Ex Parte Hazani

Patent Trial and Appeal Board

Nov 14, 2018

14726619 (P.T.A.B. Nov. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/726,619 06/01/2015
44696 7590
Dr. Mark M. Friedman
Moshe Aviv Tower, 54th floor
7 Jabotinsky St.
Ramat Gan, 5252007
ISRAEL
11/16/2018
FIRST NAMED INVENTOR
Idan Hazani
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.
6251/1 1034
EXAMINER
CARTER, CAMERON A
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
11/16/2018 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):
patents@friedpat.com
friedpat.uspto@gmail.com
rivka_f@friedpat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IDAN HAZAN!
Appeal2018-004542
Application 14/726,619
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Idan Hazani (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner's decision rejecting claims 1--4, 12, 14--18, 20, and 22-31. We
have jurisdiction under 35 U.S.C. § 6(b ).
\Ve REVERSE and enter a NE\V GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
Appeal2018-004542
Application 14/726,619
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A method for wrist support comprising:
providing a strip comprising:
a sheet with oppositely disposed ends; and,
a plurality of elastic protrusions extending from
the sheet in a longitudinal dimension, each of the
protrusions of a lateral dimension of of [sic] a diameter
of approximately 2 mm to 10 mm, the lateral dimension
at least substantially perpendicular to the longitudinal
dimension, and in an arrangement with the other
protrusions to cooperatively support a wrist by providing
a resistive force proximate to the corresponding location
of the strip where pressure is applied by the wrist, the
protrusions of an elasticity greater than the elasticity of
the sheet; and,
placing the strip in communication with a surface, such
that when pressure is applied to the strip from the wrist, the
protrusions, proximate to the location of the pressure on the
strip, cooperate to provide a resistive force for supporting the
wrist.
REJECTIONS
I. Claims 1--4, 12, 14--18, 20, and 22-29 stand rejected under
35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement. 1
1 The Examiner's inclusion of claims 5, 13, and 21 in the statement of this
rejection on page 5 of the Final Action is presumed to be inadvertent error,
as these claims were canceled in the Amendment filed December 29, 2016,
and, thus, are not involved in this appeal. We note that the Examiner did not
include pending claims 30 and 31, which depend from claim 1, in the
statement of this rejection.
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Application 14/726,619
II. Claims 1--4, 20, 22-25, 30, and 31 stand rejected under
35 U.S.C. § I03(a) as unpatentable over Chen
(US 2002/0157163 Al, pub. Oct. 31, 2002) and Prokop
(US 5,566,913, iss. Oct. 22, 1996).
III. Claims 12, 16-18, and 26-29 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Hsueh (US 5,857,217, iss. Jan.
12, 1999) and Prokop.
IV. Claim 14 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Hsueh, Prokop, and Kelly (US 5,418,980, iss.
May 30, 1995).
V. Claim 15 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Hsueh, Prokop, and Chen.
DISCUSSION
Rejection I
For the reasons discussed below in the new ground of rejection, we
determine that claims 1--4, 12, 14--18, 20, and 22-31 are indefinite because
the meaning of "protrusions of an elasticity greater than the elasticity of the
sheet" is unclear. Given that the meaning of this claim limitation is required
to assess whether it is adequately supported by the original disclosure of the
Specification, we cannot reach a determination as to the correctness of the
Examiner's finding that the limitation lacks adequate written description
support sufficient to comply with 35 U.S.C. § 112, first paragraph. Cf In re
Moore, 439 F.2d 1232, 1235 (CCPA 1971) (One is not in a position to
determine whether a claim is enabled under the first paragraph of 35 U.S.C.
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§ 112 until the metes and bounds of that claim are determined under the
second paragraph of this section of the statute.).
Accordingly, we do not sustain the rejection of claims 1--4, 12, 14--18,
20, and 22-29 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement.
Rejections 11-V
Having determined that claims 1--4, 12, 14--18, 20, and 22-31 are
indefinite, for the reasons discussed below in the new ground of rejection,
we do not sustain the Examiner's rejections of claims 1--4, 12, 14--18, 20,
and 22-31 under 35 U.S.C. § 103(a) because to do so would require
speculation as to the scope of the claims. See 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. § 103(a), because the rejection was
based on speculative assumptions as to the meaning of the claims). It should
be understood, however, that our decision in this regard is 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 rejections.
New Ground of Rejection
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection of claims 1--4, 12, 14--18, 20, and 22-31 under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
In determining whether a claim is definite under 35 U.S.C. § 112,
second paragraph, "[t]he USPTO, in examining an application, is obliged to
test the claims for reasonable precision." In re Packard, 751 F.3d 1307,
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Application 14/726,619
1313 (Fed. Cir. 2014). "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." Id.
Independent claims 1 and 26 recite, in relevant part, "protrusions of an
elasticity greater than the elasticity of the sheet." Appeal Br. 28, 30 (Claims
App.) (emphasis added). This language renders the claims indefinite
because the meaning of the term "elasticity" is unclear. Namely, it is
unclear to what property "elasticity" refers. It is also unclear whether the
term refers to a property of the components (i.e., sheet and protrusions) or
the materials used to make the components.
Appellant's Specification describes that "the sheet ... and the
protrusions may be of different materials typically with the sheet a stiffer
material than that of the protrusions." Spec. 3, 11. 4--5 (emphasis added). In
addressing the Examiner's written description rejection based on the above-
identified limitation, Appellant takes the position that, because the
Specification describes the sheet material being "stiffer" than the protrusion
material, "it follows that the protrusions are less stiff, and therefore, more
flexible and more elastic than the flexibility and elasticity of the sheet."
Appeal Br. 16; see also Reply Br. 3 (stating that "[s]tiffness is related to
elasticity, as a synonym for 'stiff' is 'inelastic' and 'inflexible[,'] as seen at
the underlined portion of Appendix A, a page from www.Dictionary.com for
the word ' [ s ]tiff'"). Appellant appears to suggest that there is an inverse
relationship between stiffness, as used in the Specification, and elasticity, as
recited in the claims. However, this interpretation creates confusion
regarding the meaning of "elasticity," as used in the claims, because stiffness
and elasticity are different properties.
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Application 14/726,619
"[S]tiffness is proportional to the modulus of elasticity." Eugene A.
Avallone & Theodore Baumeister III, Marks' Standard Handbook for
Mechanical Engineers 8-47 (10th ed. 1996). "The modulus of elasticity,
lb/in2 (kgf/cm2), is the ratio of the increment of unit stress to increment of
unit deformation within the elastic limit." Id. at 5-17 (boldface omitted). In
other words, stiffness relates to the ability of a material to resist elastic
deformation, and a given material with a higher modulus of elasticity is
stiffer than a material with a lower modulus of elasticity. However, the
"modulus of elasticity" of a material is not the same as "elasticity" in
accordance with its conventional meaning. Elasticity is "the ability of a
material to return to its original dimensions after the removal of stresses."
Id.
Consistent with this meaning of the term "elasticity," Appellant's
Specification describes rubber elasticity as providing "a restoring force,
which causes the polymer chain to return to its equilibrium or unstretched
state, such as a high entropy random coil configuration, once the external
force is removed." Spec. 2, 11. 1-7. On the other hand, however,
Appellant's Specification also describes the sheet and backing of Figure 7 as
being "typically more elastic (less rigid) than that of Figure 6." Id. at 7, 11.
25-27. This statement suggests that Appellant's Specification may be using
"more elastic" as a synonym of "less rigid," or, similarly, "elasticity greater"
( as used in claims 1 and 26) to mean lower rigidity or lower stiffness. Given
that stiffness and elasticity are two different properties, it is unclear whether
Appellant's use of the term "elasticity" in the claims is intended to mean the
ability to resist elastic deformation (i.e., stiffness) or the ability to return to
an original state after removing an external force.
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Application 14/726,619
It is also unclear whether "elasticity," as recited in the claims, is a
characteristic of the components (i.e., the sheet and protrusions) or the
materials used to make the component. Although the Specification describes
that the sheet material may be stiffer than that of the protrusions (see Spec.
3, 11. 4--5), the claims do not recite the term "material." Rather, "protrusions
of an elasticity greater than the elasticity of the sheet," as recited in claims 1
and 26, appears to use the term "elasticity" to describe characteristics of the
individual components (i.e., the protrusions and sheet).
In light of the above, independent claims 1 and 26 are "ambiguous,
vague, incoherent, opaque, or otherwise unclear in describing and defining
the claimed invention." Packard, 751 F.3dat 1311. Dependentclaims2--4,
12, 14--18, 20, 22-25, and 27-31 inherit this problematic ambiguity.
Accordingly, we conclude that claims 1--4, 12, 14--18, 20, and 22-31 are
indefinite under 35 U.S.C. § 112, second paragraph, for failing to
particularly point out and distinctly claim the subject matter which Appellant
regards as the invention.
DECISION
The Examiner's decision rejecting claims 1--4, 12, 14--18, 20, and 22-
31 is reversed due to the indefiniteness of the claims.
\Ve enter a new ground of rejection of claims 1--4, 12, 14--18, 20, and
22-31 under 35 U.S.C. § 112, second paragraph, as being indefinite.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of
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Application 14/726,619
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 4I.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 examiner, in which event the prosecution will be
remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record ....
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
REVERSED; 37 C.F.R. § 4I.50(b)
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