Ex Parte Ingram et al

Patent Trial and Appeal Board

Feb 12, 2014

11860994 (P.T.A.B. Feb. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KENNETH ROBERT INGRAM and
MICHELE MARIE GAEDKE
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Appeal 2012-000017
Application 11/860,994
Technology Center 3700
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Before NEAL E. ABRAMS, STEFAN STAICOVICI, and
MICHAEL L. HOELTER, Administrative Patent Judges.

ABRAMS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Kenneth Robert Ingram and Michele Marie Gaedke (Appellants) seek
our review under 35 U.S.C. § 134 from the Examiner’s decision rejecting
claims 1, 4, 9, 10 and 14-22. We have jurisdiction over the appeal under 35
U.S.C. § 6(b).
We REVERSE and ENTER NEW GROUND OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b).
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THE INVENTION
The claimed invention is directed to a lifting strap with
enhanced gripping properties for improving the user’s grip on weight
lifting and fitness equipment.
Claims 1, 4, 9 and 14, reproduced below, are illustrative of the
subject matter on appeal.
1. A lifting strap comprising an elongated, flexible
wrist band, a cushion on one side of the wrist band, a
gripping strap comprising an elongated length of flexible
fabric with strands having enhanced gripping properties
woven into the fabric on only one side the gripping strap,
one end portion of the gripping strap being disposed
between and affixed to the wrist band and the cushion
with the strands having enhanced gripping properties on
the side of the gripping strap facing the wrist band and
not on the side facing the cushion, and means for
securing the wrist band about the wrist of a person with
the cushion on the palm side of the wrist and the gripping
strap extending across the palm and fingers in position to
be wrapped about an object gripped by the hand with the
strands having enhanced gripping properties facing the
object.
4. The lifting strap of Claim 1 wherein the fabric is
nylon and the strands having enhanced gripping
properties are rubber.
9. A lifting strap comprising a padded wrist band
encircling the wrist of a person, and a gripping strap
comprising an elongated length of flexible fabric with
strands having enhanced gripping properties woven into
the fabric on only one side of the gripping strap
extending from the wrist band and being wrapped in
helical fashion about an object gripped by the person
with the strands having enhanced gripping properties
engaging the object and the side without the enhanced
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gripping properties being gripped by the hand of the
person.

14. The lifting strap of Claim 9 wherein the
flexible fabric is woven of nylon, and the strands having
enhanced gripping properties are fabricated of rubber.

THE PRIOR ART
The Examiner relied upon the following as evidence of
unpatentability:
McBride US 7,004,889 B2 Feb. 28, 2006
Wang
Resendez

US 2008/0090705 A1
US 7,490,634 B2
Apr. 17, 2008
Feb. 17, 2009

THE REJECTIONS
Claims 1 and 9 stand rejected under 35 U.S.C. § 102 (b) as
being anticipated by Wang.
Claims 4, 10, 14 and 17-22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wang and Resendez.
Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wang, Resendez and McBride.
OPINION
New Ground of Rejection – Indefiniteness
Claims 1, 9, 10 and 15-22
The essence of the requirement under 35 U.S.C. § 112, second
paragraph, that the claims must be definite, is that the language of the claims
must make it clear what subject matter the claims encompass. In re
Hammack, 427 F.2d 1378 (CCPA 1970). The test for definiteness under 35
U.S.C. § 112, second paragraph, is whether “those skilled in the art would
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understand what is claimed when the claim is read in light of the
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (citations omitted). In the present case,
independent claims 1 and 9 recite “a gripping strap comprising an elongated
length of flexible fabric with strands having enhanced gripping properties
woven into the fabric” (emphasis added). The term “enhanced” is a word of
degree, and “when a word of degree is used [a court] must determine
whether the patent’s specification provides some standard for measuring that
degree.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1351
(Fed. Cir. 2005) (quoting Seattle Box Co., Inc. v. Indus. Crating & Packing,
Inc., 731 F.2d 818, 826 (Fed. Cir. 1984)). Here, Appellants’ Specification
does not provide clear guidance or a standard from which a person ordinarily
skilled in the art would be able to determine what reasonably constitutes
“enhanced” gripping properties. In this regard, we find that an ordinary and
customary meaning of the term “enhanced” is “increased or improved in
value, quality, desirability, or attractiveness”1and, as such, an ordinary and
common meaning of the phrase “strands having enhanced gripping
properties” is strands having increased or improved gripping properties.
Appellants’ Specification fails to provide any clear guidance or
standard from which one of ordinary skill in the art would be able to
determine what degree of increase or improvement in the gripping
properties of the strands is required for them to be “enhanced.”

1 See, for example, www.merriam-webster.com/dictionary/enhance.
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Throughout the Specification the strands are described as being
“rubberized,”2 and it is stated that “[t]he rubberized strands
. . . provide enhanced gripping properties” (page 3, lines 9-10; page 5,
line 28). Also, original claims 4 and 14 recite that the strands are
“rubber.” However, the mention of a single material that provides
“enhanced” gripping properties does not help us ascertain what is
required for a material other than one that is “rubber” or “rubberized”
to meet the terms of claim 1 and 9, which are not so limited. In other
words, it is not clear what constitutes a strand having “enhanced”
gripping properties within the context of Appellants’ invention.
Rather, this determination is subjective and the “conditions or factors”
that may indicate that a material has “enhanced” gripping properties to
some skilled in the art may not indicate the same to others. See id.
Thus, an unrestrained, subjective construction of “strands having
enhanced gripping properties” “would not notify the public of the
patentee’s right to exclude since the meaning of the claim language
would depend on the unpredictable vagaries of any one person’s
opinion . . . . While beauty is in the eye of the beholder, a claim term,
to be definite, requires an objective anchor.” Datamize, 417 F.3d at
1350. As such, we conclude that the terminology “strands having
enhanced gripping properties” as used in the claims, when construed
in view of Appellants’ disclosure, lacks sufficient precision to permit
one endeavoring to practice the invention to determine the metes and
bounds thereof.

2Specification, page 2, line 24; page 3, lines 9, 11, 16, 24 and 30; page
4, lines 3, 7, 10, 17 and 21; page 5, lines 6, 23 and 28.
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We further note that claims 10 and 15-22, which depend from
claims 1 and 9, also do not clarify this claim terminology and are
indefinite under 35 U.S.C. § 112, second paragraph, for the reasons
discussed above.
Accordingly, we enter a NEW GROUND OF REJECTION
against claims 1, 9, 10 and 15-22 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the
invention.
Anticipation Rejection of Claims 1 and 9 and
Obviousness Rejections of Claims 10 and 15-22
Because we found that claims 1, 9, 10 and 15-22 are indefinite, a
determination of the scope of these claims would require us to resort to
considerable speculation as to the meaning of the terms employed and
assumptions as to the scope of the claims. Therefore, any determination on
the merits of the Examiner’s rejections of claims 1, 9, 10 and 15-22 is
imprudent. See In re Steele, 305 F.2d 859, 862 (CCPA 1962). As such, we
are constrained to reverse, pro forma, the Examiner’s decision rejecting
claims 1 and 9 under 35 U.S.C. § 102 (b) as being anticipated by Wang and
the rejections of claims 10 and 15-22 under 35 U.S.C. § 103(a) as being
unpatentable over combinations of the cited references (i.e. Wang, Resendez
and McBride). We hasten to add that this is a procedural reversal rather than
one based upon the merits of the rejections.
Obviousness Rejection of Claims 4 and 14
Independent claims 1 and 9, from which claims 4 and 14
depend, respectively, each recite “a gripping strap comprising an
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elongated length of flexible fabric with strands having enhanced
gripping properties woven into the fabric on only one side of the
gripping strap.” Dependent claims 4 and 14 which, of course,
incorporate the language of claims 1 and 9, further recite that the
strands having enhanced gripping properties are “rubber.” This being
the case, since rubber is disclosed in the Specification in the context
of having “enhanced gripping properties” (supra at 5), claims 4 and
14 are not subject to the indefiniteness in claims 1 and 9 that resulted
in the entry of the new rejection under 35 U.S.C. § 112, second
paragraph.
The Examiner rejected claims 1 and 9 as being anticipated by
Wang, which discloses a “guiding band” for assisting a user in
gripping the bar of a piece of exercise equipment. The Wang device
comprises a wrist cushion pad 11 to which are attached a first band 12
for encircling the wrist of the user and a second band 13 for engaging
the bar of the exercise equipment to assist the user in gripping it.
Paras. [0014] and [0015]; Figs. 2 and 4. With regard to the limitation
in claims 1 and 9 that the enhanced strands are on only one side of the
fabric, the Examiner found that Wang has “a gripping strap (13)
comprising an elongated length of flexible fabric with strands (14)
having enhanced gripping properties woven into the fabric on only
one side of the gripping strap.” Ans. 5. Among the arguments
advanced by Appellants is that Wang’s elements 14 “appear to be in
the nature of Velcro® fasteners which are commonly used in securing
the free ends of straps,” are not “strands having enhanced gripping
properties,” and “are not woven into any strap.” App. Br. 4.
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Claims 4 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wang and Resendez, the latter being cited by the
Examiner for disclosing a weight lifting strap “with rubberized strands
woven into the material on one side.” Ans. 8. The Examiner has concluded
that it would have been obvious to one of ordinary skill in the art to modify
Wang’s strap 13 “with strands having enhanced gripping properties woven
into the fabric of the grip strap as taught by Resendez for improved gripping
purposes.” Ans. 10. Appellants argue that “[a]s clearly seen in Figures 3
and 4 [of Resendez], rubberized strands 22 pass over the weft strands 26 in
the upper layer of the material and beneath the weft strands 26 in the lower
layer [of material]. Hence, they are exposed on both sides of the material,
not just one side as contended by the Examiner.” Reply Br. 3-4. Appellants
also assert that:
there is no suggestion in the references or elsewhere of a need
for improved gripping properties in the strap of Wang where
[the exercise] bar is retained by a loop of fixed length. Hence,
there is no motivation for using rubberized strands . . . and
doing so could render the Wang strap unfit for its intended
purpose.
Reply Br. 6.
There is an inconsistency in the Answer between the Examiner’s
statement of the rejection of claims 1 and 9 and that of claims 4 and 14,
which significantly alters the substance of the rejection of the latter claims.
In the rejection of independent claims 1 and 9, the Examiner found that the
strands having enhanced gripping properties woven into the fabric on only
one side of the gripping strap to be present in Wang’s “adhesive pads 14,”
whereas in the rejection of dependent claims 4 and 14 the Examiner ignored
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this finding and instead proposed modifying Wang’s “band 13” by weaving
rubber strands into one side of the band, in view of the teachings of
Resendez. However, be that as it may, we agree with Appellants that
Renendez’ Figures 3 and 4 clearly show that rubber strands 22a are exposed
on both sides of the fabric, albeit to a lesser extent on the lower side (as
shown), in contradistinction to the position set forth by the Examiner. Thus,
Resendez does not provide support for the Examiner’s conclusion that it
would have been obvious to modify the Wang strap 13 by weaving rubber
strands into the fabric only on one side thereof, as required by the claims.
Moreover, we also agree with Appellants that the Examiner has not provided
support for the conclusion that there was a need to improve the gripping
properties of pad 14 or of band 13, and therefore one of ordinary skill in the
art would not have been motivated to modify the Wang device in the manner
proposed by the Examiner.
For the reasons expressed above, the rejection of claims 4 and 14 is
not sustained.
DECISION
The Examiner’s rejections of claims 1, 4, 9, 10 and 14-22 are
reversed.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a
NEW GROUND OF REJECTION of claims 1, 9, 10 and 15-22 under
35 U.S.C. § 112, second paragraph.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 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. § 41.50(b) also provides that the
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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 proceeding 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. . . .
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)

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