Ex Parte HeDownload PDFPatent Trial and Appeal BoardMay 31, 201612876092 (P.T.A.B. May. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/876,092 09/03/2010 50163 7590 03/02/2016 WANG&HO 66 HILLTOP ROAD MILLINGTON, NJ 07946 FIRST NAMED INVENTOR Mike He 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. DGNH01-2US 1565 EXAMINER MUROMOTO JR, ROBERT H ART UNIT PAPER NUMBER 3765 NOTIFICATION DATE DELIVERY MODE 03/02/2016 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): georgewang@bei-ocean.com georgewang.hk@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MIKE HE Appeal2014-002350 Application 12/876,092 Technology Center 3700 Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and LISA M. GUIJT, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-002350 Application 12/876,092 STATEMENT OF THE CASE1 Mike He (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner's decision to reject under 35 U.S.C. § 102(b) claims 1, 2, and 9-11 as anticipated by Yates (GB 2435049 A; pub. Aug. 15, 2007);2 and under 35 U.S.C. § 103(a) claim 8 as unpatentable over Yates and Yeung (US 2002/0022433 Al; pub. Feb. 21, 2002). 3 Claims 3-5 and 7 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant submitted an Amendment to the claims, amending claims 1, 6, and 8 in the Response After Final Action. See Response After Final Act. 3--4 (filed Apr. 1, 2013). In the Advisory Action, the Examiner indicated that the proposed amendments "[would] be entered." See Advisory Act. 1 (mailed Apr. 9, 2013). The Examiner addresses amended claim 1 in the Advisory ii .. ction and the ii .. nsv,rer. See ii .. dvisory ii .. ct. 2; ii .. ns. 3. Regarding amended claim 6, in the Advisory Action, the Examiner states: "Amendment to claim 6 is unclear and appears to be a direct contradiction to claim 1 and therefore a 112, 1st paragraph rejection with regard to enablement, as claim 1 and figures show the two layers interconnected by the middle 'woven and interconnected' yams." See Advisory Act. 2. Amended claim 6 is not addressed by the Examiner or Appellant in the respective Answer or Briefs. See Ans. 2-3; Appeal Br. 4--6; Reply Br. 1-2. Accordingly, amended claim 6 is not before us for review, and we do not address amended claim 6 in the instant appeal. Regarding amended claim 8, the Examiner correctly points out that "[the] amendment removes limitations." Thus, amended claim 8 has already been properly addressed in the final rejection. See Advisory Act. 2. 2 Both the Examiner and Appellant refer to the Yates reference as "'049." See Final Act. 2; Appeal Br. 3. We shall refer to the Yates reference as "Yates." 3 Both the Examiner and Appellant refer to the Yeung reference as "' 4 3 3." See Final Act. 3; Appeal Br. 3. We shall refer to the Yeung reference as "Yeung." 2 Appeal2014-002350 Application 12/876,092 CLAIMED SUBJECT MATTER The claimed subject matter relates to a fabric strap "with a multi-layer structure." Spec. para. 2; Fig. 13. Claim 1, the sole independent claim, is representative of the claimed subject matter and recites: 1. A fabric strap, comprising a middle section and two side sections, wherein said two side sections are longitudinally foldable onto each other along said middle section for purposes of forming a tubular structure, wherein each of said side sections comprises a two-layer structure comprising two woven layers and a cushion formed by a plurality of weaving up-and-down middle yams continuously and evenly interconnecting said two woven layers and sandwiched therebetween, and wherein said middle section comprises two woven layers not being interconnected by weaving up-and-down middle yams. ANALYSIS Anticipation by Yates Claims l, 2, and 9-11 Appellant states: "With respect to rejection under 35 USC 102(b), claims 1, 2, []and 9-11 will stand and fall together." Appeal Br. 4. We select claim 1 as representative. Claims 2 and 9-11 stand or fall with claim 1. The Examiner finds: [Yates] discloses a fabric strap 1 in figures 2a-2c, comprising a middle section 2 or 3 and multiple side sections 4; side sections 4 clearly comprising two woven layers a plurality of interconnecting weaving up and down middle yams (5, 6, 2, 3) and middle section of two woven layers not interconnected as claimed. The side sections are 'foldable' as claimed. The prior art only need to be capable of performing any claimed functional limitations as per the MPEP. 3 Appeal2014-002350 Application 12/876,092 Final Act. 2. Appellant contends: [T]he two side sections of the claimed strap is longitudinally foldable upon each other along the middle section thus the three sections are sequentially arranged widthwise of the strap, while in [Yates], sections 2, 3, 4 are sequentially arranged lengthwise. In other words, sections 2 and 3 [of Yates] cannot [be] longitudinally foldable upon each other. Nor can they [be] longitudinally foldable along section 4. Appeal Br. 4--5; see also id. at 6. Appellant further contends: (1) "FIG. 13 [of the subject invention] is a cross-sectional view along the width of the strip, while FIG 2a-2c [of Yates] are cross-sectional views along the length"; and (2) "The term 'longitudinally foldable' recited in the claim is not a limitation-by-function but a limitation defining the orientation of the three sections and their spatial relationship with each other." Reply Br. 1-2. Our reviewing court has provided instructions that claims directed to an apparatus; as here; must be distinguished from the prior art in terms of structure rather than function. See In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997); see also Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) ("apparatus claims cover what a device is, not what a device does"). At the outset, we acknowledge that Yates describes Figure 2a as "a plan view of a length of tape according to a second embodiment of the invention" and Figure 2b as "a cross-sectional view of the tape of figure 2a." Yates 5, 11. 4--7. However, Appellant's disclosure of Figure 13 of the subject invention merely states: "Fig.13 shows the interweaving structural schematic diagram of the present utility model." See Spec. 8, para. 33. Appellant does not direct us to any portion of the Specification that describes Figure 13 of 4 Appeal2014-002350 Application 12/876,092 the subject invention as "a cross-sectional view along the width of the strip." See Reply Br. 1; see also Appeal Br. 4--5. Additionally, Appellant's Specification does not define the phrase "longitudinally foldable." Indeed, aside from Appellant's claims, the phrase "longitudinally foldable" does not appear in Appellant's disclosure. Moreover, the second drawing presented by Appellant on page 3 of the Appeal Brief does not appear in Appellant's Figures. Accordingly, based on the foregoing, Appellant's contentions amount to unsupported attorney argument, and thus are entitled to little, if any, weight. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (arguments and conclusions unsupported by factual evidence carry no evidentiary weight). Further, in response to Appellant's arguments, the Examiner finds: The current claim language appears to direct the term longitudinal to the side sections, while the current arguments seem to interpret the term longitudinal to the fabric as a whole. The [E]xaminer's position is that the fabric shown in figure 2a- 2c [of Yates] does exhibit foldability along the longitudinal direction of the side sections for folding into a tubular structure. As per the MPEP the prior art only need to be capable of providing any claimed functions and the burden of proof is on [Appellant] to prove otherwise .... the fabric [of Yates] would still be capable of folding along any direction of itself to be folded into a tubular structure as functionally claimed. Ans. 2-3. Appellant does not provide any evidence or persuasive technical reasoning why the identified structure of Yates would not be capable of being longitudinally foldable. See Appeal Br. 4--5; Reply Br. 1. Appellant contends that Yates fails to disclose "'weaving up-and- down middle yams continuously and evenly interconnecting said two woven layers and sandwiched there between' and forming a cushion therein." 5 Appeal2014-002350 Application 12/876,092 Appeal Br. 5. In response to Appellant's argument, the Examiner states: As required by the claims, figure 2c [of Yates] clearly shows a plurality of weaving up and down middle yams near numeral 4 that are continuous and evenly interconnecting said upper and lower woven layers and will by their very presence provide some cushion function, which is all that is required by the claims. Ans. 3. Appellant does not provide any evidence or persuasive technical reasoning apprising us of error in the Examiner's findings. Appellant contends: each of the two side sections comprises three types of yams recited in claim 1: warps and wefts (the two are part of any woven layer) and middle connecting yams as a cushion, while in [Yates] only warps and wefts of the two textile layers were disclosed and no extra middle yams were added. Appeal Br. 6; see also id. at 5. Appellant further contends that Yates lacks "the three longitudinal sections, two side sections and a middle section, with (i) the two side sections being separated by the middle section and (ii) the middle section has a different structure from that of the side sections." Reply Br. 1. Appellant's arguments are not persuasive because claim 1 does not require "wefts and warps" or "three longitudinal sections." See Appeal Br. 8, Claims App.; see also Appeal Br. 5---6; Reply Br. 1. Limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671F.2d1344, 1348 (CCPA 1982). In addition, we must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). 6 Appeal2014-002350 Application 12/876,092 Here, we agree with the Examiner that claim 1 does not "require[] another set of yams" and merely calls for two side sections ( 4 of Yates) and a middle section with (i) each of the two side sections (4 of Yates) having a two-layer structure including two woven layers (5, 6 of Yates) and "middle connecting yams as a cushion" (i.e., "a plurality of weaving up and down middle yams near numeral 4 of Figure 2c of Yates that are continuous and evenly interconnect the two side sections [ 4 of Yates]"); (ii) the two side sections ( 4 of Yates) being separated by the middle section; and (iii) the middle section having two woven layers (2, 3 of Yates) not interconnected by weaving up- and-down middle yams (i.e., "the middle section has a different structure from that of the side sections [ 4 of Yates]"). See Final Act. 2; Ans. 3; see also Yates, Fig. 2c; Appeal Br. 8, Claims App.; Appeal Br. 5---6; Reply Br. 1 Accordingly, for the foregoing reasons, we sustain the Examiner's rejection of independent claim 1 as anticipated by Yates. We further sustain claims 2 and 9-11, which fall with claim 1. Obviousness over Yates and Yeung Claim 8 Appellant contends that Yeung "alone or in combination with [Yates], suggested nothing about the claimed invention." Appeal Br. 6. Appellant does not apprise us of error in the Examiner's findings or conclusions regarding the combined teachings of Yates and Yeung. As we find no deficiency in the Examiner's rejection of independent claim 1, for the reasons discussed above, we likewise sustain the Examiner's rejection of dependent claim 8 as unpatentable over Yates and Yeung. 7 Appeal2014-002350 Application 12/876,092 DECISION We AFFIRM the Examiner's decision to reject claims 1, 2, and 8-11 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 8 Copy with citationCopy as parenthetical citation