Ex Parte Parten

Patent Trial and Appeal Board

Oct 14, 2016

13198497 (P.T.A.B. Oct. 14, 2016)

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.
13/198,497 08/04/2011 Keith Parten 0801-24UA 7908
21704 7590 10/17/2016
Law Offices of Eric Karich
Eric Karich
20 Crestview
Aliso Viejo, CA 92656
EXAMINER
VENNE, DANIEL V
ART UNIT PAPER NUMBER
3617
MAIL DATE DELIVERY MODE
10/17/2016 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 KEITH PARTEN
____________________

Appeal 2014-009023
Application 13/198,497
Technology Center 3600
____________________

Before JILL D. HILL, JEFFREY A. STEPHENS, and
ERIC C. JESCHKE, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Office Action (“Final Act.”) rejecting claims 1–10, which
are all the claims pending in the application. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

1 The real party in interest is identified as Nash Manufacturing, Inc. Br. 1.
Appellant did not provide page numbers on the Brief. For ease of reference,
we have assigned page numbers 1 through 19 to the Brief, including
Appendices.
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Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An inflatable device for towing a rider over a surface via
a tow rope, the inflatable device comprising:
an inflatable bladder having a top portion and a bottom
portion;
a towline attachment device attached to the inflatable
bladder for securing a towline to the inflatable device, the
towline attachment device having a base that is attached to the
inflatable bladder, and an attachment structure that is suitable for
attaching the tow rope; and
a flocking layer bonded directly to at least a part of the top
portion, thereby forming a rider receiving area, such that the rider
can ride on the rider receiving area while the inflatable device is
being towed via the towline attachment device.

Rejections
1. Claim 1 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Coleman et al.2 and Webb.3 Final Act. 2–3.
2. Claim 3 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Coleman, Webb, and Tinsley-Kim.4 Final Act. 3–4.
3. Claims 2 and 4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Coleman, Webb, and Chi-Hung.5 Final Act. 4–5.

2 US 6,746,291 B1, issued June 8, 2004.
3 US 2005/0250630 A1, published Nov. 10, 2005.
4 US 7,464,991 B2, issued Dec. 16, 2008.
5 US 4,807,554, issued Feb. 28, 1989.
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4. Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Coleman, Webb, Chi-Hung, and Dallera et al.6 Final Act.
5.
5. Claims 7–10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Coleman, Webb, Tinsley-Kim, Chi-Hung, and Dallera.
Final Act. 5–7.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments (Br. 7–14). We are not persuaded by Appellant’s arguments. We
adopt as our own the findings and reasons set forth by the Examiner in the
action from which this appeal is taken and set forth in the Answer (see Ans.
3–8). We highlight and address specific arguments and findings for
emphasis as follows.
Appellant argues neither Coleman nor Webb teaches, suggests, or
offers motivation for adding a flocking layer to a towable inflatable device,
as required by claim 1. Br. 7. Appellant argues one skilled in the art of
towed inflatable watercraft would not look to an inflatable exercise chair or
other form of furniture for improvements because the fields are reasonably
considered non-analogous art. Id. Appellant also relies on declarations from
the inventor and six other individuals to assert that Webb is not analogous to
the claimed invention, that the claimed invention is considered highly
inventive by those in the field, and that the claimed invention was not
considered obvious by those in the field. Br. 7–8 (citing declarations).

6 US 3,455,571, issued July 15, 1969.
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We agree with the Examiner that Webb is analogous art. Ans. 3–4.
As noted by the Examiner, prior art is analogous to the claimed invention if
it is reasonably pertinent to the particular problem with which the
application was concerned, even if not in the same field of endeavor. Ans. 4
(citing In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992)). Here, the Examiner
finds Webb “solves a similar problem as appellant in that a soft flocking
layer is provided on a portion of an outer surface of an inflatable seat [12] to
provide a soft surface between a user and plastic material for comfort
purposes for the user.” Ans. 4 (brackets in original). We agree that Webb
would have logically commended itself to the problem of providing for
comfort of the user of an inflatable tube because Webb teaches the outer
surface of an inflatable seat “preferably has flocking (or double-flocking) to
provide a soft intermediary between the user and the plastic.” Webb ¶ 34.
We note Appellant has not addressed this aspect of the analogous art
framework, and the Examiner’s findings in the Answer stand
uncontroverted.
We next address Appellant’s arguments that the submitted
declarations establish that the claimed invention is considered highly
inventive by those in the field, and that the claimed invention was not
considered obvious by those in the field (Br. 7–8). We have considered the
declarations, but we consider them to be of little probative value. We agree
with the Examiner that the declarations provide opinions that the towed
inflatable claimed by Mr. Parten is not obvious, without sufficient facts or
evidence to support the opinions. Ans. 4. “An expert’s opinion on the
ultimate legal conclusion is neither required nor indeed ‘evidence’ at all.”
Mendenhall v. Cedarapids Inc., 5 F.3d 1557, 1574 (Fed. Cir. 1993) (quoting
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Nutrition 21 v. United States, 930 F.2d 867, 871 n.2 (Fed. Cir. 1991)).7 We
consider the declarations for their probative value as to the facts and
opinions they contain in considering anew the issue of obviousness under 35
U.S.C. § 103, carefully evaluating and weighing both the evidence relied
upon by the Examiner and the objective evidence of non-obviousness
provided by Appellant, as discussed below.
Appellant contends that secondary considerations of commercial
success and copying by others support the conclusion of non-obviousness.
Br. 8–9. As to commercial success, Appellant refers (Br. 9) to the
declaration of the inventor, Mr. Parten, which states that “[t]he first year in
the market we sold approximately 5,000 pcs and in the second year we have
sold 10,450 pcs. to date. This is significant because the market for towables
is not growing and we have been able to take business from our competitors
due to our innovation.” Decl. of Keith Parten (“Parten Decl.”), para. 8.
Appellant also states that the market for towed inflatables is relatively small.
Br. 9.
Appellant cites no evidence that the market for towed inflatables is
“relatively small” and does not provide specific information as to the size of
the market. Appellant’s declaration statements regarding unit sales do not
establish whether the numbers sold were a substantial quantity in the
relevant market. Regarding such evidence, the Board has held:
The Appellant’s evidence of gross sales as an indication of
commercial success is weak, at best. The Appellant’s proof of
unit sales does not indicate whether the numbers sold were a

7 In addition, we note the declarations do not state whether or not the
declarants have any interest in the application or relationship to the inventor
or assignee.
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substantial quantity in the relevant market. In re Huang, 100
F.3d 135, 140 (Fed. Cir. 1996) (without evidence that the sales
are a substantial quantity in the relevant market, “bare sales
numbers” are a “weak showing” of commercial success, if any);
In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991)
(“[I]nformation solely on numbers of units sold is insufficient to
establish commercial success.”); Kansas Jack, Inc. v. Kuhn, 719
F.2d 1144, 1150–51 (Fed. Cir. 1983) (“The evidence of
commercial success consisted solely of the number of units sold.
There was no evidence of market share, of growth in market
share, of replacing earlier units sold by others or of dollar
amounts, and no evidence of a nexus between sales and the
merits of the invention. Under such circumstances, consideration
of the totality of the evidence, including that relating to
commercial success, does not require a holding that the invention
would have been nonobvious at the time it was made to one
skilled in the art.”); Sjolund v. Musland, 847 F.2d 1573, 1582
(Fed. Cir. 1988) (“Nor could the jury, from the bare evidence of
units sold and gross receipts, draw the inference that the
popularity of the [sold units] was due to the merits of the
invention.”) (citing Cable Elec. Prods. v. Genmark, Inc., 770
F.2d 1015, 1026–27 (Fed. Cir. 1985) and Kansas Jack, Inc., 719
F.2d at 1150–51).
Ex parte Jellá, 90 USPQ2d 1009, 1017–18 (BPAI 2008) (precedential).
Accordingly, we agree with the Examiner (Ans. 5) that Appellant’s evidence
of commercial success is entitled to little weight.
In addition, even if commercial success had been shown, “that success
is relevant in the obviousness context only if there is proof that the sales
were a direct result of the unique characteristics of the claimed invention—
as opposed to other economic and commercial factors unrelated to the
quality of the patented subject matter.” Huang, 100 F.3d at 140. Even if
Mr. Parten’s declaration implies, without expressly stating, his opinion that
the products were purchased because of the flocking layer, “[t]his merely
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represents the inventor’s opinion as to the purchaser’s reason for buying the
product, and, alone, is insufficient.” Id.8 “Instead, the applicant must
submit some factual evidence that demonstrates the nexus between the sales
and the claimed invention—for example, an affidavit from the purchaser
explaining that the product was purchased due to the claimed features.” Id.
Accordingly, we agree with the Examiner (Ans. 5) that insufficient evidence
is presented to establish a nexus between the claimed invention and the
alleged commercial success. See Huang, 100 F.3d at 140 (“[Appellant]
simply has not carried his burden to prove that a nexus existed between any
commercial success and the novel features claimed in the application.”),
139–40 (“In the ex parte process of examining a patent application,
however, the PTO lacks the means or resources to gather evidence which
supports or refutes the applicant’s assertion that the sales constitute
commercial success. Cf. Ex parte Remark, 15 USPQ2d 1498, 1503 (BPAI
1990) (evidentiary routine of shifting burdens in civil proceedings
inappropriate in ex parte prosecution proceedings because examiner has no
available means for adducing evidence). Consequently, the PTO must rely
upon the applicant to provide hard evidence of commercial success.”).
Appellant also argues at least one competitor has “copied the new
design despite knowing that Mr. Parten has a patent application pending.”
Br. 9. Appellant cites Mr. Parten’s declaration in support of these assertions.
Id. The declaration refers to a product catalog, which includes the statement

8 We note also that Appellant does not provide detailed analysis or evidence
showing that the units sold fall within the scope of any particular claim of
the application. This assertion is at most implied in Mr. Parten’s declaration
statement that “the invention” has enjoyed commercial success due to the
number of “pcs” sold. See Parten Decl., para. 8.
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“Flock top deck for extra comfort” as the second bullet point describing the
“Cyclone 2” product. Parten Decl., para. 7; see also Br. 9 & Evidence App.
As the Examiner points out, the prior art (Webb) shows a flocking
layer on a top surface of an inflatable seat. Ans. 6–7. There is no evidence
that the competitor knew Mr. Parten had a patent application pending or
knew of Mr. Parten’s product, and Appellant’s assertion on this point is
mere attorney argument. Attorney argument cannot take the place of
evidence lacking in the record. Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d
588, 595 (Fed. Cir. 1997). As such, these arguments are entitled to little
probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re
De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
In addition, we agree with the Examiner that “more than the mere fact
of copying is necessary to make that action significant because copying can
be attributable to other factors.” Ans. 7; see also Cable Elec. Prods., Inc. v.
Genmark, Inc., 770 F.2d 1015, 1028 (Fed. Cir. 1985) (“Rather than
supporting a conclusion of obviousness, copying could have occurred out of
a general lack of concern for patent property, in which case it weighs neither
for nor against the nonobviousness of a specific patent.”). We also note that
the existence of the Cyclone 2 product with a flock top deck is not sufficient
to establish copying. “Not every competing product that arguably falls
within the scope of a patent is evidence of copying. Otherwise every
infringement suit would automatically confirm the nonobviousness of the
patent. Rather, copying requires the replication of a specific product.” Iron
Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004).
Replication “may be demonstrated either through internal documents; direct
evidence such as disassembling a patented prototype, photographing its
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features, and using the photograph as a blueprint to build a virtually identical
replica; or access to, and substantial similarity to, the patented product (as
opposed to the patent).” Id. (citations omitted). Appellant does not provide
persuasive evidence that Appellant’s specific product was replicated.
Accordingly, we agree with the Examiner (Ans. 5) that Appellant’s evidence
of copying should be given little weight.
Appellant also argues the industry standard was to use neoprene to
increase rider comfort, and that this standard teaches away from the claimed
flocking layer. Br. 10–11.9 Each declarant states that the use of neoprene
“has become such a standard construction that those skilled in the art have
not had an incentive to look for other alternative methods to provide for the
comfort of the rider.” E.g., Decl. of Kevin Banks, para. 2.
The Federal Circuit has made clear that if the prior art does not
suggest that a proposed modification was unlikely to work, the art does not
teach away from that modification. See Baxter Int’l, Inc. v. McGaw, Inc.,
149 F.3d 1321, 1328 (Fed. Cir. 1998) (“Baxter apparently misapprehends
what it means to ‘teach away’ from a patented invention. ‘[I]n general, a
reference will teach away if it suggests that the line of development flowing
from the reference’s disclosure is unlikely to be productive of the result
sought by the applicant.’” (alteration in original) (quoting In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994))). There is nothing in the use of neoprene as
an outer layer to provide rider comfort to suggest that a flocking layer will

9 The heading to this section of Appellant’s brief states that “A Long-Felt
Need Has Existed In the Industry Which Was Not Met Until The Present
Invention.” Br. 10 (emphasis omitted). The arguments, however, do not
mention a long-felt need and relate instead to teaching away. See Br. 10–11.
Thus, we address the teaching away arguments.
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not also work to provide rider comfort. As the Examiner finds, Webb
teaches providing a flocking layer to provide comfort for the user of an
inflatable seat. Final Act. 2; Ans. 3–4 (citing Webb ¶ 34). Webb, therefore,
provides motivation for modifying Coleman to add a flocking layer, and, as
discussed above, we agree with the Examiner that one of ordinary skill in the
art would have looked to Webb as another way to provide rider comfort on
the inflatable seat in Coleman. See In re ICON Health & Fitness, Inc., 496
F.3d 1374, 1380 (Fed. Cir. 2007) (“Indeed, while perhaps not dispositive of
the issue, the finding that [the prior art reference], by addressing a similar
problem, provides analogous art to [Appellant’s] application goes a long
way towards demonstrating a reason to combine the two references.”).
Having now considered all the evidence presented by Appellant
against obviousness and weighing all the evidence anew, it is our conclusion
that the evidence for obviousness outweighs the evidence against
obviousness. Based on our review and consideration of all of the evidence
before us, we conclude that the subject matter of claim 1 would have been
obvious to one having ordinary skill in the art at the time the invention was
made in view of the prior art.
Appellant argues the rejections of claims 2–10 are in error for the
same reasons argued in support of claim 1. Br. 13–14. Thus, these claims
fall with claim 1. As such, we sustain the Examiner’s rejections under 35
U.S.C. § 103(a) of: (1) claim 1 as obvious over Coleman and Webb,
(2) claim 3 as obvious over Coleman, Webb, and Tinsley-Kim, (3) claims 2
and 4 as obvious over Coleman, Webb, and Chi-Hung, (4) claims 5 and 6 as
obvious over Coleman, Webb, Chi-Hung, and Dallera, and (5) claims 7–10
as obvious over Coleman, Webb, Tinsley-Kim, Chi-Hung, and Dallera.
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DECISION
We affirm the Examiner’s decision to reject claims 1–10.
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