Docket No. 2013-1167
RADER, LOURIE, MOORE
January 13, 2014
Brief Summary: PTAB erred in affirming obviousness of claims to exercise machine “adapated to” be used in a pulling motion in view of prior art chest machine “capable of” being pulled (prima facie case not established by showing “mere capability”).
Summary: Mr. Giannelli appealed PTAB decision affirming rejection of his U.S. Ser. No. 10/378,261 directed to a rowing exercise machine as obvious over a prior art patent (US 5,997,447). Giannelli’s claims to the machine including “a first handle portion adapted to be moved…by a pulling force” were originally rejected as obvious over a patent describing a chest press apparatus. In response, the claims were amended to add the limitation “by a pulling force exerted by a user on the first handle portion in a rowing motion” but the claims were finally rejected as anticipated and obvious. Giannelli appealed the rejection to the Board. The obviousness rejection was affirmed (anticipation was not addressed) because it “deemed it reasonable that a user could face the handles of the prior art chest machine and exert a pulling force on its handles in a rowing motion” (simply recites a new intended use for an old product). The Board also found that “even though 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” and, therefore, Giannelli failed to rebut the Board’s showing of capability of pulling the handles”. Gianelli’s claims had also been amended to require the “handle portion” to move in a “substantially linear path” when pulled by the user but the Board found the “slightly curvilinear path” of the ‘447 patent encompassed the “substantially linear path”. Giannelli argued that “the Board erred in concluding that the examiner had met the burden of establishing a 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” (“incorrect assertion that the chest press machine…could be used as a rowing maching rather than considering how it would be used”). The FC panel agreed with Giannelli, explaining that, although the phrase “adapted to” could mean “‘capable of’ or ‘suitable for’”, it “is frequently used to mean ‘made to’, ‘designed to’, or ‘configured to’” (citing Aspex Eyewear, FC 2012) and the written description in his application makes clear that it has the “narrower meaning” (“the claimed machine is designed or constructed to be used as a rowing machine whereby a pulling force is exerted on the handles”). Accordingly, then, the proper question for the Board was whether the ‘447 apparatus was “‘made to’, ‘designed to’, or ‘configured to’” allow the user to perform a rowing exercise (“the mere capability of pulling the handles is not the inquiry the Board should have made”). As the obviousness determination was only made “by merely showing that a rowing exercise could be performed on the [‘447] machine…the Board erred in concluding that the examiner has met his initial burden of establishing a case of prima facie obviousness” (“[p]hysical capability alone does not render obvious that which is contraindicated”). It is also important to note that the opinion found “no question that the ‘447 patent does not have handles that are adapted to be pulled in a rowing motion”.