Ex Parte Strum

Patent Trial and Appeal Board

Jul 26, 2018

13655548 (P.T.A.B. Jul. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/655,548 10/19/2012
1209 7590 07/30/2018
Thomas F. Bergert
c/o Williams Mullen IP Docketing
321 East Main Street
Suite 400
Charlottesville, VA 22902
FIRST NAMED INVENTOR
David B. Strum
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.
054678.0029 7778
EXAMINER
HUYNH, KHOA D
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
07/30/2018 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):
ip@williamsmullen.com
tbergert@williamsmullen.com
khotz@williamsmullen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID B. STRUM
Appeal2017-005358
Application 13/655,548
Technology Center 37600
Before LYNNE H. BROWNE, FRANCES L. IPPOLITO, and LISA M.
GUIJT, Administrative Patent Judges.
IPPOLITO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
non-final decision rejecting claims 1-18. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Appellant represents that the real party in interest is Velocity Systems,
LLC. Appeal Br. 3.
Appeal2017-005358
Application 13/655,548
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A personally wearable carriage device, comprising:
a substantially rigid outer frame having an outer side and
an inner side, wherein the inner side of the outer frame is
formed with at least one channel, with the at least one channel
having a channel length;
an outer material secured to or around the outer side of
the outer frame so as to form an outer surface;
spacer mesh material secured to or around the inner side
of the outer frame so as to form an inner surface;
a seam adjoining the outer material to the spacer mesh
material;
an inner frame secured to the outer frame; and
at least one stiffener having a length that is greater than
the channel length of the at least one channel in the outer frame,
wherein the stiffener is secured entirely within the at least one
channel so as to bow within the at least one channel and thereby
create a gap between the inner frame and the spacer mesh
material.
OBJECTIONS AND REJECTIONS
I. The Specification is objected to under 35 U.S.C. § 132(a) for
the introduction of new matter (Office Action 2);
II. Claims 1 and 10 are rejected under 35 U.S.C. § 112(a) or
35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to
comply with the written description requirement (Office
Action 3--4 );
III. Claims 1-18 are rejected under 35 U.S.C. § 112(b) or 35
U.S.C. § 112 (pre-AIA), second paragraph, as being
indefinite (Office Action 4--5); and
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IV. Claims 1-18 are rejected under pre-AIA 35 U.S.C. § I03(a)
as being unpatentable over Storms (US Patent Publication
No. 2010/0287681 Al, pub. Nov. 18, 2010) and Rendone
(US Patent No. 7,318,240 Bl, iss. Jan. 15, 2008) (Office
Action 5-11 ).
ANALYSIS
Written Description
The Examiner has rejected claims 1 and 10 for lack of written
description. Office Action 3--4. More specifically, the Examiner finds that
"applicant does not have support for 'secured entirely' recited in claim 1"
and "applicant does not have support for 'inserting the stiffener fully"'
recited in claim 10. Id.
Turning to the claim language, we note that claim 1 recites, in relevant
part that
at least one stiffener having a length that is greater than the
channel length of the at least one channel in the outer frame,
wherein the stiffener is secured entirely within the at least one
channel so as to bow within the at least one channel and thereby
create a gap between the inner frame and the spacer mesh
material.
Emphasis added. Claim 10 similarly recites
providing at least one stiffener having a length that is greater than
the channel length of the at least one channel, and inserting the
stiffener fully within the at least one channel such that the
stiffener is caused to bow within the at least one channel and
thereby create a gap between the inner frame and the spacer mesh
material.
Emphasis added.
In its Appeal Brief, Appellant asserts that originally filed Paragraph
12 discloses that the stiffeners can be longer than, and secured within, their
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Application 13/655,548
respective channels. Appeal Br. 8-9 (discussing original paragraph 12 and
Figure 4). Appellant adds that originally filed Paragraph 0012 further states,
"[t]he stiffeners can comprise a stainless steel spring steel material, in one
embodiment, which provides a material of lasting durability with desirable
rebound and memory characteristics." Appellant asserts that "[a]s the
stiffener material described in the specification ( spring steel) permits flexion
with rebound and memory characteristics, it will bow when inserted, yet
seek to spring back to its original straight form, thereby providing the
desired shape and space within the device, as described." Id. at 10.
Although there is no in haec verba requirement, newly-added claim
limitations must be supported in the specification through express, implicit,
or inherent disclosure. Therefore, the fundamental factual inquiry is whether
the specification conveys with reasonable clarity to those skilled in the art
that, as of the filing date sought, applicant was in possession of the invention
as now claimed. See, e.g., Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563---64 (Fed. Cir. 1991). "[T]he written description requirement is
satisfied by the patentee's disclosure of 'such descriptive means as words,
structures, figures, diagrams, formulas, etc., that fully set forth the claimed
invention."' Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 969 (Fed.
Cir. 2002) (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572
(Fed. Cir. 1997)).
Looking to the Specification, originally filed Paragraph 12 provides:
In one embodiment of the present invention, as illustrated in Fig.
4, bowing stiffeners 50 are secured between the spacer mesh 24
and the back side 14 material so as to bias the device in a position
that better matches the human torso and further creates gaps 35
between spacer mesh 24 and cloth netting 30. In one embodiment
of the present invention, the stiffeners 50 can be secured within
channels 52 in the back portion 14 of 30 the device. In one
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Application 13/655,548
embodiment of the present invention, the channels 52 are
approximately 112 inch in width and are sewn into the spacer
mesh, and the stiffeners 50 are then secured within the
channels. In one embodiment of the present invention, two
stiffeners are used in the device, and the stiffeners are slightly
longer than their respective channels, causing the stiffener to
bow and create the desired shape and space within the device.
The stiffeners can comprise a stainless steel spring steel material,
in one embodiment, which provides a material of lasting
durability with desirable rebound and memory characteristics.
Spec., 3:25--4:6 (emphasis added). Consistent with Appellant's arguments,
originally filed Paragraph 12 discloses that stiffeners may be longer than
their respective channels, can comprise spring steel material, and can be
secured within channels 52. Further, with respect to originally filed Figure
4 of Appellant's application, we note that bowing stiffeners 50 are shown to
be within channels 52. For convenience, Figure 4 is reproduced below.
Figure 4 is a schematic front view of a carriage device showing channels 52
and "bowing stiffeners" 50. Spec., 2:16-17.
We further note that originally filed Paragraph 12 explicitly states in
reference to Figure 4 that "stiffeners are . . . secured within the channels"
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Application 13/655,548
and that, in some embodiments, "the stiffeners are slightly longer than their
respective channels, causing the stiffener to bow and create the desired
shape and space within the device." Spec., 4: 1-6. As such, we determine,
on the record before us, that the Specification (i.e., originally filed Figure 4
and Paragraph 12) reasonably conveys to a skilled artisan that "the stiffener
is secured entirely within the at least one channel" as recited in claim 1, and
"inserting the stiffener fully within the at least one channel" as recited in
claim 10.
Accordingly, we do not sustain the Examiner's written description
rejection of claims 1 and 10.
Indefiniteness
The Examiner rejected claims 1 and 10 under 35 U.S.C. § 112(b) or
35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite because
it is unclear how the stiffener is secured entirely within the
channel when the stiffener is claimed to be longer than the
channel. If a stiffener is placed entirely within the channel, the
channel would be the same length as the stiffener. For purposes
of examination, this limitation will be interpreted as "secured
within."
Office Action 5. Claims 2-9 and 11-18 are rejected on the basis of the same
limitations recited in independent claims 1 and 10. Id.
In response, the Appellant asserts that the limitations recited in claims
1 and 10 (and dependent claims 2-9 and 11-18) would convey reasonable
certainty to skilled artisans that a spring steel formulated stiffener can be
secured within a channel that is of shorter length so as to bow within the
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channel and thereby create a gap that would coincide with the stiffener being
secured entirely or inserted fully within the channel. Appeal Br. 11.
Based on the record before us, we note first that Appellant's
Specification describes both securing stiffeners entirely within shorter
channels, and stiffeners that comprise spring steel with "rebound and
memory characteristics." Spec., 3:25--4:6, Fig. 4. Consistent with this
disclosure, Appellant explains persuasively that spring steel "permits flexion
with rebound and memory characteristics, it will bow when inserted, yet
seek to spring back to its original straight form, thereby providing the
desired shape and space within the device, as described." Appeal Br. 10.
In the Answer, the Examiner maintains that a stiffener cannot be
longer than the channel. Ans. 5. Nonetheless, the Examiner does not
dispute or otherwise call into question (1) the disclosure in Appellant's
Specification that stiffeners, particularly spring steel stiffeners, can bow; or
(2) Appellant's argument that the stiffeners can change shape (see Appeal
Br. 10). Ans. 5---6. Rather, the Examiner finds that the claims do not recite
the stiffener material. Ans. 5-6. However, we are not persuaded that the
claims must recite the stiffener material to provide sufficient clarity. "[A]
claim is indefinite when it contains words or phrases whose meaning is
unclear," i.e., "ambiguous, vague, incoherent, opaque, or otherwise unclear
in describing and defining the claimed invention." In re Packard, 751 F.3d
1307, 1310-13 (Fed. Cir. 2014). Rather, on this record, Appellant has
directed us to disclosure in Appellant's Specification that provides sufficient
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clarity on the meaning of the "secured within" limitation of claims 1-18, and
how that claimed invention may be accomplished. See Appeal Br. 10.
Accordingly, we do not sustain the Examiner's indefiniteness
rejection of claims 1-18.
Obviousness over Storms and Rendone -Claims 1-18
The Examiner asserts that Storms teaches all the limitations recited in
independent claim 1 except for at least one stiffener having a length that is
greater than the channel length of the at least one channel in the outer
frame, so as to bow within the at least one channel. Office Action 7-8.
The Examiner asserts that Figures 4 and 5 of Rendone
discloses a stiffener ( 14) in a channel ( 18) having a length that is
greater than (see stiffener extending past panel 16 in Figure 5)
the channel length (see Figure 4) of the channel (18), so as to
bow (the stiffener will be constantly bowed when conformed to
and worn on a body) within the channel (18).
Id. at 8. The Examiner adds that it would have been obvious to add the
stiffener of Rendone to the outer frame channel of Storms in order to
provide a fit that is more customized to each individual wearer. Id. at 8.
Appellant makes several arguments, including that the Examiner has
not explained sufficiently how the proposed combination discloses "the
stiffener is secured entirely within the at least one channel" as recited in
claim 1. Appeal Br. 13-14. Appellant adds that Rendone teaches elastic
straps 14 extend outside of channels of the garment. Id. at 14.
In response, the Examiner asserts that
[i]t is noted that "secured entirely within" has a 112a new matter
rejection and is also part of a 112b indefinite rejection. Please see
the previous office action on O 1/13/2016, page 5 as well as above
for further detail on these rejections. Because of the indefinite
rejection, this limitation was interpreted as "placed within". As
seen in Figure 4 of Rendon the stiffeners (14) are placed within
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Application 13/655,548
the channels (18) and the stiffeners (14) have a length greater
than the channel (18; see Figure 4).
Ans. 7 ( emphasis added). Based on the record before us, we understand the
Examiner's findings and conclusion to be based on a construction of the
claim phrase "secured entirely within" that does not take into account
"entirely" because the Examiner considered this limitation indefinite and
lacking written description support. See id. However, as discussed above,
we do not sustain these rejections. Further, in considering the record before
us, Rendone's disclosure of straps 14 is consistent with Appellant's
assertions. Namely, Rendone's Figure 4, and accompanying disclosure,
teach that straps 14 extend outside movable panels 16. Rendone, Fig. 4.
As such, the current record does not support a finding that the proposed
combination of Storms and Rendone teaches or suggests stiffeners secured
entirely within a channel.
Accordingly, we do not sustain the Examiner's rejection of claim 1
and its dependent claims 2-9, which all require the same limitations
discussed above recited in claim 1.
Additionally, for independent claim 10, Appellant relies on the same
arguments presented for claim 1 discussed above. Namely, Appellant
asserts that "Rendone does not show or disclose stiffeners secured entirely
within the channels as claimed in claims 1 and 10." Appeal Br. 15. We
understand Appellant to take the position that the Examiner has also not
shown how the proposed combination discloses inserting a stiffener fully
within a channel as required by claim 10. See id. In this regard, the
Examiner's findings are the same as discussed above for claim 1.
Specifically, the Examiner considered this limitation indefinite and lacking
written description support, and, consequently, did not explain on this
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record how the proposed combination show or disclose inserting a stiffener
fully into the channel. Office Action 5; see Ans. 7 (referencing page 5 of
the Office Action). Therefore, on this basis, we also do not sustain the
Examiner's rejection of independent claim 10 and dependent claims 11-18.
Objections under 35 USC§ 132(a)
The Examiner objects to the amendments to the Specification filed on
December 12, 2015. Office Action 2. In particular, the Examiner objects to
amendments to Paragraph 12 of the written description and the addition of
new Figure 5 to the Specification that describe the length of stiffeners
relative to the length of channels. Id. Appellant contends that the
amendments made to Paragraph 12 and the addition of Figure 5 are not new
matter because originally filed Paragraph 12 disclosed this same subject
matter. Appeal Br. 8-9.
Ordinarily an objection is reviewable by petition under 37 C.F.R.
§ 1.181 and a rejection is appealable to the Patent Trial and Appeal Board.
However, when the issue of new matter presented is the subject of both an
objection and a rejection, the issue is appealable. See MPEP § 2163 .06
Manual of Patent Examining Procedure ("MPEP") § 2163. 06(II), Review of
New Matter Objections and/or Rejections (9th ed., rev. 8, Jan. 2018)).
In the present case, we determine we do not have jurisdiction to
review the Objection in conjunction with this Appeal. Appellant's
amendments to Paragraph 16 and Figure 5 introduce annotations for channel
lengths L 1, distance L3, and channel points P 1 and P2. See Office Action 2.
However, this specific subject matter is not at issue in the Examiner's
rejection of pending claims 1-18. Indeed, we have reviewed all of the
Examiner's§ 112 rejections on the basis of the originally filed disclosure in
the Appellant's Application. Thus, our resolution of the Appellant's appeal
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does not tum on whether the Examiner's objections to Appellant's
amendment to Paragraph 12 and addition of Figure 5 are maintained.
Accordingly, we do not review the Examiner's objections under 35 USC§
132(a).
DECISION
We REVERSE the Examiner's decisions rejecting claims 1-18.
REVERSED
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