Ex Parte O et al

Patent Trial and Appeal Board

Mar 25, 2013

10592164 (P.T.A.B. Mar. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/592,164 06/01/2007 Clayton O'Shea O01.006 2693
28062 7590 03/25/2013
BUCKLEY, MASCHOFF & TALWALKAR LLC
50 LOCUST AVENUE
NEW CANAAN, CT 06840
EXAMINER
THANH, LOAN H
ART UNIT PAPER NUMBER
3764
MAIL DATE DELIVERY MODE
03/25/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CLAYTON O’SHEA
and DAVID ST. GEORGE
____________________

Appeal 2010-011855
Application 10/592,164
Technology Center 3700
____________________

Before STEVEN D. A. McCARTHY, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge HOFFMAN.

Opinion Dissenting filed by Administrative Patent Judge McCARTHY.
HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-011855
Application 10/592,164

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 1, 6, and 71. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The rejected claims are directed to a skipping rope, sometimes
referred to as a jump rope (Spec. 1-2). Claim 1 is the sole independent
claim.
EXEMPLARY CLAIM
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A skipping rope comprising:
a length of rope; and
a pair of L-shaped handles, each handle
having one end of an elongate member connected
to an end of the rope and a free end, wherein the
end of each handle connected to the rope
comprises a first section including a socket section
adjacent to the rope and a waist section narrower
than the adjacent socket section and the free end of
each handle comprises a second section longer
than the first section of the elongate member, the
first section and the second sections of each handle
fixedly attached and angled relative one to the
other by at least 85° and about 90°, the waist
section at the end of the handle connected to the
rope having a circular cross-section.

1 Our decision will refer to Appellants’ Specification (“Spec.,” filed Sep. 8,
2006) and Appeal Brief (“Br.,” filed Apr. 19, 2010), as well as the
Examiner’s Answer (“Ans.,” mailed May 26, 2010).
Appeal 2010-011855
Application 10/592,164

3
THE REJECTIONS
The Examiner rejects the claims as follows:
Claims 1 and 6 are rejected under 35 U.S.C. § 103(a) as unpatentable
over O’Shea (US 2001/0011054 A1, pub. Aug. 2, 2001); and
Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
O’Shea in view of Cook (US 6,595,900 B1, iss. Jul. 22, 2003).
ANALYSIS
Independent claim 1 is rejected as unpatentable over O’Shea.
Appellants argue this rejection is in error, because O’Shea does not disclose
the claimed limitations of “a pair of L-shaped handles, each handle having
one end of an elongate member connected to an end of the rope and a free
end” recited in independent claim 1. Specifically, Appellants argue that
O’Shea instead shows “handles . . . [that] are explicitly and exclusively
disclosed as being ‘T-shaped’” (Br. 5). We agree with the Examiner,
however, that with respect to each handle,
O’Shea’s handle is in fact T-shaped;
however, this T-shaped handle comprises an L-
shaped handle portion within it. The fact that
overall it is T -shaped does not negate the presence
of the L-shape within the handle. The term
‘comprising’ is open-ended and does not exclude
additional unrecited elements such as the other
section of the T -shaped handle
(Ans. 8). Thus, Appellants arguments on this point are not persuasive, and
we find that O’Shea discloses the claimed L-shaped handles.
Appellants also argue that the Examiner does not provide any
motivation to modify the T-shaped handles of O’Shea to provide the claimed
L-shaped handles of independent claim 1 (Br. 7). As the Examiner points
Appeal 2010-011855
Application 10/592,164

4
out, however, “the Examiner has not attempted to make such a modification.
The Examiner has only stated that the T-shaped handle [of O’Shea]
comprises an L-shape within it” (Ans. 8). Thus, Appellants’ arguments on
this point are not persuasive.
Finally, Appellants argue the rejection is in error because O’Shea does
not disclose the limitations of “the free end of each handle comprises a
second section longer than the first section [that includes the socket and the
waist section]” as recited in independent claim 1 (Br. 8). As the Examiner
finds, however,
Firstly, the dimensions of the O’Shea handle
are not given and it is possible that [the] second
section [of the handle which includes ball 5] is
longer than the first section [of the handle which
includes transverse portion 4]. Secondly, the
claim only recites that the first section includes a
“socket section ... and a waist section,” but does
not claim that the first section includes the entire
socket and entire waist sections. There are an
infinite number of sections [that may be defined
which include] the socket and waist, and if the first
section is construed as being only a small portion
of the socket and waist, then the second section of
the handle is likely to be longer than the first
section. Lastly, the relative size of the sections is a
matter of design choice. As admitted by
Appellants at Paragraph [0012], “the precise size
and shape of the handle are matters of design.”
Appellants have not provided any showing of
criticality or unexpected results with respect to the
second section being longer than the first section.
Additionally, this configuration would be readily
determined by routine experimentation in an effort
to produce optimum results for users with hands
that vary in size
Appeal 2010-011855
Application 10/592,164

5
(Ans. 9). Thus, Appellants’ argument is not persuasive on this point, as we
find that because of the broad recitations of first and second sections,
O’Shea discloses a handle with a second section longer than a first section
that includes a socket and a waist section, and that such a modification
would be obvious even if not expressly shown in O’Shea.
For the foregoing reasons, we sustain the rejection of independent
claim 1 under 35 U.S.C. § 103(a).
Appellants do not submit separate arguments regarding dependent
claims 6 and 7, but instead argue these claims are allowable for the same
reasons as independent claim 1 from which they depend. Thus, we sustain
the rejections of claims 6 and 7 under 35 U.S.C. § 103(a) for the same
reasons that we sustain the rejection of claim 1.
DECISION
The Examiner’s rejection of claims 1 and 6 under 35 U.S.C. § 103(a)
as unpatentable over O’Shea is AFFIRMED; and
The Examiner’s rejection of claim 7 under 35 U.S.C. § 103(a) as
unpatentable over O’Shea in view of Cook 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

Appeal 2010-011855
Application 10/592,164

6
McCARTHY, Administrative Patent Judge, dissenting.
As my colleagues correctly observe, claim 1 is the sole independent
claim on appeal. Claim 1 recites a “skipping rope comprising: a length of
rope; and a pair of L-shaped handles.” O’Shea describes a skipping rope
including a length of rope and a pair of T-shaped handles. (See e.g., O’Shea,
para. 0009). Despite finding that the skipping rope described by O’Shea has
T-shaped handles (Ans. 8), the Examiner reasons that:
this T-shaped handle comprises an L-shaped
handle portion within it. The fact that overall it is
T-shaped does not negate the presence of the L-
shape within the handle. The term “comprising” is
open-ended and does not exclude additional
unrecited elements such as the other section of the
T-shaped handle (see MPEP 2111.03 [R-3]). As
noted by Appellants, adding elements to claim 1
could result in, for example, a skipping rope
comprising (1) a length of rope; (2) a pair of L-
shaped handles; and (3) some other device or
component. That other device or component could
be the other branch of the handle that forms the T-
shape.
(Id.) This reasoning is based on an unreasonably broad interpretation of
claim 1.
Neither the Examiner nor my colleagues interpret the term “L-shaped
handles” in and of itself as being sufficiently broad to encompass T-shaped
handles. Such a reading would be inconsistent with the Appellants’
Specification. The Specification criticizes a skipping rope with a T-shaped
handle described in a prior art publication, stating that
some find the manipulation of a T-shaped handle
uncomfortable and specifically some people do not
like the feel of the shaft passing between their
fingers. The present invention seeks to alleviate
Appeal 2010-011855
Application 10/592,164

7
these disadvantages and provide skipping ropes
with handles which, while they differ from
numerous prior art suggestions, retain the ease of
use of the skipping ropes described in the
publication noted above.
(Spec. 2). This passage implies that the Appellants intended the “present
invention” as recited in claim 1 to exclude skipping ropes having T-shaped
handles. More specifically, the passage implies that the Appellants intended
the term “L-shaped handles” as used in claim 1 to exclude T-shaped handles.
The transitional term “comprising” indicates that a claim is
sufficiently broad to encompass structure satisfying all limitations recited in
the claim, even if the structure also includes additional elements not recited
in the claim. The transitional term “comprising” does not indicate that
express limitations of the claim may be overlooked when determining
whether the subject matter of the claim would have been obvious, however.
See, e.g., Spectrum Int’l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1380 (Fed.
Cir. 1998)(“’Comprising’ is not a weasel word with which to abrogate claim
limitations.”); cf. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970)(“All
words in a claim must be considered in judging the patentability of that
claim against the prior art.”).
Claim 1 is expressly limited to a skipping rope having a pair of L-
shaped handles. The transitional term “comprising” implies that the scope
of claim 1 may be sufficiently broad to include skipping ropes having L-
shaped handles and other structure besides. Nevertheless, claim 1 remains
limited to skipping ropes having L-shaped handles despite the presence of
the transitional term “comprising.” The skipping rope described by O’Shea
does not have L-shaped handles, since the term “L-shaped handles” excludes
T-shaped handles. The Examiner has not articulated any reason why one of
Appeal 2010-011855
Application 10/592,164

8
ordinary skill in the art might have had reason to modify the skipping rope
described by O’Shea to include L-shaped handles; to the contrary, the
Examiner states that such a modification has not been attempted. (See Ans.
8). Therefore, the Examiner has not shown that the subject matter of
independent claim 1 or of dependent claim 6 would have been obvious from
the teachings of O’Shea.
The Examiner cites Cook as teaching “a skipping rope device
comprising a handle having external contours configured to match the
contours of a hand.” (Ans. 7, citing Cook, col. 2, ll. 49-52 and fig. 4). This
teaching does not remedy the deficiency in the description of O’Shea as
applied to claim 1. Therefore, the Examiner has not shown that the subject
matter of claim 7 would have been obvious from the combined teachings of
O’Shea and Cook. I would not sustain the rejection of claims 1 and 6 under
§ 103(a) as being unpatentable over O’Shea; or the rejection of claim 7
under § 103(a) as being unpatentable over O'Shea and Cook.

JRG