Ex Parte Klein

Patent Trial and Appeal Board

Mar 7, 2018

12938447 (P.T.A.B. Mar. 7, 2018)

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.
12/938,447 11/03/2010 Jason Klein 2010-034 3453
27569 7590 03/09/2018
PAUL AND PAUL
1717 Arch Street Three Logan Square
SUITE 3740
PHILADELPHIA, PA 19103
EXAMINER
ANNIS, KHALED
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
03/09/2018 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):
INFO @PAUL ANDPAUL.COM
claire @paulandpaul.com
fpanna@paulandpaul.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON KLEIN
Appeal 2017-001003
Application 12/938,447
Technology Center 3700
Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 1,3, and 5—20. We have jurisdiction over this appeal
under 35 U.S.C. § 6(b).
We REVERSE.
1 The Appellant identifies the real party in interest as “F3 Tech, LLC.”
(Appeal Br. 2.)
Appeal 2017-001003
Application 12/938,447
STATEMENT OF THE CASE
The Appellant’s invention “relates to an athletic sock having improved
abrasion resistance, comfort and moisture management.” (Spec. 11.)
Illustrative Claim
1. An athletic abrasion resistant and comfortable athletic
sock for covering the foot of a wearer and comprising a triple
knit construction and having a continuous first compression zone
in the form of a band around the circumference of the sock,
located rearward of a toe portion of the sock and forward of an
ankle of the sock, with a bottom portion of the compression band
adapted to the foot of a wearer; with an elastic band neck portion
of the sock being at an upper end of the sock and sufficiently
elastic to engage the leg of a wearer above an ankle portion of
the sock, said neck portion being continuous around the
circumference of the sock with the band and non-band portions
of the sock being comprised of yam that by weight is of 35% to
75% polyester fiber, 15% to 35% cotton fiber and 10% to 30%
polyurethane-polyurea copolymer fiber.
References
Strauss US 5,033,276 July 23, 1991
Mori US 2008/0041113 A1 Feb. 21,2008
Mills US 2008/0249454 A1 Oct. 9,2008
Rejections
I. The Examiner rejects claims 1, 3, and 5—20 under 35 U.S.C.
§112, second paragraph, as failing to set forth the subject matter which the
inventor regards as the invention. (Final Action 5.)
II. The Examiner rejects claims 1, 3, 7—12, 14—18, and 20 under
35 U.S.C. § 103(a) as unpatentable over Mills and Strauss. (Final Action 6.)
III. The Examiner rejects claims 5, 6, 13, and 19 under 35 U.S.C.
§ 103(a) as unpatentable over Mills, Strauss, and Mori. (Final Action 10.)
2
Appeal 2017-001003
Application 12/938,447
ANALYSIS
Claims 1,11, and 17 are the independent claims on appeal, with the
rest of the claims on appeal (i.e., claims 3, 5—10, 12—16, and 18—20)
depending therefrom. (See Appeal Br., Claims App.) The independent
claims on appeal are drawn to a “sock” and recite limitations listing three
fibers, namely “polyester fiber,” “cotton fiber,” and “copolymer fiber.” (Id.)
Rejection I
This rejection by the Examiner is based solely upon certain claims
having “insufficient antecedent basis.” (Final Action 5.) We agree with the
Appellant’s position that this rejection should not be sustained. (See Appeal
Br. 7.) “[T]he failure to provide explicit antecedent basis for terms does not
always render a claim indefinite” if “the scope of a claim would be
reasonably ascertainable by those skilled in the art.” Energizer Holdings,
Inc. v. Inti Trade Comm’n, 435 F.3d 1366, 1370—71 (Fed. Cir. 2006). Here,
the Examiner does not maintain, much less explain why, the claims would
not be reasonably ascertainable by those skilled in the art.2
Thus, we do not sustain the Examiner’s rejection of claims 1, 3, and
5—20 under 35 U.S.C. § 112, second paragraph.
Rejections II—III
These rejections by the Examiner are based upon a finding that Mills
discloses a sock “made of the same fibers as the claimed invention,” namely
the three fibers listed in in the independent claims. (Final Action 8, 11.)
2 We further note that the words at issue (e.g., “circumference,”
“compression band,” “non-band portions,” “bottom portion,” “plantar
region,” etc.) would seem to be commonly understood terms to one of
ordinary skill in the “sock” art, even absent antecedent basis.
3
Appeal 2017-001003
Application 12/938,447
Mills discloses a knitted fabric 4 that can be constructed from “an elastic
material 90” and “an elastic material 95.” (Mills, 128.) The Examiner
maintains that Mills’s material 90 can be made from a first “yam” of the
listed copolymer fiber and a second “yam” of the listed polyester fiber.
(Final Action 8.) And the Examiner maintains that Mills’s material 95 can
be made of a “yam” of the listed cotton fiber. (Id. ) Therefore, according to
the Examiner, “the produced fabric making the sock of Mills will comprise
materials 90 and 95 having three components as claimed.” (Final Action 8;
see also Answer 4.)
We are persuaded by the Appellant’s position that the Examiner does
not adequately establish that the claimed sock would have been obvious over
the applied art. (See Appeal Br., 8—15.) We are persuaded because the
independent claims on appeal require “yam,” not “fabric” made of plural
yams, to include the three listed fibers. Specifically, independent claims 1
and 17 require designated sock portions to be “comprised of yam that by
weight is of [a certain percentage] polyester fiber, [a certain percentage]
cotton fiber and [a certain percentage] polyurethane-polyurea copolymer
fiber,” and independent claim 11 requires “three-component yam comprising
a combination of polyester fiber, cotton fiber and polyurethane-polyurea
copolymer fiber.” (Appeal Br., Claims App.)
The Examiner only finds that Mills discloses a “fabric,” not “yam,”
having the listed fibers. Indeed, as shown in Mills’s Figure 4 reproduced
below, the prior art fabric 4 is constmcted from one yam made of
material 90 and another yam made of material 95. Particularly, yam made
of material 90 mns “perpendicular” to “wales 98” formed by yam made of
material 95. (Mills, 127.)
4
Appeal 2017-001003
Application 12/938,447
4. $8
v
§5-,;
35™
,!
Thus, while it may be true that Mills’s “produced fabric” will include the
three fibers listed in the independent claims, this “produced fabric” is not
made from “yam” having all three fibers.
The Examiner maintains that Mills discloses, in paragraph 30, “that
the various yams can be used in combination.” (Answer 3.) We note that
this paragraph pertains to the “various yams” that can be used to make
material 95. (See Mills 130.) The Examiner does not provide us with
findings that Mills’s material 95, alone, would contain a yam comprising all
three listed fibers. (See Final Action 4, 8, see also Answer 3 4.)
The Examiner’s further findings and determinations with respect to
the dependent claims and/or the additional prior art references (i.e., Straus
and Mori) do not compensate for the above-discussed shortcoming. (See
Final Action 9-12.) For example, Strauss is relied upon only for its
teachings on a “triple knit construction” (see id. at 9-10); and Mori is relied
upon only for its teachings on the “knitting structure” of “ground touching
areas of the sock” (see id., at 11—12).
Thus, we do not sustain the Examiner’s rejection of claims 1, 3, 7—12,
14—18, and 20 under 35 U.S.C. § 103(a) as unpatentable over Mills and
Strauss; and we do not sustain the Examiner’s rejection of claims 5, 6, 13,
and 19 under 35 U.S.C. § 103(a) as unpatentable over Mills, Strauss, and
Mori.
5
Appeal 2017-001003
Application 12/938,447
DECISION
We REVERSE the Examiner’s rejections of claims 1, 3, and 5—20.
REVERSED
6