Ex Parte Mattox

Patent Trial and Appeal BoardAug 22, 2013

11836544 (P.T.A.B. Aug. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte E. MICHAEL MATTOX ____________ Appeal 2011-008594 Application 11/836,544 Technology Center 3700 ____________ Before EDWARD A. BROWN, RICHARD E. RICE and CARL M. DeFRANCO, Administrative Patent Judges. RICE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008594 Application 11/836,544 2 STATEMENT OF THE CASE E. Michael Mattox (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1, 4, 6-12, 18, 19 and 23-27. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER Claim 1, which is the sole independent claim on appeal, is reproduced below: 1. A balance training and exercise device for use on a relatively flat support surface and consisting essentially of: a shallow, concave one piece disc terminating in a rim and having a concave upper surface adapted to support the feet or knees of a human user and a corresponding convex lower surface that is adapted to rest on the support surface and that defines in a central portion a convex partial substantially spherical shape of substantially uniform curvature on which the disc is supported on the support surface; a pad adapted to be placed on or mounted on the upper surface of the disc and is shaped to conform with the upper surface of the disc so as to substantially fill the volume of the concavity of the disc, wherein the pad has an upper surface that is adapted to support the feet or knees of a user at or near the rim of the disc when the pad is placed within the disc, wherein the pad is made of a resilient foam that is compressible under the weight of a user but that otherwise maintains its integrity under the weight of a user, wherein the substantially horizontal upper surface is at or near Appeal 2011-008594 Application 11/836,544 3 the rim of the disc when the pad is mounted on the upper surface of the disc; wherein the disc and pad are formed to impart sufficient rigidity to the disc so that the disc maintains its rigidity so that the disc functionally maintains its curvature on the bottom surface thereof beneath the feet of the user so that the user can perform a balance exercise by wobbling from side to side, front to back and rotational movement on the convex lower surface of the disc in place or for translational movement of the disc across the support surface by wobbling to one side of the disc, twisting the disc forwardly or rearwardly and wobbling the disc to another side to move the disc forwardly or rearwardly. App. Br., Claims App’x (emphasis added). REFERENCES RELIED ON BY THE EXAMINER Hilliker US 2,615,495 Oct. 28, 1952 Kling US 2,804,123 Aug. 27, 1957 Taylor US 3,751,111 Aug. 7, 1973 Hsu US 2003/0195098 Al Oct. 16, 2003 Jackson US 7,156,788 B1 Jan. 2, 2007 THE REJECTIONS Claims 1, 4, 6-9, 18, 19 and 27 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hilliker, Kling and Hsu. Claims 10-12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hilliker, Kling, Hsu and Jackson. Claims 23-26 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hilliker, Kling, Hsu and Taylor. Appeal 2011-008594 Application 11/836,544 4 ANALYSIS Obviousness – Hilliker, Kling and Hsu Claim 1 calls for a shallow, concave, one-piece disc terminating in a rim and having a concave upper surface, and a pad adapted to be placed on or mounted on the upper surface of the disc and shaped to conform with the upper surface of the disc so as to substantially fill the volume of the concavity of the disc, wherein the pad has an upper surface that is adapted to support the feet or knees of a user at or near the rim of the disc when the pad is placed within the disc, and wherein the pad is made of a resilient foam that is compressible under the weight of a user but that otherwise maintains its integrity under the weight of a user. As to these features of claim 1, the Examiner finds that Hilliker discloses a balance training and exercise device comprising the required disc but not the pad. Ans. 5-6. The Examiner further finds that Kling discloses a toy device having a similarly shaped base or shell 8, with a flat circular top 12, an arcuate rim 16, a circular top 12, an inflatable tube 18 mounted to the arcuate rim and a sponge rubber cushion or pad 14 having a substantially flat upper surface. Id. at 7-8 and 16. The Examiner further finds that “Kling fails to disclose the pad 14 substantially fills the volume of the concave concavity portion of the disc upper surface extending above the rim and is removable,” but that Hsu “teaches a concavo-convex disc shaped seat (10) having a hollow concave upper surface (11, fig. 3) having a removable pad (ball 40) filling the volume of the disc and extending above the rim to support a user performing sitting exercises [0015-0017].” Id. at 8. The Examiner concludes that it would have been obvious to modify Hilliker’s Appeal 2011-008594 Application 11/836,544 5 “disc-shaped rocker toy” to include “a pad as taught by Kling for comfort and safety protection purposes” and to further modify Hilliker as modified by Kling to have the pad be removable and fill the entire disc up to or above the rim of [sic] as taught by Hsu for increasing/improving user support/stability, increasing safety protection for a more fragile user such as a small child or old person, and/or for comfort/ergonomic purposes while performing wobbling exercises/methods as taught by both Hilliker and Kling which involve rocking, twisting, sliding forwards and backwards across a surface while standing, sitting/kneeling, laying and/or any combination thereof as desired. Id. at 9; see also id. at 16-18. Appellant disagrees and persuasively argues, inter alia, that None of the three references . . . teach filling [Kling’s] shell with a resilient foam that is compressible under the weight of a user but that otherwise maintains its integrity under the weight of a user. Note that if [Kling’s] shell is filled with foam, it will have no impact on the user because the flat circular top 12 of the hollow shell is made of metal or other hard plastics. Thus, there will be no resilient foam that is compressible under the weight of a user because the user’s feet will be supported by the flat circular top of the hollow shell. App. Br. 13; see also Reply Br. 8. The Examiner responds that Hsu is cited only “as a teaching that ‘filling the volume of [a] disc’ is known and that using a disc for balancing is known.” Ans. 18. This response does not adequately address Appellant’s argument that filling the volume of the cavity of Kling’s shell or disc 8 would have no impact on the user given that the top 12 is positioned between the cavity and the user’s body. See App. Br. 13. It also does not explain how Hsu teaches or suggests filling such an enclosed volume. Appeal 2011-008594 Application 11/836,544 6 The Examiner additionally responds that “[t]he issue of whether there is a teaching for a pad substantially filling the volume of the concavity of [sic] and with an upper surface to support the feet of a user is met in [Kling].” Ans. 16. This response appears to contradict the Examiner’s finding as set forth in the Final Rejection that Kling does not disclose substantially filling the volume of the cavity of the disc. See id. at 8. In any event, the Examiner’s response does not address Appellant’s argument that Kling’s disc or shell 8 is hollow below the flat circular top 12. See App. Br. 13; Reply Br. 5. The Examiner’s additional reasoning that “[t]he rim cushioning substantially fills the top portion of the rim [of Kling] . . . and if more cushioning was desired for safety one would be motivated to fill even more or completely fill the entire volume of the disc and beyond the rim” (Ans. 17), does not adequately address the claim requirements that “the pad has an upper surface that is adapted to support the feet or knees of a user at or near the rim of the disc” and “is made of a resilient foam that is compressible under the weight of a user but that otherwise maintains its integrity under the weight of a user so that the user can perform a balance exercise by wobbling from side to side, front to back, and rotational movement on the convex lower surface of the disc.” The Examiner alternatively contends in response to Appellant’s argument that one skilled in the art would be able to add a foam pad to Hilliker’s concave one-piece disc “without any teaching since this would only involve placing a pad (such as a pillow) into the disc,” that “adding a pad and how thick the pad/pillow would be is up to a user,” and that “it is common to add pillows/pads to sitting devices such as chairs.” Ans. 15-16 Appeal 2011-008594 Application 11/836,544 7 (referencing Hilliker’s disclosure, at col. 2, ll. 4-11, that “a child may sit in” the rocker toy). We agree with Appellant, however, that this alternative rationale does not adequately address the claim requirements with respect to the integrity of the foam under the weight of the user. See Reply Br. 5. Accordingly, we do not sustain the rejection of claim 1, and claims 4, 6-9, 18, 19 and 27 dependent therefrom, under 35 U.S.C. § 103(a) as being unpatentable over Hilliker, Kling and Hsu. Obviousness – Hilliker, Kling, Hsu and Jackson or Taylor Claims 10-12 and 23-26 depend from claim 1. As the Examiner does not rely on Jackson or Taylor to cure the deficiencies in Hilliker, Kling and Hsu (see Ans. 10-13), for the reasons discussed supra in connection with claim 1, we do not sustain the rejections under 35 U.S.C. § 103(a) of claims 10-12 as being unpatentable over Hilliker, Kling, Hsu and Jackson and claims 23-26 as being unpatentable over Hilliker, Kling, Hsu and Taylor. DECISION We reverse the rejections of claims 1, 4, 6-12, 18, 19 and 23-27. REVERSED mls