Ex Parte Bye et al

Patent Trial and Appeal Board

Nov 27, 2018

14266130 (P.T.A.B. Nov. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/266,130 04/30/2014
110443 7590 11/29/2018
MRG/University of Minnesota
c/o Mueting, Raasch & Gebhardt, P.A.
PO Box 581336
Minneapolis, MN 55458-1336
FIRST NAMED INVENTOR
Elizabeth Kersch Bye
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.
ll0.04300101 (20130275) 3848
EXAMINER
COLLIER, JAMESON D
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
ll/29/2018 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):
ptodocketing@mrgs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ELIZABETH KERSCH BYE, KAREN LOUISE LABAT,
LINSEY ANN GORDON, and THERESA ELIZABETH LASTOVICH
Appeal2018-002737 1
Application 14/266,1302
Technology Center 3700
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-5 and 8-20. 3 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Our Decision references Appellants' Appeal Brief ("App. Br.," filed
September 11, 2017) and Reply Brief ("Reply Br.," filed January 17, 2018),
the Examiner's Answer ("Ans.," mailed November 17, 2017), and Non-Final
Office Action ("Non-Final Act.," mailed March 9, 2017).
2 Appellants identify Regents of the University of Minnesota as the real
party in interest. (App. Br. 2).
3 Claims 6 and 7 are canceled. (Non-Final Act. 2).
Appeal2018-002737
Application 14/266,130
THE INVENTION
Claim 1, reproduced below with added emphasis, is illustrative of the
claims on appeal.
1. A protective garment comprising:
a body comprising a front portion, a rear portion, and a
neck opening, wherein the front portion comprises a left front
portion and a right front portion, wherein the rear portion
comprises a left rear portion and a right rear portion;
a left sleeve attached to the body at a left sleeve opening
and a right sleeve attached to the body at a right sleeve opening;
a left leg and a right leg extending from the body;
a left shoulder region located between the left sleeve
opening and the neck opening;
a right shoulder region located between the right sleeve
opening and the neck opening;
a crotch region comprising a crotch point where the left
and right legs meet the body;
a waist region positioned between a waist axis and the
crotch point, wherein the waist axis is transverse to a
longitudinal axis of the garment and intersects the longitudinal
axis between the left and right sleeve openings and the crotch
point;
an elastic lumbar panel positioned on the rear portion of
the body and attached to the rear portion of the body in the
waist region;
a left shoulder elastic strap comprising a first end
attached to the left front portion of the body and a second end
attached to the left rear portion proximate the elastic lumbar
panel such that the left shoulder elastic strap extends from the
front portion over the left shoulder region to a location
proximate the elastic lumbar panel;
a right shoulder elastic strap comprising a first end
attached to the right front portion of the body and a second end
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Application 14/266,130
attached to the right rear portion proximate the elastic lumbar
panel such that the right shoulder elastic strap extends from the
front portion over the right shoulder region to a location
proximate the elastic lumbar panel;
a left side elastic waist strap attached to the front portion
of the body and extending around a left side of the garment
where the left side elastic waist strap is attached to the rear
portion of the body, wherein the left side elastic waist strap
comprises a first end proximate the crotch point and a second
end proximate the elastic lumbar panel; and
a right side elastic waist strap attached to the front
portion of the body and extending around a right side of the
garment where the right side elastic waist strap is attached to
the rear portion of the body, wherein the right side elastic waist
strap comprises a first end proximate the crotch point and a
second end proximate the elastic lumbar panel.
(App. Br. 16-17 (Claims Appendix)).
THE REJECTIONS
The following rejections are before us for review:
I. Claims 1--4, 8-10, 12, 13, 16, 17, and 20 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Kostrzewski (US 8,533,864 Bl, iss. Sept 17,
2013) and Dicker et al. (US 5,819,322, iss. Oct. 13, 1998) ("Dicker").
II. Claims 5 and 11 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Kostrzewski, Dicker, and Gatto et al. (US 2008/0250553 Al, pub.
Oct. 16, 2008) ("Gatto").
III. Claims 14, 15, 18, and 19 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Kostrzewski, Dicker, and Dainese (WO 01/10254 Al,
pub. Feb. 15, 2001).
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Application 14/266,130
ANALYSIS
Rejection I
Appellants argue that Kostrzewski does not disclose the claim 1
limitations "wherein the left side elastic waist strap comprises a first end
proximate the crotch point and a second end proximate the elastic lumbar
panel" and "wherein the right side elastic waist strap comprises a first end
proximate the crotch point and a second end proximate the elastic lumbar
panel." (App. Br. 8-12). According to Appellants, the meanings of the
limitations "proximate the elastic lumbar panel" and "proximate the crotch
point" are governed by the definitions set forth in the Specification at
pages 6 and 8, respectively. 4,5 (Id.; Reply Br. 3-9).
The Examiner agrees that the cited definitions apply to the disputed
claim language. However, the Examiner maintains that Kostrzewski
discloses the above limitations under the definitions in the Specification.
(Non-Final Act. 4--8) (citing the definition at page 8, lines 14--16 of the
Specification). The Examiner explains
the interpretation that the respective second ends of the left and
right waist straps being "proximate the elastic lumbar panel" is
in agreement with Appellants' argued definition (Defn. [5]
above) is proper, since the waist straps' second ends are located
closer to the elastic lumbar panel (at intersection point #304a in
Kostrzewski Fig. 2) than the neck opening (i.e. closer than
"another element or feature shown in the Figures," wherein the
4 See Spec. 8, 11. 14--16 ("As used herein, the term 'proximate the crotch
point' means that the element or feature is closest to or nearest the crotch
point as compared to another element or feature shown in the Figures").
5 See Spec. 6, 11. 22-24 ("As used herein, the term 'proximate the elastic
lumbar panel' means that an element or feature is closest to or nearest the
elastic lumbar panel as compared to another element or feature shown in the
Figures.").
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Appeal2018-002737
Application 14/266,130
neck opening is "another element" compared to the waist strap
regarding proximity to the elastic lumbar panel.
(Ans. 5) (citing the definition at page 6, lines 22-24 of the Specification).
Thus, the parties agree that the disputed claim language is defined in
the Specification, but disagree as to the meaning of those definitions. In
particular, the parties differ as to the import of the definitional phrase "as
compared to another element or feature." The Examiner interprets the term
"another" broadly to mean "at least one other." According to the Examiner:
Giving importance to the phrase "another element or feature,"
as long as the first ends of the straps are closest to the crotch
point as compared to at least one other element or feature (i.e.
such as a neck opening or shoulder region), then the straps'
front/first ends are "proximate the crotch point."
(Non-Final Act. 20) (emphasis added). The Examiner also asserts that the
Specification contains an alternative definition for each limitation. (Ans. 3-
5) (citing Spec. 6, 11. 27-28; 6 Id. at 8, 11. 16-177).
Appellants disagree and argue that "one of skill in the art would
understand that the phrase 'proximate the crotch point' means that the first
ends of the recited left and right side elastic waist straps are closer to the
crotch point than to any other element or feature shown in the Figures."
(Reply Br. 4) ( emphasis added). Similarly, Appellants contend that "one of
skill in the art would understand that the phrase 'proximate the elastic
6 "Alternatively, the term 'proximate the elastic lumbar panel' means that
the element or feature is located within 6 inches (i.e., 15.24 cm) of the
elastic lumbar panel."
7 "Alternatively, the term 'proximate the crotch point' means that an
element or feature is located within 6 inches (i.e., 15.24 cm) of the crotch
point."
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Application 14/266,130
lumbar panel' means that the second ends of the recited left and right elastic
waist straps are located closer to the elastic lumbar panel than to any other
element or feature shown in the Figures." (Id.) (emphasis added).
During examination, claims are to be given their broadest reasonable
interpretation consistent with the specification, and the language should be
read 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) (citations omitted). In interpreting claim language, we apply the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the Specification. This means that 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). And
"[ w ]hen the applicant states the meaning that the claim terms are intended to
have, the claims are examined with that meaning, in order to achieve a
complete exploration of the applicant's invention and its relation to the prior
art." Id. See also, Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
(Fed. Cir. 1996).
Although words in a claim are generally given their ordinary
and customary meaning, a patentee may choose to be his own
lexicographer and use terms in a manner other than their
ordinary meaning, as long as the special definition of the term
is clearly stated in the patent specification or file history.
Here, Appellants have clearly set forth special definitions in the
Specification for the argued claim language. To the extent that the
definitions contain some ambiguity, Appellants have resolved that
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ambiguity. See Reply Br. 4. Notwithstanding that the Specification contains
alternative language set off with quotation marks, which would normally
introduce a special definition, 8 Appellants have stated on the record that this
language is intended to introduce an alternative embodiment rather than an
alternative definition. (Id. at 3.) Accordingly, we interpret the claims with
the meaning that the Appellants intend the claim terms to have, as stated on
the record by Appellants. To be clear, we interpret the phrase "proximate
the crotch point" to mean "that the first ends of the recited left and right side
elastic waist straps are closer to the crotch point than to any other element or
feature shown in the Figures." And we interpret the phrase "proximate the
elastic lumbar panel" to mean that "the second ends of the recited left and
right elastic waist straps are located closer to the elastic lumbar panel than to
any other element or feature shown in the Figures."
As Appellants point out (App. Br. 11-12), Kostrzewski's left and
right side elastic waist straps 302 have "ends" that are located closer to
fourth shirt strip 304 than to first point 304a (i.e., "the elastic lumbar
panel"). See Kostrzewski Figure 2. Therefore, Kostrzewski's waist strap
ends are not "proximate the elastic lumbar panel" as required by claim 1.
In view of the forgoing, we do not sustain the rejection of independent
claim 1, and independent claim 12, which recites substantially similar claim
8 The choice of the words "phrase" and "means," combined with the use of
quotation marks to set the phrase off from the rest of the sentence,
unmistakably notify a reader of the patent that the patentee exercised the
option to define the entire phrase without respect to its ordinary meaning as
understood by one of ordinary skill in the art at the time of the invention.
Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1379 (Fed. Cir.
2005).
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Application 14/266,130
limitations. For the same reasons, we also do not sustain the rejection of
dependent claims 2--4, 8-10, 13, 16, 17, and 20. Cf In re Fritch, 972 F.2d
1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the
independent claims from which they depend are nonobvious").
Rejections II and III
Dependent claims 5, 11, 14, 15, 18, and 19
Claims 5, 11, 14, 15, 18, and 19 depend from independent claims 1
and 12, and the Examiner's reliance on Gatto and Dainese (Non-Final Act.
16-18) does not cure the above-discussed deficiency as to claims 1 and 12.
Therefore, we do not sustain the rejections of claims 5, 11, 14, 15, 18, and
19 under 35 U.S.C. § 103(a).
DECISION
The Examiner's decision to reject claims 1-5 and 8-20 under
35 U.S.C. § 103(a) is reversed.
REVERSED
8