Ex Parte Dickerson

Patent Trial and Appeal Board

Oct 22, 2018

13346844 (P.T.A.B. Oct. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/346,844 01/10/2012
13543 7590
Next IP Law Group LLC
131 S. Cortez St.
New Orleans, LA 70119
10/24/2018
FIRST NAMED INVENTOR
Stephen Lang Dickerson
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.
761902.000lUSCONOl 9422
EXAMINER
DURHAM, NATHAN E
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
10/24/2018 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):
mnguyen@nextiplaw.com
bgunter@nextiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN LANG DICKERSON
Appeal2018-003008
Application 13/346,844
Technology Center 3700
Before DANIELS. SONG, JAMES P. CAL VE, and
NATHAN A. ENGELS, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Office Action (hereinafter "Final Act.") rejecting claims 23, 24, and
26-44, in the present application (Appeal Brief (hereinafter "Br.") 1 ). We
have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a).
We AFFIRM.
The claimed invention is generally directed to garments made by a
device (Abstract). Representative independent claims 23, 35, and 41 read as
follows (Br., Claims App'x A-1, A-3-A-4, A-5, emphasis added):
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Application 13/346,844
23. A garment comprising:
a garment material having threads that are counted;
a stitching pattern that is based on thread counts and a
sequence of thread counts of the garment material; and
stitching threads being stitched on the garment material,
wherein the stitching threads form the stitching pattern.
35. A garment material comprising:
a garment material having thread that are counted and a
cutting pattern that is based on thread counts and a sequence of
thread counts of the garment material; and
stitching threads being stitched on the garment material.
41. A garment comprising:
a garment material having thread that are counted, and
stitching and cutting patterns that are based on thread counts and
a sequence of thread counts of the garment material; and
stitching threads being stitched on the garment material,
wherein the stitching threads form the stitching pattern.
(App. Br. 11, Claims App'x).
REJECTIONS
1. The Examiner rejects claims 26-34, 36-40, 43, and 44 under 35
U.S.C. § 112, second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter the applicant regards as the
invention (Final Act. 5).
2. The Examiner rejects claims 23, 24, and 26-44 under 35 U.S.C.
§ 102(b) as anticipated by Nakazawa et al. (US 4,141,082, iss. Feb. 27, 1979
(hereinafter "Nakazawa")) (Final Act. 6).
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ANALYSIS
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments that the Appellant could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv); In re Jung, 637 F.3d 1356, 1365-
66 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010
(precedential)). We address the prior art rejection first.
Rejection 2
The Examiner rejects claims 23, 24, and 26-44 as anticipated by
Nakazawa, finding that Nakazawa discloses a garment made of a woven,
knit, or non-woven material, having a "plurality of panels ( cut pieces)
(Figures 5A-5H) which are attached by sewing threads which inherently
disclose some form of pattern (Col. 6, Lines 10-17)." (Final Act. 6-7). The
Examiner finds that Nakazawa "discloses all the structure of the final
garment." (Final Act. 7). We agree with the Examiner.
The Appellant argues that N akazawa does not discloses "a stitching
pattern that is based on thread counts and a sequence of thread counts of the
garment material" as recited in independent claim 23 (Br. 4--5, emphasis
omitted). However, we agree with the Examiner that such language
describes "a process of forming the garment," but that "the process language
is not given patentable weight because the process is not changing the
overall structure of the finished garment." (Final Act. 7). In particular,
"[t]he patentability of a product does not depend on its method of
production." In re Thorpe, 777 F2d 695, 697 (Fed. Cir. 1985). "If the
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product in a product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even though the prior
product was made by a different process." Thorpe, 777 F.2d at 697 (citing
In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983); Johnson & Johnson v.
W.L. Gore, 436 F.Supp. 704, 726 (D. Del. 1977); and In re Fessmann, 489
F.2d 742 (CCPA 1974)).
The Examiner is correct that while claim 23 is directed to a structure
of a garment, the limitations pertaining to "[t]he counting of threads of a
material, the cutting of the material and the stitching of the material are all
process steps used to produce the product (i.e. garment)" (Ans. 4; see also
Ans. 5), and thus, do not structurally limit the claimed garment.
The Appellant argues that the Examiner "assumes that claim 23
should be construed as a product claim containing a process, rather than a
product with a structural limitation," but the limitation regarding thread
counts and sequence of thread counts "in claim 23, is capable of being
construed as a structural limitation." (Br. 5). In that regard, the Appellant
notes that various terms "are capable of construction as structural
limitations," including: "interbonded by interfusion"; "welded";
"intermixed"; "ground in place"; "press fitted"; and "etched." (Br. 5---6,
citing In re Garnero, 412 F.2d 276,279 (CCPA 1969)).
However, we fail to see how the threads having been "counted" and a
stitching pattern "that is based on thread counts and a sequence of thread
counts" can be interpreted as a structural limitation. Various terms noted by
the Appellant as having been deemed capable of construction as structural
limitations require or imply a structural change based on the additional
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process limitation. For example, "interfusion" connotes structural fusing of
materials, and "welding" requires molecular fusion of materials through
heat, etc. In contrast, the act of counting of threads in a material do not
structurally impact the threads, the stitching pattern, the material, or the
resultant garment, which is the what claim 23 is directed to (i.e., "[a]
garment comprising.").
The Appellant also argues that:
the structure implied by the process steps should be considered
when assessing the patentability of product-by-process claims
over the prior art, especially where the product can only be
defined by the process steps by which the product is made, or
where the manufacturing process steps would be expected to
impart distinctive structural characteristics to the final product.
(Br. 6).
However, there is no "structure implied by the process steps." The
fact that threads are/have been "counted" or that the stitching pattern is/was
"based on thread counts and a sequence of thread counts" does not require or
imply a structural change to the thread or the stitching pattern. In that
regard, as the Examiner notes, "[ n Jo mention is made to where the stitching
threads are located or any specific structure thereof' (Ans. 7), and "the
[ A ]ppellant is silent regarding any additional features of the stitching pattern
(i.e. shape, location, size, etc.) or garment itself." (Ans. 5).
We also find the assertion that "the product can only be defined by the
process steps by which the product is made" unpersuasive, and agree with
the Examiner that the garment can be made by other processes, "including
manually," and/or using a sewing machine, and thus, "the product is NOT
only defined by the process." (Ans. 7). It is also not apparent what the
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"distinctive structural characteristics" that are said to be imparted to the final
product, and agree with the Examiner that "the counting of threads imparts
NO 'distinctive structural characteristics to the final product'." (Ans. 7).
The Appellant further argues that the declaration evidence establishes
that the distinctive structural characteristics of the stitching pattern is shown
by the ability to "accomplish the task of sewing a perfect circle with just the
fabric and the sewing machine alone," without rigidly holding the material
close to the perimeter of the circle (Br. 6-7, quoting Leiserson Deel. ,r 9).
But the question is, what allows for accomplishment of this task? It is either
the device described in the Specification and shown in, for example, Figures
1 and 2, or it is the method of manufacturing a garment that includes the
steps of counting threads, and the step of providing a stitching pattern based
on thread counts and a sequence of thread counts. The ability to accomplish
the noted task is not possessed, innately or otherwise, by the garment which
is the subject of claim 23. 1
Accordingly, the Examiner is correct that:
The [ A ]ppellant is discussing an advantage of the method, not a
difference in the structure of the claimed "garment". Regardless,
even if the [A]ppellant's method is more efficient at sewing a
"perfect circle" as argued by the [ A ]ppellant, this does not mean
that the same circle cannot be sewn on a material at the exact
same location through other means (i.e. without counting
threads).
1 A garment made using a sewing machine and of a material with a thread
count (as recited in claim 23) would include stitches based on thread counts
as claimed. For example, a garment made of fabric of 100 threads per inch
with threads stitched every 0.1 inch would result in a garment with threads
stitched in a pattern every ten threads.
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(Ans. 8).
The Appellant also argues that Nakazawa pertains to cloths and
threads that "exhibit very small shrinkage of 1 % or less after laundering,"
but "the claimed garment is in no way influenced by shrinkage of the
garment material but is based on a thread count array that is in for example,
2 or 3 dimensions." (Br. 7). However, as the Examiner explains, the fact
that Nakazawa discloses a garment that "prevents deformation and shrinkage
including numerous additional features is irrelevant." (Ans. 6).
Hence, in view of the above, we agree with the Examiner that
"[w]ithin independent claim 23, the only structure of the product as claimed
by the [A] appellant is a garment comprising a garment material and a
stitching pattern formed by stitching threads," and such a garment is
disclosed in Nakazawa, which also discloses "decorative stitches" that
further define a stitching pattern (Ans. 5, citing Nakazawa, col. 6, 11. 10-17).
As further explained by the Examiner (Ans. 5), Nakazawa discloses a knitted
or woven material so that its threads are capable of being counted, and when
the panels of the garment are sewn together, a stitching pattern is defined by
"stitching threads being stitched on the garment material" as claimed (Ans.
5; see also Ans. 6).
Therefore, the Examiner's rejection of independent claim 23 is
affirmed. The Appellant does not submit separate arguments directed to the
language of claims 24 and 26-34, but instead, relies on dependency on claim
23 for patentability (Br. 7-8). Accordingly, claim 24 falls with claim 23.
However, we reverse this rejection as to claims 26-34, proforma, because
we affirm the Examiner's indefiniteness rejection of these claims as
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discussed infra. See In re Steele, 305 F.2d 859, 862---63 (CCPA 1962)
(holding that the Board erred in affirming a rejection of indefinite claims
because the rejection was based on speculative assumptions as to the
meaning of the claims); In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). 2
The Appellant also relies on the same arguments in support of
patentability of independent claims 35 and 41 (Br. 8). However, these
arguments are unpersuasive for the reasons already discussed. In addition,
as to the recitation in these claims generally directed to "a cutting pattern
that is based on thread counts and a sequence of thread counts," we agree
with the Examiner that these claims "both fail to disclose any specific shape
and/or size of the cutting patterns and any specific location of the stitching
pattern," that "'cutting' of a garment material is also a step within the
process of making a garment," such that the Appellant's claims fail to
distinguish the garment ofNakazawa (Ans. 9), which is also made of
material that has been cut in accordance with a pattern.
Therefore, the Examiner's rejection of independent claims 3 5 and 41
is affirmed. The Appellant does not submit separate arguments directed to
the language of claims 36-40 and 42--44, but instead, relies on dependency
on one of claims 35 or 41 for patentability (Br. 9). Accordingly, claim 42
falls with claim 41, but we reverse this rejection, proforma, as to claims 3 6-
2 It should be understood, however, that our decision in this regard is based
solely on the indefiniteness of the claimed subject matter and does not
reflect the adequacy of the prior art evidence applied in support of the
anticipation rejection.
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40, 43, and 44, which are subject to the indefiniteness rejection that we
affirm below. See In re Steele, 305 F.2d at 862---63.
In summary, as to Rejection 2, we affirm with respect to claims 23,
24, 35, 41, and 42, but reverse, proforma, with respect to claims 26-34, 36-
40, 43, and 44.
Rejection 1
The Examiner rejects dependent claims 26-34, 36-40, 43, and 44 are
rejected as indefinite because these claims merely recite "method steps [that]
are considered 'product-by-process' language and therefore not given
patentable weight." (Final Act. 5). Accordingly, the Examiner determines
that "[i]t is unclear why method steps are being claimed in relation to the
structure of a garment" (Final Act. 5), and that "it is unclear if the appellant
is trying to claim the structure of a garment or a method of producing a
garment." (Ans. 3). In addition, as to claim 26, the Examiner also points
out that the referenced step of "applying to the surface ... " lacks antecedent
basis (Final Act. 6). We agree with the Examiner.
The Appellant argues that "pending claims 34, 36-37, 43, and 44 are
not product-by-process claims because they provide structures that are
defined by thread counts and does not include functional features." (Br. 4).
However, this line of argument is unpersuasive for the reasons already
discussed above relative to Rejection 1.
The Appellant also argues that "claims 26, 33, and 38-40 provide
functional features of 'marking'." (Br. 4). However, as the Examiner
determines, "it is unclear if the marked threads/material are part of the
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structure of the garment product being claimed" (Final Act. 5-6). In that
regard, while it is not categorically indefinite to include functional
limitations in an apparatus claim, the reliance on functional language in a
claim may fail "to provide a clear-cut indication of the scope of subject
matter embraced by the claim," and thus be indefinite. In re Swinehart, 439
F .2d 210, 213 (CCP A 1971 ). Regardless, we agree with the Examiner the
Appellant "has confirmed that claims 26, 33 and 38-40 are purely functional
containing no further limiting structure (no 'marking' on final product)."
(Ans. 3).
The Examiner is correct that while "there is nothing wrong with
including functional language and/or product-by-process language within a
structural claim (i.e. product claim)," "in this case, the [ A ]ppellant' s claims
26-34, 36-40, 43 and 44 are entirely directed at process 'steps' without
claiming any additional garment structure." (Ans. 2-3). Inclusion of
process steps in a product claim can be indefinite because it creates
confusion as to when direct infringement occurs. See In re Katz Interactive
Call Processing Patent Litigation, 639 F.3d 1303, 1318 (Fed. Cir. 2011)
(citing IPXL Holdings v.Amazon.com, Inc., 430 F.2d 1377, 1384 (Fed. Cir.
2005)). Such confusion as to what the invention is directed to, and what the
metes and bounds of the claims are, need to be addressed during
prosecution. Cf Ex Parte Miyazaki, 89 USPQ2d 1207, 1211-12 (BPAI
2008) (precedential) ("if a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
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indefinite .... the applicant has an opportunity and a duty to amend the
claims during prosecution to more clearly and precisely define the metes and
bounds of the claimed invention and to more clearly and precisely put the
public on notice of the scope of the patent.").
Finally, as the Examiner notes (Ans. 3), the Appellant has failed to
address the lack of antecedent basis as to the recited step of claim 26, which
recites "wherein the step of applying." (App. Br., Claims App'x A-1 ).
Accordingly, claim 26 and claims 27-31 that depend from claim 26 are
indefinite for this additional reason as well. Moreover, we observe that
independent claim 35 is directed to "[a] garment material." (App. Br.,
Claims App'x A-3-A-4). In contrast, dependent claims 36-40 that
ultimately depend from claim 35 are directed to "[t]he garment." (App. Br.,
Claims App'x A-4). Hence, claims 36-40 are indefinite for this additional
reason as well.
In view of the above, we agree with the Examiner that claims 26-34,
36-40, 43, and 44 are indefinite and affirm Rejection 1.
CONCLUSIONS
1. The Examiner's indefiniteness rejection of claims 26-34, 36-
40, 43, and 44 is AFFIRMED.
2. The Examiner's anticipation rejection is:
A. AFFIRMED with respect to claims 23, 24, 35, 41, and
42;and
B. REVERSED, proforma, with respect to claims 26-34,
36-40, 43, and 44.
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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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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