12011644 (P.T.A.B. Jul. 10, 2014)

Ex Parte Johnson

Patent Trial and Appeal BoardJul 10, 2014

12011644 (P.T.A.B. Jul. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/011,644 01/29/2008 Gregory Walker Johnson 6803 7590 07/10/2014 GREGORY WALKER JOHNSON 516 DAKOTA ST DAYTON, OH 45402 EXAMINER HOEY, ALISSA L ART UNIT PAPER NUMBER 3765 MAIL DATE DELIVERY MODE 07/10/2014 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 GREGORY WALKER JOHNSON ________________ Appeal 2012-005677 Application 12/011,644 Technology Center 3700 ________________ Before: JENNIFER D. BAHR, EDWARD A. BROWN, and MICHAEL L. HOELTER, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 35–37, 40, 42, 44, and 48. Br. § 3.1 Claims 1–34 have been canceled while claims 38, 39, 41, 43, 45–47, and 49–51 have been withdrawn. Br. §§ 3 and 8. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant does not number the pages of the Appeal Brief but does provide section numbers. We will employ section numbers to identify specific portions of Appellant’s Appeal Brief. Appeal 2012-005677 Application 12/011,644 2 THE CLAIMED SUBJECT MATTER The disclosed subject matter is entitled “Dual Hip Cell Phone and CD Player Pocket.” Spec. Title. Sole independent claim 35 is illustrative of the claims on appeal and is reproduced below: 35. A pocket for a cell phone and CD player comprising: A closure of hook and loop fastener for Quick access; the bottom will have a rectangular Pocket for cell phones and CD players; sewn on to garments located on the area like the Hip, middle thigh, top thigh, top chest, area for shirts, skirts, shorts, jackets, pants, slacks, coats, and a inner pocket for battery storage and two pockets on the same side of the pants, and one pocket on the hip and one pocket on the knee area for pants, the fabric on the pockets will be the same on the garments the pockets accommodate standard size cell phones and CD players. REFERENCES RELIED ON BY THE EXAMINER Rosen US 2,521,410 Sept. 5, 1950 Zevchak US 5,054,127 Oct. 8, 1991 Widmer US 2003/0172442 A1 Sept. 18, 2003 Young US 2003/0205595 A1 Nov. 6, 2003 THE REJECTIONS ON APPEAL Claims 35, 36, 37, 40, 42, 44, and 48 are rejected as failing to define the invention in the manner required by 35 U.S.C. § 112, second paragraph. Ans. 5. Claims 35, 36, 40, 42, and 44 are rejected under 35 U.S.C. § 102(b) as being anticipated by Young. Ans. 6. Claims 35–37, 40, 42, 44, and 48 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Young and Rosen. Ans. 7. Appeal 2012-005677 Application 12/011,644 3 Claims 35–37, 40, 42, 44, and 48 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Widmer and Zevchak. Ans. 8. ANALYSIS There appears to be some misunderstanding as to the claims on appeal in that Appellant acknowledges that “[c]laims 38, 39, 41, 43, 45–47, [and] 49-51[are] withdrawn from consideration” but still alleges that “[c]laims 35- 51 [are] Appealed.” Br. § 3. However, such confusion may stem from the fact that certain “amendments after final have not been entered.” Ans. 3. Accordingly, we only address claims 35–37, 40, 42, 44, and 48 as these are all of the claims that were finally rejected in the Final Action mailed May 16, 2011 from which appeal was taken on June 7, 2011. See Notice of Appeal. The rejection of claims 35, 36, 37, 40, 42, 44, and 48 under Section 112, second paragraph Each of claims 36, 37, 40, 42, 44, and 48 depends from claim independent claim 35. The Examiner finds all the claims on appeal to be “unclear [in] what is being claimed, since claim 35 details a single pocket in the preamble and then details multiple pockets.” Ans. 6. We agree that claim 35 as presented (see supra) is “unclear” for multiple reasons. For example, the preamble of claim 35 recites “[a] pocket” while the body of claim 35 recites “a rectangular Pocket” and “a[n] inner pocket.” Further, claim 35 thereafter recites “and two pockets on the same side of the pants.” Besides the singular/plural confusion addressed by the Examiner (Ans. 6), it is unclear from the language of claim 35 whether the additional limitation “and two pockets” is a reference to the previously-identified “rectangular Pocket” and “inner pocket” or whether the limitation “and two pockets” is a recitation to two other pockets (i.e., third and fourth pockets) on the Appeal 2012-005677 Application 12/011,644 4 garment. Furthermore, claim 35 thereafter recites “and one pocket on the hip and one pocket on the knee area for pants.” Again, it is unclear whether this limitation is a reference to the previously identified “rectangular Pocket” and “inner pocket,” whether this limitation is a reference to the “and two pockets” previously mentioned, or whether this limitation is a recitation of yet two more pockets on the garment (i.e., fifth and sixth pockets). Claim 35 also recites “the fabric on the pockets will be the same on the garments” without indicating which particular ones of the previously recited pockets are made of the same fabric, or whether all of them are made of the same fabric. This claim further recites “pockets” that “accommodate standard size cell phones and CD players,” again without specifying which ones of plurality of the previously-recited pockets are being referenced, i.e., the “rectangular Pocket for cell phones and CD players,” the “inner pocket for battery storage,” the “and two pockets on the same side of the pants,” the “one pocket on the hip,” or the “one pocket on the knee area.” In view of the above, we agree with the Examiner’s conclusion that claim 35 is indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. Ans. 5–6. Accordingly, we sustain the Examiner’s rejection of claim 35 and also dependent claims 36, 37, 40, 42, 44, and 48 under 35 U.S.C. § 112, second paragraph. The prior art rejections of claims 35, 36, 37, 40, 42, 44, and 48 In view of our sustaining the rejection of claims 35, 36, 37, 40, 42, 44, and 48 as being indefinite, we do not sustain the Examiner’s rejections of these claims under either 35 U.S.C. § 102(b) or 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 Appeal 2012-005677 Application 12/011,644 5 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). DECISION The Examiner’s rejection of claims 35, 36, 37, 40, 42, 44, and 48 as failing to define the invention in the manner required by 35 U.S.C. § 112, second paragraph is sustained. We do not reach the Examiner’s rejections of claims 35, 36, 37, 40, 42, 44, and 48 under either 35 U.S.C. § 102(b) or 35 U.S.C. § 103(a). 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). AFFIRMED hh