Ex Parte ROBERT

Patent Trial and Appeal Board

Jun 22, 2018

13968922 (P.T.A.B. Jun. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/968,922
76808 7590
Leason Ellis LLP
One Barker A venue
Fifth Floor
FILING DATE
08/16/2013
06/26/2018
White Plains, NY 10601-1526
FIRST NAMED INVENTOR
Jay ROBERT
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.
11400/006344-USO 1286
EXAMINER
BATTISTI, DEREK J
ART UNIT PAPER NUMBER
3782
NOTIFICATION DATE DELIVERY MODE
06/26/2018 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):
uspto@leasonellis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAY ROBERT
Appeal2017-005902
Application 13/968,922
Technology Center 3700
Before JENNIFERD. BAHR, STEFAN STAICOVICI, and
SUSAN L. C. MITCHELL, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jay Robert ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from the
Examiner's decision in the Non-Final Office Action (dated Mar. 9, 2016,
hereinafter "Non-Final Act.") rejecting claims 1-23. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
1 Plano Molding Company is the applicant as provided in 37 C.F.R. § 1.46 and is
identified as the real party in interest in Appellant's Appeal Brief (filed Aug. 25,
2016, hereinafter "Appeal Br."). Appeal Br. 3.
Appeal2017-005902
Application 13/968,922
INVENTION
Appellant's invention relates to "a backpack system." Spec. para. 3.
Claims 1, 7, and 15 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A backpack system comprising:
a storage section;
an upper harness;
a lower harness; and,
a backpack frame, wherein the backpack frame
comprises:
a first lower backpack frame comer and a second
lower backpack frame comer,
a plurality of flex portions including a first flex
portion and a second flex portion that comprise a
plurality of flex regions, the plurality of flex portions
configured to facilitate pivoting movement in the
backpack frame during walking by a user wearing the
backpack frame,
a plurality of openings,
a plurality of recesses along opposite edges of the
backpack frame that creates the plurality of flex portions,
wherein the plurality of flex portions are
configured to facilitate the pivoting by permitting the
first lower backpack frame comer to move forward
towards a back of the user and the second lower
backpack frame comer to move rearward away from the
back of the user while taking a first step.
REJECTIONS
I. The Examiner rejects claims 1-14, 21, and 22 under 35 U.S.C.
§ 102(a)(l) as being anticipated by McMaster et al. (US 5,553,759,
issued Sept. 10, 1996, hereinafter "McMaster").
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Application 13/968,922
II. The Examiner rejects claims 15-20 and 23 under 35 U.S.C. § 103(a)
as being unpatentable over McMaster and Araujo et al. (US
2010/0176171 Al, published July 15, 2010, hereinafter "Araujo").
ANALYSIS
Rejection I
Independent claim 1 recites, in relevant part, "a plurality of recesses
along opposite edges of the backpack frame." Appeal Br. 24 (Claims App.).
In a similar manner, independent claim 7 requires, inter alia, "a first recess
in an edge of the backpack frame" and "a second recess in another edge of
the backpack frame." Id. at 25.
The Examiner finds that McMaster discloses "a plurality of openings
(55), a plurality of recesses (Fig. 4, inside spaces near (43, 42) and below
(49)) along opposite edges of the backpack frame." Non-Final Act. 3.
Appellant argues that
[T]he inside spaces near the side frame members 42, 43 and
below the horizontal rib 49 are not recesses, as understood by
one of ordinary skill in the art. Rather, these are enclosed
spaces that are formed on the left by members 41, 42, 44, and
49, and on the right by members 41, 43, 45 and 49.
Appeal Br. 17 (citing McMaster, Fig. 4, Appellant's Figure 7). Appellant
further contends that an ordinary and customary meaning of the term
"recess" is "'a receding part or space, as a bay or alcove in a room,' or 'an
indentation in a line."' Id. at 18 (citing Webster's Encyclopedic Unabridged
Dictionary of the English Language (1989)); see also Appeal Br., Exhibit 1.
Thus, according to Appellant, the Examiner "has not construed the claim
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Application 13/968,922
term 'recess' consistently with the [S]pecification or the meaning that one of
ordinary skill in the art would understand the term to have." Id.
In response, the Examiner takes the position that "[ t ]he term 'recess'
is defined as 'an indentation or small hollow."' Examiner's Answer 3 (dated
Dec. 2 7, 2016, hereinafter "Ans.") (citing
http://www.thefreedictionary.com/recess). Thus, according to the Examiner,
McMaster's "inside spaces near (43, 42) and below (49)" constitute the
claimed "recesses." Id. (citing Mc Master, Fig. 4 ).
During examination, "claims ... are to be given their broadest
reasonable interpretation consistent with the [S]pecification, [ ] and ...
claim language should be read in light of the [S]pecification as it would be
interpreted by one of ordinary skill in the art." In re Bond, 910 F.2d 831,
833 (Fed. Cir. 1990) (alteration in original) (citing In re Sneed, 710 F.2d
1544, 1548 (Fed. Cir. 1983)). The words of the claim must be given their
plain meaning unless the plain meaning is inconsistent with the
Specification. In re Zietz, 893 F.2d 319, 321 (Fed. Cir. 1989). Here, we
agree with Appellant that an ordinary and customary meaning of the term
"recess" is "a receding part or space."2 See Appeal Br. 18. Such an
interpretation is consistent with Appellant's Specification, where each of
recesses 143a, 143b is shown as a receding space, that is, a space that is
moved away from an edge ofbackpack frame 140. See Spec., Figs. 5, 7.
2 An ordinary and customary meaning of the term "recede" is "to move back
or away." See http://www.merriam-webster.com/dictionary/recede (last
accessed June 7, 2018).
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Application 13/968,922
In contrast, McMaster's enclosed spaces located between side frame
members 42, 43 and horizontal rib 49, that the Examiner relies upon as the
claimed "recesses," do not recede from the edges of backpack frame 31, but
rather constitute openings that pass through backpack frame 3 1, akin to
Appellant's openings 142d, 142e, 142f. Compare McMaster, Fig. 4, with
Appellant's Figure 7. Appellant's Specification differentiates between
openings 142a-142h through backpack frame 140 and recesses 143a, 143b
that recede from edges ofbackpack frame 140. Spec. para. 51, Figs. 5, 7.
Furthermore, we note that McMaster's enclosed spaces are not positioned
"along opposite edges of the backpack frame," 3 as required by independent
claim 1, or "in an edge of the backpack frame," as required by independent
claim 7, but rather, are located adjacent to the edges of backpack frame 31.
As such, given the above noted descriptions in Appellant's
Specification and the ordinary and customary meaning of the term "recess,"
the Examiner's interpretation that the claimed "recesses" correspond to
McMaster's openings located between side frame members 42, 43 and
horizontal rib 49 is unreasonably broad, and is therefore in error.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claims 1-14, 21, and 22 under 35 U.S.C. § 102(a)(l) as anticipated by
Mc Master.
3 Consistent with Figure 5 of Appellant's Specification we interpret the term
"along" to mean "in a line matching the length or direction of." See
http://www.merriam-webster.com/dictionary/along (last accessed June 7,
2018).
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Application 13/968,922
Rejection II
Similar to independent claim 1, independent claim 15 recites "a
plurality of recesses along an edge of the backpack frame." Appeal Br. 26
(Claims App.).
The Examiner's use of the Araujo disclosure does not remedy the
deficiency of the Examiner's interpretation of McMaster discussed supra.
See Non-Final Act. 5---6. Accordingly, we also do not sustain the rejection of
claims 15-20 and 23 over the combined teachings of McMaster and Araujo.
SUMMARY
The Examiner's decision to reject claims 1-23 is reversed.
REVERSED
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