Ex Parte Hennessey et al

Patent Trial and Appeal Board

Dec 13, 2017

13604882 (P.T.A.B. Dec. 13, 2017)

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.
13/604,882 09/06/2012 Vivian Hennessey HENNESSEYSEAN-001 4410
132305 7590
Robert C. Strawbrich, Esq.
6185 W Quaker St. #3
Orchard Park, NY 14127
EXAMINER
ANNIS, KHALED
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
12/13/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte VIVIAN HENNESSEY and SEAN HENNESSEY
Appeal 2016-005049
Application 13/604,8821
Technology Center 3700
Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 7, 8, 17—19, 21, and 22. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE and ENTER A NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b).
According to Appellants, their “invention generally relates to
garments, and[,] more specifically[,] to bibs.” Spec. 11. Claim 7 is the only
1 According to Appellants, “[t]he real parties in interest are Vivian
Hennessey and Sean Hennessey.” Br. 3.
Appeal 2016-005049
Application 13/604,882
independent claim on appeal. Below, we reproduce the independent claim
as illustrative of the appealed claims.
7. A bib garment adapted to resist removal from a front
torso of a wearer by a wearer thereof, including:
a front panel for covering the front torso of a wearer, the
front panel having a first shoulder portion and a second shoulder
portion spaced-apart from the first shoulder portion, the front
panel being formed of a material creating a substantially
impervious barrier to liquids;
a first anchor arrangement attached to the front panel, the
first anchor arrangement including a first ring-shaped member;
a second anchor arrangement attached to the front panel
and disposed laterally opposite the first anchor arrangement, the
second anchor arrangement including a second ring-shaped
member;
a first strap attached to the first shoulder portion and
adapted to diagonally extend across a medial region of a rear
torso of a wearer, into sliding engagement with the second
anchor arrangement, the first strap having a first strap elastic
portion for adjustably conforming the first strap to the rear torso
of the wearer;
a second strap attached to the second shoulder portion and
adapted to diagonally extend across the medial region and cross
the first strap, into sliding engagement with the first anchor
arrangement, the second strap having a second strap elastic
portion for adjustably conforming the second strap to the rear
torso of the wearer; and
a fastener arrangement attached to the first strap and the
second strap for releasably fastening the first strap to the second
strap, and
wherein when said bib garment is worn by a wearer, the
first and second anchor arrangements are located on the front
panel such that the fastener arrangement of the fastened first and
second straps is located along a wearer’s rear torso such that the
fastener arrangement is sufficiently beyond a wearer’s reach,
2
Appeal 2016-005049
Application 13/604,882
thereby rendering said bib garment resistant to removal by a
wearer.
REJECTIONS AND PRIOR ART
The Examiner rejects claims 7, 17—19, 21, and 22 under 35 U.S.C.
§ 103(a) as unpatentable over Hodge (US 4,850,051, iss. July 25, 1989).
The Examiner rejects claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Hodge and Martelly (US 6,769,136 Bl, iss. Aug. 3, 2004).
ANALYSIS
Before considering the Examiner’s obviousness rejections of the
claims, pursuant to 37 C.F.R. §41.50(b), we enter the following new ground
of rejection for claims 7, 8, 17—19, 21, and 22.
Indefiniteness rejection
We enter a new ground of rejection for claims 7, 8, 17—19, 21, and 22
under 35 U.S.C. §112, second paragraph, as indefinite for failing to
particularly point out and distinctly claim the subject matter Appellants
regard as the invention.
Independent claim 7 recites that
when said bib garment is worn by a wearer, the first and second
anchor arrangements are located on the front panel such that the
fastener arrangement of the fastened first and second straps is
located along a wearer’s rear torso such that the fastener
arrangement is sufficiently beyond a wearer’s reach, thereby
rendering said bib garment resistant to removal by a wearer.
Br., Claims App. (emphasis added). A claim is indefinite when it contains
language that is “ambiguous, vague, incoherent, opaque, or otherwise
unclear in describing and defining the claimed invention.” In re Packard,
3
Appeal 2016-005049
Application 13/604,882
751 F.3d 1307, 1311 (Fed. Cir. 2014); see also In re Me Award, Appeal
2015-006416, 2017 WL 3669566, *5 (PTAB Aug. 25, 2017) (precedential).
In this case, it is unclear when a fastener arrangement is sufficiently beyond
the wearer’s reach so as to render the bib garment resistant to removal by a
wearer. Therefore, we determine that claim 7, and its dependent claims 8,
17—19, 21, and 22, are indefinite.
Obviousness rejections
Appellants arguments against the Examiner’s obviousness rejections
are directed to why the prior art fails to disclose that when the bib garment is
worn by a wearer, the fastener arrangement is sufficiently beyond a wearer’s
reach, thereby rendering the bib garment resistant to removal by a wearer.
See Appeal Br. 10—28. Above, we determine that the claims are indefinite
because it is not clear when the fastener arrangement is sufficiently beyond
the wearer’s reach. Thus, it follows that the prior art rejection of these
claims must fall because our analysis would necessarily be based on a
speculative assumption as to the meaning of the claims, and, therefore, the
Examiner’s findings are inadequate to support the rejections. See In re
Steele, 305 F.2d 859, 862—63 (CCPA 1962). It should be understood,
however, that our decision in this regard is pro forma and based solely on the
indefmiteness of the claimed subject matter, and does not reflect on the
adequacy of the prior art evidence applied in support of the rejection.
DECISION
We REVERSE the Examiner’s rejection of claims 7, 8, 17—19, 21,
and 22 under 35 U.S.C. § 103(a).
4
Appeal 2016-005049
Application 13/604,882
We ENTER A NEW GROUND OF REJECTION of claims 7, 8, 17-
19, 21, and 22 under 35 U.S.C. § 112, second paragraph, as indefinite for
failing to particularly point out and distinctly claim the subject matter
Appellants regard as the invention.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the [Ejxaminer, in which event the proceeding will be
remanded to the [Ejxaminer. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REVERSED: 37 C.F.R $ 41.50(b)
5