Ex Parte Albers

Board of Patent Appeals and Interferences

May 29, 2012

11545361 (B.P.A.I. May. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/545,361 10/10/2006 Thomas Albers 2577
28862 7590 05/30/2012
HUDAK, SHUNK & FARINE, CO., L.P.A.
2020 FRONT STREET
SUITE 307
CUYAHOGA FALLS, OH 44221
EXAMINER
HAYES, KRISTEN C
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
05/30/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte THOMAS ALBERS
__________

Appeal 2011-002407
Application 11/545,361
Technology Center 3600
__________

Before ERIC GRIMES, STEPHEN WALSH, and ERICA A. FRANKLIN,
Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a restraint collar for an animal. The Patent Examiner
rejected the claims for anticipation and obviousness. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm-in-part.
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STATEMENT OF THE CASE
The invention “relates to a cervical restraint for an animal in the form
of a collar that is capable of closely conforming to the skeletal structure of
the animal at a number of different locations in order to limit physical
movement of the head of the animal.” (Spec. 1, ¶ [0002].)
Claims 1-4, 6, 9-15, 17-19, and 22 are on appeal.1 Claim 1 is
representative and reads as follows (emphasis added):
1. A restraint collar for an animal, comprising:
a body having an upper member adapted to be situated below a jaw of
an animal in a region of an upper portion of a neck of the animal and a lower
member adapted to be situated in a region of a lower portion of the neck of
the animal, the body upper member including a jaw guide located between
two upper member crests and having a portion extending downwardly and
below the crests toward the lower member adapted to be situated at a front
central portion of the animal's neck, the crests adapted to fit below the jaw of
the animal, the jaw guide adapted to accept a portion of the jaw or an upper
throat area or both the jaw and upper throat area of the animal, the body
having a maximum height between one of the crests and the lower member
adapted to make it difficult for the animal to open its mouth, and a connector
member having a first fastener connected to a first end of the body and a
second fastener connected to a second end of the body for securing the collar
around the neck of the animal, wherein the body includes an ear guide
located on the upper member located laterally outward from each upper
member crest and adapted to be situated below the ear of the animal when
the collar is in a connected position, and wherein each ear guide
independently has an angled portion or an archial portion, wherein the collar
is a reversible collar whereby the lower member is utilizable as a second
upper member adapted to be situated below the jaw of the animal in the
region of the upper portion of the neck of the animal and the upper member
as a second lower member adapted to be situated in the region of the lower
portion of the neck of the animal when the collar is in a reversed position,

1 Claims 8 and 23 were finally rejected as indefinite and as anticipated.
Appellant appealed those rejections (App. Br. 5 and 12), and the Examiner’s
Answer withdrew them (Ans. 3).
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wherein the lower member includes a central jaw guide located between two
lower member crests and having a portion extending upwardly between the
crest toward the upper member, and wherein the lower member includes an
ear guide located laterally outward from each lower member crest with the
lower ear guide adapted to be situated below the ear of the animal when the
collar is in a reversed, connected position, and wherein each lower member
ear guide independently has an angled portion or an archial portion.

The Examiner rejected the claims as follows:
 claims 1-3, 6, 9-11, and 22 under 35 U.S.C. § 102(b) as anticipated by
Huegelmeyer (US 5,628,283 (1997));
 claims 4, 12-15, 18, and 19 under 35 U.S.C. § 103(a) as unpatentable
over Huegelmeyer; and
 claim 17 under 35 U.S.C. § 103(a) as unpatentable over Huegelmeyer
and Garth (US 4,413,619 (1983)).

ANTICIPATION
The Issue
The Examiner found that Huegelmeyer’s restraint collar for an animal
anticipated Appellant’s collar. (Ans. 4-5.)
Appellant contends that the claims define a vertically reversible collar,
but “nowhere within the four corners of the Huegelmeyer reference is a
reversible collar taught, wherein the collar can be ‘vertically’ reversible as
claimed in independent claims 1 and 11.” (App. Br. 7.) Appellant contends
that its Exhibit A shows that “even if one of ordinary skill in the art would
attempt to utilize the collar of Huegelmeyer in a reversible manner as
defined in independent claims 1 and 11, the Huegelmeyer collar would not
function for its intended purpose due to the structure of Huegelmeyer's
collar!” (Id.)
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The Examiner responds that “[t]he reversibility of the collar relates to
the orientation of the collar when on the animal, not towards the structure of
the device . . . The collar of Huegelmeyer is reversible.” (Ans. 7.) The
Examiner further states: “The claims seem to be leading towards the method
of using the collar, inasmuch as they discuss the placement and arrangement
of the collar on the animal. The prior art reads on the structure of the
claimed device.” (Id.) According to the Examiner, “Huegelmeyer teaches
an archial U-shaped or substantially V-shaped jaw guide, as claimed,
regardless of the intended fit on the animal.” (Id. at 8.)

Findings of Fact
1. Heugelmeyer’s Figure 3 is reproduced here:

{“FIG. 3 is a plan view of [an] embodiment of an animal collar in an open
and flat configuration before being placed around an animal’s neck.”
(Huegelmeyer, col. 1, ll. 37-40.)}

2. Appellant’s Figure 2 is reproduced here:
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{“FIG. 2 is a front elevational view of one embodiment of an animal collar
of the present invention.” (Spec. 7, ¶ [0027].)}

3. The Specification states:
In the embodiment illustrated in FIG. 2, collar 10 is a reversible collar
and is adapted so that the lower member can be reversed and utilized
as an upper member as described hereinabove.

(Id. at 10, ¶ [0038].)
4. The Specification states:
Upper member 20 includes a jaw guide 22 which aids in maintaining
the collar in a desired position on the animal during use, and can
prevent rotation of the collar. A portion of jaw guide 22 extends
below an upper-most end or edge of the body 12 such as an upper
crest 24, with jaw guide extending downwardly toward the bottom
member 30.

(Id. at 8, ¶ [0032].)

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5. Appellant’s Figure 1 and Huegelmeyer’s Figure 2 are reproduced
here:

{“FIG. 1 is an elevational perspective view of one embodiment of the
animal collar of the present invention installed around the neck of a dog.”
(Spec. 7, ¶ [0027].)
“FIG. 2 is [a] perspective view of [Huegelmeyer’s] animal collar.”
(Huegelmeyer, col. 1, ll. 35-36.)}

6. Appellant’s Exhibit A is reproduced here:
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{Exhibit A is said to show “the collar illustrated in Figure 2 of Huegelmeyer
. . . flipped over and ‘vertically’ reversed on the animal such that the former
upper member is a lower member and the lower member is used as the upper
member.” (App. Br. 7.)}

Principles of Law
To anticipate a claim, a prior art reference must disclose
every limitation of the claimed invention, either explicitly or
inherently. Anticipation is an issue of fact, and the question
whether a claim limitation is inherent in a prior art reference is
a factual issue.

In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted).

A patent applicant is free to recite features of an apparatus
either structurally or functionally. See In re Swinehart, 58 C.C.P.A.
1027, 439 F.2d 210, 212, 169 USPQ 226, 228 (CCPA 1971) (“[T]here
is nothing intrinsically wrong with [defining something by what it
does rather than what it is] in drafting patent claims.”). Yet, choosing
to define an element functionally, i.e., by what it does, carries with it a
risk. As our predecessor court stated in Swinehart, 439 F.2d at 213,
169 USPQ at 228:
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where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the claimed
subject matter may, in fact, be an inherent characteristic of the prior
art, it possesses the authority to require the applicant to prove that the
subject matter shown to be in the prior art does not possess the
characteristic relied on.

Id. at 1478.

Analysis
Claims 1 and 11
The evidence identified in the rejection supports the Examiner’s
findings. We agree with the Examiner that the reversible feature of the
claimed collar is a functional feature that Heugelmeyer’s collar had. When
the Examiner identified the common features between Huegelmeyer’s collar
and the collar Appellant claims, the burden shifted to Appellant to show that
the prior art structure did not inherently possess the functionally defined
limitations of his claimed apparatus. See Schreiber, 128 F.3d at 1478. We
agree with the Examiner’s “Response to Argument” on reversibility. (Ans.
7, #18-20.) We have considered the drawing in Appellant’s Exhibit A, but
find it unpersuasive of error by the Examiner because the collar would still
perform the same functions in the vertically reversed position. The rejection
of claims 1 and 11 is affirmed.
Claims 3, 6, and 10 have not been argued separately and therefore fall
with claims 1 and 11. 37 C.F.R. § 41.37(c)(1)(vii).

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Claim 2
Appellant argues that “Huegelmeyer cannot teach the claimed jaw
guide that is archial in shape.” (App. Br. 11.) Archial appears to a made-up
word meaning arch-shaped. We agree with the Examiner that the shape
between Huegelmeyer’s upper member crests 18 is arch-shaped.

Claim 3
Appellant argues that
Huegelmeyer also cannot anticipate the jaw guide that is substantially
u-shaped between the ends of the jaw guide that is adapted to accept a
portion of the jaw or the upper throat area or both of the animal.
Huegelmeyer reference number 60 is designed to fit in front of the jaw
as illustrated in Figure 2 of Huegelmeyer.

(Id.) We disagree. The shape between Huegelmeyer’s upper crests 18 is U-
shaped, as required by claim 3. (See FF 1.) Huegelmeyer described “a part
of the forward edge portion 54 of the outer plastic layer 10 is provided with
a plurality of spaced parallel slits 60 to enhance flexibility in that area.”
(Huegelmeyer, col. 4, ll. 17-20.) Contrary to Appellant’s contention,
Huegelmeyer’s Figure 2 shows the collar in a snug fit under the animal’s
jaw, not in front of the jaw. (See FF 5.) We agree that Hugelmeyer’s Figure
2 shows the forward edge of the collar in a more forward position than
Appellant’s Figure 1 shows its collar. (See FF 5.) However, the drawing
confirms that Huegelmeyer’s collar meets claim 1’s alternative requirements
for a “jaw guide adapted to accept a portion of the jaw or an upper throat
area or both the jaw and upper throat area of the animal.”

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Claim 9
Appellant argues that “Huegelmeyer does not anticipate a reversible
collar and therefore contains no lower member jaw guide.” (App. Br. 12.)
We agreed with the Examiner that Huegelmeyer did anticipate a reversible
collar, for the reasons given above with regard to claim 1. Claim 9 requires
only that the upper and lower member jaw guides have a different shape.
We agree with the Examiner that the collar shown in Huegelmeyer’s Figure
3 meets that requirement. (See FF 1.)

Claim 22
Appellant argues that claim 22 “claims that the jaw guide is
substantially V-shaped between ends of the jaw guide,” but “the
Huegelmeyer structure is not substantially V-shaped between ends of the
jaw guide.” (App. Br. 13.) We agree with Appellant. While Huegelmeyer’s
Figure 3 and Appellant’s Figure 2 both show a shape for this structure that
can reasonably considered to be substantially U-shaped, i.e., having a
shallow U-shape, they are not depicted as substantially V-shaped. The
rejection of claim 22 is therefore reversed.

OBVIOUSNESS
A. The Examiner’s position is that Huegelmeyer disclosed a collar
having a body comprising an elastomer but not the dimensions of the device.
(Ans. 6.) According to the Examiner:
It would have been obvious to one of ordinary skill in the art at the
time of the invention to modify the depth of the lower end to be from
about 10-60mm, the width of the jaw guide between jaw guide ends to
be about 5-20cm, the body to have a length of about 10-50cm and a
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height of about 5-25cm, depending on the size and shape of the
animal on which the device is being placed.

(Id.) The Examiner also noted that “where the general conditions of a claim
are disclosed in the prior art, discovering the optimum or workable ranges
involves only routine skill in the art.” (Id., citing In re Aller, 220 F.2d 454,
456 (CCPA 1955).)
Appellant contends that the dimensions claimed would not have been
obvious in view of Huegelmeyer’s structure that provides a fit around the
outside of the animal’s jaw. (App. Br. 13.) According to Appellant, the
claimed dimensions “are defined such that the device can be formed[,] as
defined [in] paragraph [0002][,] that is capable of closely conforming to the
skeletal structure of the animal at a number of different locations in order to
limit physical movement of the head animal. This is further defined in the
independent claims with respect to the defined fit, for example, the crest
adapted to fit below the jaw of the animal and the jaw guide adapted to
accept a portion of the upper throat area or both.” (Id.)
We agree with the Examiner’s implicit finding that adjusting
Huegelmeyer’s collar to fit the anatomy of an individual animal would have
been within the ordinary skill in the art. Collars having the dimensions
recited in the claims would reasonably have been expected from routine
fitting according to Huegelmeyer’s instructions. We therefore affirm the
rejection of claims 4, 12-14, 18, and 19.
Appellant argues that claim 15 “claims that the jaw guide is
substantially V-shaped between ends of the jaw guide,” but “the
Huegelmeyer structure is not substantially V-shaped between ends of the
jaw guide.” (Id.) We agree with Appellant. While Huegelmeyer’s Figure 3
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and Appellant’s Figure 2 both show a shape for this structure that may
reasonably considered substantially U-shaped, i.e., having a shallow U-
shape, they are not depicted as substantially V-shaped. The rejection of
claim 15 is therefore reversed.

B. Claim 17
Appellant does not contest the rejection of claim 17 as unpatentable
over Huegelmeyer and Garth. (Final Rejection 5; Ans. 6-7.) We therefore
summarily affirm it. See MANUAL OF PATENT EXAMINATION PROCEDURE
§ 1205.02 (“If a ground of rejection stated by the examiner is not addressed
in the appellant’s brief, that ground of rejection will be summarily sustained
by the Board.”).

SUMMARY
We affirm the rejection of claims 1-3, 6, and 9-11 under 35 U.S.C.
§ 102(b) as anticipated by Huegelmeyer.
We reverse the rejection of claim 22 under 35 U.S.C. § 102(b) as
anticipated by Huegelmeyer.
We affirm the rejection of claims 4, 12-15, 18, and 19 under
35 U.S.C. § 103(a) as unpatentable over Huegelmeyer.
We reverse the rejection of claim 15 under 35 U.S.C. § 103(a) as
unpatentable over Huegelmeyer.
We affirm the rejection of claim 17 under 35 U.S.C. § 103(a) as
unpatentable over Huegelmeyer and Garth.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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