Ex Parte Thompson

Patent Trial and Appeal Board

Sep 18, 2018

13920519 (P.T.A.B. Sep. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/920,519 06/18/2013 Julie Tabor Thompson
24112 7590 09/18/2018
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5984-009 3179
EXAMINER
WOOD, KIMBERLY T
ART UNIT PAPER NUMBER
3631
MAIL DATE DELIVERY MODE
09/18/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte JULIE TABOR THOMPSON
Appeal 2017-011657
Application 13/920,519
Technology Center 3600
Before JOHN C. KERINS, EDWARD A. BROWN, and
ANNETTE R. REIMERS, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Julie Tabor Thompson (Appellant) 1 appeals under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1-7 and 9-21, which are all
the pending claims. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 The Appeal Brief identifies the real party in interest as the inventor, Julie
Tabor Thompson. Br. 2.
Appeal2017-011657
Application 13/920,519
CLAIMED SUBJECT MATTER
Claims 1, 5, and 11 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter:
1. An infant item holder comprising:
a base that includes a curved interior longitudinal passage
that extends through and is enclosed within the base, the passage
includes a first end at a first terminal end of the base and a second
end at a second terminal end of the base, the passage having a
first length measured between the first and second ends of the
passage;
an elongated member that extends through the passage
with a first end of the elongated member that extends outward
from the first end of the passage at the first terminal end of the
base and a second end of the elongated member that extends
outward from the second end of the passage at the second
terminal end of the base, the elongated member having a second
length measured between the first and second ends, the second
length being greater than the first length;
a first infant item attached to the first end of the elongated
member;
a second infant item attached to the second end of the
elongated member;
the elongated member movably positioned in the passage
between a first orientation with the elongated member extending
farther outward from the first end of the passage than the second
end of the passage, and a second orientation with the elongated
member extending outward from the second end of the passage
farther than the first end of the passage.
Br. 11 (Claims App.).
REJECTIONS
Claims 1-7 and 9-18 stand rejected under 35 U.S.C. § 102(b) as
anticipated by, or, in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over, Battista (US 4,691,917, issued Sept. 8, 1987).
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Application 13/920,519
Claims 19 and 20 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Battista and Bellamy-Noseworthy (US 2007/0012822 Al,
published Jan. 18, 2007).
Claim 21 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Battista and Sagman (US 6,434,797 Bl, issued Aug. 20, 2002).
ANALYSIS
Rejection of Claims 1-7 and 9-18
Appellant argues claims 1-7 and 9-18 as a group. See Br. 4---6. We
select claim 1 as the representative claim of the group, and claims 2-7 and
9-18 stand or fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Battista discloses every limitation in claim 1.
Final Act. 2-5. More specifically, the Examiner finds that Battista discloses,
inter alia, a device comprising a base ( collar 60, stiffening means 62); an
elongated member (inelastic wire means 70); a first infant item (hand
support means 11) attached to a first end of the elongated member; and a
second infant item (hand support means 30) attached to a second end of the
elongated member. Id. at 2--4 ( citing Battista, Figs. 1, 2).
Appellant disagrees that Battista discloses a first infant item and a
second infant item. Br. 4. Appellant argues that an "infant item," as used in
the Specification, is an item that is to be used by a child, such as a pacifier,
toy, rattle, or teether. Id. at 4--5 (citing Spec. ,r,r 3, 31). Appellant contends
that the infant item holder is constructed for the infant items to remain
within sight and/or reach of the infant, whereas Battista is directed to a
device for providing an enhanced range of motion to the arms and hands of a
user with physical disabilities. Id. at 5 (citing Battista col. 1, 11. 11-16).
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Application 13/920,519
Id.
According to Appellant:
[ o ]ne of ordinary skill in the art upon reading the specification
would understand that a hand member is not an infant item as the
term is used in the present application. Just because an item may
be used by an infant does not make it an infant item. Using the
logic of the Final Office Action, scissors and other sharp objects
would also constitute an infant item because they could be used
by an infant. This is not a correct interpretation of this claim
term. This overly-broad interpretation basically gives this claim
term no meaning.
The Examiner responds that it is reasonable to consider each of
Battista's hand support means 11 and 30 as an "infant item," as claimed.
Ans. 8. The Examiner explains that the Specification does not provide a
special definition of an "infant item," and the description that "[i]nfants
often play with and use various items that occupy their attention" supports
the rejection. Id. at 8-9 (citing Spec. ,r 3).
The Examiner has the better position. First, claim 1 does not recite
any structural limitations for either the first infant item or the second infant
item that distinguish these elements over Battista's hand support means 11
and 30. Second, the Specification does not explicitly define an "infant item"
to preclude the Examiner's findings with regard to Battista's hand support
means 11 and 30. To the contrary, the Specification describes infant items
broadly as including things that infants can grasp or hold in their hands. See
Spec. ,r 3. In view of this description, we agree with the Examiner that each
ofBattista's hand support means 11 and 30 can be considered an "infant
item," as claimed, because an infant could grasp or hold these elements.
Accordingly, we sustain the rejection of claim 1, and of claims 2-7
and 9-18, which are not separately argued, as anticipated by Battista.
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Application 13/920,519
Regarding the Examiner's alternative obviousness rejection of claims
1-7 and 9-18 over Battista, a disclosure that anticipates a claim under 3 5
U.S.C. § 102 also renders it unpatentable under 35 U.S.C. § 103, for
anticipation is the epitome of obviousness. See In re Pearson, 494 F .2d
1399, 1402 (CCPA 1974); and In re Fracalossi, 681 F.2d 792, 794 (CCPA
1982). Hence, we need not reach Appellant's contentions directed to the
alternative obviousness rejection in this appeal, because we have determined
that Battista anticipates claims 1-7 and 9-18, and thus, also renders these
claims obvious.
Rejection of Claims 19 and 20
Claims 19 and 20, which depend from claims 1 and 5, respectively,
both call for "an attachment member attached to the base between the first
and second terminal ends." Br. 14--15 (Claims App.). As further recited in
claim 19, the attachment member comprises a body that extends away from
the base in a direction opposite from the first and second terminal ends to
connect the base to a support such that the first and second terminal ends of
the base face outward away from the support." Id. (emphasis added).
The Examiner finds that the support arm 70 and fastener 60 disclosed
in Bellamy-Noseworthy correspond to the claimed "attachment member."
Final Act. 5-6; see also Bellamy-Noseworthy, Fig. 1. The Examiner reasons
that it would have been obvious to modify Battista's device to include the
attachment member as a means to support the device to an article for storage
or hanging out of the way when not in use. Id. at 6.
Appellant contends that one of ordinary skill in the art would not have
modified Battista by adding an attachment member. Br. 8. Appellant
explains that Battista's device is worn over the neck and shoulders of the
user, and, as such, modifying the device by adding an attachment member
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Application 13/920,519
that extends outward away from the terminal ends of the body, as required
by claims 19 and 20, would serve little to no purpose during use. Id. at 8-9.
Bellamy-Noseworthy's device is an infant bottle holder for attachment
to an infant seat (Bellamy-Noseworthy Abstract, Figs. 1, 3). The Examiner
does not explain adequately how or why one of ordinary skill in the art
would have modified Battista by attaching support arm 70 and fastener 60 of
Bellamy-Noseworthy's infant bottle holder to collar 60 of Battista between
its terminal ends such that a "body" of the "attachment member" extends
away from collar 60 in a direction opposite from the terminal ends to
connect collar 60 to a support such that the terminal ends face outward away
from the support, as claimed. Attaching support arm 70 and fastener 60 to
collar 60 of Battista in this manner would, as Appellant explains, interfere
with use of Battista's device yet provide no apparent benefit. See Br. 8-9.
Accordingly, we agree with Appellant that the Examiner's rationale for
modifying Battista in view of Bellamy-Noseworthy is not supported by
rational underpinnings.
Thus, we do not sustain the rejection of claims 19 and 20 over Battista
and Bellamy-N oseworthy.
Rejection of Claim 21
Claim 21 depends from claim 1 and recites, "wherein the first and
second infant items are pacifiers." Br. 15 (Claims App.). The Examiner
finds that Sagman discloses a retractable pacifier, and reasons that it would
have been obvious to modify Battista's device to include the retractable
pacifier of Sagman to allow the device to have a pleasingly appealing item
that would promote children to use the device. Final Act. 7.
Appellant contests the Examiner's position. Br. 8. We agree with
Appellant that the Examiner has not provided an adequate reason with a
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rational underpinning as to why one of ordinary skill in the art would have
modified Battista's hand support means 11 or hand support means 30 to be,
or to include, a retractable pacifier, as taught by Sagman. Accordingly, we
do not sustain the rejection of claim 21 over Battista and Sagman.
DECISION
We affirm the rejections of claims 1-7 and 9-18, and reverse the
rejections of claims 19-21.
No time period for taking any subsequent action in connection with
this appeal may be extended according to 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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