Ex Parte Ott et al

Patent Trial and Appeal Board

Sep 19, 2017

13223062 (P.T.A.B. Sep. 19, 2017)

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.
13/223,062 08/31/2011 Lori Sue Ott 10-DIS-291-CP-US-UTL 6594
63652 7590 09/21/2017
DISNEY ENTERPRISES, INC.
c/o Marsh Fischmann & Breyfogle LLP
8055 East Tufts Avenue
Suite 450
Denver, CO 80237
EXAMINER
HADEN, SALLY CLINE
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
09/21/2017 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):
PTOMail @ mfblaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LORI SUE OTT and NINA SEENAE HUH
Appeal 2016-004163
Application 13/223,0621
Technology Center 3700
Before LINDA E. HORNER, CHARLES N. GREENHUT, and
BRENT M. DOUGAL, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Lori Sue Ott and Nina Seenae Huh (Appellants) seek our review
under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1-11.
Final Office Action (March 5, 2015) (hereinafter “Final Act.”). Claims 12-
21 are canceled. Id. at 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Disney Enterprises, Inc., a wholly owned subsidiary of
The Walt Disney Company, as the real party in interest. Appeal Brief 1
(July 20, 2015) (hereinafter “Br.”).
Appeal 2016-004163
Application 13/223,062
CLAIMED SUBJECT MATTER
Appellants’ claimed subject matter relates to “an infant bodysuit.”
Spec. 12. Claim 1 is the sole independent claim on appeal and is
reproduced below, with pertinent claim language shown in italics.
1. A bodysuit for an infant, comprising:
one or more fabric panels substantially configured into a
tubular shape to receive the torso of the infant and having
openings for the infant's neck, arms, and legs; and
a first closure mechanism on a back side of the leg opening
and a second closure mechanism on a front side of the leg
opening, wherein the first closure mechanism mates with the
second closure mechanism;
wherein the first and second closure mechanisms include
mating portions of three snaps, one of the first and second closure
mechanisms including three snap studs and the other of the first
and second closure mechanisms including three snap sockets, the
snap studs and snap sockets collectively referred to as snap
features;
wherein the snap features in each of the first and second
closure mechanisms are formed in a curved row;
wherein the second closure mechanism includes two rows
each having three snap features, the two rows including a top row
and a bottom row where the top row is located relatively closer
to the neck opening of the garment than is the bottom row, each
of the snap features having a top edge that is the portion of the
snap feature relatively closest to the neck opening of the garment,
wherein either row can be used to temporarily attach the first
closure mechanism to the second closure mechanism so as to
temporarily attach the front side of the leg opening to the back
side of the leg opening in between the two legs of the infant so
as to form a pair of separate leg openings and contain the infant
within the bodysuit;
wherein each of the curved rows follows a curve of
sufficiently large radius such that there is a straight line passing
2
Appeal 2016-004163
Application 13/223,062
between a portion of an outermost of the snap features in a given
row that passes through a portion of a center snap feature in the
same row, and
wherein each of the curved rows of the second closure
mechanism follows a curve of sufficiently small radius such that
a straight line passing between the top edge of each of the two
outermost of the snap features in a given row also passes through
a central portion of the center snap feature in the same row.
Br. 13-14 (Claims Appendix).
REJECTIONS
The Final Office Action includes the following rejections:
1. Claims 1-5, 10, and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over JAKO-O Mobel und Spielmittel fur die junge
Familie GmbH (DE 299 14 379 Ul, published November 18,
1999) (“Jako”), Fidler (US 6,243,871 Bl, issued June 12, 2001),
and Feldman (US 2,548,660, issued April 10, 1951).
2. Claims 6-9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Jako, Fidler, Feldman, and Burr (US 7,878,030
B2, issued February 1, 2011).
ANAFYSIS
First Ground of Rejection
Appellants argue the claims subject to the first ground of rejection as a
group. Br. 4-10. We select claim 1 as representative of the group, and
claims 2-5, 10, and 11 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner finds that Jako discloses a bodysuit for an infant
substantially as recited in claim 1 having, inter alia, first and second closure
3
Appeal 2016-004163
Application 13/223,062
members on the front and back panels. Final Act. 3. The Examiner
proposes to modify Jako’s bodysuit to make the panels out of fabric and to
make the second closure member include two rows on the front of the
bodysuit, as taught in Fidler. Id. at 4-5. The Examiner further proposes to
modify Jako’s bodysuit, based on the teaching in Feldman, to make each
row of closure members comprise mating portions of three snaps formed in a
curved row, and each curved row of a radius such that a straight line passing
through a portion of an outermost of the snap features in a given row passes
through a portion of a center snap feature in the same row and such that a
straight line passing between the top edge of each of the two outermost of
the snap features in a given row also passes through a central portion of the
center snap feature in the same row. Id. at 4-6. In particular, the Examiner
provided an annotated Figure 4 of Feldman, reproduced below, to support
the findings as to the scope and content of this reference:
4
Appeal 2016-004163
Application 13/223,062
The above illustration shows Figure 4 of Feldman annotated by the
Examiner to identify a central portion of the center snap feature and top
edges of the outermost snap features, and to add a straight line passing
between the top edges of the two outermost snap features in a row and
passing through a central portion of the center snap feature in the same row.
Id. at 8.
Appellants contend that the Examiner erred in finding Feldman
discloses closure members in a curved row having a curve of sufficiently
large radius or a curve of sufficiently small radius as claimed. Br. 5-9.
Specifically, Appellants contend that “the word ‘line’ refers to the geometric
mathematical definition of a line [which] .... is defined as ‘a straight or
curved continuous extent of length without breadth! ” Id. at 5. Appellants
acknowledge “that it is impossible to draw a line which has no thickness”
and argue that “a line can only be appropriately depicted in a graphic by
drawing the thinnest reasonable line that is capable of visually portraying the
actual shape of the line.” Id. at 6. Appellants contend that the Examiner’s
interpretation of “line” to encompass a line of any thickness is unreasonably
broad because it “is in direct contradiction to the ordinary and customary
meaning of the word Tine.’” Id. at 6. Appellants further contend that even
the generic definition of “line” precludes the use of a wide strip as drawn by
the Examiner. Id. at 7 (asserting a generic definition of “line” is “a long,
narrow mark or band”).
Appellants further provide a competing annotated Figure 4 of
Feldman, reproduced below:
5
Appeal 2016-004163
Application 13/223,062
The above illustration shows Figure 4 of Feldman annotated by
Appellants using a thinner line than the line added by the Examiner to
demonstrate that a straight line passing between the top edges of the two
outermost snap features in a row does not pass through any portion of the
center snap feature in the same row. Br. 8. Appellants further point out
asserted benefits provided by the curved layout of each row of snap features.
Id. at 9 (citing Spec. 16, 21).
The Examiner responds that Appellants’ proposed interpretation
“[t]hat the line must be ‘without breadth’ or thin or ‘thinnest reasonable’ is
not recited in the claims and is an overly narrow definition of a straight
line.” Ans. 2 (providing example of parking lot having painted relatively
thick lines on the ground). The Examiner further finds that “the cited prior
6
Appeal 2016-004163
Application 13/223,062
art teaches rows of snaps that are in straight rows (e.g., Fidler, Lee2, Jako) or
curved rows with varying radii of curvature (e.g., Solieau3, Gaugler4,
Watlington5, Feldman).” Ans. 3. The Examiner determines that “[o]ne of
ordinary skill in the art would recognize that the rows of snaps could be
arranged in a greater or lesser radius of curvature and still perform the
function of closing the garment.” Id.
The Office “determines the scope of claims . . . not solely on the basis
of the claim language, but upon giving claims their broadest reasonable
construction ‘in light of the specification as it would be interpreted by one of
ordinary skill in the art.”’ Phillips v. AWH Corp., 415 F.3d 1303, 1316
(Fed. Cir. 2005) (enbanc) (quoting In re Am. Acad. ofSci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004)). Appellants assert that one having
ordinary skill in the art would employ a geometric mathematical definition
of “line.” Appellants proffer one such definition meaning a line having “no
breadth.” For the reasons that follow, the Examiner did not err in
interpreting “line” to encompass a certain amount of breadth.
Some definitions of the word “line,” including a mathematical
definition of the term, do not refer to the breadth of the line at all. For
instance, ordinary meanings of “line” include:
1. Mathematics A geometric figure formed by a point moving
along a fixed direction and the reverse direction.
2. a. A thin continuous mark, as that made by a pen, pencil, or
brush applied to a surface.
2 US 2002/0062511 Al, published May 30, 2002.
3 US 2012/0125347 Al, published May 24, 2012 (filed November 24, 2010).
4 US 2007/0056076 Al, published March 15, 2007.
5 US 6,223,352 Bl, issued May 1, 2001.
7
Appeal 2016-004163
Application 13/223,062
3. a. A real or imaginary mark positioned in relation to fixed
points of reference.
The American Heritage® Dictionary of the English Language, Fifth Ed.
(2017), available at https://www.ahdictionary.com/word/search.html?q=line,
last accessed September 12, 2017. The Examiner’s interpretation of “line”
to include some breadth is not unreasonably broad in light of the ordinary
meaning of the term, the fact that all lines must have some breadth to be
discemable, and the fact that the claim does not specify a particular breadth
of the recited “line.” Further, the Examiner’s interpretation is not
inconsistent with Appellants’ Specification.
Appellants’ Specification describes:
[E]ach of the rows of snap studs 24 and snap sockets 26 are
located along a curved line, wherein the curved line follows a
curve having a relatively large radius. In other words, the curved
line is closer to a straight line than it is to prior art designs where
the curve follows a relatively small radius of curvature. In such
prior art designs, the center snap socket in the curved row may
be located (equidistant to, if not) closer to the outer snap sockets
of the row above it than to the outer snap socket in the same row.
Further, in the present design, if a straight line were to be drawn
between the top edges of the outer snap sockets of a given row,
the straight line would pass through a portion of the center snap
socket of the same row. This would not be the case with prior
art designs, ft has been discovered that providing these less-
curved rows makes it much easier for the caregiver that is
reattaching the snaps to reattach the snaps to a given row than in
prior art designs. In some prior art designs, the relative positions
of the snap features at times made it more difficult for the
caregiver to properly attach the front and back panels together.
In addition, as can be seen in Figures 1—4, the curve has a
sufficiently small radius such that a straight line 40 (illustrated in
Figure 2 as a dashed line) that passes between top edges 42 of
each of the outermost snap sockets also passes through a central
8
Appeal 2016-004163
Application 13/223,062
portion 44 of the center snap socket. The central portion 44 is
that area relatively closer to the center point of the circular center
snap socket than to the periphery of the circular snap socket.
Spec. ]fl6. Appellants’ Figure 2 is reproduced below.
Figure 2 shows a front view of the infant body suit with the lower
portion of the back panel detached from the lower portion of the front panel
and with dashed lines added that pass through the top edges of the outermost
snap sockets in each row and through the central portion of the center snap
socket in the same row.
We understand from the Specification that the benefit to having the
curved row of snap features disposed with the claimed radius of curvature is
to make it easier for the caregiver to reattach the snap features. In other
words, because the snap features are disposed in a curved row with a
relatively large radius of curvature, as compared to the curved rows of the
9
Appeal 2016-004163
Application 13/223,062
prior art, it is easier for the caregiver to discern which snap features belong
in the same row as the others, and which snap features belong to a different
row. See Br. 9 (Appellants explaining, with reference to paragraph 16 of the
Specification, that in prior art references with too much curvature in each
row, caregivers would often confuse which snap features were in which
row). The claimed curvature of the curved rows of snap features does not
require a straight line of no breadth or narrow width to address this problem.
Rather, the ability of a caregiver to discern in which row a snap belongs
depends just as much on the distance between adjacent rows as on the radius
of curvature, because as long as the distance between the center snap feature
and the adjacent snap features in the same row is smaller than the distance
between the center snap feature and outermost snap features in another row,
the caregiver will not be confused as to which row the center snap feature
belongs.
We do not understand the other recited benefits mentioned in
Appellants’ Brief and in the Specification, e.g., “increase[d] comfort of the
infant by reducing bulkiness, providing a better fit, and providing soft
materials in contact with the skin of the infant,” to be the result of the recited
radius of curvature. Spec. 121; id. at H 18 (describing rib binding 30 as
minimizing contact between infant’s leg and facing and providing a softer
material and reducing bulkiness), 19 (describing straight-line bottom edge
32 of front panel 22 resulting in less bulkiness), 20 (describing the shape of
the leg openings provides for a better fit). As such, these benefits do not
inform us as to the interpretation of “line” in claim 1.
10
Appeal 2016-004163
Application 13/223,062
For these reasons, we find no error in the Examiner’s interpretation of
“line” and in the Examiner’s finding, as shown in the annotated Figure 4 of
Feldman (Final Act. 8), that Feldman discloses a curved row of snap features
having the radii recited in claim 1. We also agree with the Examiner’s
further determination that the prior art generally shows curved rows with
varying radii of curvature and one of ordinary skill in the art would
recognize that the rows of snaps could be arranged in a greater or lesser
radius of curvature and still perform the function of closing the garment.
Ans. 3.
For these reasons, we sustain the rejection of claims 1-5, 10, and 11
under 35 U.S.C. § 103(a) as unpatentable over Jako, Fidler, and Feldman.
Second Ground of Rejection: Claim 6-8
Claim 6 depends indirectly from claim 1 and recites “a portion of the
front side of the leg opening where the two rows of snap features are located
is reinforced by a fabric material that is stiffer and more rigid than the fabric
panels to provide increased two-dimensional stability between the two rows
of snap features and between the snap features of a given row.” Br. 15
(Claims Appendix).6 The Examiner finds that Burr teaches a knit garment
that uses a woven reinforcement fabric for the area of the garment
containing snaps to reduce wear and help extend the life of the snaps. Final
Act. 10-11 (citing Burr, col. 7,11. 27-32). The Examiner determines it
would have been obvious to a person having ordinary skill in the art to
6 Appellants argue claims 6-8 as a group. Br. 10-11. We select claim 6 as
representative of the group, and claims 7 and 8 stand or fall with claim 6.
37 C.F.R. § 41.37(c)(l)(iv).
11
Appeal 2016-004163
Application 13/223,062
modify the garment of Jako to add reinforcement fabric to the area of the
garment containing the snaps for the same reasons and to achieve the same
benefits as taught in Burr. Id. Appellants contend that “the purpose of the
reinforcing material as disclosed by Burr for ‘reducing the wear and help
extend the life of the snaps’ may actually refer to maintaining its electrically
conductive property, which is inapplicable to Appellant’s claims and negates
the Examiner’s suggested motivation to combine Burr with . . . Jako as
modified.” Br. 10-11.
Burr teaches a garment 8 including conductive yam portions 32b
attached to conductive contacts or snaps 50, and an electronic device 200
having ball-type electrode connectors 210 with partially spherical geometry
for snap connection with conductive contacts 50. Burr, col. 6,1. 64 - col. 7,
1. 2, col. 7,11. 17-24. Burr discloses that textile electrodes 32b “may be
electrically conductive yam stitched, knit or woven into portions of the
fabric of the band portion 30 to form patches or ribs of conductive knit
fabric” and “may comprise knit patches of conductive yam 43 with raised
portions or ribs 40.” Id. at col. 6,11. 24-26, 54-56. Burr teaches that woven
reinforcement fabrics can be provided under each snap 50 to “reduce the
wear and help extend the service life of the snaps 50 located in the textile
electrodes 326.” Id. at col. 7,11. 27-32.
Thus, Burr’s metallic snaps 50 are attached to knit yam portions 32b.
A person having ordinary skill in the art would understand from Burr’s
recognition of the problem of wear that repeated pulling of the metallic
snaps 50 to engage and disengage them from the complementary ball-type
connectors 210 would, over time, cause wear in the attachment interface
12
Appeal 2016-004163
Application 13/223,062
between the metallic snaps 50 and the knit yam portions 32b. A person
having ordinary skill in the art would also know from Burr that use of a
reinforcement fabric at this interface would reduce this wear. A person of
ordinary skill in the art also would recognize that this same problem of wear
would occur in Jako due to repeated pulling action caused by engagement
and disengagement of the snap features, and that Burr’s technique of
reducing wear by using reinforcement fabric would be applicable in the
garment of Jako, as modified, to reduce wear in the region of the fabric
garment at which the snap features are attached. See KSR Int 7 Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) (“if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”)
For these reasons, we find no error in the Examiner’s rejection of
claims 6-8 under 35 U.S.C. § 103(a) as unpatentable over Jako, Fidler,
Feldman, and Burr.
Second Ground of Rejection: Claim 9
Claim 9 depends from claim 1 and recites “a majority of the bodysuit
is composed of a knit fabric material.” Br. 15 (Claims Appendix).
Appellants argue the rejection should be reversed because “the Examiner
fails to assert that ‘a majority of the bodysuit is composed of a knit fabric’
nor does the Examiner cite any disclosure teaching such a majority.” Br. 12.
The modified garment of Jako discloses a bodysuit in which the front
and back panels are made of fabric. Final Act. 3 (proposing to modify Jako
with the teaching of Fidler to provide the front and back panels of Jako’s
13
Appeal 2016-004163
Application 13/223,062
bodysuit in fabric for the purpose of allowing adjustability). In the rejection
of claim 9, the Examiner proposes to further modify Jako to make the
garment of knit material, as taught by Burr, for the purpose of wearer
comfort. Final Act. 12. Thus, we understand the Examiner’s proposed
modification to be to make the front and back panels of Jako of knit
material. Indeed, Burr teaches using knit construction for the nonconductive
and conductive fabric of the garment and further teaches that “[r]ib-knit
fabrics of this type have been shown to have good elasticity in the length and
width direction and can provide good body form fitting garments.” Burr,
col. 5,1. 66 - col. 6,1. 9. Thus, the Examiner’s proposed modification of
Jako with the teaching of Burr would result in a bodysuit in which a majority
of the garment is made of knit fabric material. Appellants have not
demonstrated error in the Examiner’s determination of unpatentability of
claim 9 over Jako, Fidler, Feldman, and Burr.
DECISION
The decision of the Examiner rejecting claims 1-11 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
14