Ex Parte DeerinDownload PDFPatent Trial and Appeal BoardSep 26, 201613356845 (P.T.A.B. Sep. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/356,845 01124/2012 24239 7590 09/28/2016 MOORE & VAN ALLEN PLLC P.O. BOX 13706 3015 Carrington Mill Boulevard, Suite 400 Research Triangle Park, NC 27709 FIRST NAMED INVENTOR Robert F. Deerin 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. 014110-000019 3265 EXAMINER STEPHENS, JACQUELINE F ART UNIT PAPER NUMBER 3761 NOTIFICATION DATE DELIVERY MODE 09/28/2016 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): iplaw@mvalaw.com usptomail@mvalaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte ROBERT F. DEERIN Appeal2015-000539 Application 13/356,845 1 Technology Center 3700 Before MICHAEL L. HOELTER, THOMAS F. SMEGAL, and LISA M. GUIJT, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Robert F. Deerin (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner's final rejection of claims 1-20 under 35 U.S.C. § 102(b) as anticipated by Brownlee (US 5,360,422, iss. Nov. 1, 1994); of claims 1-20 under 35 U.S.C. § 103(a) as unpatentable over Brownlee; and of claims 5, 6, and 18 under 35 U.S.C. § 103(a) as unpatentable over Brownlee and Foss (US 6,723,428, iss. Apr. 20, 2004). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellant, the real party in interest is the inventor. Br. 1. Appeal2015-000539 Application 13/356,845 CLAIMED SUBJECT MATTER Claims 1 and 17 are independent. Claim 1 is reproduced below and illustrates the claimed subject matter, with disputed limitations emphasized. 1. A washable, reusable garment for retention of body fluids when worn on a person's lower body part, the garment compnsmg: a crotch portion adapted to be proximate to the person's crotch and having a first end and a second end; a body portion contiguous with the first end and second end of the crotch portion and defining at all times a waist opening, the body portion and the crotch portion together forming at all times first and second leg openings; and a washable absorbent composite attached to the crotch portion. ANALYSIS Anticipation of Claims 1-20 by Brownlee Appellant argues claims 1-20 together in contesting the rejection of these claims as anticipated by Brownlee. See Br. 4--5.2 We select claim 1 as the representative claim for this group, and the remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). We have considered Appellant's arguments raised in the Appeal Brief, but do not find them persuasive to demonstrate error in the Examiner's rejection of claim 1 as being anticipated by Brownlee. The Examiner finds that Brownlee anticipates claim 1 by teaching a washable, reusable garment having a crotch portion, including inter alia, "a 2 For ease of reference, we have added numbers to the pages of the Appeal Brief. 2 Appeal2015-000539 Application 13/356,845 washable absorbent composite 80 attached to the crotch portion." Final Act. 3. Compare Brownlee, col. 3, 11. 13-16 with Appellant's Specification iT 27' 11. 3---6. Appellant takes issue with the analysis and conclusions presented in the Final Action, first contending that because claim 1 "recites that a washable absorbent composite is attached to a crotch portion[, that] the absorbent composite is physically part of the Appellant's washable garment by attachment thereto." Br. 4. Appellant also asserts that "Brownlee describes a removable absorbent insert [that] is intentionally not attached or secured to the garment so that it may be disposed of, or removed and washed." Id. We determine the scope of the claims in a patent application 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) (citations omitted). "It is the [Appellant's] burden to precisely define the invention, not the PTO's." In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (citation omitted). Appellant has not pointed to any lexicographic definition in the Specification of the term "attached" or identified any other disclosure therein that precludes the Examiner from construing "attached" to include "[t]he absorbent composite [of Brownlee being] attached to the crotch by way of the reusable waterproof channel [8]." Ans. 6 (citing Brownlee, col. 3, 11. 8-16). 3 Appeal2015-000539 Application 13/356,845 Appellant also contends that "attached to the crotch portion means an integral part of the crotch," while "the rejection ignores that the Brownlee insert is not a part of the Brownlee garment." Br. 5. However, the Examiner reasons that "attached is not synonymous with integral," further explaining that "[a]ttached is interpreted as connected or joined to something; while integral, means no separation, homogeneous." Ans. 6-7. The Examiner continues by finding that "the claim does not require [the composite] to be integral," and for that reason, "the arguments [are] not commensurate with the scope of the claims." Id. at 7. We agree, noting the admonition of our reviewing court that "limitations are not to be read into the claims from the [S]pecification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)). Appellant also argues of having "conceived of a claimed washable garment with a pocket in the crotch and a washable absorbent composite attached to the crotch portion as a part of the crotch portion." Br. 5. However, Appellant misstates the scope of claim 1, which is not limited to "a pocket in the crotch." Thus, Appellant's argument is also not commensurate with the scope of claim 1. See Br. 7, Claims App.; In re Van Geuns, 988 F.2d at 1184. For the foregoing reasons, we discern no error in the Examiner's findings and agree that Brownlee anticipates claims 1-20. Obviousness of Claims 1-20 over Brownlee; and of Claims 5, 6, and 18 over Brownlee and Foss We have affirmed the rejection of claims 1-20 under 35 U.S.C. § 102(b) as anticipated by Brownlee. This affirmance disposes of these 4 Appeal2015-000539 Application 13/356,845 claims before us on appeal. See 3 7 C.F .R. § 41. 50( a)( 1) ("The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed."). DECISION We AFFIRM 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)(l )(iv). AFFIRMED 5 Copy with citationCopy as parenthetical citation