Ex Parte Reda

Patent Trial and Appeal Board

Sep 7, 2017

13838973 (P.T.A.B. Sep. 7, 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.
13/838,973 03/15/2013 Kareem Reda Y14.12-0005 8207
27367 7590 09/11/2017
WESTMAN CHAMPLIN & KOEHLER, P.A.
SUITE 1400
900 SECOND AVENUE SOUTH
MINNEAPOLIS, MN 55402
EXAMINER
YIP, WINNIE S
ART UNIT PAPER NUMBER
3636
NOTIFICATION DATE DELIVERY MODE
09/11/2017 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):
docketing @ wck.com
tsorbel@wck.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAREEM RED A
Appeal 2017-003782
Application 13/838,973
Technology Center 3600
Before JOSEPH L. DIXON, ERIC S. FRAHM, and JOYCE CRAIG,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-003782
Application 13/838,973
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the Final
Rejection of claims 1—5. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The Examiner has rejected (i) claims 1—3 under 35 U.S.C. § 112(b) as
being indefinite; (ii) claims 1 and 3 under 35 U.S.C. § 102(b) as being
anticipated by Stuby (US 2013/0256253 Al; published Oct. 3, 2013) (Non-
Final Act. 3^4 (mailed June 23, 2015); Ans. 3); (iii) claims 1—3 under
35 U.S.C. § 102(b) as being anticipated by both Varon (US 4,316,547;
issued Feb. 23, 1982) and Kanai (US 5,368,364; issued Nov. 29, 1994); and
(iv) claims 1—5 under 35 U.S.C. § 103(a) as being unpatentable over Hsia
(US 5,765,922; issued June 16, 1998) in view of Barron (US 4,557,446;
issued Dec. 10, 1985) (Non-Final Act. 2—6; Ans. 2—6; Suppl. Ans. 3—7). The
Examiner has withdrawn the rejection of claims 1—3 under 35 U.S.C.
§ 112(b) as being indefinite (Ans. 6; Suppl. Ans. 7).
We agree with the Examiner (Ans. 6; Suppl. Ans. 7) that claim 1
recites a walker frame and a tray in the preamble (as is also recited in the
body of claim 1), but we do not agree with the Examiner that the recitation
in claim 1 recites merely an intended use. We disagree with the Examiner’s
basic premise of interpreting claim 1 as a sub-combination which only
recites a spacer, and not giving the claim terms “a walker frame” and “a
removable tray” any patentable weight based on not being positively recited
in the body of the claim (Non-Final Act. 3—5; Ans. 3—5; Suppl. Ans. 4—6).
“During examination, ‘claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
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Appeal 2017-003782
Application 13/838,973
interpreted by one of ordinary skill in the art.’” In re Am. Acad, of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Morris, 127 F.3d 1048,
1053—54 (Fed. Cir. 1997). Further, a claim term should be given its ordinary
meaning in the pertinent context, unless the patentee has made clear its
adoption of a different definition or otherwise disclaimed that meaning. See,
e.g., Thornerv. Sony ComputerEntm’t Am. LLC, 669 F.3d 1362, 1365 (Fed.
Cir. 2012). When construing asserted claims, claim terms are given “their
ordinary and accustomed meaning as understood by one of ordinary skill in
the art.” Dow Chem. Co. v. Sumitomo Chem. Co., 257 F.3d 1364, 1372
(Fed. Cir. 2001); Phillips v. AWHCorp., 415 F.3d 1303, 1312-13 (Fed. Cir.
2005) (en banc). And, intrinsic evidence, such as “the specification,. . . may
shed contextual light” on the ordinary and customary meaning of a claim
term. Aventis Pharms. Inc. v. Amino Chems. Ltd., 715 F.3d 1363, 1373
(Fed. Cir. 2013). “The construction that stays true to the claim language and
most naturally aligns with the patent’s description of the invention will be, in
the end, the correct construction.” Phillips, 415 F.3d at 1316. And, because
a patent is a fully integrated written instrument, the claims “must be read in
view of the specification, of which they are a part.” Phillips, 415 F.3d at
1315 (quoting Markman v. WestviewInstruments, Inc., 52 F.3d 967, 979
(Fed. Cir. 1995) (enbanc), aff’d, 517 U.S. 370 (1996)).
“Whether to treat a preamble as a limitation is a
determination resolved only on review of the entire [ ] . . . patent to gain an
understanding of what the inventors actually invented and intended to
encompass by the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com,
Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (internal quotation marks, brackets,
and citation omitted); see Applied Materials, Inc. v. Advanced Semiconductor
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Application 13/838,973
Materials Am., Inc., 98 F.3d 1563, 1572-73 (Fed. Cir. 1996) (stating that
whether the preamble constitutes a limitation “is determined on the facts of
each case in light of the overall form of the claim, and the invention as
described in the specification and illuminated in the prosecution history”).
“[TJhere is no simple test” for understanding the import of the preamble, but
“we have set forth some general principles to guide th[e] inquiry.” Am.
Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010).
“Generally, the preamble does not limit the claims.” Allen Eng ’g
Corp. v. BartellIndus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002) (citation
omitted). However, a preamble may be limiting if: “it recites essential
structure or steps”; claims “depend[] on a particular disputed preamble
phrase for antecedent basis”; the preamble “is essential to understand
limitations or terms in the claim body”; the preamble “recit[es] additional
structure or steps underscored as important by the specification”; or there
was “clear reliance on the preamble during prosecution to distinguish the
claimed invention from the prior art.” Catalina Mktg., 289 F.3d at 808
(citations omitted).
On the other hand, the reverse is also true. A preamble is not a claim
limitation if the claim body “defines a structurally complete invention . . .
and uses the preamble only to state a purpose or intended use for the
invention.” Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). “[PJreamble
language merely extolling benefits or features of the claimed invention does
not limit the claim scope without clear reliance on those benefits or features
as patentably significant.” Catalina Mktg., 289 F.3d at 809 (citations
omitted).
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Appeal 2017-003782
Application 13/838,973
We have reviewed Appellant’s arguments in the Appeal Briefs (Br. 9—
25), the Examiner’s rejection (Non-Final Act. 3—6; Ans. 2—6; Suppl. Ans. 3—
7), and the Examiner’s response (Ans. 7—16; Suppl. Ans. 8—17) to
Appellant’s arguments. Independent claims 1 and 4 on appeal both
positively recite a mechanism and methods for securing/attaching “a
removable walker tray to a walker frame.” Each of independent claims 1
and 4 also require at least one spacer with a surface for frictionally engaging
a walker handle and the removable walker tray. We find the body of the
claim ties in with the preamble to breathe life into the limitations
“removable tray” and “walker frame” (clearly and plainly, a walker frame is
the frame of a walker, thus requiring the presence of a walker). In light of
Appellant’s Figures 1 and 7, showing a walker and/or removable tray for a
walker, as well as the Title (Method and Mechanism for Securing a
Removable Tray to a Walker), it is clear that the preamble must be treated as
a limitation based on our review of the entire patent application. Catalina
Mktg., 289 F.3d at 808. In other words, our review of the entire application
on appeal reveals that what Appellant intends the claim to encompass is a
walker with a removable tray. Therefore, we are constrained by the record
before us to conclude that the Examiner erred in rejecting claims 1—5 on the
basis that the recited walker frame and tray are not to be given patentable
weight when interpreting the claims, leaving claim 1 only to claim a spacer,
and claim 4 only to claim a chair, as opposed to a walker with a removable
tray.
In view of the foregoing, we do not sustain the Examiner’s (i)
anticipation rejections of claims 1—3, and/or (ii) obviousness rejection of
claims 1—5.
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Application 13/838,973
CONCLUSION
Appellant has persuaded us of error in the Examiner’s decision to
reject claims 1—5.
DECISION
We reverse the decision of the Examiner to reject claims 1—5.
REVERSED
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