Ex Parte MORIN et al

Patent Trial and Appeal Board

Nov 26, 2018

14220465 (P.T.A.B. Nov. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/220,465 03/20/2014
293 7590 11/28/2018
DOWELL & DOWELL, P.C.
2560 HUNTINGTON A VE, SUITE 203
ALEXANDRIA, VA 22303
FIRST NAMED INVENTOR
Kyle MORIN
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.
18898 9416
EXAMINER
ANNIS, KHALED
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
11/28/2018 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):
DOWELL@DOWELLPC.COM
DVejerano@dowellpc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KYLE MORIN and ERIC LEMIEUX
Appeal 2018-001933
Application 14/220,465
Technology Center 3700
Before JOHN C. KERINS, WILLIAM A. CAPP, and
SEAN P. O'HANLON, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 10-20, 27, 28, 32, 34--38, 40, and 42 under 35 U.S.C.
§ 102 as anticipated by Olson (US 2006/0107433 Al, pub. May 25, 2006),
and of claims 2---6, 8, 9, 21-26, 29-31, 33, 39, and 41 under 35 U.S.C. § 103
as unpatentable over Olson, and of claim 39 under the written description
and indefiniteness provisions of 35 U.S.C. §§ l 12(a) and (b ). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Bauer Performance Lacrosse Inc. is the Applicant. Bauer Hockey LLC is
identified as the real party in interest. Appeal Br. 3.
Appeal 2018-001933
Application 14/220,465
THE INVENTION
Appellants' invention relates to athletic protective gear. Spec. 1.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. An arm protector for protecting an arm of a wearer
playing a contact sport, the arm protector comprising:
a base for extending at least partially around and engaging
the wearer's arm; and
a pad member fastened to the base and comprising
protective padding, the pad member providing greater impact
protection than the base, the pad member being fastened to the
base by a fastening zone which spans less than half of a length
of the pad member, the pad member comprising a lateral
portion extending from a longitudinal end of the pad member,
the lateral portion of the pad member being configured to be
further fastenable around at least part of the wearer's arm.
OPINION
Section l l 2(a) Written Description - Claim 39
Claim 39 is an independent claim that is substantially similar in scope
to claim 1, except that claim 1 is directed to an apparatus and claim 3 9 is
directed at using such apparatus. Claims App. The Examiner states that
claim language that was added after the filing date of the original disclosure
lacks written description support in the original disclosure. Final Action 3.
Appellants direct our attention to paragraphs 43 and 48 of their Specification
as providing written description support for claim 39. Appeal Br. 10.
The written description requirement is met when the disclosure
"allow[ s] one skilled in the art to visualize or recognize the identity of the
subject matter purportedly described." Enzo Biochem, Inc. v. Gen-Probe
Inc., 323 F.3d 956, 968 (Fed. Cir. 2002). In our opinion, the written
description requirement is met by Appellants' disclosure. The apparatus is
described as an "arm protector." Claims App. claim 39. The Background
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section of the Specification explains that "a lacrosse, hockey or other sports
player typically wears arm protectors, leg protectors, and/or shoulder pads to
protect himself/herself from impacts." Spec. 1. The Specification explains
that there is a need for improvements in protective equipment "wearable by
sports players." Id. Although the Specification is primarily directed to
describing the physical characteristics of an arm protector, a person of
ordinary skill in the art would understand that the arm protector is intended
to be worn and used by an athlete, such as a lacrosse player.
Appellants' original disclosure is sufficient to demonstrate possession
of the subject matter of the method disclosed in claim 39. Consequently, we
do not sustain the Examiner's Section 112(a) written description rejection of
claim 39.
Section 112 (b) Indefiniteness - Claim 3 9
The Examiner rejects claim 39 under Section 112(b) because the
purportedly "newly added language" is unclear because it is not described in
the original disclosure. Final Action 4. We think that a person of ordinary
skill in the art would understand that claim 39 is directed to wearing and
using an arm protector. See Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986) (explaining that the test for
definiteness is whether a skilled artisan would understand what is claimed
when the claim is read in light of the specification). We do not sustain the
Examiner's Section 112(b) indefiniteness rejection of claim 39.
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Application 14/220,465
Anticipation of Claims 1, 10-20, 27, 28, 32, 34-38, 40, and 42
by Olson
Claims 1, 10-20, 34-38, and 40
Appellants argue claim 1, but do not argue claims 10-20, 34--38,
and 40 apart from the arguments raised as to claim 1. Appeal Br. 12-15.
We select claim 1 as representative. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Olson discloses each limitation of the
invention. Final Action 4--6. Appellants argue that Olson lacks a pad
member that includes a lateral portion that is configured to be further
fastenable around a wearer's arm. Appeal Br. 12. According to Appellants,
Olson element 60 should be considered part of the sleeve or "base" and not
part of the "pad" of claim 1. Id. at 13. Secondly, Appellants argue that
Olson fails to disclose a lateral portion of a pad member that is configured to
be detachably fastenable around a wearer's arm. Id. Appellants consider
strap 20 to be affixed to Olson's "base," not to a "pad member." Id. at 14.
Olson discloses an energy absorbing device that may be fitted to an
arm. Olson, Abstract, ,r 4. The device is secured by straps 20. Id. ,r 61,
Fig. 2E. The straps permit detachable fastening of the device to an arm. Id.
,r 9 (buckles). Straps 20 are sewn to fabric 64 that covers foam or "other
energy absorbing" material 60. Id. ,r,r 59, 61, Fig. 2B. Olson's device
further includes plate slide members 16 that are attached to sleeve 10 by
self-adhering material 66. Id. ,r 59, Fig. 2C. Slidable plate member 14 is
positioned over slide member 16. Id. ,r 50.
Appellants' argument that Olson element 60 should be considered as
part of the base and not the pad is not persuasive. Appeal Br. 13.
Element 60 is described as foam or other energy absorbing material. Olson
,r 59. In the embodiment depicted in Figure 2B of Olson, fabric 64
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Application 14/220,465
corresponds to the "base" of Appellants' claim 1. Elements 60, 12, 14,
and 16 correspond to Appellants' "pad member." Olson ,r 62, Fig. 2F. Such
pad member has lateral portions, including plate 14 and slide member 16,
that extend laterally from a longitudinal end of pad 12. Id. Such lateral
portions are fastened around a wearer's arm by straps 20. Id.
Although claim 1 recites that the pad is "further" fastenable around
the arm, claim 1 recites no other and additional means of fastening to which
the recited lateral portion of the pad member would be a "further" means of
fastening the arm protector. For example, the base may merely extend
"partially" around the arm such that there is no limitation in the claim that
the base is required to provide a means for fastening the arm protector to the
arm in addition to straps connected to the pad. Thus, the claim only requires
a single means to fasten the arm protector around the arm and such is
satisfied by Olson's straps 20. As the pads of Olson connect to fabric 64 and
then to straps 20 (see Fig. 2B), the claim requirement that the pad member is
"configured to" be fastenable around the arm is satisfied.
To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either expressly or inherently. Blue
Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341 (Fed. Cir. 2016).
Here, the Examiner's finding that every limitation of claim 1 is met is
supported by a preponderance of the evidence. Consequently, we sustain the
Examiner's anticipation rejection of claims 1, 10-20, 34--38, and 40.
Claims 27, 28, and 42
Claim 27 is an independent claim that is substantially similar in scope
to claim 1. Claims App. Appellants argue claim 27, but do not separately
argue claims 28 and 42 apart from the arguments raised as to claim 27.
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Appeal Br. 15-17. We select claim 27 as representative. 37 C.F.R.
§ 4I.37(c)(l)(iv).
Appellants argue that Olson fails to disclose longitudinal ends that are
movable adjacent to each other. Appeal Br. 15-16. In response, the
Examiner observes that Appellants have not clearly defined what "adjacent"
means. Ans. 4. The Examiner states that when Olson's protector is worn on
an arm of the wearer, the first and second ends are adjacent to one another
separated by the arm of the wearer. Final Action 10.
In reply, Appellants fail to provide any operational definition of
"adjacent" that is supported by the Specification and that purports to
distinguish between the claimed invention and Olson. Reply Br. 5.
Appellants argue only that "adjacent" is not indefinite and that the Examiner
has not raised an indefiniteness grounds of rejection in the Final Action. Id.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under
the broadest reasonable interpretation standard, claim terms are given their
ordinary and customary meaning as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Trans logic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Construing claims broadly
during prosecution is not unfair to the applicant, because the applicant has
the opportunity to amend the claims to obtain more precise claim coverage.
Am. Acad. of Sci., 367 F.3d at 1364.
The embodiment depicted in Figure 2F of Olson shows slide
member 16 and slidable plate 14 that reside in relatively close proximity to
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each other and slide (move) relative to each other. Olson, Fig. 2F. Each of
elements 14 and 16 have first and second longitudinal ends. Id.
The opposing longitudinal ends of a body with any appreciable length
are generally considered to be "spaced apart." Thus, referring to them as
"adjacent" constitutes a broad application of the term. Using broad, but
reasonable interpretations of "adjacent" and first and second "longitudinal
ends," we discern no error in the Examiner's findings of fact and, therefore,
sustain the anticipation rejection of claims 27, 28, and 42.
Claim 32
Claim 32 is an independent claim that is substantially identical in
scope to claim 27. Claims App. 2 In traversing the rejection, Appellants
acknowledge that the features of claims 27 and 32 are "similar" and
essentially rely on the same arguments for both claims. Appeal Br. 17-18.
For reasons essentially identical to those expressed above with respect to
claim 27, we sustain the Examiner's anticipation rejection of claim 32.
Unpatentability of Claims 2-6, 8, 9, 21-26, 29-31, 33, 39, and 41
over Olson
Claims 2-6, 8, 9, and 33
Claims 2---6, 8, 9, and 33 depend from claim 1. Claims App.
Appellants argue these claims together, but raise no new arguments beyond
what we previously considered in sustaining the anticipation rejection of
claim 1. Appeal Br. 18-19. Appellants' statement that "these dependent
claims recite additional features that further distinguish them from Olson"
(Appeal Br. 19) is not considered a separate argument for patentability. See
2 Claim 27 protects an "arm," whereas claim 32 protects a "limb." Claims
App.
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37 C.F.R. § 4I.37(c)(l)(iv); see also In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (explaining that Rule 41.37 requires more than recitation of the
claim elements and a naked assertion that the elements are not found in the
prior art). For reasons essentially identical to those expressed above with
respect to claim 1, we sustain the Examiner's obviousness rejection of
claims 2-6, 8, 9, and 33.
Claims 21-26 and 41
Claim 21 is an independent claim and claims 22-26 and 41 depend
therefrom. Claims App. Appellants separately argue only claim 21 and,
therefore, claims 22-26 and 41 will stand or fall with claim 21. 37 C.F.R.
§ 4I.37(c)(l)(iv).
The Examiner concedes that Olson does not disclose that the lateral
portion of the pad member corresponds to a least one-third of the length of
the pad member. Final Action 18. However, the Examiner finds, and
Appellants do not dispute, that such limitation entails no more than routine
optimization. Id., citing In re Boesch, 617 F.2d 272 (CCPA 1980).
Appellants argue that Olson lacks a pad member fastened to a base
and including a lateral portion movable relative to the base and detachably
fastenable around a least part of the wearer's arm. Appeal Br. 19.
Appellants' argument is not persuasive. Olson's embodiment shown
in Figure 2F depicts straps 20 that surround an arm (limb). Olson ,r 62,
Fig. 2F. As previously discussed, elements 14 and 16 correspond to lateral
portions of pads that are movable relative to fabric base 64. Id., Figs. 2B,
2F. Straps 20 are detachable via, among other things, buckles. Id. ,r 9.
Slide members 16 are further detachable via element 66. Id. ,r 60, Fig. 2C.
Thus, a preponderance of the evidence supports the Examiner's finding that
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Olson discloses a pad member fastened to a base that includes a lateral
portion that is movable relative to the base and is detachably fastenable
around a wearer's arm.
We sustain the Examiner's unpatentabilityrejection of claims 21-26
and 41 over Olson.
Claim 29
Claim 29 is an independent claim that differs in scope from claim 1 in
that it contains limitations directed to stitching. Claims App. The Examiner
finds that Olson discloses attaching pad member to the sleeve by sewing.
Final Action 21 ( citing Olson ,r 50). The Examiner concludes that
Appellants' stitching limitations are obvious in view of Olson's teaching
regarding sewing. Id.
Appellants argue that the Examiner's findings do not contemplate the
length and direction of the stitching that is recited in claim 29. Appeal
Br. 21.
The Examiner therefore erred by not considering these claimed
features. Olson therefore fails to disclose at least one claimed
feature, and this precludes a finding of obviousness.
Id. at 22.
Appellants' argument is not persuasive. The Examiner's rejection of
claim 29 is an obviousness rejection under Section 103, not an anticipation
rejection under Section 102. A section 103 obviousness rejection, even over
a single prior art reference, by its very nature, contemplates some difference
between the prior art and the claimed invention. Thus, it is well settled that
a claim can be obvious even where all of the claimed features are not found
in specific prior art references, where there is a showing of a reason to
modify the teachings of the prior art to achieve the claimed invention. See
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Randall Mfg. v. Rea, 733 F.3d 1355, 1361-62 (Fed. Cir. 2013); see also
Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1334 (Fed. Cir. 2013).
For this reason, "we do not ignore the modifications that one skilled in the
art would make to a device borrowed from the prior art." In re ICON Health
& Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007).
The issue here is over the length and direction of sewing stitches on
an item of apparel. The Examiner finds, and Appellants do not dispute, that
it was known in the prior art to use sewing stitching to attach and assemble
constituent components of an arm protector device. Appellants present no
evidence nor any persuasive technical reasoning as to why the particular
length and direction of the claimed stitching requires more than ordinary
skill or produces unexpected results. Thus, we are not apprised of error and
we sustain the Examiner's unpatentability rejection of claim 29.
Claims 30 and 31
Claims 30 and 31 are independent claims. Claims App. Appellants
concede that the claims recite features similar to that of other claims that we
have previously considered. Appeal Br. 22-23. Otherwise, Appellants do
not argue for the separate patentability of these claims apart from arguments
that we have previously considered and found unpersuasive. We sustain the
Examiner's rejection of claims 30 and 31. See 37 C.F.R. § 4I.37(c)(iv)
(failure to separately argue claims).
Claim 39
Claim 39 is an independent claim and differs from the other
independent claims in that it recites a method rather than an apparatus.
Claims App. Claim 39 contains limitations directed to various dispositions
of a lateral portion of the pad member depending on whether or not the
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wearer is playing a contact sport. Id. Appellants allege that such recited
features are not present in Olson. Appeal Br. 23-24.
The Examiner, in response, relies on the legal principle that "[ w ]hen
the prior art device is the same as a device described in the specification for
carrying out the claimed method, it can be assumed the device will perform
the claimed process." Ans. 5, citing In re King, 801 F.2d 1324 (Fed.
Cir. 1986).
Olson discloses that plate slide members may be attached to sleeve 10
using self-adhering material 66 such as VELCRO®. Olson ,r 60. Persons
familiar with VELCRO know and understand that articles attached by
VELCRO are readily detachable. Furthermore, athletes who play contact
sports readily and routinely doff and don their protective gear depending on
whether they are actively engaged in the contact sport or are merely
watching from the side lines. 3
It is well settled that an article of manufacture in the prior art can be
used to support a prior art rejection of a method claim that simply defines
what happens when such article is placed in the environment in which it is to
be used. See e.g., Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276,
1285 (Fed. Cir. 2005), citing In re King, 801 F.2d at 1326. The foregoing
principle of law applies to the facts presented by the instant case.
Accordingly, we sustain the Examiner's unpatentability rejection of
claim 39.
3 For example, a baseball catcher will routinely remove some or all of his
protective gear when in the dugout. Similarly, a baseball batter may don a
removable elbow pad or shin guard during an at-bat at home plate, but will
remove such items while sitting in the dugout.
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DECISION
The decision of the Examiner to reject claim 39 under the written
description provision of 35 U.S.C. § 112(a) is REVERSED.
The decision of the Examiner to reject claim 39 under the
indefiniteness provision of 35 U.S.C. § 112(b) is REVERSED.
The decision of the Examiner to reject claims 1, 10-20, 27, 28, 32,
34--38, 40, and 42 under 35 U.S.C. § 102 as anticipated by Olson is
AFFIRMED.
The decision of the Examiner to reject claims 2-6, 8, 9, 21-26, 29-31,
33, 39, and 41 under 35 U.S.C. § 103 as unpatentable over Olson is
AFFIRMED.
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).
AFFIRMED
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