Ex Parte Andrews

Patent Trial and Appeal Board

Feb 23, 2017

12842272 (P.T.A.B. Feb. 23, 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.
12/842,272 07/23/2010 Vanessa Andrews VA 10065 3729
82357 7590 02/27/2017
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EXAMINER
4268 Northern Pike Rd
Monroeville, PA 15146
NEWHOUSE, NATHAN JEFFREY
ART UNIT PAPER NUMBER
3782
NOTIFICATION DATE DELIVERY MODE
02/27/2017 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):
jray@jrayassoc.com
apogeegroup @ Comcast, net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VANESSA ANDREWS
Appeal 2015-004182
Application 12/842,272
Technology Center 3700
Before: CHARLES N. GREENHUT, LISA M. GUIJT, and
GORDON D. KINDER, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1—
4, 10-13, 15, 17, and 20.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Although included on the cover page and in the rejection statements,
claims 16 and 19 were cancelled in the amendment of December 9, 2013.
Appeal 2015-004182
Application 12/842,272
CLAIMED SUBJECT MATTER
The claims are directed to a sports water bottle holder. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An apparatus for holding a beverage container while a user is
engaging in one of walking, running, and sporting activities, said
apparatus comprising:
(a) a holder member including:
(i) an elongated main portion disposed generally
vertically when said holder member is attached to a waist of the
user,
(ii) a bottom portion disposed adjacent only a bottom
end of said main portion and configured to receive a bottom end
of the beverage container therewithin, said bottom portion
formed from a mesh material so as to prevent liquid from
collecting therein,
(iii) a pair of continuous straps each having one end
attached to said main portion at a respective side edge thereof
and in a spaced apart parallel relationship to each other between
a top edge of said bottom portion and a top edge of said main
portion; and
(b) means for attaching said holder member to the waist of
the user.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fawcett US 5,803,333 Sept. 8, 1998
Reddy US 5,927,581 July 27, 1999
Lipke US 7,090,102 Aug. 15, 2006
Willows US 7,520,412 Apr. 21,2009
REJECTIONS
Claim 13 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.
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Application 12/842,272
Claims 1—4, 10, 12—13, and 15 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Fawcett and Reddy.
Claims 17, 18, and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fawcett, Lipke, and Reddy.
Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Fawcett, Reddy, and Willows.
OPINION
At the outset, we note that Appellant does not contest the merits of the
rejection of claim 13 under § 112. Accordingly, we summarily sustain this
rejection. See e.g. In re Berger, 279 F.3d 975 (Fed. Cir. 2002) (in which the
Board affirmed an uncontested rejection of claims under 35 U.S.C. § 112,
second paragraph, and on appeal the Federal Circuit affirmed the Board’s
decision and found that the appellant had waived his right to contest the
indefmiteness rejection by not presenting arguments as to error in the
rejection on appeal to the Board). See also, Hyatt v. Dudas, 551 F.3d 1307,
1314 (Fed. Cir. 2008) (“the applicant can waive appeal of a ground of
rejection”). Further, as the Examiner correctly points out (Ans. 7), “[t]he
refusal of an examiner to enter an amendment after final rejection of claims
is a matter of discretion. If there is an abuse of discretion, the matter may be
remedied by [] petition” as opposed to appeal. In re Mindick, 371 F.2d 892,
894 (CCPA 1967); see App. Br. 16.
Regarding the prior art rejection of claim 1, Appellant initially
contends the rejection is unclear because Appellant does not understand how
the teachings of Fawcett and Reddy would have been physically combined.
App. Br. 12. Although we do not have difficulty understanding the
Examiner’s position, which is expressly illustrated in the Examiner’s
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Application 12/842,272
Answer (Ans. 6), we note that if there is a lack of clarity, efforts to resolve it
should be made, by way of petition (37 C.F.R. §§ 1.104, 1.181) or
otherwise, prior to taking an appeal. As Appellant elected to maintain this
appeal after the Examiner elaborated on this detail, the issue is moot. 37
C.F.R. §41.40(a).
The substance of Appellant’s argument concerning claim 1, both prior
to, and after, the Examiner’s clarification, is that the combination of Fawcett
and Reddy would not yield a device having parallel straps “between a top
edge of said bottom portion [formed of mesh] and a top edge of said main
portion.” App. Br. 13—15; Reply Br. 2-4. The Examiner never actually takes
the position that the proposed combination would not yield straps across
some portion of Fawcett’s mesh. See Ans. 6 (modifying Fawcett Fig. 9).
Rather, the Examiner reasons:
Appellant does not define the term “portion” in the specification
and the normal everyday meaning of portion as defined by
Merriam-Webster is “an often limited part of a whole” or as
defined by Dictionary.com “a part of any whole, either separated
from or integrated with it”. Under this definition, the Fawcett
“bottom portion” can be limited to only a part of the mesh and
was identified as so in the final office action as element 222...
Appellant's arguments appear to hinge on stating that it would
not be obvious to space the straps from the mesh, when the
claims only state they must be spaced from the top edge of the
“bottom portion”. Thus appellant's arguments take the term
“portion” in the claim to mean the entire mesh area when the
definition of “portion” can be only a small part of the mesh area
of the Fawcett and Reddy devices as a “portion” can be “a part
of any whole.” This breadth of the term “portion” was identified
to the appellant in the final office action in the response to
arguments stating that “any part of the main portion of Fawcett
could be considered the bottom portion” (page 11, Response to
Arguments section).
Ans. 5.
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Application 12/842,272
In the Reply Brief, Appellant maintains the limitation quoted above is
not fairly suggested from the Examiner’s proposed combination (Reply Br.
2—3), but Appellant never addresses the merits of the Examiner’s reasonable
position concerning the meaning of “portion,”2 which we adopt as our own.
If Appellant wished to define the claimed subject matter more narrowly to
more closely resemble the preferred embodiment depicted in Appellant’s
figures (see Reply Br. 3 reproducing Appellant’s Figure 1), Appellant had an
opportunity to do so. As Appellant elected not to so limit the claimed subject
matter, it is not our place to import limitations from the disclosure into the
claims. See SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875
(Fed. Cir. 2004) (“[A] particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment.”)
For the foregoing reasons we sustain the rejection of claim 1 and
claims 2-4, 10—123 argued therewith (App. Br 17, 22).
Turning to claim 13, Appellant’s only substantive argument is that
“Arguments to the rejection of claim 1 apply to the rejection of claim 13 and
are omitted herein for the sake of brevity.” App. Br. 16. However, as the
Examiner correctly points out, the arguments regarding claim 1 are not
2 Although the term “edge” is included in the portion of the claim quoted by
Appellant, the issue of that term’s meaning does not appear to be raised and
is therefore not fully developed on the record before us. As the ordinary
meaning of edge need not refer to a physical construct, but can be the limit
of an area or territory, such as the outside limit of an object, area, or surface,
(see, e.g., https://en.oxforddictionaries.com/defmition/us/edge last visited
Feb. 13, 2017), we are not apprised as to why it is unreasonable for the
Examiner to consider a lower portion, which is like an area, defined below
the illustrated straps (Ans. 6) as having a top edge.
3 Although argued with claim 1, claim 16 was cancelled as noted above.
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Application 12/842,272
commensurate with the scope of claim 13 because “claim 13 does not
require the straps being spaced above the top edge of the bottom portion.”
Ans. 6—7. Thus, Appellant does not present any substantive arguments
relevant to the particular language of claim 13 in the Appeal Brief. In the
Reply Brief Appellant asserts that the Examiner’s proposed strap
modification would not yield straps connected to the “main portion.” Reply
Br. 13. This argument is both untimely (37 C.F.R. § 41.41(b)(2)) and unclear
as in the Examiner’s illustration (Ans. 6) the straps appear to be connected in
precisely that manner and Appellant does not offer any further explanation.
For the foregoing reasons, we sustain the prior-art rejection of claim 13.
Claims 15 and 20 contain similar language and depend from claim 13.
Appellant relies on the same arguments for both claims 15 and 20. App. Br.
16—17, 22. However, like the Examiner (Ans. 7), we are unable to discern
the specific issues raised by Appellant’s argument with regard to claims 15
and 20. Appellant’s argument does not make reference to any particular
claim language or any particular aspect of the Examiner’s rejection. As
Appellant has not identified with sufficient specificity any issues for which
Appellant seeks review, we sustain the Examiner’s rejection. See Ex Parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)(precedential)(citations
omitted)(“[T]he Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection.”); accord In re Jung, 637 F. 3d 1356,
1363 (Fed. Cir. 2011); Halli-burton Energy Services, Inc. v. M-ILLC, 514
F.3d 1244, 1250 n.2 (Fed. Cir. 2008).
Turning to claim 17, Appellant again states that “Arguments regarding
the rejection of claim 1 apply to the rejection of claim 17 and are omitted
herein for the sake of brevity.” However, in rejecting claim 17, the Examiner
takes a different position concerning the point of contention regarding claim
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1. Instead of pointing out that the claim language allows for a broad
construction, in rejecting claim 17, the Examiner cited an additional
reference, Lipke, which illustrates that the technique of positioning securing
straps entirely above a mesh pocket 32, which may be used for securing a
water bottle (Final Act. 9 (citing Lipke col. 1,11. 30-33), was well-known in
the art. Thus, even if one were to take a more narrow reading of the claim
language, Lipke is cited to account for any such deficiency of Fawcett and
Reddy that would be created by such a narrow reading. Appellant’s
arguments concerning claim 1 are not relevant to the Examiner’s position
concerning claim 17. Appellant does not present any arguments or evidence
to rebut the Examiner’s reliance on Lipke to satisfy the language argued
with regard to claim 1.
Appellant points out that Lipke’s straps are, arguably, not
“continuous” as called for in claim 17. The Examiner correctly points out
that Reddy was already relied upon by the Examiner concerning the number
and continuity of the straps, while Lipke was cited regarding their location.
Ans. 7—8; Final Act. 8—10. Each feature of the claimed invention need not be
disclosed in every single prior-art reference cited in a § 103(a) rejection.
Pointing out the absence of a particular feature in a single reference not
relied upon by the Examiner for that feature is an individualized attack that
fails to consider the teachings of the cited prior art as a whole. See, e.g., In re
Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)(“Non-obviousness
cannot be shown by attacking references individually when the rejection is
predicated upon the teachings of a combination of references.”). For these
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Application 12/842,272
reasons we sustain the rejection of claim 17 and of dependent claim 184
argued therewith (App. Br. 22).
DECISION
The Examiner’s rejections are affirmed.
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
4 Although argued with claim 17, claim 19 was cancelled as noted above.
8