In re Icon Health and Fitness, Inc.

• Decision Date: 01 August 2007
• Docket Number: No. 2006-1573.,2006-1573.
• Citation: 496 F.3d 1374
• Parties: In re ICON HEALTH AND FITNESS, INC.
• Court: U.S. Court of Appeals — Federal Circuit

496 F.3d 1374

In re ICON HEALTH AND FITNESS, INC.

No. 2006-1573.

United States Court of Appeals, Federal Circuit.

August 1, 2007.

Larry R. Laycock, Workman Nydegger, of Salt Lake City, UT, argued for appellant. With him on the brief was William R. Richter.

Robert J. McManus, Associate Solicitor, Office of the Solicitor, United States Patent and Trademark Office, of Arlington, VA, argued for the director of the United States Patent and Trademark Office. With him on the brief were John M. Whealan, Solicitor and William LaMarca, Associate Solicitor.

Before MAYER, SCHALL, and PROST, Circuit Judges.

PROST, Circuit Judge.

ICON Health & Fitness, Inc. ("Icon") appeals from a decision by the Board of Patent Appeals and Interferences ("Board") during reexamination of Icon's U.S. Patent No. 5,676,624 ("the '624 patent"). Ex parte ICON Health & Fitness, Reexam. No. 90/005,117, Appeal No.2006-0790, 2006 WL 1665623 (B.P.A.I. May 16, 2006) ("Board Decision"). Finding no error in the Board's decision, we affirm its decision holding Icon's claims unpatentable as obvious.

BACKGROUND

Icon owns the '624 patent, issued October 14, 1997, and sought reexamination by the Patent and Trademark Office ("PTO"). The '624 patent claims a treadmill with a folding base, allowing the base to swivel into an upright storage position. Claim 1, from which all other claims on appeal depend, recites:

1. A treadmill comprising:

support structure having a base for stably positioning on a support surface to be free standing and having upright structure extending upwardly from said base;

a tread base having a frame that includes a front, a rear, a left side, a right side and an endless belt positioned between said left side and said right side, said frame being connected to said support structure to be moveable about an axis of rotation spaced from said front toward said rear between a first position in which said endless belt is position[ed] for operation by a user positioned thereon and a second position in which said rear of said frame is positioned toward said support structure;

handle means associated with said support structure positioned for grasping by a user for moving said support structure with said tread base in said second position between a use position in which said support structure has said base positioned on said support surface for stably positioning said support structure on a support surface and a moving position in which said support structure is rotatably displaced from said use position;

roller means adapted to said base for engagement with said support surface when said support structure is reoriented to said moving position for movement of said support structure by the user on said support surface; and

a gas spring connected between the tread base and the upright structure to assist in stably retaining said tread base in said second position relative to said upright structure with said tread base in said second position.

(emphasis added).

The present dispute involves only the final limitation, requiring a gas spring "to assist in stably retaining" the tread base in the upright position. On reexamination, the examiner rejected Icon's claims as obvious under 35 U.S.C. § 103, based on the combination of an advertisement by Damark International, Inc. ("Damark") and U.S. Patent No. 4,370,766 to Teague, Jr. ("Teague").

Damark consists of an advertisement for a folding treadmill; Icon does not challenge the Board's finding that Damark demonstrates all claim elements other than the gas spring. The present inquiry, therefore, focuses on Teague's disclosure of gas springs and the applicability of Teague to Icon's invention. Teague describes a bed that folds up into a cabinet or recess. It purports to improve on prior art counterbalancing mechanisms by using a novel dual-action spring rather than the prior single-action springs. Single-action springs provide a force pushing the bed closed at all times. Teague's dual-action spring, on the other hand, reverses its force as the mechanism passes a neutral position; the neutral position in Teague occurs when the center of gravity of the bed aligns vertically with the pivot point. As the bed moves past the neutral position to the closed position, the mechanism opposes continued motion. The bed moves into the closed position under the pull of gravity. When fully closed, therefore, the mechanism in Teague provides an opening force, but not one sufficient to counteract the force of gravity. Essentially, Teague's dual-action spring partially supports the weight of the bed in both the closed and open positions. This provides the benefit of reducing the force required to open the bed from the closed position, while still reducing the force required to lift the bed from the open position.

The Board affirmed the examiner's determination that the combination of Teague and Damark rendered claim 1 obvious. First, the Board rejected Icon's argument that Teague does not provide analogous art. Specifically, because Teague and the current application both address the need to stably retain a folding mechanism, the Board found Teague reasonably pertinent to the current application. Further, it found that discussion of a lifting force in the present application paralleled Teague's mechanism for creating a lifting force.

Next, the Board looked to the broad scope of the appealed claims and held that Teague's teachings fell within that broad scope. In particular, because claim 1 "does not limit the degree or manner in which the gas spring `assist[s] in stably retaining' the tread base at the storage position," the broad claim scope could encompass the solution provided by Teague. Board Decision, slip op. at 24. The Board criticized Icon's failure to provide any record evidence beyond attorney argument and thus read the claim as covering Teague's mechanism. Concluding, the Board held claims 1-3 and 10-12 obvious in light of Damark and Teague.

Because Icon did not dispute that an additional reference, U.S. Patent No. 4,913,396 to Dalebout et al. ("Dalebout"), disclosed all additional limitations in claims 4-9, the Board further affirmed the examiner's rejection of those claims as obvious. The Board, however, reversed the examiner's rejection of claim 13, rejecting the conclusion of obviousness.

Icon timely appealed to this court, challenging both the use of Teague as analogous art and the ultimate conclusion of obviousness. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4).

DISCUSSION

Although based on determinations of underlying facts, which we review for substantial evidence, the ultimate conclusion of obviousness is a legal question, which we review de novo. In re Gartside, 203 F.3d 1305, 1316 (Fed.Cir.2000). Underlying facts include the scope and content of the prior art, the level of ordinary skill in the art at the time of the invention, objective evidence of nonobviousness, and differences between the prior art and the claimed subject matter. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). The Board's determination that a prior art reference is analogous art also presents an issue of fact, reviewed for substantial evidence. See In re Paulsen, 30 F.3d 1475, 1481 (Fed.Cir.1994).

I

We initially consider the proper claim meaning and scope. Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed.Cir.2001). Although neither the Board nor Icon specifically argues for any particular construction of the gas spring limitation, each party's obviousness argument turns on the breadth of that limitation. During reexamination, as with original examination, the PTO must give claims their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.Cir.2004). Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation. As this court has discussed, this methodology produces claims with only justifiable breadth. In re Yamamoto, 740 F.2d 1569, 1571 (Fed.Cir.1984). Further, as applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee. Am. Acad., 367 F.3d at 1364.

The claims at issue recite "a gas spring ... to assist in stably retaining said tread base." As the Board noted, "claim 1 does not limit the degree or manner in which the gas spring" assists in stably retaining. Board Decision, slip op. at 24. Icon, without arguing for any particular construction, takes the position that the gas spring must provide a force continuing to urge the mechanism closed when in the closed position. The specification of the '624 patent provides only minimal discussion of the gas springs. It describes a "lift assistance assembly," which in the illustrated embodiment includes a gas spring to provide force to at least partially support the weight of the tread base. '624 patent, col. 15, ll. 3-25. When claiming the gas spring, the application makes no reference to lift assistance, only stable retention of the tread base.

The specification provides little further regarding a definition of "stably retain." It describes the treadmill's folding action, such that the center of gravity of the tread base passes over the pivot point to "stably retain" the base. Id. at col. 12, ll. 30-34. Accordingly, gravity creates a stable closed position; the gas spring claimed must only "assist" in stably retaining the tread base. Because Icon could have amended its claims to more clearly define "stably retain" and did not do so, it now must submit to the Board's interpretation. With little guidance from the specification, the Board's construction properly represents the broadest reasonable construction. Although the Board did not set out the specific construction for Icon's claim, it did so to the extent required. Indeed, an infringement or...