Ex Parte GottliebDownload PDFPatent Trial and Appeal BoardNov 7, 201713347806 (P.T.A.B. Nov. 7, 2017) 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. 13/347,806 01/11/2012 Steve Gottlieb SGI 9337 63893 7590 DOUGLAS J. VISNIUS 18024 Falcon Green Court ORLANDO, EL 32820-2712 11/09/2017 EXAMINER TRAVERS, MATTHEW P ART UNIT PAPER NUMBER 3726 NOTIFICATION DATE DELIVERY MODE 11/09/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): apexmasterworks @ gmail. com sfnlhafnap @ yahoo, com dvisnius @ bellsouth. net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVE GOTTLIEB Appeal 2016-001790 Application 13/347,806 Technology Center 3700 Before JOHN C. KERINS, GEORGE R. HOSKINS, and ARTHUR M. PESLAK, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Steve Gottlieb (“Appellant”) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—9 and 27—37. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal 2016-001790 Application 13/347,806 THE CLAIMED SUBJECT MATTER Appellant’s invention relates to “human powered paddles.” Spec. 11. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A system comprising: a relief fabricated into at least one of a solid front side and a solid back side of a paddle blade on a paddle blade’s border; and an impact absorbent material securely fastened to the relief on the at least one of the solid front side and a solid back side [back side] of the paddle blade and the paddle blade’s border. REJECTIONS 1) Claims 4, 6, 30, and 37 are rejected under 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement. 2) Claims 8 and 34 are rejected under 35 U.S.C. § 112, second paragraph as indefinite.1 3) Claims 1—3, 5, and 7—9 are rejected under 35 U.S.C. § 102(b) as anticipated by Grenadier (US 4,128,239, issued Dec. 5, 1978). 4) Claims 4, 6, and 27—37 are rejected under 35 U.S.C. § 103(a) as unpatentable over Grenadier. DISCUSSION Rejection 1 Claim 4 recites “the paddle shaft is at least 2 times longer than the paddle blade’s longest dimension and shorter than 20 times the paddle 1 In the Answer, the Examiner withdrew an indefmiteness rejection of claims 6, 27—33, and 35—37 under 35 U.S.C. § 112, second paragraph. Ans. 3^4. 2 Appeal 2016-001790 Application 13/347,806 blade’s longest dimension.” Appeal Br. (Claims App.). Claim 6 depends from claim 4. Id. Claims 30 and 37 contain the same limitation as claim 4. Id. The Examiner determines that the claims do not comply with the written description requirement because Appellant’s Specification “lacks any mention of the paddle shaft’s specific length, and not one of the figures portrays even a portion of the shaft’s length falling within this range.” Final Act. 2. The Examiner additionally determines that the limitation in claim 37, “the impact absorbent material extends at least a quarter way up the paddle blade’s length from the paddle blade’s end opposite the paddle shaft,” is not supported by the Specification. Id. at 3. The Examiner notes that the Specification discloses “‘the impact absorbent material may cover at least a distal lower two fifths of the paddle blade’s border with respect to a paddle shaft.’” Id. (citing Spec. 14, Fig. 8). Appellant argues that these claims find written description support in paragraph 32 of the Specification. Appeal Br. 5. Appellant argues that one skilled in the art “would recognize in applicant’s disclosure a description of the invention defined by the claims or they are not one skilled in the art.” Id. For the following reasons, we sustain the rejection of claims 4, 6, 30, and 37. The first paragraph of 35 U.S.C. § 112 contains a written description requirement that is separate and distinct from the enablement requirement. AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1340 (Fed. Cir. 2010) (en banc). To satisfy the written description requirement, the Specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562—63 (Fed. Cir. 1991). Specifically, the Specification must describe the claimed invention in 3 Appeal 2016-001790 Application 13/347,806 a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id.; Ariad, 598 F.3d at 1351. Paragraph 32 of the Specification, upon which Appellant relies for written description support of claims 4, 6, 30, and 37 provides: In one embodiment, the impact absorbent material 28 aids in protecting a watercraft’s side (not shown) from damage when the paddle blade 36 carrying the paddle blade’s border 26 with the impact absorbent material 28 is used. For example, SUP boards can be damaged by a prior art paddle blade striking the side of the board. In contrast, the impact absorbent material 28 on the paddle blade’s border 26 would aid in protecting the watercraft’s side during a similar paddle blade strike of the SUP board because it can elastically deform and/or absorb energy generated by the paddle blade strike. Spec. 132. This paragraph is silent regarding the length of the paddle shaft in relation to the paddle blade’s dimensions as recited in claims 4, 6, 30, and 37. Further, this paragraph does not describe the distance that the impact absorbent material extends up the paddle board as recited in claim 37. We also note that claims 11 and 16 as originally filed recite that the impact absorbent material is on “at least a distal lower two fifths of the paddle blade’s border.” Claims filed January 11, 2012. Appellant does not address the inconsistency between claim 37 and the description of the length of impact absorbent material in paragraph 4 of the Specification or in originally filed claims 11 and 16. We sustain the Examiner’s written description rejection of claims 4, 6, 30, and 37, which is supported by a preponderance of the evidence. The evidence cited by Appellant in opposition fails to persuade us that the 4 Appeal 2016-001790 Application 13/347,806 Specification describes the claimed invention in sufficient detail such that one skilled in the art could reasonably conclude that Appellant possessed the invention recited in claims 4, 6, 30, and 37. Rejection 2 Claims 8 and 34 recite “the paddle blade’s materials are designed for water use.” Appeal Br. (Claims App.). The Examiner determines that this limitation is indefinite because “[i]t is unclear what distinguishes a material ‘designed for water use’ from one not designed for water use.” Ans. 5. The Examiner explains that whether a material is designed for water use “is at least partially dependent upon an intended outcome of its use in that application. For example, a material may dissolve in water and still be considered to be designed for use in water if dissolving is the intended outcome.” Final Act. 2—A. Appellant contends that indefmiteness under 35 U.S.C. § 112, second paragraph must be analyzed in light of the Specification. Appeal Br. 6—7. Appellant argues that the language of claim 8 is not unclear because paragraphs 32, 35—37, 39, and 42 of the Specification “disclose embodiments operating in water based environment[s].” Id. at 7. In response, the Examiner notes that Appellant’s “arguments affirm that the claimed paddle is intended for use in a water environment, they do not address the fact that the scope of materials defined by the limitation ‘designed for water use’ is not clear and thus indefinite.” Ans. 5. While we appreciate the Examiner’s reference to material that can dissolve in water, Appellant’s Specification is directed to “paddles used by people to propel a watercraft such as a canoe.” Spec. 12. Thus, the paddle 5 Appeal 2016-001790 Application 13/347,806 blade as recited in claim 8 must be fabricated from a material capable of use in water for propelling a watercraft. See In re Packard, 751 F.3d 1307, 1312 (Fed. Cir. 2014) (explaining that indefiniteness is evaluated “based on the perspective of one of ordinary skill in the art in view of the entire written description”). In light of the Specification, we determine that one of ordinary skill in the art would understand the scope of claims 8 and 34. We, thus, do not sustain the rejection of claims 8 and 34 under 35 U.S.C. § 112, second paragraph. Rejection 3 In the determining that Grenadier anticipates claim 1, the Examiner specifically finds that Grenadier discloses “a solid . . . front side and a solid back side ... of a paddle.” Final Act. 4 (emphasis added) (citing Grenadier, 2:15—16, 21—24). The Examiner asserts that “the word ‘solid’ is not synonymous with ‘having no holes’, and it has not been interpreted as such herein.” Id. at 9. Appellant contends that “the paddle faces of Grenadier require holes in contrast to the claimed solid faces.” Appeal Br. 15. Appellant directs us to openings 15 and 115 illustrated in Figures 1—5 of Grenadier in support of this contention. Id. Grenadier discloses a paddle construction with through holes 15 or 115 between the front and back surfaces. See Grenadier, Figures 1—5, 2:46-48, 3:55—56. The Examiner does not direct us to any embodiment in Grenadier without holes in the front and/or back surfaces of the paddle. Appellant’s drawings illustrate a paddle with a front surface with various raised features but no holes or recesses extending below the front surface into or through the paddle. Spec. Figs. 2, 11. Although the 6 Appeal 2016-001790 Application 13/347,806 Examiner asserts that “solid” is not synonymous with having no holes, the Examiner does not offer a proposed construction of “solid” that supports a finding that paddles, such as disclosed in Grenadier, with holes extending below the front or back surface, has a solid front side or a solid back side. The Examiner’s finding that Grenadier discloses a paddle with a solid front side and solid back side is, thus, not supported by a preponderance of the evidence. We do not sustain the rejection of claim 1 and claims 2—3, 5, and 7—9 which depend from claim 1. Rejection 4 Claims 4 and 6 The Examiner rejects claims 4 and 6 as unpatentable over Grenadier. Final Act. 5—6. Claims 4 and 6 depend from claim 1. Appeal Br. (Claims App.). The rejection is based, in part, on the unsupported finding made with respect to claim 1 that Grenadier discloses a paddle with a solid front side and solid backside. We, thus, do not sustain the rejection of claims 4 and 6 for the same reasons stated above for claim 1. Claims 36 and 37 Independent claim 36, like claim 1, recites “a solid-front-side and a solid-back-side of the paddle blade.” Appeal Br. (Claims App.). The Examiner similarly relies on Grenadier in rejecting claim 36. Final Act. 8. Appellant relies on the same argument as for claim 1. Appeal Br. 15. We, thus, do not sustain the rejection of claim 36 and claim 37 which depends from claim 36 for the same reasons stated above for claim 1. 7 Appeal 2016-001790 Application 13/347,806 Claims 27—35 The Examiner finds that Grenadier discloses the limitations of independent claim 27 except the front side and back side of the paddle blade “are not necessarily angled away from only one side of the paddle shaft’s longitudinal axis.” Final Act. 6. Nonetheless, the Examiner determines it would have been obvious to alter “the shape of the Grenadier paddle since it has been held that the configuration of a claimed product is a matter of choice which a person of ordinary skill in the art would find obvious absent persuasive evidence that the particular configuration of the claimed product is significant.” Id. at 6—7. Appellant contends that modifying Grenadier’s paddle as proposed by the Examiner “would improperly change the principle of operation of Grenadier.” Appeal Br. 14. In support of this contention, Appellant argues that Grenadier discloses “that handle extension 14 is in plane with face portion 12/112 or 16/116 ... [so that] both the forehand and backhand strokes will strike the ball similarly on face portion 12/112.” Id. Appellant asserts that the result of the Examiner’s modification would be the ball leaving the paddle at “an unintentional angle.” Id. For the following reasons, we do not sustain the rejection of claim 27. Unlike Appellant’s invention, which is directed to paddles for propelling watercraft, Grenadier discloses a “paddle construction for striking a ball during play in a ball game.” Grenadier, Abstract, Figs. 1, 2, 4. Grenadier also discloses that a problem with then existing paddles was a ball deflecting from the racket “at an unintentional angle.” Id. at 1:22. In the Answer, the Examiner does not address the Appellant’s arguments that modifying Grenadier as proposed in the rejection would 8 Appeal 2016-001790 Application 13/347,806 result in a paddle that would deflect the ball differently depending on whether the user was hitting the ball with a forehand or a backhand stroke. See Ans. 6. We are not persuaded that the Examiner has adequately explained why is would be an obvious matter of design choice to modify Grenadier’s paddle, as proposed in the rejection, in light of Appellant’s argument that the modification would change the principle of operation of Grenadier’s paddle. We, thus, do not sustain the rejection of claim 27. We also do not sustain the rejection of claims 28—35 which depend from claim 27 for the same reasons. DECISION The Examiner’s decision rejecting claims 4, 6, 30, and 37 under 35 U.S.C. § 112, first paragraph is affirmed. The Examiner’s decision rejecting claims 8 and 34 under 35 U.S.C. §112, second paragraph is reversed. The Examiner decision rejecting claims 1—9 and 27—37 under 35 U.S.C. § 102(b) or 35 U.S.C. § 103(a) is reversed. 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)(l)(iv). AFFIRMED-IN-PART 9 Copy with citationCopy as parenthetical citation