Ex Parte Willet et alDownload PDFPatent Trials and Appeals BoardMay 21, 201914839004 - (D) (P.T.A.B. May. 21, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/839,004 08/28/2015 85943 7590 K&L Gates LLP-Seattle 925 Fourth A venue Suite 2900 Seattle, WA 98104-1158 05/23/2019 FIRST NAMED INVENTOR Jay Barrett Willet 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. 2042405.00062 7987 EXAMINER MCNURLEN, SCOTT THOMAS ART UNIT PAPER NUMBER 3734 NOTIFICATION DATE DELIVERY MODE 05/23/2019 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): USpatentmail@klgates.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAY BARRETT WILLET, LAUREN ROSE MEYER, and SHON KENDALL HANCOCK Appeal2018-005498 1 Application 14/839 ,0042 Technology Center 3700 Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and KENNETH G. SCHOPPER, Administrative Patent Judges. SCHOPPER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the rejection of claims 1-5, 7-9, 11-19, 21, and 22. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 Our decision references the Appeal Brief ("Appeal Br.," filed Dec. 4, 2017), the Reply Brief ("Reply Br.," filed May 7, 2018), the Examiner's Answer ("Ans.," mailed Mar. 5, 2018), and the Final Office Action ("Final Act.," mailed Apr. 13, 2017). 2 According to Appellants, the real party in interest is "RECREATIONAL EQUIPMENT, INC." Appeal Br. 3. Appeal2018-005498 Application 14/839,004 BACKGROUND The embodiments described in the Specification are directed to contoured waist straps. See, e.g., Spec. ,r,r 2, 3. ILLUSTRATIVE CLAIM Claim 1 is the only independent claim on appeal and recites: 1. A waist strap, comprising: a strap anchor point; a first strap portion having a first end and a second strap portion having a second end, each strap portion having an inner side and an outer side, wherein each strap portion is coupled to the strap anchor point and comprises: a preformed lengthwise curvature such that the inner side is a concave side of the lengthwise curvature and the outer side is a convex side of the lengthwise curvature; and a preformed crosswise curvature such that the inner side is a concave side of the crosswise curvature and the outer side is a convex side of the crosswise curvature; and a belt fastener coupled to each of the first end and second end. Appeal Br. 19. REJECTIONS 1. The Examiner rejects claim 5 under 35 U.S.C. § 112(b) as indefinite. 2. The Examiner rejects claims 1-5, 7-9, 11-14, 16-19, and 21 under 35 U.S.C. § 103 as unpatentable over Feldman3 in view ofVerhulst. 4 3 Feldman, Jr., US 6,182,874 Bl, iss. Feb. 6, 2001. 4 Verhulst, US 7,604,288 Bl, iss. Oct. 20, 2009. 2 Appeal2018-005498 Application 14/839,004 3. The Examiner rejects claim 15 under 35 U.S.C. § 103 as unpatentable over Feldman in view of Verhulst and Talkish. 5 4. The Examiner rejects claim 22 under 35 U.S.C. § 103 as unpatentable over Feldman in view of Verhulst, Talkish, and Hagan. 6 DISCUSSION Rejection 1 With respect to claim 5, the Examiner finds that "it is not clear how the radius of curvature is measured." Final Act. 2. The Examiner explains that "[i]n Fig. 3, two radii of curvature (102, 106) are shown apart from the waistbelt, but no method is disclosed for how the radii of curvature are calculated as it is not clear how the illustrated radii correspond to the waistbelt curvature," and thus, "[o]ne of ordinary skill would not be able to determine the metes and bounds of the claim." Id. A claim is indefinite when its metes and bounds are unclear because the claim contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014) (during prosecution a claim is indefinite when it contains words or phrases whose meaning is unclear); Ex parte McAward, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) ( explaining that the USPTO considers a claim indefinite "when it contains words or phrases whose meaning is unclear"). The rejection does not explain adequately what words or phrases in the claim the Examiner has determined are unclear. Further, we agree with Appellants that one of ordinary skill in the art would understand how the radius of 5 Talkish, US 2,687,129, iss. Aug. 24, 1954. 6 Hagan, US 5,152,443, iss. Oct. 6, 1992. 3 Appeal2018-005498 Application 14/839,004 curvature would be measured in light of the Specification. Appeal Br. 9-10 ( citing Spec. ,r,r 28, 29). Accordingly, we do not sustain this rejection. Obviousness As discussed below, we are persuaded of reversible error by Appellants' argument that the Examiner has not established that the references of record teach a preformed lengthwise curvature as required by claim 1. See Appeal Br. 10-11. With respect to claim 1, the Examiner finds that Feldman discloses a waist strap including a preformed lengthwise curvature. Final Act. 2-3 (citing Feldman Figs 1, 3). Regarding Feldman's Figures, the Examiner finds: Figures 1 and 3 each show the belt with a curvature that is preformed (i.e. without the user wearing the belt). Figure 1 shows the belt attached to an object (see connections 24, 26), which creates a greater preformed curvature for the belt. Figure 3 shows the belt unattached to any object, which results in less curvature than in Fig. 1 (but a significant preformed curvature remains). The figures are part of the disclosure, and on their face disclose the claimed feature. Ans. 8. We determine the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims "their broadest reasonable interpretation consistent with the specification" and "in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). We determine, from the context provided in the Specification, one of ordinary skill in the art would understand that the claimed "preformed lengthwise curvature" is not merely a curve that may be made by deforming the device before its use, but it refers to a curve that is part of the 4 Appeal2018-005498 Application 14/839,004 prefabricated shape of the waist strap. See, e.g., Spec. ,r,r 10 ( discussing the use of a "preformed mold" for "contour curvature construction ... through injection molding"), 54 ( discussing construction of "preformed lengthwise curvature" by "injection molding into a prefabricated shape."). Thus, we determine that the broadest reasonable construction of the phrase "preformed lengthwise curvature" requires a curvature that is formed during the construction of the device, e.g., through the use of molding into a prefabricated curved shaped. Based on the above construction of the term "preformed lengthwise curvature," we find that the Examiner neither has established that the art of record teaches such a preformed curvature nor that the use of preformed lengthwise curvature would have been obvious. The Examiner points only to the difference in curvature of the device depicted in Figures 1 and 3 of Feldman, and the Examiner indicates that the claim language requires only that the device has a lengthwise curvature present at any time while the belt is not being used. This does not comport with the broadest reasonable interpretation of the claim discussed above. Further, the Examiner does not otherwise cite to any portion of Feldman that expressly discloses a preformed lengthwise curvature that is formed when the device is constructed, and the Examiner does not determine that fabricated the device with such curvature would have been obvious. For these reasons, we are persuaded of error in the rejection of claim 1. Accordingly, we do not sustain the rejection of claim 1. For the same reasons we also do not sustain the rejection of dependent claims 2-5, 7-9, 11-14, 16-19, and 21. With respect to the rejections of claims 15 and 22, the Examiner does not rely on either Talkish or Hagan in a manner that cures 5 Appeal2018-005498 Application 14/839,004 the deficiency in the rejection of claim 1. Thus, we also do not sustain the rejections of claims 15 and 22. CONCLUSION We REVERSE the rejections of claims 1-5, 7-9, 11-19, 21, and 22. REVERSED 6 Copy with citationCopy as parenthetical citation