Ex Parte Turney

Patent Trial and Appeal Board

Nov 1, 2017

13625464 (P.T.A.B. Nov. 1, 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.
13/625,464 09/24/2012 Sophia C. Turney TP-TURS-CCA2 5535
62439 7590
SINORICA, LLC
20251 Century Blvd.
Suite 140
Germantown, MD 20874
EXAMINER
TROY, ABIGAIL E
ART UNIT PAPER NUMBER
3677
NOTIFICATION DATE DELIVERY MODE
11/03/2017 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):
SINORICA@GMAIL.COM
sinorica@outlook.com
pair @ sinorica.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SOPHIA C. TURNEY
Appeal 2016-002802
Application 13/625,464
Technology Center 3600
Before MICHAEL L. HOELTER, MICHELLE R. OSINSKI, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Sophia C. Turney (“Appellant”) seeks review under 35 U.S.C.
§ 134(a) of the Examiner’s decision, as set forth in the Final Office Action
dated February 28, 2014 (“Final Act.”), and as further explained in the
Advisory Action dated June 17, 2014 (“Adv. Act.”), rejecting claim 1 under
35 U.S.C. § 103(a) as unpatentable over Gentile (US 4,852,224, issued Aug.
1, 1989), Inman (US 354,144, issued Dec. 14, 1886), and Schmidt (US
1,566,976, issued Dec. 22, 1925). Claims 6—13, 15, and 16 have been
withdrawn and claims 2—5 and 14 have been canceled. Br. 2.1 We have
1 Appellant’s Brief lacks page numbering. We will refer to specific
Appeal 2016-002802
Application 13/625,464
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
BACKGROUND
The disclosed subject matter “is a bracelet having a storage section for
carrying one’s cards, such as credit cards or driver’s license.” Spec. 1,11.
10—12. Claim 1, the sole claim on appeal, is reproduced below, with
emphasis added:* 2
1. A cuff bracelet comprising:
an attachment segment;
a storage compartment;
a lid having locking mechanism;
a hinge;
the attachment segment comprises a first
attachment member and a second attachment
member;
the storage compartment comprises a
compartment cavity, a base, a first side panel, a
second side panel, a connecter panel, a locking
panel, and a protrusion;
the first attachment member and the second
attachment member being positioned below the
storage compartment;
the lid being positioned over the
compartment cavity;
pages as if each page was numbered starting with the cover page as page 1.
Citations to “Br.” refer to the Amended Appeal Brief filed on July 9, 2015.
2 This recitation reflects the After-Final Amendments filed on May
28, 2014, which the Examiner entered with the Advisory Action.
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Application 13/625,464
at least one ornamental accessory, wherein
the at least one ornamental accessory is connected
to the lid;
at least one printed graphic, wherein the at
least one printed graphic is positioned on the lid;
the first side panel and the second side panel
are oppositely positioned from each other;
the first side panel and the second side panel
are perpendicularly connected with the base;
the connecter panel and the locking panel are
oppositely positioned from each other;
the connecter panel and the locking panel are
perpendicularly connected with the first side panel
and the second side panel;
the connecter panel and the locking panel are
perpendicularly connected with the base;
the protrusion is perpendicularly connected
with the locking panel, the first side panel, and the
second side panel;
the compartment cavity is positioned
between the base, the first side panel, the second
side panel, the connector panel, and the locking
panel;
the first attachment member is vertically
positioned with the second attachment;
the first attachment member is adjacently
connected with the base;
the second attachment member is adjacently
connected with the base;
the lid comprises a hinged end and a latched
end;
the hinged end and the latched end are
oppositely positioned from each other;
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Appeal 2016-002802
Application 13/625,464
the hinged end is pivotally connected with the
connecter panel by the hinge, wherein the lid pivot
between a closed position and an opened position;
and
the latched end is engaged with the locking
panel by the locking mechanism.
DISCUSSION3
A. The Attachment Member Limitations
Claim 1 recites, among other limitations, that “the first attachment
member is vertically positioned with the second attachment; the first
attachment member is adjacently connected with the base; the second
attachment member is adjacently connected with the base.” Br. 9 (Claims
App.). In the Rejection, the Examiner provided annotated versions of
Figures 1 and 2 of Gentile, and identified certain aspects of those figures
regarding these limitations. See Final Act. 6—7 (discussing the limitations as
part of now-canceled claim 3 (see supra n.3)), 3 (providing annotated
versions of Figures 1 and 2 of Gentile).
Appellant argues that Gentile fails to teach “the first attachment
member is vertically positioned with the second attachment; the first
attachment member is adjacently connected with the base; and the second
3 With the After-Final Amendments (see supra n.2), Appellant
canceled then-pending claims 2—A and incorporated the limitations of those
claims into current claim 1. As such, in the Final Office Action, the
Examiner addressed various limitations currently recited in claim 1 under
headings regarding claims 2—\. See Final Act. 5—7. Further, because the
Final Office Action address various limitations of current claim 1 under the
headings for claims 1—4, the Examiner identifies the current rejection as a
new ground. See Ans. 2.
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Appeal 2016-002802
Application 13/625,464
attachment member is adjacently connected with the base” and that the
Examiner took the position “that the portions (C) and (D) marked by the
Examiner in Gentile’s prior art recite the above identified limitation.” Br. 3—
4; see also Final Act. 6—7, 3 (identifying element “C” as the “first
attachment member” and element “D” as the “second attachment member”).
According to Appellant, Gentile teaches “that the C and D marked by the
Examiner are just one piece of element, rather than two individual elements
as claimed.” Br. 4. Appellant contends that “the randomly marked C and D
do not have any clearly defined boundary, [and thus,] a person of ordinary
skill in the art cannot definitely know which is the element C and which is
not the element C; and which is the element D and which is not the element
D.” Id. According to Appellant, “[a]ny element should have a clear and
definite boundary to clearly define which is it and which is not it. If an
alleged element in an apparatus does not have a definite boundary, it does
not qualify as a real element.” Id. Appellant states that “[s]ince the prior art
Gentile did not teach the existence of the element C and element D, which
are artificially marked by the Examiner, also in light of the illustration, the
Examiner is respectfully requested to provide definite and clear definitions
for the element C and element D.” Id. at 5.
The Examiner responds with this annotated version of Figure 1 of
Gentile (with a shaded portion and letters C and D added by the Examiner):
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Appeal 2016-002802
Application 13/625,464
/ ^ ) V \
/ r » ^ I
/ ' Ax /\ i
1 ^ / \
vV , i \
WVf S ^ /
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Hittsfcration It Gentile et &1. Fig. 1,
modified to show limitations
Ans. 3. The original version of Figure 1 from Gentile depicts “an object
(bracelet) having shanks and Z-shaped flanges.” Gentile, col. 2,11. 46-47.
The Examiner states that the annotated figure above “clarifie[s]” that “the
positioning of container 6 (represented by shaded portion) on top of the
bracelet 3 creates a boundary that separates the first and second attachment
members (C, D).” Ans. 3.
To the extent Appellant argues that the Examiner did not adequately
identify the structure relied on as the “first attachment member” and “second
attachment member” in Gentile, we determine that the annotated figure in
the Answer (provided above) provides sufficient specificity. Cf. 37 C.F.R.
§ 1.104(c)(2) (2014) (“When a reference is complex or shows or describes
inventions other than that claimed by the applicant, the particular part relied
on must be designated as nearly as practicable.”).
Further, to the extent Appellant asserts error because Gentile does not
discuss the specific structures now identified as elements C and D by the
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Appeal 2016-002802
Application 13/625,464
Examiner, we note that it is not improper for an examiner to rely on a figure
to satisfy a claim limitation, even if the relevant aspect is not addressed in
the text of the reference. See In re Aslanian, 590 F.2d 911,914 (CCPA
1979) (“[A] drawing in a utility patent can be cited against the claims of a
utility patent application even though the feature shown in the drawing was
unintended or unexplained in the specification of the reference patent.”).
We are also not apprised of error by Appellant’s argument (for
example) that “element C and element D are truly just one piece” “rather
than two individual elements as claimed.” Br. 4. As noted by the Examiner,
Figure 7 of the Specification depicts an embodiment in which the
“attachment members . . . are integrally formed with the base.” Ans. 4; see
Spec., Fig. 7 (showing “first attachment member” 11 and “second
attachment member” 12 with the same hatching as base 22 (see Fig. 3));
37 C.F.R. § 1.84(h)(3) (2014) (“Hatching must be used to indicate section
portions of an object.... The various parts of a cross section of the same
item should be hatched in the same manner and should accurately and
graphically indicate the nature of the material(s) that is illustrated in cross
section. The hatching of juxtaposed different elements must be angled in a
different way.”). Thus, we construe claim 1 to include embodiments in
which the “first attachment member” and “second attachment member” are
different portions of a single unitary structure. See Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (stating that a
construction that excludes a preferred embodiment “is rarely, if ever, correct
and would require highly persuasive evidentiary support”); Ans. 4 (stating
“that a one-piece structure does not necessarily preclude the structure from
having multiple ‘members,’ as . . . [Ajppellant has suggested”).
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Appeal 2016-002802
Application 13/625,464
We turn now to Appellant’s discussion of an annotated version of
Figure 4 from the Specification and the argument that “[i]n the present
invention, the first attachment member and the second attachment member
are structurally definite.” Br. 4. This argument does not apprise us of error
because “the mere fact that the . . . drawings depict a particular embodiment
. . . does not operate to limit the claims to that specific configuration.”
Anchor Wall Sys., Inc. v. RockwoodRetaining Walls, Inc., 340 F.3d 1298,
1306-07 (Fed. Cir. 2003). Here, Appellant has not demonstrated why the
claim term “attachment member” should be limited as argued.
For these reasons, Appellant has not shown error in the findings that
identified elements C and D satisfy the requirements for a “first attachment
member” and “second attachment member” under the broadest reasonable
interpretation of those terms.
B. The Protrusion Limitation
Claim 1 also recites that “the storage compartment comprises ... a
protrusion.” Br. 8 (Claims App.). In the Rejection, the Examiner found that
“Inman teaches a similar jewelry storage compartment (Tockef, Figs. 1—5)
having ... a protrusion (flange projecting inwardly from sidewalls of
‘halves’ A, A') inside the compartment.” Final Act. 4. In the Advisory
Action, the Examiner provided this annotated version of Figure 4 of Inman
(with a shaded portion and markings identifying various structures added by
the Examiner)4:
4 The panel in this Appeal has added a dotted oval to the Examiner’s
annotated figure. The features in this oval will be discussed below.
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Application 13/625,464
Connecter Protrusion
Illustration 3: Inman Fig, 4, modified to show portions
Adv. Act. 4. The original version of Figure 4 from Inman depicts one half
of the locket detached (with the other half shown in Figure 3). Inman 1,
11. 22—24. In the Advisory Action, the Examiner stated, “[a]s highlighted [in
the annotated figure above,] Inman teaches a storage compartment having a
protrusion, which is defined by Merriam-Webster as ‘a part that sticks out.’”
Adv. Act. 3^4.
First, Appellant argues that “the protrusion alleged by the Examiner in
Inman’s Figure 4 does not exist” and that “[i]n [the annotated version of
Inman’s] Figure 4, what has been marked and alleged by the Examiner is a
shadow, not a protrusion.” Br. 6.
This argument does not address the rejection as articulated. Appellant
argues as if the Examiner had identified as the “protrusion” only the spaced
lines used for shading (contained within the dotted oval added by the panel
to the annotated figure provided above (see supra n.4)). See also 37 C.F.R.
§ 1.84(m) (“Spaced lines for shading are preferred. These lines must be
thin, as few in number as practicable, and they must contrast with the rest of
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Appeal 2016-002802
Application 13/625,464
the drawings.”). Although the shading lines are at the end of the reference
arrow used by the Examiner to identify the “Protrusion” (see Adv. Act. 4),
we understand the Examiner to have identified not the spaced lines, but
rather the entire upper surface shaded by the Examiner. Compare Adv. Act.
4 (providing shading on the upper surface), with Inman, Fig. 4 (providing no
shading on the upper surface). This understanding is supported by the
revised annotated version of Figure 4 of Inman provided in the Answer, in
which the reference arrow identifying the “Protrusion” is clearly directed to
the entire upper surface shaded by the Examiner rather than the spaced lines.
See Ans. 4—5 (providing annotated version of Figure 4 of Inman and
identifying the “protrusion” as the entire darkened portion”). Appellant has
not shown error in the finding that the structure identified satisfies the
requirement for a “protrusion.” See Final Act. 4; Adv. Act. 3^4; Ans. 4—5.
Second, Appellant provides an annotated version of Figure 3 from the
Specification and argues that “[o]ne of ordinary skill in the art can find the
element 27 illustrated in Figure 3 of the present invention is a true
protrusion, which has the specific function to provide an obstruction for the
stored objects, such as credit cards and identification card[s]. . . .” Br. 6.
The Specification, in discussing Figure 3, provides that “[t]he
protrusion 27 provides an obstruction for the stored objects, such as credit
cards and identification card, so that the stored objects do not fall out from
the compartment cavity 21 when the compartment cavity 21 is
perpendicularly positioned 30 with the ground surface.” Spec. 3,11. 27—30.
We decline to import the disclosed functions, however, into the “protrusion”
limitation, which recites only structural elements. See Toro Co. v. White
Consol. Indus., Inc., 266 F.3d 1367, 1371 (Fed. Cir. 2001) (“An invention
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Application 13/625,464
claimed in purely structural terms generally resists functional limitation.”)
(citing Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1367 (Fed. Cir.
2001) (“Where the function is not recited in the claim itself by the patentee,
we do not import such a limitation.”) (citations omitted)). Moreover, to the
extent such functionality is required by the “protrusion,” Appellant has not
shown why the structure identified would not perform such function.
Third, Appellant argues that “[i]n the entire [specification, Inman did
not disclose any protrusion at all.” Br. 6 (emphasis omitted). Although the
written description of Inman does not discuss the specific structure identified
by the Examiner as the “protrusion,” as noted above, it is not improper for
an examiner to rely on a figure to satisfy a claim limitation, even if the
relevant aspect is not addressed in the text of the reference. See Aslanian,
590 F.2d at 914.
For these reasons, we sustain the rejection of claim 1.
DECISION
We affirm the decision to reject claim 1.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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