Ex Parte BardDownload PDFPatent Trial and Appeal BoardAug 22, 201312144348 (P.T.A.B. Aug. 22, 2013) 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. 12/144,348 06/23/2008 Michael Bard 58587.0003 (830001.US1) 1362 7590 08/22/2013 MICHAEL BARD LEAD DAWG SPORTS, LLC 11999 S BLACK HORN CIRCLE PARKER, CO 80134 EXAMINER ARYANPOUR, MITRA ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 08/22/2013 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 MICHAEL BARD ____________ Appeal 2011-009704 Application 12/144,348 Technology Center 3700 ____________ Before CHARLES N. GREENHUT, BARRY L. GROSSMAN, and BART A. GERSTENBLITH, Administrative Patent Judges. GROSSMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009704 Application 12/144,348 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 33 and 34. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We reverse the decision of the Examiner. CLAIMED SUBJECT MATTER The claimed subject matter relates generally to a sports training aid for a foot of a baseball or softball player that properly positions upper portions of a batter's body to thereby teach improved swing mechanics. Spec., paras. [0005], [0006]. Claim 33, the sole independent claim, is representative of the subject matter on appeal and recites: 33. A method for training a baseball or softball player, the method comprising: providing a baseball or softball training aid, the baseball or softball training aid comprising: a foot-shaped foot support having a foot placement surface and a ground contacting surface generally opposite the foot placement surface, the foot placement surface including a first incline and a second incline, the first incline extending from a heel region of the foot-shaped support up to a toe region of the foot-shaped support and the second incline extends from an insole region of the foot- shaped support up to an outsole region of the foot- shaped support; positioning a front foot of the baseball or softball player in a batting stance on the foot placement area such that the baseball or softball player's heel is positioned in the heel region, the baseball or softball player's toes are positioned in Appeal 2011-009704 Application 12/144,348 3 the toe region, the baseball or softball player's insole is positioned in the insole region, and the baseball or softball player's outsole is positioned in the outsole region; securing the baseball or softball training aid to the baseball or softball player's front foot; and performing a bat swinging motion. REJECTION The sole rejection in this case and before us for review is the rejection of claims 33 and 34 under 35 U.S.C. § 101 as unpatentable because they are directed to non-statutory subject matter. Ans. 3. There is no rejection on prior art. ANALYSIS The Examiner concluded that the claims were directed to non- statutory subject matter “because they are directed to a method or process claim that does not transform underlying subject matter (such as an article or material) to a different state or thing, nor are they tied to a particular machine. Ans. 3. The basis for this conclusion was that a “foot-shaped foot support is not considered by this examiner to qualify as a ‘particular machine.’” Id.; see also Ans. 4 (“claims 33 and 34 do not require the method to be implemented by a particular machine. As noted above the foot- shaped foot support is not considered by this Examiner to qualify as a machine.”) The Examiner stated that the claims were rejected solely “because the claims do not pass the ‘machine-or-transformation test.’” Id. at 4. The Examiner relied on the Federal Circuit decision in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc) for the proposition that “method claims must pass Appeal 2011-009704 Application 12/144,348 4 the ‘machine-or-transformation test’ in order to be eligible for patent protection under 35 USC 101.” Id. at 3.1 Appellant argues that the Examiner has not provided a discussion of the meaning of the term "particular machine" and why the claimed foot- shaped foot support is not considered to qualify as a "particular machine" according to this definition, and thus has not established a prima facie basis for the rejection. App. Br. 9-10. Appellant also argues that the claims satisfy the "machine" prong of the "machine-or-transformation" test. Id. at 10. Under the machine-or-transformation test, “[a] claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus.” In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008) (en banc), aff'd sub nom. Bilski v. Kappos, 130 S. Ct. 3218 (2010). The method recited in claim 33 requires “a foot-shaped foot support having a foot placement surface and a ground contacting surface generally opposite the foot placement surface.” The foot placement surface requires a first incline extending from a heel region of the foot-shaped support up to a toe region of the foot-shaped support. The foot placement surface also requires a second incline extending from an insole region of the foot-shaped support up to an outsole region of the foot-shaped support. The method also requires positioning the user’s front foot on the foot placement area with the 1 The Examiner did not cite or consider the Supreme Court’s review of the Federal Circuit’s decision in Bilski wherein the Supreme Court stated that the machine-or-transformation test “is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101,” but it “is not the sole test for deciding whether an invention is a patent-eligible ‘process.’” See Bilski v. Kappos, 130 S. Ct. 3218, 3227 (2010). Appeal 2011-009704 Application 12/144,348 5 user’s heel, toe, insole and outsole positioned on the respective heel, toe, insole and outsole regions of the foot-shaped support. “[A] machine is a ‘concrete thing, consisting of parts, or of certain devices and combination of devices.’ This ‘includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result.’” In re Ferguson, 558 F.3d 1359, 1364 (Fed. Cir. 2009) (internal citations omitted). The foot-shaped support called for in claim 33 clearly meets the definition of a machine. The foot-shaped support is a concrete thing. It consists of various parts, including heel, toe, insole and outsole regions and first and second incline surfaces. These parts perform specifically claimed functions – they position the user’s foot in a “batting stance.” As explained in the Specification, when the user’s foot is positioned properly on the foot- shaped support the toes are raised above the heel, and the outsole is raised above the insole. Spec., paras. [0006], [0024]. The parts also produce a certain effect or result. The Specification states that a front foot oriented in the position created by the sports training aid will hold the batter's front hip bone back and underneath the batter, thereby creating a more balanced batting stance. Spec., paras. [0024], [0025]. Thus, based on the analysis above, we agree with Appellant and find that the claimed method in claim 33 clearly is tied to a particular machine. We also agree with Appellant that the Examiner has not established a prima facie case of unpatentability. The Examiner did not cite any evidence to support the determination (Ans. 3) that the foot-shaped support required in claim 33 does not qualify as a particular machine. "[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of Appeal 2011-009704 Application 12/144,348 6 presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). DECISION Upon consideration of the record as a whole in light of Appellant’s contentions and the preponderance of relevant evidence we reverse the Examiner’s decision rejecting claims 33 and 34. REVERSED Klh Copy with citationCopy as parenthetical citation