15046989 - (D) (P.T.A.B. Jun. 3, 2020)

Kristi Mitchell

Patent Trials and Appeals BoardJun 3, 2020

15046989 - (D) (P.T.A.B. Jun. 3, 2020)

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. 15/046,989 02/18/2016 Kristi L. Mitchell KCT-P0001-02-US 2124 132414 7590 06/03/2020 Indiana University Maurer School of Law Intellectual Property Legal Clinic 211 South Indiana Avenue Bloomington, IN 47405 EXAMINER ATTEL, NINA KAY ART UNIT PAPER NUMBER 3734 MAIL DATE DELIVERY MODE 06/03/2020 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 KRISTI L. MITCHELL Appeal 2019-005968 Application 15/046,989 Technology Center 3700 Before JOHN C. KERINS, WILLIAM A. CAPP, and MICHAEL L. WOODS, Administrative Patent Judges. Opinion for the Board filed by WOODS, Administrative Patent Judge Opinion Concurring filed by CAPP, Administrative Patent Judge WOODS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 2–21. Appeal Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Kristi L. Mitchell. Appeal Br. 3. Appeal 2019-005968 Application 15/046,989 2 CLAIMED SUBJECT MATTER The application is titled “Bag for Toy Organization.” Spec. 1. Claims 2 and 14 are independent. Claims App. (filed Nov. 30, 2018). We reproduce claim 2, below, which is illustrative of the claimed subject matter: 2. A bag for holding toys comprising: a front panel having a first perimeter; a rear panel having a second perimeter, the front panel being substantially parallel to the rear panel, the front panel and the rear panel being substantially transparent; a mesh panel connecting the front panel and the rear panel, the mesh panel having a front perimeter and a rear perimeter, the front perimeter of the mesh panel extending around the first perimeter, the rear perimeter of the mesh panel extending around the second perimeter, the mesh panel, the front panel, and the rear panel defining an interior space sized to hold toys; substantially rigid tubing stitched the rear perimeter of the mesh panel and the second perimeter, the front perimeter of the mesh panel being connected to the first perimeter by the substantially rigid tubing stitched to the front perimeter of the mesh panel and the first perimeter; a first support strap extending between the first perimeter and the second perimeter; a second support strap extending between the first perimeter and the second perimeter; and a closure coupled to the mesh panel extending from the first support strap to the second support strap. Id. at 2 (emphases added to limitations addressed in this Decision). Appeal 2019-005968 Application 15/046,989 3 REFERENCES The evidence relied upon by the Examiner is: Name Reference Date Fenster US 7,334,941 B2 Feb. 26, 2008 Gattino US 2008/0063318 A1 Mar. 13, 2008 Rappaport US 8,002,115 B2 Aug. 23, 2011 Kern US 2013/0156351 A1 June 20, 2013 Carrier US 8,777,076 B1 July 15, 2014 Whitaker US 2015/0000805 A1 Jan. 1, 2015 Spivack US 2015/0246751 A1 Sept. 3, 2015 Gardner US 2015/0321795 A1 Nov. 12, 2015 REJECTIONS2 The following rejections are before us on appeal: Claims Rejected 35 U.S.C. § Reference(s)/Basis 2–21 112(a) Written Description 2, 7–11 103 Whitaker, Gardner 3–6 103 Whitaker, Gardner, Gattino 12, 13 103 Whitaker, Gardner, Kern, Rappaport 14–19 103 Whitaker, Spivack, Gardner 20 103 Whitaker, Spivack, Gardner, Fenster or Carrier 21 103 Whitaker, Spivack, Gardner, Kern, Rappaport Final Act. 2–14. 2 Claims 4, 5, and 14 are also objected to for containing informalities. Final Act. 2. Appellant attempts to overcome these objections in an amendment after final. See Appeal Br. 4 (“The objections to claims 2, 4, and 14 [sic] are addressed by amendment . . .”). Appellant’s amendment was not entered. Adv. Act. (dated Sept. 11, 2018). We do not decide these objections as they are petitionable matters. See MPEP § 706.01 (“[T]he Board will not hear or decide issues pertaining to objections and formal matters which are not Appeal 2019-005968 Application 15/046,989 4 OPINION I. Written Description Rejections The Examiner rejects claims 2–21 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Final Act. 3. In rejecting these claims, the Examiner determines that limitations from independent claims 2 and 14 and limitations from dependent claims 4 and 9 lack adequate written description support. See id. at 3–4. We address each of these rejections separately, below. a. Independent Claims 2 and 14 As to independent claims 2 and 14, the Examiner determines that the limitation “substantially rigid tubing” was not described in the Specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor, at the time the application was filed, had possession of the claimed invention. Final Act. 3. To overcome this rejection, Appellant sought unsuccessfully to amend the claims to eliminate the term “substantially rigid.” See Appeal Br. 8; see also Ans. 4 (“The amendment filed August 27, 2018 included amending claims 2 and 14 to eliminate the limitation ‘substantially rigid’ . . . was not entered”). Other than Appellant’s failed attempt to amend the claims, Appellant presents no arguments. See Appeal Br. 8; see also Ans. 4 (confirming the same). properly before the Board.”); see also MPEP § 1201 (“The Board will not ordinarily hear a question that should be decided by the Director on petition . . . .”). Appeal 2019-005968 Application 15/046,989 5 Because Appellant offers no substantive analysis or argument in the Appeal Brief to show that the Examiner erred in rejecting claims 2 and 14 under 35 U.S.C. § 112(a), any such arguments that Appellant could have made are waived. See 37 C.F.R. § 41.37(c)(1)(iv); see also Hyatt v. Dudas, 551 F.3d 1307, 1313–14 (Fed. Cir. 2008) (holding that the Board may treat arguments the appellant failed to make for a given ground of rejection as waived). Therefore, we sustain the Examiner’s rejection of independent claims 2 and 14 under 35 U.S.C. § 112(a). b. Dependent Claim 4 The Examiner also determines that the additional limitations recited in dependent claim 4 lack adequate written description support. Final Act. 3–4. Appellant does not present arguments to contest this rejection. See Appeal Br. 8; see also Ans. 4 (confirming the same). As such, Appellant waives any arguments that could have been made (37 C.F.R. § 41.37(c)(1)(iv)) and we further sustain the rejection of claim 4 under 35 U.S.C. § 112(a). c. Dependent Claim 9 The Examiner also determines that the additional recitations of “wherein the first [and second] support strap[s] extend[] from an upper half of the first perimeter to an upper half of the second perimeter” also lack adequate written description support. See Final Act. 3–4 (emphases added). In finding that these claim limitations lack written description support, the Examiner apparently takes issue with the location of the two “support Appeal 2019-005968 Application 15/046,989 6 straps” as extending from the “upper half of the first perimeter to an upper half of the second perimeter.” See id. Appellant contests the rejection, and submits that these limitations are adequately supported by Figures 1 and 2 of the Specification. See Appeal Br. 8. In the Answer, the Examiner states that “figures 1 and 2 are not ‘to scale’, are merely perspective views of the bag from different angles, and the figures do not include a plan side view of the mesh panel.” Ans. 5. Appellant has the better position. We find that Figure 1 provides written description support for the claimed limitations. See Cooper Cameron Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d 1317, 1322 (Fed. Cir. 2002) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1981)) (“under proper circumstances, drawings alone may provide a ‘written description’ of an invention as required by § 112”). To illustrate our point, we reproduce an annotated version of Figure 1, below. Appeal 2019-005968 Application 15/046,989 7 As shown above, annotated Figure 1 depicts bag 200 with front panel 10 having a first perimeter, back panel 20 having a second perimeter, and support straps 80 on each side of the bag. See Spec. ¶¶ 17, 19, 21. We find that this figure reasonably conveys that the applicant had possession of the claimed “wherein the first [and second] support strap[s] extend[] from an upper half of the first perimeter to an upper half of the second perimeter.” Accordingly, we do not sustain the additional rejection of dependent claim 9 under § 112(a) as failing to comply with the written description requirement. Appeal 2019-005968 Application 15/046,989 8 d. Summary of Claims 2–21 We sustain the rejection of independent claims 2 and 14 for failing to comply with the written description requirement under 35 U.S.C. § 112(a). Because dependent claims 3–13 and 15–21 depend from claim 2 or 14, the dependent claims inherit the same written description infirmity. Accordingly, we affirm the rejection of claims 2–21 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. II. Prior Art Rejections The Examiner rejects claims 2–21 based on Whitaker and other secondary references. See Final Act. 4–14. In rejecting independent claim 2, the Examiner finds that Whitaker discloses, inter alia, “a first support strap extending between the first perimeter and the second perimeter” and “a second support strap extending between the first perimeter and the second perimeter.” See id. at 5 (citing Whitaker Figs. 1–4, ¶¶ 13– 18). In rejecting independent claim 14, the Examiner similarly finds that Whitaker discloses “a first support strap extending from the front panel to the second rear panel” and “a second support strap extending from the front panel to the second rear panel.” See id. at 9 (citing Whitaker Figs. 1–4, ¶¶ 13–18). Appeal 2019-005968 Application 15/046,989 9 We reproduce Whitaker’s Figure 1, below: Figure 1 “is a front perspective view of a transparent bag with removable flap.” Whitaker ¶ 6. Whitaker’s paragraphs 13–18—which the Examiner cites to in support of the rejection—constitute the entire Detailed Description of Whitaker. See id. ¶¶ 13–18. We also note that Whitaker’s figures do not include the reference numerals referenced in its specification. See id. ¶¶ 13–18, Figs. 2–7. In contesting the rejection, Appellant argues, “Whitaker teaches a perimeter strap that is continuous around the entire perimeter of the bag. The examiner conflates this perimeter strap with the ‘attachment strip.’” Appeal Br. 9 (citing Whitaker ¶¶ 14, 17) (emphasis added). Appeal 2019-005968 Application 15/046,989 10 In response to Appellant’s argument, the Examiner submits an annotated version of Whitaker’s Figure 3 (Ans. 6), which we reproduce, below: Figure 3 “is a front perspective view of a bag with the flaps removed.” Whitaker ¶ 8. According to the Examiner, “Whitaker does in fact teach a strap (support strap) that extends continuously around a perimeter of the bag and an attachment strip that extends discontinuously around the perimeter of the bag . . . the examiner does not conflate the strap with the attachment strip.” Ans. 6 (emphasis added). The Examiner explains, however, that the “claim does not require that the first and second support straps be discontinuous, distinct or otherwise separately defined straps.” Id. at 6–7. Appeal 2019-005968 Application 15/046,989 11 We disagree with the Examiner’s interpretation that the claims do not require separate straps. Indeed, the claims explicitly recite a “first support strap” and a “second support strap” and the Examiner’s interpretation that Whitaker’s single, continuous support strap satisfies both claimed elements is unreasonably broad. See, e.g., Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404–05 (Fed. Cir. 1996) (concluding that where a claim provides for two separate elements, a “second portion” and a “return portion,” these two elements “logically cannot be one and the same”). Furthermore, and although we give claim language their broadest reasonable interpretation, we read such language in light of the specification as it would be 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). As we read the claim language, namely, the first and second support straps in light of the Specification, we find that the Specification describes two support straps 80, one on each side of bag 200. See, e.g., Spec. ¶¶ 21, 22. In light of how “first support strap” and “second support strap” are recited in the claims and described in the Specification, the Examiner’s determination that Whitaker’s single continuous strap satisfies the claimed “first support strap” and “second support strap” is unreasonable and constitutes reversible error. Accordingly, we do not sustain any of the prior art rejections based on Whitaker. Appeal 2019-005968 Application 15/046,989 12 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Reversed Affirmed 2–21 112, first paragraph Written Description 2–21 2, 7–11 103 Whitaker, Gardner 2, 7–11 3–6 103 Whitaker, Gardner, Gattino 3–6 12, 13 103 Whitaker, Gardner, Kern, Rappaport 12, 13 14–19 103 Whitaker, Spivack, Gardner 14–19 20 103 Whitaker, Spivack, Gardner, Fenster, Carrier 20 21 103 Whitaker, Spivack, Gardner, Kern, Rappaport 21 Overall Outcome 2–21 TIME PERIOD FOR RESPONSE 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)(1)(iv). AFFIRMED UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KRISTI L. MITCHELL Appeal 2019-005968 Application 15/046,989 Technology Center 3700 OPINION CONCURRING CAPP, Administrative Patent Judge I concur in the result reached by the majority. However, I write separately to comment on the merits of the art rejection. Whitaker discloses a carry bag with a support strap that, among other things, provides structure to support the attachment points for the handles. The claim calls for two support straps. Claims App. I am not persuaded by the Examiner’s allegation and argument that one strap is really two straps. Neither, however, am I impressed with Appellant’s position that merely bifurcating a single strap, which is known in the art via Whitaker, into two separate straps rises to the level of a patentable invention where all of the other elements of the invention are known in the prior art. However, the Board enters a new ground of rejection at its discretion, and no inference should be drawn from a failure to exercise that discretion. See 37 C.F.R. § 41.50(b); see also Manual of Patent Examining Procedure (MPEP) § 1213.02. Appeal 2019-005968 Application 15/046,989 2 In the event that prosecution of this application continues after resolution of this appeal, I leave it to the Examiner whether to find additional art showing separate support straps for each of two handles or providing additional reasons as to why a person of ordinary skill in the art would have considered it obvious to modify Whitaker to have two support straps instead of a single strap.