Ex Parte Zein

Patent Trial and Appeal Board

Jul 30, 2018

14129346 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/129,346 02/25/2014
16461 7590
Benjamin E. Maskell, Esq.
888 N. Quincy Street
Suite 701
Arlington, VA 22203
07/30/2018
FIRST NAMED INVENTOR
Rami Zein
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BM-U-003 4944
EXAMINER
KLAYMAN, AMIR ARIE
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
07/30/2018 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 RAMI ZEIN 1
Appeal2017-010822
Application 14/129,346
Technology Center 3700
Before: STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Rami Zein ("Appellant") appeals under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting claims 41-55. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellant's Appeal Brief indicates that the inventor/ applicant Rami Zein is
the real party in interest. Appeal Br. 2.
Appeal2017-010822
Application 14/129,346
CLAIMED SUBJECT MATTER
The claims are directed to articles for playing the game of catch.
Spec. 1: 8. Claim 41, reproduced below, is illustrative of the claimed subject
matter:
41. A game system comprising:
a ball;
a receiving mechanism;
a fixed-size aperture of the receiving mechanism;
a resilient foam sheath partially surrounding the receiving
mechanism;
a first portion of the resilient foam sheath configured to
frictionally retain the ball;
a second portion of the resilient foam sheath configured to
frictionally retain the ball;
a handle formed in an edge of the aperture;
a first end of the handle connected to the rece1vmg
mechanism; and
a second end of the handle opposite the first end and
connected to the receiving mechanism.
REFERENCES RELIED ON BY THE EXAMINER
Von Arnhem
Burt
Genereux
US 2,961,239 Nov. 22, 1960
US 4,443,013 Apr. 17, 1984
US 2007/0191154 Al Aug. 16, 2007
THE REJECTIONS 2
(I) Claims 41--49 and 51-55 are rejected under 35 U.S.C. § I03(a)
as unpatentable over Genereux and Burt.
2 The Examiner objects to the claims as not complying with 37 C.F.R.
§ 1.12I(c). See Final Act. 2 (mailed May 9, 2016). An objection is a
petitionable matter and not an appealable matter and is not within the
jurisdiction of the Board. See In re Mindick, 371 F.2d 892, 894 (CCPA
1967).
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Application 14/129,346
(II) Claim 50 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Genereux, Burt, and Von Arnhem.
OPINION
Re} ection (I)
Claims 41-47, 54, and 55
The Examiner finds that Genereux discloses many of the limitations
of claim 41 including a racquet having a resilient foam sheath configured to
frictionally retain a ball, concluding that "opposite sides of the resilient foam
contact[] ball 4." Final Act. 3.
Appellant argues that Genereux relates to a racquet for hitting or
striking a ball and requires a ball sufficiently large to prevent passage
through the opening in the racquet. Appeal Br. 5 ( citing Genereux ,r 41 ).
Appellant asserts that although other embodiments of Genereux allow a ball
to pass through the opening in the racquet, "Genereux does not disclose,
teach, or suggest that the racquet should be 'configured to frictionally retain
the ball."' Id.
The Examiner responds that the opening of Genereux's racquet is
"fully capable" of frictionally retaining a ball because the material of
Genereux's foam sheath will create friction "that will retain a ball, with a
suitable diameter to the opening." Ans. 2. The Examiner concludes that
because the foam sheath in Genereux's opening "is the same structurally as
appellant's opening," including the same frictional properties, it "is fully
capable to retain a ball." Ans. 4.
Appellant replies that Genereux discloses balls that are too large to
pass through the opening and balls that are small enough to pass through the
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Application 14/129,346
opening, but does not disclose a ball having a "suitable diameter" to be
retained in the opening. Reply Br. 2. Appellant argues that Genereux fails
to disclose such a ball and fails to disclose the "resilient foam sheath
configured to frictionally retain the ball." Id.
Appellant has the better position on this issue. The Federal circuit has
stated that the phrase "configured to" means more than "'capable of or
'suitable for,"' and is used to mean that "the claimed [device] is designed or
constructed to be used" to perform the recited function. In re Giannelli, 739
F.3d 1375, 1380 (Fed. Cir. 2014). Here, Appellant has claimed a receiving
mechanism, having a sheath, along with a ball that matches the size of the
aperture in the receiving mechanism so that the sheath frictionally retains the
ball. Specifically, the recited ball is frictionally retained "by pressure
applied by the receiving mechanism on at least two opposing points on the
surface of the ball." Spec. 2:8-9. Although we appreciate the Examiner's
position that a ball having a suitable diameter could be retained in the
opening in the racquet of Genereux, the Examiner has not established that
Genereux discloses a receiving mechanism and corresponding ball that
satisfy the requirements of claim 41. In this regard, we note that claim 41
positively recites a ball that the first portion of the resilient foam sheath is
configured to frictionally retain.
The Examiner does not rely on the disclosure of Burt in any manner
that remedies the deficiencies in Genereux. Accordingly, we reverse the
Examiner's rejection of claim 41, and claims 42--4 7 depending therefrom, as
unpatentable over Genereux and Burt. Independent claim 54 includes
substantially similar limitations, and we reverse the Examiner's rejection of
claim 54, and claim 55 depending therefrom for the same reasons.
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Application 14/129,346
Claims 48, 49, and 51-53
Frictionally Retain
Independent claim 48 differs from claims 41 and 54 in that the ball is
not positively recited. Although claim 48 recites, in part, "wherein the
through-ho le [ of the frame] is configured to retain a ball therein through a
friction force between the resilient foam sheath and the ball," no specific ball
is required. Hence, the Examiner need only establish that the foam sheath of
Genereux has a configuration that would retain a ball by friction.
Appellant's Specification discloses that the receiving mechanism (frame)
that is covered by the foam sheath "can take on various shapes such as a
circle, a triangle, a square, a trapezoid, a pentagon, a hexagon, an octagon
and a polygon," and should "have a proper coefficient of friction that would
allow a ball such as a beach ball to be retained in a hoop that is made of the
sheath material." Spec. 2: 14--21. Genereux discloses a foam sheath
(Genereux ,r 44) covering a racquet 2 that is "more tear-drop shaped than
circular" (Genereux ,r 50) and that has a fixed-size aperture (Genereux Fig.
5). See Final Act. 3. We agree with the Examiner that "the opening of
Genereux including a foam sheath is the same structurally as appellant's
opening, having properties of friction, that is fully capable to retain a ball."
Ans. 4. That is, the tear-drop shaped opening of Genereux is a shape that
would accommodate a ball and the foam of Genereux has the same frictional
properties as the recited foam and would retain the ball by a friction force.
Although we appreciate Appellant's contention that "Genereux does not
teach or disclose a ball having a 'suitable diameter' to be frictionally
retained in the racquet" (Reply Br. 2), because no specific ball is required by
the claim, this argument is unavailing. The Examiner's position that the
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Application 14/129,346
material of Genereux's foam sheath will create friction to "retain a ball, with
a suitable diameter," is supported by a preponderance of the evidence. Ans.
2.
Render Inoperable
Appellant argues that modifying the ring of Genereux to include the
edge-grips of Burt would prevent the Genereux ring from hitting "a ball
(much less catch a ball) because a user's hands would be wrapped around
edge-grips formed in the hitting surface." Appeal Br. 7-8. According to
Appellant, the Examiner does not refute the contention that a user's hands
would interfere with the function of Genereux' s device. Reply Br. 3.
Appellant's argument is not persuasive because the handle of
Genereux is not in the hitting surface. In Genereux, only one end of the
handle is connected to racquet 2 near element 36. See Genereux Fig. 5. The
Examiner is modifying this handle to have a shape similar to that of handle
11 of Burt so that both ends are connected to the racquet. See Final Act. 4;
see also Ans. 5-6. Appellant does not assert that the Examiner's proposed
handle modification would have been beyond the capabilities of one of
ordinary skill in the art. Further, Appellant has not provided any factual
evidence or persuasive technical reasoning to contradict the Examiner's
position regarding the predictability of the modification (see Ans. 6.), and
thus does not apprise us of error.
Combination Does Not Result in Claimed Invention
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Appellant also argues that using Burt's handles would result in a "new
concentric ring" that does not meet the "formed in an edge" limitation.
Appeal Br. 8-9.
Appellant's argument is not persuasive, because, as the Examiner
correctly notes, the proposed modification is not a bodily incorporation (see
Ans. 4 ), and is based on a modification of the handle of Genereux and does
not entail inserting the device of Genereux inside the loop of Burt (see Ans.
5.). Because Appellant's argument does not address the modification
proposed by the Examiner, Appellant does not apprise us of Examiner error
based on the combination of Genereux and Burt.
Commercial Success
Appellant also argues that the Examiner failed to properly consider
Appellant's evidence of commercial success. See Reply Br. 4. According to
Appellant, "If the combination of Genereux and Burt was obvious as the
Examiner states, others would undoubtedly have made the combination
proffered by Examiner well before Applicant's Smakaball to cash-in on the
substantial revenues and commercial success that is currently enjoyed by the
Applicant." Appeal Br. 10-11 ( citing the declaration of Rami Zein dated
Nov. 9, 2016 (Zein Declaration)).
We disagree. The Examiner states that Appellant's evidence of
commercial success, by itself, is not a reason to negate the proposed
combination of Genereux and Burt.
Appellant's evidence of sales ($1,280,000.00 of Smakaball; see Zein
Declaration ,r 8) does not indicate whether the amount sold was a substantial
quantity in the relevant market. In re Huang, 100 F.3d 135, 140 (Fed. Cir.
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Application 14/129,346
1996) ( without evidence that the sales are a substantial quantity in the
relevant market, "bare sales numbers" are a "weak showing" of commercial
success, if any); In re Baxter Travenol Labs., 952 F.2d 388,392 (Fed. Cir.
1991) ("[I]nformation solely on numbers of units sold is insufficient to
establish commercial success."); Kansas Jack, Inc. v. Kuhn, 719 F.2d 1144,
1150-51 (Fed. Cir. 1983) ("The evidence of commercial success consisted
solely of the number of units sold. There was no evidence of market share,
of growth in market share, of replacing earlier units sold by others or of
dollar amounts, and no evidence of a nexus between sales and the merits of
the invention. Under such circumstances, consideration of the totality of the
evidence, including that relating to commercial success, does not require a
holding that the invention would have been nonobvious at the time it was
made to one skilled in the art.").
We have considered all of Appellant's arguments regarding the
rejection of claim 48, but are not apprised of Examiner error. Accordingly,
we affirm the Examiner's rejection of claim 48 as unpatentable over
Genereux and Burt. Claims 49 and 51-53 depend from claim 48, and
Appellant does not make additional arguments distinguishing these claims
over the combination of Genereux and Burt. Appeal Br. 11. Accordingly,
we affirm the rejection of claims 49 and 51-53 as unpatentable over
Genereux and Burt.
Rejection II
In support of patentability of claim 50, Appellant relies on the
argument discussed above regarding claim 48. Appeal Br. 11. Accordingly,
we sustain the rejection of claim 50 as unpatentable over Genereux, Burt,
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and Von Arnhem because Appellant's arguments against the obviousness
rejection of claim 48 does not apprise us of error in the Examiner's
unpatentability determination of claim 50.
DECISION
The Examiner's decision to reject claims 41--49 and 51-55 under 35
U.S.C. § 103(a) as unpatentable over Genereux and Burt is reversed as to
claims 41--47, 54, and 55, and is affirmed as to claims 48, 49, and 51-53.
The Examiner's decision to reject claim 50 under 35 U.S.C. § 103(a)
as unpatentable over Genereux, Burt, and Von Arnhem 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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