Ex Parte Jones

Patent Trial and Appeal Board

Nov 12, 2014

12277320 (P.T.A.B. Nov. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TILFORD C. JONES
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Appeal 2012-009117
Application 12/277,320
Technology Center 3700
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Before: MICHAEL L. HOELTER, LYNNE H. BROWNE, and
SCOTT A. DANIELS, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1‒11 and 13‒15. Br. 1.1 Claim 12 has been canceled.
Br. 15. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Unlike on page 1, at page 2 of the Appeal Brief, Appellant incorrectly
identifies the claims on appeal as “claims 1-6, 12 and 17-20.” The Examiner
acknowledges this as a “typographical error” (Ans. 3) and further, at page 5
of the Appeal Brief, Appellant also correctly re-identifies the claims on
appeal as being “claims 1-11 and 13-15.”
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Application 12/277,320

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THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a backboard training device
having high density polyethylene panels mounted so that buckling is avoided
and unwanted sound is reduced.” Spec. para. 3. Independent claim 1,
reproduced below, is illustrative of the claims on appeal:
1. A backboard training device comprising:
at least two solid panels mounted to a rigid support by a
movable mount, the panels comprising high density
polyethylene, the panels contacting each other, and the panels
being mounted so that the panels can move both horizontally
and vertically in relation to each other during ambient
temperature changes to avoid buckling of the panels;
the movable mount constructed and arranged to allow the
panels to move both horizontally and vertically in relation to
each other during ambient temperature changes to avoid
buckling of the panels;
an anti-vibration strip disposed between the movable
mount and the panels; and
an anti-friction strip disposed between the movable
mount and the panels to allow the panels to move both
horizontally and vertically in relation to one another during
ambient temperature changes to avoid buckling of the panels.

REFERENCES RELIED ON BY THE EXAMINER
Stewart US 4,588,190 May 13, 1986
Hofmann US 2005/0281999 A1 Dec. 22, 2005
Embassy GB 1,126,488 Sept. 5, 1968
Rally Master Backboards Webpage dated May 3, 2001 (hereinafter
“Rallymasterbackboards2001”).
THE REJECTION ON APPEAL
Claims 1‒11 and 13‒15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Stewart, Rallymasterbackboards2001, Hofmann,
and Embassy. Ans. 5.
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ANALYSIS
Appellant presents separate arguments for claims 1 and 2, for claims
3‒5, and for claims 7‒11 and 13‒15. See Br. 5. We select claims 1, 3, and 7
for review with the remaining claims (including claim 6) standing or falling
with their respective parent claim. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Claims 1, 2, and 6
The Examiner primarily relies on the teachings of Stewart for
disclosing certain backboard limitations but acknowledges that Stewart fails
to disclose panels comprising (a) “high density polyethylene” (HDPE), (b)
“an anti-vibration strip,” and (c) “an anti-friction strip.” Ans. 6. The
Examiner relies on Rallymasterbackboards2001 for disclosing the use of “a
solid plastic sheet as a backboard” and on Hofmann for teaching “high
density polyethylene,” as a structural composite material suitable for use.
Ans. 6. The Examiner concludes that it would have been obvious to modify
Stewart’s backboard “to include panels of high density polyethylene as
taught by Rallymasterbackboards[(2001)] and [Hofmann] for the purpose of
providing good durability to the device.” Ans. 6. The Examiner also
references KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) for providing
guidance that “the simple substitution of one material for another is not
considered patentable.” Ans. 12, 14.
The Examiner further relies on Embassy for disclosing both “an anti-
vibration element” and “an anti-friction element.” Ans. 6‒7. The Examiner
concludes that it would have been obvious to modify the above backboard to
include these teachings of Embassy “for the purpose of reducing noise and
resistance when the device is used.” Ans. 7. The Examiner references
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Embassy, page 2, lines 61‒119 for support which discusses the achievement
of both minimum resistance and noise dampening. Ans. 7.
Appellant initially contends that Stewart “teaches in a direction away
from the claimed invention” because Stewart employs “a ‘light weight’
honeycomb panel.” Br. 6. Although Stewart discloses a honeycomb panel,
Stewart also discloses that in the past, it was known to build such walls “of
concrete or wood.” Stewart 1:20‒22; see also Ans. 11. Nevertheless, the
Examiner relies on Stewart for disclosing “at least two panels,” the
Examiner relies on Rallymasterbackboards2001 for disclosing the “solid”
limitation associated with such panels, and the Examiner relies on Hofmann
for a panel “comprising high density polyethylene” as claimed. Ans. 6.
Hence, Appellant’s focus solely on Stewart and its disclosure of a
honeycomb panel is not responsive to the Examiner’s rejection. “Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citation omitted).
Appellant further contends that Stewart’s panels are bolted together
and hence “they cannot move in relation to one another.” Br. 6; see also Br.
10‒11. The Examiner finds that
One of ordinary skill in the art would be aware of various
attachment types of well-known attachment means i.e. bolts,
nuts, brackets, rubber washers, etc. and would have used an
appropriate attachment device to minimize noise and resistance
to buckling during temperature fluctuations.
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Ans. 13 (emphasis added).2 Appellant does not explain how the above
findings or rationales are in error and as such, Appellant’s contention that
Stewart’s connected panels “cannot move in relation to one another” is not
persuasive of Examiner error. In other words, even though Stewart discloses
bolted panels, Appellant’s contention that “Stewart teaches away from the
claimed invention” is not persuasive. Br. 6.
Appellant also contends that because Stewart teaches honeycomb
panels bolted together, “the secondary references, Hoffman and Embassy,
cannot be used to remove these principle operations of Stewart, to now teach
panels which are not secured so that they can move in both the horizontal
and vertical directions and the use of solid heavy high density polyethylene
panels.” Br. 7. Regarding the ability to move, claim 1 only addresses
movement “during ambient temperature changes to avoid buckling of the
panels” and this claim limitation does not specify any other type of
movement that may occur. Hence, the Examiner’s rationale supra regarding
what one of ordinary skill in the art would be aware of (i.e., rubber washers
or other appropriate hardware) is not shown by Appellant to be in error.
Regarding Hoffman and Embassy disclosing a solid high density
polyethylene panel, Appellant does not address Rallymasterbackboards2001
which is relied on for disclosing the “solid” limitation associated with
backboard panels. Additionally, Appellant does not refute Hoffman’s

2 We also note that the Examiner identifies Hofmann Paragraph 45 which
discusses thermal expansion (Ans. 6) and further, the Examiner identifies
certain passages in Embassy that both identify a desire “to accommodate the
problem of expansion and contraction” as well as the use of a fin tube to
minimize its effect. Ans. 6‒7 and 13‒14 referencing Embassy 1:16‒20 and
2:61‒119.
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teaching of the use of HDPE material nor Hoffmann’s and Embassy’s
concern regarding thermal expansion. See Ans. 6; Hoffman paras. 45 and
537; and Embassy 1:16‒20 and 2:61‒119. In short, Appellant does not
adequately explain how the substitution of a different panel in Stewart (Ans.
12, 14) would render Stewart’s backboard inoperable.
Appellant further contends that “Rallymasterbackboards[(2001)] only
discloses that Appellant unsuccessfully tried to rigidly mount a high density
polyethylene backboard.” Br. 7. However, this reference also teaches the
use of a “solid” backboard as well. See Rallymasterbackboards2001, pg. 1
and also Ans. 6, 12.
Appellant’s reproduction of Hoffman Paragraphs 45 and 537 only
confirm that these paragraphs address “thermal expansion of each
component material” and that one material investigated is “high density
polyethylene (HDPE).” Br. 7‒8. Appellant does not explain how the
Examiner’s reliance on Hoffman for disclosing the use of HDPE material is
in error. See Ans. 6.
Appellant also alleges that “[t]he claimed invention provides the
unexpected advantage of mounting the high density polyethylene panels
such that they do not buckle” (Br. 8) but there is no indication that the panels
disclosed in Stewart and Rallymasterbackboards2001 are subject to
buckling. See also Ans. 13.
Appellant further discusses activities occurring “over ten years of
experimentation” (Br. 9‒10), but these activities are not germane to whether
the Examiner’s rejection based on Stewart, Rallymasterbackboards2001,
Hoffman, and Embassy is in error.
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Based on the record presented, and for the above reasons, we are not
persuaded of Examiner error and accordingly, we sustain the Examiner’s
rejection of claims 1, 2, and 6 under 35 U.S.C. § 103(a) as being
unpatentable over Stewart, Rallymasterbackboards2001, Hofmann, and
Embassy.
Claims 35
Claim 3 depends from claim 1 and Appellant emphasizes that portion
of claim 3 reciting an arrangement “so that the panels can slide in relation to
one another in a horizontal direction.” Br. 11. Appellant contends that “the
panels in Stewart are bolted to one another and, thus, the panels cannot move
in relation to one another.” Br. 11.
The Examiner states that “[w]hile the argument appears to be ‘they
move independently of one another’ the claim language does not state that.”
Ans. 16. We agree with the Examiner on this point that the movement
recited in claim 3 is movement which is associated with changes in ambient
temperature. This argument is addressed supra and, for the reasons set forth
above, we sustain the Examiner’s rejection of claims 3‒5.
Claims 711 and 1315
Regarding independent claim 7, Appellant focuses on that portion
directed to “a multilayer HDPE panel in which the layers have different
colors.” Br. 12. The Examiner finds that “[t]he specification provides no
surprising or unanticipated results from using a multi-layered panel;
therefore it is an aesthetic design choice.” Ans. 17. Appellant does not
persuade us that this finding is in error. Accordingly, we sustain the
Examiner’s rejection of claims 7‒11 and 13‒15 under 35 U.S.C. § 103(a) as
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Application 12/277,320

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being unpatentable over Stewart, Rallymasterbackboards2001, Hofmann,
and Embassy.

DECISION
The Examiner’s rejection of claims 1‒11 and 13‒15 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
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