Ex Parte Cucchiara et al

Patent Trial and Appeal Board

Sep 29, 2017

12337268 (P.T.A.B. Sep. 29, 2017)

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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/337,268 12/17/2008 Christopher Charles Cucchiara 025438-330012 3373
24239 7590 10/03/2017
MOORE & VAN AT .TEN PLLC
P.O. BOX 13706
3015 Carrington Mill Boulevard, Suite 400
Research Triangle Park, NC 27709
EXAMINER
VANDERVEEN, JEFFREY S
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
10/03/2017 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):
iplaw @ mvalaw. com
u sptomail @ m valaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER CHARLES CUCCHIARA
and TIMOTHY HAROLD WALLACE
Appeal 2015-001169
Application 12/337,268
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON REHEARING
STATEMENT OF THE CASE
Christopher Charles Cucchiara and Timothy Harold Wallace
(Appellants) filed a request for rehearing under 37 C.F.R. § 41.52
(hereinafter “Request”) of our decision dated April 4, 2017 (hereinafter
“Decision”). In that Decision, we affirmed the Examiner’s rejections of
claim 23 under 35 U.S.C. § 103(a) and reversed the Examiner’s rejections of
claims 1, 3—6, and 8—21 under 35 U.S.C. § 103(a).
Appeal 2015-001169
Application 12/337,268
ANALYSIS
The request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the
Board. Arguments not raised, and Evidence not previously relied
upon, pursuant to §§ 41.37, 41.41, or 41.47 are not permitted in
the request for rehearing except as permitted by paragraphs (a)(2)
and (a)(4) of this section.
37 C.F.R. § 41.52(a)(1). Rehearing is not an opportunity for Appellant to
make new arguments which could have been made in the briefs or to
reiterate arguments made in the briefs which have been specifically
addressed by the Board.
Appellants contend that the Board “misapprehended points of fact and
law with respect to [affirming the Examiner’s rejection of] claim 23” under
35 U.S.C. § 103(a) as unpatentable over (1) Chiappini and Royal2013; (2)
Brodeur, Wright, and Royal2013; (3) Manley, Partee, and Royal2013; and
(4) Royal2013 and Brodeur. See Request 2, 3, 7.
First, Appellants contend that the “[t]he Board erred in reading in a
‘fixed sleeve’ claim limitation into claim 23.” See Request 4 (emphasis
omitted); see also id. at 3, 5. According to Appellants,
Claim 23 recites, in relevant part, the method step of:
while the first end of the post is anchored to the sports field,
rotating at least a portion of the post 180 degrees about the
longitudinal axis of the post. Despite the unambiguous ordinary
meaning of the language of claim 23, . . .the Board [has]
interpreted this claim element to mean “the sleeve —although
not recited as a limitation of claim 23—as being anchored to the
sports field, with the first end of the post being rotatable in the
sleeve.”
Request 4 (citing Decision 9:n. 5).
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Appellants contend that “[t]he Board stated in the Decision that it read
in the fixed sleeve claim limitation into claim 23” and that Appellants
“expressly stated that claim 23 does not recite a fixed sleeve but a first end
of a post anchored to a sports field.” Request 4 (citing Reply Br. 6), 5.
We acknowledge that “it was improper [of the Board] to read in such
a claim limitation into claim 23.” Request 5—6. As such, we retract
footnote 5 of the Decision, but remain in agreement with the Examiner’s
position regarding claim 23.
As stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362,
1369 (Fed. Cir. 1998), “the name of the game is the claim.” It is well
established that limitations not appearing in the claim cannot be relied upon
for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Here,
the limitation in question is the step of “anchoring the first end of the post
to the sports field.” Appeal Br. 63, Claims App. We understand this
limitation to mean that the first end of the post is by some means anchored
to the sports field. This limitation is not understood to mean that the first
end of the post is anchored directly to the sports field. See, e.g., Ullstrand
v. Coons, 147 F.2d 698, 700 (CCPA 1945) (The accepted definition of the
term “connected” is restricted to neither a direct nor an indirect connection,
and it is therefore applicable to an indirect connection.)
Appellants’ Specification discloses that “[i]n the illustrated
embodiment [of Figure la], the football goalpost 10 has a gooseneck
configuration that allows the goal post 20 to be anchored into the ground
some distance behind the end line 3 of field 4.” Spec. 141 (emphasis
added), Fig. la. Appellants’ Specification further discloses that “where the
present application describes a post or sleeve as being anchored in the
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ground, the post or sleeve may be anchored in the dirt of a field, concrete,
a floor in a building, or other material or surface suitable for anchoring the
post or sleeve.” Spec. 140 (emphasis added).
Although the claims are interpreted in light of the Specification,
limitations from the Specification are not read into the claims. In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Appellants elected to define
the claimed subject matter using language that omits limitations found in
the Specification and we will not now import those limitations into the
claims. The Federal Circuit has “repeatedly held that the fact that the
specification describes only a single embodiment, standing alone, is
insufficient to limit otherwise broad claim language.” Howmedica
Osteonics Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1345 (Fed. Cir.
2008) (emphasis added).
The recitation of “anchoring the first end of the post to the sports
field” is not the same as “anchoring the first end of the post directly to the
sports field” or “anchoring the first end of the post into the ground.” The
broadest reasonable interpretation of claim 23 certainly includes the
Examiner’s proposed scenario of:
Providing a securing [anchoring] mechanism (Bolts) for
engaging and disengaging the goalpost gooseneck football
goalpost... an ordinary artisan would naturally secure the inner
pipe [first end of the goalpost] to the outer sleeve [which is
anchored to the sports field] with any well known securing
device such as bolts and threaded holes as shown by either
[Wright, Broder] or Chiappini or [Appellants’] cited Sportsfield
art in order to prevent the goal[post] from shifting during play or
inclement weather[].
Ans. 29.
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Application 12/337,268
Claim 23 is open-ended and does not preclude the first end of the post
from being anchored/secured to the sports field via a sleeve. See id.', see
also Appeal Br. 63, Claims App. Based on the foregoing reasons,
Appellants have not persuaded us of error in the Examiner’s interpretation or
the Examiner’s rejections of claim 23 over the combined teachings of (1)
Chiappini and Royal2013; (2) Brodeur, Wright, and Royal2013; (3) Manley,
Partee, and Royal2013; and (4) Royal2013 and Brodeur.
Second, Appellants contend that “[t]he Board erred in analyzing the
requirement to show a reasonable expectation of success for the rejections
based upon obviousness.” Request 6 (emphasis omitted); see also id. at 3.
As an initial matter, Appellants present arguments to the Examiner’s
rejection of Chiapinni and Royal2013 only. Request 6. As such, we do not
address the Examiner’s rejections of (1) Brodeur, Wright, and Royal2013;
(2) Manley, Partee, and Royal2013; or (3) Royal2013 and Brodeur for this
rehearing ground. Appellants contend that:
Proposing to lift a metal football goalpost from its anchor sleeve,
which goalpost can weigh 500 lbs or more, not even taking into
account the large moment forces created by the weight and length
of the crossbar and uprights, would under any circumstance a
formidable engineering undertaking. Yet, the Decision rejected
claim 23 as obvious over Chiapinni in view of Royal2013
without (i) providing any reference where Chiapinni teaches or
suggests such an undertaking or (ii) providing any other
reasonable technical explanation as to how the subject
hypothetical would be accomplished by one of ordinary skill in
the art with any reasonable expectation of success. Indeed,
contrary to the assertion by the Examiner, Chiapinni actually
teaches that uprights 20, crossbar 18 and goose neck 12 are all
separate components that can be installed sequentially to avoid
this very scenario.
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Application 12/337,268
Request 6.
Appellants’ arguments raised in the Request, similar to the arguments
presented in the Appeal Brief (see Appeal Br. 21—22), fail to provide
persuasive evidence or argument apprising us of Examiner error in the
combined teachings of Chiapinni and Royal2013. As noted in the Decision,
(1) the Examiner finds that “Royal2013 discloses it is old in the art to rotate
a gooseneck football goal 180 degrees” and (2) “the Examiner properly
reasons that ‘[t]he method [of claim 23] would naturally be used by one
rotating the goalpost of Chiappini 180 degrees.’” Decision 10 (citing Non-
Final Act. 5). We are not apprised of any technical reason why one skilled
in the art would not have at least a reasonable expectation of success in
doing so. See In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988) (noting
that all that is required is a reasonable expectation of success, not absolute
predictability of success).
Moreover, Appellants do not direct us to where, in the combined
teachings of Chiapinni and Royal2013, the Examiner’s is “proposing to lift a
metal football goalpost from its anchor sleeve,” as asserted by Appellants.
Request 6; see also Appeal Br. 21—22. Nor do Appellants direct us to any
discussion in Chiapinni that “teaches that uprights 20, crossbar 18 and goose
neck 12 are all separate components that can be installed sequentially to
avoid this very scenario.” Request 6; see also Appeal Br. 21—22. Based on
our understanding, the Examiner is merely proposing to “rotat[e] the
goalpost of Chiappini 180 degrees” in view of the teachings of Royal2013.
Decision 10 (citing Non-Final Act. 5). For these reasons, Appellants’
arguments are not persuasive.
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Third, Appellants contend that “[t]he Board erred in determining that
Royal2013 refutes the secondary consideration of long-felt, but unsolved
need.” Request 6 (emphasis omitted); see also id. at 3. In particular,
Appellants contend that:
[A]s stated in the Examiner[’s] Declaration, the Examiner’s
investigation revealed that in order to rotate the goal post of
Roya 12013, a chain was thrown up and over a comer end of the
goal post, attached to a tractor and the tractor pulled the chain
until the goal post rotated away from the playing area. This
rudimentary process of forcing a goal post to rotate using chains
and a tractor does not meet the long-felt, but unsolved need for a
rotating goalpost. Royal2013 demonstrates a “solution” that
would only be available to someone with chains and a tractor.
Furthermore, the cmde and rudimentary fix shown by Royal2013
is unsafe, inconvenient, and more importantly, constitutes a
single, isolated example of a so-called solution to the long-felt,
but unsolved need for a rotating goalpost. Indeed, the Board has
overlooked the extensive investigation required by the Examiner
in procuring this evidence. Royal2013 is simply not sufficient to
refute Appellants’] evidence of both industrial acclaim and
long-felt, but unsolved need as evidenced by Appellants’]
receipt of a 2011 Innovation Award from the Sports Turf
Managers Association for Appellants’] commercial
embodiment of a rotatable football goalpost.
Request 6—7.
As an initial matter, Appellants’ arguments regarding “long-felt need”
differ from those presented in the Reply Brief. See Reply Br. 8—9; Decision
10-11, 14—15, and 17—19. As noted above, arguments not raised in the
briefs are not permitted in the request for rehearing. 37 C.F.R. § 41.52(a)(1).
To the extent Appellants assert that the “long-felt need” arguments are
not new, they nonetheless do not inform us of error in the Board’s Decision.
First, Appellants’ contentions that Royal2013 “demonstrates a ‘solution’ that
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would only be available to someone with chains and a tractor” and that “the
crude and rudimentary fix shown by Royal2013 is unsafe [and]
inconvenient” amount to unsupported attorney argument, and thus are
entitled to little, if any, weight. See In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997). Second, Appellants admit that Royal 2013 “constitutes [an]
example of [a] solution to the long-felt, but unsolved need for a rotating
goalpost.” Request 7 (emphasis added). Third, as noted in the Decision,
“several still shots from a YouTube video entitled ‘Royal High School
Soccer 2004,’ which makes up a part of the Royal2013 disclosure, clearly
show a football goal post rotated away from a soccer field.” Decision 11
(citing Royal2013 disclosure and paragraphs 5—7 of the Examiner’s
Declaration). Based on this information, the Board concluded that the
Royal2013 disclosure and the Examiner’s Declaration “make clear that the
problem of rotating a football goalpost away from the playing field was
solved at least as early as 2004, thereby refuting Appellants’ contention that
there existed a long-felt, but unsolved need for such a goalpost at the time
Appellants’ invention.” Decision 11; see also id. at 14—15 and 17—19.
Appellants have not provided persuasive evidence or argument apprising us
of error in the Board’s Decision.
Lastly, regarding Appellants’ arguments to “industrial acclaim,” the
Board noted that “Appellants’ evidence of industrial acclaim is based on
Appellants’ commercial embodiment of a rotatable football goalpost having
received a 2011 Innovation Award from the Sports Turf Managers
Association (‘STMA’).” Decision 10 (citing Reply Br. 8 and the Cucchiara
Declaration at || 3—13). The Board further noted that “[paragraph 13 is the
only passage in the Cucchiara Declaration that describes the structure of
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Appellants’ commercial embodiment of a rotatable football goalpost.
However, that passage is silent as to any securing mechanism, let alone the
securing mechanism recited in claim 23.” Decision 11. Consequently, the
Board concluded that “the Cucchiara Declaration fails to establish a nexus
between the evidence of industrial acclaim and the merits of the claimed
invention.” Decision 11. The Board also noted that “[a]t best, paragraph 13
of the Cucchiara Declaration speaks to the merits of a rotatable football
goalpost. However, it lacks discussion of a securing mechanism which is an
essential component of claim 23.” Decision 11. Appellants have not
provided persuasive evidence or argument apprising us of error in the
Board’s Decision.
Appellants’ Request has been granted to the extent that we have
reconsidered our Decision in light of the arguments in Appellants’ Request,
but is denied with respect to modifying the Decision.
DECISION
The Examiner’s rejections of claim 23 under 35 U.S.C. § 103(a)
remain 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).
DENIED
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