Ex Parte Friedberg

Patent Trial and Appeal Board

Oct 18, 2018

14072285 (P.T.A.B. Oct. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/072,285 11/05/2013
83622 7590 10/22/2018
SNYDER, CLARK, LESCH & CHUNG, LLP
205 Van Buren Street
Suite 110
HERNDON, VA 20170
FIRST NAMED INVENTOR
Joseph Friedberg
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.
0300-0001 9138
EXAMINER
PUIG, GABRIELA M
ART UNIT PAPER NUMBER
3652
NOTIFICATION DATE DELIVERY MODE
10/22/2018 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):
pto@snyderLLP.com
docket@snyderllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH FRIEDBERG
Appeal 2018-001182
Application 14/072,285
Technology Center 3600
Before: STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Joseph Friedberg ("Appellant") 1 appeals under 35 U.S.C. § 134(a)
from the Examiner's decision in the Final Office Action (dated Feb. 16,
2017, hereinafter "Final Act.") rejecting claims 1, 3, and 10. 2 We have
jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND of REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b).
1 According to Appellant's Appeal Brief (filed July 7, 2017, hereinafter
"Appeal Br."), the real party in interest is Joseph Friedberg. Appeal Br. 3.
2 Claims 2, 4--9, and 11-15 are cancelled. Final Act. 2.
Appeal 2018-001182
Application 14/072,285
INVENTION
Appellant's invention relates to "handles and straps used in carrying
of objects by hand." Spec. 2, 11. 5---6.
Sole independent claim 1, reproduced below, is representative of the
claimed subject matter:
1. An apparatus for assisting a person in hand carrying
objects having handles, by distributing most of the weight of the
object to the person's wrist comprising:
a loop of flexible material having a loop perimeter length,
proximal and distal ends and
a loop stiffener located at the distal end of said loop, said
loop stiffener spanning less than one third of said loop perimeter
length and configured for control of the object by the person's
fingers
said loop of flexible material comprising padding only at
a mid-portion of said proximal end, said padding being adapted
for padding the wrist and wherein portions of said proximal end
of said loop of flexible material not covered by said padding are
adapted for supporting the object at two contact points and
wherein said mid-portion is wider than the remainder of the loop
of flexible material and is contoured to fit the wrist.
REJECTIONS
I. The Examiner rejects claims 1, 3, and 10 under 35 U.S.C. § 112(a), as
failing to comply with the written description requirement.
II. The Examiner rejects claims 1, 3, and 10 under 35 U.S.C. § 103 as
being unpatentable over Zazzara et al. (US 5,131,707, iss. July 21,
1992, hereinafter "Zazzara") and Gans (US 5,150,938, iss. Sept. 29,
1992).
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Appeal 2018-001182
Application 14/072,285
NEW GROUND OF REJECTION
Claims 1, 3, and 10 are rejected under 35 U.S.C. § 112(b), as being
indefinite for failing to particularly point out and distinctly claim the
invention which applicant regards as the invention.
Independent claim 1 recites, inter alia, "a loop of flexible material
having a loop perimeter length, proximal and distal ends . . . said loop of
flexible material comprising padding only at a mid-portion of said proximal
end." Appeal Br. 14 (Claims App.). Thus, claim 1 requires the "loop" to
have proximal and distal ends, and a mid-portion of the proximal end.
It is well settled that "[ e ]ven if a claim term's definition can be
reduced to words, the claim is still indefinite if a person of ordinary skill in
the art cannot translate the definition into meaningfully precise claim scope."
Haliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1251 (Fed. Cir.
2008). While patentees are allowed to claim their inventions broadly, they
must do so in a way that distinctly identifies the boundaries of their claims.
Id. at 1253.
In this case, an ordinary and customary meaning of the term "loop" is
"a structure, series, or process the end of which is connected to the
beginning."3 Such an interpretation is consistent with Appellant's Figure 2,
reproduced below:
3 See https://en.oxforddictionaries.com/definition/loop, last accessed October
3,2018.
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Appeal 2018-001182
Application 14/072,285
Appellant's Figure 2 depicts "strap 20 formed into a loop" and "stiffening
member 21, which ... is a tube 21, through which the strap is passed."
Spec. 3, 1. 29-4, 1. 2.
Appellant has not identified, nor could we find an adequate
description in the Specification that clearly sets forth the metes and bounds
of the claimed "proximal end" and "distal end." As strap 20 forms a loop
where its "end ... is connected to the beginning," it is not clear where the
"proximal end" terminates and where the "distal end" commences.
Although Appellant's Specification describes an end, namely, "end 22 of ...
strap 20 that is opposite ... tube 21" (see Spec. 4, 11. 25-26), because strap
20 passes through tube 21, tube 21 (stiffener) can slide along the length of
strap 20 so that there is no defined location of end 22. Accordingly, there is
no defined location of the claimed proximal and distal ends, and, thus, an
infinite number of proximal and distal ends can be envisioned, such that the
metes and bounds of the claimed "proximal end" and "distal end," as called
for by claim 1, cannot be determined. Furthermore, as the location of the
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Application 14/072,285
"proximal end" cannot be determined, the location of the claimed "mid-
portion of the proximal end," as further recited in claim 1, also cannot be
determined.
In light of the above, we conclude that claim 1, and dependent claims
3 and 10, are indefinite under 35 U.S.C. § 112(b ), for failing to particularly
point and distinctly claim the subject matter which Appellant regards as the
invention.
ANALYSIS
In view of our determination that claims 1, 3, and 10 are indefinite, it
follows that the prior art rejection of claims 1, 3, and 10 must fall because it
is necessarily based on speculative assumptions as to the meaning of the
claims. See In re Steele, 305 F.2d 859, 862---63 (CCPA 1962). It should be
understood, however, that our decision in this regard is proforma and based
solely on the indefiniteness of the claimed subject matter, and does not
reflect on the adequacy of the prior art evidence applied in support of the
rejection.
The Examiner also determines that Appellant's disclosure does not
describe the limitation in claim 1 of "said mid-portion is wider than the
remainder of the loop of flexible material" sufficient to satisfy the written
description requirement of 35 U.S.C. § 112(a). See Final Act. 2. Because
we determine that the claims are indefinite and their scope is unclear, we do
not reach this issue. See In re Walter, 698 F. App'x. 1022, 1027 (Fed. Cir.
2017) (non-precedential).
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Appeal 2018-001182
Application 14/072,285
SUMMARY
We reverse the Examiner's decision to reject claims 1, 3, and 10 under
35 U.S.C. § 103.
We do not reach the Examiner's decision to reject claims 1, 3, and 10
under 35 U.S.C. § 112(a).
We enter a new ground of rejection of claims 1, 3, and 10 under 35
U.S.C. § 112(b ), as being indefinite.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the [E]xaminer, in which event the prosecution will be
remanded to the [E]xaminer. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the [E]xaminer, overcomes the new ground of rejection
designated in the decision. Should the [E]xaminer reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
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Application 14/072,285
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
REVERSED; 37 C.F.R. § 4I.50(b)
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