Anthony Lam

Patent Trials and Appeals BoardSep 13, 2021

2021001311 (P.T.A.B. Sep. 13, 2021)

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. 13/814,943 02/08/2013 Anthony Lam 6327 90347 7590 09/13/2021 Anthony Lam 3926 Mance St-Hubert, QUEBEC J4T 2K3 CANADA EXAMINER PASSANITI, SEBASTIANO ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 09/13/2021 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): anthony@iceworld.ca PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ANTHONY LAM ____________ Appeal 2021-001311 Application 13/814,943 Technology Center 3700 ____________ Before JENNIFER D. BAHR, STEFAN STAICOVICI, and BRETT C. MARTIN, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE. Appellant1,2 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Office Action (dated June 28, 2019, hereinafter “Final 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The sole inventor, Anthony Lam, is identified as the real party in interest in Appellant’s second Appeal Brief (filed Nov. 28, 2019, hereinafter “Appeal Br.”). Appeal Br. 1. 2 Appellant’s first Appeal Brief, filed Oct. 30, 2019, was determined to be non-compliant for not listing all of the pending claims. See Notice of Non- Compliant Appeal Brief, dated Nov. 4, 2019. As the second Appeal Brief includes the same arguments as the first Appeal Brief, for the purpose of this appeal we shall refer to Appellant’s second Appeal Brief, which also includes a correct version of the pending claims. Appeal 2021-001311 Application 13/814,943 2 Act.”) rejecting claims 1–7.3,4 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. INVENTION Appellant’s invention is directed to a hand-operated device for simulating movements and passes of a real hockey goalie. Spec. 2. Claim 1, the sole independent claim, is representative of the claimed invention and reads as follows: 1. A hand-operated apparatus with elongated members operated by a user to defend a goal or target from a forthcoming ball or puck by bending or pivoting at least two of said elongated members, the hand-operated apparatus comprising: a. at least two finger holders representing a lower body portion, b. at least one finger holder of said at least two finger holders for holding or gripping to an index finger and middle finger together as one member, c. at least another finger holder of said finger holders for holding or gripping to a ring finger and little finger together as one member, 3 Claims 8–18 and 26–28 are canceled and claims 19–25 are withdrawn. Appeal Br. 7–9. 4 Claims 6 and 7 are indicated by the Examiner as being allowable if rewritten to overcome the indefiniteness rejection and to include all of the limitations of the base claim and any intervening claim. See Final Act. 7. Appeal 2021-001311 Application 13/814,943 3 d. a first elongated member extending from below a bending line located below said finger holder holding said index and middle finger, e. a second elongated member extending from below a bending line located below said finger holder holding said ring and little finger, f. wherein said finger holder holding said index and middle finger, and said finger holder holding said ring and little finger, are adapted to direct said elongated members to angle away from said finger holders with the use of pressure against said surface to cover and defend significant open spaces of said goal or target. Appeal Br. 4. REJECTIONS I. The Examiner rejects claims 1–7 under 35 U.S.C. § 112(b) as being indefinite. II. The Examiner rejects claims 1–5 under 35 U.S.C. § 102(b) as being anticipated by Jefferson.5 ANALYSIS Rejection I As Appellant does not address the rejection, Appellant has waived any argument of error, and, thus, we summarily sustain the indefiniteness rejection of claims 1–7. See In re Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002) (holding that the Board did not err in sustaining a rejection under 35 5 Jefferson, US 2,884,644, issued May 5, 1959. Appeal 2021-001311 Application 13/814,943 4 U.S.C. § 112, second paragraph, when the applicant failed to contest the rejection on appeal). Rejection II Claims 1 and 3–5 Appellant does not present arguments for the patentability of claims 3–5 apart from claim 1. See Appeal Br. 3–4. Therefore, in accordance with 37 C.F.R. § 41.37(c)(1)(iv), we select claim 1 as the representative claim to decide the appeal of the rejection of these claims, with claims 3–5 standing or falling with claim 1. The Examiner finds Jefferson discloses a hand-operated device as claimed. See Final Act. 4. As illustrated below, the Examiner provides an annotated Figure 1 of Jefferson to show the claimed features: The Examiner’s annotated Figure 1 of Jefferson illustrates a finger holder for holding index and middle fingers, a finger holder for holding ring and little fingers, a finger holder for thumb, a bending line, and first and second elongated members extending below respective finger holders. Id. at 3. The Appeal 2021-001311 Application 13/814,943 5 Examiner determines that Jefferson’s “hand-operated apparatus . . . is clearly capable of defending a goal or target . . . from a forthcoming ball or puck by bending or pivoting [the] at least two elongated members.” Id. at 4. In response, Appellant argues that “Jefferson [does not] mention about elongated members, or bending of those unmentioned elongated members, nor . . . about tabletop recreational activities.” Appeal Br. 3. According to Appellant, “Jefferson’s device ha[s] no use of elongated members or bending of elongated members for the reason that the intended use is washing, polishing and cleaning.” Id. We are not persuaded by Appellant’s arguments because a claim directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Here, we agree with the Examiner that “Jefferson includes all the claimed structure necessary to perform the function ‘operated by a user to defend a goal or target from a forthcoming ball or puck’.” Examiner’s Answer (dated Jan. 31, 2020, hereinafter “Ans.”) 7. Although we appreciate that Jefferson’s device does not constitute “a table sport equipment” (see Appeal Br. 3), it is not necessary for the prior art to serve the same purpose as that disclosed in Appellant’s Specification as a new use for an otherwise old product cannot render a claim to the product patentable. In re Zierden, 411 F.2d 1325, 1328 (CCPA 1969). Here, Appellant does not persuasively explain why Jefferson’s device cannot “defend a goal or target from a forthcoming ball or puck,” as noted supra, or is unsuitable for such a use. Appeal 2021-001311 Application 13/814,943 6 We further agree with the Examiner’s position that the elongated members illustrated above in the Examiner’s annotated Figure 1 of Jefferson would “bend or pivot as the sponge construction . . . provide[s] the necessary bounce back.” Ans. 7 (emphasis added). In a similar manner, Appellant’s elongated members 305L, 305R are “adapted to” bend or pivot via “flexible of bendable materials.” Spec. 11, ll. 31–32. In other words, like Appellant’s elongated members 305L, 305R, which are “adapted to” bend or pivot via “flexible of bendable materials,” Jefferson’s elongated members are “made to” bend or pivot via a sponge construction, i.e., “plastic sponge.” See Jefferson, col. 1, ll. 26–27. In conclusion, for the foregoing reasons, we sustain the rejection under 35 U.S.C. § 102(b) of independent claim 1 as anticipated by Jefferson. Claims 3–5 fall with claim 1. Claim 2 In regards to the rejection of claim 2, the Examiner finds that the sponge construction portions of Jefferson located “between the fin[g]er holders and the elongated members provide the necessary bounce back required by the claim.” Final Act. 4–5. Appellant’s arguments in response are not persuasive (see Appeal Br. 3–4) as such arguments merely reiterate the claim limitations and do not present separate arguments for patentability of the claim. See 37 C.F.R. § 41.37(c)(1)(iv) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”); see also In re Lovin, 652 F.3d 1349 (Fed. Cir. 2011) (“we hold that the Board reasonably interpreted Rule 41.37 to require more substantive Appeal 2021-001311 Application 13/814,943 7 arguments in an appeal brief than a mere recitation of the claim elements and naked assertion that the corresponding elements were not found in the prior art.”). In particular, Appellant does not adequately explain why the Examiner’s findings discussed above are in error. Accordingly, we also sustain the rejection under 35 U.S.C. § 102(b) of claim 2 as anticipated by Jefferson. CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1–7 112(b) Indefiniteness 1–7 1–5 102(b) Jefferson 1–5 Overall Outcome 1–7 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)(1)(iv). AFFIRMED