Ex Parte Cucchiara et al

Patent Trial and Appeal Board

Mar 31, 2017

12337268 (P.T.A.B. Mar. 31, 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
www.uspto.gov
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 04/04/2017
MOORE & VAN AT .TEN PLLC
P.O. BOX 13706
3015 Carrington Mill Boulevard, Suite 400
Research Triangle Park, NC 27709
EXAMINER
CHAMBERS, MICHAEL S
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
04/04/2017 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 APPEAL
STATEMENT OF THE CASE
Christopher Charles Cucchiara and Timothy Harold Wallace
(Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision
to reject claims 1, 3—6, 8—21, and 23. Claims 2, 7, and 22 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2015-001169
Application 12/337,268
CLAIMED SUBJECT MATTER
The claimed subject matter relates to “an apparatus and method for
rotating a football goalpost about a substantially vertical axis.” Spec. 11;
Figs. 2—5. Claims 1, 10, 19, and 23 are independent. Claims 1 and 23 are
illustrative of the claimed subject matter and recite:
1. A goalpost rotation apparatus comprising:
a sleeve anchored to the ground;
a football goalpost comprising:
a post having first and second ends, the first end of the
post being rotatably received within the sleeve, the post
defining a longitudinal axis;
a crossbar having first and second ends, the crossbar
being mounted to the second end of the post; and
first and second uprights, the first upright mounted to the
first end of the crossbar and the second upright mounted to the
second end of the crossbar;
a first engaging device configured to be coupled to the sleeve,
the first engaging device comprises at least one positioning
member structured such that, when the first engaging device is
coupled to the sleeve, the at least one positioning member
extends outward from the sleeve generally perpendicular to the
sleeve;
a rotation collar comprising:
an opening structured to receive the first end of the post;
a second engaging device structured to releasably engage
the first engaging device, wherein the second engaging device
comprises at least one groove structured to receive the at least
one positioning member; and
wherein the rotation collar is structured to move along a
longitudinal axis of the post between a first position in which
the at least one positioning member is positioned within the at
least one groove and a second position in which the at least one
positioning member is positioned outside the at least one
groove, and wherein in the first position the post is fixed
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relative to the sleeve and in the second position the post is
rotatable relative to the sleeve.
23. A method of using a sports field system, comprising:
providing a sports field having first and second ends;
providing a football goalpost comprising:
a post having first and second ends, the first end of the
post adapted to be anchored to the sports field, the post defining
a longitudinal axis, the post having a uniform diameter
substantially along its length;
a crossbar having first and second ends, the crossbar
being mounted to the second end of the post; and
first and second uprights, the first upright being mounted
to the first end of the crossbar and the second upright being
mounted to the second end of the crossbar;
providing a securing mechanism, the securing mechanism being
configured to be disengaged from a secured position in which
the post is not rotatable to a rotating position in which the post
is rotatable;
anchoring the first end of the post to the sports field at the first
end of the sports field such that the crossbar and first and
second uprights are positioned between the first end of the post
and the second end of the sports field;
providing a soccer goal;
positioning the soccer goal between the first end of the post and
the second end of the sports field;
disengaging the securing mechanism from the secured position
to the rotating position; and
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 collectively with the crossbar and
first and second uprights such that the crossbar and uprights are
no longer positioned between the first end of the post and the
second end of the field.
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REJECTIONS1’2’3
I. Claims 1, 3—6, and 8—18 stand rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Chiappini (US 6,394,917 Bl; iss. May 28, 2002).4
II. Claims 19—21 and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Chiappini and Royal2013 (excerpts from YouTube videos
of Royal High School combined soccer and football field showing rotatable
football goalpost: https://www.youtube.com/watch?v=0PZzd6QGSic;
https://www.youtube.com/watch?v=ylnyflNr2RU; and
http://www.rhs.simi.kl2.ca.us/).
III. Claims 1, 3—6, 10, 11, 13, 19—21, and 23 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Brodeur (US 7,014,578 Bl; iss. Mar.
21, 2006), Wright (US 5,332,196; iss. July 26, 1994), and Royal2013.
IV. Claims 19-21 and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Manley (US 648,512; iss. May 1, 1900), Partee (US
6,202,369 Bl; iss. Mar. 20, 2001), and Royal2013.
V. Claim 23 stands rejected under 35 U.S.C. § 103(a) as unpatentable
1 The Examiner withdrew five (5) rejections in the Examiner’s Answer; see
Ans. 16. Accordingly, those rejections are no longer before us on appeal.
2 Appellants present additional evidence in the Declaration of Christopher C.
Cucchiara (hereinafter the “Cucchiara Declaration”) filed under 37 C.F.R. §
1.132 on March 28, 2011.
3 The Examiner presents additional evidence in a Declaration (hereinafter
the “Examiner’s Declaration”) filed under 37 C.F.R. § 1.132 on September
10, 2013.
4 Claims 19—21 and 23 are listed in the heading of the rejection but not
included in the body thereof. See Non-Final Act. 2-4. Accordingly, we
consider the inclusion of claims 19—21 and 23 in the heading of the rejection
to be a typographical error.
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over Royal2013 and Brodeur.
ANALYSIS
Anticipation by or obviousness over Chiappini
Claims 1, 3—6, and 8—18
The Examiner finds that Chiappini discloses the apparatus called for
in claims 1 and 10. According to the Examiner:
Chiappini discloses a football goalpost comprising: a post
having first and second ends, the first end of the post being
rotatably received within the sleeve; ... a first engaging device
configured to be coupled to the sleeve; and a rotation collar
comprising: an opening structured to receive the goalpost first
end of the post; and a second engaging device structured to
releasably engage the first engaging device. . . .
Non-Final Act. 2—3 (emphasis added).
The Examiner subsequently identifies the rotation collar of Chiappini
by reference 262 {id. at 3) and asserts that the rotation collar (262) is
permitted to move, relative to the goalpost, along a longitudinal axis of the
goalpost post but is substantially fixed with respect to the ability to rotate,
relative to the goalpost post, about the longitudinal axis of the goalpost post
{id.). The Examiner further asserts:
[T]he goal post can move in a vertical direction and can also be
rotated (fig 26-34, 2:14-17, 2:61-67, 12:38-48). In this case,
once the nuts (292) are removed, the rotation collar can be
elevated along a longitudinal axis of the post until the collar is
clear of tab (280). At that point the goal post can be rotated to a
90, 180 or 270 degree position relative to its initial location and
the collar reattached.
Id.
Upon review of the record, the Examiner has not met the burden of
proof required to show anticipation by or obviousness over Chiappini.
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“[T]he precise language of 35 U.S.C. § 102 that ‘(a) person shall be entitled
to a patent unless,’ concerning novelty and unobviousness, clearly places a
burden of proof on the Patent Office which requires it to produce the factual
basis for its rejection of an application under sections 102 and 103.” In re
Warner 379 F.2d 1011, 1016 (CCPA 1967). The Patent Trial and Appeal
Board is primarily a tribunal of review. See Ex Parte Frye, 94 USPQ2d
1072, 1075—1077 (BPAI 2010)(precedential). For that review to be
meaningful it must be based on some concrete evidence in the record to
support the Examiner’s factual findings and legal conclusions. In re Zurko,
258 F.3d 1379, 1386 (Fed. Cir. 2001). A rejection must be set forth “in a
sufficiently articulate and informative manner as to meet the notice
requirement of § 132,” such as by identifying where or how each limitation
of the rejected claims is met by the prior art references. In re Jung,
637 F. 3d 1356, 1363 (Fed. Cir. 2011); see also 37 C.F.R. § 1.104(c)(2)
(“When a reference is complex or shows or describes inventions other than
that claimed by the applicant, the particular part relied on must be designated
as nearly as practicable. The pertinence of each reference, if not apparent,
must be clearly explained and each rejected claim specified.”); Gechter v.
Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997)(the PTO must create a
record that includes “specific fact findings for each contested limitation and
satisfactory explanations for such findings.”). It is neither our place, nor
Appellants’ burden, to speculate as to the basis for rejecting claims. In re
Stepan, 660 F.3d 1341, 1345 (Fed. Cir. 201 l)(It is the PTO’s obligation to
provide timely notice to the Applicants of all matters of fact and law
asserted.).
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In this case, the Examiner generally cites to large portions of the
Chiappini reference (Figures 26—34) (Non-Final Act. 3) and fails to identify
where or how each limitation of the rejected claims is met by Chiappini. For
example, the Examiner finds, without pointing to any specific structure in
Chiappini, that Chiappini discloses “a first engaging device configured to be
coupled to the sleeve'1'’ and “a second engaging device structured to
releasably engage the first engaging device.'1'’ Id. at 3 (emphasis added).
Appellants bring this and other deficiencies regarding the reliance
upon Chiappini to the Examiner’s attention at pages 10-14 of the Appeal
Brief. However, the Examiner’s Answer fails to effectively address the
explicit claim language argued by Appellants. Rather, the Examiner’s
Answer provides, for the first time, explanations suggesting that female
threading for various bolts of the Chiappini device constitute “grooves” for
such bolts — without taking into account the actual structural elements in
which such threaded “grooves” reside. For example, in reference to a
truncated view of Figure 30 of Chiappini, the Examiner states: “A first
engaging device coupled to the sleeve (310) extending outward
perpendicular to the sleeve and a groove. In this case the groove is the
threaded groove that engaging device 310 engages.” Ans. 20. In reference
to claim 10, the Examiner states: “It is the examiner’s position that any of
the use of bolts and their respective threaded holes are positioning members
(310,284,292,274,) disclosed [in] Chiappini can be considered [a]
positioning member cooperating within their respective groove.” Id. at 21.
In reply, Appellants contend that: “the ‘at least one groove’ is
expressly defined as an element of the second engaging device of the
rotation collar in Claim 1 (and not the first engaging device) and is expressly
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defined as an element of the rotation collar in Claims 10 and 19 (and not the
sleeve).” Reply Br. 5.
From Appellants’ reply and from the language of claims 1 and 10, it is
clear that the rotation collar includes the at least one groove that receives
(claim 1) or cooperates with (claim 10) the at least one positioning member
which is carried by the sleeve. The Examiner has not demonstrated where
this arrangement of parts is taught or suggested by Chiappini.
Because the Examiner errs by not setting forth the Chiappini rejection
“in a sufficiently articulate and informative manner as to meet the notice
requirement of § 132” and fails to create a record that includes “specific fact
findings for each contested limitation and satisfactory explanations for such
findings,” the Examiner fails to establish a prima facie case that Chiappini
anticipates or renders obvious the subject invention as claimed.
Accordingly, we do not sustain the Examiner rejection of claims 1, 3—
6, and 8—18 as anticipated by or obvious over Chiappini.
Obviousness over Chiappini and Royal2013
Claims 19-21
The Examiner’s obviousness rejection of claims 19—21 is based on the
same unsupported findings discussed above. See Non-Final Act. 4—5. The
Examiner does not rely on Royal2013 to remedy the deficiencies of
Chiappini. For the same reasons set forth above, we do not sustain the
Examiner’s obviousness rejection of these claims.
Claim 23
At the outset, claim 23 is directed to a method of using a sports field
system. Appeal Br. 63, Claims App. Claim 23 does not recite the “first
engaging device” of claim 1 or the “rotation collar” of claims 1,10, and 19.
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Compare Appeal Br. 63, Claims App with, Appeal Br. 54, 58, 61, Claims
App. Claim 23 recites, in relevant part, the method steps of: (1) providing a
securing mechanism, the securing mechanism being configured to be
disengaged from a secured position in which the post is not rotatable to a
rotating position in which the post is rotatable; (2) anchoring the first end of
the post to the sports field; and (3) 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.5 Appeal Br. 63, Claims App.
Appellants argue that claim 23 explicitly recites that rotation of the
goal post occurs while the first end of the post is anchored to the sports field
and that this is not taught by Chiappini and Royal2013. Appeal Br. 22—26.
For reasons discussed below and noted below in footnote 5, we do not find
this argument persuasive.
In this case, the Examiner has identified a securing mechanism in the
Chiappini reference (including bolts 310, 284, 292, 274 and their respective
threaded holes) that is configured to be disengaged from a secured position
in which the post is not rotatable to a rotating position in which the post is
rotatable. See Ans. 20—22. Furthermore, the Examiner rightly notes that
5 With regard to claim 23, we interpret 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. See Spec. Tflf 5, 6, 13, 15, 43,
50, 51, 52, 55, 60, 61, 62. We adopt this interpretation as Appellants have
not adequately explained in the Specification or depicted in the drawings
how, while the first end of the post is purportedly anchored to the sports
field, at least a portion of the post may be rotated 180 degrees about its
longitudinal axis. We do not see where a goal post, which is “anchored” to
the sports field, may be simultaneously rotatable with respect to the sports
field.
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“Royal2013 discloses it is old in the art to rotate a gooseneck football goal
180 degrees.” Non-Final Act. 5. The Examiner properly reasons that “[t]he
method [of claim 23] would naturally be used by one rotating the goalpost of
Chiappini 180 degrees.” Id. Appellants do not provide persuasive evidence
or argument apprising us of Examiner error.
Appellants further contend that the Examiner has failed to properly
consider evidence of secondary considerations set forth in the Cucchiara
Declaration, including evidence of both industrial acclaim and long-felt, but
unsolved need. Reply Br. 8—9.
For “objective evidence of secondary considerations to be accorded
substantial weight, its proponent must establish a nexus between the
evidence and the merits of the claimed invention.” Wyers v. Master Lock
Co., 616 F.3d 1231, 1242, 1246 (Fed. Cir. 2010). In this regard, claim 23
requires, in addition to the limitation “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,” the limitation of “providing
a securing mechanism, the securing mechanism being configured to be
disengaged from a secured position in which the post is not rotatable to a
rotating position in which the post is rotatable.” Appeal Br. 63, Claims
App.
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”). See Reply Br. 8; see also Cucchiara Declaration at || 3—13.
Paragraph 13 is the only passage in the Cucchiara Declaration that
describes the structure of Appellants’ commercial embodiment of a
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rotatable football goalpost. However, that passage is silent as to any
securing mechanism, let alone the securing mechanism recited in claim 23.
Consequently, the Cucchiara Declaration fails to establish a nexus between
the evidence of industrial acclaim and the merits of the claimed invention.
At 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 and the other
independent claims of record.
As for evidence of long-felt, but unsolved need, paragraph 16 of the
Cucchiara Declaration avers that Appellant Cucchiara was unaware of “any
other commercially-available product that satisfied this long-standing
problem in the industry before our invention of a rotatable football
goalpost.” However, 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. See Royal 2013 disclosure; see also paragraphs 5—7 of the
Examiner’s Declaration. 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.
After reviewing all of the evidence before us, including the totality of
Appellants’ evidence, it is our conclusion that, on balance, the evidence of
obviousness discussed above outweighs the evidence of nonobviousness
submitted by Appellants and, accordingly, the subject matter of claim 23
would have been obvious to one of ordinary skill in the art within the
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meaning of 35 U.S.C. § 103(a) at the time Appellants’ invention was made.
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of claim 23 as unpatentable over Chiappini and Royal2013.
Obviousness over Brodeur, Wright, and Royal2013
Claims 1, 3—6, 10, 11, 13, and 19—21
The Examiner finds that: “Broder [sic] discloses the elements of claim
1, however[,] it fails to clearly disclose the means used to secure the device
to the playing area (fig 3).” Non-Final Act. 8. Similar to the Chiappini
reference discussed above, the Examiner fails to articulate with particularity
which elements of claim 1 (or, for that matter, claims 10 and 19) Brodeur
allegedly discloses.
As for Wright, the Examiner determines that “the Wright reference is
being used to show that the use of a collar (item 12) and its securement
devices (item 18) in order to permit two posts of different diameters to be
attached in a vertical manner is old in the art” (Non-Final Act. 8) and
“[w]hen the securing devices (item 18) are removed, the collar (item 12) is
capable of moving along a longitudinal axis to the post and when they are
reattached the collar is not capable of moving.” (id. at 8—9).
The Examiner says nothing in the Non-Final Action about how the
Royal2013 reference pertains to Brodeur, Wright, or independent claims 1,
10, and 19.
Appellants contend that nowhere does Brodeur, Wright, or Royal2013
teach or suggest the arrangement of positioning members and grooves set
forth in claims 1, 10, and 19. See Appeal Br. 32—33. In addition, Appellants
point out that Brodeur teaches an adjustable football goalpost assembly
including a riser 15 for adjusting the height of the goalpost gooseneck 50.
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Id. at 33 (citing Brodeur, col. 3,11. 64-67 — col. 4,11. 1-6). Appellants further
point out that Wright discloses a fence post end cap wherein bottom portion
12 has “at least one threaded bore, such as threaded bores 17 (FIG. 3) so that
bolts 18 threaded through the wall of fence post 5 can hold end cap 10 in
place.” Id. at 34 (citing Wright, col. 2,11. 43^46).
In the Answer, the Examiner appears to take an alternate approach. In
particular, the Examiner responds “[o]nce again if one looks at the structure
of Wright it is obvious that a bushing containing an outer post and an inner
post is not novel” (Ans. 26) and “broadly interpreting the securing and
positioning devices and respective grooves to mean the securing bolts and
their respective threaded hole groves [sic] [of Wright] the claim limitations
are met” (id. at 27). As for Brodeur, the Examiner states: “[w]hile Brodeur
was used in the original rejection to disclose a goalpost, on reflection the
reference duplicates the goalpost of Royal and is not needed.” Id.
The Examiner thus reduces the original rejection of the claims from a
combination including Brodeur, Wright, and Royal2013 to simply Wright
and Royal2013. In essence, Wright becomes the primary reference and
Royal2013 the secondary reference. However, as with Brodeur, the
Examiner’s rendition of Wright lacks the necessary detail to demonstrate
that Wright teaches or suggests the arrangement of positioning members and
grooves specifically set forth in claims 1,10, and 19.
Because the Examiner errs by not setting forth the Brodeur, Wright
and Royal2013 rejection “in a sufficiently articulate and informative manner
as to meet the notice requirement of § 132” and fails to create a record that
includes “specific fact findings for each contested limitation and satisfactory
explanations for such findings,” the Examiner fails to establish a prima facie
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case that Brodeur, Wright, and Royal2103 render obvious the subject
invention as claimed in claims 1,10, and 19.
Accordingly, we do not sustain the Examiner rejection of claims 1, 3—
6, 10, 11, 13, and 19—21 as obvious over Brodeur, Wright, and Royal2013.
Claim 23
Appellants argue that claim 23 explicitly recites that rotation of the
goal post occurs while the first end of the post is anchored to the sports field
and that this is not taught by Brodeur, Wright, or Royal2013. Appeal Br.
31—35. For reasons discussed below and noted above in footnote 5, we do
not find this argument persuasive.
Similar to the Chiappini reference discussed above, the Examiner has
identified a securing mechanism in the Wright reference (see Wright, Figure
3, collar (item 12) and its securement devices (item 18)) that is configured to
be disengaged from a secured position in which the post is not rotatable to a
rotating position in which the post is rotatable as called for in claim 23. See
Non-Final Act. 8—9; Ans. 26—27. Moreover, as the Examiner asserts, and we
agree: “it can[not] be argued that rotating a goalpost 180 degrees is novel
based on the [Royal2013] YouTube video and the facts as stated by the
school personnel at Royal.” Ans. 25; see also id. at 30; the Examiner’s
Declaration. As such, the Examiner’s reason for combining Wright and its
securing mechanism with Royal2013’s teaching of rotating a goal post 180
degrees is based on rational underpinnings. Appellants do not provide
persuasive evidence or argument apprising us of Examiner error.
Regarding Appellants’ “secondary considerations” contentions (see
Reply Br. 8—9), as discussed above, the Royal2013 disclosure and the
Examiner’s Declaration make clear that the problem of rotating a football
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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.
After reviewing all of the evidence before us, including the totality of
Appellants’ evidence, it is our conclusion that, on balance, the evidence of
obviousness discussed above outweighs the evidence of nonobviousness
submitted by Appellants and, accordingly, the subject matter of claim 23
would have been obvious to one of ordinary skill in the art within the
meaning of 35 U.S.C. § 103(a) at the time Appellants’ invention was made.
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of claim 23 as unpatentable over Brodeur, Wright, and Royal2013.
Obviousness over Manley, Partee, and Royal2013
Claims 19—21
In discussing the rejection of claims 19—21 and 23 based on Manley,
Partee, and Royal2013 (see Non-Final Act. 11), the Examiner refers to a
withdrawn rejection, namely, the rejection of claims 1 and 10-13 based on
Manley in view of Partee (see id. at 9).6 In the body of the withdrawn
rejection, the Examiner states: “Manley discloses the elements of claim 1,
however[,] it fails to clearly disclose the means used to secure the device to
the playing area (fig 1). Partee discloses a post anchoring device with first
and second engaging devices (fig 1-9, see items 50, 54, 56).” Id. To the
extent the withdrawn rejection may be relied upon by the Examiner to
support the rejection of claims 19—21, we determine that the Examiner fails
to articulate with particularity which elements of claim 1 (or, for that matter,
6 See Ans. 16 (“Rejection II: Manley in view of Partee”).
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claims 10 and 19) that Manley allegedly discloses. See id. at 9, 11. In
addition, the Examiner generally cites to large portions of the Partee
reference (Figures 1-9, items 50, 54, 56) (id. at 9) and fails to specifically
identify where or how certain “first and second engaging devices” allegedly
disclosed in Partee meet the grooves and positioning members limitations of
the rejected claims, including claim 19.
Appellants contend that nowhere does Manley, Partee, or Royal2013
teach or suggest the arrangement of positioning members and grooves set
forth in claim 19. See Appeal Br. 39-40. In addition, Appellants point out
that “Manley teaches a goal-post in which a [post] or upright is set in the
ground. (See Manley, 11. 68-70). Manley does not teach or suggest any of
the claim elements recited above in independent Claims 1, 10, 19, or 23.”
Id. at 40. As for Partee, Appellants assert that “Partee discloses a universal
anchor system comprising a compression element 52 threaded upon the
anchor member segments 64 to produce a radial, inwardly directed
deflection of the anchor member segments 64 intermediate the slots.” Id.
The Examiner does not respond to Appellants’ contentions in the
Examiner’s Answer. Because the Examiner errs by not setting forth the
Manley, Partee and Royal2013 rejection “in a sufficiently articulate and
informative manner as to meet the notice requirement of § 132” and fails to
create a record that includes “specific fact findings for each contested
limitation and satisfactory explanations for such findings,” the Examiner
fails to establish a prima facie case that Manley, Partee, and Royal2103
render obvious the subject invention as claimed in claim 19.
Accordingly, we do not sustain the Examiner rejection of claims 19—
21 as obvious over Manley, Partee, and Royal2013.
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Claim 23
Appellants argue that claim 23 explicitly recites that rotation of the
goal post occurs while the first end of the post is anchored to the sports field
and that this is not taught by Manley, Partee, or Royal2013. Appeal Br. 38—
41. For reasons discussed below and noted above in footnote 5, we do not
find this argument persuasive.
Similar to the Chiappini and Wright references discussed above,
although it does not satisfy the groove and positioning member limitations of
independent claim 19, the Examiner has identified a securing mechanism in
the Partee reference (see Partee, Figure. 3, items 50, 54, 56) that is
configured to be disengaged from a secured position in which the post is not
rotatable to a rotating position in which the post is rotatable as called for in
claim 23. See Non-Final Act. 9—10. Moreover, as the Examiner asserts:
“Royal2013 discloses it is known in the art to rotate the football goal 180
degrees from the playing area in order to prevent the football goal from
being a potential interference for other games played on the field.” Id. at 11.
As for the Examiner’s rationale for combining Manley and Partee
with Royal2013 in relation to claim 23, the Examiner states: “See claim 19
rejection” (id.) which, in turn, states: “The method claimed would naturally
be used by one using the device of claims 1 and 10” (id.). In other words,
the Examiner properly reasons that one of ordinary skill would have found it
obvious to use the combined Manley, Partee and Royal2013 device to
perform the method of claim 23. Appellants do not provide persuasive
evidence or argument apprising us of Examiner error.
Regarding Appellants’ “secondary considerations” contentions (see
Reply Br. 8—9), as discussed above, the Royal2013 disclosure and the
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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.
After reviewing all of the evidence before us, including the totality of
Appellants’ evidence, it is our conclusion that, on balance, the evidence of
obviousness discussed above outweighs the evidence of nonobviousness
submitted by Appellants and, accordingly, the subject matter of claim 23
would have been obvious to one of ordinary skill in the art within the
meaning of 35 U.S.C. § 103(a) at the time Appellants’ invention was made.
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of claim 23 as unpatentable over Manley, Partee, and Royal2013.
Obviousness over Royal2013 and Brodeur
Claim 23
Appellants argue that claim 23 explicitly recites that rotation of the
goal post occurs while the first end of the post is anchored to the sports field
and that this is not taught by Royal2013 or Brodeur. Appeal Br. 50-52. For
reasons discussed below and noted above in footnote 5, we do not find this
argument persuasive.
The Examiner finds that Royal2013 generally teaches the limitations
of claim 23, including rotating the football goal post 180 degrees, except for
clearly disclosing the use of a securing mechanism which is disengaged from
a secured position in order to rotate the device (see Non-Final Act. 14—15).
For such a securing mechanism the Examiner turns to Brodeur, stating:
“Broder [sic] discloses a series of bolts (securing mechanisms) which are
tightened to secure the upper post to the lower ground sleeve in order to
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secure the posts together (Fig 1-2, 2:59-3:5;4:7-32 ).” Id. at 15. The
Examiner concludes it would have been obvious to have rotated the football
goal posts shown in Royal with the securing device of Brodeur 180 degrees
for soccer purposes and to reverse the process so that the field can be used
for playing football. Id. The Examiner has articulated a reason based on
rational underpinnings for combining the securing mechanism Brodeur with
the rotatable goal post of Royal2103. Appellants do not provide persuasive
evidence or argument apprising us of Examiner error.
Regarding Appellants’ “secondary considerations” contentions (see
Reply Br. 8—9), as discussed above, 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.
After reviewing all of the evidence before us, including the totality of
Appellants’ evidence, it is our conclusion that, on balance, the evidence of
obviousness discussed above outweighs the evidence of nonobviousness
submitted by Appellants and, accordingly, the subject matter of claim 23
would have been obvious to one of ordinary skill in the art within the
meaning of 35 U.S.C. § 103(a) at the time Appellants’ invention was made.
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of claim 23 as unpatentable over Royal2013 and Brodeur.
DECISION
We REVERSE the decision of the Examiner to reject claims 1, 3—6,
and 8—21 and AFFIRM the decision of the Examiner to reject claim 23.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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