11293479 (B.P.A.I. Jan. 27, 2012)

Ex Parte Kassel et al

Board of Patent Appeals and InterferencesJan 27, 2012

11293479 (B.P.A.I. Jan. 27, 2012)

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. 11/293,479 12/02/2005 Arthur Michael Kassel RKE-107us 4306 24036 7590 01/27/2012 HOWARD M COHN PATENT ATTORNEY LLC 30195 Chagrin Blvd, #300 CLEVELAND, OH 44124 EXAMINER GANESAN, SUNDHARA M ART UNIT PAPER NUMBER 3764 MAIL DATE DELIVERY MODE 01/27/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte ARTHUR MICHAEL KASSEL and KENNETH OWEN RICHARDSON ____________________ Appeal 2010-002333 Application 11/293,479 Technology Center 3700 ____________________ Before: GAY ANN SPAHN, CHARLES N. GREENHUT, and WILLIAM V. SAINDON, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-002333 Application 11/293,479 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1, 3, 6, 9-11, 15, 17 and 18. App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection. The claims are directed to a gripping device. Claim 1, reproduced below, with italics added, is illustrative of the claimed subject matter: 1. A gripping device that removably attaches onto a user’s wrist to enable the user to grip onto a handle of an exercise device, characterized by: a wrist-wrapping, elongated belt portion having opposite ends and formed from two strips of flexible material having first and second strips of connecting gripping material on one side of the belt portion whereby the first end of the elongated belt portion is wrapped around the user’s wrist so that the first strip of connecting gripping material is disposed directly on the back of the user’s wrist opposite the palm of the hand and the second opposite end of the elongated belt portion is wrapped around the user’s wrist so that the second strip of connecting gripping material overlaps the first strip so that they are locked together; a gripping structure formed of a stiff and relatively rigid material that extends outward from the plane of the belt portion; the gripping structure having a lower section, an upper section and a free end section of a unitary construction, the lower section of the gripping structure encased within the two strips of flexible material forming the elongated belt portion; the gripping structure can be adjusted to change the angle between the lower end section and the upper section, and the free end section of the gripping structure having a tip that generally extends in a direction towards the belt portion and a radius of curvature with respect to the upper section whereby the free end section of the gripping structure can be removably attached to the handle of the exercise device. Appeal 2010-002333 Application 11/293,479 3 REJECTIONS Claims 1, 3 and 9 are rejected under 35 U.S.C. § 102(b) as anticipated by DaSilva (US 5,350,343, iss. Sep. 27, 1994). Ans. 4. Claim 6, 10 and 11are rejected under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over DaSilva. Ans. 5, 6. Claims 15 and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable over DaSilva. Ans. 7. Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over DaSilva and Lothar (US 4,807,876, iss. Feb. 28, 1989). Ans. 9. OPINION In each rejection, the Examiner relies on a claim construction of the terms “stiff” and “relatively rigid” that Appellants contend is improper. App. Br. 12-15; Reply Br. 3-5. Appellants contend that the phrase “stiff and relatively rigid” would be understood by one of ordinary skill in the art as excluding DaSilva’s nylon strap 181 reinforced neoprene pad 2, interpreted by the Examiner as constituting the claimed “gripping structure.” App. Br. 11-15; Ans. 3. We agree with Appellants. It is well-settled that: the PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in applicant’s specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). While the specification 1 DaSilva uses numeral 18 to refer both to loop material on the support strap 12 and to the durability-enhancing support strap 18 attached to pad 2. Cf. Col. 2, ll. 55-60 and Col. 3, ll. 10-26. Appeal 2010-002333 Application 11/293,479 4 should be used to interpret the meaning of a claim, it is improper to confine the claims to the embodiments found in the specification. In re Trans Tex. Holdings Corp., 498 F. 3d 1290, 1299 (Fed. Cir. 2007) (citations omitted). In addition to the specification, dictionary definitions may also be pertinent in this analysis. Id. While Appellants do not expressly define “stiff,” that characteristic allows for the gripping component 18 to assume a particular curvature, or angle, to accommodate different sized hands or exercise handles. Spec. 3:5- 10, 6:19-31. Thus, the Examiner appears to correctly interpret the term “stiff,” as read in light of the Specification, to mean a gripping structure that “holds its shape to an extent.” See Ans. 10. However, we cannot discern the basis for the Examiner’s belief that DaSilva’s pad 2, interpreted as the claimed “gripping structure” does, in fact, hold its shape in any way. As Appellants point out, this pad appears to be flexible to wrap around a bar. See Figs. 3 and 4. There is no indication it would be able to hold its shape without having an outside force applied to it, for example, by a user’s hand. Appellants do not expressly specify what the term “relatively” in the phrase “relatively rigid” references. One of ordinary skill in the art would not interpret the claimed rigidity as relative to any material in existence. Rather, one of ordinary skill in the art would understand that the gripping structure is rigid relative to the only other structure present in the claimed device—the belt portion. The Examiner, noting that the “cuff of DaSilva is rigid relative to the strap portion (18)2” also appears to properly interpret the meaning of this term. However, once again, we cannot discern the basis for the Examiner’s belief that DaSilva’s pad 2, is rigid relative to DaSilva’s 2 In this instance the Examiner’s reference to numeral 18 appears to be directed to strap 12 which has loop material 18. Appeal 2010-002333 Application 11/293,479 5 strap. DaSilva’s pad is made, in part, from the same material as the strap 12 – nylon webbing – and, in part, neoprene, which appears to be more flexible than the nylon webbing of the strap 12 since it is reinforced by a support strap 18 made of the same nylon webbing. Col. 2, ll. 55-60, col. 3, ll. 10-13. Although the Examiner appears to properly interpret the meaning of the phrase “stiff and relatively rigid,” the Examiner failed to establish by a preponderance of the evidence the basis for the belief that DaSilva’s pad 2 possesses such characteristics. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the evidence is the standard that must be met by the PTO in making rejections.”). The Examiner does not provide any evidence, in Lothar or elsewhere, or articulate any reasoning to account for this deficiency. Accordingly, we are constrained to reverse the Examiner’s rejections. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection of claim 18 under 35 U.S.C. § 112, paragraph four. 35 U.S.C. § 112, paragraph four, requires that a dependent claim “specify a further limitation of the subject matter claimed.” See, e.g., Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1291-92 (Fed. Cir. 2006). Claim 18 merely repeats limitations set forth in lines 15-18 of claim 15 and therefore fails to further limit the subject matter claimed. DECISION The Examiner’s rejections of claims 1, 3, 6, 9-11, 15, 17 and 18 are reversed. We enter a new ground of rejection of claim 18 under 35 U.S.C. § 112, paragraph four. Appeal 2010-002333 Application 11/293,479 6 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 Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds 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. . . . REVERSED – 37 C.F.R. § 41.50(b) nlk