Ex Parte Hevesi et al

Patent Trial and Appeal Board

Mar 21, 2013

10822159 (P.T.A.B. Mar. 21, 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.
10/822,159 04/12/2004 INV001John Hevesi 022306.0101PTUS 2644
41434 7590 03/21/2013
PATTON BOGGS LLP
2550 M STREET NW
WASHINGTON, DC 20037-1350
EXAMINER
SWINEHART, EDWIN L
ART UNIT PAPER NUMBER
3617
MAIL DATE DELIVERY MODE
03/21/2013 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 JOHN HEVESI and STEVE HORVATH
____________________

Appeal 2010-010943
Application 10/822,159
Technology Center 3600
____________________

Before: EDWARD A. BROWN, BENJAMIN D. M. WOOD, and
JEREMY M. PLENZLER, Administrative Patent Judges.

WOOD, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/822,159

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1, 3-10, 18, and 20-22. Claims 2, 11-17, and 19 have been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to a kayak paddle blade, shaft and grip.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A paddle comprising:
a shaft having a cross-sectional width and at least one
recessed portion located on the shaft, the at least one
recessed portion being a lesser cross-sectional width
than the shaft cross-sectional width thereby creating at
least one transverse ridge at the junction of the shaft
cross-sectional width and the at least one recessed
portion;
a blade; and
a grip for interlocking in the at least one recessed
portion of the shaft,
wherein the blade includes
(1) a single-piece skeleton having at least three ribs
that extend distally from the longitudinal centerline
of the single-piece skeleton towards the outer
periphery of the blade and ending substantially at
the outer periphery of the blade to reinforce the
blade both longitudinally and laterally and
(2) an outer surface injection molded directly around
and enclosing the single-piece skeleton and the at
least three ribs, wherein the single-piece skeleton
and the outer surface are made of different and/or
the same molded materials, wherein the blade is
attached to the shaft, and wherein the at least one
recessed portion includes a surface profile, and the
grip includes a complimentary [sic] surface profile
to engage the surface profile of the at least one
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Application 10/822,159

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recessed portion to removably interlock the grip to
the shaft.

REFERENCES
Sweetland
Abbenhouse
Bruce
US 2,205,769
US 6,796,862 B1
Des. 320,375
Jun. 25, 1940
Sep. 28, 2004
Oct. 1, 1991
REJECTIONS1
Claims 18 and 20-22 stand rejected under 35 U.S.C § 103(a) as
unpatentable over Abbenhouse. Ans. 3.
Claims 1, 3-6, 9, 10, 18, and 20-22 stand rejected under 35 U.S.C
§ 103(a) as unpatentable over Abbenhouse and Sweetland. Ans. 4.
Claims 7 and 8 stand rejected under 35 U.S.C § 103(a) as
unpatentable over Abbenhouse, Sweetland, and Bruce. Ans. 5.
ANALYSIS
Claims 18 and 20-22 – Obviousness – Abbenhouse
Appellants argue claims 18 and 20-22 as a group. Br. 8. We select
claim 18 as representative, with claims 20-22 standing or falling with
claim 18. 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue that Abbenhouse does not teach a single-piece
skeleton having at least three ribs. Br. 7. The Examiner responds that
Abbenhouse discloses a skeleton with two ribs, and that the Specification
sets forth no criticality for three ribs. Ans. 4, 6. Ordinarily the mere
duplication of parts – in this case, the addition of a rib structure – has no
patentable significance unless a new and unexpected result is produced. See

1 The Examiner withdrew a rejection of claims 18 and 20-22 under
35 U.S.C. § 112, first paragraph. Ans. 3.
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Application 10/822,159

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In re Harza, 274 F.2d 669, 671 (CCPA 1960). Appellants have not provided
any evidence or persuasive argument that the requirement for three or more
ribs has any critical significance and we are therefore not apprised of
Examiner error.
Appellants next argue that Abbenhouse’s ribs do not extend distally
from the longitudinal centerline of the skeleton towards the outer periphery
of the paddle blade and end substantially at the outer periphery of the blade.
Br. 7. Instead, according to Appellants, Abbenhouse’s blade branches 43
and 44 diverge out toward the blade tip 39, but terminate short of the blade
tip. Id. (citing Abbenhouse, col. 3, ll. 18-20). The Examiner responds that
the term “ending substantially at said outer periphery” does not require that
the ribs extend all the way to the periphery, but requires only that they
extend to a position that is close to the periphery, which, as shown in
Abbenhouse figure 1a, Abbenhouse satisfies. Ans. 7.
We agree with the Examiner’s analysis. As the Examiner states, the
term “substantially” may be broadening, in that it denotes approximation.
See In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1150-51 (Fed. Cir.
2012) (term “substantially fixed” allows for some movement). Moreover,
during prosecution claims are given their broadest reasonable interpretation
consistent with the specification, and limitations appearing in the
specification are not to be read into the claims. In re Etter, 756 F.2d 852,
858, 225 USPQ 1, 5 (Fed. Cir. 1985). Appellants have not presented any
alternative analysis or evidence suggesting that a person of ordinary skill in
the art at the time of the invention would have understood the term “ending
substantially at said outer periphery” to have a narrower meaning. We
therefore agree with the Examiner that this term does not require that the ribs
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extend all the way to the periphery, and that the branches of Abbenhouse’s
paddle blade satisfy this limitation.
Appellants further argue that Abbenhouse does not teach a paddle
blade that has a single-piece skeleton that reinforces the paddle blade
longitudinally and/or laterally. Br. 8, 15. The Examiner found that the
claimed single-piece skeleton reads on Abbenhouse’s molded bifurcated
foam core 75, which “is covered top and bottom by a composite skin, and
attached to [the] shaft as claimed.” Ans. 3-4; see Abbenhouse, col. 5,
ll. 15-18. Appellants assert that “the central foam component in
Abbenhouse et al. is NOT load bearing and provides no increase in strength
beyond that of allowing a unique shape to be molded in the outer skin.”
Br. 8. In response, the Examiner found that the “blade of Abbenhouse et al.
will inherently be stronger with the foam core in place, as opposed to its
absence,” and thus “it can be said that the foam core will reinforce the blade
as claimed.” Ans. 7.
We agree with the Examiner. “[W]hen the PTO shows sound basis
for believing that the products of the applicant and the prior art are the same,
the applicant has the burden of showing that they are not.” In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990). We find that the Examiner has shown a
sound basis for believing that Abbenhouse’s blade will be stronger with the
foam core than without it, and therefore that the foam core reinforces the
blade as required by claim 18. Appellants respond with attorney argument
and assertions unsupported by evidence, to which we give little weight. In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). We therefore find that
Appellants have not carried their burden. For these reasons, we sustain the
rejection of claims 18 and 20-22 as obvious over Abbenhouse.
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Claims 1, 3-6, 9, 10, 18, and 20-22 – Obviousness – Abbenhouse and
Sweetland
Appellants argue claims 1, 3-6, 9, 10, 18, and 20-22 as a group. Br. 9-
10. We select claim 1 as representative, with the remaining claims standing
or falling with claim 1.
Claim 1 is drawn to a paddle comprising a blade as recited in claim
18, a shaft having “at least one recessed portion,” and “a grip for
interlocking in the at least one recessed portion of the shaft.” Br. 14 (Claims
Appx.). The Examiner relies on Abbenhouse to teach the blade and shaft, as
above, and on Sweetland to teach the claimed grip. Ans. 4. The Examiner
determined that it would have been obvious to one of ordinary skill in the art
to combine Abbenhouse with Sweetland “to provide a sure grip for the
user.” Ans. 5.
Appellants argue that while Sweetland’s grip uses pins to resist
movement of the grip around the axis of the shaft, and ridges to resist
movement along the length of the shaft, Appellants’ grip uses “a unique
method of grip interlock that utilizes a single mating surface that
incorporates a lock for all axis of available movement.” Br. 10. But, as the
Examiner pointed out, claim 1 does not require any particular grip interlock
that utilizes a single mating surface, but only that the grip interlock in the “at
least one recessed portion of the shaft.” Therefore, Appellants argument is
not commensurate in scope with the claim, and is unpersuasive. We sustain
the rejection of claims 1, 3-6, 9, 10, 18, and 20-22 as obvious over
Abbenhouse and Sweetland.

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Claims 7 and 8 – Obviousness – Abbenhouse, Sweetland, and Bruce
Appellants argue claims 7 and 8 as a group. Br. 10-11. We select
claim 7 as representative, with claim 8 standing or falling with claim 7.
Claim 7 depends from claim 1 and additionally recites, “wherein the shaft is
bent such that (1) a centerline of a first portion of the shaft is offset from a
centerline of a second portion of the shaft by at least one of (i) more than 10
degrees and (ii) less than 17 degrees, and (2) a centerline of a third portion
of the shaft [that] bisect[s] the center portion of the first portion of the shaft.”
Br. 15 (Claims Appx.). The Examiner relied on Bruce for this additional
limitation. Ans. 5-6. The Examiner then determined that it would have been
obvious to a person of ordinary skill to combine Bruce with Appenhouse and
Sweetland “to provide a more ergonomic shape, as such bent portions are
well known for providing a stress reduction to the wrists of the user.” Id.
at 6. Appellants respond that “the present application discloses and claims
in claim 7 an ergonomic shaft and grip design that aligns the center axis of
the blade with the center section of the gripping section.” Br. 11. But we
perceive no such requirement in claim 7. First, the claim does not specify
which of the first, second or third portion of the shaft is the “gripping
section,” or which is the section to which the blade is attached. Second, the
claim does not actually limit the angle of offset between the centerlines of
the first and second portions, despite purporting to do so.2 Appellants’

2 This is because the claim encompasses an offset of either “(i) more than 10
degrees,” or “(ii) less than 17 degrees,” so while limitation (i) appears to
exclude an offset of 10 degrees or less, limitation (ii) permits such an offset.
Likewise, while limitation (ii) excludes an offset of 17 degrees or more,
limitation (i) permits such an offset. Essentially, claim 7 encompasses any
possible amount of offset, from 0 to 180 degrees.
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argument is therefore not commensurate in scope with the claim, and is
therefore unpersuasive. We sustain the rejection of claims 7 and 8 as
obvious over Abbenhouse, Sweetland, and Bruce.
DECISION
For the above reasons, the Examiner’s rejection of claims 1, 3-10, 18,
and 20-22 is affirmed.
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

JRG