Ex Parte Kapsalis et al

Patent Trial and Appeal Board

Aug 30, 2017

13507063 (P.T.A.B. Aug. 30, 2017)

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.
13/507,063 05/31/2012 Marc Kapsalis Enhanced safety dasher 7520
61364 7590 08/30/2017
ROBERT A. VANDERHYE
801 RIDGE DR.
MCLEAN, VA 22101-1625
EXAMINER
DENNIS, MICHAEL DAVID
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
08/30/2017 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 MARC KAPSALIS, BRYAN BRUTLAG,
KEVIN BEAUREGARD, CORY CREAN,
CARLY KRISTINE ANTONUCCI, AREN YALE PASTER,
and MARK WALTER STEINER
Appeal 2015-007955
Application 13/507,063
Technology Center 3700
Before JENNIFER D. BAHR, GEORGE R. HOSKINS, and
FREDERICK C. LANEY, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Marc Kapsalis et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1—10, 19, and 20.l-2 The
rejections are set forth in the Answer, dated July 27, 2015. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.
1 According to the Appeal Brief, filed January 22, 2015 (hereinafter “Appeal
Brief’ or “Appeal Br.”), claims 11—14 stand withdrawn. Appeal Br. 1.
2 Appellants originally appealed from rejections of claims 1—10 and 15—20
set forth in the Final Rejection, dated November 24, 2014. However, the
Examiner withdrew all rejections of claims 15—18. Ans. 15—16.
Appeal 2015-007955
Application 13/507,063
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A dasher board assembly providing enhanced safety,
comprising a frame and at least one substantially rigid dasher
board operatively attached to said frame and having a top area
and bottom area;
said frame constructed, and said dasher board operatively
attached to said frame, so that when said top area of said board
is impacted said assembly will absorb the force of
impact primarily in a first mode of absorption, and so that when
said bottom area of said board is impacted said assembly will
absorb the force of impact primarily in a second mode
of absorption.
REJECTIONS
I. Claims 1, 2, 4, 9, and 19 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Palumbo (US 2009/0137329 Al, published
May 28, 2009).
II. Claims 3, 5, and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Palumbo.
III. Claims 6, 7, 10, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Palumbo and Burley (US 6,095,503, issued
Aug. 1,2000).
IV. Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Palumbo and Ferguson (US 8,087,101 B2, issued Jan. 3,
2012).
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DISCUSSION
Rejection I
Claims 1 and 9:
Appellants argue that “[i]n Palumbo any impact absorption is done the
same way at the top and the bottom by a single mode, the mode provided by
compression of the foam material 130a.” Appeal Br. 6. Appellants contend
that it is impossible for the impact to be absorbed at the top of the board in a
different mode than at the bottom of the board because the only mode of
absorption disclosed in Palumbo is absorption by the foam. Id.
The Examiner points out that the limitations in claim 1 directed to
absorbing a force of impact at the top area of the board primarily in a first
mode and absorbing a force of impact at the bottom area of the board
primarily in a second mode are functional language. Ans. 16—17. The
Examiner explains that Palumbo’s structure is “capable of meeting the
functional language because the mode of absorption is dependent on force of
impact” and “the rigidity/give of the assembly is different at the top . . . and
bottom . . . areas of the board.” Id. at 17.
Appellants argue that the Examiner misapplies the principles of
functional claim language set forth in In re Schreiber, 128 F.3d 1473, 1478
(Fed. Cir. 1997). Reply Br. 1—2. In particular, Appellants submit that it is
not enough for the Examiner to establish capability; rather, in order to
support an anticipation rejection, the Examiner must have reason to believe
that the functional limitation may be an inherent characteristic of the prior
art. Id. at 2.
Appellants are correct that the PTO must have reason to believe that
the functional limitation may be an inherent characteristic of the prior art in
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order to shift the burden to Appellants to prove otherwise. In re Schreiber,
128 F.3d at 1478. However, the PTO satisfies this burden by establishing
that the prior art is capable of performing the claimed function. Id. Thus,
we do not agree with Appellants that the Examiner misapplies the principles
set forth in In re Schreiber.
Further, there is reason to believe that the functional limitation in
question in this case (i.e., the capability to absorb impact force at the top
area of the board primarily in one mode and to absorb impact force at the
bottom area of the board primarily in a second mode) is an inherent
characteristic of Palumbo’s assembly. Like the frame of Appellants’ dasher
board assembly, Palumbo’s frame is fixed at its bottom end to the playing
surface and is free (not fixed) at its upper end. See Palumbo 127, Fig. 2;
Spec. 8:9—13, Figs. 2—\. Thus, like Appellants’ frame, Palumbo’s frame has
a “cantilever mounting” such that the vertical supports (i.e., vertical posts
58) “act as a pair of cantilever beams.” See Spec. 8:25, 9:1. Asa
consequence of this cantilever beam arrangement, Palumbo’s frame is more
rigid (i.e., less amenable to deflection when subjected to an impact force) at
the bottom area thereof, where it is fixed to the playing surface, and less
rigid (i.e., more amenable to deflection when subjected to an impact force) at
the top area thereof. Thus, when subjected to a sufficiently high force of
impact at the top area of the board, Palumbo’s frame will deflect, thereby
absorbing the force of impact primarily in a first mode (deflection of the
frame). On the other hand, when subjected to a force of impact at the
bottom area of the board, where it is fixed, Palumbo’s frame will not deflect,
thereby not absorbing the force of impact in the first mode (deflection of the
frame). Rather, the force of impact at the bottom end of Palumbo’s board
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will be absorbed only in a second mode (compression of foam layer 130a).
Palumbo 137.
We appreciate the possibility that some levels of impact force, even if
applied at the top area of the board, may be insufficient to cause deflection
of Palumbo’s frame assembly, such that the impact force may be absorbed
primarily, or even only, by compression of foam layer 130a (i.e., the same
mode as an impact force at the bottom area of the board). Notably, however,
claim 1 does not specify a particular level of impact force at the top area of
the board that must be absorbed by the claimed assembly primarily in a first
mode of absorption or a particular level of impact force at the bottom area of
the board that must be absorbed primarily in a second mode. For the reasons
discussed above, Palumbo’s board assembly will absorb a force of impact at
the top area of the board of sufficient magnitude to deflect the frame
primarily in a first mode of absorption (deflection of the frame) and will
absorb a force of impact at the bottom area of the board primarily in a
second mode (compression of foam layer 130a), thereby inherently
satisfying the functional limitations in question.
Appellants argue that Palumbo’s disclosure of providing relatively
hard sills 36 to support shielding panes 16/18 in place within frame 14 when
deflected in the direction of arrows 40, as illustrated in Figure 1, teaches
against deflection of Palumbo’s frame 14. Appeal Br. 6 (addressing claim
2). Appellants’ argument is not convincing. The fact that Palumbo provides
structure, in the form of a sill of relatively hard material, to prevent the
shielding panes from dislodging from the frame when the shielding panes
are deflected by an impact force thereto, does not suggest that the frame will
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not deflect when the top of the frame is subjected to an impact force of
sufficient magnitude.
For the above reasons, Appellants do not apprise us of error in the
Examiner’s finding that Palumbo anticipates the subject matter of claim 1.
Accordingly, we sustain the rejection of claim 1 as anticipated by Palumbo.
We also sustain the rejection of claim 9, for which Appellants rely
solely on their arguments presented against the rejection of claim 1. Appeal
Br. 7.
Claim 2:
Appellants argue that “[tjhere is absolutely no disclosure in Palumbo
about the frame deflecting.” Appeal Br. 6. Appellants add that deflection of
the frame “to absorb impact is not only not inherent in Palumbo, it is
contrary to” Palumbo’s teaching of providing a relatively hard sill to support
the shielding panes in place within the frame when deflected in the direction
of arrows 40 as shown in Figure 1. Id. (emphasis omitted). These lines of
argument are unavailing, for the reasons discussed above in connection with
claim 1.
Appellants also argue that “in order for inherency to be shown the
function must not merely be ‘possible’ but positively set forth.” Id. (citing
In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)). Appellants misapprehend
the principle of inherency. “It is well settled that a prior art reference may
anticipate when the claim limitations not expressly found in that reference
are nonetheless inherent in it. Under the principles of inherency, if the prior
art necessarily functions in accordance with, or includes, the claimed
limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343,
1349 (Fed. Cir. 2002) (emphasis added, citations and internal quotation
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marks omitted). “Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” In re Robertson,
169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotation marks
omitted). Moreover, “[ijnherency is not necessarily coterminous with
knowledge of those of ordinary skill in the art. Artisans of ordinary skill
may not recognize the inherent characteristics or functioning of the prior
art.” In re Cruciferous Sprout, 301 F.3d at 1349; Schering Corp. v. Geneva
Pharms., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (rejecting the contention that
inherent anticipation requires recognition in the prior art). In other words, a
showing of inherency of a characteristic or functioning of the prior art does
not require that the prior art positively set forth the characteristic or
functioning. For the reasons set forth above, the Examiner has established
that Palumbo’s frame will deflect when subjected to a sufficiently high level
of impact force at the top area of the board. Like claim 1, claim 2 does not
specify any particular level of force at which the frame deflects.
Thus, Appellants do not apprise us of error in the Examiner’s finding
that Palumbo anticipates the subject matter of claim 2. Accordingly, we
sustain the rejection of claim 2 as anticipated by Palumbo.
Claim 4:
In contesting the rejection of claim 4, Appellants merely reiterate the
argument presented for claim 1—namely, that the only mode of impact
absorption in Palumbo is compression of material 130a. Appeal Br. 7. This
argument fails to apprise us of error in the Examiner’s finding of
anticipation, for the reasons set forth above. Accordingly, we sustain the
rejection of claim 4 as anticipated by Palumbo.
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Claim 19:
Appellants contend that Palumbo provides absolutely no disclosure
that the vertical frame elements “will deflect a maximum of about two-four
inches to dampen the force of impact at the top area of the frame elements.”
Appeal Br. 7. For the reasons discussed above, this argument regarding
deflection is unavailing. As the Examiner points out, claim 19 does “not
specify the level of force of the impact force” and Palumbo’s posts 58 are
anchored to the ground. Ans. 19. There is some level of impact force,
dependent upon the stiffness of the frame members and frame assembly,
which, when applied to the top of the board, will cause the vertical posts to
deflect to a maximum of about two to four inches. When subjected to such a
level of impact force at the top area of the board, Palumbo’s vertical posts
will deflect, as cantilevered members, a maximum of about two to four
inches, as required in claim 19.
Thus, Appellants do not apprise us of error in the Examiner’s finding
that Palumbo anticipates the subject matter of claim 19. Accordingly, we
sustain the rejection of claim 19 as anticipated by Palumbo.
Rejection II
Claim 3:
Claim 3 depends from claim 1, and further recites that “said first and
second modes operate so that a Head Injury Criteria value of less than 250
results from the impact of a human being against said dasher board.”
Appeal Br. 12 (Claims App.). Observing, correctly, that claim 3 does not
specify any impact force level, or impact velocity, for which the claimed
dasher board assembly must achieve the claimed Head Injury Criteria
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value,3 the Examiner finds that Palumbo satisfies this functional limitation
because “an extremely low impact force will, based on Newton’s second law
of motion, will [sic] cause marginal Head Injury Criteria (HIC) value.”
Ans. 6—7. Appellants do not specifically dispute this finding, in which we
discern no error.
Given that claim 3 does not specify an impact force level or impact
velocity for which the dasher board assembly must satisfy the claimed Head
Injury Criteria value, any assembly capable of achieving the claimed Head
Injury Criteria value at any level of force, including a very small level of
force resulting from a very mild, low-speed impact, satisfies this limitation.
As there necessarily is some range of level of impact force for which a Head
Injury Criteria value of less than 250 results from the impact of a human
being against Palumbo’s dasher board, Palumbo’s assembly satisfies this
limitation.
Having discerned no error in the Examiner’s finding that Palumbo
satisfies the Head Injury Criteria value limitation of claim 3, we need not
address the Examiner’s “[supplemental” routine optimization theory. See
Ans. 7.
3 Appellants’ Specification refers to “the Head Injury Criteria (HIC-14).”
Spec. 2:6. As such, we understand “Head Injury Criteria value” in
Appellants’ claims to mean the HIC-14 value, namely, the HIC value
calculated over a maximum time interval (t2 — ti) of 14 milliseconds. See
Spec. 2:8 (HIC equation); see, e.g., Insurance Institute for Highway Safety,
Moderate Overlap Frontal Crashworthiness Evaluation Guidelines for
Rating Injury Measures, Sept. 2014, at 2,
http://www.iihs.org/iihs/ratings/technical-information/technical-protocols
(designating “head injury criterion (HIC) with a 15 ms limit on the period
over which it is calculated” as “HIC-15”).
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For the above reasons, Appellants do not apprise us of error in the
Examiner’s rejection of claim 3, which we, thus, sustain.
Claims 5 and 8:
Appellants group these claims together in contesting the rejection.
Appeal Br. 8—9. In accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select
claim 5 as representative, and decide the appeal of the rejection of claims 5
and 8 on the basis of claim 5.
The Examiner finds that “Palumbo . . . discloses wherein the assembly
10 is concerned with finding the optimal balance of ‘impact absorption when
a player strikes dasher board assembly 10, while maintaining its integrity so
that panel 130 can be securely attached to frame 14.’” Ans. 20 (quoting
Palumbo 137); see id. at 8. Based on this disclosure, the Examiner finds
that the dampening material characteristics recited in claim 5 are result
effective variables of concern to Palumbo. Id. at 8, 20.
Appellants argue that “there is absolutely no basis for concluding that
one of ordinary skill in the art would come to the optimization set forth in”
claim 5 because it is not recognized or inherent in Palumbo that these
characteristics would properly protect someone impacting the board from
head injury. Id. at 8—9. For the reasons that follow, we do not agree with
Appellants.
Palumbo expressly teaches forming foam layer 130a of material
providing “impact absorption when a player strikes dasher board
assembly 10.” Palumbo 137. Although Palumbo does not specifically
enumerate the particular material properties (damping coefficient, spring
constant, loss coefficient) recited in claim 5, a person having ordinary skill
in the art would have known to look for foam materials having material
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properties known to be indicative of good impact absorption. As
acknowledged on page 3 of Appellants’ Specification, materials exhibiting
such impact absorption characteristics will satisfy the parameters set forth in
claim 5. Thus, contrary to Appellants’ argument, the evidentiary record
establishes a reasonable basis to conclude that a person of ordinary skill in
the art selecting a foam material to optimize the impact absorption when a
player strikes the board, as taught by Palumbo, would come to the
optimization (material properties) recited in claim 5.
Accordingly, Appellants do not apprise us of error in the rejection of
claims 5 and 8, which we, thus, sustain.
Rejection III
Claim 6:
Claim 6 depends from claim 1, and further recites that the “frame
comprises cantilevered substantially vertical frame elements” and that the
“first mode of absorption comprises deflection of said cantilevered
substantially vertical frame elements.” Appeal Br. 12 (Claims App.).
The Examiner finds, and we agree, that Palumbo’s “frame 14
comprises cantilevered substantially vertical frame elements 58” and that the
first mode of absorption comprises deflection of these vertical frame
elements. Ans. 10.4 Like Appellants’substantially vertical frame elements,
Palumbo’s vertical frame elements (posts 58) are fixed at the bottom ends
thereof (via welding to a bottom channel anchored to the playing surface)
and free at the top ends thereof in a cantilever mounting that will permit the
4 It appears that the Examiner made this finding for the first time in the
Answer. To the extent that this might constitute a new ground of rejection,
Appellants did not file a petition under 37 C.F.R. § 41.40(a) and, thus, have
waived any arguments that it must be designated as a new ground.
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vertical frame elements to act as cantilever beams having the ability to
deflect when the upper area of the board is impacted. Spec. 4:4—7, 5:2-4,
8:25—26, 9:1; Fig. 3; Palumbo 127; id., Fig. 2. Further, for the reasons
discussed above, Palumbo’s substantially vertical frame elements (posts 58)
deflect when subjected to a sufficient level of impact force at the upper end
of the board, thereby absorbing the impact force in a first mode of
absorption comprising deflection of the substantially vertical frame
elements.
Thus, Palumbo satisfies the limitations of claim 6, without
modification, and the rejection of claim 6 is sustainable on this basis.
Appellants do not explicitly dispute the Examiner’s finding that Palumbo
satisfies the limitations of claim 6, without modification. See Reply Br. 5.
Rather, Appellants’ arguments are directed to Burley. Id.
Having found that Palumbo satisfies the limitations of claim 6,
without modification, and determined that the rejection of claim 6 is
sustainable on that basis,5 we do not address Appellants’ arguments against
the Examiner’s alternative basis for the rejection of claim 6—namely, that
Burley teaches cantilevered substantially vertical frame elements (upper
supports 620) and that it would have been obvious to implement Burley’s
cantilevered frame elements in Palumbo. See Ans. 10.
5 In affirming a multiple reference rejection under 35 U.S.C. § 103, the
Board may rely on fewer than all of the references relied on by the Examiner
in an obviousness rationale. In re Bush, 296 F.2d 491, 496 (CCPA 1966). It
is well settled that “anticipation is the epitome of obviousness.” In re
McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (quoting Connell v. Sears
Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)); In re Fracalossi,
681 F.2d 792, 794 (CCPA 1982).
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For the above reasons, Appellants do not apprise us of error in the
rejection of claim 6 as unpatentable over Palumbo and Burley, which we,
thus, sustain.
Claim 10:
Claim 10 depends from claim 6, and further recites ranges for the
damping coefficient, spring constant, and loss coefficient of the dampening
material. Appeal Br. 13 (Claims App.). Appellants’additional arguments
for claim 10, regarding the Examiner’s routine optimization rationale, are
unpersuasive, for the reasons set forth above in regard to claim 5.
Accordingly, Appellants fail to apprise us of error in the rejection of
claim 10 as unpatentable over Palumbo and Burley, which we, thus, sustain.
Claims 7 and 20:
Claims 7 and 20 require the cantilevered substantially vertical frame
elements to comprise aluminum tubes of polygonal cross section. Appeal
Br. 12, 14 (Claims App.). The Examiner acknowledges that Palumbo does
not expressly disclose such features of the vertical frame elements (posts
58). Ans. 11,12. In order to overcome this deficiency, the Examiner finds
that Burley discloses such frame elements (upper supports 620), and
determines it would have been obvious “to implement the aforementioned
cantilevered substantially vertical frame elements taught by Burley . . . with
the frame elements taught by Palumbo ... to provide a durable and light
frame, with low labor costs.” Ans. 11, 12—13.
The shortcoming in the Examiner’s rejection is that, as Appellants
point out (Appeal Br. 9), Burley’s upper supports 620 are neither
substantially vertical, nor cantilevered, as required in claims 7 and 20. See
Burley, Fig. 19 (depicting inclined upper supports 620 fixedly attached at
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each end). Thus, even if such supports were incorporated into Palumbo’s
frame assembly, along with Palumbo’s posts 58, as proposed by the
Examiner, the combination would not include cantilevered substantially
vertical frame elements comprising aluminum tubes of polygonal cross
section, as required in claims 7 and 20.
Accordingly, we do not sustain the rejection of claims 7 and 20 as
unpatentable over Palumbo and Burley.
Rejection IV
Having discerned no error in the Examiner’s finding that Palumbo
satisfies the Head Injury Criteria value limitation and sustained the rejection
of claim 3 as unpatentable over Palumbo, we do not address the additional
rejection of claim 3 as unpatentable over Palumbo and Ferguson. See Ans.
15.
DECISION
The Examiner’s decision rejecting claims 1—10, 19, and 20 is
AFFIRMED as to claims 1—6, 8—10, and 19, and REVERSED as to claims 7
and 20.
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)(l)(iv).
AFFIRMED-IN-PART
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