Ex Parte Allison et al

Patent Trial and Appeal Board

Jun 20, 2018

14611542 (P.T.A.B. Jun. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/611,542 02/02/2015
34082 7590 06/22/2018
ZARLEY LAW FIRM P.L.C.
CAPITAL SQUARE
400 LOCUST, SUITE 200
DES MOINES, IA 50309-2350
FIRST NAMED INVENTOR
Craig Allison
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.
P07845USO 2774
EXAMINER
DAVISON, LAURAL
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
06/22/2018 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):
kconrad@zarleylaw.com
crasmussen@zarleylaw.com
emarty@zarleylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG ALLISON and MICHAEL KOURI
Appeal2017-008867
Application 14/611,542
Technology Center 3700
Before: DANIEL S. SONG, CHARLES N. GREENHUT, and
LEE L. STEPINA, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant, True Pitch Inc., appeals under 35 U.S.C. § 134(a) from a
rejection of claims 1-8. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2017-008867
Application 14/611,542
CLAIMED SUBJECT MATTER
The claims are directed to a pitching mound. Claims 1 and 4,
reproduced below, are illustrative of the claimed subject matter:
1. A pitching mound, comprising:
a plurality of shell pieces with each shell piece having a
top member and is supported by a plurality of braces;
at least one of the shell pieces having a plurality of slots
positioned on an outer periphery of the top member; and
the at least one shell piece having a plurality of clips
positioned on an outer periphery of the top member such that the
clips align with and are received within the slots.
4. A pitching mound, comprising:
a plurality of shell pieces releasably connected together;
one of the shell pieces being a center shell having a top
member supported by a rear vertical support that extends from
the top member to a ground surface and a plurality of
longitudinal braces; and
the top member having a flat section that extends from a
rear end toward a front end and terminates at a tapered section
that extends downwardly from the flat-section to the front end.
(Emphasis added).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Goeders '718
Campbell
Goeders et al. '305
Dagger
Goeders '943
us 4,306,718
us 4,334,683
us 5,707,305
us 2008/0295437
US 8,047,934 B2
2
Dec. 22, 1981
June 15, 1982
Jan. 13, 1998
Dec. 4, 2008
Nov. 1, 2011
Appeal2017-008867
Application 14/611,542
Lee et al. us 2013/0196797
Aug. 1, 2013
REJECTIONS
Claims 3 and 6 are rejected under 35 U.S.C. §§ 112(a) and 112(b),
respectively.
Claim 1 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Goeders '934 in view of Campbell.
Claims 2 and 3 are rejected over Goeders '934 in view of Campbell,
and further in view of Dagger.
Claims 4, 6, and 8 are rejected over Lee in view of Goeders '305.
Claim 5 is rejected over Lee in view of Goeders '305, and further in
view of Campbell.
Claim 7 is rejected over Lee in view of Goeders '305, and further in
view of Goeders '718
OPINION
35 U.S.C. § 112
In the Final Office Action, the Examiner rejected claims 3 and 6 under
35 U.S.C. §§ 112(a) and 112(b), respectively. Final Act. 2-3. Appellant
subsequently filed an after-final amendment, in response to which the
Examiner issued an Advisory Action, wherein the proposed claim
amendments were not entered. Adv. Act. 2. On Appeal, Appellant presents
no arguments as to either of the rejections under 35 U.S.C. § 112.
Accordingly, these rejections are summarily affirmed. See In re Berger, 279
F.3d 975, 984, 985 (Fed. Cir. 2002) (holding that the Board did not err in
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Application 14/611,542
sustaining a rejection under 35 U.S.C. § 112, second paragraph, when the
Appellant failed to contest the rejection on appeal).
35 U.S.C. § 103(a)
As to claim 1, Appellant argues the rejection over Goeders '934 in
view of Campbell is improper because Campbell is non-analogous art to the
claimed invention. App. Br. 2--4. We disagree.
A reference is analogous art to the claimed invention if: (1) the
reference is from the same field of endeavor as the claimed invention ( even
if it addresses a different problem); or (2) the reference is reasonably
pertinent to the problem faced by the inventor ( even if it is not in the same
field of endeavor as the claimed invention). In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004). In order for a reference to be "reasonably pertinent"
to the problem, it must "logically [] have commended itself to an inventor's
attention in considering his problem." In re ICON Health and Fitness, Inc.,
496 F.3d 1374, 1379--80 (Fed. Cir. 2007) (quoting In re Clay, 966 F.2d
656,658 (Fed. Cir. 1992)). "Thus, the purposes of both the invention and the
prior art are important in determining whether the reference is reasonably
pertinent to the problem the invention attempts to solve." In re Clay, 966
F .2d at 659. "If a reference disclosure has the same purpose as the claimed
invention, the reference relates to the same problem, and that fact supports
use of that reference in an obviousness rejection." Id.
As to the "reasonably pertinent" requirement 1, a comparison of
Appellant's disclosure and that of Campbell shows substantial similarity
1 Appellant also presents arguments as to why Campbell fails the "same
field" requirement. App. Br. 2-3. However, because we find Campbell is
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Application 14/611,542
between the purpose(s) that each invention aims to serve. An objective of
Appellant's invention is "to provide a multiple piece pitching mound that is
easy to assemble." Spec. p.1, 11. 15-16 (emphasis added). Similarly, "[a]
primary object of [Campbell] is modular formation of an open-ended
miniature stadium structure". Col. 1, 11. 8-9 ( emphasis added). We agree
with the Examiner that Campbell is reasonably pertinent to the present
invention because both are "concerned with the same problem of assembling
a multi-piece game apparatus." Final Act. 11. Appellant argues "there is no
factual indication that Campbell is directed to assembling anything or for
any other purpose other than providing containment means for game pieces
that move during play." App. Br. 3 (citing Campbell, col. 1, 11. 9-12).
However, the Campbell stadium device being modular and "disengageably
secured" necessarily involves the assembly and disassembly of the device
itself by securing the pieces 20, along edges thereof, into a finished
structure. Campbell, col. 3, 11. 16-19; col. 4, 11. 25-26. Further, Appellant
does not inform us, and we are unaware of any reason, why the problems
encountered by Appellant were unique to pitching mounds in particular. See
In re ICON Health and Fitness, Inc., 496 F. 3d 1374, 1380 (Fed. Cir. 2007).
Thus we do not see any reason that the ultimate use of the device, meaning
the particular sport intended to be played with it, should serve to confine the
scope of relevant prior art in this inquiry under § 103. "[F]amiliar items may
have obvious uses beyond their primary purposes." KSR Int'! Co. v.
Teleflex, Inc., 550 U.S. 398, 420 (2007).
"reasonably pertinent" under Bigio, we need not address whether it also
meets the "same field" requirement.
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Application 14/611,542
Accordingly, because we find Campbell constitutes analogous art for
purposes of 35 U.S.C. § 103(a), and because Appellant does not challenge
the rejection on other grounds, we sustain the rejection of claim 1.
Appellant unpersuasively argues the rejections of claims 2, 3, and 5 on the
same basis. App. Br. 2, 4.
As to claim 4, Appellant first argues the rejection over Lee in view of
Goeders '305 is improper because neither Lee nor Goeders '305 discloses or
teaches "a rear vertical support extending to a ground surface" or "a plurality
of longitudinal braces" according to claim 4. App. Br. 5---6. We disagree.
In rejecting claim 4, the Examiner relies on Goeders'305 for teaching
both the rear vertical support and the plurality of longitudinal braces. Final
Act. 7. Specifically, the Examiner cites the "rearmost bracing rib 92 with
reinforcing bar 96" in Goeders '305 as meeting the "rear vertical support"
requirement, and cites the "bracing ribs 94 with reinforcing bars 96" as
meeting the "plurality of longitudinal braces" requirement. Final Act. 7
(emphasis added). Appellant argues that in Goeders '305, "the reinforcing
bars 96 are the reinforcing mechanisms-not the ribs[,]" (App. Br. 5), and
that "the 'ribs' [92, 94] that the Examiner claims to provide support are, at
the least, merely recesses, if not apertures, that receive wooden bars [96]."
Reply Br. 4. However, the Examiner finds that the "bracing ribs" 92, 94 are
not "apertures" as Appellant contends. Ans. 6. Rather, they are, in
combination with reinforcing bars 96, the feature that "performs the function
of bracing (i.e., supporting)" the shell pieces. Id.
We agree with the Examiner, and find the Goeders '305 bracing ribs
92, 94, each in combination with the reinforcing bars 96 therein, meet the
requirements of a "rear vertical support" and "longitudinal braces,"
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Application 14/611,542
respectively, because 92 and 94 are "bracing ribs" combined with a
"reinforcing bar" 96 that runs around the underside of the shell piece(s) 12,
14 ''for additional strength and structural rigidity." Goeders '305, col. 4, 11.
4--12 (emphasis added). We also find that features 92 and 96, together,
"extend[] from the top member to a ground surface" because Fig. 4 of
Goeders '305 shows a cross-sectional view in which the middle portion of
92/96 is attached at the top to the underside of 14, and the outer portion of
92 (i.e., the portion of 92 extending out of the page in Fig. 4) extends to the
ground. To the extent Fig. 4 is ambiguous as to whether 92 extends "to a
ground surface," we further note that the similarity in the cross-sectional
depiction between the edge 78 (Figure 6), which is shown extending to the
ground at its outer edges in Figure 2, and rib 92 (Figure 4) is additional
evidence that rib 92 extends to the ground.
Further as to claim 4, Appellant also argues the Examiner's rationale
for combining Lee and Goeders '305 is not based on a rational underpinning.
App. Br. 5. We disagree.
Lee and Goeders '305 are very similar devices: both are mobile
pitching mounds, and both are made up of a set of hollow shell pieces. Lee
,r,r 13-14; Goeders '305, Abstract. Furthermore, Lee explicitly suggests
reinforcement of its shell members. Lee ,r 59. Given the structural
similarities between, and the identical intended uses of, Lee and Goeders
'305, the benefits achieved by the bracing ribs and reinforcing bars in
Goeders '305 would be easily incorporated with, and highly desirable for,
the Lee device. Therefore, we agree with the Examiner's conclusion that it
would have been obvious to modify Lee according to Goeders '305 "by
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adding a rear vertical support and a plurality of longitudinal braces as taught
by Goeders '305 to reinforce the central shell .... " Final Act. 7.
Accordingly, we sustain the rejection of claim 4. Appellant did not
present any separate arguments for claims 6-8.
DECISION
The Examiner's rejections of claims 1-8 are AFFIRMED.
AFFIRMED
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