Summary
The United States Court of Appeals for the Federal Circuit reviewed the Patent Trial and Appeal Board’s rejection of claims in Raymond Giannelli’s rowing-machine patent application as obvious over a chest-press apparatus patent. The court held that the Patent and Trademark Office failed to establish prima facie obviousness because physical capability alone did not show that the prior-art machine was designed or configured for the claimed rowing motion. The court reversed the Board’s decision.
Topics
Practice areas
Questions Presented
- Whether the Board erred by treating the claimed handles being 'adapted to' be moved by a pulling force in a rowing motion as satisfied by the mere physical capability of pulling the handles of a chest-press machine.
- Whether the PTO established a prima facie case of obviousness by explaining why a person of ordinary skill would modify the chest-press apparatus to arrive at the claimed rowing machine.
Holdings
- In the context of these claims, 'adapted to' means made to, designed to, or configured to perform the claimed rowing motion, rather than merely capable of being used in that manner.
- The PTO failed to establish a prima facie case that the claimed rowing machine would have been obvious over the '447 chest-press apparatus.
- The court would not review the anticipation rejection because the Board did not review and decide that issue.
Key quotations
“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.” (739 F.3d at 1378)
“Physical capability alone does not render obvious that which is contraindicated.” (739 F.3d at 1379)
“A chest press machine is not a rowing machine, nor has evidence been shown that it is.” (739 F.3d at 1379)
Factual background
Giannelli's patent application disclosed a rowing exercise machine in which a user pulls handles in a rowing motion against selected resistance. The cited '447 patent disclosed a chest-press machine designed for the user to push its handles against resistance. The Board concluded that the chest-press machine was capable of being used by pulling its handles and therefore rendered the rowing-machine claims obvious.
Procedural history
The PTO examiner rejected the original claims as anticipated and later rejected amended claims under 35 U.S.C. §§ 102(b) and 103(a) based on the '447 patent. The Patent Trial and Appeal Board affirmed the obviousness rejection but did not address anticipation. The Federal Circuit reviewed the Board's obviousness decision and reversed.