10958190 (P.T.A.B. Nov. 17, 2014)

Ex Parte Mylrea et al

Patent Trial and Appeal BoardNov 17, 2014

10958190 (P.T.A.B. Nov. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MINDY MYLREA and JEFF TULLER ____________________ Appeal 2012-008793 Application 10/958,190 Technology Center 3700 ____________________ Before: MICHAEL L. HOELTER, LYNNE H. BROWNE, and JAMES J. MAYBERRY, Administrative Patent Judges. MAYBERRY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 8– 18, 26, 27, and 32–39. An oral hearing was conducted on October 30, 2014. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. CLAIMED SUBJECT MATTER The claims are directed to a sliding exercise device. Spec. 1, ll. 10– 12. Claims 8 and 27 are independent claims. Appeal Br. 32–35, Claims App. Claim 8, reproduced below, is illustrative of the claimed subject matter: Appeal 2012-008793 Application 10/958,190 2 8. An exercise device for exercising a human body on an exercise floor, said device comprising: a sliding element no more than 12 inches in any diameter and having a body portion adapted for receiving a limb of said human body, said sliding element having an upper surface, a lower surface, a lower surface center point in the center of said lower surface, and an upper surface center point in the center of said upper surface, said upper and lower surfaces being on opposite sides of said sliding element, said lower surface having an upturned circumferential rim about the entire periphery of said lower surface, the entirety of said lower surface from said center point to said peripheral rim, being smooth, said lower surface along the majority of any diameter from rim to rim through said center point being flat and parallel to said exercise floor when said exercise device is at rest on said exercise floor, at least a portion of said upper surface being textured with said textured portion of said upper surface being located to permit said exercise device to be stably gripped substantially without slipping by a portion of the bottom surface of an adult human foot while said foot is causing said sliding element to slide on said exercise floor. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Kovac Getgey Dallavecchia Sneddon Bloeme US 4,205,484 US 4,915,661 US 5,209,490 US 5,540,610 US 6,887,119 B2 June 3, 1980 Apr. 10, 1990 May 11, 1993 July 30, 1996 May 3, 2005 REJECTIONS Claims 8–18, 26, 27, and 32–39 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Ans. 5. Appeal 2012-008793 Application 10/958,190 3 Claims 8–18, 26, 27, and 32–39 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Id. at 6. Claims 8–11, 26, 27, 32, 33, 37, and 38 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kovac and Bloeme. Id. at 7. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Kovac, Bloeme, and Getgey. Id. at 10. Claims 13–16 and 34–36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kovac, Bloeme, and Dallavecchia. Id. at 10. Claim 17 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Kovac, Bloeme, Dallavecchia, and Sneddon. Id. at 11. ANALYSIS Written Description Rejection Claims 8 and 27 Both independent claims 8 and 27 recite, in part, “said lower surface along the majority of any diameter1 from rim to rim through said center point being flat and parallel to said exercise floor when said exercise device is at rest on said exercise floor.” Appeal Br. 32, 34, Claims App. (emphasis added). The Examiner finds that claims 8 and 27, and their dependent claims, fail to satisfy the written description requirement of 35 U.S.C. § 112, second paragraph, because Appellants’ Specification does not support the subject matter of the above-quoted claim element. Ans. 5. The Examiner’s contention is apparently that the entire breadth of the claimed subject matter is not disclosed in Appellants’ Specification as originally filed. See id. at 6. The Examiner construes the term “majority” to mean “from 51%-100%.” Id. The Examiner’s claim construction is overly 1 Claim 27 recites “its diameter” instead of “any diameter.” Appeal 2012-008793 Application 10/958,190 4 narrow. An ordinary and customary definition of “majority” is “a number that is greater than half of a total,”2 rather than the express range cited by the Examiner. The Examiner concedes that Figure 39 shows a “partial length” of the diameter that is greater than half of the total of the length. Ans. 12. Thus, the Specification provides support for this limitation. For this reason, we do not sustain the Examiner’s rejection of claims 8–18, 26, 27, and 32–39 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Indefiniteness Rejection Claims 8 and 27 Both independent claims 8 and 27 recite, in part, “said lower surface along the majority of any diameter from rim to rim through said center point being flat and parallel to said exercise floor when said exercise device is at rest on said exercise floor.” Appeal Br. 32, 34, Claims App. These claims also require the lower surface of the sliding disc to have an upturned circumferential rim. Id. The Examiner finds that claims 8 and 27, and their dependent claims, are indefinite. Ans. 6. The Examiner contends that the limitation requiring the lower surface along the majority of any diameter from rim to rim through said center point of the surface be flat and parallel to the exercise floor “is improper in describing the instant invention” because claims 8 and 27 require a portion of the lower surface to include curved portions and this requirement is inconsistent with a lower surface where, for example, 99 percent of a rim-to-rim diameter is flat. Id. at 7 (emphasis added). 2 Merriam-Webster.com © 2014, accessed at http://www.merriam- webster.com/dictionary/majority (last visited Nov. 14, 2014). Appeal 2012-008793 Application 10/958,190 5 Again, the rejection is based on an incorrect claim construction as discussed supra. Furthermore, the test for definiteness under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted); see also Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2128 (2014). The Examiner does not explain why one of ordinary skill in the art would not understand what is being claimed, even if they were to employ the incorrect claim construction proffered by the Examiner. Thus, the Examiner errs in rejecting independent claims 8 and 27 as indefinite. For the above reasons, we do not sustain the Examiner’s rejection of claims 8–18, 26, 27, and 32–39 under 35 U.S.C. § 112, second paragraph, as indefinite. Obviousness Rejection over Kovac and Bloeme Claims 8 and 27 Independent claim 8 recites, in part, “at least a portion of said upper surface being textured.” Appeal Br. 32, Claims App. Similarly, independent claim 27 recites, in part, “at least a portion of said up-facing side being textured.” Id. at 34, Claims App. The Examiner finds that Kovac discloses much of the subject matter of independent claims 8 and 27, including the texturing limitation. Ans. 7–8. Specifically, the Examiner finds that the lips3 on the curved portion of Kovac’s disc satisfy the texture 3 The figures of Kovac depict a single additional lip inset from the rim. See Kovac, Figs. 3–5. Kovac further discloses that those skilled in the art “may choose to modify the shapes of the lip or add additional lips to the inner Appeal 2012-008793 Application 10/958,190 6 limitation of claims 8 and 27. Id. at 8. In so finding, the Examiner construes the term “texture” to mean “the visual or tactile surface characteristics and appearance of something.” Id. at 15 (referencing MERRIAM WEBSTER’S COLLEGIATE DICT. (10th ed. 1997)). Appellants argue that the lips on Kovac’s disc are too large to constitute texture. Appeal Br. 11. In support of their position, Appellants cite to a dictionary definition that is identical to the Examiner’s construction of the term “texture.” See id. at 12. Similarly, Appellants’ Declarant contends that texture is “a surface that has been manipulated in some way so that it is not smooth.” Appeal Br., Ex. 3 ¶ 9. The Declarant further contends that this proffered definition is narrower that the Examiner’s definition—the same definition offered by Appellants. Id. ¶ 9. We are instructed that “claims under examination before the [U.S. Patent and Trademark Office] are given their broadest reasonable interpretation consistent with the specification.” In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1148 (Fed. Cir. 2012) (citation omitted). Here, we must determine whether the lips of Kovac’s disc represent a visual or tactile surface characteristic and as such, represent a surface that has been manipulated and is not smooth. Appellants argue that the Examiner’s “interpretation of the lip of [Kovac] to be texturing” is too broad a construction and is not consistent with their Specification. Appeal Br. 14. Appellants reference a single embodiment with the texture in the form of round indentations. Id. Appellants also reference a portion of the Specification that indicates that the textured portion is preferably a roughened portion. Id. Although the claims are interpreted in light of the specification, limitations from the specification concave surface in order to provide more air pockets.” Id. at col. 4, ll. 7–10 (emphasis added). Appeal 2012-008793 Application 10/958,190 7 are not read into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Appellants further argue that Kovac teaches away from texturing a surface. Appeal Br. 17. Appellants argue that Kovac discloses that “all of the surfaces of the disc should be smooth.” Id. (citing Kovac, col. 2, ll. 1–6). “A reference may be said to teach away when a person of ordinary skill, upon reading the reference[] . . . would be led in a direction divergent from the path that was taken by the applicant.’” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)); see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that, to teach away, the prior art must “criticize, discredit, or otherwise discourage the solution claimed.”). The Examiner states that Kovac “does not disclose that the top and bottom surfaces of the device [are] completely smooth but rather the device has an overall smooth surface.” Ans. 18 referencing Kovac, col. 2, ll. 4–6. In short, the Examiner finds “that there may be some texturing on the device” and that Kovac expressly teaches adding lips to its device. Id. at 17–18. Appellants argue that secondary considerations, such as commercial success and copying, overcome any conclusion that claims 8 and 27 are obvious. Appeal Br. 18–22. The Examiner acknowledges that the claimed invention has enjoyed commercial success. Ans. 19. Nevertheless, the Examiner contends that the indicia of nonobviousness provided by Appellants “is not sufficient to outweigh the evidence of obviousness,” given the “strong case of obviousness.” Id. Cf., Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (“Leapfrog had provided substantial evidence of commercial success, praise, and long-felt need, but that, given the strength of the prima facie obviousness showing, Appeal 2012-008793 Application 10/958,190 8 the evidence on secondary considerations was inadequate to overcome a final conclusion that claim 25 would have been obvious.”). Factual inquiries for an obviousness determination include secondary considerations based on evaluation and crediting of objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Notwithstanding what the teachings of the prior art would have suggested to one with ordinary skill in the art at the time of the invention of the claims of the application under appeal, the totality of the evidence submitted, including objective evidence of nonobviousness, may lead to a conclusion that the claimed invention would not have been obvious to one with ordinary skill in the art. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). Secondary considerations may include any of the following: long-felt but unsolved needs, failure of others, unexpected results, commercial success, copying, licensing, and praise. Graham, 383 U.S. at 17. We adopt the Examiner’s finding that the claimed invention has enjoyed commercial success. Ans. 19. The success is attributed to a device commensurate with the scope of the claims, demonstrating the requisite nexus. See Appeal Br. 19–20. We further find that the record includes evidence of copying. See id. at 21. For example, at least two commercial entities approached Appellants’ assignee to licensee the device of claims 8 and 27, but no agreement was reached. See id. at Ex. 1 ¶ 18; Ex. 2 ¶ 24. In one case, the entity tried an alternative that did not include an upturned rim or a textured upper surface, which failed. Id. at Ex. 1 ¶¶ 19, 21. In both cases, the entities subsequently developed a product substantially similar to the device of claims 8 and 27. Id. at Ex. 1 ¶ 20; Ex. 3 ¶ 24. “Our [reviewing court’s] case law holds that copying requires evidence of efforts to replicate a specific product, which may be demonstrated through internal company Appeal 2012-008793 Application 10/958,190 9 documents, direct evidence such as disassembling a patented prototype, photographing its features, and using the photograph as a blueprint to build a replica, or access to the patented product combined with substantial similarity to the patented product.” Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010). Here, Appellants provide declaratory evidence that at least two commercial entities had access to the patented product (and, indeed, negotiated for the product) and later developed a substantially similar product. See Appeal Br., Ex. 1 ¶ 18–21; Ex. 2 ¶ 23–24. This evidence supports a finding of copying and also the Examiner’s acknowledgement of commercial success and evidence of secondary considerations. Ans. 19. We do not agree with the Examiner’s characterization of the case under appeal as constituting a “strong case of obviousness.” See Ans. 19. The Kovac and Bloeme references are broadly related to the exercise arts, but are directed to flying discs, not sliding discs. See generally Kovac, Bloeme. Further, the disclosure of texture and texturing in Kovac as lips used to modify the aerodynamic nature of its flying disc does not rise to the level of constituting texturing in the narrower sense disclosed in Appellants’ Specification. The Examiner also provides no reasoning to support his characterization that the case under appeal is a “strong case.” In light of the Examiner’s finding of commercial success and our further finding of copying, the weight of the indicia of nonobviousness overcomes the less-than-strong conclusion that claims 8 and 27 are obvious over Kovac and Bloeme. Accordingly, we do not sustain the Examiner’s rejection of independent claims 8 and 27 over Kovac and Bloeme. We also do not sustain the Examiner’s rejection of claims 9–17 and 26 and claims Appeal 2012-008793 Application 10/958,190 10 32–38, which depend, directly or indirectly, from claims 8 and 27, respectively.4 DECISION For the above reasons, we reverse the Examiner’s rejections of claims 8–18, 26, 27, and 32–39. REVERSED hh 4 Claims 12–17 were rejected over Kovac, Bloeme, and additional prior art references.