Ex Parte Flentye et al

Board of Patent Appeals and Interferences

Sep 3, 2010

11381894 (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 2009-008238
Application 11/381,894
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 2009-008238
Application 11/381,894
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, 3-19, 21-26, 28, 29, and
31, which are all of the pending claims.2 We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE 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. An adjustable aerobic exercise device comprising:
a platform having a substantially flat top surface and a
bottom, the platform configured to extend parallel to a
horizontal support surface when disposed on the horizontal
support surface;
at least one inclined riser block with at least one
interlocking surface matingly engageable with the bottom of the
platform for elevating the platform above the horizontal support
surface and inclining the platform relative to the horizontal
support surface, the inclined riser block having a pair of sides, a
top face extending at an incline from one side to the other side,
and a bottom face, the top face of the inclined riser block
matingly engageable with the bottom of the platform, the
incline of the top face being closer to the bottom face at the one
side than at the other side substantially the same as the incline

1 This appeal is related to Appeal 2009-009313 in Application 11/381,915.
2 Claim 30 is cancelled and not subject to this appeal. App. Br. 2. The
Answer and the final Office Action each erroneously list claim 30 in the
heading of the rejection, but do not address claim 30 in the body of the
rejection. Ans. 17; Office action dated April 4, 2008.
Appeal 2009-008238
Application 11/381,894
3
of the platform when the top face is matingly engaged with the
platform, and
wherein when the platform is stably supported by at least
one riser block it is configured to perform aerobic stepping
exercise.
THE REJECTION
Appellants seek review of the Examiner’s decision to reject claims 1,
3-19, 21-26, 28, 29, and 31 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).
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 and 29.
ANALYSIS
Rejection of claims 1, 3-19, 21-26, 28, 29, and 31 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 and 29 except that Irwin does not disclose the
inclined riser block as having a top face extending at an incline from one
side to the other side and the incline being substantially the same as the
incline of the platform when the top face is matingly engaged with the
platform. Ans. 4-5 and 16. The Examiner found that Jacobs discloses an
inclined wedge block (wedge shaped piece 1) that is used to create an
inclined workout surface (piece 3). Ans. 5-6 and 17. The Examiner
concluded that it would have been obvious to use the known technique from
Appeal 2009-008238
Application 11/381,894
4
Jacobs to include an inclined surface on the riser block of Irwin to achieve
the predictable result of inclining the Irwin workout surface. Id.
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 and 29. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 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 3-19, 21-26, 28, and 31 is also in error
by virtue of their dependence from claims 1 and 29.
NEW GROUND OF REJECTION
We enter the following new ground of rejection of independent claims
1 and 29 under 35 U.S.C. § 103(a) as unpatentable over Irwin, Jacobs, and
“STEP” for Rehab, Not Just for Aerobics, ABILITATIONS, p. 114 (1995)
(hereinafter “Abilitations”).
Irwin discloses an adjustable aerobic exercise device (col. 1, ll. 9-11;
fig. 4) comprising: a platform (platform 112) having a substantially flat top
surface with a width and a length (stepping surface 116), and a bottom
Appeal 2009-008238
Application 11/381,894
5
(sections 123 and 125, which terminate in flat bottom 127). Irwin, col. 3,
ll. 31-32, 36-37; fig. 5. The platform is configured to extend parallel to a
horizontal support surface when disposed on the horizontal support surface
so that the platform and support surface are substantially parallel. Irwin,
figs. 4, 5.
Irwin discloses at least one riser block (support element 114) with at
least one interlocking surface matingly engageable with the bottom of the
platform (support element 114 is telescopingly received with the bottom of
platform 112; Irwin col. 4, ll. 11-12; fig. 7) for elevating the platform
(platform 112) above the horizontal support surface. Irwin’s riser block
(support element 114) has a pair of sides, a top face (comprised of slightly
rounded top 133, curved shoulder 135, and ledge 137; col. 3, ll. 52-59; fig.
4) and a bottom face (flat bottom 151; col. 3, ll. 61-62). When the platform
is stably supported by at least one riser block it is configured to perform
aerobic stepping exercise (support elements 114 have structural means to
allow them to be stacked in vertical alignment and stably support the
platform 12 for adjustable platform height to meet users needs; col. 4, ll. 1-4,
19-22, 40-46).
Irwin does not disclose: (1) that the riser blocks are inclined, (2) that
the riser blocks incline the platform relative to the horizontal support
surface, (3) that the top face of the riser block extends at an incline from one
side to the other side, or (4) that the incline of the top face is closer to the
bottom face at the one side than at the other side substantially the same as
the incline of the platform when the top face is matingly engaged with the
platform.
Abilitations discloses that an adjustable aerobic exercise device
similar to Irwin’s can be used “with one side set higher than the other,” such
Appeal 2009-008238
Application 11/381,894
6
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;
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
Appeal 2009-008238
Application 11/381,894
7
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.”).
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 be inclined, and when fitted to the platform, would
incline the platform relative to the horizontal support surface. Further, the
modified riser blocks would have a top face that extends at an incline from
one side to the other side, so that the incline of the top face is closer to the
bottom face at the one side than at the other side, substantially the same as
the incline of the platform when the top face is matingly engaged with the
platform.
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
Appeal 2009-008238
Application 11/381,894
8
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 and 29 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).
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.

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.
Appeal 2009-008238
Application 11/381,894
9
Thus, we conclude that the subject matter of independent claims 1 and
29 would have been obvious in view of Irwin, Jacobs, and Abilitations. No
inference should be drawn from the Board’s 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
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 and 29.
We enter a new ground of rejection of independent claims 1 and 29
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, 3-19, 21-
26, 28, 29, and 31.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008). 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 Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of

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 2009-008238
Application 11/381,894
10
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. . . .

REVERSED, 37 C.F.R. § 41.50(b)

nlk

BARNES & THORNBURG LLP
P.O. BOX 2786
CHICAGO IL 60690-2786