Duane Frederick. Jourdeans

Patent Trials and Appeals BoardAug 27, 2019

14340116 - (D) (P.T.A.B. Aug. 27, 2019)

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. 14/340,116 07/24/2014 DUANE FREDERICK JOURDEANS 04673.0001USU1 1039 23552 7590 08/27/2019 MERCHANT & GOULD P.C. P.O. BOX 2903 MINNEAPOLIS, MN 55402-0903 EXAMINER ARYANPOUR, MITRA ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 08/27/2019 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): USPTO23552@merchantgould.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DUANE FREDERICK JOURDEANS ____________________ Appeal 2018-000325 Application 14/340,116 Technology Center 3700 ____________________ Before CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner’s Decision rejecting claims 1–8, 10–13, and 21–33. An oral hearing was held on August 8, 2019. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2018-000325 Application 14/340,116 2 CLAIMED SUBJECT MATTER Claims 1, 10, and 21 are independent. Claims 2–8, 11–13, and 22–33 depend from claim 1, 10, or 21. Claim 21 is reproduced below: 21. A basketball training device comprising: (a) a plurality of elongated flexible members comprising plastic, (i) wherein the flexible members generally maintain a linear shape; (b) a base with a ground engaging lower surface, and an upper mounting device for holding the plurality of elongated flexible members at the respective proximal ends of the flexible members in a parallel manner, (i) the ground engaging lower surface having a friction promoting surface to engage the ground; (ii) the base having a height measured from the ground; (c) wherein the upper mounting devices forms a holder for holding the plurality of elongated flexible members at the respective proximal ends of the flexible members; (d) wherein the holder is removable from a remainder of the base; (e) wherein the flexible members extend generally perpendicularly to a center portion of the lower surface; (f) wherein the distal ends of the flexible members are free to move independently and bend relative to the proximal ends; (g) wherein the proximal ends of the flexible members are connected in a bundle; (h) wherein the flexible members extend from the base, (i) wherein the portions of the flexible members between the base and the distal ends define a circular cross- section; Appeal 2018-000325 Application 14/340,116 3 (i) wherein the distal end of each of the flexible members is exposed and is free to move and bend when the flexible members are moved by a basketball player or a basketball held by the basketball player; (j) wherein each of the flexible members is between 1 to 4 millimeters in diameter; (k) wherein each of the flexible members is between 15 and 55 centimeters long and longer than the base height; (l) wherein the plurality of flexible members includes at least three (3) flexible members. REJECTIONS 1. Claims 1–8, 10,1 and 21–31 are rejected under 35 U.S.C. § 112(a), as failing to comply with the written description requirement. 2. Claims 1 and 2 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Jenney (US 5,890,985, issued Apr. 6, 1999). 3. Claims 1–8, 10, 11, 13, 21–25, and 27–33 are rejected under 35 U.S.C. § 103 as being unpatentable over Jenney. 4. Claim 26 is rejected under 35 U.S.C. § 103 as being unpatentable over Jenney and Alonso (US 5,819,354, issued Oct. 13, 1998). 5. Claims 21–25 are rejected under 35 U.S.C. § 103 as being unpatentable over Murphy (US 8,858,369 B2, issued Oct. 14, 2014). 6. Claim 26 is rejected under 35 U.S.C. § 103 as being unpatentable over Murphy and Alonso. 1 Even though the Examiner failed to include reference to claim 10 in the heading for this rejection the Examiner makes reference to claim 10 within the body of the rejection. Final Act. 2. We consider the Examiner’s oversight in the heading to be a typographical error, and therefore, we list claim 10 as being subject to this ground of rejection. Appeal 2018-000325 Application 14/340,116 4 OPINION Written Description “The test for the sufficiency of the written description ‘is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.’” Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 682 (Fed. Cir. 2015) (quoting Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). The Examiner has the initial burden of presenting evidence or reasons why persons skilled in the art would not recognize, in the disclosure, a description of the invention defined by the claims, and that burden is met when the Examiner points out that the claim reads on embodiments outside the scope of the original written description. In re Wertheim, 541 F.2d 257, 263 (CCPA 1976). Although that burden is met when the Examiner points out that the claim reads on embodiments outside the scope of the original written description (id.), when the original written description describes something within the scope of the claim, the Examiner must do more than point out the difference in scope (see In re Rasmussen, 650 F.2d 1212, 1215 (CCPA 1981). The Examiner must consider the specific facts of the case and provide supporting reasoning. In re Smythe, 480 F.2d 1376, 1382 (CCPA 1973). The Examiner can meet his burden by analyzing factors such as the knowledge of one skilled in the art and the level of predictability in the field (see Bilstad v. Wakalopulos, 386 F.3d 1116, 1124–26 (Fed. Cir. 2004)), or by demonstrating that the specification reflects that the invention is no broader than what is disclosed in the specification, such as distinguishing over the broader disclosure (see Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 Appeal 2018-000325 Application 14/340,116 5 (Fed. Cir. 1998)). In the present case, each of the Examiner’s rejections fail to provide sufficient explanation to establish a lack of written description support. Claims 1 and 10 Claims 1 and 10 each recite that the length of the flexible member(s) is “at least 4 times the base height.” The extent of the Examiner’s rejection is that “[t]here is no support in the application as filed for the . . . limitation” and “[t]he drawings may not be relied upon for claiming the particular dimension since the drawings are not to scale.” Final Act. 2. Patent drawings not designated as being drawn to scale cannot define the precise proportions of the elements and cannot be relied upon to show particular sizes if the specification is completely silent on the issue. Hockerson-Halberstadt, Inc. v. Avia Grp. Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000). That does not mean, however, “that things patent drawings show clearly are to be disregarded.” In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (emphasis omitted). A drawing is evaluated on the basis of what it reasonably discloses and suggests to a person of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 914 (CCPA 1979). It has long been the case that “[d]escription for the purposes of anticipation can be by drawings alone as well as by words.” In re Bager, 47 F.2d 951, 953 (CCPA 1931). In Mraz, for example, the claims at issue required that mating portions of roll members (for removing edge burrs from thin metal strips) define a strip-receiving peripheral groove with inwardly converging inclined surfaces at an angle, with respect to a plane perpendicular to the axis of the roll member, “not exceeding 15°.” Mraz, 455 F.2d at 1070. The principal Appeal 2018-000325 Application 14/340,116 6 reference (Wilson) disclosed “edge rolls” that were provided for removing the burrs from side edges of thin metal strips. Id. Figure 3 of Wilson, as depicted in Mraz, is reproduced below. Figure 3 from Mraz depicts “edge rolls” 10 and thin metal strip 7. Id. at 1071. Without reference to expert testimony, the Court found that “[t]he half-angle of the V-shaped groove 10a measures about 6° on this drawing,” although noting that “the specification says nothing about the angle.” Id. The Court further found that the Wilson reference “focuses on the edge rolls, showing them with great particularity and showing the grooves thereon to have an angularity well within the range recited in appellant’s claims.” Id. at 1072. In other words, although patent drawings are not working drawings, that does not mean that “things patent drawings show clearly are to be disregarded.” Id. In the present case, the Examiner has improperly dismissed the drawings out of hand and has done nothing to evaluate what the drawings reasonably convey to one skilled in the art. For example, although the Examiner states that “[t]here is no support in the application as filed for the . . . limitation,” there is no discussion of any reason why one skilled in the art would not appreciate that the drawings support the recited ratio in view of the drawings and written description. Appeal 2018-000325 Application 14/340,116 7 For at least these reasons, the Examiner has not established sufficiently that claims 1 and 10 fail to comply with the written description requirement. Claims 28–30 Claims 28, 29, and 30 recite that the number of flexible members is at least four, five, and six, respectively. The Examiner notes that “it appears from applicant’s own disclosure that there are between 1 and up to 21 fibers,” but “not an indefinite number of fibers.” Final Act. 3. Appellant notes disclosure in the originally filed application of at least one, at least three, and at least seven flexible members, for example. Appeal Br. 23. Although noting a particular range of fibers (1 to 21), the Examiner fails to do more than point out the difference in scope. For at least this reason, the rejection is deficient. Claims 32 and 33 Claims 32 and 33 recite the ratio of base diameter to bundle diameter being “at least 4 times” and “at least 34 times,” respectively. The rejection simply states that “[t]he drawings may not be relied upon for claiming the particular dimension since the drawings are not to scale.” Final Act. 3. Appellant disputes the rejection, pointing to disclosure in the Specification as written description support. Appeal Br. 23–25 (citing Spec. 4–5). In the Specification, Appellant’s base is described as having a diameter of 7 cm to 30 cm. Spec. 5. Appellant’s fiber bundle, being comprised of at least two 1–4 mm fibers to make a “plurality,” would have a minimum diameter between 1 and 2 mm. Spec. 4. Appellant indicates the fiber bundle size could be up to about 15 mm. Spec. 5. Using the extremes of these values Appeal 2018-000325 Application 14/340,116 8 reveals a base to fiber bundle diameter ratio ranging from approximately 42 to well above 343. The Examiner does not clarify the precise basis for determining that the recited ranges lack descriptive support. In the Answer, the Examiner simply reiterates the rejection from the Final Action and does not acknowledge Appellant’s contentions, let alone respond to those contentions in any meaningful way. See Ans. 3. Without any discussion of the Specification, and more particularly, the portions specifically referenced by Appellant, the Examiner has not established sufficiently that claims 32 and 33 fail to comply with the written description requirement. Accordingly, for at least the reasons set forth above, we do not sustain the Examiner’s decision to reject claims 1–8, 10, and 21–31 under 35 U.S.C. § 112(a), as failing to comply with the written description requirement. Anticipation and/or Obviousness Jenney Grounds Each of the claims requires “flexible members.” In each of the rejections, the Examiner finds that Jenney’s flexible supports 11 with vision restrictors 12 correspond to the recited “flexible members.” Final Act. 4, 6– 7; Ans. 3, 7, 11. Independent claims 1 and 21 each recite that “the portions of the flexible members between the base and the distal ends define a circular cross-section.” That is, claims 1 and 21 each require that the entire extent of each of the flexible members has a circular cross section, which includes the 2 For example, a 7 cm base and a 15 mm fiber bundle diameter would yield a 4.67 base to fiber bundle diameter ratio. 3 For example, a 30 cm base coupled with a 2 mm fiber bundle yields a 150 base to fiber bundle diameter ratio. Appeal 2018-000325 Application 14/340,116 9 distal ends. Jenney’s flexible supports 11 with vision restrictors 12 do not meet these requirements. The Examiner’s rejections of independent claims 1 and 21 each rely on the combination of Jenny’s flexible member 11 and vision restrictor 12 as the claimed “flexible member” in support of finding that Jenney teaches that “the distal end of each of the flexible members is exposed.” Final Act. 4, 9; Ans. 3, 7, 11. With respect to “the distal end of each of the flexible members [being] exposed,” Appellant responds that Jenney’s flexible supports 11 are not exposed because they are covered by vision restrictors 12, which are not part of flexible supports 11 and do have a circular cross-section. See, e.g., Appeal Br. 27. We agree. The Examiner additionally explains that “Jenney teaches that the flexible members may assume any practical shape or color i.e. the flexible members may have colored ends or be of an entirely different shape, so [A]ppellant’s argument with respect to the shape of the vision restrictors being limited to the ‘hand-shape’ is moot.” Ans. 29 (emphasis omitted). The Examiner explains that “[s]urely [A]ppellant in the instant where there is merely color at the ends of the flexible members does not consider the ends as not being ‘exposed’!” and “[t]he Jenney patent reads on the pending claims with or without the vision restrictors” because “[t]here is nothing preventing the Jenney patent from effectively being used to carry out [A]ppellant’s preferred method of use.” Id. Appellant responds that “there is no suggestion in Jenney to use the flexible members without the hands 12 as vision restrictors” because “there is no suggestion that the flexible supports in Jenney would restrict vision at all or in a meaningful way without some structure 12 affixed to the distal Appeal 2018-000325 Application 14/340,116 10 ends of the flexible members.” Reply Br. 5. Appellant has the better position. Jenney describes its device as “[a] portable basketball training aid to improve the player’s shooting accuracy while being distracted by vision restrictors which simulate realistic game conditions.” Jenney, Abstract. The Examiner provides no reason for us to believe that Jenney contemplates its system not having some form of vision restrictor 12 at the ends of flexible supports 11. Jenney explains that “[t]he vision restrictors, as illustrated, take the form of a hand, however, they may assume any pra[c]tical shape or color as deemed appropriate within predetermined size and predetermined weight limits thus not interfering with the flexibility and function of the flexible supports.” Id. at 5:15–19. Although Jenney contemplates modifications to its system, the Examiner does not direct us to anything suggesting that one of those modifications would be complete removal of vision restrictors 12, particularly when Jenney attempts to “provid[e] realistic game condition vision distractions during practice sessions.” Id. at 5:11–12. Independent claims 10 and 21 require that the flexible member be “between 15 and 55 centimeters long.” The Examiner’s rejection of claims 10 and 21 requires a modification to Jenney to have the flexible member be “between 15 and 55 centimeters long.” Final Act. 6–7, 9. As for the proposed modification to the length of Jenney’s flexible supports 11, Appellant responds that “[a]lthough Jenney does mention adjustability of height, it is only in the context of ‘vision restriction during shooting practice’ for realistic simulation of game condition distractions.” Appeal Br. 32. Appellant explains that “[o]ne of ordinary skill in the art, having considered the teaching and objectives of Jenney, would not be Appeal 2018-000325 Application 14/340,116 11 inclined to shorten the flexible rods so that they would be well outside of the field of vision when training to shoot a basketball with waving hands in the face.” Id. at 33. Appellant has the better position. Although the Examiner explains that “Jenney . . . shows the flexible members are adjustable in order to accommodate various size end users” (Ans. 25), this does not mean that one skilled in the art would have modified the size of flexible supports 11 in a manner that defeats their purpose. As explained above, Jenney is directed to vision restrictors to distract a shooter. A modification to move the location of the distraction to a height below a player’s waist level (e.g., 55 centimeters or less) would minimize, or even eliminate, any distraction effect created by the device. For at least these reasons, we do not sustain the Examiner’s decision to reject independent claims 1, 10, and 21 in view of Jenney. The stated bases for the rejection of dependent claims 2–8, 11, 13, 22–25, and 26–33 do not cure the deficiencies in the rejection of claims 1, 10, and 21. Murphy Ground Claim 21 recites “a base with a ground engaging lower surface . . . having a friction promoting surface to engage the ground.” Each of the rejections based on Murphy relies on a finding that Murphy’s body 115 corresponds to the recited “base.” Final Act. 12. Appellant responds that “body 115 [in Murphy] lacks the claimed ‘ground engaging lower surface having a friction promoting surface to engage the ground.’” Appeal Br. 34. Appellant has the better position. Murphy is directed to “[a] baseball holder for a batting tee.” Murphy, Abstract. Figure 1A of Murphy is reproduced below to illustrate the deficiencies in the rejection. Appeal 2018-000325 Application 14/340,116 12 Murphy’s Figure 1A is a fragmentary perspective view of “an example baseball holder for a batting tee.” Murphy, 1:27–28. Murphy explains that “[t]he baseball holder 110 can include a body 115 . . . and a plurality of supporting members 112,” and “[t]he body 115 can include one or more retention mechanisms to couple the baseball holder 110 to a stand 120 of the batting tee.” Murphy, 2:21–27. Although Murphy explains that “the retention mechanisms of the body 115 can enable the body 115 to be coupled to and be detachable from the stand 120, while enabling the body 115 to be rotated about the stand 120” (id. at 2:27–30), this does not mean that body 115 has “a ground engaging lower surface . . . having a friction promoting surface to engage the ground,” as required by claim 21. The Examiner offers no explanation, nor Appeal 2018-000325 Application 14/340,116 13 do we see, how body 115 meets the claim limitation noted above. The Examiner offers no discussion, for example, as to what the lower (asserted ground engaging) surface of body 115 would look like. Moreover, in view of the fact that Murphy’s device is a batting tee, it seems likely that the lower surface of body 115 is not flat, but rather has some sort of structure that is inserted into stand 120. For at least these reasons, the Examiner has failed to establish sufficiently that Murphy teaches the recited “base.” We have also considered the Examiner’s alternative position that “body [115] may be connected to a stand which naturally includes means for [being] securely connected to the ground surface.” Final Act. 12. However, we agree with Appellant that if body 115 and stand 120 are considered together to correspond to the claimed “base,” “then Murphy lacks the claimed length of the flexible members being longer than the base height (with the base height being measured f[ro]m the ground, as recited in the claim).” Appeal Br. 34. Accordingly, we do not sustain the Examiner’s decision to reject claim 21. The stated bases for the rejection of dependent claims 21–26 do not cure the deficiencies in the rejection of claim 21. DECISION We REVERSE the Examiner’s decision to reject claims 1–8, 10–13, and 21–33. REVERSED