Ex Parte DAVIS

Patent Trials and Appeals Board

Jun 28, 2019

13486100 - (D) (P.T.A.B. Jun. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/486,100 06/01/2012
137888 7590 07/02/2019
Hackler Daghighian Martino & Novak
10250 Constellation Blvd.
Suite 2500
Los Angeles, CA 90067
FIRST NAMED INVENTOR
John Jay DA VIS JR.
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.
KORAlOOlUA 8854
EXAMINER
THEIS, MATTHEW T
ART UNIT PAPER NUMBER
3734
NOTIFICATION DATE DELIVERY MODE
07/02/2019 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):
paul@hdmnlaw.com
pia@hdmnlaw.com
USPTO@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN JAY DA VIS, JR.
Appeal2017-005932
Application 13/486,100
Technology Center 3700
Before STEFAN STAICOVICI, SUSAN L. C. MITCHELL, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John Jay Davis, Jr. ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1, 3-15, 24--27, 29, 30, and
33-37. Appeal Br. 5. Claim 32 has been withdrawn. Id. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2017-005932
Application 13/486,100
CLAIMED SUBJECT MATTER
Appellant's disclosed invention relates to a carrier for a recreational
board, such as a surfboard. See, e.g., Spec. ,r,r 2-5. Claims 1, 8, and 33 are
independent. Claim 1, reproduced below with emphasis added to claim
language on which Appellant's arguments are focused, is illustrative of the
subject matter on appeal.
1. A recreational board carrier, comprising:
a central portion with a bottom and a top;
at least one longitudinal strap coupled in fixed relation to
the central portion with a first distal end extending up from the
top of the central portion and a second distal end extending
down from the bottom of the central portion;
a coupling member disposed at the first distal end of the
longitudinal strap, the coupling member constructed to couple
proximate to a first end of a recreational board above the top of
the central portion;
a second coupling member disposed at the second distal
end of the longitudinal strap and constructed to couple to an end
of a recreational board;
wherein the second distal end of the at least one
longitudinal strap is constructed to extend down from the
bottom of the central portion along a longitudinal axis of a first
side of the recreation[ al] board and wrap under a second end
of the recreational board and extend back up the longitudinal
axis on an opposite side of the recreation[ al] board past the top
of the central portion so that the second coupling member can
to couple to the recreational board proximate to the first end;
and
at least one carrying strap coupled to the central portion.
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Appeal2017-005932
Application 13/486,100
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Knauf us 4,114,838 Sept. 19, 1978
Simpson us 5,107,995 Apr. 28, 1992
Callanan us 6,010,051 Jan. 4, 2000
Hall US 2006/0076378 Al Apr. 13, 2006
Watson US 2010/0089959 Al Apr. 15, 2010
REJECTIONS
The following rejections are before us for review: 1
I. Claims 1, 3-15, 28, 30, and 33-36 stand rejected under
35 U.S.C. § I03(a) as being unpatentable over Hall and
Watson. Final Act. 3-9.
II. Claims 15 and 37 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Hall, Watson, and Callanan. Id.
at 10-11.
III. Claims 24, 25, and 29 stand rejected under 35 U.S.C. § I03(a)
as being unpatentable over Hall, Watson, and Simpson. Id.
at 11-12.
IV. Claims 26 and 27 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Hall, Watson, and Knauf. Id. at 12.
We note that a rejection of claims 33-36 under 35 U.S.C. § 112,
second paragraph, as being indefinite has been acknowledged as being
overcome and thus is not before us for review as part of the instant appeal.
See Advisory Act. (dated Feb. 25, 2016); see also Final Act. 2.
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Application 13/486,100
ANALYSIS
Independent claim 1 recites, in relevant part, "a central portion with a
bottom and a top," and "at least one longitudinal strap coupled in fixed
relation to the central portion with a first distal end extending up from the
top of the central portion and a second distal end extending down from the
bottom of the central portion," where the second distal end "is constructed to
extend down from the bottom of the central portion along a longitudinal axis
of a first side of the recreation[al] board and wrap under a second end of the
recreational board and extend back up the longitudinal axis on an opposite
side of the recreation[al] board past the top of the central portion" to couple
to the board proximate a first end and above the central portion. Appeal Br.,
Claims App. ( emphasis added). Independent claim 8 similarly recites, in
relevant part, "a central portion with a top and a bottom," and "a first
longitudinal strap having a proximal end coupled in fixed relation to the
central portion and a distal end designed to extend away from the bottom of
the central portion parallel to a longitudinal axis of a recreational board[,]
down along a first side of the recreation board[,] and wrap under a bottom of
the recreational board[,] and extend back up an opposite side of the
recreation board past the top of the central portion to a first end of the
recreational board," where a coupling member attached to the strap can
couple to the board above the central portion. Id. ( emphasis added).
Independent claim 33 also similarly recites, in relevant part, "a central
portion with a bottom and a top," and "a longitudinal strap coupled to the
central portion wherein the longitudinal strap is constructed to extend down
from the bottom of the central portion along a longitudinal axis of a first side
of the surfboard and wrap under a bottom of the surfboard and extend back
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Application 13/486,100
up the longitudinal axis on an opposite side of the surfboard such that a
distal end of the longitudinal strap extends past the top of the central portion
to a nose of the surfboard," where a coupling member disposed at the end of
the strap can encircle a nose of the surfboard above the central portion. Id.
( emphasis added). In short, the present invention is directed to a carrier for
vertically holding a recreational board, such as a surfboard, where all the
claims require at least one longitudinal strap, with at least one coupling
member disposed at a distal end thereof, and constructed to couple to a
recreational board as recited, where the longitudinal strap is fixedly
"coupled" to the central portion of the board carrier. See id.
Stated another way, although a recreational board itself is not a recited
element of the claims, the recited longitudinal strap and coupling member
must be constructed to couple to a board as claimed (by extending down
from the central portion, wrapping under the bottom of the board, and
extending back up the board past the top of the central portion). Further, the
recitation that the longitudinal strap and coupling member are fixedly
"coupled" to the central portion of the board carrier facilitates the carrier
being held by a user via at least one carrying strap also "coupled" to the
central portion (for example, like a backpack), while the board is carried
vertically via at least the longitudinal strap and coupling member.
In each of Rejections I-IV, the Examiner relies on a combination of
teachings from Hall and Watson to reject the claims as obvious. See Final
Act. 3-12. In particular, in rejecting the independent claims, the Examiner
relies on Hall for disclosing the fundamental structures of a central
portion (38) and a longitudinal strap (10) that is asserted to be "coupled" to
the central portion, extending away therefrom, and capable of coupling to a
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Application 13/486,100
board as in the claims. See Final Act. 3, 5, 8-9 (citing Hall, Figs. IA and
2B); see also Ans. 12-13 (clarifying that the rejections rely on Hall for
disclosing the device and strap). The Examiner turns to Watson for
teaching an "ability" to have a strap arrangement that Hall is acknowledged
to lack-specifically, a distal end that is constructed to extend down from
the central portion, wrap under the bottom of a board, and extend back up
the board "past the top of the central portion" to couple to the board, as
recited in the claims. See Final Act. 3--4, 6-7, 9 (citing Watson, Figs. 2, 5, 6,
10); see also Ans. 13-16 (clarifying that Watson is relied on to teach the
specific routing of the strap).
Appellant persuasively asserts, however, that the rejections are
"unsupportable because the base combination of Hall and Watson d[ oes] not
equate to [Appellant's] invention," as "[n]either Hall nor Watson teach
[Appellant's] specific straps and attachments." Appeal Br. 26; see id.
at 14--19; see also Reply Br. 2--4. Upon review of the evidence before us,
we agree with Appellant that neither Hall nor Watson sufficiently discloses a
longitudinal strap having at least one coupling member disposed at a distal
end thereof, where the longitudinal strap is fixedly "coupled" to the central
portion of the board carrier, and where the longitudinal strap and coupling
member are constructed to couple to a board by extending down from the
central portion, wrapping under the bottom of the board, and extending back
up the board "past the top of the central portion," as required by the claims.
In particular, although Hall discloses various embodiments of devices
for holding a pair of skis together, including both an embodiment with a
backpack having central portion (38) and lateral binding straps ( 42) (see
Figs. 2A, 2B) and an embodiment with basic strap (10) that includes loops to
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Application 13/486,100
surround the bindings (see Figs. IA, IB), where the backpack embodiment
"may include" the basic strap (Hall ,r 31 ), Hall does not disclose how these
discrete elements for holding skis would be "coupled" together at all, let
alone in a way where the strap would extend longitudinally as recited in the
claims. Rather, it appears from Hall's disclosure that basic strap (10) would
simply "remain[] attached to the skis" (Hall ,r 31) when used with the
backpack (such as by also engaging lateral binding straps (42), which are the
only retaining straps "coupled" to central portion (38)) and the Examiner
does not identify, nor do we discern, any disclosure of basic strap (10) being
"coupled" to central portion (38).
Moreover, we agree with Appellant's observation that Watson's straps
couple to themselves to form loops and, although these loops extend
downward from part of central portion 20 to carry recreational equipment,
the Examiner does not identify, nor do we discern, any disclosure of a strap
that would be constructed to extend back up the equipment "past the top of
the central portion" to couple to the equipment as recited in the claims. See
Appeal Br. 16-19; Reply Br. 3. Instead, only system carrying D ring 17
( and its accompanying system carrying strap 18) appear to extend past the
top of central portion 20 ( defined along ring 4 ), but these elements do not
couple to any carried equipment. See, e.g., Figs. 2, 5, 6 (as cited by the
Examiner). As disclosed in Watson, strap 28, which does extend down to
carry recreational equipment, does not extend back up the equipment "past
the top of the central portion," as required by the claims. See id.
In short, for the reasons discussed above regarding the differences
between construction of the longitudinal strap recited in the claims and the
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Application 13/486,100
disclosures from Hall and Watson relied on in the rejections, we agree with
Appellant that obviousness has not been established.
Accordingly, because the Examiner's rejections are premised on
findings that are not supported by a preponderance of the evidence, we do
not sustain them.
DECISION
We REVERSE the Examiner's decision rejecting claims 1, 3-15, 28,
30, and 33-36 under 35 U.S.C. § 103(a) as being unpatentable over Hall and
Watson.
We REVERSE the Examiner's decision rejecting claims 15 and 37
under 35 U.S.C. § 103(a) as being unpatentable over Hall, Watson, and
Callanan.
We REVERSE the Examiner's decision rejecting claims 24, 25, and
29 under 35 U.S.C. § 103(a) as being unpatentable over Hall, Watson, and
Simpson.
We REVERSE the Examiner's decision rejecting claims 26 and 27
under 35 U.S.C. § 103(a) as being unpatentable over Hall, Watson, and
Knauf.
REVERSED
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