Ex Parte Price

Patent Trial and Appeal Board

Sep 20, 2018

14219464 (P.T.A.B. Sep. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/219,464 03/19/2014
34082 7590 09/24/2018
ZARLEY LAW FIRM P.L.C.
CAPITAL SQUARE
400 LOCUST, SUITE 200
DES MOINES, IA 50309-2350
FIRST NAMED INVENTOR
Nathan J. Price
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P07638US1 5013
EXAMINER
THANH, LOAN H
ART UNIT PAPER NUMBER
3764
NOTIFICATION DATE DELIVERY MODE
09/24/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
kconrad@zarleylaw.com
crasmussen@zarleylaw.com
emarty@zarleylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NATHAN J. PRICE
Appeal2017-010329
Application 14/219,464
Technology Center 3700
Before DANIELS. SONG, LISA M. GUIJT, and BRENT M. DOUGAL,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection 1 of claims 1-3 and 5-19. 2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
1 Appeal is taken from the Final Office Action dated August 19, 2016
("Final Act."), as supplemented by the Advisory Action dated November 17,
2016 ("Adv. Act.").
2 Claim 4 is cancelled (see Amendment dated Sept. 4, 2015), and claim 20
is cancelled (see Response After Final dated Oct. 19, 2016).
Appeal2017-010329
Application 14/219,464
STATEMENT OF THE CASE
Claims 1, 12, and 1 7 are the independent claims on appeal. Claim 1,
reproduced below, is exemplary of the subject matter on appeal.
1. An exercise support, comprising:
a base having a top surface, a bottom surface, a
first end, and a second end;
a narrowed section of the base at the second end
for providing head support;
a neck support directly connected to the top
surface of the narrowed section;
a convex support member attached to the bottom
surface of the base and having an apex; and
a pair of ridges aligned and extending transversely
across the top surface of the base and are separated by an
open area.
THE REJECTIONS 3
I. Claims 1, 2, 5, 7-12, and 16-19 stand rejected under 35 U.S.C.
§ 102(a)(l) as anticipated by Brinkerhoff (US 7,451,507 B2; issued Nov. 18,
2008).
II. Claims 12 and 14--16 stand rejected under 35 U.S.C.
§ 102(a)(l) as anticipated by Chiu (US 5,833,590; issued Nov. 10, 1998).
3 The Examiner's objections to claims 1, 5, 9, and 16 were "overcome"
pursuant to the Advisory Action (Adv. Act. 2; see also Final Act. 2), and
although the Examiner has not formally withdrawn the objections, we
understand that the Examiner is treating the objections as withdrawn. In any
event, these objections are petitionable, not appealable, matters. The
Examiner's objection to claim 18 was withdrawn pursuant to the Decision
on Petition dated July 5, 2017 (see also Final Act. 2; Appeal Br. 2; Ans. 2;
Reply Br. 2). Likewise, the Examiner's rejection of claim 16 under
35 U.S.C. § 112(b) was also "overcome," and we treat the rejection as
withdrawn. Adv. Act. 2.
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Application 14/219,464
III. Claims 1, 3, 7-10, 17, and 18 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Chen (US 6,971,977 B 1; published Dec. 6,
2005), Shifferaw (US 9,050,492 B2; issued June 9, 2015), and Bruder (US
1,904,039; issued Apr. 18, 1933),
IV. Claim 6 stands rejected under 35 U.S.C. § 103 as unpatentable
over Chen, Shifferaw, Bruder, and Yang (US 6,398,699 B 1; issued June 4,
2002).
V. Claim 13 stands rejected under 35 U.S.C. § 103 as unpatentable
over Chiu and Lee (US 2009/0011911 Al; Jan. 8, 2009).
ANALYSIS
Rejection I
Independent claims 1, 12, and 17
Regarding the independent claims, the Examiner finds that
Brinkerhoff discloses an exercise support comprising a base (i.e., patient
support 20) with a narrowed section at the second end of the base for
providing a head support, as claimed. Final Act. 3-6 ( citing Brinkerhoff,
Figs. 4a, 13, 14); see also Ans. 9-10 (explaining that although Brinkerhoffs
patient support 20 is not identified in Figure 14, patient support 20 is
identified in Figure 13, and because Figure 14 is an exploded view of Figure
13, one would understand that Brinkerhoff s patient support 20 is also
illustrated, albeit unlabeled, in Figure 14). The Examiner also finds that
Brinkerhoff discloses a neck support (i.e., neck pad 84), a convex support
member (i.e., wheels), and a pair of ridges (right and left sidewalls 38, 40 of
pillow 34) separated by an open area (i.e., central region 42 of pillow 34).
Final Act. 3-6.
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Application 14/219,464
Figures 13 and 14 of Brinkerhoff are reproduced below.
FIG. 13
Figure 13 depicts "a patient support having linkages for independently
varying a height of a patient's head and neck," and Figure 14 depicts "an
exploded view of the patient support of FIG. 13, showing the head and neck
height adjustment linkages." Brinkerhoff 4:62---64, 66---67; see also id. at 6:5
(defining "a patient support 20"), 9:21-24 (disclosing, with reference to
Figure 14, "linkages 88, 92 supporting the neck pad 84 and pillow 34").
Thus, Figures 13 and 14 depict at least a base comprised of three sections
and also a fourth narrower section with a neck support (neck pad 84) and a
head support (pillow 34). Ans. 10.
Independent claims 1 and 17, and dependent claims 2, 5, 7-11, 18, and 19
Appellant argues, inter alia, that claims 1 and 17 require a pair of
ridges extending transversely across the top surface of the base ( claim 1 ), or
transversely across the base ( claim 1 7), and that "Brinkerhoff does not
disclose these elements," because "sidewalls 38 and 40 do not extend
transversely, but rather extend longitudinally," across (the top surface of) the
base. Appeal Br. 4. The Examiner responds that "the ridges of Brinkerhoff
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can be considered to extend transversely across the top surface of the base
because Appellant has not defined in the claim that the ridges extend
transversely relative to a certain direction or dimension." Ans. 11.
Appellant replies that "when considered properly as a whole, it would be
clear to one of ordinary skill that the ridges required by Appellant's
disclosure sufficiently defines the direction as transverse, i.e., extending
across and the dimension as on the top which is shown in each Figure."
Reply Br. 3 (referencing Appellant's annotated Figure 5 of Brinkerhoff).
We are persuaded by Appellant's argument. An ordinary meaning of
the claim term "transverse," consistent with the Specification, is "extending
or lying across or in a crosswise direction ... ---opposed to longitudinal,"
wherein "longitudinal" means of or relating to the lengthwise direction."
WEBSTER'S THIRD NEW INT'L DICTIONARY 1333, 2431 (1993) (emphasis
added). Brinkerhoff's Figure 3A is reproduced below.
Figure 3A depicts a perspective view of patient pillow 34, with right and left
sidewalls 38, 40. See Brinkerhoff 4:36-39, 7:31-32. The top surface of
Brinkerhoff' s base, which is meant to support a patient, has a rectangular
shape, with a lengthwise (i.e., longitudinal) direction, and Brinkerhoff' s
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Application 14/219,464
sidewalls 38, 40 extend in the longitudinal, not transverse direction, of the
base. Thus, a preponderance of the evidence fails to support the Examiner's
finding that Brinkerhoff's sidewalls 38, 40 extend transversely across
Brinkerhoff' s base, as claimed.
Accordingly, we do not sustain the Examiner's rejection of
independent claims 1 and 17, and claims 2, 5, 7-11, 18, and 19 depending
therefrom, under 35 U.S.C. § 102(a)(l) as anticipated by Brinkerhoff.
Independent claim 12 and dependent claim 16
Regarding independent claim 12, Appellant argues, inter alia, that
"[ w ]ithin the four comers of Brinkerhoff there is no disclosure that the
wheels are configured in such a way as to require an individual to balance
and engage the individual's posterior musculature," as claimed. Appeal Br.
4. The Examiner responds that with respect to Brinkerhoff's "convex
support members," as determined by the Examiner-namely, Brinkerhoff's
wheels, as set forth supra, "a user ... would be fully capable of balancing
their weight over an apex of the support member engaging the individual's
posterior musculature." Ans. 11. Appellant replies with new arguments that
"only with improper hindsight has the Examiner found reason that one of
ordinary skill would look to the small moveable wheels of Brinkerhoff as a
convex support member," and that because the Brinkerhoff's wheels are
circles, the wheels are "not convex support members." Reply Br. 3.
We decline to consider Appellant's arguments presented for the first
time in Appellant's Reply Brief, because Appellant has failed to provide
good cause as to why such arguments could not have been presented in the
Appeal Brief. See 37 C.F.R. § 4I.41(b)(2) (2012) ("Any argument raised in
the reply brief which was not raised in the appeal brief, or is not responsive
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Application 14/219,464
to an argument raised in the examiner's answer, ... will not be considered
by the Board for purposes of the present appeal, unless good cause is
shown."); Ex parte Borden, 93 USPQ2d 1473 (BPAI 2010) (informative).
Notwithstanding, claim 12 recites, in relevant part, "a convex support
member ... configured to require the individual to balance their weight over
an apex of the support member engaging the individual's posterior
musculature." Appeal Br. 10 (Claims App.). A preponderance of evidence
fails to support the Examiner's finding that Brinkerhoff s wheels, which are
depicted as wheels such as those on a patient gurney, are capable of
providing an apex over which an individual is required to balance their
weight.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 12, and claim 16 depending therefrom, under 35 U.S.C.
§ 102(a)(l) as anticipated by Brinkerhoff.
Re} ection II
Regarding independent claim 12, the Examiner relies on Chiu for
disclosing a base (seat frame 2, back frame unit 3) having upper back and
head sections, a neck support ( cylindrical massaging wheels 32), and a
convex support member ( arched guide tubes 31 ), as claimed. Final Act. 6-7
(citing Chiu, Figs. 2, 5); see also Chiu 1:59---62, 2:10, 12-14.
First, Appellant argues that the Examiner's rejection "is so
uninformative that the Applicant is unclear as to the basis for the rejection[]
and is left to guess what elements in the prior art the Examiner contends
meet the claimed limitations." Appeal Br. 3. However, Appellant's
discussion is solely limited to Brinkerhoff and the prior rejections. Id.
Appellant does not provide any substantive arguments to support their
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position, or provide any analysis of the cited textual portions of the cited
references upon which the Examiner relied in the rejections. Therefore,
Appellant's argument does not persuade us of Examiner error.
Second, Appellant argues that "there is no such disclosure made by
Chiu," of "'a convex support ... configured to require the individual to
balance their weight over an apex of the support member engaging the
individual's posterior musculature," as claimed. Appeal Br. 4. In particular,
Appellant submits that "the rotational half circle [ of Chiu] does not provide
support of the weight of the individual, but rather the back frame and the
seated portion support the weight of the individual." Reply Br. 4. The
Examiner responds that Chiu discloses that "a user ... would be fully
capable of balancing their weight over an apex of the support member
engaging the individual's posterior musculature." Ans. 11.
As set forth supra, claim 12 requires, in relevant part, "a convex
support member ... configured to require the individual to balance their
weight over an apex of the support member engaging the individual's
posterior musculature." The term "support" is used within the claim term
"convex support member" and connotes a function for the convex member:
to support, or bear some of the weight of the user. The Examiner has relied
on Chiu' s arched guide tubes 31 as the claimed convex support member, and
Chiu discloses, with respect to Figure 2, that "[ w ]hen the back frame unit 3
is turned backwardly downwards, the free end B of the seat frame unit 2 is
lifted to a higher place above the elevation of the guide rollers 14, therefore
the user's back-bone is bent backwards and stretched." Chiu 2:22-28. A
preponderance of the evidence supports the Examiner's finding that arched
guide tubes 31 are configured to require the individual to balance their
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Application 14/219,464
weight ( as the individual operates the device to tum back frame unit 3
backwardly downwards, as disclosed), over an apex of the arched guide
tubes 31 engaging the individual's posterior musculature. Further, we are
not persuaded by Appellant's argument that arched guide tubes do not
support, at least to some extent, the weight of the individual via guide roller
14 and base frame unit 1. In that regard, we observe that the arched guide
tubes 31 support the back frame unit 3 via its connection thereto. Chiu, Fig.
2.
Appellant also argues that the structural components of claim 12
"create unique and distinctive structural differences between Appellant's
disclosure and the prior art," including "an individual, an apex, a support
member, and an individual's posterior musculature," as depicted in Figure 4
of the Specification. Reply Br. 5. To the extent this argument is also made
in the Appeal Brief, we do not find it persuasive, because Appellant's
argument is conclusory and fails to specify how the Examiner's findings are
m error.
Accordingly, we sustain the Examiner's rejection of independent
claim 12 under 35 U.S.C. § 102(a)(l) as anticipated by Chiu. Appellant
chose not to present separate arguments for the patentability of claims 14--
16, which depend from independent claim 12 and, therefore, for essentially
the same reasons as stated supra with respect to independent claim 12, we
also sustain the Examiner's rejection of claims 14--16. Appeal Br. 2-7;
Reply Br. 2-5.
Rejection III
Regarding independent claim 1, the Examiner finds that Chen
discloses a base (i.e., frame 10, backrest assembly 30, seat 50) having a
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Application 14/219,464
narrow section at the second ("head") end, and a convex support (i.e., two
rockers 12), as claimed. Final Act. 8 (citing Chen, Figs. 1, 2); see also Chen
2:33-35. The Examiner determines that Chen fails to disclose a neck
support and a pair of ridges, as claimed, and relies on Shifferaw for teaching
a neck support (i.e., neck cushion 59) directly connected to a top surface of
the narrowed section of a base, and on Bruder for teaching a pair of ridges
(i.e., raised portion lh) aligned and extending transversely across the top
surface of the base and separated by an open area (i.e., depression lg) for
engaging the shoulders. Id. (citing Shifferaw 3:9-11; Bruder, Figs. 2, 3); see
also Bruder 3 :44--51. The Examiner reasons that it would have been
obvious "to modify the device of Chen to comprise a neck support and a pair
of ridges as taught by Shiff eraw and Bruder for the purpose of providing
support to the neck and shoulders during exercise." Id. The Examiner relies
on similar findings and reasoning with respect to independent claim 1 7. See
Final Act. 9 (citing Shifferaw for disclosing a neck section (i.e., neck
cushion 59) ).
Appellant argues that "Shifferaw discloses a head support and not a
neck support as required." Appeal Br. 5. However, the Examiner correctly
responds that Shifferaw expressly discloses that pad 59 may be a neck or
headrest cushion and, therefore, we are not apprised of error in the
Examiner's reliance on Shifferaw for disclosing a neck support, as claimed.
Ans. 12; see also Shifferaw 3:9-10 (disclosing that "[p]ad 59 includes ... a
neck or headrest cushion 59").
Appellant also argues that "the Examiner has provided only a
conclusory statement that it would be obvious to combine [Chen, Shifferaw,
and Bruder] for the purpose of 'providing support to the neck and shoulder
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during exercise.'" Appeal Br. 6. In support, Appellant submits that "the
modification of [Chen] with the ridges of Bruder or the head rest of
Shifferaw would obstruct the operation of ... Chen," by "covering the
elastic cords 90 and interrupting the flow of exercise." Id. at 7 ( citing Chen,
Figs. 4, 5). Appellant also submits that "Figures 4---6 of Chen demonstrate
that the individual using the device is not positioned in a static position that
would benefit from the advantages suggested by Bruder," and, therefore,
"the conclusion reached by the Examiner is not supported by the actual
disclosures." Id.
The Examiner responds that Shifferaw discloses that "the neck
support supports the neck and head of a person using the machine" and
Bruder depicts that "the ridges support a user's shoulders during use." Ans.
12. The Examiner also determines that
[t]he use of neck supports is notoriously well known in the art,
and the placement of a neck support at the end of the backrest
either between cord connectors (32) or beyond the cord
connectors would not obstruct the use of the elastic cords (90).
The addition of ridges for providing shoulder support also
would not obstruct the use of the elastic cords (90), as the
ridges would be placed on the backrest of Chen in a position to
engage the shoulders of the user.
Id. at 13. The Examiner further determines that
support (31) in Chen is a backrest upon which the user presses
his or her back ... and providing the backrest with a neck
support for providing neck support and ridges for providing
shoulder support would be beneficial to a user such as in the
exercise of Figure 4 which appears that it would be
uncomfortable to a user.
Id. (citing Chen 2:58---64, 3:47-50, Fig. 4).
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Appellant replies that "the Examiner inserts a rationale of [the
Examiner's] own creation" and improperly relies on hindsight. Reply Br. 5.
We are not persuaded by Appellant's arguments. Indeed, as
determined by the Examiner, providing both Shifferaw' s neck support and
Bruder's pair of ridges to position and/or cushion the individual on the
device during exercise, would have been helpful when, for example,
performing the exercise depicted in Chen's Figure 4, and would have been
an obvious modification/variation of the device of Chen.
Accordingly, we sustain the Examiner's rejection of independent
claims 1 and 17, under 35 U.S.C. § 103 as unpatentable over Chen,
Shifferaw, and Bruder. Appellant chose not to present separate arguments
for the patentability of claims 3, 7-10, and 18 depending from independent
claims 1 and 1 7 and, therefore, for essentially the same reasons set forth
supra, we also sustain the Examiner's rejections of claims 3, 7-10, and 18.
Appeal Br. 2-7; Reply Br. 2-5.
Rejection IV
Appellant chose not to present separate arguments for the patentability
of dependent claim 6, which depends from independent claim 1 and,
therefore, for essentially the same reasons stated with respect to claim 1 and
Rejection III, we also sustain the Examiner's rejection of claim 6. Appeal
Br. 2-7; Reply Br. 2-5.
Rejection V
Appellant chose not to present separate arguments for the patentability
of dependent claim 13, which depends from independent claim 12 and,
therefore, for essentially the same reasons stated with respect to claim 12
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and Rejection II, we also sustain the Examiner's rejection of claim 13.
Appeal Br. 2-7; Reply Br. 2-5.
DECISION
The Examiner's decision rejecting claims 1, 2, 5, 7-12, and 16-19
under 35 U.S.C. § 102(a)(l) as anticipated by Brinkerhoff is REVERSED.
The Examiner's decision rejection claims 12 and 14--16 under
35 U.S.C. § 102(a)(l) as anticipated by Chiu is AFFIRMED.
The Examiner's decision rejecting claims 1, 3, 7-10, 17, and 18 under
35 U.S.C. § 103 as unpatentable over Chen, Shifferaw, and Bruder is
AFFIRMED.
The Examiner's decision rejecting claim 6 under 35 U.S.C. § 103 as
unpatentable over Chen, Shifferaw, Bruder, and Yang is AFFIRMED.
The Examiner's decision rejection claim 13 under 35 U.S.C.
§ 102(a)(l) as unpatentable over Chiu and Lee 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)(l )(iv).
AFFIRMED-IN-PART
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