afford Appellant the procedural options associated therewith. CONCLUSION The Examiner’s rejections are AFFIRMED. We designate our affirmance of the Examiner’s rejection of claims 2– 4, 10, and 11 as including a NEW GROUND OF REJECTION. Appeal 2021-001799 Application 16/229,791 8 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 2–4 112(b) Indefiniteness 2–4 1, 13–16 102(a)(1) Abdo 1, 13–16 1, 5–9 102(a)(1) Garrett 1, 5–9 2–4, 10, 11 103 Abdo, Proctor 2–4, 10, 11 2–4, 10, 11 12 103 Abdo, Castel 12 Overall Outcome 1–16 2–4, 10, 11 RESPONSE This Decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection Appeal 2021-001799 Application 16/229,791 9 and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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)(1)(iv). AFFIRMED 37 C.F.R. § 41.50(b)