Ex Parte Bard

Patent Trial and Appeal Board

Aug 22, 2013

12144348 (P.T.A.B. Aug. 22, 2013)

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