Ex Parte Plante

Patent Trial and Appeal Board

Feb 26, 2018

14469939 (P.T.A.B. Feb. 26, 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.
14/469,939 08/27/2014 Stephen M. Plante SMPUS2 8121
63893 7590
DOUGLAS J. VISNIUS
18024 Falcon Green Court
ORLANDO, EL 32820-2712
EXAMINER
WAGGENSPACK, ADAM J
ART UNIT PAPER NUMBER
3782
NOTIFICATION DATE DELIVERY MODE
02/28/2018 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):
apexmasterworks @ gmail. com
sfnlhafnap @ yahoo, com
dvisnius @ bellsouth. net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN M. PLANTE
Appeal 2016-006960
Application 14/469,939
Technology Center 3700
Before: EDWARD A. BROWN, MICHAEL L. WOODS, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-006960
Application 14/469,939
CLAIMED SUBJECT MATTER
The claims are directed to a load bearing positioning system and
method. Claim 1, reproduced below from Appellant’s corrected Claims
Appendix filed on December 17, 2015, is illustrative of the claimed subject
matter:
1. A system comprising:
an acromion-socket constructed out of multiple
components that are shaped to engage a user’s acromion-portion
and the acromion-socket is pre-formed to aid in receiving the
user’s acromion-portion; and
a strap fastened to the acromion-socket, the strap
positioned away from the user’s neck by the acromion-socket to
connect a load to the user.
Claims App. 1.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Cast US 2,487,423 Nov. 8, 1949
Sattler US 5,269,449 Dec. 14, 1993
REJECTIONS
I. Claims 12—20 are rejected under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement.
II. Claims 1—20 are rejected under 35 U.S.C. § 112(b) as
indefinite.
III. Claims 1—20 are rejected under 35 U.S.C. § 102(a)(1) and (a)(2)
as anticipated by Cast.
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IV. Claim 20 is rejected under 35 U.S.C. § 103 as unpatentable
over Cast and Sattler.
Rejection I; Written Description
Independent claim 12 and associated dependent claims 13—19 require
the step of “having acromion-sockets edges furthest from the neck designed
to carry a portion of the load.” Claims App. 3. Independent claim 20 has a
substantially similar requirement, albeit in a system claim. Id. at 4. The
Examiner finds that the original disclosure does not support this limitation.
Final Act. 4.
Appellant contends that the Examiner has not explained the rejection
of claims 12—20 for lack of written description, the drawings were amended
to identify the above-noted feature, and paragraphs 45, 65, and 66 of the
Specification provide adequate written description support. Appeal Br. 7
(citations omitted). With respect to the Amendment amending the drawings,
which was filed after the Final Action from which this Appeal is taken,
Appellant contends that this Amendment should have been entered by the
Examiner, but that the Advisory Action that was issued by the Examiner
after Appellant filed the Amendment fails to indicate the status of the
Amendment.1 Id. at 2. Further, Appellant contends that support for the
proposed changes to the drawings set forth in the Amendment (and,
apparently, support for the feature at issue in claim 12) “is shown in the
original drawings and the fact that every finite tangible object has an edge.”
1 The Final Action was transmitted on April 9, 2015, the Amendment in
response was filed on June 9, 2015, and the Advisory Action was
transmitted on June 23, 2015.
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Application 14/469,939
Id. at 2, 7. Appellant also argues that claims are enabled by the original
disclosure. Id. at 6, 8.2
In response, the Examiner notes that the Advisory Action denied entry
of the Amendment. Ans. 15—16. The Examiner also explains that “[i]t is not
the existence of the edge that is at issue, but whether it is ‘to carry a portion
of the load.’” Id. at 17 (emphasis added). In this regard, the Examiner finds
“nothing in the specification suggests that any portion of the load rests on
this edge, or that it otherwise carries a portion of the load, and the drawings
do not clearly show this subject matter.” Id.
In reply, Appellant contends that the Examiner’s finding on this point
is in error
because the edge is part of the acromion-socket that carries the
load, claim 12 entered as a matter of right explicitly states
“acromion-sockets[ ] edges furthest from the neck to carry a
portion of the load,” FIGS. 1,2,14, and 15 show such, and claims
1, 2, 9, 10—12, and 19 as discussed in the specification also
disclose such.
Reply Br. 5 (emphasis added). Thus, Appellant bases, in part, the argument
that the original disclosure supports the requirement in claim 12 (that
acromion-sockets edges furthest from the neck are designed to carry a
portion of the load) on the disclosure that the acromion-socket carries this
load.
We agree with the Examiner that Appellant’s disclosure fails to
comply with the written description requirement (i.e., provide an adequate
written description) for the subject matter recited in claim 12. Appellant’s
contention that paragraphs 45, 65, and 66 of the Specification support the
2 The Final Action does not include a rejection for lack of enablement.
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claimed feature at issue is unavailing inasmuch as these paragraphs are silent
regarding load-carrying design of any particular edges, much less edges
furthest from the user’s neck. None of Appellant’s original drawings
identify any such feature either. The disclosure that the acromion-socket, as
a whole, is designed for carrying a load (see, e.g., Spec. 1 67) does not, by
itself, provide any indication that a particular edge or edges of this structure
is/are designed to carry a portion of the load.
As for Appellant’s contention that the status of the Amendment filed
after the Final Action is unclear, we disagree because, in the Advisory
Action, of the standard options set forth under the heading
“AMENDMENTS,” the Examiner selected the one stating, “[t]he proposed
amendments filed after a final rejection . . . will not be entered.” Advisory
Act. 1 (emphasis added); see also Ans. 15—16 (stating, “the Advisory Action
was clear, as it stated that the proposed amendments would not be entered,
which includes all of the amendments, and specified why this was the
case.”). Regarding Appellant’s contention that the Amendment should have
been entered, an Examiner’s decision not to enter an amendment after final
rejection is a petitionable matter, not an appealable matter. See Manual of
Patent Examining Procedure (MPEP) §§ 1002.02(c) and 1201. Accordingly,
we will not review the Examiner’s decision on this point.
Thus, we sustain the Examiner’s rejection of claims 1—20 under 35
U.S.C. § 112(a).
Rejection II; Indefiniteness
Claims 1—20; “Acromion-portion ”
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The Examiner determines that the meaning of the term “acromion-
portion,” which is recited in all the independent claims,3 is unclear because
the Specification defines this term in multiple ways. Final Act. 5, 15—16.
Referring to a principle of claim interpretation discussed on page 5 of
the Final Action, Appellant contends that the Specification does not define
the term “acromion-portion” contrary to its ordinary meaning because
a search engine query shows there is no ordinary meaning for
the term “acromion-portion ” and therefore it is impossible for
the term to be defined contrary to its ordinary meaning by the
Applicant. Fine item 19 [of the Final Action] acknowledges that
there is no ordinary meaning for acromion-portion, but then
maintains the same rejection, which is improper.
Appeal Br. 9 (emphasis added); see also Reply Br. 25 (stating, “[t]he claim
terms acromion-socket and acromion-portion do not exist as evidenced by
any search engine query.”). Thus, Appellant contends there is no ordinary
meaning for the term “acromion-portion,” and the Examiner’s rejection is in
error because it is based on the understanding that the Specification attempts
to redefine this term when no previous definition existed.
Appellant’s argument on this point is without merit. The Examiner
determines that the Specification sets forth multiple definitions of the term
3 In the Final Action, the heading for the discussion of the “acromion-
portion” and indefmiteness lists claims 1, 2, 7, 9-12, 17, 19, and 20. The
Examiner also states that claims 3,14, and 18 “are rejected for being
dependent on a rejected claim.” Final Act. 7. However, all of the claims on
appeal depend from either claim 1 or claim 12, except for independent claim
20. In other words, it is not only claims 3,14, and 18 that suffer from the
deficiencies of their respective independent claims. Accordingly, we find
the Examiner’s listing of claims 1, 2, 7, 9-12, 17, 19, and 20 (rather than
claims 1—20) in this section of the Final Rejection to be an inadvertent and
harmless typographical error.
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“acromion-portion,” not that any of these definitions contradicts the ordinary
meaning of this term.4 See Final Act. 15—16.
Appellant also quotes various paragraphs from the Specification and
concludes, “the [Specification, in view of Figs. 1—4, describes the
acromion-portion as varying in position/size depending on the application.”
Appeal Br. 10-11 (quoting Spec. Tflf 42 49). Appellant also contends that
“one skilled in the art would use FIGS. 1^4 and 13—15 and a simple Venn
diagram to easily and properly conclude what the acromion-portion is.”
Reply Br. 27.
Although Appellant refers to paragraphs 42 49 of the Specification as
describing the acromion-portion (Reply Br. 14), the mutually exclusive
examples of the acromion-portion set forth in these paragraphs undermine
Appellant’s contention that the Specification provides sufficient guidance as
to what the acromion-portion is. For example, the Specification states, “[i]n
one embodiment, the acromion-portion 14 comprises the user’s 11
acromion, muscles, ligaments, skin, and/or the like.” Spec. 142. In the next
paragraph, the Specification states, “[i]n one embodiment, the acromion-
portion 14 comprises at least one of the user’s 11 muscles, ligaments, skin,
clothing, and/or the like, but excludes the user’s acromion.” Id. 143. Thus,
the Specification sets forth at least these mutually exclusive examples of the
term “acromion-portion.” Appellant states that “there is no ordinary
meaning for the term ‘acromion-portion.’” Appeal Br. 9. Thus, by reciting
the shape of the acromion-socket in terms of the acromion-portion, claim 1
4 “Properly viewed, the ‘ordinary meaning’ of a claim term is its meaning to
the ordinary artisan after reading the entire patent.” Phillips v. AWH, 405
F.3d 1303, 1321 (Fed. Cir. 2004).
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Application 14/469,939
attempts to limit the acromion-socket with a term that, in Appellant’s view,
has no ordinary meaning and for which the Specification gives multiple
mutually exclusive examples. “[I]f a claim is amenable to two or more
plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable ... as indefinite.” Ex Parte
Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential).
Appellant’s original drawings do not remedy this deficiency of the
Specification inasmuch as identifying, with a reference number, structure
that corresponds to the recited acromion-portion and leave open the question
of which of the mutually exclusive examples of the structure set forth in the
Specification is to be used when interpreting the scope of the claims. In
light of Appellant’s Specification and drawings, it would not be clear to a
person of ordinary skill in the art what is required by the term “acromion-
portion” in claim 1. Independent claims 12 and 20 suffer from the same
deficiency. Accordingly, based on the lack of clarity in the meaning of the
term “acromion-portion,” we sustain the Examiner’s rejection of claims 1—
20 as indefinite.
Claims 1, 7, and 17; “Pre-formed”
The Examiner determines that it is unclear whether to give patentable
weight to the requirement that the acromion-socket be “pre-formed.” Final
Act. 5—6.
Appellant contends (Appeal Br. 14—17), and we agree, that the shape
of the acromion-socket recited in claim 1 is created before receiving the
user’s acromion-portion. See Spec. ]Hf 49-50. As Appellant correctly points
out (Appeal Br. 15), this language connotes structure and excludes structures
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such as “a soft piece of cloth” without a pocket of pre-existing shape.
Accordingly, we do not sustain this portion of the rejection of claims 1, 7,
and 17 as indefinite.
Claim 4; “The Load is Carried”
The Examiner determines that it is unclear whether claim 4 requires a
load, or whether the recitation of a “load” in claim 4 is merely a functional
limitation. Final Act. 6. We agree with Appellant’s assertion that the “load”
recited in claim 4 “defines properly the claimed strap as the position, for
example, of the strap changes based upon where the load is carried.” Appeal
Br. 18; Reply Br. 22. In other words, the strap is capable of connecting a
load to the user in the manner set forth in claim 4, but no load is required as
an element of the system by claim 4. Accordingly, we do not sustain this
portion of the rejection of claim 4 as indefinite.
Claim 12; “Acromion-sockets Edges Furthest from the Neck Designed
to Carry a Portion of the Load”
The Examiner determines that it is unclear how the claimed invention
operates as there is no disclosure of acromion-socket edges carrying a
portion of the load, and it does not appear to be shown in the drawings.
Final Act. 6.
Appellant asserts that Figures 1—4 and 13—15 and paragraphs 44—45
and 51—52 disclose this feature. Appeal Br. 18—19.
Whether or not the recited feature is supported by the original
disclosure, the plain and ordinary meaning of the phrases “acromion-socket
edges” and “carrying a portion of the load” can be ascertained from the
claims and is that a plurality of edges carry a load, and these edges are the
ones farthest from the neck of the user (on respective acromion-sockets).
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Accordingly, we disagree with the Examiner that this language in claim 12 is
unclear, and we do not sustain this portion of the rejection of claim 12 as
indefinite.
Claims 4, 5, 13, and 15
The Examiner determines that claims 4, 5, 13, and 15 do not further
limit the claim from which they depend, and, therefore, are indefinite. Final
Act. 6.
The Examiner does not apply the proper standard under 35 U.S.C.
§ 112(a) on this point, which is based on the clarity of the claims rather than
purely on their form.5 Accordingly, we disagree with the Examiner’s
contention that claims 4, 5, 13, and 15 are unclear for failing to limit the
claim from which they depend, and we do not sustain this portion of the
rejection of claims 4, 5, 13, and 15 as indefinite
Claim 6
Claim 6 depends from claim 1 and recites, “wherein the acromion-
socket shape is fixed prior to any load bearing.” Claims App. 2.
The Examiner determines “[i]t is unclear what, if any, limitation this
adds to the claim, as it appears to recite a process (i.e. fixing the socket
shape prior to any load bearing). In addition, it is unclear whether this is a
structural or functional limitation (e.g. does it require the load or is the load
still only functionally recited).” Final Act. 7.
Appellant contends that by reciting that the “acromion-socket shape is
fixed prior to any load bearing,” claim 6 excludes acromion-sockets that
change shape depending on their usage state. See Reply Br. 33 (stating,
5 It appears the Examiner may have been concerned with 35 U.S.C. § 112(d)
rather than 35 U.S.C. § 112(a).
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“acromion-socket shape can be fabricated where the shape is different
depending on its usage state, e.g. pre-load, post-load, which is different than
what claim 6 recites.”).
For the same reasons discussed above regarding claims 1, 7, and 17
and the term “pre-formed,” we agree with Appellant’s contention on this
point. Accordingly, we do not sustain this portion of the rejection of claim 6
as indefinite.
Claim 20
The Examiner determines that claim 20 lacks antecedent basis for the
“load.” Final Act. 7. Appellant contends that the Amendment filed on June
9, 2015, addresses this deficiency. See Appeal Br. 21. As discussed above,
this Amendment was not entered by the Examiner. Accordingly,
Appellant’s argument on this point is not commensurate with the scope of
claim 20 on appeal. Nonetheless, not all antecedent basis issues create an
ambiguity warranting a determination of indefmiteness, and, in light of the
Specification, a person of ordinary skill in the art would understand what is
meant by “the load” in claim 20. Specifically, a person of ordinary skill in
the art would understand that this first instance of the term load should have
been preceded by the word “a” rather than “the.”
The Examiner also determines that it is “unclear what is meant by the
phrase ‘having acromion-sockets edges furthest from the neck to carry a
portion of the load,[’] noting that it is unclear how the invention operates as
claimed as there is no disclosure of this in the specification and it does not
appear to be shown in the drawings.” Final Act. 7.
As discussed above regarding the indefmiteness rejection of claim 12,
a lack of disclosure in the Specification does not necessarily result in a lack
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of clarity, and we do not agree with the Examiner that the above-noted
language in claim 20 results in indefmiteness. Accordingly, we do not
sustain this portion of the rejection of claim 20 as indefinite.
Rejection III; Anticipation
Claims 1—11 and 20
Claim 1 requires “a strap fastened to the acromion-socket.” Claims
App. 1. Claim 20 requires a substantially similar feature. Id. at 4.
The Examiner finds that strap 12 of Cast qualifies as the above-noted
fastened strap because beading/rib 14 holds strap 12 in place with the aid of
gravity. See Final Act. 8, 18; see also Reply Br. 24—25.
Appellant contends, and we agree, that being held in place with the
aid of gravity as is the case with strap 12 of Cast, is not the same as being
“fastened” as recited in claims 1 and 20. Rather, this term requires a
positive connection beyond merely resting in place. Accordingly, we do not
sustain the Examiner’s rejection of claims 1—11 and 20 as anticipated by
Cast.
Claims 12—19
The Examiner finds that Cast discloses “acromion-sockets edges
furthest from the neck designed to carry a portion of the load” (Claims App.
3) because (i) during use, weight will be distributed across the entire pad 5
of Cast, including the edges, and (ii) pad 5 of Cast is capable of being used
in this manner. Final Act. 11 (citing Cast, Fig. 1); Reply Br. 26—27.
Appellant contends that Cast fails to disclose this feature, and, indeed,
“is designed to keep the load away from the acromion-sockets’ edges
furthest from the neck.” Appeal Br. 26. Appellant also contends that the
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outer edge of pad 5 of Cast is feathered, which means it is not designed to
carry a portion of the load. Reply Br. 42 (citing Cast, 2:5—6).
The Examiner’s finding on this point is not supported by a
preponderance of the evidence. We agree with Appellant’s contention that
the outer edge of pad 5 is feathered and does not appear to be designed to
support a portion of the load. Moreover, we find no disclosure in Cast that
part of the load is carried in this location. Additionally, we do not agree
with the Examiner that, in the context of this case, being capable of being
used to carry a portion of the load satisfies the requirement that the edge be
designed to do so as recited in claim 12. See In re Giannelli, 739 F.3d 1375,
1379 (Fed Cir. 2014) (contrasting the meaning of the term “designed to”
with the meaning of the term “capable of’). Accordingly, we do not sustain
the Examiner’s rejection of claims 12—19 as anticipated by Cast.
Rejection IV; Unpatentability
Claim 20
The Examiner relies on Sattler to teach a supplemental strap, and the
Examiner’s use of this reference does not remedy the deficiency discussed
above regarding Rejection III and claim 20. See Final Act. 14—15.
Accordingly, we do not sustain the Examiner’s rejection of claim 20 as
unpatentable over Cast and Sattler.
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OPINION
I. The rejection of claims 12—20 as failing to comply with the
written description requirement is affirmed.
II. The rejection of claims 1—20 as indefinite is affirmed.
III. The rejection of claims 1—20 as anticipated by Cast is reversed.
IV. The rejection of claim 20 as unpatentable over Cast and Sattler
is reversed.
DECISION
The Examiner’s decision to reject claims 1—20 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
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