Digest of In re Holness, No. 2014-1824 (Fed. Cir. May 20, 2015) (nonprecedential). On appeal from the USPTO, PTAB. Before Newman, Reyna, and Wallach.

Procedural Posture: Appellant Holness appealed the PTAB affirmance of the Examiner’s rejection of claims directed to exercise machines as anticipated and obvious. CAFC affirmed.

  • Anticipation: The PTAB correctly determined that certain claims directed to resistance exercise machines are anticipated. The prior art explicitly discloses a mechanism to inhibit movement, as required by independent claims 1 and 37 and their dependent claims. The prior art also discloses permitting “uninhibited movement . . . in the opposite direction” of an external force: The prior art describes an apparatus where variable resistance is reduced to zero; in this case, an exerciser lifting a bar may choose to lower the bar back down, which constitutes uninhibited movement in the opposite direction.Further, the prior art inherently discloses a “timer” as required by independent claims 1, 4, and 37 and their dependent claims. The prior art describes measuring an amount of time, and the PTAB concluded that it necessarily requires use of a timer. In addition, the word “timer” should be given its broadest reasonable interpretation consistent with the specification, and the movement of gears in the prior art could serve as a “timer.”Finally, the prior art discloses a mechanism to inhibit movement for an amount of time and a timer, as required by claims 37 and 38.
  • Obviousness: The PTAB’s obviousness rejections are supported by substantial evidence. Claim 6 describes an embodiment that uses a snap action sensor switch in a sensing mechanism. Prior art reference Voris discloses an optical shaft encoder in a sensing mechanism, and another prior art reference discloses a snap action switch as an adequate substitute for an optical sensor. The Applicant did not show that combining the two references would yield any unpredictable results, so it would have been obvious to substitute the snap action switch for the optical sensor.Claim 7 describes an embodiment that uses an opto-interrupter sensor in a sensing mechanism. Voris discloses an optical shaft encoder in a sensing mechanism, and another prior art reference discloses that an optical encoder is capable of receiving information from an opto-interrupter sensor. It would have been obvious to combine the references.Claim 8 describes an embodiment that uses a bar code reader in a sensing mechanism. Voris discloses an optical shaft encoder in a sensing mechanism, and another prior art reference discloses that a bar code reader is similarly capable of recognizing distance traveled across a movable surface. It would have been obvious to combine these references because both sensing means serve the same purpose and produce the same predictable result.

    Claim 15 describes a halting effector mechanism embodiment that includes a solenoid and a retractable pin. The Applicant argued that substituting a solenoid and a retractable pin for the brake in Voris would be unsatisfactory, and that this teaches away from a solenoid. However, the CAFC agreed with the PTAB that it would have been obvious for one of skill in the art to replace one type of halting effector mechanism for another.

  • Prosecution: The Applicant waived any right to assert that there was a new ground of rejection. Applicant alleged that the Examiner’s final answer included a new ground of rejection. The PTAB affirmed the rejection. However, even if the PTAB’s determination was based on a new ground of rejection, the Applicant had the option to request that prosecution be reopened or to request a rehearing, but did not exercise either option. Thus, the Applicant’s right to challenge the determination was waived.