Ex Parte BÉLAND et al

Patent Trial and Appeal Board

Oct 19, 2016

12862832 (P.T.A.B. Oct. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/862,832 08/25/2010
28291 7590 10/21/2016
SMART & BIGGAR
1000 DE LA GAUCHETIERE ST. W.
SUITE 3300
MONTREAL, QC H3B 4W5
CANADA
FIRST NAMED INVENTOR
Jean-Fran\Oois BELAND
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.
86421-61C 4739
EXAMINER
QUINN, RICHALE LEE
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
10/21/2016 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.MTL@SMART-BIGGAR.CA
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN-FRAN<;OIS BELAND and MARC GAGNON
Appeal2014-005693
Application 12/862,832
Technology Center 3700
Before LINDA E. HORNER, CHARLES N. GREENHUT, and
GORDON D. KINDER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jean-Frarn;ois Beland and Marc Gagnon (Appellants) 1 seek our
review under 35 U.S.C. § 134 of the Examiner's decision rejecting claims 1-
19 and 21-25. Claim 20 is pending and objected to as being dependent upon
a rejected base claim. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Bauer Hockey, Inc. Appeal
Br. 3.
Appeal2014-005693
Application 12/862,832
CLAIMED SUBJECT MATTER
Appellants' claimed subject matter relates to "a shirt for a hockey
player, the shirt having gripping zones for keeping a hockey elbow pad in
place." Spec. 1, 11. 9-10. Claims 1, 7, and 13 are the independent claims on
appeal. Claim 1 is reproduced below.
1. A hockey shirt to be worn by a hockey player, said
hockey shirt being an undergarment comprising:
(a) a torso portion comprising a head opening for receiving
a head of the hockey player and a lower trunk opening for fitting
around a waist and hips of the hockey player, said torso portion
being configured such that said hockey shirt is worn by passing
the head of the hockey player through said lower trunk opening
and then through said head opening; and
(b) a pair of sleeves for receiving arms of the hockey
player, each sleeve comprising: (i) an inner arm portion for
facing an inner side of the arm of the player and an outer arm
portion for facing an outer side of the arm of the player, said inner
arm portion and said outer arm portion defining a biceps portion
for covering a biceps of the arm of the hockey player, an elbow
portion for covering an elbow of the arm of the hockey player,
and a forearm portion for covering a forearm of the arm of the
hockey player; and (ii) a gripping zone for gripping a hockey
elbow pad worn by the hockey player, said gripping zone being
provided at least on said outer arm portion and on at least one of
said biceps portion and said forearm portion, said gripping zone
comprising an outer surface for contacting an inner surface of the
hockey elbow pad, said outer surface of said gripping zone
having a coefficient of friction with the inner surface of the
hockey elbow pad sufficient to prevent movement of the hockey
elbow pad relative to said sleeve.
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Application 12/862,832
REJECTIONS
The Non-Final Action, dated August 8, 2013 ("Non-Final Act."), from
which this appeal is taken, included three grounds of rejection. Non-Final
Act. 2-6. The Examiner withdrew one of these grounds of rejection in the
Examiner's Answer, dated February 27, 2014 ("Ans."). Ans. 2. 2 The
remaining rejections before us in this appeal are:
1. Claims 1-11, 13-17, 19, and21-23 under35 U.S.C. § 102(b) as
anticipated by Sessoms (US 5,388,271, issued February 14, 1995).
2. Claims 12, 18, 24, and 25 under 35 U.S.C. § 103(a) as
unpatentable over Sessoms and Matechen (US 7, 100,216 B2,
issued September 5, 2006).
ANALYSIS
First Ground of Rejection
Appellants present the same arguments in support of patentability for
independent claims 1, 7, and 13. Compare Appeal Br. 11-17, with id. at 17-
26. We address each argument in tum. Appellants did not present any
additional arguments for dependent claims 2-6, 8-11, 14-17, 19, and 21-23
apart from the arguments presented for independent claims 1, 7, and 13. Id.
at 17, 21, 26. Thus, the dependent claims stand or fall with their respective
independent claims. 37 C.F.R. § 41.37(c)(l)(iv).
2 The Examiner withdrew the rejection of claims 1-25 under 35 U.S.C.
§ 112, second paragraph. Non-Final Act. 2; Ans. 2.
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Appeal2014-005693
Application 12/862,832
The preambles of claims 1, 7, and 13 recite, in pertinent part, "[a]
hockey shirt" and "said hockey shirt being an undergarment." Appeal
Br. 27, 28, 29 (Claims App.). Appellants argue the Examiner erred in
finding that Sessoms discloses a hockey shirt that is an undergarment. Id. at
14, 18, 23. Sessoms discloses "an insulated undergarment" that is intended
to be worn during "[ n ]umerous activities ... performed during the cold
winter season." Sessoms, col. 1, 11. 10-11, 17-18. We agree with the
Examiner's finding that Sessoms' s shirt "is capable of being worn by a
person playing hockey." Ans. 2. Appellants have not identified any
structural difference between the shirt disclosed in Sessoms and the claimed
"hockey shirt" that would render Sessoms' s shirt unsuitable for use during
the playing of hockey. Further, as noted by the Examiner, Sessoms
characterizes the disclosed shirt as an undergarment and discloses that the
shirt is to be worn under a jersey. Id. (citing Sessoms, col. 3, 11. 34-38); see
also Sessoms, col. 1, 11. 10-11. As such, we agree with the Examiner that
Sessoms' s shirt is an undergarment, as claimed.
The bodies of claims 1, 7, and 13 recite a pair of sleeves, each sleeve
comprising one gripping zone (claims 1 and 13) or two gripping zones
(claim 7) "provided on ... said outer arm portion" of the sleeve. Appeal
Br. 27, 28, 29-30 (Claims App.). Appellants argue that the Examiner erred
in finding that Sessoms discloses the claimed gripping zone provided on the
outer arm portion of the sleeve because Sessoms does not disclose additional
material, apart from sleeve 12 of Sessoms, that forms the gripping zone. Id.
at 15, 20, 25. Appellants' argument is inconsistent with the wording in each
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Appeal2014-005693
Application 12/862,832
of the independent claims, which recites as noted above, each sleeve
"comprising" a gripping zone. Thus, even if the gripping zone, when
construed in light of the Specification, must be formed from material
different from the material used to form the inner arm portion of the sleeve,
the material used for forming the gripping zone is recited in the claim as
being an element of the claimed sleeve. The Examiner found that Sessoms
discloses a pair of sleeves 12 comprising a first ply of material 16 and
gripping zones formed by additional material, i.e., a second ply of material
32. Non-Final Act. 3; Ans. 3. We agree with the Examiner's interpretation
of claims 1, 7, and 13. In particular, we find that Sessoms' s second ply of
material 32, which is additional material to the first ply 16 that forms the
inner arm portion of the sleeve, can be relied upon to form the claimed
gripping zone. The fact that second ply 32 of Sessoms is described as being
part of sleeve 12 does not persuade us of error in the Examiner's rejection in
light of the wording of the claims.
The bodies of claims 1, 7, and 13 further recite that the gripping zone
is "for gripping a hockey elbow pad worn by the hockey player" and recite
that the outer surface of each gripping zone has a coefficient of friction with
the inner surface of the hockey elbow pad sufficient to prevent3 movement
of the hockey elbow pad relative to said sleeve. Appeal Br. 27, 28-29, 30
(Claims App.). Appellants argue that Sessoms fails to explicitly disclose
that the second ply of fabric material 32 has the recited coefficient of friction
33 Claim 13 recites that the coefficient of friction is sufficient to "impede"
movement of the hockey elbow pad relative to said sleeve. Appeal Br. 30.
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Appeal2014-005693
Application 12/862,832
and the Examiner's finding that the material disclosed in Sessoms is capable
of exhibiting the claimed coefficient of friction is "purely speculative."
Appeal Br. 16, 21, 26; Reply Br. 6-9.
The Examiner found that Sessoms discloses that second ply 32 can be
made from a Polartec fabric. We agree with that finding. Sessoms discloses
that first ply 16 can be a natural fabric, synthetic fabric, or a combination
thereof, and that one such suitable fabric is a Polartec fabric. Sessoms,
col. 3, 11. 49-63. Sessoms further discloses that"[ s ]imilar to the first ply of
fabric material 16, the second ply of fabric material 32 may ... also be of a
natural fabric, synthetic fabric, or a combination thereof." Id. at col. 4, 11.
47-50. We understand this sentence in Sessoms to teach that the same
example of a Polartec fabric as a "suitable fabric" disclosed for use for first
ply 16 is equally suitable for use as the fabric of second ply 32.
The issue remains whether the Examiner had a sound basis for finding
that the second ply 32 of Sessoms made from a Polartec material has a
coefficient of friction capable to prevent or impede movement of the hockey
elbow pad relative to the sleeve of the hockey shirt. See In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990) (holding that before an applicant is required
to provide that the subject matter shown to be in the prior art does not
possess the characteristic relied on, the examiner must provide sufficient
evidence or scientific reasoning to establish there is a sound basis for the
examiner's belief that the functional limitation is an inherent characteristic
of the prior art). Appellants' Specification describes a variety of ways to
achieve frictional engagement between the material of the gripping zone and
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Application 12/862,832
the inner surface of the elbow pad. Spec. 8, 11. 14-30. As claimed, the
coefficient of friction of the outer surface of the gripping zone depends on
the material used to form the inner surface of the hockey elbow pad. The
Examiner notes, correctly, that the claims do not recite the combination of a
hockey shirt and the hockey elbow pad. Ans. 2-3. We agree with the
Examiner that the claim requires only that the shirt be capable of use with a
hockey elbow pad, and the claim does not otherwise specify the structure or
materials of the hockey elbow pad. Id. at 3--4. The Specification describes
in at least one embodiment, "the inner surface of the elbow pad may
comprise [a] corresponding zone having VELCROâ„¢ hooks." Spec. 8,
11. 22-23. We find that the Examiner had a sound basis for finding that the
second ply of fabric material 32, when made from Polartec as disclosed in
Sessoms, would possess a coefficient of friction capable to prevent or
impede movement of the hockey elbow pad relative to the sleeve of the
hockey shirt, in at least the circumstance in which the inner surface of the
hockey elbow pad comprises VELCRQTM hooks, as described in Appellants'
Specification. See Ans. 4 (Examiner finding that "Polartec is known to be a
loft, loop fabric having a textured surface"). Appellants have not persuaded
us of error in this finding.
Appellants argue:
Because the Polartec fabric material is a soft material with pile
length relatively short for avoiding the formation of pills on its
surface, the skilled person would thus understand that such
material has a low coefficient of friction, i.e.[,] a fabric material
that presents low frictional capacity of its surface.
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Application 12/862,832
Reply Br. 6. The claims, however, do not recite that the gripping zone must
be formed of a material having other than a low coefficient of friction.
Rather, as discussed supra, the claim defines the requisite coefficient of
friction with respect to the unclaimed hockey elbow pad, i.e., that the
coefficient of friction is sufficient to prevent movement of the hockey elbow
pad relative to said sleeve. As explained above, if the hockey elbow pad has
a surface containing, for instance, VELCROâ„¢ hooks, then a gripping zone
formed of a Polartec material would contain the requisite coefficient of
friction. Due to the breadth of the claim language and the manner in which
Appellants chose to claim the coefficient of friction, Sessoms' s second ply
of material 32 meets the requirements for forming the claimed gripping
zone.
For these reasons, Appellants have not demonstrated error in the
Examiner's rejection of independent claims 1, 7, and 13. The dependent
claims subject to the first ground of rejection fall with claims 1, 7, and 13.
Accordingly, we sustain the first ground of rejection of claims 1-11, 13-17,
19, and 21-23 under 35 U.S.C. § 102(b) as anticipated by Sessoms.
Second Ground of Rejection
Appellants do not present additional arguments in support of
dependent claims 12, 18, 24, and 25 over the second ground of rejection.
Appeal Br. 26 (relying on arguments presented for claims 1 and 13 over the
first ground of rejection). Accordingly, for the same reasons provided
supra, we sustain the rejection of claims 12, 18, 24, and 25 under 35 U.S.C.
§ 103(a) as unpatentable over Sessoms and Matechen.
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Appeal2014-005693
Application 12/862,832
DECISION
The decision of the Examiner to reject claims 1-19 and 21-25 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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