Inre: Giannelli ( 2014 )

United States Court of Appeals
for the Federal Circuit
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IN RE RAYMOND GIANNELLI
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2013-1167
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board, in Serial No.
10/378,261.
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Decided: January 13, 2014
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MICHAEL LAWRENCE OLIVERIO, Novak, Druce, Connol-
ly, Bove & Quigg, LLP, of Boston, Massachusetts, argued
for appellant.
JEREMIAH S. HELM, Associate Solicitor, United States
Patent and Trademark Office, of Alexandria, Virginia,
argued for appellee. With him on the brief were NATHAN
K. KELLEY, Deputy Solicitor, and AMY J. NELSON, Associ-
ate Solicitor.
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Before RADER, Chief Judge, LOURIE and MOORE, Circuit
Judges.
LOURIE, Circuit Judge.
Raymond Giannelli (“Giannelli”) appeals from the
decision of the United States Patent and Trademark
Office (“PTO”) Patent Trial and Appeal Board (“the
2 IN RE: GIANNELLI
Board”) affirming the rejection of claims 1–25 of U.S.
Patent Application 10/378,261 (Mar. 3, 2003) (the “’261
application”) under 35 U.S.C. § 103(a) 1 as obvious over
U.S. Patent 5,997,447 (the “’447 patent”). Ex Parte Gian-
nelli, No. 2010-007582, slip op. at 5 (P.T.A.B. Oct. 29,
2012) (“Board Decision”). Because the Board erred in
concluding that the claims of the ’261 application would
have been obvious in view of the ’447 patent, we reverse.
BACKGROUND
Giannelli filed the ’261 application, entitled “Rowing
Machine,” in March 2003. The ’261 application discloses
an exercise machine on which a user can perform a row-
ing motion against a selected resistance, thereby
strengthening the back muscles. ’261 application, at 2–3.
Claim 1, as amended, is representative of the claims
on appeal and reads as follows:
1. A row exercise machine comprising an input as-
sembly including a first handle portion adapted to
be moved from a first position to a second position
by a pulling force exerted by a user on the first
handle portion in a rowing motion, the input as-
1 At the time, the statute provided that:
(a) A patent may not be obtained . . . if the differ-
ences between the subject matter sought to be pa-
tented and the prior art are such that the subject
matter as a whole would have been obvious at the
time the invention was made to a person having
ordinary skill . . . .
35 U.S.C. § 103(a) (2006). This provision has since been
amended. See Leahy-Smith America Invents Act (“AIA”),
Pub. L. No. 112-29, § 3(c), 125 Stat. 284, 287–88 (2011).
However, because the ’261 application was filed before
March 16, 2013, the pre-AIA § 103(a) applies. See AIA,
125 Stat. at 293.
IN RE: GIANNELLI 3
sembly defining a substantially linear path for the
first handle portion from the first position to the
second position.
Response to Office Action, No. 10/378,261, at 2 (Apr. 12,
2006).
The specification teaches that the rowing machine’s
arms travel in a substantially linear path as the handles
are pulled. ’261 application, at 3–4. An exemplary meth-
od of operation described in the specification depicts the
user as pulling the machine’s handles to overcome a
selected resistance. Id. at 9. Figure 4 of the ’261 applica-
tion, reproduced below, shows a left side view of an em-
bodiment of the row exercise machine.
’261 application, fig. 4.
4 IN RE: GIANNELLI
The PTO examiner initially rejected all the original
claims of the ’261 application, finding the claims antici-
pated by the ’447 patent.
The ’447 patent, entitled “Chest Press Apparatus for
Exercising Regions of the Upper Body,” describes a chest
press exercise machine where the user performs the
exercise by pushing on the handles to overcome the se-
lected resistance. ’447 patent col. 11 ll. 39–50. Figure 1 of
the ’447 patent, reproduced below, depicts an angled view
of the chest press apparatus.
’447 patent fig. 1.
In response to the rejection, Giannelli amended the
claims to add the limitation “by a pulling force exerted by
a user on the first handle portion in a rowing motion,” but
the examiner again rejected the ’261 application under 35
U.S.C. § 102(b) and 103(a) in view of the ’447 patent. The
rejection was made final.
IN RE: GIANNELLI 5
Giannelli appealed the examiner’s rejection to the
Board. The Board affirmed the obviousness rejection and
did not address the anticipation rejection. Board Decision
at 5. The Board characterized the dispositive issue as
being whether the chest press machine of the ’447 patent
was “capable of being used by exerting a pulling force on
the handles in a rowing motion.” Id. at 3. The Board
deemed it reasonable that a user could face the handles of
the prior art chest press machine and exert a pulling force
on its handles in a rowing motion. Id. The Board noted
that the recitation of a new intended use for an old prod-
uct did not make a claim to that old product patentable,
and consequently determined that the ’261 application
simply recited the new intended use of rowing for the ’447
patent chest press apparatus. Id. at 3–4. The Board
further found that even though using the ’447 patent’s
invention as a rowing machine “may not fully achieve the
‘purpose’ of [the ’447] apparatus,” Giannelli had not
shown that the apparatus could not be used in such a
manner. Id. at 4. In the Board’s view, Giannelli thus
failed to rebut the Board’s showing of capability of pulling
the handles. Id. The Board also found that the ’261
application’s claimed “substantially linear path” encom-
passed the “slightly curvilinear path” disclosed in the ’447
patent Abstract. Id. at 5.
Giannelli appealed to this court. We have jurisdiction
pursuant to 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
We review the Board’s legal conclusions de novo, In re
Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), and the
Board’s factual findings underlying those determinations
for substantial evidence, In re Gartside, 203 F.3d 1305,
1316 (Fed. Cir. 2000). A finding is supported by substan-
tial evidence if a reasonable mind might accept the evi-
dence to support the finding. Consol. Edison Co. v.
NLRB, 305 U.S. 197, 229 (1938). Obviousness is a ques-
6 IN RE: GIANNELLI
tion of law, based on underlying factual findings. Graham
v. John Deere Co., 383 U.S. 1, 17–18 (1966); Elsner, 381
F.3d at 1127. A claim is invalid for obviousness if, to one
of ordinary skill in the pertinent art, “the differences
between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole
would have been obvious at the time the invention was
made . . . .” 35 U.S.C. § 103(a) (2006); see also KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 406–07 (2007).
Giannelli argues that the Board’s decision sustaining
the examiner’s rejection is based on an incorrect assertion
that the chest press machine disclosed in the ’447 patent
could be used as a rowing machine rather than consider-
ing how it would be used. Giannelli contends that the
Board erred in concluding that the examiner had met the
burden of establishing a case of prima facie obviousness
over the cited ’447 reference because he failed to explain
how or why a user could possibly use the prior art chest
press machine to perform a rowing motion. The Director
responds that claim 1 only requires an exercise machine
with handles that can be pulled. The Director contends
that the Board correctly found that the chest press ma-
chine described in the ’447 patent either disclosed or
rendered obvious all of the limitations of the ’261 applica-
tion claims. The Director further contends that the Board
correctly held that Giannelli did not rebut the finding of
capability because he did not provide any persuasive
argument or evidence to show that the chest press ma-
chine described in the ’447 patent could not be used to
perform the rowing exercise.
The Board did not review and decide the anticipation
issue, so neither will we. Thus, it is obviousness that is
before us, and we conclude that the Board erred in con-
cluding that the claims of the ’261 application would have
been obvious in view of the ’447 patent. The Board prem-
ised its conclusion on its theory that the machine de-
IN RE: GIANNELLI 7
scribed in the ’447 patent was “capable of” having its
handles pulled.
The PTO bears the initial burden of showing a prima
facie case of obviousness. In re Sullivan, 498 F.3d 1345,
1351 (Fed. Cir. 2007). When a prima facie case of obvi-
ousness is made, the burden then shifts to the applicant
to come forward with evidence and/or argument support-
ing patentability. In re Glaug, 283 F.3d 1335, 1338 (Fed.
Cir. 2002). The PTO did not carry its burden in this case.
The claims of the ’261 application specifically require
a “first handle portion adapted to be moved from a first
position to a second position by a pulling force . . . in a
rowing motion.” Response to Office Action, No.
10/378,261, at 2 (Apr. 12, 2006). We have noted that, “the
phrase ‘adapted to’ is frequently used to mean ‘made to,’
‘designed to,’ or ‘configured to,’ . . .” Aspex Eyewear, Inc. v.
Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir.
2012). Although the phrase can also mean “‘capable of’ or
‘suitable for,’” id., here the written description makes
clear that “adapted to,” as used in the ’261 application,
has a narrower meaning, viz., that the claimed machine is
designed or constructed to be used as a rowing machine
whereby a pulling force is exerted on the handles.
The written description of the ’261 application de-
scribes how the position of the handles relative to the
primary and secondary lever arms and the resistance
mechanism renders them “adapted” to be moved by the
user’s pulling force. For example, the application states
that the exercise machine “enables a user to maintain
biomechanical alignment of the user’s wrist and forearm
during performance of the exercise, while maintaining a
consistent resistance applied to the muscles, in the stabil-
ity of an exercise machine.” ’261 application, at 3. The
location of those handles relative to the other components
is one of their structural attributes that enables perfor-
mance of the rowing motion against the selected re-
8 IN RE: GIANNELLI
sistance. ’261 application, at 4 (“The declining, substan-
tially linear path [of the pulled handles] enables the user
to maintain proper biomechanical alignment of the force
angle being applied to the grip. This allows for a fairly
consistent torque application at the shoulder throughout
the range of motion of the exercise.”). Consequently, the
relevant question before the Board was whether the
apparatus described in the ’447 patent was “‘made to,’
‘designed to,’ or ‘configured to,’” allow the user to perform
a rowing exercise by pulling on the handles as claimed in
the ’261 application.
There is no question that the ’447 patent does not
have handles that are adapted to be pulled in a rowing
motion. The ’447 patent’s written description describes
the exercise machine’s structure as allowing a movement
that “simulates as natural a human musculoskeletal
outward pushing motion as possible while maintaining
proper biomechanical alignment of the user’s joints.” ’447
patent col. 11 ll. 61–64; see also id. col. 2 ll. 37–41 (stating
that the position of the machine and handles allows the
exercising user to “maintain the proper biomechanical
alignment of the joints” and “the proper alignment of the
wrists”). The Board stated that using the ’447 patent as a
rowing machine was a new intended use of the prior art
apparatus. Board Decision at 4. In the context of the
claimed rowing machine, however, the mere capability of
pulling the handles is not the inquiry that the Board
should have made; it should have determined whether it
would have been obvious to modify the prior art appa-
ratus to arrive at the claimed rowing machine. Because
the Board determined that the machine claimed in the
’261 application would have been obvious by merely
showing that a rowing exercise could be performed on the
machine disclosed in the ’447 patent, and not whether it
was obvious to modify the chest press machine to contain
handles “adapted to” perform the rowing motion by pull-
ing on them, the Board erred in concluding that the
IN RE: GIANNELLI 9
examiner had met his initial burden of establishing a case
of prima facie obviousness. In re Sullivan, 498 F.3d at
1351.
Physical capability alone does not render obvious that
which is contraindicated. And, on this record, it is not
obvious to modify a machine with handles designed to be
pushed to one with handles adapted to be pulled. A chest
press machine is not a rowing machine, nor has evidence
been shown that it is. In fact, anyone who has used
exercise machines knows that a sure-fire way to cause
injury is to use a machine in a manner not intended by
the manufacturer.
Because the Board’s analysis began with the premise
that “adapted to” meant “capable of,” its affirmance of the
examiner’s rejection also contained no explanation why or
how a person having ordinary skill in the art would
modify the prior art chest press machine to arrive at the
apparatus of the ’261 application. And because the initial
burden was not met, Giannelli was not obligated to sub-
mit additional evidence to rebut the examiner’s findings
of pulling capability. See In re Rijckaert, 9 F.3d 1531,
1532 (Fed. Cir. 1993) (“Only if that burden [of establish-
ing a prima facie case] is met, does the burden of coming
forward with evidence or argument shift to the appli-
cant.”). The Board thus erred in affirming the conclusion
of the examiner that the ’447 patent apparatus rendered
obvious the claimed invention of the ’261 application.
As indicated earlier, the Board did not review the ex-
aminer’s anticipation rejection, so neither will we. How-
ever, as we are reversing the Board’s obviousness
conclusion, it is hard to see how these claims could have
been anticipated by the cited ’447 patent.
Finally, we do not need to address the distinction be-
tween the “substantially linear” path claimed in the ’261
application and the “slightly curvilinear” path disclosed in
the ’447 patent. At oral argument, counsel for Giannelli
10 IN RE: GIANNELLI
conceded that the two phrases are not inconsistent. Oral
Argument at 2:50, In re Giannelli, No. 2013-1167, availa-
ble at http://www.cafc.uscourts.gov/oral-argument-
recordings/13-1167/all.
CONCLUSION
For the foregoing reasons, the decision of the Board
affirming the final rejection of the ’261 application’s
claims 1–25 is reversed.
REVERSED