Martin SarkeesDownload PDFPatent Trials and Appeals BoardMay 27, 202015160461 - (D) (P.T.A.B. May. 27, 2020) Copy Citation 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. 15/160,461 05/20/2016 Martin Sarkees SRK-001 1099 52554 7590 05/27/2020 Southeast IP Group, LLC. P.O. Box 14156 GREENVILLE, SC 29610 EXAMINER DAVISON, LAURA L ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 05/27/2020 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 MARTIN SARKEES ____________ Appeal 2019-006336 Application 15/160,461 Technology Center 3700 ____________ Before STEFAN STAICOVICI, BRETT C. MARTIN, and WILLIAM A. CAPP, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE. Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Office Action (dated Aug. 7, 2018, hereinafter “Final Act.”) rejecting claims 1, 3, 4, and 6–82 under 35 U.S.C. § 103 as being 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The inventor, Martin Sarkees, is identified as the real party in interest in Appellant’s Appeal Brief (filed Apr. 5, 2019, hereinafter “Br.”). Br. 1. 2 Claims 2, 5, and 9–24 are canceled. Br. 10–12, Appendix 1. Appeal 2019-006336 Application 15/160,461 2 unpatentable over Centurion,3 Vargas,4 and Canning.5 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 tackling dummy for “practicing and teaching blocking and tackling techniques” in contact sports. Spec. 1, ll. 5–7. Claim 1, the sole independent claim, is representative of the claimed invention and reads as follows: 1. A tackling dummy comprising: a resilient cushion member having a shape of a human torso, including a main body member having a length and with a left and right upper arm extending outwardly from an upper portion of said main body member, wherein said left upper arm extends from a left side of said main body member and said right upper arm extends from a right side of said main body member; a pair of leg members extending generally downwardly and outwardly from a bottom portion of said main body member, so said body member is free- standing: a tight-fitting external cover that is disposed to cover said resilient cushion member on all sides thereof; and a pair of target pads attached to said external cover and positioned on said main body member on both sides 3 2015 Podium 4 Sport Catalog, page 117, “Centurion Tackle Dummy.” 4 Vargas, US 9,017,227 B1, issued Apr. 28, 2015. 5 Canning, US 2,904,337, issued Sept. 15, 1959. Appeal 2019-006336 Application 15/160,461 3 thereof between said upper arms and said leg members, wherein each of said target pads has an L-shape cross section and extends outwardly from said external cover on one side and a front portion of said main body member; and further including a pair of handles on a rear side thereof, so that said tackling dummy may be held by a person grasping said handles on said rear side thereof. ANALYSIS Appellant does not present arguments for the patentability of claims 3, 4, and 6–8 apart from claim 1. See Br. 3–7. 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, 4, and 6–8 standing or falling with claim 1. The Examiner finds that Centurion discloses tackling dummy 1 including most of the limitations of independent claim 1, and, to better illustrate each disclosed element, annotates Centurion’s Figure, as shown below: Appeal 2019-006336 Application 15/160,461 4 The Examiner’s annotated Figure of Centurion illustrates tackling dummy 1 including main body member 2, left and right arm members 3, 4, left and right leg members 5, 6, target indicia 7, and user (player) 8 engaging tackling dummy 1 in a conventional rugby tackle. Final Act. 2–3, 6. However, the Examiner finds that Centurion does not disclose “a pair of L-shaped target pads and a pair of handles.” Id. at 3. Nonetheless, the Examiner finds that the conventional rugby tackle illustrated in Centurion’s Figure constitutes “an L-shaped target location” extending along a side of main body member 2, which is engaged by the user’s head, and a front portion, which is engaged by user’s shoulder. Id.; Compare Centurion, Figure with, Appellant’s Figure 2. The Examiner further finds that Vargas discloses attaching pads 41a, 43a, and/or 46a to the exterior of main body member 40 in order to mark targets for a user to engage with his or her body and Canning discloses a tackling dummy having a pair of handles 15–19 on its rear side. Id. at 3–5 (citing Vargas, col. 2, ll. 55–57, Fig. 1; Canning, col. 2, ll. 1–16, Fig. 1). Thus, the Examiner concludes that it would have been obvious for a person of ordinary skill in the art to provide target pads, as taught by Vargas, to the L-shaped location of Centurion’s tackling dummy, “in order to mark Centurion’s intended target location for correctly performing a conventional rugby tackle.” Id. at 4 (citing Vargas, col. 2, ll. 55–57; Centurion, Figure). The Examiner also determines that it would have been obvious for a skilled artisan to further modify Centurion’s tackling dummy, as modified by Vargas, “by adding a pair of handles as taught by Canning to . . . [its] rear side . . . so that the dummy may be used in tackling practice by one player Appeal 2019-006336 Application 15/160,461 5 while the dummy is held upright by a coach or other player.” Id. at 5 (citing Canning, col. 2, ll. 12–15). Appellant argues that the combined teachings of Vargas and Centurion do not disclose “alteration of the pads of Vargas so they are 1) L- shaped or 2) each cover a front and side portion,” as called for by claim 1. Br. 4. According to Appellant, Centurion does not disclose target pads and the pads of Vargas are for reinforcing karate blows, which are different from tackling, and, thus, are not “L-shaped,” but rather disc-shaped. Id. Appellant’s arguments are not persuasive because “[n]on-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. [Each reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.” See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In this case, because an artisan must be presumed to know something about the art apart from what the references disclose, the Examiner is correct in relying on Centurion’s Figure as a disclosure of an “L-shaped location” extending along a side and a front portion covering “an intended target region for performing a conventional rugby tackle.” Ans. 4–5;6 see also In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). We further agree with the Examiner’s finding that Vargas’s pads 41a, 43a, 46a “mark targets [for a user] on the larger striking pad [40].” Ans. 6 (emphasis added) (citing Vargas, col. 2, ll. 55–58); see also Vargas, Fig. 1. Hence, although Vargas’s pads are circular, because the target region in the tackling dummy of Centurion is L-shaped when performing a 6 Examiner Answer, dated June 7, 2019. Appeal 2019-006336 Application 15/160,461 6 conventional rugby tackle, the pads of the Centurion tackling dummy, as modified by Vargas, will likewise be L-shaped in order to “visually instruct[] the user with respect to the intended target region[] . . . when performing a conventional rugby tackle.” Ans. 6. Moreover, even though we appreciate Appellant’s position that the pads of Vargas are for reinforcing karate blows, and not conventional tackles, the Examiner is not proposing to use the particular construction or structure of Vargas’s pads, but rather is relying on Vargas’s disclosure of “visually identify[ing] target locations by means of target pads.” Ans. 7; see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”). Appellant further argues that Vargas’s portable striking device is non- analogous art because it is not in the same field of endeavor as Appellant’s “dummy to teach proper tackling” and “is not concerned with proper tackling technique at all.” Br. 5–6. The Federal Circuit has explained that “[t]he analogous art inquiry is a factual one, requiring inquiry into the similarities of the problems and the closeness of the subject matter as viewed by a person of ordinary skill in the art.” Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1360 (Fed. Cir. 2014). Criteria for determining whether prior art is analogous may be summarized as “(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id. at 1359 (quoting In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992)). Appeal 2019-006336 Application 15/160,461 7 Here, we appreciate Appellant’s position that Vargas’s “portable striking device that must be attached to a tree, pole, or other fixed vertical surface” is not in the same field of endeavor as Appellant’s free-standing tackling dummy. Br. 5 (emphasis omitted). However, in light of the rejection as made, we agree with the Examiner’s current statement of the relevant problem and purpose in the context of the overall invention— “marking intended target locations.” Ans. 9; Compare Vargas, col. 2, ll. 55– 56 (“mark targets for a user”) with, Spec. 12, ll. 20–21 (“in order to provide a clear target for the player’s shoulder”). In contrast, Appellants’ statement of the problem and purpose of the overall invention, i.e., “teaching proper tackling technique,” would focus the analysis not on the problem or purpose at issue but on the specific application and setting identified in the Specification—“a tackling dummy . . . used for teaching a tackling technique.” Br. 6; Spec. 6, ll. 19–23. The analogous prior art should not be so limited. See Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 35 (1966) (rejecting the argument that the cited references were not “pertinent prior art” and stating that “[t]he problems confronting [the patentee] and the insecticide industry were not insecticide problems; they were mechanical closure problems”). Accordingly, the Examiner is correct that Vargas is analogous art, and properly considered its teachings in determining that the subject matter of claim 1 would have been obvious. Finally, Appellant argues that “Vargas teaches away from being utilized as a free-standing punching bag, as specifically recited in claim 1.” Br. 7. According to Appellant, Appeal 2019-006336 Application 15/160,461 8 [T]he Vargas reference teaches away from the proposed combination, as the Vargas striking pad, when in use, is not free-standing, and obviates any need for handles allowing a person to support the tackling dummy. Indeed, the Vargas fixed striking pad is utterly useless in performing a tackle because it cannot be taken to the ground, as is required for a tackle dummy. Id. We are not persuaded because Appellant does not point to any passage in Vargas that “criticize[s], discredit[s] or otherwise discourage[s]” attaching target pads, as taught by Vargas, to Centurion’s tackling dummy. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits or otherwise discourages the solution claimed). In particular, we note that Vargas’s explicit disclosure of marking target locations for a user would not have led a person of ordinary skill away from the Examiner’s modification; rather, such disclosure would have been instructive. See Vargas, col. 2, ll. 55–56. In conclusion, for the foregoing reasons, we sustain the rejection under 35 U.S.C. § 103 of independent claim 1 as unpatentable over Centurion, Vargas, and Canning. Claims 3, 4, and 6–8 fall with claim 1. Appeal 2019-006336 Application 15/160,461 9 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1, 3, 4, 6–8 103 Centurion, Vargas, Canning 1, 3, 4, 6–8 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation