Ex Parte Moulton

Board of Patent Appeals and Interferences

Jun 21, 2012

11633767 (B.P.A.I. Jun. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte KELLY J. MOULTON
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Appeal 2010-001709
Application 11/633,767
Technology Center 3700
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Before STEVEN D.A. McCARTHY, PHILLIP J. KAUFFMAN and
MICHELLE R. OSINSKI, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s 2
decision rejecting claims 1-9, at least one of which is twice-rejected. We 3
sustain the Examiner’s decision rejecting claims 1-3 and 5 under 35 U.S.C. 4
§ 102(b) as being anticipated by Berry (US 3,119,614, issued Jan. 28, 1964); 5
of claim 4 under 35 U.S.C. § 103(a) as being unpatentable over Berry; and6

1 The Appellant is the real party in interest.
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of claims 8 and 9 under § 103(a) as being unpatentable over Dean (US 1
5,624,359, issued Apr. 29, 1997) and Berry. We do not sustain the rejection 2
of claims 6 and 7 under § 103(a) as being unpatentable over Berry; and of 3
claims 1-9 under § 103(a) as being unpatentable over Dean. We have 4
jurisdiction under 35 U.S.C. § 6(b). 5
Claim 8 is illustrative of the claims on appeal: 6
8. A method of exercising comprising 7
the steps of: 8
providing a muscle tension strap including a 9
pair of elongated flat bands affixed together at a 10
plurality of intermediate points to form a plurality 11
of tandem loops and portions of each flat band 12
adjacent each end affixed together to form a final 13
loop at each end; 14
engaging a body part in a first loop of the 15
muscle tension strap and another body part in a 16
second loop of the muscle tension strap, the first 17
loop being spaced from the second loop; and 18
applying tension to the first loop with the 19
first body part and applying opposed tension to the 20
second loop with the second body part to stress 21
and exercise both the first and the second body 22
parts. 23
24
ISSUES 25
The Appellant argues each ground of rejection as a separate claim 26
grouping. (See Reply Br. 9-27). Only issues and findings of fact contested 27
by the Appellant will be addressed. See Ex Parte Frye, 94 USPQ2d 1072, 28
1075-76 (BPAI 2010). 29
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First, does Berry anticipate claims 1-3 and 5? (Reply Br. 1
9-10). 2
Second, do the evidence and technical reasoning 3
underlying the rejection of claims 4, 6 and 7 adequately support 4
the conclusion that the apparatuses of claims 4, 6 and 7 would 5
have been obvious from the teachings of Berry? (Reply Br. 10-6
13). 7
Third, do the evidence and technical reasoning 8
underlying the rejection of claims 8 and 9 adequately support 9
the conclusion that the methods of claims 8 and 9 would have 10
been obvious from the teachings of Berry? (Reply Br. 13-15). 11
Fourth, do the evidence and technical reasoning 12
underlying the rejection of claims 1-9 adequately support the 13
conclusion that the subject matter of claims 1-9 would have 14
been obvious from the teachings of Dean? (Reply Br. 16-28). 15
16
FINDINGS OF FACT 17
The record supports the following findings of fact (“FF”) by a 18
preponderance of the evidence. 19
1. Dean describes an apparatus 16 for stretching muscles. The 20
apparatus includes engaging means 10, 20. The engaging means 10, 20 may 21
constitute compartments, loops or pockets. (Dean, col. 2, ll. 13-25). The 22
engaging means 10, 20 are formed from pliable yet inelastic fabric. (Dean, 23
col. 2, ll. 28-31). 24
2. A person seeking exercise by means of the apparatus 16 25
engages two of the engaging means 10, 20 with one or more feet, knees, 26
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elbows or hands. The person then pulls the engaging means in opposite 1
directions in order to stress one or more muscles in the engaged limbs. 2
(Dean, col. 2, ll. 52-59; see also id., ll. 16-18). 3
3. Figure 1 of Dean depicts an apparatus 16 including a plurality 4
of tandem pockets. (Dean, col. 2, ll. 22-23). 5
4. Dean teaches that: 6
The plurality of engaging means may be formed 7
from a single piece of material. A piece of 8
material that is substantially rectangular may be 9
folded over such that one edge of the material 10
comes into contact with the opposite edge. Then, 11
at certain chosen points the two edges are 12
permanently attached, thereby forming a series of 13
engaging means between the points of attachment. 14
(Dean, col.2, ll. 32-38). 15
5. The description provided at column 2, lines 32-38 of Dean is 16
consistent with a method in which the rectangular piece of material is folded 17
along a longitudinal center line (that is, “long ways”) to bring the two longer 18
edges of the material together. The material then may be cross-stitched, 19
tacked or bonded to form pockets as depicted in Figure 1 of Dean. This 20
interpretation is supported by Dean’s use of the term “enclosures” to refer to 21
the engaging means at the end of line 38 of column 2. (See also Dean, col. 22
2, ll. 47-51). 23
6. Dean also teaches that the “apparatus may further be formed by 24
individually connecting several engaging means, end to end, so that a line of 25
engaging means are formed.” (Dean, col. 2, ll. 45-47). 26
7. We adopt and incorporate by reference the Examiner’s findings 27
at page 3, lines 14-22 (starting with “Berry discloses” and ending at the end 28
of page 3). 29
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8. Berry describes exercise equipment consisting of “three 1
essential elements.” The first two “essential elements” are rigid bars or rods 2
of strong material having major cross-sectional dimensions of from one to 3
three inches. (Berry, col. 1, ll. 45-51 and col. 2, ll. 17-24). 4
9. The third “essential element” described by Berry is “an 5
elongated, flexible, but non-elastic element that is capable, when in tension, 6
of holding the rigid elements spaced at any of a plurality of predetermined 7
distances from each other.” (Berry, col. 1, ll. 62-65). 8
10. Berry also teaches that the “non-elastic, flexible element 9
preferably consists of two ribbons or tapes of strong fabric, webbing, plastic 10
or the like which do not stretch and which are superimposed and 11
transversely connected to each other at intervals along their length as by 12
sewing.” (Berry, col. 1, ll. 65-70; see also id., col. 2, ll. 38-43). 13
11. Berry additionally teaches that the distance between 14
consecutive seams “is more than one-half the perimeter of the cross-section 15
of the rigid elements. Thus each rigid element can be inserted between the 16
tapes and held firmly at a specific position along the length of the flexible 17
element and therefore spaced from the other rigid element any distance.” 18
(Berry, col. 1, l. 70 – col. 2, l. 4). 19
12. The Appellant asserts that the loops in the flexible element 15 20
cannot firmly hold the rigid elements 11, 12 if the loops are significantly 21
larger than one-half the perimeter of the cross-section of the rigid elements 22
11, 12. (Reply Br. 11). In the absence of a response from the Examiner, we 23
adopt this assertion as true for purposes of this appeal only. 24
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ANALYSIS 1
First Issue 2
Claim 1 recites the term “muscle tension strap” in the preamble. 3
Where the body of a claim sets forth all of the limitations on a claimed 4
apparatus and the preamble merely states a purpose or intended use of the 5
apparatus, the purpose or intended use does not limit the scope of the claim. 6
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 7
1999). The body of claim 1 fully defines the claimed subject matter and 8
does not refer back to the preamble. The recitation in the preamble that the 9
claimed subject matter refers to a “strap” adds nothing to the limitation 10
requiring “a pair of elongated flat bands affixed together as a plurality of 11
intermediate points.” The term “muscle tension” merely states the purpose 12
of the strap. Therefore, the term “muscle tension strap” does not further 13
limit the subject matter of claim 1. 14
Berry describes exercise equipment including “three essential 15
elements.” (FF 8). The Appellant does not appear to contest the Examiner’s 16
finding (see Ans. 3) that the third “essential element” described by Berry, 17
namely, the flexible element 15, includes all limitations recited in the body 18
of claim 1. The Appellant’s assertion (see Reply Br. 10) that the flexible 19
element 15 cannot be used as a muscle tension strap does not distinguish 20
claim 1 structurally from the flexible element 15. We sustain the rejection 21
of claims 1-3 and 5 under § 102(b) as being anticipated by Berry. 22
23
Second Issue 24
The rejections of claims 1-3 and 5 as being anticipated by Berry; of 25
claims 4, 6 and 7 as being unpatentable over Berry; and of claims 8 and 9 as 26
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being unpatentable over Dean and Berry were entered as new grounds of 1
rejection in Answer. (See Ans. 3). Consequently, the Appellant’s first 2
opportunity to present arguments contesting these rejections was in the 3
Reply Brief. The Examiner has not responded to the Appellant’s arguments. 4
The Examiner concludes that it would have been obvious to provide 5
the flexible member 15 described by Berry in a length of five-to-seven feet 6
“in order to accommodate users of all different sizes.” (Ans. 4). The 7
Appellant offers no persuasive reason why this conclusion might be in error. 8
(See Reply Br. 10-13). We sustain the rejection of claim 4 under § 103(a) as 9
being unpatentable over Berry. 10
The Examiner concludes that it would have been obvious to provide 11
the flexible member 15 described by Berry such that the number of 12
intermediate points at which the pair of elongated flat bands are affixed 13
together is in the range of four to seven “in order to accommodate users of 14
all different sizes.” (Ans. 4). The Examiner provides no further explanation 15
of this reasoning. On the other hand, the Appellant raises legitimate 16
questions as to whether one of ordinary skill in the art would have 17
understood the teachings of Berry to restrict the lengths of the intervals 18
between transverse connections of the flexible element described by Berry. 19
(See App. Br. 11; see also FF 12). This understanding might have 20
discouraged one of ordinary skill in the art from restricting the number of 21
transverse connections within the tapes to a number from four to seven, 22
thereby restricting the overall length of the flexible element to a length 23
insufficient to accommodate users of a significant range of sizes. The 24
Examiner has not responded to these arguments. 25
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Without further explanation, the reasoning articulated in support of 1
the rejection of claims 6 and 7 is not persuasive. We do not sustain the 2
rejection of claims 6 and 7 under § 103(a) as being unpatentable over Berry. 3
4
Third Issue 5
The Examiner concludes that it would have been obvious to modify 6
the engaging means 20 described in Dean by fabricating the engaging means 7
from two bands or webbings connected together with a plurality of 8
transverse seams spaced along the length of the two bands. (See Ans. 5-6). 9
The Examiner does not propose modification of the structure described by 10
Berry. Therefore, the Appellant’s assertion that the proposed modification 11
would have resulted in a structure unfit for Berry’s intended purpose (see 12
Reply Br. 14) does not foreclose the Examiner from concluding that the 13
modification would have been obvious. 14
“[I]f a technique has been used to improve one device, and a person of 15
ordinary skill in the art would recognize that it would improve similar 16
devices in the same way, using the technique is obvious unless its 17
application is beyond his or her skill.” KSR Int’l Co. v. Teleflex, Inc., 550 18
U.S. 398, 417 (2007). Dean’s engaging means 20 and Berry’s flexible 19
element 15 are structurally similar in the sense that both are formed from a 20
flexible, inelastic material and include multiple loops arranged in tandem. 21
(Compare FF 1 with FF 7 and 11). Dean’s engaging means 20 consists of 22
separate loops 14 connected together end-to-end. (FF 6). Berry teaches an 23
improved method for constructing a similar device, namely, forming a 24
plurality of spaced, transverse seams 16 between a pair of ribbons or tapes. 25
(FF 11). It would have been a matter of mere design choice to have 26
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improved Dean’s apparatus 16 by fabricating the loops from a pair of 1
elongated ribbons or tapes in accordance with the improved method taught 2
by Berry. 3
The Appellant does not offer any persuasive reason why one of 4
ordinary skill in the art might not have been capable of implementing the 5
improved method of construction taught by Berry. Neither does the 6
Appellant suggest any persuasive reason why the performance of the 7
improved engaging means might not have been predictable. We sustain the 8
rejection of claims 8 and 9 under § 103(a) as being unpatentable over Dean 9
and Berry. 10
11
Fourth Issue 12
The Examiner’s reasoning in support of the conclusion that the subject 13
matter of claims 1-9 would have been obvious from the teachings of Dean 14
relies on the finding that Dean describes “an elongated flat band 18 (column 15
2 lines 32-35) affixed together at a plurality of intermediate points (column 2 16
lines 32-44) to form a plurality of tandem loops 14.” (Ans. 6-7). As the 17
Appellant points out at page 21 of the Reply Brief, this finding is not 18
supported by the disclosure of Dean. (See FF 4-6). To the contrary, the 19
disclosure is consistent with a method for forming an apparatus16 including 20
engaging means 10 in the form of pockets rather than loops. (FF 5). 21
It is not clear that an apparatus 16 including engaging means 10 in the 22
form of pockets would have suggested to one of ordinary skill in the art 23
reason to fabricate the apparatus from a pair of elongated flat bands. In 24
particular, the Examiner does not appear to have identified any particular 25
element of the apparatus 16 of Dean which might have been duplicated (that 26
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is, joined with another identical part) to form the subject matter of any of 1
claims 1-9. The Examiner articulates no reason independent of the 2
unsupported finding to explain why the subject matter of claims 1-9 might 3
have been obvious from the teachings of Dean. We do not sustain the 4
rejection of claims 1-9 under § 103(a) as being unpatentable over Dean. 5
6
DECISION 7
We AFFIRM the Examiner’s decision rejecting claims 1-5 and 7-9. 8
We REVERSE the Examiner’s decision rejecting claims 6 and 7. 9
No time period for taking any subsequent action in connection with 10
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 11
12
AFFIRMED-IN-PART 13
14
Klh 15