TYR Sport, Inc.

Patent Trials and Appeals Board

Sep 21, 2020

15835285 - (D) (P.T.A.B. Sep. 21, 2020)

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.
15/835,285 12/07/2017 Matthew Vito DiLorenzo TYRSP-049A 4889
7663 7590 09/21/2020
STETINA BRUNDA GARRED & BRUCKER
75 ENTERPRISE, SUITE 250
ALISO VIEJO, CA 92656
EXAMINER
VENNE, DANIEL V
ART UNIT PAPER NUMBER
3617
MAIL DATE DELIVERY MODE
09/21/2020 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 MATTHEW VITO DILORENZO
Appeal 2020-001693
Application 15/835,285
Technology Center 3600
Before DANIEL S. SONG, CHARLES N. GREENHUT,
and BRETT C. MARTIN, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–10, 12–19, and 23. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). The Appellant identifies the real party in interest as
TYR Sport, Inc. Appeal Br. 4.
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Application 15/835,285

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CLAIMED SUBJECT MATTER
The claims are directed to a swim paddle. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A swim paddle system comprising:
a paddle that is substantially planar and rigid having a first
side for receiving a hand of a swimmer and a second side
opposing the first side with a plurality of through holes extending
through the paddle from the first side to the second side, the first
side having a palm region for receiving a palm of the hand and a
peripheral region for receiving a thumb, an index finger, a middle
finger, a ring finger, a little finger, and a wrist of the hand, the
peripheral region being a region with an edge that defines the
outermost extent of the paddle;
wherein at least a portion of the paddle is transparent to
allow at least a portion of the hand to cast a shadow as light
shines through the paddle; and
wherein at least a portion of the edge of the peripheral
region has greater opacity than the at least a portion of the
paddle that is transparent, the at least a portion of the edge of
the peripheral region being provided along the edge such that
the shadow of the hand is framed by a shadow outline of the
paddle as the light shines through the paddle.
Appeal Br. 19, Claims App. (emphasis added).
Independent claims 10 and 19 are substantively similar, but recite that
at least a portion of the paddle is translucent (claim 10), or transparent or
translucent (claim 19). Appeal Br. 19, 22, Claims App.
OPINION
The Examiner rejects claims 1, 3–10, 12–19, and 23 under
35 U.S.C. § 103 as unpatentable over Rives et al. (US 5,651,710, issued July
29, 1997 (“Rives”)). Final Act. 2. The Examiner finds that Rives discloses
a swim paddle substantially as claimed, including at least a portion of the
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Application 15/835,285

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paddle that “can be made of a clear fiber glass composite material but can
also be of any color or combination of colors.” Final Act. 2 (italics
removed); see also Rives, col. 4, ll. 26–37. The Examiner concedes that
Rives fails to disclose, inter alia, “the recited opacity regions,” i.e., the
recited portion of the edge having greater opacity than the
transparent/translucent paddle. Final Act. 3.
However, the Examiner finds that:
any shadow of a user’s hand and … a portion of a paddle edge
that would be cast would be dependent on the particular color or
combination of colors or any pattern of such colors or
combination of such colors which would intrinsically affect
transparency, translucency, and/or opacity for any portion or
edge portion of such paddle, as well as the amount of light
shining through the paddle.
Final Act. 3–4 (italics removed).
Based thereon, the Examiner concludes that the contrasting shadow
feature of the claimed invention would have been obvious because providing
specific opacity at the edge “would have been considered a matter of
preference based on selected clarity and color combination,” and that
provision of patterns or designs along the edge “would have been an obvious
matter of preference to suit aesthetics,” and not an essential feature. Final
Act. 3; see also Ans. 5.
The Appellant argues the independent claims as a group, challenging
the sufficiency of the articulated rejection. See generally, Appeal Br. We
agree with the Appellant. None of the Rives’s disclosure of a transparent
paddle, providing team or supplier logos thereon, or its disclosure of a
paddle of “any color or any combination of colors,” is sufficient to establish
obviousness of Rives’s paddle having a portion of the edge with greater
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opacity “such that the shadow of the hand is framed by a shadow outline of
the paddle as the light shines through the paddle” as claimed. Rives, col. 4,
ll. 26–37. As the Appellant argues, “Rives does not provide any suggestion
whatsoever of the opacity differing depending on the particular location on
the paddle, let alone the specific arrangement” recited in the claims. Appeal
Br. 13.
As noted, the Examiner addresses this deficiency stating that the
recited greater opacity and the particular location thereof are merely “an
obvious matter of preference to suit aesthetics.” Final Act. 3; see also Ans.
5. The Examiner further explains that:
a color or logo pattern which would cause any portion of an edge
of a peripheral region provided along an edge of the paddle to
affect any shadow of a hand being produced or framed by the
shadow outline of the paddle as light shines through the paddle
such that the opacity of such portion of the edge of the paddle
peripheral region is more opaque when compared to any other
portion of the paddle that is more transparent and/or translucent,
would have been recognized by one or ordinary skill in the art.
Ans. 4–5.
We are not persuaded by the Examiner’s explanation and agree with
the Appellant that the rejection is improperly based on a conclusory
assertion that “a person would, on the basis of their personal preferences or
selections,” arrive at the swim paddle as claimed. Appeal Br. 14. As the
Appellant points out, “the Examiner provides no articulated rationale for
why the particular arrangement of differing opacity and resulting shadows
recited in the claims would have been obvious” based on the broad and
general teachings in Rives. Appeal Br. 15. Although it may have been
obvious in view of Rives for a person of ordinary skill to provide a
transparent paddle with a team or supplier logos, and that a portion of the
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logo may wind up being adjacent, or contacting an edge of the paddle based
on the Examiner’s asserted preference to suit aesthetics, it does not follow,
and is highly speculative to conclude, that the shadow of such a logo would
frame the shadow of the hand as required by the claims. See also Reply Br.
5 (“An arbitrarily placed supplier logo, even one touching the edge of the
paddle, would not cast a ‘shadow outline of the paddle’ as further required
by the independent claims.”). As the Specification teaches and the
Appellant argues, the claimed invention allows the swimmer to gauge
positioning of his/her hand by the cast shadow. Appeal Br. 15–16 (citing
Spec. ¶¶ 8, 29, 44; Fig. 5). It is entirely speculative that such a result would
be attained based on the general disclosure of Rives, and the reasoning set
forth by the Examiner is insufficient to demonstrate obviousness.
Therefore, the rejection of independent claims 1, 10, and 19, as well
as dependent claims 3–9, 12–18, and 23, is reversed. The Appellant’s
separate arguments directed to claims 3, 12, and 23 are moot. Appeal Br.
17–18.
CONCLUSION
The Examiner’s rejection is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–10, 12–
19, 23
103 Rives 1, 3–10, 12–
19, 23
REVERSED