Ex Parte Feldmeier

Patent Trial and Appeal Board

May 28, 2013

11841020 (P.T.A.B. May. 28, 2013)

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.
11/841,020 08/20/2007 Robert H. Feldmeier 706.010PA 1354
25891 7590 05/29/2013
BERNHARD P. MOLLDREM, JR.
224 HARRISON STREET
SUITE 200
SYRACUSE, NY 13202
EXAMINER
CHAMBERS, MICHAEL S
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
05/29/2013 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 ROBERT H. FELDMEIER
____________________

Appeal 2011-004627
Application 11/841,020
Technology Center 3700
____________________

Before: PHILLIP J. KAUFFMAN, BARRY L. GROSSMAN, and
NEIL A. SMITH, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-004627
Application 11/841,020

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of
claims 1-13. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The Invention
Appellant’s claimed invention relates to sports games in which the
relevant dimensions of the court and equipment (apparatuses) are scaled
down so that the game can be played by persons of a smaller stature. Spec.
1:5-11. Claims 1 and 11 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. Method of playing a game of basketball in which teams
of adult players of restricted maximum height play the game on
a court with apparatus for playing basketball, and dimensioned
for play by adult players of restricted maximum height wherein
said court is formed on a horizontal floor surface and has a
length L and width W defined by side lines and end lines;
a goal is placed at each end of the court, with each goal
comprising a hoop of a diameter D supported on a backboard
that projects in onto the court a predetermined distance past the
respective end line, such that the hoop is positioned at a height
H over the floor surface;
a free throw area is formed at each end of the court and
having a free throw line that is disposed a distance F from a line
projected onto the floor by a front plane of the respective
backboard, and extending laterally a distance G; and
an arcuate three-point line is centered on a point on the
floor surface directly beneath a center of said hoop, and has a
radius R from said point; and wherein said game is played using
a ball having a circumference C; said method including:
- selecting players having a stature not to exceed a
prescribed maximum height restriction, where the maximum
height restriction is no greater than 74 inches;
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- forming teams of such players;
- having each of said team of players attempt to place the
ball through the goal hoop while on said court while members
of the another team are attempting to prevent the first team
placing the ball through the goal hoop; and
- awarding points when said players successfully place
the ball through said goal hoop; and
wherein to accommodate the players' limited-height
restriction, further comprising reducing the dimensions of the
court, equipment, and ball by scaling down the aforesaid
dimensions D, H, F, and R of said court and equipment and the
circumference C of said ball from corresponding standard
dimensions as prescribed by an athletic authority governing a
basketball league, according to a scaling factor S for all said
dimensions, where S is less than unity, and which is a ratio of
an average height of the players of said teams to an average
height of basketball players in said basketball league.

Evidence Relied Upon1
Annie Fetter, Geometry Forum: Problem of the Week - Women’s
Basketball - February 12-16, 1996, The Math Forum @ Drexel:
People Learning Math Together (“Fetter”).2

William Nack, It’s a Small World; SI Vault; Sports Illustrated (Jul. 24,
1989) (“Nack”).3

1 Although copies are before the Board, [a]As of the date of this opinion,
these two articles are no longer posted at the internet addresses provided by
the Examiner. See Ans. 3. The parent websites remain available (Math
Forum at: http://mathforum.org/; Sports Illustrated Vault at:
http://sportsillustrated.cnn.com/vault/).
2 Referred to by the Examiner and Appellant as “Math Forum.” See e.g.,
Ans. 4; App. Br. 13.
3 Referred to by the Examiner and Appellant as “Sport’s Illustrated Vault.”
See e.g., Ans. 4; App. Br. 13.
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Application 11/841,020

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The Rejection4
The rejection of claims 1-13 under 35 U.S.C. § 103(a) as unpatentable
over Fetter and Nack is before us on review. Ans. 4-6.

OPINION
Claims 1-7, 10, and 115
Independent claim 1 is directed to a method of playing a game of
basketball in which players of restricted height play on a court with
apparatus6 for playing basketball that are dimensioned according to a scaling
factor.7
The Examiner found that Fetter discloses the elements of claim 1
except restricting the height of players. Ans. 4. The Examiner found that
Nack discloses restricting the height of the basketball players.8 Id. The
Examiner concluded that it would have been obvious to modify Fetter’s
method of playing a game of basketball to include a height restriction, as
taught by Nack, to prevent taller players from dominating the game. Id. The
Examiner further reasoned that the addition of the height restriction goes

4 The rejection of claims 1-13 under 35 U.S.C. § 101 has been withdrawn by
the Examiner. See Ans. 3.
5 Appellant argues claims 1-7, 10, and 11 as a group, and we select claim 1
as representative. App. Br. 16-21; Reply Br. 2-6; see 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
6 Hereinafter references to scaling the court refer to scaling of the associated
apparatuses.
7 The scaling factor S is less than unity, and is a ratio of the average height
of the restricted height team players to the average height of the players of
another basketball league.
8 The Examiner concluded that the exact dimension of that height restriction
(i.e., 74 inches) was an obvious matter of design choice. Ans. 4. This
conclusion was not challenged by Appellant.
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hand in hand with the scaled down court because in the absence of such a
restriction, the scaling of the court would further exaggerate the advantage
of height. Ans. 10-11.
Appellant makes several arguments based upon characterizations of
the references, and then makes an argument regarding the use of common
sense in obviousness analysis. App. Br. 15-21; Reply Br. 2-6. We address
Appellant’s characterizations and then address the common sense argument.
Appellant concedes that Fetter discloses that it was known that a
basketball court may be dimensioned according to a scaling factor associated
with player height. App. Br. 18. However, according to Appellant, the
reference also discloses that it would not be worth such scaling for several
reasons (e.g., cost, the female player’s desire to play on the same level as
men, etc.). App. Br. 18-19; Reply Br. 3-4. Based upon this characterization,
Appellant argues that Fetter teaches away from the subject matter of claim 1.
Appellant is correct that the reference identifies negative aspects to
scaling down a basketball court. See e.g., Fetter at 1 (cost, making the game
too easy). However, the proper inquiry with regard to teaching away is
whether the reference teaches away from the claimed subject matter. See In
re Gurley, 27 F.3d 551, 553 (Fed.Cir.1994) ("A reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.").
Here, the difference between Fetter and the subject matter of claim 1
is the addition of a height restriction for the players. See Ans. 4. Thus, the
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proper inquiry is whether Fetter teaches away from the addition of a player
height restriction for the players utilizing the scaled down basketball court.
While Fetter identifies negative aspects to scaling down a basketball
court, Fetter is silent regarding the addition of a height restriction for players
utilizing such a court. We fail to see, and Appellant fails to cogently
explain, how such silence teaches away from the addition of a player height
restriction. See DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) (“We will not read into a
reference a teaching away from a process where no such language exists.”);
see also In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (“‘A reference
may be said to teach away when a person of ordinary skill, upon reading the
reference, … would be led in a direction divergent from the path that was
taken by the applicant.’”) (Citing Tec Air, Inc. v. Denso Mfg. Mich., Inc.,
192 F.3d 1353, 1360 (Fed. Cir. 1999)).
Further, Appellant’s argument focuses only on negative aspects of
scaling as taught by Fetter, and fails to balance those negatives against the
positives.9 Such a one-sided approach is not a weighing of the costs and
benefits, and does not demonstrate the non-obviousness of the proposed
modification. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165
(Fed. Cir. 2006) (“a given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate
motivation to combine.”); Winner Int’l Royalty Corp. v. Wang, 202 F.3d
1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes
at the expense of another benefit, however, should not nullify its use as a

9 See e.g., Fetter at 1-5 (making the women’s game more like the men’s to
increase excitement, more dunking).
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basis to modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.”).
Appellant also argues that the references did not recognize the
problem faced by Appellant, namely, that game play upon a scaled down
basketball court would demonstrate the athleticism of smaller-stature
athletes. App. Br. 21. To the contrary, as well explained by the Examiner,
Fetter recognized that women’s height (shorter players) was a factor
contributing to the question of scaling the basketball court so that the
women’s game would be more like the men’s game (taller players). Ans. 8-
9; see also Fetter at 1 (citing that the men’s game is “higher” and seeking to
scale the court and apparatuses “to make the women’s game like the
men’s”).
Appellant asserts that there is no suggestion in Nack to utilize a height
restriction for a basketball game played upon a scaled court and apparatuses
because: (1) there is not “any predictable advantage to using scaled court
size or scaled equipment for basketball (or any other sport) played between
teams of players where the player's height is restricted,” (2) Nack discloses
that height restricted teams excelled over non-height restricted teams, and
(3) Nack is silent about how teams fared when opposing teams were both
height-restricted. App. Br. 20-21, Reply Br. 3.
Regarding the first contention, to the extent that Appellant is arguing
that there must be a specific motivation in Nack for the proposed
combination, such is not the law. See KSR Int'l Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007) (the Supreme Court has rejected the rigid requirement
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of a teaching, suggestion, or motivation to combine known elements in order
to show obviousness).
Regarding the second and third contentions, Appellant
mischaracterizes Nack. Nack discloses that the five height restricted teams
of the World Basketball League (WBL) have dominated play against the six
international teams of the WBL that are not height restricted. Nack at 1.
However, Nack also discloses that the WBL commissioner identifies the
speed advantage of the shorter athletes over the taller ones as the reason for
this dominance, and that many of the height restricted players of the WBL
long to play in the National Basketball Association (NBA) where there are
no height restrictions. Id.
In light of Nack, a person of ordinary skill in the art would recognize
that height is an advantage that can be compensated for with other skills,
such as greater speed than the taller opponent. However, it remains clear
that height is an advantage in basketball, and for that reason the shorter
players of the WBL have trouble making it to the NBA. Therefore,
Appellant’s characterization that Nack discloses that height restricted teams
excelled over non-height restricted teams is inaccurate in that it is
incomplete.
Further, regarding the third contention, Nack is not silent regarding
the play of opposing teams where each is subject to the height requirement.
Nack discloses that there are five WBL height restricted teams (the US
teams) that play each other. Nack at 1. A person of ordinary skill in the art
would understand that the height restriction is a limitation intended to
provide parity between those teams.
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Beyond these arguments, Appellant also cautions that use of
“common sense” is a “subjective mental process” that is “inexact” and a
departure from the usual standards of obviousness and predictability. Reply
Br. 4-6.
Our guiding courts would disagree that the application of common
sense is a departure from the usual standards of obviousness and
predictability. See e.g., Perfect Web Tech., Inc. v. InfoUSA, Inc., 587 F.3d
1324, 1329 (Fed. Cir. 2009) (“while an analysis of obviousness always
depends on evidence … it also may include recourse to logic, judgment, and
common sense available to the person of ordinary skill that do not
necessarily require explication in any reference”); KSR, 550 U.S. at 420
(“Common sense teaches … that familiar items may have obvious uses
beyond their primary purposes”); see also Ans. 11 (noting that common
sense is an appropriate consideration).
Perhaps more importantly, Appellant fails to explain with any
particularity how this discussion of “common sense” relates to the
Examiner’s rejection.10
Appellant fails to demonstrate error in the rejection of claim 1.
Consequently we sustain the rejection of claims 1-7, 10, and 11.

10 The Examiner does not explicitly refer to the proffered rationale as
“common sense,” and only makes reference to “common sense” in response
to Appellant. Ans. 4-6, 11.
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Claims 8, 9, and 1211
Appellant repeats the arguments against the first claim grouping.
App. Br. 21. For the reasons discussed, supra, those arguments are
unpersuasive here as well.
Appellant argues that the references did not recognize that the height
of the average professional major college basketball players and male
athletes in general should be used in a ratio to determine the scaling factor S.
App. Br. 22. Such argument is inapposite as the Examiner did not find that
either reference makes such a disclosure. Rather, the Examiner determined
that finding the claimed ratio was a matter of optimizing or design choice.
Ans. 5-6, 12. Appellant’s argument does not address this conclusion.
Consequently, Appellant has not demonstrated error in the rejection of
claim 8 and claims 9 and 12 fall with claim 8.

Claim 13
Appellant repeats the arguments against the first claim grouping.
App. Br. 22. For the reasons discussed, supra, with regard to the first claim
grouping, those arguments are unpersuasive here as well.
Appellant argues that the references did not recognize that a different
scaling factor might apply for different ethnic groups. App. Br. 22. Such
argument is inapposite, as the Examiner did not find that either reference
makes such a disclosure. Rather, the Examiner determined that the claimed
ratio was an obvious matter of optimizing or design choice. Ans. 5-6, 12.
Appellant’s argument does not address this conclusion.

11 Appellants argue claims 8, 9, and 12 as a group, and we select claim 8,
which depends from claim 1 as representative. App. Br. 21-22; see 37
C.F.R. § 41.37(c)(1)(vii).
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Consequently, Appellant has not demonstrated error in the rejection of
claim 13.

DECISION
We affirm the Examiner’s decision to reject claims 1-13.
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)(1)(iv).

AFFIRMED

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