In Re Holness

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE WILFRED WASHINGTON HOLNESS,
Appellant
______________________
2014-1824
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board, in No. 11/204,754.
______________________
Decided May 20, 2015
______________________
WILFRED WASHINGTON HOLNESS, Bronx, NY, pro se.
NATHAN K. KELLEY, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee. Also represented by MEREDITH HOPE
SCHOENFELD, COKE STEWART, THOMAS W. KRAUSE.
______________________
Before NEWMAN, REYNA, and WALLACH, Circuit
Judges.
WALLACH, Circuit Judge.
Appellant Wilfred Holness appeals the Patent Trial
and Appeal Board’s (“PTAB”) affirmance (“PTAB
Decision”), J.A.5–18, of the United States Patent and
Trademark Office’s (“Director”) rejection of claims 1–35
IN RE HOLNESS 2
and 37–38 of patent application No. 11/204,754 (“the ’754
Application”) as anticipated and obvious primarily in light
of U.S. Patent No. 4,765,613 (“Voris”) and additional prior
art references including: 1) U.S. Patent No, 7,160,042
(“Burrell”); 2) U.S. Patent No. 6,234,939 (“Moser”); 3) Pub.
No. U.S. 2003/0211916 (“Capuano”); and 4) U.S. Patent
No. 5,556,362 (“Whipps”). For the reasons set forth below,
this court affirms.
BACKGROUND
A. The ’754 Application
The ’754 Application is titled “Apparatus for Isometric
and Incremental Muscle Contractions” and is directed to
resistance exercise machines such as leg extension
machines found in many fitness centers. For example,
with respect to leg extension machines, when a person is
exercising on the machine, the exerciser will move the pad
up to a certain point, and upon reaching that point, the
pad will stop moving for a fixed period of time. The
restriction of movement allows the user to work the
muscles isometrically or by holding the weight in a fixed
position.
According to the ’754 Application, as the user applies
external force “to a movable surface[1] linked to a
resistance source,” 2 a sensing mechanism detects the
1 According to the ’754 Application:
A movable surface includes but is not limited to:
the surface on [a] bar, a pad, a mat, a handle, a
strap, a rope, a belt or such the like wherein an
entity or user of an exercise apparatus can place a
body part and exert a force and move the surface
in which there is contact.
’754 Application at 27 ll. 12–14.
2 The ’754 Application defines a resistance source as
a mechanism that “includes but is not limited to weight
stack, free weights, a flexible rod, a leverage system or
IN RE HOLNESS 3
distance the movable surface has traveled “in the
direction of the applied force and opposite the direction of
the resistance source force.” ’754 Application, at 3 ll. 19–
23. Upon determining this position along the range of
motion of the exercise being performed, the sensing
mechanism dispatches an activation signal to a timer.
The timer controls the duration of an activation signal
sent to a halting effector mechanism which inhibits
movement of the movable surface. The halting effector
mechanism subsequently performs one of three actions: 1)
“mechanically inhibit further movement of the surface in
the direction of the external applied force,” id. at 7 ll. 27–
28; 2) in addition to performing action (1), simultaneously
“signal[] for the cessation and immediate stasis of
movement of the moveable surface for a given amount of
time,” id. at 8 ll. 1–2; or 3) “signal for the cessation and
immediate stasis of movement of the moveable surface for
a given amount of time.” Id. at 8, ll. 2–3.
Independent claim 1 recites:
An apparatus comprising:
a mechanism which can inhibit for an amount of
time,
movement of a movable surface on the apparatus
in a direction caused by an external force applied
to the movable surface, while the apparatus
permits uninhibited movement of the movable
surface in the opposite direction to the external
force, and . . .
wherein the movable surface is linked to a
resistance source which applies force which is
diametric to the external applied force, and . . .
the amount of time is determined by a timer.
such the like as to create an opposing resistance to the
user’s applied force.” ’754 Application, J.A. 280 at 27 ll. 8–
9.
IN RE HOLNESS 4
’754 Application, J.A. 280, ¶ 1.
B. The Prior Art
1. Voris
Voris is directed to “a progressive resistance exercise
device.” Voris, col. 1 ll. 6–7. Voris seeks to minimize
injuries during resistance training by providing an
exercise device which “gradually applies resistance, in
accordance with a predefined resistance gradient, to the
movement of a lifting mechanism by an exerciser in at
least a first positive resistance direction, while reducing
the resistance to substantially zero when the lifting
mechanism is moved in a negative resistance direction.”
Id. col. 3 ll. 6–12. According to Voris, “[a] preferred time
threshold limit is about two seconds.” Id. col. 5 ll. 18–19.
Therefore, when a user fails to move the bar in an upward
or positive direction for more than two seconds, “the
resistance mechanism [] functions to gradually reduce the
supplied resistance opposing the movement of the bar [] to
substantially zero.” Id. col. 5 ll. 18–24.
The “resistance mechanism includes a brake, a torque
converting transmission, a chain which is coupled to the
transmission and attached to the bar, a position encoder
and a microprocessor and display unit.” Id. col 6. ll. 32–
36 (patent figure numbers omitted). According to Voris,
“the position encoder is a suitable mechanism which can
determine the relative position of the bar by directly
reading the rotational position of the primay shaft of
either the brake or the torque converter . . . and develops
an output signal corresponding to this positional
movement.” Id. col. 5 ll. 61–67 (patent figure numbers
omitted).
The “position encoder” is an optical encoder that
“determines the relative position of the bar by directly
reading the rotational position of the primary axle of
either the brake or the torque converting transmission in
IN RE HOLNESS 5
incremental units sufficient to allow for the gradual
movement of the bar.” Id. col. 7 ll. 30–36 (patent figure
numbers omitted). The microprocessor “compares the
position of the rotating shaft, by using the encoder output
signal, to a resistance force gradient curve[3] to determine
the amount of resistance [to be] applied to the rotating
brake shaft at any given instance.” Id. col. 8 ll. 3–8
(patent figure numbers omitted). If the exerciser fails to
continue moving the bar forward for greater than a
predetermined amount of time, the microprocessor causes
the brake to reduce the resistance substantially to zero.
2. Burrell
Burrell discloses a method of controlling the
movement of an object using sensors. The invention
discloses the interchangeability of sensors and asserts any
two binary sensors, including optical and snap action
switch sensors, may be used to perform the same function.
3. Moser
Moser discloses an exercise bicycle that, in a
particular mode, allows the exerciser to vary the
resistance on one side without affecting the other side in
order for the user to exercise both legs separately.
Furthermore, an “optical encoder circuit [is] used to
provide the optical data necessary . . . to perform
measurment of the user’s [p]ower, [d]istance and [s]peed
values.” Moser, col. 8 ll. 53–56.
3 According to Voris, a “force curve is obtained by
measuring the amount of force exerted by numerous
individuals at different positions throughout the range of
motion for a particular exercise in the first progressive
resistance direction and averaging the amounts of force
applied by these numerous individuals at each position.”
Voris, col. 8 ll. 33–38.
IN RE HOLNESS 6
4. Capuano
Capuano allows users of exercise equipments such as
free weights, weight stacks, and/or sport simulation
devices to monitor and record personal and/or group
exercise results. Bar codes are affixed to weights and
during exercise, when a user is lifting the weights, the bar
code tracks the movement of the weights. The bar code
reader determines the duration the weight is in a position
for each stage of lifting the weight by recording the
weight’s upward and downward movements. Capuano,
[24], [53].
5. Whipps
Whipps discloses “[a] self-releasing pin for a weight
training machine having a vertical stack of weights” that
“automatically releases a selected number of weights from
engagement.” Whipps, Abstract, ll. 1–4 Furthermore,
Whipps discloses that it was known in the prior art to use
a solenoid-operated pin controller to retract a pin from a
weight stack and vary the amount of resistance. “Upon
receipt of a signal representative of momentary muscle
failure of the user, solenoid operated pin controllers
retract the pin supporting the stack of weights being
lifted and insert a higher pin in the weight stack to
automatically decrease the weights being lifted.” Whipps,
col. 2 ll. 17–21.
C. Procedural Posture
The PTAB affirmed the United States patent
Examiner’s (“Examiner”) rejection of claims 1–5, 25, 28–
32, 35, 37 and 38 under 35 U.S.C. § 102(b) (2012), and
claims 6–24, 26, 27, 33–34 under § 103(a). PTAB Decision
at 3. Following this decision, Mr. Holness now appeals to
this court, seeking reversal of the PTAB’s affirmance of
the Examiner’s rejections. Pursuant to § 141 and 28
U.S.C. § 1295(a)(4)(A) (2012), this court has jurisdiction
over this appeal.
IN RE HOLNESS 7
DISCUSSION
A. Standard of Review
“Anticipation is a question of fact.” In re Rambus Inc.,
694 F.3d 42, 46 (Fed. Cir. 2012). This court upholds the
PTAB’s factual findings unless they are unsupported by
substantial evidence. In re Gartside, 203 F.3d 1305, 1315
(Fed. Cir. 2000). “Substantial evidence is ‘such relevant
evidence as a reasonable mind might accept as adequate
to support a conclusion.’” In re Zurko, 258 F.3d 1379,
1384 (Fed. Cir. 2001) (citing Consol. Edison Co. v. NLRB,
305 U.S. 197, 229 (1938)). “If the evidence in [the] record
will support several reasonable but contradictory
conclusions, [this court] will not find the [PTAB’s] decision
unsupported by substantial evidence simply because the
PTAB chose one conclusion over another plausible
alternative.” In re Jolley, 308 F.3d 1317, 1320 (Fed. Cir.
2002).
Whether an invention would have been obvious is a
legal question based on underlying findings of fact.
Gartside, 203 F.3d at 1316. “The presence . . . of a
motivation to combine references in an obviousness
determination is a pure question of fact.” Id.B. Substantial Evidence Supports the PTAB’s
Finding of Anticipation
1. Voris Discloses a Mechanism to Inhibit Movement
Mr. Holness contends Voris does not anticipate
independent claims 1 or 37 or their dependent claims
primarily because “[t]here is no inhibition of movement in
the direction of the user’s force (external force) brought
about by the Voris device.” Appellant’s Br. 47.
Additionally, Mr. Holness seeks to distinguish the ’754
Application on the ground that upon inhibition of the bar
in a positive direction, it allows the user to move in the
direction opposite of the external force. Id.IN RE HOLNESS 8
The PTAB agreed with the Examiner’s determination
that “Voris discloses that the apparatus permits
uninhibited movement of the movable surface in the
opposite direction to the external force, while the
mechanism inhibits movement of the movable surface in
the direction caused by the external force.” PTAB
Decision at 6. Specifically, the PTAB affirmed the
Examiner’s finding, asserting that “if the user is too weak
to overcome the applied resistance, the mechanism
inhibits movement of the movable surface.” Id. In
addition to the Examiner’s findings, the PTAB quotes a
passage in Voris stating the invention “gradually applies
resistance . . . to the movement of a lifting mechanism by
an exerciser in at least a first positive resistance
direction.” Id. (quoting Voris, col. 3 ll. 5–10). Therefore,
the invention expressly contemplates restricting the
movement of the exerciser’s positive external force.
Moreover, contrary to Mr. Holness’s contention, the
invention recognizes the resistance present from a pre-
existing resistance source (i.e., the weights on a movable
surface) in addition to the gradual resistance applied by
the mechanism itself.
With respect to Mr. Holness’s claim that Voris, by
substantially reducing the variable resistance to zero,
fails to satisfy claims 1 and 37 of the proposed invention
because it does not permit uninhibited movement of the
movable surface in the opposite direction, we reject this
argument. The distinction Mr. Holness seeks to establish
is de minimis. Ostensibly, in a situation where the
resistance has been substantially reduced to zero, an
exerciser may choose to complete the lift by raising the
bar to the highest point permitted by his/her full range of
motion or alternatively, move the bar in a direction
diametric to the external force being applied. That is, the
exerciser may choose to lower the bar back down. Thus,
an exerciser’s discretion to move the bar in a position
diametric to the initial positive external force being
IN RE HOLNESS 9
applied, constitutes uninhibited movement of the movable
surface in the opposite direction as disclosed by
independent claim 1 of the ’754 Application. J.A. 280.
2. Voris Discloses a Timer
Mr. Holness next argues that unlike claims 1, 4 and
37 and all other claims that depend therefrom, “Voris does
not comprise a timer that inhibits movement of a
moveable surface for an amount of time or a sensor linked
to a timer.” Appellant’s Br. 51. According to Mr. Holness,
Voris does not: 1) “disclose a timer”; 2) “suggest in anyway
how any alleged timer is to be implemented in the Voris
device”; and 3) “Voris has no mechanism to inhibit
movement of a movable surface for an ‘amount of time,’
there can be no timer control of any such mechanism in
Voris.” Id.The PTAB concluded Voris inherently teaches a timer.
PTAB Decision at 8. The PTAB credited the Examiner’s
finding that:
[A] timer must necessarily be used to determine
the amount of time that the movement of the
movable surface disclosed in Voris is inhibited,
because Voris describes that the time period
wherein the movable surface is inhibited begins
when the user fails to continue moving the bar in
the positive resistance direction and ends when a
period of time greater than a given threshold time
limit is reached.
Id. (citing Voris, col. 5 ll. 11–24).
Mr. Holness’s contention that Voris does not disclose a
timer, because it fails to employ the term “timer” is not
persuasive. “[A] prior art reference may anticipate
without disclosing a feature of the claimed invention if
that missing characteristic is necessarily present, or
inherent, in the single anticipating reference.” Schering
Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir.
IN RE HOLNESS 10
2003) (citing Cont’l Can Co. v. Monsanto Co., 948 F.2d
1264, 1268 (Fed. Cir. 1991)).
Indeed, Mr. Holness’s assertion that Voris cannot
disclose a timer because it has no mechanism to inhibit
movement of a movable surface for a specific amount of
time is unsupported by any evidence. In Voris, when a
user fails to continue moving the bar in a positive
direction for “[a] preferred time threshold limit [of] about
two seconds,” the system’s resistance mechanism
gradually reduces the supplied resistance opposing the
movement of the bar effectively to zero. Voris, col. 5 ll.
18–24. Mr. Holness’s argument fails to explain how, in
the absence of a timer, Voris could detect when a user has
failed to continue moving the bar in a positive direction
for more than two seconds. In an effort to provide a
response to that inquiry, Mr. Holness contends that to the
extent there is a time delay in Voris, it is caused by the
movement of its gears, as opposed to a separate “timer.”
The PTAB’s finding that the gears in Voris may serve
as a timer is correct. The ’754 Application recites a
“timer,” however, it does not place any restriction on the
form or structure the timer may take. “[C]laims . . . are to
be given their broadest reasonable interpretation
consistent with the specification.” In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (internal
quotation marks and citation omitted). This court
sustains the PTAB’s rejections of independent claim 1 and
of dependent claims 2–5, 25, 28, 29, 30–32, and 35.
3. Claims 37 and 38 of the ’754 Application Are
Anticipated by Voris
Mr. Holness contends the PTAB made a factual error
when it “ruled that Voris anticipates claim 37 by
disclosing the same components that perform the same
functions.” Appellant’s Br. 54. Mr. Holness’s contention
is similar to his assertion regarding claim 1 of the ’754
Application. Here, he reiterates his previous argument
IN RE HOLNESS 11
that “Voris does not comprise a mechanism which can
inhibit for an amount of time, movement of a movable
surface on the apparatus in a direction caused by an
external force applied to the movable surface with the
limitation that the movable surface be linked to a
resistance source.” Id. With respect to claim 38 of the
’754 Application, Mr. Holness again raises the previously-
asserted contention that “Voris makes no mention of a
timer of any kind as in Claim 38.” Id.Mr. Holness raises no new arguments concerning how
the kit of claim 37 is not anticipated by Voris. The
arguments raised by Mr. Holness have already been
addressed and are rejected for the same reasons. We
therefore affirm the PTAB’s determination that Voris
anticipates the claims 37 and 38.
C. The PTAB’s Obviousness Determination Is Correct
1. Claims 6, 9, 12 and 18 Are Obvious in Light of
Voris and Burrell
Claim 6 discloses various sensing mechanism
embodiments including a snap action sensor switch with a
roller and means to activate the switch. 4 J.A. 281, ¶ 6.
The PTAB concluded Burrell teaches a variety of sensors
that can be substituted for one another to effectively
produce similar results. Mr. Holness argues the PTAB
“committed both legal and factual error . . . regarding the
substitution of a snap action switch for an [optical shaft
encoder] in Voris.” Appellant’s Br. 57. Specifically, Mr.
Holness contends that these two sensing mechanisms are
wholly disparate. According to Mr. Holness, “[a] snap
action switch is a mechanical switch and is not an optical
4 Claims 9, 12, and 18 depend directly or indirectly
from claim 6. Mr. Holness has not made any arguments
concerning the limitations for a halting effector
mechanism recited in claims 9, 12, and 18 of the ’754
Application.
IN RE HOLNESS 12
shaft encoder which reads or sense[s] very small
incremental degrees of motion of the rotating shaft while
mounted on the shaft.” Id. at 58.
Voris teaches a position encoder used to “determine
the relative position of the bar.” Voris, col. 5 ll. 61–63. In
a particular embodiment, the position encoder is an
optical encoder that senses the relative position of the bar
by reading the rotational position of the primary axle of
the brake or the torque-converting mechanism. Voris, col.
7 ll. 30–40. Burrell discloses using sensors to control the
movement of an object. Burrell, col. 1 ll. 44–47.
Furthermore, Burrell recognizes that in place of an
optical function, binary sensors such as a snap action
switch constitute an adequate substitute. Burrell, col. 3 l.
66–col. 4 l. 9. The asserted claim merely substitutes the
optical shaft encoder in Voris for the mechanical snap
action switch in Burrell. However, the United States
Supreme Court has established that “[w]hen a patent
claims a structure already known in the prior art that is
altered by the mere substitution of one element for
another known in the field, the combination must do more
than yield a predictable result.” KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 416 (2007). Here, Mr. Holness has not
presented any evidence regarding why the substitution
would yield any unpredictable results. Therefore, this
court sustains the PTAB’s obviousness rejection of claims
6, 9, 12 and 18.
2. Claims 7, 10, 13 and 19 Are Obvious in Light
of Voris and Moser
Claim 7 of the ’754 Application incorporates the
resistance exercise machine of claim 5 and requires the
sensing mechanism comprise, inter alia, “an opto-
IN RE HOLNESS 13
interrupter sensor and means to activate the sensor.” 5
J.A. 281, ¶ 7.
Mr. Holness asserts that “[a]n opto interrupter sensor
would not be possible to mount on a shaft and read
incremental rotations.” Appellant’s Br. 60. Therefore,
according to Mr. Holness, “[t]he combination of Moser
would render Voris unsatisfactory for its intended
purpose.” Id.The PTAB affirmed the Examiner’s findings that it
was obvious to substitute the encoder of Voris with the
opto sensor of Moser which would render claims 7, 10, 13
and 19 of the ’754 Application invalid under 35 U.S.C.
§ 103. PTAB Decision at 12.
Voris states that “[w]hile any suitable type of
mechanism which can sense the rotational position of the
shaft may be utilized with the present invention, it has
been found particularly advantageous to utilize an optical
encoder.” Voris, col. 7 ll. 39–43 (patent figure numbers
omitted). Furthermore, Moser discloses employing an
opto[]interrupter sensor as part of an optical encoder
circuit (“[O]pto interrupter sensors . . . are mounted to
each drive sheave and each flywheel [] in order to provide
the optical data to the 6811 microprocessor.”) (patent
figure numbers omitted). Moser, col. 8 ll. 58–61. Voris
discloses an optical encoder to sense the position of the
bar at a particular distance. Moreover, because Moser
teaches that the optical encoder is capable of receiving
information from an opto interrupter sensor, modification
of the optical encoder of Voris to incorporate the opto
interrupter sensor of Moser would have been obvious.
5 Claims 10, 13, and 19 depend from claim 7.
IN RE HOLNESS 14
3. Claims 8, 11, 14, and 20 Are Obvious in
Light of Voris and Capuano
Claim 8 incorporates the resistance exercise machine
of claim 5, where “the sensing mechanism comprises a bar
code reader and a processor and means to activate [the]
reader.” 6 ’754 Application, J.A. 281 ¶ 8.
Mr. Holness contends the PTAB erred in combining
Capuano and Voris because unlike Capuano, Voris’s
sensor means “measures incremental shaft rotational
movement.” Appellant’s Br. 61. Thus, combining
Capuano and Voris “would render Voris unsatisfactory for
its intended purpose and would change the principle []
operation of Voris.” Id.The PTAB affirmed the Examiner’s finding that
substitution of Capuano’s bar code reader for the optical
encoder of Voris would have been obvious because both
sensing means “serve the same purpose and produce the
same predictable result.” PTAB Decision at 13 (internal
quotation marks and citation omitted).
As noted by the PTAB, Capuano discloses a bar code
system that indirectly recognizes a distance traveled by a
movable surface. Furthermore, Capuano teaches a
“[o]ptional progression bar-code readers record the
weights passing upwards and downwards . . . [while a]
peak-lift bar code reader ensure[s] [the] user has
completed a lift.” Capuano, col. 5 ¶ 5.
Here, Mr. Holness argues that an obviousness
determination is improper because the bar code reader in
Capuano is limited to recording the up and down motion
of the movable surface and thus cannot be combined with
Voris. Capuano teaches using the bar code system for
recognizing a distance traveled by a movable surface and
Voris discloses that another mechanism can serve as an
6 Claims 11, 14, and 20 depend from claim 8.
IN RE HOLNESS 15
adequate substitute in measuring the position of the bar.
Here, because Mr. Holness has not provided any
compelling evidence that the bar code reader in Capuano
is incapable of working for a rotational motion, we affirm
the PTAB’s determination. Thus, substantial evidence
supports the PTAB’s rejection of claims 8, 11, 14, and 20.
4. Claims 15 and 21 Are Obvious in Light of
Voris, Burrell and Whipps
Claim 21 depends directly from claim 15. Claim 15
incorporates the resistance exercise machine of claim 6,
where “the halting effector mechanism comprises a
solenoid and a retractable pin.” ’754 Application at 30, ll.
15–16. Mr. Holness contends the PTAB committed legal
and factual error in affirming the Examiner’s
determination “that it would be obvious to substitute a
solenoid with a retractable pin of Whipps for the Voris
brake means.” Appellant’s Br. 61. Specifically, Mr.
Holness argues that in the ’754 Application, the solenoid
with a retractable pin is a binary device, capable of
protruding or retracting. Accordingly, Mr. Holness
asserts that “a solenoid with a retractable pin in the place
of the Voris ‘brake means’ would not have the capacity to
create a variable resistance or any resistance in the Voris
device since Voris ‘brake means varies resistance on a
shaft.’” Id. at 62. Mr. Holness concludes that “it would be
unsatisfactory to combine Whipps and Voris because
Whipps teaches away from a solenoid and the use of a
solenoid.” Id.The PTAB found that “Whipps discloses the use of
solenoid operated pin controllers to adjust the resistance
applied by an exercise machine based upon a signal
representative of a user’s momentary muscle failure.”
PTAB Decision at 14 (citing Whipps, col. 2 ll. 17–22).
“’A reference may be said to teach away when a
person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in
IN RE HOLNESS 16
the reference, or would be led in a direction divergent
from the path that was taken by the applicant.’” In re
Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (quoting In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Mr. Holness
has not provided any compelling grounds for his assertion
that “Whipps teaches away from a solenoid.” Appellant’s
Br. 62. His assertion that substituting a retractable pin
in the place of a brake means in Voris teaches away from
the use of a solenoid because the combination would fail
to create a variable resistance in Voris misses the mark.
As this court has established, movement of combined
elements is within the technical capabilities of a skilled
artisan in the art. In re ICON Health & Fitness, Inc., 496
F.3d 1374, 1382 (Fed. Cir. 2007) (“[W]e do not ignore the
modifications that one skilled in the art would make to a
device borrowed from the prior art.”) (citing Optivus
Tech., Inc. v. Ion Beam Applications, S.A., 469 F.3d 978,
989–90 (Fed. Cir. 2006)). Therefore, the appropriate test
is not whether replacement of the solenoid pin controllers
with a retractable pin for the brake means in Voris would
have been appropriate, but whether it would have been
obvious for a person of skill in the art to replace one
halting effector mechanism with another. See id.Here, as noted by the Examiner and affirmed by the
PTAB, Voris disclosed its brake means as its halting
effector mechanism and it would have been obvious for a
skilled artisan to substitute one type of halting effector
mechanism, such as a solenoid with a retractable pin, for
another. Therefore, this court sustains the PTAB’s
obviousness rejections of claims 15 and 21.
D. Mr. Holness Waived Any Right to Claim a New
Ground of Rejection
Mr. Holness asserts the Examiner issued rejections
based on U.S. Patent No. 5,195,746 (“Boyd”) 7 in every
7 Boyd discloses an
IN RE HOLNESS 17
office action, and in the Examiner’s final answer, “claimed
that Boyd was a ‘typographical error’[8] and then issued a
new ground of rejection, not in prior prosecution, based on
Burrell, which the [PTAB] affirmed.” Appellant’s Br. 65
Mr. Holness asserts that because “[n]o notice of this
ground of rejection was given [to him] during
prosecution,” it violates his right to due process. Id.Consequently, he claims the PTAB’s affirmance of the
Examiner’s new ground of rejection constitutes “a
violation of [his] due process rights.” Id. at 64.
The Director argues Mr. Holness has waived his right
to assert there was a new ground of rejection. According
to the Director, “[a]n Examiner is permitted to include a
new ground of rejection in the Examiner’s Answer.”
Appellee’s Br. 28 (citing 37 C.F.R. § 41.39). Upon issuing
the rejection, the Director argues that the burden then
shifts to the applicant to: “(1) request that prosecution be
reopened before the primary examiner by filing a reply
under 37 C.F.R. § 1.111; or (2) request that the appeal be
maintained by filing a reply brief as set forth in 37 C.F.R.
§ 41.41.” Id. at 28–29. The Director claims that Mr.
Holness did not exercise either of these options.
[a]pparatus for controlling the movement of an
electronic image on a video display [which]
includes a base member, a seat for an operator, a
support assembly for mounting the seat on the
base member in facing relation to the video
display, such that the seat can be tilted relative to
the base member.
Boyd, Abstract, ll. 1–6.
8 The PTAB credited the Examiner’s determination
that it made a typographical error and that “Boyd had not
been relied upon for rejecting claims 15 and 21.” PTAB
Decision at 14.
IN RE HOLNESS 18
In this case, the PTAB affirmed the Examiner’s
rejection of the ’754 Application over Voris and in light of
what Mr. Holness claims to be a new ground––Burrell.
However, similar to the regulation related to an
Examiner’s decision to reject an application on what
constitutes new grounds, § 41.50(b), a subset of the same
provision, titled “New ground of rejection,” allows an
appellant to challenge the PTAB’s decision to reject an
application based on new grounds “within two months
from the date of the decision.” 37 C.F.R. § 41.50(b). The
appellant must either: 1) request a reopening of
prosecution; or 2) request rehearing. Id. § 41.50(b)(1)-(2).
Here, as noted by the Director, Mr. Holness appealed the
PTAB’s decision to this court as opposed to requesting a
rehearing of the PTAB’s decision as stipulated by the
regulation. Thus, even if we assumed the PTAB based its
determination on a new ground of rejection, Mr. Holness
cannot now assert that such grounds constitute a
violation of his due process rights.
CONCLUSION
For the foregoing reasons, the PTAB’s decision is
AFFIRMED
COSTS
Costs to Director.