Ex Parte Flentye et al

Board of Patent Appeals and Interferences

Sep 3, 2010

11381915 (B.P.A.I. Sep. 3, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HERBERT T. FLENTYE and GREGORY NIEDERLANDER
____________

Appeal 2009-009313
Application 11/381,915
Technology Center 3700
____________

Before: LINDA E. HORNER, JENNIFER D. BAHR, and
KEN B. BARRETT, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-009313
Application 11/381,915
2
STATEMENT OF THE CASE1
Herbert T Flentye et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1-3, 5-10, 12-15, 17, and
18, which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM and ENTER A NEW GROUND OF
REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R.
§ 41.50(b).
THE INVENTION
Appellants’ claimed invention is an adjustable exercise device for
aerobic stepping exercise and other forms of exercise. Spec. 1, para. [0002].
Claim 1, reproduced below, is representative of the subject matter on appeal.
1. A kit for providing alternative adjustability to an aerobic
exercise device including: (a) a platform having a substantially
flat top surface and a bottom defining a recess, and (b) a pair of
riser blocks having top faces matingly engageable with the
bottom of the platform to elevate the platform above a support
surface so that the top surface of the platform extends above the
support surface, the kit comprising a pair of inclined riser
blocks, each inclined riser block comprising;
(a) a top face with at least one protrusion forming an
interlocking surface matingly engageable with the recess
defined by the bottom of the platform whereby the top face
stably supports the platform;
(b) a bottom face matingly engageable with the top face
of a respective riser block;
(c) a central portion extending between the top and
bottom faces of the inclined riser block and having a front and a
rear, the central portion increasing in thickness from the front to
the rear; and

1 This appeal is related to Appeal 2009-008238 in Application 11/381,894.
Appeal 2009-009313
Application 11/381,915
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(d) whereby the top face extends at an incline with
respect to the bottom face so that the top surface of the platform
can be inclined relative to the support surface.
THE REJECTIONS
Appellants seek review of the Examiner’s decision to reject claims
1-3, 5-10, 12-15, 17, and 18 under 35 U.S.C. § 103(a) as unpatentable over
Irwin (US 5,158,512, issued October 27, 1992) and Jacobs (US 4,905,330,
issued March 6, 1990).
Additionally, the Examiner provisionally rejected claims 1-3, 5-10,
12-15, 17, 18 on the ground of nonstatutory, obviousness-type double
patenting as being unpatentable over claims 1-28 of copending Application
11/381,894.2 Ans. 5. Appellants present no arguments against this
rejection, but rather indicate a willingness to file a terminal disclaimer upon
removal of the remaining rejections. As such, Appellants have waived any
argument of error regarding the rejection. We summarily sustain this
rejection.
ISSUE
The issue presented by this appeal is whether the proposed
combination is based upon a sufficient reason with a rational underpinning
to explain why a person of ordinary skill in the art would have modified the
device of Irwin to include an inclined surface as taught by Jacobs to reach
the subject matter of independent claims 1, 7, and 14.

2 As of the date of this decision, copending Application 11/381,894 has not
been rejected on the ground of nonstatutory, obviousness-type double
patenting.
Appeal 2009-009313
Application 11/381,915
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ANALYSIS
Rejection of claims 1-3, 5-10, 12-15, 17, and 18 under 35 U.S.C. § 103(a) as
unpatentable over Irwin and Jacobs
The Examiner found that Irwin discloses all aspects of the invention
of independent claims 1, 7, and 14 except that Irwin’s riser blocks do not
include a central portion extending between the top and bottom faces that
increases in thickness from the front to the rear so that the top face extends
at an incline with respect to the bottom face so that the top surface of the
platform can be inclined relative to the support surface. Ans. 5-6, 9-10, 13-
14. The Examiner found that Jacobs discloses an inclined wedge (wedge
shaped piece 1) having a central portion extending between the top and
bottom faces that increases in thickness from the front to the rear so that the
top face extends at an incline with respect to the bottom face so that the top
surface of a platform (piece 3) can be inclined. Ans. 6, 10, 14-15. The
Examiner concluded that it would have been obvious “to use Jacobs’
teaching of an inclined surface on a wedge shaped block to apply an incline
to the riser block of Irwin,” because such use was a known technique
yielding predictable results. Ans. 6, 10-11, 15.
The proposed combination is not based upon a sufficient rationale.
The rationale provided is circular in that it concludes Jacobs’s incline would
be added to Irwin’s risers so that the riser would be inclined. This explains
what modification would have been made, but essentially provides no reason
why one having ordinary skill in the art would have been led to make such a
modification. Thus, the Examiner has not adequately articulated a reason
why a person of ordinary skill in the art would have been led to modify
Irwin’s apparatus in view of the teaching of Jacobs to arrive at the subject
matter of claims 1, 7, and 14. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
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Application 11/381,915
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398, 418 (2007) (Rejecting the rigid requirement of a teaching, suggestion or
motivation to combine known elements in order to show obviousness, but
nonetheless making clear that “rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.”) (citing In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)). The rejection of claims 2, 3, 5, 6, 8-10, 12, 13, 15, 17, and 18 is
also in error by virtue of their dependence from claims 1, 7, and 14.
NEW GROUND OF REJECTION
We enter the following new ground of rejection of claims 1, 7, and 14
under 35 U.S.C. § 103(a) as unpatentable over Irwin, Jacobs, and “STEP”
for Rehab, Not Just for Aerobics, ABILITATIONS, 114 (1995) (hereinafter
“Abilitations”).
Irwin discloses a kit for providing alternative adjustability to an
aerobic exercise device (col. 1, ll. 9-11; fig. 4) including: a platform
(platform 112) having a substantially flat top surface (stepping surface 116)
and a bottom (sections 123 and 125, which terminate in flat bottom 127;
Irwin, col. 3, ll. 31-32, 36-37; fig. 5) defining a recess (as shown by support
element 114 being telescopingly received with the bottom of platform 112;
col. 4, ll. 11-12; fig. 7).
Irwin further discloses a pair of riser blocks (support elements 114)
having top faces (comprised of slightly rounded top 133, curved shoulder
135, and ledge 137; col. 3, ll. 52-59; fig. 4) matingly engageable with the
bottom of the platform (as shown by support element 114 being
telescopingly received with the bottom of platform 112; col. 4, ll. 11-12; fig.
7) to elevate the platform above a support surface so that the top surface of
Appeal 2009-009313
Application 11/381,915
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the platform extends above the support surface (fig. 4 showing two support
elements 114 under each end of platform section 112).
Irwin discloses that each riser block (support element 114) is
comprised of a top face (slightly rounded top 133, curved shoulder 135, and
ledge 137; col. 3, ll. 52-59; fig. 4) with at least one protrusion forming an
interlocking surface matingly engageable with the recess defined by the
bottom of the platform whereby the top face stably supports the platform,
and a bottom face matingly engageable with the top face of a respective riser
block (as shown by support element 114 being telescopingly received within
the bottom of platform 112 and other support elements 114; col. 4, ll. 11-12;
fig. 7).
Irwin does not disclose a central portion extending between the top
and bottom faces of the inclined riser block and having a front and a rear, the
central portion increasing in thickness from the front to the rear, whereby the
top face extends at an incline with respect to the bottom face so that the top
surface of the platform can be inclined relative to the support surface.
Abilitations discloses that an adjustable aerobic exercise device
similar to Irwin’s can be used “with one side set higher than the other,” such
as by placing risers under one end of the platform, but not the other.
Abilitations discloses that this inclined position of the platform serves such
uses as advanced gait training, and abdominal strengthening (as depicted by
a user doing sit-ups). Abilitations, p. 114. A person of ordinary skill in the
art would recognize that Abilitations discloses that an adjustable aerobic
exercise device similar to Irwin’s can be used at an incline for abdominal
strengthening and other forms of exercise.
Jacobs discloses an exercise device comprised of wedge-shaped
pieces 1 and 2 and rectangular pieces 3, 4, and 5. Jacobs, col. 1, ll. 20-22;
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Application 11/381,915
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col. 1, l. 64 – col. 2, l. 7; fig. 1. Jacobs discloses that the inclined pieces may
be used to incline a platform. Jacobs, col. 2, ll. 44-49; fig. 7 (an “alternate
sit-up position device” formed by wedge shaped piece 1 inclining
rectangular pieces 3, 4, and 5, creating two inclined platforms for sit-ups
having a higher degree of difficulty). A person of ordinary skill in the art
would recognize an inclined shape (wedge) can support a platform at an
incline to make the platform useful for exercises such as higher-degree of
difficulty sit-ups.
A person of ordinary skill in the art, knowing Irwin’s adjustable
stepper can be used for sit-ups with the platform at an incline, as disclosed
by Abilitations, would recognize that Jacobs’s technique of using an inclined
piece (wedge) to support and incline a platform for increased difficulty sit-
ups could be used to modify Irwin’s device in the same way. In other words,
Irwin’s device could be improved by modification to include an incline for
supporting a platform as taught by Jacobs for use of the platform for
alternative exercise such as increased difficulty sit-ups as taught by
Abilitations. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”)
A person of ordinary skill in the art would recognize the value of the
stability created by support elements 114 being telescopingly received both
within the bottom of platform 116 and within other support elements 114
(Irwin, col. 3, ll. 48-51) and would alter support elements 114 to include an
incline as taught by Jacobs and Abilitations while preserving the telescoping
fit. See KSR, 550 U.S. at 418 (It is proper to “take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”).
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Application 11/381,915
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See also id. at 421 (“A person of ordinary skill is also a person of ordinary
creativity, not an automaton.”). In other words, the shape of the top face and
bottom of the risers would be preserved in the modification to preserve the
stable fit.
Once modified to include an incline, the riser blocks of the proposed
combination would include a central portion extending between the top and
bottom faces of the inclined riser block and having a front and a rear, the
central portion increasing in thickness from the front to the rear, whereby the
top face extends at an incline with respect to the bottom face so that the top
surface of the platform can be inclined relative to the support surface.
The proposed combination relies upon Jacobs’s disclosure that an
inclined block can be used to incline a platform in order to make the
platform suitable for exercises such as increased difficulty sit-ups. This
rejection is not based upon a bodily incorporation of Jacobs’s wedge-shaped
pieces into Irwin’s device. In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(citations omitted) (“The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference. . . . Rather, the test is what the combined teachings of
those references would have suggested to those of ordinary skill in the art.”).
Further, the proposed combination does not rely upon the exact angle
of incline disclosed by Jacobs. A person of ordinary skill in the art, knowing
the disclosures of Jacobs and Abilitations, would select an angle of incline
appropriate for abdominal strengthening or increased difficultly sit-ups on an
adjustable stepper. Claims 1, 7, and 14 do not specify the angle of the
incline, and Appellants’ Specification broadly describes that the angle of
incline “may be in the range of about 17 degrees, or may have any other
suitable magnitude.” Spec. 5, para. [0020] (emphasis added).
Appeal 2009-009313
Application 11/381,915
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The proposed modification is based on Irwin’s second embodiment,
which does not include ribs that might interfere with the proposed
modification. Irwin, col. 3, l. 17 – col. 4, l. 54 (describing the second
embodiment); figs. 4-7. Irwin does not explicitly disclose that the second
embodiment has ribs, no ribs are visible in Figures 4-7, and claim 8, which
corresponds to the second embodiment, does not include ribs (Irwin, col. 6,
ll. 4-30). Id. The absence of ribs in the second embodiment is further
illustrated by the fact that the support element 114 of the second
embodiment is “open through its center” (Irwin, col. 3, ll. 52-54; fig. 4).
Thus, the riser of the second embodiment, unlike that of the first
embodiment,3 has no upper surface to contact ribs.
Thus, we conclude that the subject matter of independent claims 1, 7,
and 14 would have been obvious in view of Irwin, Jacobs, and Abilitations.
No inference should be drawn from the failure to make a new ground of
rejection for other claims.4 As the Board’s function is primarily one of
review, we leave to the Examiner to determine the patentability of the
dependent claims in view of the new ground of rejection and the prior art.
CONCLUSIONS
The proposed combination is not based upon a sufficient reason with a
rational underpinning to explain why a person of ordinary skill in the art

3 Irwin describes in the first embodiment that when the columns 34 are
received within spaces on support elements 14, the bottom surface of the ribs
38 engage the upper surface 48 of the support elements 14. Irwin, col. 2, ll.
57-60.
4 See 37 C.F.R. § 41.50(b). See also Manual of Patent Examining Procedure
(MPEP), 8th ed., rev. July 2008, § 1213.02 (“Since the exercise of authority
under 37 C.F.R. § 41.50(b) is discretionary, no inference should be drawn
from a failure to exercise that discretion”).

Appeal 2009-009313
Application 11/381,915
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would have modified the device of Irwin to include an inclined surface as
taught by Jacobs to reach the subject matter of independent claims 1, 7, and
14.
We enter a new ground of rejection of independent claims 1, 7, and 14
under 35 U.S.C. § 103(a) as unpatentable over Irwin, Jacobs, and
Abilitations.
DECISION
We REVERSE the Examiner’s decision to reject claims 1-3, 5-10, 12-
15, 17, and 18 under 35 U.S.C. § 103(a) as unpatentable over Irwin and
Jacobs.
We AFFIRM the Examiner’s decision to reject claims 1-3, 5-10, 12-
15, 17, 18 on the ground of nonstatutory, obviousness-type double patenting
as being unpatentable over claims 1-28 of copending Application
11/381,894.
We enter a NEW GROUND OF REJECTION of independent claims
1, 7, and 14 under 35 U.S.C. § 103(a) as unpatentable over Irwin, Jacobs,
and Abilitations.
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(1) provides
“Appellants may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejections of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that, TO AVOID
TERMINATION OF THE APPEAL AS TO THE REJECTED CLAIMS,
Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE
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Application 11/381,915
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DECISION, must exercise one of the following two options with respect to
the new grounds of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review of the Patent Office’s decision under 35 U.S.C. § 141 (Appeal to the
Court of Appeals for the Federal Circuit) or under 35 U.S.C. § 145 (Civil
action to obtain patent) with respect to the affirmed rejection, the effective
date of the affirmance is deferred until conclusion of the prosecution before
the Examiner unless, as a mere incident to the limited prosecution, the
affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.

AFFIRMED; 37 C.F.R. § 41.50(b)

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