Ex Parte Turturro et al

Patent Trial and Appeal Board

Dec 17, 2018

13961683 (P.T.A.B. Dec. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/961,683 08/07/2013
27939 7590 12/18/2018
Philip H. Burrus, IV
Burrus Intellectual Property Law Group LLC
222 12th Street NE
Suite 1803
Atlanta, GA 30309
FIRST NAMED INVENTOR
Michael Turturro
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.
BPMDL0068MT (10822U) 5933
EXAMINER
YIP, WINNIE S
ART UNIT PAPER NUMBER
3636
MAIL DATE DELIVERY MODE
12/18/2018 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 MICHAEL TURTURRO and EDWARD DROWER
Appeal2017-009994
Application 13/961,683 1
Technology Center 3600
Before JEREMY M. PLENZLER, LISA M. GUIJT, and
NATHAN A. ENGELS, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 3-16, and 21-24. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Medline Industries, Inc. as the real party in interest.
Appeal Br. 2.
Appeal2017-009994
Application 13/961,683
ILLUSTRATIVE CLAIM
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A device, comprising:
a crutch comprising at least two vertical crutch columns;
and
a substantially flat panel attached to the crutch interior to
the at least two vertical crutch columns;
the substantially flat panel comprising a marking receiving
panel to accept a marking from a marking instrument;
the substantially flat panel attached to the crutch interior
to the at least two vertical crutch columns in at least two
dimensions.
THE REJECTIONS
Claims 1, 3-5, 10, and 12-16 stand rejected under 35 U.S.C.
§ I02(a)(l) as being anticipated by McBride (US 4,850,383; issued July 25,
1989).
Claims 1, 3-16, and 21-24 stand rejected under 35 U.S.C. § 103 as
being unpatentable in view of Woods et al. (US 5,340,005; issued Aug. 23,
1994) and McKinney et al. (US 2009/0294499 Al; published Dec. 3, 2009).
ANALYSIS
Rejection of Claims 1, 3-5, 10, and 12-16 as Anticipated by McBride
Appellants argue the Examiner erred in finding McBride anticipates
claim 1 because, according to Appellants, McBride fails to teach a
"substantially flat panel" (Appeal Br. 12) comprising a "marking receiving
panel" (id. at 14--15), as claimed. Regarding the first disputed limitation,
Appellants argue McBride describes a bag made of flexible material that
bulges outwardly and is designed to conform to the shape of articles within
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Application 13/961,683
the bag. Appeal Br. 12-14 (citing McBride 2:62---67, 3: 1-12, 17-23, 48,
Figs. 1, 3); Reply Br. 8. Appellants additionally argue that McBride's bag
bulges outward on both sides of the crutch columns such that McBride's bag
is not substantially flat and interior to the at least two vertical crutch
columns in at least two dimensions. Reply Br. 9 ( citing McBride Fig. 1 ).
The Examiner determines, and we agree, that McBride's disclosures
fall within a broad but reasonable interpretation of the claimed "substantially
flat panel." Ans. 10. As explained by the Examiner, nothing limits claim 1
to having only a single substantially flat panel, and the fact that McBride
discloses a bag having a front panel and a back panel does not conflict with
claim 1. See, e.g., Appeal Br. 24 ( claim 16 reciting a bag, pouch, or other
accessories that may be attached to the substantially flat panel). Further, by
qualifying the claimed panel as "substantially" flat, claim 1 permits at least
some variation from "flat."
We do not need to delimit the precise boundaries of the "substantially
flat" panel recited in claim 1 because at least McBride's Figures 3 and 4
depict one panel of McBride's bag as actually flat, with only the opposite
panel having a rounded shape. Further, McBride depicts its invention as
disposed within the interior of a crutch, and McBride describes that its bag
will "conform, at least generally, to the crotch area of substantially all Y-
typed crutches below the handle or handgrip thereof." McBride 1 :37-39.
To the extent that Appellants argue that the "at least two dimensions"
recitation in claim 1 would somehow require a panel that falls within only a
two-dimensional plane defined by the vertical crutch columns, without any
bulge that would purportedly result from McBride's use of a flexible
material (see Reply Br. 9), that argument is inconsistent with the claim's
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Application 13/961,683
recitation that the panel is (a) "substantially" flat, as opposed to entirely or
completely flat, and (b) disposed interior to the vertical columns in at least
two dimensions, indicating that the panel need not be disposed interior to the
columns in the third dimension. Both of those recitations would be
superfluous if claim 1 were interpreted to require a completely flat panel or
to otherwise exclude some variation in the direction perpendicular to the
axes of handle and vertical columns.
We also disagree with Appellants' arguments that McBride fails to
disclose a "marking receiving panel," as recited. Appellants argue McBride
fails to disclose any marking receiving surface and that the Examiner erred
in failing to present evidence that McBride's bag can receive a marking.
Appeal Br. 14--15; Reply Br. 8.
Although Appellants do not expressly address the scope of this
limitation, contrary to Appellants' suggestion, we agree with the Examiner
the recited "marking receiving panel to accept a marking from a marking
instrument" is relatively broad in scope. Consistent with the plain language
of claim 1, Appellants' Specification states that "the marking receiving panel
is manufactured from a marking receiving material" (Spec. ,r 22), listing as
examples wood, laminated or otherwise reinforced paper products, and
"[ s Jome metals having a matte finish, including rolled aluminum, [that are]
suitable for receiving markings and thus can be marking receiving materials"
(id. ,I 36).
The Specification states that the fiberglass used to make casts does not
constitute a marking receiving material, explaining that markings from
markers and ink pens applied to fiberglass are slow to dry, impermanent, and
smudge and smear easily. Spec. ,r 25 (contrasting casts made of plaster).
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Application 13/961,683
But the Specification also states that a material can be a marking receiving
material even if it allows a marking to be erased: "[t]he marking receiving
material and/or coating can be adapted so that markings are easily erasable
by making the coating glossy." Id. 28. In sum, other than excluding
"fiberglass," the Specification suggests that a wide variety of materials fall
within the scope of the recited "a marking receiving panel to accept a
marking from a marking instrument."
As cited by the Examiner, McBride discloses that its bag can be
"constructed of flexible fabric material" and "may be manufactured in
various colors and of various materials." McBride 2:66-3: 1. Considering
the claim language in the context of claim 1, in light of the Specification, we
agree with the Examiner that McBride's disclosure of a bag made of a
"fabric" falls within the scope of "a marking receiving panel to accept a
marking from a marking instrument," as recited in claim 1. See Ans. 3--4
(stating that McBride bag is "inherently" capable of receiving a marking
from a suitable marking instrument such as an ink pen).
We disagree with Appellants' arguments that the Examiner relies only
on personal knowledge or personal testimony to support that finding or that
the Examiner should be tasked with finding a reference in addition to
McBride. Appeal Br. 14--15; Reply Br. 8-9. As noted above, we agree with
the Examiner that McBride's disclosure of a bag made of fabric falls within
a broad but reasonable interpretation of the claimed marking receiving panel,
and the Examiner's finding that fabric is capable of "accept[ing] a marking
from a marking instrument" properly shifts the burden to Appellants to
establish that McBride's fabric would not have been capable of performing
the recited function. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997)
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Application 13/961,683
( explaining that where the prior art includes all of the structural elements of
a claim and an examiner presents reason to believe that prior art is capable
of performing a recited function, the burden shifts to the applicant to show
that the prior art is not capable of performing the claimed function); In re
Swinehart, 439 F.2d 210,213 (CCPA 1971). Appellants do not argue that
McBride's bag made of fabric would have been incapable of accepting
marking from a marking instrument.
Accordingly, having considered the Examiner's rejection in light of
each of Appellants' arguments and the evidence of record, we disagree with
Appellants' and agree with the Examiner's findings that claim 1 is
anticipated by McBride. We sustain the Examiner's rejection of claim 1 as
anticipated by McBride, as well as the Examiner's rejection of claims 3-5,
10, and 12-162 as anticipated by McBride.
Rejection of Claims 1, 3-16, and 21-24 as Unpatentable in View of Woods
and McKinney
Regarding the rejection based on combined teachings of Woods and
McKinney, Appellants argue that Woods's structure "is coupled to the
exterior of Woods's crutch columns, i.e., exactly the opposite of what is
recited in claim 1." Appeal Br. 18 (emphasis omitted). We disagree.
Claim 1 recites that the substantially flat panel is "attached to the
crutch interior to the at least two vertical crutch columns in at least two
dimensions." As noted above, by reciting that the substantially flat panel is
attached to the crutch interior to the vertical columns in at least two
dimensions, the plain language of claim 1 does not require that the panel is
disposed interior to the vertical columns in all three dimensions.
2 Appellants do not argue the dependent claims separately. Appeal Br. 11.
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Application 13/961,683
Appellants' Figure 4, copied below, and its related description
depicted the recited three dimensions as 440, 441, and 442.
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Appellants' Figure 4 depicts substantially flat panel 322 attached to vertical
columns 404 and 405 of crutch 400. Spec. ,r 45. "In this embodiment, the
substantially flat panel 322 is thinner ( dimension 441 into the page) than are
vertical columns 404,405, so the substantially flat panel 322 is attached to
the crutch 400 interior to the at least two vertical columns 404,405 in at least
two dimensions 440,441." Id. As stated in the Specification, "[s]ince the
substantially flat panel 322 is bounded by the handgrip 413 and the upper leg
403, the substantially flat panel 322 is actually attached to the crutch 400
interior to a frame 443 defined by the crutch in three dimensions,
440,441,442." Id. Claim 1, however, requires something different than a
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Application 13/961,683
substantially flat panel attached to a crutch interior to a frame in three
dimensions.
By reciting "interior to the at least two vertical crutch columns in at
least two dimensions," the scope of claim 1 is not limited to instances in
which a panel is located interior to the crutch in all three dimensions-had
Appellants intended to so limit the claim, Appellants could have done so.
To give meaning to the requirement of a substantially flat panel that is
interior to the crutch in at least two dimensions, the scope of claim 1 must
include arrangements such as those depicted in Appellants Figure 4 and
arrangements in which a panel is interior in only two dimensions.
Appellants' Specification suggests that one arrangement in which a
substantially flat panel could be interior to dimensions 440 and 442 but not
441 would be an instance in which the substantially flat panel is thicker than
the vertical crutch columns. Cf Spec. ,r 45 (noting that the panel is "thinner
( dimension 441 into the page) than are vertical columns 404,405" and thus
interior in dimensions 440 and 441 ). Accordingly, we agree with the
Examiner that claim 1 does not require that the substantially flat panel is
located wholly interior to the two crutch columns. Ans. 14--15.
We also agree with the Examiner that the panels taught by Woods fall
within the scope of claim 1. Ans. 14--15. Specifically, reading the plain
language of claim 1 in light of the Specification, we agree with the Examiner
that the embodiment of Woods' s Figure 7 depicts a substantially flat panel
interior to the crutch in the horizontal and vertical dimension as depicted on
the page, even if the panel is not interior to the columns in all three
dimensions. In other words, as Appellants' Figure 4 depicts a substantially
flat panel interior to a crutch in three dimensions, 440, 441, 442 (Spec. ,r 45),
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Application 13/961,683
Woods' s Figure 7 depicts a substantially flat panel interior to the crutch in
what Appellants' Figure labels as dimensions 440 and 442, even if the panel
not "interior" to the crutch in dimension 441. Woods' s panel is also
attached ( or secured against removal) in at least two dimensions. As the
Examiner explains, "panel (42) [is] attached to the cross bar of the crutch in
the interior of the two vertical crutch columns by fasteners in at least two
dimensions (e.g., by a folding top (68) with snap fasteners (30 and 70) or
Velcro fasteners 72, 74)." Final Act. 4 (citing Woods, Figs. 7 and 9). That
is, panel 42 in Woods is both located within the vertical crutch columns in at
least two dimensions (horizontal and vertical, for example) and secured
against removal (i.e., "attached") in at least those same two dimensions (as
well as a third dimension).
We also agree with the Examiner's "alternative" position regarding
Woods's Figure 10. Ans. 15. Woods's Figure 10 depicts a panel attached to
and bounded on at least three sides by frame members 102. See Woods
5:63---6:16, Fig. 10; see also Spec. ,r 45 (describing Figure 4 as disclosing
panel 322 bounded by handgrip 413, upper leg 403, and vertical columns
404, 405 and therefore attached to crutch 400 interior to frame 443 in three
dimensions). Reading claim 1 in light of the Specification, Woods' s Figure
10 suggests a substantially flat panel attached interior to the two vertical
columns in three dimensions.
Finally, Appellants' arguments that McKinney teaches a backpack
and lacks any teachings of a crutch (Appeal Br. 19--20) are unpersuasive as
those arguments attack the references individually without substantively
addressing the combined teachings of the references. See In re Keller, 642
F.2d413, 426 (CCPA 1981) ("one cannot show non-obviousness by
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Application 13/961,683
attacking references individually where, as here, the rejections are based on
combinations of references"). The Examiner's rejection does not require
bodily incorporation of McKinney's device with Woods's teachings; the
Examiner cites McKinney as evidencing known fabrics that are capable of
accepting a marking from a marking instrument. Ans. 9.
Accordingly, having considered the Examiner's rejections in light of
each of Appellants' arguments and the evidence of record, we disagree with
Appellants' arguments and sustain the Examiner's rejection of claim 1 as
being unpatentable in view of the combination of Woods and McKinney, as
well as the Examiner's rejection of dependent claims 3-16, and 21-24 3 as
being unpatentable in view of Woods and McKinney.
DECISION
We affirm the Examiner's rejection of claims 1, 3-5, 10, and 12-16
under 35 U.S.C. § 102(a)(l) as being anticipated by McBride.
We reverse the Examiner's rejection of claims 1, 3-16, and 21-24
under 35 U.S.C. § 103 as being unpatentable in view of Woods and
McKinney.
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
3 Appellants do not argue the dependent claims separately. Appeal Br. 11.
10