SVENBERG, Tomas

Patent Trials and Appeals BoardMar 24, 2021

2020005582 (P.T.A.B. Mar. 24, 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. 15/861,069 01/03/2018 Tomas SVENBERG 000048-008.2 8284 44012 7590 03/24/2021 WRB-IP LLP 801 N. Pitt Sreet , Suite 123 ALEXANDRIA, VA 22314 EXAMINER GANESAN, SUNDHARA M ART UNIT PAPER NUMBER 3784 NOTIFICATION DATE DELIVERY MODE 03/24/2021 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): HARRY@WRB-IP.COM USPTO@dockettrak.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TOMAS SVENBERG and PER HÖGLUND ____________ Appeal 2020-005582 Application 15/861,069 Technology Center 3700 ____________ Before STEFAN STAICOVICI, EDWARD A. BROWN, and MICHAEL L. HOELTER, 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 July 29, 2019, hereinafter “Final Act.”) rejecting claims 9, 10, 12–19, 21–23, and 25–29 under 35 U.S.C. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Tomas Svenberg is identified as the real party in interest in Appellant’s Appeal Brief (filed Mar. 2, 2020, hereinafter “Appeal Br.”). Appeal Br. 1. Appeal 2020-005582 Application 15/861,069 2 § 103(a) as being unpatentable over Chen2 and Nalley.3,4,5 Appellant’s representative presented oral arguments on March 15, 2021. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. INVENTION Appellant’s invention relates to a dumbbell having “a selectable number of weight disks.” Spec. para. 18.6 Claims 9, 23, and 27 are independent. Claim 9 is illustrative of the claimed invention and reads as follows: 9. A dumbbell arrangement, comprising: a base assembly; a plurality of weight disks adapted to stand upright when disposed in first and second weight disk receiving portions of the base assembly; a handle having first and second opposing ends, the first and second opposing ends of the handle each comprising handle connecting means for cooperation with first disk connecting means on ones of the plurality of the weight disks most proximally located relative to the first and second ends of the handle and disposed in the first and second weight disk receiving portions of the base assembly; and 2 Chen, US 7,485,077 B2, issued Feb. 3, 2009. 3 Nalley, US 2009/0048079 Al, published Feb. 19, 2009. 4 Claims 1–8, 20, and 24 are canceled. See Appeal Br. 1. 5 The rejection of claim 11 under 35 U.S.C. § 103(a) as being unpatentable over Chen and Nalley has been withdrawn. See Examiner’s Answer (dated June 29, 2020, hereinafter “Ans.”) 4. 6 We refer to the Substitute Specification, filed Jan. 3, 2018. Appeal 2020-005582 Application 15/861,069 3 the base assembly comprising first and second opposing inner ends, the first and second opposing inner ends of the base assembly each comprising base connecting means for cooperation with second disk connecting means on ones of the plurality of the weight disks most proximally located relative to the first and second opposing inner ends of the base assembly and disposed in the first and second weight disk receiving portions of the base assembly, wherein each base connecting means is one of a dovetail and a dovetail groove. ANALYSIS Each of independent claims 9 and 23 recites that “each base connecting means is one of a dovetail and a dovetail groove.” Appeal Br. 12, 15 (Claims App.). Similarly, independent claim 27 requires, inter alia, that each of “the first and second opposing inner ends of the base assembly . . . [is] attachable to ones of the plurality of the weight disks . . . via dovetail joint connections.” Id. at 16. The Examiner finds that Chen discloses a dumbbell including, inter alia, a plurality of weight disks 31, 41 (weight plates)7 adapted to stand upright in first and second weight receiving portions 93, 94 (left and right end portions) of base assembly 9 (rack unit), which has base connecting means 911 (locking projection) for cooperation with second disk connecting means 318 (locking groove) on weight disks 31, 41. Final Act. 3 (citing Chen, Figs. 2, 5). The Examiner further finds that “Chen does not show wherein each base connecting means is one of a dovetail and a dovetail groove.” Id. Nonetheless, the Examiner finds Nalley discloses an “adjustable weight dumbbell,” wherein each weight 5 connects to each 7 Parenthetical nomenclature refers to Chen. Appeal 2020-005582 Application 15/861,069 4 adjacent weight using dovetail 18 and dovetail groove 12. Final Act. 3 (citing Nalley, Figs. 1–3). Thus, the Examiner concludes that it would have been obvious for a person of ordinary skill in the art “to utilize a dovetail and corresponding dovetail groove as taught by Nalley on the base connecting means [911] of Chen” because “Chen already shows a protrusion . . . [911] that interfaces with a groove . . . [317/318] to prevent relative movement between the weight plates and the base when the dumbbell is in a stored configuration.” Id. According to the Examiner, “[a]dding a dovetail as taught by Nalley would have the predictable result of enhancing the connection between the base and the weights of the dumbbell to prevent relative movement between the weight plates and the dumbbell in a stored configuration.” Id. Appellant notes that Chen’s “locking projection 911 releasably engages the locking groove 318” such that weight plates 31, 41 “are not radially movable relative to the rack unit 9.” Appeal Br. 6–7. In contrast, Appellant further notes that the dovetail joints of Nalley “do not prevent relative radial movement of the weights relative to each other,” but rather, “prevent relative axial movement.” Id. at 7. Thus, Appellant contends that “[t]here is nothing in Nalley that would have led one skilled in the art to replace the structure on the rack unit of Chen that prevents radial movement of the weight plates relative to the rack unit in Chen with a structure that prevents axial movement of weight plates relative to each other.” Id. at 8. According to Appellant, “[t]here is no reason to presume that the rack unit of Chen would have been modified to provide [Nalley’s] dovetail joints instead of the locking projection 911 and locking groove Appeal 2020-005582 Application 15/861,069 5 318.” Id.; see also Reply Brief (filed July 24, 2020, hereinafter “Reply Br.”) 3. Appellant’s arguments appear to hold the Examiner to the old teaching, suggestion, or motivation (“TSM”) standard where there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; such a standard is not required. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007) (“We begin by rejecting the rigid [application and requirement of a TSM to combine known elements in order to show obviousness]”). The proper inquiry is whether the Examiner has articulated adequate reasoning based on a rational underpinning to explain why a person of ordinary skill in the art would have combined the teachings of Chen and Nalley. See KSR at 418 (stating that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))). In this case, the Examiner correctly finds that “Chen already discloses a connection between a base and [a] dumbbell,” namely, locking projection 911 and locking groove 318. Ans. 6. Chen also discloses that the connection between locking projection 911 and locking groove 318 is “releasable,” and, thus, when the connection is released it permits radial movement between weight plates 31, 41 and base assembly 9. See Chen, col. 4, l. 65–col. 5, l. 20. Hence, in contrast to Appellant’s position, Chen’s connection between locking projection 911 and locking groove 318 does permit radial movement of weight plates 31, 41, albeit selectively, when the Appeal 2020-005582 Application 15/861,069 6 connection is released. See Appeal Br. 8 (Chen’s projection and groove connection “prevents radial movement of the weight plates relative to the rack unit”). Furthermore, the Examiner correctly finds Nalley discloses that dovetail connections are known for connecting weight plates of a dumbbell and, furthermore, that a skilled artisan would readily understand that a dovetail connection “prevent[s] minute wobbles or rotations and generally provid[es] a more secure connection.” See Advisory Action (dated Nov. 19, 2019, hereinafter “Adv. Act.”) 2; Ans. 6; In re Jacoby, 309 F.2d 513, 516 (CCPA 1962) (An artisan must be presumed to know something about the art apart from what the references disclose). As such, we agree with the Examiner that “[t]he only modification being made is substituting a standard groove and projection connection . . . [with] a dovetail groove and dovetail connection.” Ans. 6. Appellant does not pervasively argue the Examiner’s findings and reasoning. The mere substitution of one connection means, i.e., groove and projection, with another connection means, i.e., dovetail and dovetail groove, in similar applications, i.e., dumbbell weight training device, wherein both connections permit radial movement, is nothing more than an obvious selection between indisputably known alternatives and the application of routine technical skills. KSR, 550 U.S. at 417. Appellant has not adequately explained why any differences between Chen’s groove and projection connection and Nalley’s dovetail connection are of such a nature as to have dissuaded a skilled artisan to substitute one type of connection for another, as reasoned by the Examiner. Moreover, Appellant provides no persuasive reason why a person of ordinary skill in the art could not have implemented such a substitution. Neither does Appellant provide any Appeal 2020-005582 Application 15/861,069 7 persuasive reason why the results of the substitution would have been unpredictable. We agree with the Examiner that the resulting “modification would have yielded only predictable results.” Ans. 6–7. Accordingly, the Examiner is correct in concluding that such a substitution would have been obvious. In conclusion, for the foregoing reasons, we sustain the rejection under 35 U.S.C. § 103(a) of independent claims 9, 23, and 27 as unpatentable over Chen and Nalley. As Appellant has not separately argued the rejection of dependent claims 10, 12–19, 21, 22, 25, 26, 28, and 29, we likewise sustain the rejection of these claims over the combined teachings of Chen and Nalley. CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 9, 10, 12–19, 21–23, 25–29 103(a) Chen, Nalley 9, 10, 12–19, 21–23, 25–29 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