12091192 (P.T.A.B. Jun. 23, 2016)

Ex Parte Fukuyo et al

Patent Trial and Appeal BoardJun 23, 2016

12091192 (P.T.A.B. Jun. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/091,192 04/23/2008 Chizuru Fukuyo 23548 7590 06/27/2016 LEYDIG VOIT & MA YER, LTD 700 THIRTEENTH ST. NW SUITE 300 WASHINGTON, DC 20005-3960 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. 706307 1514 EXAMINER HOEY, ALISSA L ART UNIT PAPER NUMBER 3765 NOTIFICATION DATE DELIVERY MODE 06/27/2016 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): DCpatent@leydig.com Chgpatent@leydig.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHIZURU FUKUYO, NOZOMU SEIKE, and HIROSHI KOUNO Appeal2014-006091 Application 12/091, 192 Technology Center 3700 Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and ARTHUR M. PESLAK, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Chizuru Fukuyo et al ("Appellants") appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Non-Final decision rejecting claims 1, 9, 10, and 12- 14.1 We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE and ENTER A NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. Â§ 41.50(b). 1 Appellants submit the real party in interest is Wacoal Corp. Appeal Br. 1. Appeal2014-006091 Application 12/091, 192 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is the only independent claim on appeal. 1. An exercise garment with crotch part that covers at least a part of a wearer's lower body, the exercise garment with crotch part comprising: a main body portion formed from a stretchable material, the main body portion having a front portion, a back portion, side parts, greater trochanter parts, wherein the greater trochanter parts support muscles around a wearer's greater trochanter; and a waist portion including an upper edge; and a tightening portion having a tightening force stronger than that of the main body portion, wherein the tightening portion has, in the side parts of the main body portion, a pair of right and left first tightening portions each of which extends downwardly from the waist portion toward a front portion of the crotch part, and wherein each of the pair of right and left first tightening portions includes a pair of curved lines forming a closed-loop shape forming a side hole having two pointed ends where the curved lines connect, the two ends being pointed in a longitudinal direction, the side hole being positioned diagonally to extend from an upper part of the back portion of the main body portion toward a lower part of the front portion of the main body portion, wherein one of the greater trochanter parts is positioned within the closed-loop shape. REJECTION Claims 1, 9, 10, and 12-14 are rejected under 35 U.S.C. Â§ 102(b) as anticipated by Caillibotte (US 2005/0193461 Al, pub. Sept. 8, 2005). DISCUSSION New Ground of Rejection -Indefiniteness Pursuant to our authority under 37 C.F.R. Â§ 41.50(b), we reject claim 1 and claims 9, 10, and 12-14 which are dependent on claim 1under35 2 Appeal2014-006091 Application 12/091, 192 U.S.C. Â§ 112, second paragraph, as indefinite for failure to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. "As the statutory language of 'particular[ity]' and 'distinct[ness]' indicates, claims are required to be cast in clear - as opposed to ambiguous, vague, indefinite-terms." In re Packard, 751F.3d1307, 1313 (Fed. Cir. 2014 ). "It is the applicants' burden to precisely define the invention, not the PTO's." In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Claim 1 recites that "greater trochanter parts" are part of the main body portion of the exercise garment that is "formed from a stretchable material." Claim 1 further recites that the "greater trochanter parts support muscles around a wearer's greater trochanter" and "one of the greater trochanter parts is positioned within the closed-loop shape."2 The "closed loop shape" is formed by the recited "pair of right and left first tightening portions" and forms "a side hole" in the garment. We first construe the claim term "greater trochanter parts." We give claim terms their broadest reasonable interpretation consistent with the Specification as it would be interpreted by one of ordinary skill in the art. See In re Suitco Surface, Inc., 603 F.3d 1255, 1259---60 (Fed. Cir. 2010); In re Morris, 127 F.3d 1048, 1054--55 (Fed. Cir. 1997). Although the claims are interpreted in light of the Specification, limitations from the 2 The Specification discloses that the greater trochanter is a bone part that is "located above the femur and protrudes approximately outward from the hip joint." Spec. i-f 25, Figs. 6, 7. Several muscles surround the greater trochanter and facilitate the movement of the greater trochanter. Id. 3 Appeal2014-006091 Application 12/091, 192 Specification are not read into the claims. Jn re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). The Specification does not use the term "greater trochanter parts" at all, let alone provide a special definition thereof. The Specification, however, describes "the muscle groups surrounding the greater trochanter of the wearer" as supported by the right and left side tightening portions 21 that form side holes 24. Id. i-fi-126, 28; see also Figs. 1, 4. The Specification further discloses that "[ d]ue to such formation of the side hole 24, the greater trochanter of the wearer is not directly pressed by the first tightening portions 21 so that the greater trochanter itself can move freely." Id. i133. Stated differently, the Specification discloses that free movement of the user's greater trochanter would be impeded if the material forming the tightening portions were present in the side holes 24. Based on the foregoing, we conclude that one of ordinary skill in the art would reasonably understand the term "greater trochanter parts" to refer to the material of the garment that provides support to the muscles in the area of the user's greater trochanter and excludes the side holes. We, thus, conclude that claim 1 is indefinite because the greater trochanter parts are formed from the stretchable material of the main body portion and support the muscles in the area surrounding the user's greater trochanter. Thus, the greater trochanter parts cannot also be positioned within the closed loop shape (side hole 24) as recited in claim 1 where it would directly press on the user's greater trochanter. Therefore, we enter a new ground of rejection against claims 1, 9, 10, and 12-14 under 35 U.S.C. Â§ 112, second paragraph, as indefinite for failure to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. 4 Appeal2014-006091 Application 12/091, 192 Rejection of claims 1, 9, 10, and 12-14 under 35 U.S.C. Â§ 102(b) We do not sustain the rejection of claims 1, 9, 10 and 12-14 under 35 U.S.C. Â§ 102(b) as anticipated by Caillibotte. This rejection is necessarily based on speculative assumptions as to the meaning of the claims. See In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred in affirming an anticipation rejection of indefinite claims); cf In re Steele, 305 F.2d 859, 862-63 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite claims under 35 U.S.C. Â§ 103(a), because the rejection was based on speculative assumptions as to the meaning of the claims). It must be understood, however, that our decision regarding this rejection is based solely on the indefiniteness of the claims and we do not reach the question of the adequacy of the prior art evidence relied on in the Examiner's rejection. DECISION The Examiner's decision rejecting claims 1, 9, 10, and 12-14 is REVERSED. We enter a NEW GROUND OF REJECTION of claims 1, 9, 10, and 12-14 under 35 U.S.C. Â§ 112, second paragraph, pursuant to our authority under 37 C.F.R Â§ 41.50(b). FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. Â§ 41.50(b). 37 C.F.R. Â§ 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. Â§ 41.50(b) also provides: 5 Appeal2014-006091 Application 12/091, 192 When the Board enters such a non-final decision, Appellants, 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 Examiner, in which event the prosecution will be remanded to the Examiner. 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 Examiner, overcomes the new ground of rejection designated in this decision. Should the Examiner reject the claims, Appellants may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under Â§ 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 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 ProcedureÂ§ 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). REVERSED; 37 C.F.R. Â§ 41.50(b) 6