Ex Parte Smith

Patent Trial and Appeal Board

Mar 23, 2018

13624258 (P.T.A.B. Mar. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/624,258 09/21/2012 Brent Smith
8685 7590 03/26/2018
DERGOSITS & NOAH LLP
One Embarcadero Center
Suite 350
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.
1496.02NPR 6000
EXAMINER
LEE, JOSHUA S
SAN FRANCISCO, CA 94111 ART UNIT PAPER NUMBER
3764
MAILDATE DELIVERY MODE
03/26/2018 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 BRENT SMITH
Appeal 2016-004514
Application 13/624,258
Technology Center 3700
Before KENNETH G. SCHOPPER, BRADLEY B. BA YAT, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-15. We have jurisdiction under 35 U.S.C.
§ 6(b ). The Appellant and his representative appeared for oral hearing in
this appeal on March 19, 2018.
We REVERSE.
1 Throughout this decision, we refer to the Appellant's Appeal Brief
("Appeal Br.," filed Sept. 30, 2015), Reply Brief ("Reply Br.," filed Mar. 28,
2016), and Specification ("Spec.," filed Sept. 21, 2012), and to the
Examiner's Answer ("Ans.," mailed Jan. 28, 2016) and Final Office Action
("Final Act.," mailed Dec. 30, 2014).
2 According to the Appellant, the real party of interest is "inventor and
applicant Brent Smith." Appeal Br. 1.
Appeal 2016-004514
Application 13/624,258
STATEMENT OF THE CASE
The Appellant's invention "relates generally to the field of exercise,
and more particularly, to an exercise device and methods for its use" (Spec.
i-f 1 ), and in particular to an exercise ball (id. i-f 12).
Claims 1 and 7 are the independent claims on appeal. Claim 1
(Appeal Br. 10 (Claims App.)) is illustrative of the subject matter on appeal
and is reproduced below:
1. An exercise device, comprising:
a solid metal spherical structure having a rigid
surface, a hand-opening in the surface, a cavity in the
approximate center of the spherical structure, and a
passageway coupling the hand-opening and the cavity,
wherein the hand-opening is relatively small and sized to
accommodate insertion of a hand and forearm to permit
only limited movement thereof during exercises,
wherein the passageway increases in size toward
the cavity, and wherein the cavity is relatively larger and
sized to more freely accommodate the hand; and
a rigid handle laterally positioned in the cavity and
affixed in the approximate center of the spherical
structure.
REJECTIONS
Claims 1-3, 7, 9, 13, and 15 stand rejected underpre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Ballou (US 113,966, iss. Apr. 25, 1871)
and Fechner (US 3, 185,476, iss. May 25, 1985). Final Act. 2.
Claim 4 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Ballou, Fechner, and CAO (US 2008/0214368 Al, pub.
Sept. 4, 2008). Id. at 7.
2
Appeal 2016-004514
Application 13/624,258
Claims 5 and 6 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Ballou, Fechner, CAO, and Cen (US 8,485,948 B2,
iss. July 16, 2013). Id.
Claims 8, 10-12, and 14 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Ballou, Fechner, and Vayntraub
(US 7,585,262 Bl, iss. Sept. 8, 2009). Id. at 8
ANALYSIS
We agree with the Appellant's contention that the Examiner has not
adequately shown that Ballou teaches or renders obvious the device
comprising a solid spherical structure, as required by independent claim 1.
See Appeal Br. 5---6. Independent claim 7 recites a similar limitation. 3
Appeal Br. 10 (Claims App.).
The Examiner relies on columns one and two and Figures 1 and 2 of
Ballou to disclose the claimed exercise device having a solid spherical
structure. Final Act. 2. Although the Examiner also finds that Fechner
teaches a passageway into a cavity of a spherical structure (Final Act. 3), the
Examiner is clear that Fechner is relied upon only for its teaching regarding
the passageway and cavity (Ans. 16; see also Final Act. 3).
The Examiner finds the ordinary and customary meaning of
"spherical" is "relating to or dealing with a sphere or its properties" and,
thus, Ballou's device "comprises a spherical structure because a majority
portion of each bell is spherical [in that] ... each bell is related to a sphere
or has properties of a sphere." Ans. 15 (quoting Merriam-Webster
3 The Appellant groups claim 7 with claim 1. Appeal Br. 5.
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Appeal 2016-004514
Application I3/624,258
dictionary). The Examiner further finds that because the claims do not
reqmre
Id.
a 'perfect' sphere as evidenced by the protrusion shown around
the opening 20 in Fig. IA and throughout Figs[.] 2-6 [of the
Appellant's specification,] ... it would be reasonable to interpret
that the spherical structure as claimed can comprise a portion of
a sphere protruding or elongating off to one side.
The Appellant's Specification provides for a ball "having a spherical
shape" and a circular opening formed on the surface of the ball structure, as
illustrated in Figures IA and IB. Spec. i-fi-f I2-I3. Independent claims I
and 7 similarly require an apparatus comprising a spherical structure with a
hand-opening in the surface. Figures IA and IB of the Specification are
reproduced below:
Figures I A and I B illustrating the spherical shape of the device.
Merriam-Webster Dictionary defines "spherical" as "having the form
of a sphere or of one of its segments" or "relating to or dealing with a sphere
or its properties." Merriam-Webster Dictionary, https://www.merriam-
webster.com/ dictionary/spherical. A "sphere" is defined, relative to the use
here, as "a globular body" or "a solid that is bounded by a surface consisting
of all points at a given distance from a point constituting its center."
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Appeal 2016-004514
Application 13/624,258
Merriam-Webster Dictionary, https://www.merriam-
webster.com/dictionary/sphere. Thus, we find that the ordinary and
customary meaning of spherical as would be understood by one of ordinary
skill in the art in the context of the present Specification is having the form
of or relating to a globular body or solid that is bounded by a surface
consisting of all points at a given distance from a point constituting its
center.
Ballou discloses an exercise device of dumb-bells whereby "the lower
part or body of the bell is made spherical or spheroidal in form, and is
elongated or extended upon one side, as shown in the drawing," each bell is
"hollow to receive the hand, the opening leading into said [hollow] cavity
being made in the elongated or extended part." Ballou, col. 1---col. 2.
Figure 2 of Ballou is reproduced below.
Figure 2 of Ballou showing a bell.
We agree with the Appellant that Ballou discloses a device that is
"glove-shaped with a first portion that is partially spherical in shape
contiguous with a second portion that is elongated." Appeal Br. 5. As such,
Ballou's device is not globular-shaped or a solid bounded by a surface
consisting of all points at a given distance from a point constituting its
center. Thus, the Examiner has not adequately shown that Ballou's bell
discloses or renders obvious the claimed spherical shaped structure.
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Appeal 2016-004514
Application 13/624,258
Based on the foregoing, we do not sustain the Examiner's rejection of
independent claims 1 and 7 under 35 U.S.C. § 103.
We also do not sustain the rejections under 35 U.S.C. § 103 of
dependent claims 2-6 and 8-15, which rely on the same inadequately
supported finding.
DECISION
The Examiner's rejections of claims 1-15 under 35 U.S.C. § 103(a)
are REVERSED.
REVERSED
6