Ex Parte Bennett

Patent Trial and Appeal Board

Jul 30, 2018

14925182 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/925,182
126238 7590
Telekta Law, P.S.
2917 Pacific Ave
#102
FILING DATE
10/28/2015
08/01/2018
Everett, WA 98201-5312
FIRST NAMED INVENTOR
Charles Stuart Bennett
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BENN-1-1001-1 1946
EXAMINER
HOMZA, LISA NHUNG
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
08/01/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
micca.carey@live.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES STUART BENNETT
Appeal2018-005853
Application 14/925, 182
Technology Center 2800
Before TERRY J. OWENS, DONNAM. PRAISS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL 1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision rejecting claims 13 and 15-20. We have jurisdiction
over the appeal under35 U.S.C. § 6(b).
We REVERSE.
1 Our decision refers to the Specification ("Spec.") filed Oct. 28, 2015, the
Examiner's Final Office Action ("Final Act.") dated May 11, 2017,
Appellant's Appeal Brief ("Appeal Br.") filed Nov. 27, 2017, the
Examiner's Answer ("Ans.") dated Mar. 2, 2018, and Appellant's Reply
Brief ("Reply Br.") filed Apr. 25, 2018.
2 Appellant is the Applicant, Charles Stuart Bennet, who is identified as the
real party in interest. Appeal Br. 3.
Appeal 2018-005853
Application 14/925, 182
STATEMENT OF THE CASE
The invention relates to holsters and, specifically, a system for
securing and carrying a device, such as a frrearm, phone, medical device, or
other apparatus, anywhere on a person's clothing, apparel, accessories, or
other material for the purpose of concealed, secure carry. Spec. ,r,r 6, 7.
Claim 13, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. The limitations at issue
are italicized.
13. A system for carrying a device, comprising:
at least one frrst ferromagnetic area disposed on at least one
surface of the device;
at least one second ferromagnetic area configured to interact
with the at least one frrst ferromagnetic area, the at least
one second ferromagnetic area including at least:
a first raised area;
a second recessed area; and
a third raised area, wherein the first and third
raised areas are substantially co-planar; and
at least one magnet configured to be removably received by the
at least one second ferromagnetic area, the at least one
magnet configured to fit within the second recessed area.
REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
rejectionofclaims 13and 15-20under35U.S.C. § 112(a)forfailing to
comply with the written description requirement. Ans. 3; Final Act. 4--5;
App. Br. 4. 3
3 The Examiner also objected to the amendments filed on April 19, 2017
under 35 U.S.C. § 132(a) as introducing new matter as well as the drawings
for adding new matter into drawing 9. Final Act. 2--4. The Examiner's
objections, however, are not within our jurisdiction because, under
2
Appeal 2018-005853
Application 14/925, 182
ANALYSIS
The dispositive issue before us in this appeal is whether Appellant has
identified reversible error in the Examiner's conclusion that the recited "a
frrst raised area," "a second recessed area," "a third raised area," and
"wherein the frrst and third raised areas are substantially co-planar" lack
written description support in the Specification. We answer this question
affrrmatively and, therefore, reverse the Examiner's written description
rejection.
The Examiner has the initial burden of establishing a prima facie case
ofunpatentability of the claimed subject matter under 35 U.S.C.
§ 112(a). Inre Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he
examiner bears the initial burden, on review of the prior art or on any other
ground, of presenting a pri ma faci e case of unpatentability"). To establish
lack of written description, the Examiner must show that the Specification as
originally filed does not reasonably convey to a person having ordinary skill
in the art that the inventor had possession at that time of the later claimed
subject matter. In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983)
( citations omitted). Written description support does not depend on "the
presence or absence of literal support in the specification for the claim
language ... The content of the drawings may also be considered in
determining compliance with the written description requirement." Id.
The Examiner determines that the recited "a frrst raised area," "a
second recessed area," "a third raised area," and "wherein the frrst and third
raised areas are substantially co-planar" lack written description support in
35 U.S.C. § 134(a), our review is limited to rejections of claims. Therefore,
we do not address the objections in our discussion below.
3
Appeal 2018-005853
Application 14/925, 182
the Specification. Final Act. 4--5. In the Answer, the Examiner further
explains the basis of the rejection as "improper combining of elected and
non-elected embodiments" where "Appellant agreed to prosecute the
invention disclosed by figure 9 only." Ans. 6. The Examiner acknowledges
Appellant's reliance on paragraphs 28 and 31 of the originally filed
Specification and Figures 2, 3, and 7 of the originally filed Figures as
support for the disputed features, but determines that written description
support requires "an explicit suggestion to combine such that a person
skilled in the art would understand what applicant has invented at the time
the application was filed." Id. at 7-8. The Examiner concludes "the
specification, as originally filed, fails to suggest to one skilled in the art that
the appellant was in possession of the embodiment of Fig. 9 having a
ferromagnetic areas with two raised and one recessed portions as recited in
the appealed claims." Id. at 8.
Appellant urges that the Examiner erred in determining that the claims
are not compliant with 35 U.S.C. § 112(a) on the basis that they are "not
consistent with the election responsive to a restriction requirement." Reply
Br. 3. Appellant argues that the Examiner improperly applied Section
112( a) because " [ t ]he test for written description support for the claims has
no bearing on or relationship to restriction practice" including elected
inventions and non-elected embodiments. Id. at 5---6. In this regard,
Appellant contends"[ a] restriction requirement does not have the effect of
removing subject matter from the specification." Id. at 10-11.
Appellant further argues that the Examiner failed to provide evidence
or reasoning to explain why persons skilled in the art would not recognize
the claimed invention from the original disclosure. Id. at 7. Appellant
4
Appeal 2018-005853
Application 14/925, 182
points out that Figure 9 is explicitly described in paragraph 32 of the
originally filed Specification, which discloses frrst and second ferromagnetic
areas with the second ( item 106) "configured to interact with the frrst,
coming between the device 400 and the fabric 500." Id. at 8 ( quoting
Spec. ,r 32). According to Appellant, the immediately preceding
paragraph 31 states that "[ w ]hile the ferromagnetic area 106 is shown here
as a single flat area, it should be noted that, as above, the area may be a flat
area, but it may also be an area with at least one recessed portion." Id.
( quoting Spec. ,r 31 ). Appellant contends that a skilled artisan would
reasonably expect that something expressly identified in paragraph 28 of the
Specification as a "preferred embodiment" of ferromagnetic area 100 shown
in Figure 3 having a frrst portion 101, a second portion 102, and a third
portion 103 might be combined with other elements. Id. at 8-9. As such,
Appellant contends that "the specification and drawings clearly contemplate
and expressly disclose the combination of elements claimed and currently
rejected under 35 U.S.C. § 112(a)." Id. at 9.
We agree. It is incumbent upon the Examiner to establish a factual
basis to support the legal conclusion of unpatentability. As stated in In re
Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001 ), "the Board cannot simply
reach conclusions based on its own understanding or experience - or on its
assessment of what would be basic knowledge or common sense. Rather,
the Board must point to some concrete evidence in the record in support of
these fmdings." This requirement also applies to the patentability
determinations made by Examiners.
Although the Examiner fmds (Ans. 7-8) "the original disclosure does
not unequivocally suggest such modification to the embodiment of Fig. 9,"
5
Appeal 2018-005853
Application 14/925, 182
this fact alone does not remedy the deficiency in the rejection with regard to
whether the disclosures of paragraphs 28, 31, 32, and Figures 2, 3, 7, and 9
convey with reasonable clarity to those skilled in the art that, as of the filing
date sought, the applicant was in possession of the invention as now
claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir.
1991 ). The claimed subject matter need not be described "in haec verba" in
the original specification in order to satisfy the written description
requirement. In re Wright, 866 F .2d 422, 425 (Fed. Cir. 1989). Rather, "the
test ... is whether a person of ordinary skill in the art would recognize that
the applicant possessed what is claimed in the later filed application as of the
filing date of the earlier filed application." Noellev. Lederman, 355 F.3d
1343, 1348 (Fed. Cir. 2004).
The Examiner fails to explain why the disclosure in the Specification
that a ferromagnetic area shown as flat in the drawings may be configured
with a frrst portion 101, a second portion 102, and a third portion 103, which
configuration is further characterized as a preferred embodiment, necessarily
leads to the determination (Ans. 8) that "the specification, as originally filed,
fails to suggest to one skilled in the art that the appellant was in possession
of the embodiment of Fig. 9 having [] ferromagnetic areas with two raised
and one recessed portions as recited in the appealed claims." Absent such,
the Examiner has not carried the burden of establishing, by a preponderance
of the evidence, the factual basis for the conclusion that the claimed
invention lacks written description support in the originally filed
Specification and drawings.
6
Appeal 2018-005853
Application 14/925, 182
DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 13 and 15-20under35 U.S.C. § 112(a) is reversed.
REVERSED
7