Ex Parte FifeDownload PDFPatent Trial and Appeal BoardApr 30, 201311827419 (P.T.A.B. Apr. 30, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ANDREW P. FIFE ____________ Appeal 2011-003324 Application 11/827,419 Technology Center 3700 ____________ Before ANNETTE R. REIMERS, BRADFORD E. KILE, and CARL M. DeFRANCO Administrative Patent Judges. KILE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-003324 Application 11/827,419 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. §134(a) from a final rejection of claims 1 – 20.1 App. Br. 1-3. We have jurisdiction under 35 U.S.C. § 6(b). Appellant’s invention is directed to “a multi-grip dumbbell.” Spec. 1, l. 9. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A multi-grip dumbbell comprising: a central handle having a first end and a second end; a first weighted head interconnected to the central handle in proximity to the first end of the central handle, the first weighted head including a first weighted end handle, a first weighted side handle, and a second weighted side handle; and a second weighted head of approximately equal shape and weight to the first weighted head, the second weighted head interconnected to the central handle in proximity to the second end of the central handle, the second weighted head including, a second weighted end handle, a third weighted side handle, and a fourth weighted side handle. App. Br. (Clms. App’x. 14). 1 Appellant identifies claims 1-20 as finally rejected and on appeal. App. Br. 1. In the CLAIMS APPENDIX attached to the Appeal Brief, however, claim 13 is indicated as “cancel.” App. Br. (Clms. App’x. 15). In the body of the Appeal Brief, the Examiner’s Answer and the Reply Brief, references to claim 13 are included. Accordingly, we will consider claim 13 as remaining a part of the claim set and that the statement “cancel” that appears in the CLAIMS APPENDIX is a clerical error. Appeal 2011-003324 Application 11/827,419 3 The Examiner relies on the following references in rejecting the appealed claims: Wright US 4,029,312 Jun. 14, 1977 Smith US 5,024,434 Jun. 18, 1991 Roepke US 5,334,113 Aug. 2, 1994 Appellant requests review of the following rejections advanced on Appeal by the Examiner (Ans. 3): Claims 1-3, 10, and 14-18 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Smith. Claims 4-9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Smith in view of Wright. Claims 11-13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Smith in view of Roepke. Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Smith. OPINION Anticipation – Claims 1-3, 10, and 14-18 Independent claim 1 (the only independent claim on appeal), with reference to the Specification, pp. 6-15 and Figures 8A – 16C, drawing pp. 8-25, discloses and claims “a multi-grip dumbbell” including a plurality of weighted handles. App. Br. (Clms. App’x. 14). Appellant’s Figure 8A reproduced below discloses a pictorial view of a weighted dumbbell in accordance with one embodiment of the claimed invention: App App hand mou head side discl Smit first eal 2011-0 lication 11 Figure 8 le 802, a f nted on op s 804, 806 handles 81 The Exa osure. Sm h, col. 1, l Fig. 1 di and secon 03324 /827,419 A disclose irst weigh posing end includes a 0, 812 and miner reje ith disclos l. 7-8. Fig scloses a b d open circ s a multi-g ted head 8 s of the c weighted 816, 818 cts claim 1 es a barbe . 1 of the S arbell incl ular housi 4 rip dumbb 04 and a se entral hand end hand respective as anticip ll having a mith pate uding a m ngs 2 and ell 800 in cond wei le 802. E le 808, 814 ly. Spec. ated by th pair of ro nt is repro iddle bar 6 4 that tran cluding a ghted head ach of the and two 6, ll. 21-2 e Smith pa tatable ha duced belo extendin sition into central 806 weighted weighted 7. tent ndles. w: g between end bars 8 App App and 18 is assem 17. and col. comp inter first weig an an “firs weig in Fi eal 2011-0 lication 11 10 respecti positione bly is mo Weight pla 10 and the 4, ll. 37-39 The Exa rising a c connected weighted e hted side h notated im The Exa t weighted hted side h g. 9).” An 03324 /827,419 vely. Smit d within th unted wit tes 16 can angle of th . miner find entral hand to the cen nd handle andle . . . age of Fi miner iden head” inc andle ((a) s. 4-5. h, col. 3, l e first circ hin the sec be operab e hand gr s that Smi le 6 . . . a tral handle (18), a fir .” Ans. 4 g. 9 of the tifies in th luding “a f in Fig.9)” 5 . 57- col. 4 ular housi ond circul ly mounte ips can be th disclose first weigh . . . the fi st weighte -5. The Ex Smith pat is reprodu irst weigh and a “se , l. 3. A f ng 2 and a ar housing d upon th adjusted. s “a multi ted head rst weighte d side han aminer in ent as follo ction of F ted end ha cond weig irst hand a second ha 4. Id., co e bar exten Id. col.4, -grip dum (2 and 24) d head in dle . . . an cludes in t ws: ig. 9 his fi ndle” and hted side h ssembly ndle l. 4, ll. 12 sions 8 ll. 8-11 an bbell cluding a d a second he Answe nding of a “a first andle ((b) - d r App App are d copy Ans. that comp the s Thus dum appe and t barb eal 2011-0 lication 11 The Exa isclosed in of Fig. 1 16. The Exa the compo onents . . ame funct Appellan , Smith do bbell.” Ap ars to asse hat there i ells are dif 03324 /827,419 miner furt the Smith of the Smi miner find nents are “ . are capab ionality as t contend es not dis p. Br. 9. rt that the s no distin ferent type her finds t patent an th patent a s that the structural le of bein the Appel s that “Sm close ‘a m Appellant words ‘du ction betw s of free w 6 hat all of t d for clari s follows: Smith com ly the sam g used in t lant’s.” A ith’s devic ulti-grip du further no mbbell’ an een the tw eights.” he recited fication in ponents a e as the Ap he same m ns. 16-17. e is a bar b mbbell,’ tes that “[t d ‘barbell o terms . Reply Br. features of cludes an re all weig pellant’s anner and ell, not a or any kin ]he Exami ’ are interc . . dumbbe 1. claim 1 annotated hted and provide dumbbell. d of ner hangeable lls and Appeal 2011-003324 Application 11/827,419 7 Appellant disputes the Examiner’s finding that the Smith components are weighted in the sense of recitations in the claimed invention. App. Br. 10. Appellant argues that “[i]n the Examiner’s reasoning, a set screw used to mount the weights to the end bars in Smith’s device could also be ‘broadly interpreted’ as a weighted head, since even a set screw ‘has some weight to it.’ Similarly, a facial tissue box or facial tissue could be ‘broadly interpreted’ as a weighted head. Clearly, this is an absurd statement. Weighted heads are clearly described in the current application.” Id. at 10. Appellant continues “[n]o one with even cursory background or understanding of free weights, weight-lifting exercises, or anything related to weight lifting would possibly conclude that these circular housings and rotatably mounted grips are weighted heads or in any way “weighted.” Id. at 11. A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference. See, e.g., Therasense, Inc. v. Becton Dickinson and Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983); Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771 (Fed.Cir.1983), cert. denied, 465 U.S. 1026 (1984). We agree with Appellant. First, we agree with Appellant that there is an art recognized difference between a dumbbell and a barbell. Second, claim 1 recites “a central handle” without a recitation of the term “weighted” and then a first and second “weighted head” with each “weighted head” having one “weighted end handle” component and two “weighted side handle” components. As a matter of claim construction, claim 1 itself Appeal 2011-003324 Application 11/827,419 8 distinguishes between a handle component such as the “central handle” and weighted handle components such as “weighted end handles” and “weighted side handles.” The word “weighted” in claim 1 must be considered and accorded significance. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“All words of a claim must be considered in judging the patentability of that claim against the prior art.”) We find as a matter of claim construction that a “weighted handle”, as recited in claim 1, must have at least a degree of weight in the sense of a dumbbell function in addition to the function of providing a hand hold or handle. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)(en banc) (“we look to the words of the claims themselves . . . to define the scope of the patented invention”) citing with approval Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). We agree with Appellant that Smith does not disclose a “dumbbell” or “weighted handle” components of a dumbbell as recited in claim 1 and thus the Smith patent disclosure does not anticipate claim 1. Since claim 1 is not anticipated, none of the remaining claims in this group (viz. 2, 3, 10 and 14- 18), which directly or ultimately depend from claim 1, can be anticipated. See, e.g., RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1446 (Fed. Cir. 1984) (“Since claim 3 . . . is dependent upon claim 2, which is not anticipated, claim 3 cannot be anticipated.”). Obviousness – Claims 4-9 The Examiner rejects claim 4-9, which ultimately depend from independent claim 1, on the basis of Smith and Wright. The Wright patent discloses an exercise device comprising a pair of substantially hollow and Appeal 2011-003324 Application 11/827,419 9 generally spherical weight members which may be attached to the ends of a bar. Wright, col. 2, ll. 13-16. The Examiner in one sentence states that “based on the arguments detailed above, the combination of Smith in further view of Wright teaches/suggests the limitations of claims 4-9.” Ans. 19. The Supreme Court instructs in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), citing with approval In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). We find the Examiner’s analysis lacks a rational underpinning with respect to the recited elements of the claims and the Examiner has failed to establish a prima facie case of obviousness. In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1996). Obviousness – Claims 11-13 The Examiner rejects claim 11-13, which depend from independent claim 1, on the basis of Smith and Roepke. The Roepke patent discloses a multi-position grip system for barbells or the like. Roepke, col.1, ll. 7-9. The Examiner states in a manner similar to his consideration of claims 4-9 above that “based on the arguments detailed above, the combination of Smith in further view of Roepke teaches/suggests the limitations of claims 11-13.” Ans. 19. This bare statement fails to convince us that the Examiner’s rejection establishes a prima facie case of obviousness of claims 11-13. In re Kahn, supra. Appeal 2011-003324 Application 11/827,419 10 Obviousness – Claims 19-20 The Examiner states that “based on the arguments detailed above, these limitations would have been obvious to one [sic] ordinary skill in the art as explained above.” Ans. 19. This statement fails to convince us that the Examiner has established a prima facie case of obviousness of claims 19 and 20. In re Kahn, supra. ORDER The Examiner’s rejection of claims 1-20 is reversed. REVERSED Klh Copy with citationCopy as parenthetical citation