Ex Parte Chen et al

Patent Trial and Appeal Board

Jul 28, 2014

12255840 (P.T.A.B. Jul. 28, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/255,840 10/22/2008 Charlene Chen 982.09 4113
85444 7590 07/28/2014
Bay Area Technolgy Law Group PC
2171 E. Francisco Blvd., Suite L
San Rafael, CA 94901
EXAMINER
NELSON, KERI JESSICA
ART UNIT PAPER NUMBER
3772
MAIL DATE DELIVERY MODE
07/28/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHARLENE CHEN and NAM C. CHEN
____________
Appeal 2012-005808
Application 12/255,840
Technology Center 3700
____________

Before JOHN C. KERINS, LYNNE H. BROWNE and
THOMAS F. SMEGAL, Administrative Patent Judges.

SMEGAL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Charlene Chen et al (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s Final rejection of claims 1–14, the only claims
pending in the application on appeal. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

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CLAIMED SUBJECT MATTER
An understanding of the invention can be derived from a reading of
independent claim 1, which is reproduced below.
1. A device for supporting the abdominal region of a user
comprising a substantially rectangularly shaped fabric, at least a
segment of which is stretch material having first and second
distal ends and a releasable closure for attaching said distal ends
to one another to form a band of said fabric sized to encircle the
abdominal region of the user, a first hook and loop panel
positioned to reside proximate the abdomen of the user when
said device is worn and a second hook and loop panel
positioned to reside proximate the back of the user when said
device is worn, two segments of stretch material, each segment
having first and second ends and hook and loop regions located
proximate said first and second ends for removable attachment
of said segments to said substantially rectangularly shaped
fabric, wherein said hook and loop region on the first end of
each of said segments is removably attached to said first hook
and loop panel and said hook and loop region on the second end
of each of said segments is removably attached to said second
hook and loop panel, said segments being sized to stretch from
their at-rest lengths when said device is worn causing restriction
to the abdominal region of the user.

App. Br. 12, Clms. App.

REJECTIONS ON APPEAL
The following Examiner’s rejections are before us for review.
1. Claims 1, 2, 4–6, 8 and 9 are rejected under 35 U.S.C. §103(a) as
unpatentable over Drulias (US 5,179,942, issued Jan. 19, 1993)
and Lee (US 2003/0149390 A1, pub. Aug. 7, 2003).
2. Claim 3 and 7 are rejected under 35 U.S.C. §103(a) as
unpatentable over Drulias, Lee and Nelson (US 2004/0122344 A1,
pub. Jun. 24, 2004).
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3. Claim 10–13 are rejected under 35 U.S.C. §103(a) as unpatentable
over Stewart (US 2006/0122547 A1, pub. Jun. 8, 2006).
4. Claim 14 is rejected under 35 U.S.C. §103(a) as unpatentable over
Stewart and Nelson (US 2004/0122344 A1, pub. Jun. 24, 2004).
ANALYSIS
Obviousness of claims 1, 2, 4–6, 8 and 9 based on Drulias and Lee.
Appellants argue claims 1, 2, 4–6, 8 and 9 as a group (Br. 4–8).1 We
select claim 1 as the representative claim for this group such that the
remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37(c) (1) (vii)
(2011).
Appellants first contend that “it is critical that the device include a
substantially rectangularly shaped fabric, at least a segment of which is
composed of stretch material which can be wrapped about the torso of a user
and ends joined to form a band of stretch fabric.” Br. 5. While this
argument is not persuasive as it lacks evidentiary support, it also does not
distinguish the claims from the teaching of Drulias. Figure 3 of Appellants’
Specification illustrates that “substantially rectangular shaped material 31”
appears to taper inwardly from the ends toward the center of the length-wise
edges. Similarly, the Examiner found “[t]he portions 2, 4, and 6 of the
device taught by Drulias when combined form a substantially rectangularly
shaped band. While the band may not be a perfect rectangle, the claim
merely requires that the band be ‘substantially rectangularly shaped.’” Ans.
10. We agree with the Examiner that “substantially rectangular” can be

1 Appellants separately identify claims 2, 4, 5, 8, and 9, but merely restate
what limitations are present in those claims, without attempting to
distinguish those limitations from the prior art. Br. 5.
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broadly interpreted as including the Drulias device, in that it teaches a length
greater than its height (or width), notwithstanding a slight tapering of the
length-wise edges.
Appellants also argue that “Drulias does not teach the use of two
segments of stretch material, each segment having first and second ends and
hook and loop regions located proximate their first and second ends for
removable attachment of the segments to the substantially rectangularly
shaped fabric.” Br. 6. Thus, Appellants are simply attacking Drulias in
isolation, rather than as combined with Lee. However, nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.1986).
The Examiner relies on Lee “to teach a belt comprising a band of
fabric (1) and two segments of stretch material (7, 21) each having first and
second ends and hook and loop regions (9) located proximate to the first and
second ends capable of being removably attached to the band (Figs. 1-4 & 7-
11; page 2, ¶ 41; page 3, ¶ 44 & 46).” Ans. 9. Therefore, Appellants’
arguments are not responsive to the rejection as articulated by the Examiner,
and thus, are not persuasive.
Appellants also argue that Lee employs a base material that is
inelastic. Br. 8. Thus Appellants are attacking Lee in isolation rather than
as combined with Drulias. As the Examiner notes, “Lee was not relied upon
to teach an elastic base material since the claimed limitation of substantially
rectangularly shaped fabric including at least a segment of stretch material
has been met by [the] Drulias elastic band (2+4+6) (column 4, lines 62-65).”
Ans. 12.
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Appellants also contend that combining Lee with Drulias “merely
[represents] an exercise of hindsight reconstruction of applicant’s
invention.” Br. 8. We do not agree that the Examiner’s rejection is an
improper hindsight reconstruction as it does not include knowledge gleaned
only from the Appellants’ disclosure, but rather takes into account the
teachings of Drulias and Lee, i.e., knowledge which was within the level of
ordinary skill at the time the claimed invention was made. See In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971(“[a]ny judgment on
obviousness is in a sense necessarily a reconstruction based on hindsight
reasoning”).
In particular, the Examiner has provided the necessary factual support
to reach a conclusion of obviousness. For example, the Examiner noted that
the modification of Drulias’s single connector to be formed as
two elements in the manner taught by Lee would have been
obvious to one having ordinary skill in the art without relying
on the teachings of Appellants[’] disclosure since Lee clearly
teaches the advantages of two elastic elements rather than only
one in paragraphs 17, 22, 24, and 25 of Lee’s disclosure on
page 2.

Ans. 11, 12.

Appellants also note that the “hook and loop patches 18 and18A of
Drulias are sized as mere attachment points for secondary support 22” and
therefore contends that “[t]hese patches would not lend themselves to sizing
the support belt by enabling a user to reposition the two segments of stretch
material as per the present invention necessary in applying this invention to
pregnancy and post partum use.” Br. 8.
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Again the Examiner has the better position, first noting that “the hook
and loop patches (18 & 18A) [of Drulias] appear relatively larger when
compared to the corresponding hook and loop patches (24) on the connector
(22) which are intended to attach to the hook and loop patches (18 & 18A)
on the band (2+4+6)” and then finding that the patches “would therefore
allow for some adjustment regarding the sizing or applied tension of the
connector even when divided into two elastic elements as taught by Lee.”
Ans. 12, 13. Furthermore Appellants’ contention is not commensurate with
claim 1 which does not explicitly recite that the support belt is to be
adjustable in size, and is not limited to a particular size of the hook and loop
panels to achieve a particular range of adjustability of the elastic elements.
See App. Br. 12, Clms. App.
For the foregoing reasons, we sustain the Examiner’s rejection under
35 U.S.C. §103 of claims 1, 2, 4–6, 8 and 9 over Drulias and Lee.
Obviousness of claims 3 and 7 over Drulias, Lee and Nelson.
Appellants argue that there would be no reason to employ the waist
size indicia of Nelson in the combination of Drulias and Lee because there is
no ability to modify the circumference of the Drulias device. Br. 9.
However, this argument is not persuasive as the Examiner points out that
both Drulias and Lee “are capable of accommodating users of different
sizes” and that it thus would have been obvious “to include indicia as taught
by Nelson [in the combination of Drulias and Lee] in order to enable an
individual user to properly position the band to accommodate their personal
waist size.” Ans. 13. We agree with the Examiner for the reasons noted
above with respect to claim 1 re: adjustability.
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For the foregoing reasons, we sustain the Examiner’s rejection under
35 U.S.C. §103 of claims 3 and 7 over Drulias, Lee and Nelson.
Obviousness of claims 10–13 over Stewart.
Appellants argue claims 10–13 as a group (Br. 9, 10). We select
claim 10 as the representative claim for this group such that the remaining
claims stand or fall with claim 10. 37 C.F.R. § 41.37(c) (1) (vii) (2011).
Appellants contend that claim 10 “recites providing a hook and loop
panel located mid point of the distal ends of the stretch material” to which
“stretch fabric 32 and 33 can be adjustably applied by a user to provide the
appropriate supportive abdominal fit.” Br. 10. While conceding that
Stewart does permanently affix the first end of each segment [straps 4 and 5]
at the edges of panel 8, Appellants argue that “permanently affixing the
distal ends of elements 4 and 5 proximate edges 22 and 23 would completely
subvert the use of the Stewart device.” Br. 10. We disagree.
Not only does Stewart disclose substantially the same use at paragraph
[27] in teaching that “[b]elt device 1 has elastic straps 4, 5 for additionally
adjusting the tension in belt device 1[,]” the Examiner also found that
The proposed modification of the device taught by Stewart . . .
would still maintain the function of providing an elastic belt
having two elastic straps each permanently affixed at a first end
to the belt and removably affixed at a second end to the belt in
order to adjust the tension of the belt without removing or
unfastening the belt (Stewart: page 1, ¶18). The reversal of the
types of attachment is merely a design consideration and does
not negatively impact the functionality of the device taught by
Stewart.

Ans. 14. Furthermore, to the extent that Appellants are arguing that Stewart
teaches away from the proposed combination, prior art does not teach away
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from claimed subject matter merely by disclosing a different solution to a
similar problem unless the prior art also criticizes, discredits or otherwise
discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004).
For the foregoing reasons, we sustain the Examiner’s rejection under
35 U.S.C. §103 of claims 10–13 over Stewart.
Obviousness of claim 14 over Stewart and Nelson.
Appellants assert that “not only would it not be obvious to combine a
reference to an athletic supporter to one involving an adjustable back support
device, but placing waist indicia on the front of Stewart would seem to serve
no purpose.” Br. 11. This argument is not persuasive. For the reasons
stated by the Examiner at pages 14 and 15 of the Answer, we sustain the
rejection under 35 U.S.C. §103 of claim 14 over Stewart and Nelson.
DECISION
We AFFIRM all of the Examiner’s rejections.
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)(1)(iv).
AFFIRMED

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