Ex Parte Whitall et al

Board of Patent Appeals and Interferences

Apr 1, 2010

11353033 - (D) (B.P.A.I. Apr. 1, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JILL WHITALL,
SANDY MCCOMBE-WALLER, and
DAVID GRANT
____________________

Appeal 2009-008913
Application 11/353,033
Technology Center 3700
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Decided: April 1, 2010
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Before: LINDA E. HORNER, WILLIAM F. PATE III, and
FRED A. SILVERBERG, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-20. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2009-008913
Application 11/353,033

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The claims are directed to a bilateral arm trainer and method of use.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A device for bilateral upper extremity training,
comprising:

a base;

a pair of sliding tracks attached to the base; and

a pair of handles slidably movable along the sliding
tracks;
wherein the handles are unyoked and have minimal
resistance for movement along the tracks.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Spector
McCormack
Rawls
US 4,099,713
US 4,781,372
US 6,514,180 B1
Jul. 11, 1978
Nov. 1, 1988
Feb. 4, 2003

REJECTIONS
Claims 1-5, 12-16, 18-20 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by McCormack. Ans. 3.
Claims 6-11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over McCormack and Rawls. Ans. 5.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over McCormack and Spector. Ans. 5.
Appeal 2009-008913
Application 11/353,033

3
OPINION
Appellants contend that the Examiner’s proposed definition of the
term “handles,” in claims 1 and 16, as any structure that can be gripped, is
unreasonably broad. App. Br. 4-5; Ans. 9. We agree.
A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference. Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628,
631 (Fed. Cir. 1987). A determination of anticipation involves two steps.
First is construing the claim, a question of law, followed by a comparison of
the construed claim to the prior art. Key Pharmaceuticals v. Hercon Labs.
Corp., 161 F.3d 709, 714 (Fed. Cir. 1998) (citations omitted). “[T]he PTO
applies to the verbiage of the proposed claims the broadest reasonable
meaning of the words in their ordinary usage as they would be understood
by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in applicant’s specification.” In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
Firstly, McCormack’s stirrups are not gripped by the feet of the user
as the Examiner suggests. Ans. 10. Straps 46 and 47A retain the user’s foot
in the stirrup. Col. 3, ll. 39-40. Secondly, the claims and the Specification
make clear that the invention relates to a device for upper extremity training.
It is therefore unreasonable to construe “handles” as a structure that can be
grasped by the foot. The claim and Specification make it clear that “handles”
mean structures grasped by the hand. The fact that a user could potentially
grip McCormack’s stirrups with the hands is not, without more, sufficient to
render them “handles.” Whether a prior art structure meets a claim limitation
Appeal 2009-008913
Application 11/353,033

4
is not determined based upon every conceivable use of that prior art
structure. The relevant question is whether one of ordinary skill in the art
would understand the claim term, read in light of the Specification, as
including that prior art structure. One of ordinary skill in the art would
understand that the claim term “handles” includes McCormack’s hand rests
64. Col. 6, ll. 11-12; figs. 1, 4. There is no indication in McCormack that the
stirrups 40 or straps 46, 47A are adequate for grasping. One of ordinary skill
in the art would not understand the term “handles” as including
McCormack’s stirrups 40 and straps 46. 47A. Contra Ans. 3.
Since the Examiner relied upon an unreasonably broad interpretation
of the term “handles,” in determining that McCormack anticipates claims 1
and 16, we are constrained to reverse the Examiner’s rejection of claims 1
and 16 along with dependent claims 2-5, 12-15 and 18-20. Since the
Examiner relied upon an improper claim construction, and neither Rawls nor
Spector, as applied by the Examiner, cures this deficiency, the Examiner’s
rejections under 35 U.S.C. § 103(a) must also be reversed.

DECISION
For the above reasons, the Examiner’s rejections of claims 1-20 are
reversed.
REVERSED

Vsh

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