Ex Parte Fong

Patent Trial and Appeal Board

Jun 19, 2018

14522438 (P.T.A.B. Jun. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/522,438 10/23/2014
27939 7590 06/20/2018
Philip H. Burrus, IV
Burrus Intellectual Property Law Group LLC
222 12th Street NE
Suite 1803
Atlanta, GA 30309
FIRST NAMED INVENTOR
Brendan Fong
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.
BPMDL0102BF (l l 158U) 4711
EXAMINER
0 BRIEN, JEFFREY D
ART UNIT PAPER NUMBER
3677
MAIL DATE DELIVERY MODE
06/20/2018 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 BRENDAN FONG
Appeal2017-008632
Application 14/522,438
Technology Center 3600
Before JENNIFER D. BAHR, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 Appellant is the Applicant, Medline Industries, Inc., which the Appeal
Brief identifies as the real party in interest. Br. 2.
Appeal2017-008632
Application 14/522,438
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A crutch grip, comprising:
a grip disposed between a first grip end and a second grip
end, each of the first grip end and the second grip end defining
a partially annular receiver for a crutch post; and
at least one retaining clip, the at least one retaining clip
compnsmg:
a base member;
a first, curved, cantilevered leg extending from a
first side of the base member; and
a second, curved, cantilevered leg extending from
a second side of the base member;
the at least one retaining clip to removably engage an
outer surface of at least one of the first grip end or the second
grip end such that an annular clasp is defined between the at
least one of the first grip end or the second grip end and the at
least one retaining clip.
REJECTIONS
I. Claims 1-20 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the enablement requirement.
II. Claims 1-5, 12, and 16 stand rejected under 35 U.S.C. § 102(a)(l)
as anticipated by Bui (US 5,291,910, iss. Mar. 8, 1994).
III. Claims 13-15 stand rejected under 35 U.S.C. § 103 as
unpatentable over Bui.
IV. Claims 6-11 and 17-20 stand rejected under 35 U.S.C. § 103 as
unpatentable over Bui and Hsiao (US 5,341,829, iss. Aug. 30,
1994).
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Application 14/522,438
DISCUSSION
Rejection I
The Examiner determines that Appellant's Specification does not
describe the claimed invention, particularly "the at least one retaining clip to
removably engage an outer surface of at least one of the first grip end or the
second grip end" limitation of claim 1, or the similar limitation in claim 16,
sufficiently to satisfy the enablement requirement of 35 U.S.C. § 112(a).
Final Act. 3. In particular, the Examiner determines that
"the at least one retaining clip" encompasses an embodiment
with only one retaining clip, and "at least one of the first grip
end or the second grip end" encompasses an embodiment
including both the first grip end and the second grip end, and
there is no disclosure as to how only one retaining clip engages
the outer surface of both the first grip end and the second grip
end.
Id. Accordingly, the Examiner concludes that "the entire scope of the claim
is broader than what [Appellant] has disclosed." Id. at 14; Ans. 2.
Appellant argues that "[ w ]hen looking at the plain language of
[claim 1], 'at least one retaining clip' is to engage 'at least one' of the first
grip end or the second grip end" and identifies four embodiments covered by
the claim language in question, each of which, according to Appellant, "is
fully enabled in Appellant's [S]pecification." Br. 13-14. Appellant asserts
that "[o]ne of ordinary skill in the art, when reading Appellant's
[S]pecification describing its retaining clips and its grip ends, would not
interpret the claim as does the Examiner"- namely, as encompassing an
embodiment in which only one retaining clip engages the outer surface of
both the first grip end and the second grip end. Id. at 15.
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Application 14/522,438
Insofar as the enablement requirement is concerned, the dispositive
issue is whether an applicant's disclosure, considering the level of ordinary
skill in the art as of the date of the applicant's application, would have
enabled a person of such skill to make and use the applicant's invention
without undue experimentation. In re Strahilevitz, 668 F.2d 1229, 1232
(CCPA 1982). In calling into question the enablement of an applicant's
disclosure, an examiner has the initial burden of advancing acceptable
reasoning inconsistent with enablement so as to shift the burden to the
appellant to show that one of ordinary skill in the art could have practiced
the claimed invention without undue experimentation. Id.
Factors to be considered in determining whether a disclosure would
require undue experimentation include ( 1) the quantity of experimentation
necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention, (5)
the state of the prior art, ( 6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the claims.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
There does not appear to be any dispute between the Examiner and
Appellant that Appellant's Specification and drawings do not describe an
embodiment of the crutch grip in which one retaining clip engages an outer
surface of both the first grip end and the second grip end of the grip.
Further, Appellant's identification of four embodiments covered by claims 1
and 16 (Br. 13-14) suggests that Appellant's intention was to claim at least
one retaining clip to removably engage an outer surface of a respective one
of the first grip end or the second grip end, commensurate with the
description in paragraph 3 5 of the Specification.
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Appeal2017-008632
Application 14/522,438
We appreciate the concern raised by the Examiner in this rejection. If
read in somewhat of a vacuum, without considering the specific
embodiments of Appellant's Specification, the recitation of at least one
retaining clip to removably engage, or removably engaging, "an outer
surface of at least one of' the first or second grip end in claims 1 and 16,
might appear to encompass a retaining clip to removably engage, or
removably engaging, both the first grip end and the second grip end.
However, we determine that a person having ordinary skill in the art, reading
the claims in light of Appellant's Specification and accompanying drawings,
would likely construe the claims as intended by Appellant, namely, as
including at least one retaining clip to removably engage an outer surface of
a respective one of the first grip end or the second grip end. In order to
avoid any possible ambiguity, however, Appellant and the Examiner might
wish to consider amending claims 1 and 16 in this manner to clarify that this
is how the claims are to be construed.
We also observe that, even if construed as requiring a retaining clip to
engage both the first grip end and the second grip end, claim 1 does not
require that the retaining clip engage both the first grip end and the second
grip end simultaneously. As Appellant's retaining clip 108 seems fully
capable of removably engaging outer surface 202 of first grip end 102, when
assembled in the position shown in Figures 1-6, and also fully capable, if
reversed with retaining clip 109, of removably engaging outer surface 203 of
second grip end 103, Appellant's Specification and drawings appear to
describe a retaining clip to removably engage an outer surface of the first
grip end and the second grip end, just not at the same time. Appellant's
retaining clip 109, likewise, appears fully capable of removably engaging
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Appeal2017-008632
Application 14/522,438
outer surface 203 of second grip end 103, when assembled in the position
shown in Figures 1---6, and also fully capable, if reversed with retaining clip
108, of removably engaging outer surface 202 of first grip end 102.
Even assuming, however, that claims 1 and 16 were construed as
encompassing an embodiment in which at least one retaining clip removably
engages an outer surface of both the first grip end and the second grip end
(simultaneously), the Examiner does not set forth any findings or technical
reasoning, such as by analyzing the Wands factors, to show that a person
having ordinary skill in the art would not have been able to make and/or use
the claimed invention without undue experimentation. Merely pointing out
that the scope of the claim is "broader" than what has been disclosed (Final
Act. 14; Ans. 2), is insufficient to discharge this initial burden.
For all of the above reasons, we do not sustain the enablement
rejection of claims 1-20 under 35 U.S.C. § 112(a). 2
Rejection II
Claims 1-5, 12, and 16
The Examiner finds that Bui discloses the crutch grip of claims 1 and
16. Final Act. 4---6. In particular, with respect to claim 1, the Examiner
finds that Bui discloses "each of the first grip end (64) and the second grip
end (64) defining a partially annular receiver capable of receiving a crutch
post (70)." Id. at 4 (citing Bui, Fig. 8A). With respect to claim 16, the
Examiner finds that Bui discloses "a first partially annular grip end (64) and
2 We emphasize that the rejection before us is based on lack of enablement
and not on failure to comply with the separate written description
requirement of 35 U.S.C. § 112(a).
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Appeal2017-008632
Application 14/522,438
a second partially annular grip end (64)." Id. at 5---6. Bui's Figure 8A is
reproduced below.
84
' FIG. BA
88
Bui' s Figure 8A "is a cross-sectional view of a portion of the
adjustable hand grip with an alternative embodiment of the locking member
shown in an engaged position." Bui 2:37-39.
The Examiner explains that the absence of shading proximate the
aperture of sleeve 64 for receiving pin 90 "is indicative of no material being
present below the gap shown." Final Act. 14--15; Ans. 4. The Examiner
contrasts the illustration in Figure 8A with Bui' s Figure 4, which includes
shading at the bottom of the aperture "to indicate the bottom of the hole."
Final Act. 14; Ans. 4.
Appellant argues that "Bui fails to teach a partially annular receiver"
but, instead, "merely teaches the same prior art circular rings ... disclosed in
Appellant's [S]pecification at paragraph [024]." Br. 18. Appellant points
out that "[a]s specifically stated by Bui at col. 2, lines 37-39, 'FIG. 8A is a
cross-sectional view of a portion of the adjustable hand grip with an
alternative embodiment of the locking member shown in an engaged
position."' Br. 19. Appellant emphasizes that Bui' s locking member is
element 80, while element 64 is a sleeve, which Bui defines "as 'tubular."'
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Application 14/522,438
Id. (citing Bui 3: 17); see Bui 1 :43--45 (stating, without regard to any
particular embodiment, that "[t]he hand grip comprises means, such as
tubular sleeves, surrounding each vertical support and slidable thereover");
id. 6: 1, 7: 13, 7:57-58, 9:7-8 (each of Bui's independent claims reciting
either a "sleeve" or a "tubular sleeve" "surrounding each vertical support").
Thus, Appellant contends that sleeve 64 in Figure 8A is the "same element"
as in Figure 5, in which it is "clearly shown" as being tubular (that is, fully
annular rather than only partially annular). Br. 20.
After consideration of all the evidence, and the points made by the
Examiner and Appellant in support of their respective positions, we
determine that the Examiner's finding that Bui' s sleeve 64 in Figure 8A is "a
partially annular receiver for a crutch post," as recited in claim 1, or a
"partially annular grip end," as recited in claim 16, is not supported by a
preponderance of the evidence. As emphasized by Appellant, Bui describes
Figure 8A as depicting "an alternative embodiment of the locking member"
rather than an alternative embodiment of the sleeve. Bui 2:37-39 (emphasis
added). This suggests that the sleeve of Figure 8A is the same as the sleeve
depicted in Figures 4 and 5, which is tubular. We appreciate the Examiner's
point that Figure 4 includes shading in the opening in sleeve 64 for receiving
pin 90, depicting a bottom of the opening, while no such shading is shown in
Figure 8A. However, unlike Figure 4, which depicts pin 90 only partially
inserted into the aperture, Figure 8A shows element 99 of locking member
80 fully inserted into the opening, leaving less room to add shading to
indicate the bottom of the opening. Likewise, the inclusion of dashed lines
through cross-hatched element 99 and pin 90 to show the continuation of the
inner and outer walls of sleeve 64, similar to the dotted lines shown in
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Appeal2017-008632
Application 14/522,438
Figure 4, would complicate the drawing, which might explain why such
lines were omitted. Further, as noted above, throughout the patent, Bui
describes and claims the sleeves as "tubular" and as "surrounding" the
vertical supports. Finally, the Examiner has not identified any recitation in
Bui supporting an interpretation of Figure 8A depicting a "partially annular"
sleeve.
Accordingly, we do not sustain the rejection of claims 1 and 16, or
claims 2-5 and 12, which depend from claim 1, under 35 U.S.C. § 102(a)(l)
as anticipated by Bui, because the rejection is predicated on a finding that is
not supported by a preponderance of the evidence.
Re} ections III and IV
The unsupported finding from Bui regarding the "partially annular"
grip ends also pervades the rejections of claims 6-11, 13-15, and 17-20
under 35 U.S.C. § 103. See Final Act. 7-10. Thus, for the reasons discussed
above, we also do not sustain the rejection of claims 13-15 under 35 U.S.C.
§ 103 as unpatentable over Bui, or the rejection of claims 6-11 and 17-20
under 35 U.S.C. § 103 as unpatentable over Bui and Hsiao.
DECISION
The Examiner's decision rejecting claims 1-20 under 35 U.S.C.
§ 112(a) is REVERSED.
The Examiner's decision rejecting claims 1-5, 12, and 16 under
35 U.S.C. § 102(a)(l) as anticipated by Bui is REVERSED.
The Examiner's decision rejecting claims 13-15 under 35 U.S.C.
§ 103 as unpatentable over Bui is REVERSED.
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Appeal2017-008632
Application 14/522,438
The Examiner's decision rejecting claims 6-11 and 17-20 under
35 U.S.C. § 103 as unpatentable over Bui and Hsiao is REVERSED.
REVERSED
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