Ex Parte Reisman et al

Patent Trial and Appeal Board

Sep 29, 2017

13135540 (P.T.A.B. Sep. 29, 2017)

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.
13/135,540 07/08/2011 Marty Reisman 8119
7590 10/02/2017
Table Tennis; Nation
EXAMINER
101 Paulding Dr
Chappaqua, NY 10514
CHIU, RALEIGH W
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
10/02/2017 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 MARTY REISMAN, TONY ETTINGER,
STEVE BERGER, and COOPER FALLEN1
Appeal 2017-000220
Application 13/135,540
Technology Center 3700
Before CARLA M. KRIVAK, BRADLEY W. BAUMEISTER, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 4, 6—18, 20, and 21. App. Br. I.2 We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
enter a new ground of rejection for claim 1 under 35 U.S.C. § 103(a).
1 Appellants list Table Tennis Nation LLC as the real party in interest. App.
Br. 2.
2 Rather than repeat the Examiner’s positions and Appellants’ arguments in
their entirety, we refer to the following documents for their respective
details: the Final Action mailed April 27, 2015 (“Final Act.”); the Appeal
Brief filed January 14, 2016 (“App. Br.”); and the Examiner’s Answer
mailed June 22, 2016 (“Ans.”).
Appeal 2017-000220
Application 13/135,540
STATEMENT OF THE CASE
Appellants describe the present invention as being related to “[a]
novel and useful table tennis paddle for use during the play of any racket or
paddle sport but preferably table tennis.” Abstract. Independent claim 1,
reproduced below, is illustrative of the appealed claims:
1. A paddle comprising:
a blade having:
a head,
a handle extending from the head,
a first outer surface on one side of the blade and a
second outer surface on the opposing side of the blade, and
at least one user customized playing surface
coupled to at least the first outer surface or the second
outer surface, wherein the at least one user customized
playing surface is customized to include at least one user
customized design;
wherein the blade comprises a first layer, a second layer
coupled to the first layer, and a third layer coupled to the second
layer.
Claims 1, 2, 4, 6, 9-15, 20, and 21 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Tse (US 4,324,400; issued Apr. 13, 1982),
either alone or alternatively in combination with Khan
(US 2013/0005519 Al; published Jan. 3, 2013). Final Act. 2—6.3
3 In the Answer, the Examiner newly attempts to additionally rely upon
Yoshihara (US 2007/0066425; published March 22, 2007) for teaching it
was well known known that “hitting surfaces for table tennis paddles [were]
replaceable and the end user [was] not restricted to replace the hitting
surface with an identical hitting surface.” Ans. 4. Such untimely reliance on
a reference newly cited for the first time in the Examiner’s Answer
constitutes an improper attempt to supplement the rejection. See In re Hoch,
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Application 13/135,540
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tse, alone or in combination with Khan, and further in
view of Grenadier (US 4,128,239; issued Dec. 5, 1978). Final Act. 5.* * * 4
Claims 16—18 stand finally rejected under 35 U.S.C. 103(a) as being
unpatentable over Tse, alone or in combination with Khan, and further in
view of Li (US 6,461,259 Bl; issued Oct. 8, 2002). Final Act. 6.5
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
FINDINGS AND CONTENTIONS
The Examiner finds that Tse generally teaches all of the limitations of
independent claim 1 except for a user customized playing surface. Final
Act. 2. The Examiner concludes that, notwithstanding the absence of such
an express disclosure, Tse renders claim 1 obvious. Id.
428 F.2d 1341, 1342 n.3 (CCPA 1970)) (“Where a reference is relied on to
support a rejection, whether or not in a ‘minor capacity,’ there would appear
to be no excuse for not positively including the reference in the statement of
the rejection”). Accordingly, we do not consider Yoshihara’s teachings or
any reasoning of the Examiner based thereon.
4 The heading of the rejection specifically lists claims 7 and 8 as being
rejected over the combination of only Tse and Grenadier, without listing the
alternative additional reliance on Khan. Final Act. 5. We understand this
omission to be a clerical oversight.
5 The heading of the rejection specifically lists claims 16—18 as being
rejected over the combination of only Tse and Li, without listing the
alternative additional reliance on Khan. Final Act. 6. We understand this
omission to be a clerical oversight.
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Application 13/135,540
According to the Examiner, Tse discloses that the hitting surface can
be formed either to be pimple-in or pimple-out. Id. at 3. The Examiner also
interprets Tse as teaching that this outer surface is replaceable. Id. The
Examiner then interprets the replacement of the outer, pimpled layer of
Tse’s paddle as corresponding to the claimed customized design, and the
Examiner concludes that it would have been obvious for a user, to replace
the pimpled hitting surface with a customized hitting surface (“the end user
is not restricted to replace the hitting surface [pimpled surface supplied by
the manufacturer] with an identical hitting surface.”). Id. at 3^4.
The Examiner additionally explains that “such a design limitation can
also be considered to be related to printed matter. . . [as it] does not provide
a new and non-obvious functional relationship between the ‘printed matter’
and its substrate.” Id. at 4. The Examiner concludes that, as such, the claim
language is not considered to be limiting. Id. (explaining “with respect to
utility applications, matter relating to ornamentation [that has] no
mechanical function cannot be relied upon to distinguish the claimed
invention from the prior art”).
The Examiner also relies on an alternative theory of obviousness. Id.
For this alternative theory, the Examiner cites Khan for teaching a
customized design on the playing surface of a cricket bat. Id. (citing Kahn
| 56). The Examiner acknowledges that Khan does not constitute prior art
(Ans. 3), but justifies the reliance on Khan because “[References [that] do
not qualify as prior art because they postdate the claimed invention may be
relied upon to show the level of ordinary skill in the art at or around the time
the invention was made.” Id. (citing ex parte Erlich, 22 USPQ 143
(BPAI 1992).
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Application 13/135,540
Appellants assert that Tse nowhere discloses or suggests providing a
user customized playing surface that is customized to include at least one
user customized design. App. Br. 11. In so arguing, Appellants indicate that
they are interpreting the claimed design to be an aesthetic design, as opposed
to an engineering or manufacturing design. Id. (arguing “no reference
including Tse, teaches the idea of allowing users to create their own design
(e.g., a painting, a picture, or any other design created personally by the
user) and coupling that design to the surface of a table tennis paddle or bat”).
However, Appellants do not expressly state that the claimed “user
customized design” is limited to aesthetic designs. Rather, Appellants argue
nothing about a generic pimpled hitting surface is user-
customized. While in Tse the user may choose to replace his
hitting surface with a pimple-in or pimple-out surface, the user
absolutely cannot choose to replace the hitting surface of his
paddle with a design created by the user. Tse’s disclosure of
using either a pimple-in or pimple-out hitting surface cannot
possibly teach, suggest or render obvious a paddle where the user
customizes and creates his own design to be used as the hitting
surface.
Id.
ANALYSIS
We find it unreasonable to interpret Tse’s pimpled surface as
corresponding to the claimed “user customized design.” It is more
reasonable that the term, as used in the claim’s context, is limited to
graphical designs—not structural or functional designs. Appellants’
Specification describes the claimed user customized design as follows:
a graphic or insert member 218 may be inserted into inset
window 216 to provide a graphic or design of the player’s
choosing to paddle 100. Graphic 218 may be inserted into either
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Application 13/135,540
or both gripping members so that & graphic or design may appear
on each side or both sides of paddle 100. Graphic 218 is
preferably customizable. For example, graphic 218 may be any
of the following: a picture, a design, a painting, a symbol, a
graphic, an icon, words, and the like. It should be understood
that graphic 218 may be any type of design without limiting the
scope of the present invention. Moreover, graphic 218 is
preferably replaceable, which allows a user to replace graphic
218 with another graphic at any desired time.
Spec. 14 (emphasis added).
The following passage of the Specification further distinguishes
aesthetic designs from materials having functional properties:
Face 202 and any other replaceable face used with paddle 100
can also be customizable. For example, face 202 may feature
design(s) 504 such as painted designs, pictures, symbols, words,
icons, and the like. Design^s) 504 may be painted on face 202.
However, it should be understood that design(s) 504 may be
screened, printed, coupled via an adhesive, or added by any
other method to face 202, without limiting the scope of the
present invention. Face 202 may comprise any design without
limiting the scope of the present invention. It should also be
understand that face 202 may be constructedfrom any number of
materials without limiting the scope of the present invention.
Such materials may consist of, but are not limited to the
following: rubber, sponge, carbon fiber, sand, diamond dust,
plastic, different grit sandpaper, and the like.
Spec. 18—19 (emphasis added).
To be sure, Appellants’ Specification also uses the term “design”
more broadly in other contexts to include structural or functional designs.
See Spec. 9—10 (“it should be understood and appreciated that all of the
disclosed features and designs can be implemented into any paddle or racket
used for any sport requiring a paddle or racket”) (emphasis added); Spec. 10
(“The paddle of the present invention has a specific design type, which will
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Application 13/135,540
be discussed thoroughly with respect to Figures 1-6 below that makes it
perform differently than other paddles”) (emphasis added); Spec. 14
(“Handle portion 106 and gripping members 212 and (not shown) may be
straight and/or flared. Moreover, handle portion 106 may also feature a
leather wrap or other alternative designs without limiting the scope of the
present invention”) (emphasis added). However, these other, broader usages
are not within the context of the user customized design that is provided on
the outer, playing surface.
Turning to the cited art, Tse discloses that the pimples are not merely
aesthetic, but they instead affect the paddle’s functionality. See Tse col. 1,
11. 15—30 (explaining that the presence of outward pimples affects the speed
and spin imparted upon the ball).
Furthermore, the Examiner’s alternative reliance on Khan does not
cure this deficiency. The Examiner acknowledges that Khan does not
constitute prior art. Ans. 3. The Examiner errs in interpreting the rejection’s
reliance on Khan as being for the limited purpose of showing level of
ordinary skill in the art. The rejection instead relies on Khan for teaching a
limitation missing from Tse—personalizing sports equipment with aesthetic
designs. Id.
For the foregoing reasons, Appellants have persuaded us of error in
the Examiner’s obviousness rejection of independent claim 1. Accordingly,
we do not sustain the Examiner’s rejection of that claim or of independent
claim 20, which similarly recites “at least one user customized playing
surface [that] is customized to include at least one user customized design.”
We likewise do not sustain the obviousness rejection of claims 2, 4, 6, 9-15,
and 21, which depend from independent claim 1.
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Application 13/135,540
With respect to the remaining rejection of dependent claims 7, 8, and
16—18, Grenadier and Li do not cure the deficiency of the obviousness
rejection explained above. For the reasons stated, we likewise do not sustain
these additional obviousness rejections.
NEW GOUND UNDER 37 C.F.R. § 41.50(b)
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
newly reject claim 1 under 35 U.S.C. § 103(a) as being obvious over Tse and
Antonini (US 8,268,426 B2; issued Sept. 18, 2012; PCT filed Mar. 3, 2004).
Tse discloses the claimed layers, as the Examiner has explained in the
Final Action, but Tse does not teach the at least one customized playing
surface, as claimed. Antonini teaches an anti-slip film including an adhesive
means for adhering the film to objects such as the striking surface of ping-
pong paddles. Antonini Abstract; col. 6,11. 30—32; FIG. 8. Antonini further
teaches
[a] label stock 51, which may include graphical and/or textual
indicia or other desired items, is adhered to a lower surface 53 of
plastic film 49 by applying an adhesive layer 55 to an upper
surface 54 of label stock 51. This allows any graphical indicia
on label stock 51 to be visible through silicone elastomer 45 and
plastic film 49. To allow for application of film 43 to a surface,
a second adhesive layer 57 is applied to a lower surface 58 of
label stock 51, and a release liner 59 is applied onto a lower
surface 61 of adhesive layer 57.
Antonini col. 4,1. 66—col. 5,1. 8.
It would have been obvious to one or ordinary skill in the art at the
time of the invention to have adhered Antonini’s graphical-indicia-
containing anti-slip film to the striking surface of Tse’s ping-pong paddle.
One would have been motivated to do so because Antonini expressly states
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Application 13/135,540
that the disclosed anti-slip adhesive is intended to be applied to, inter alia,
the striking surfaces of ping-pong paddles. Antonini col. 6,11. 30—32.
Although we decline to reject the remaining claims pursuant to our
discretionary authority under 37 C.F.R. § 41.50(b), we emphasize that our
decision does not mean that the remaining claims are necessarily patentable.
Rather, we merely leave the patentability determination of these claims to
the Examiner. See MPEP § 1213.02.6
DECISION
The Examiner’s decision rejecting claims 1, 2, 4, 6—18, 20, and 21 is
reversed.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
enter a new ground of rejection for independent claim 1 under 35 U.S.C.
§ 103(a).
Rule 41.50(b) provides that “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.”
Rule 41.50(b) also provides the following:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
6 Although we do not rely upon this reference in issuing our new ground of
rejection, upon any further prosecution, the Examiner may wish to also
consider Pino (US 6,287,221 Bl; issued Sept. 11, 2001). This reference
teaches, for example, that it was known to provide logos and graphics on the
barrel (or striking surface) of baseball bats as far back as the 1940s. Pino
col. 1,11. 17-26.
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Application 13/135,540
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the prosecution will be
remanded to the examiner. The new ground of
rejection is binding upon the examiner unless an
amendment or new Evidence not previously of
Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner
reject the claims, appellant may again appeal to the
Board pursuant to this subpart.
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same Record. The request for rehearing
must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure (MPEP) § 1214.01
(9th Ed., Rev. 9, Nov. 2015).
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).
REVERSED
37 C.F.R, $ 41.50(b)
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