Ex Parte Betz et al

Patent Trial and Appeal Board

Mar 31, 2017

12174452 (P.T.A.B. Mar. 31, 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.
12/174,452 07/16/2008 Jeffrey R. Betz O0245.70001US00 8700
23628 7590 04/04/2017
WOLF GREENFIELD & SACKS, P.C.
600 ATLANTIC AVENUE
BOSTON, MA 02210-2206
EXAMINER
SWINEHART, EDWIN L
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
04/04/2017 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):
Patents_eOfficeAction@WolfGreenfield.com
W GS_eOffice Action @ W olfGreenfield .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY R. BETZ and MICHAEL J. LOBSINGER
Appeal 2015-002799
Application 12/174,452
Technology Center 3600
Before EDWARD A. BROWN, JAMES P. CALVE, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jeffrey R. Betz and Michael J. Lobsinger (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—3 and
5—16.1 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Claims 4 and 17—23 have been canceled. Br. 15, 17 (Claims App.).
Appeal 2015-002799
Application 12/174,452
INVENTION
Appellants’ invention relates to “a personal flotation device.” Spec. 1,
1. 4.
Representative claim 1 is the only independent claim and reads as
follows:
1. A personal flotation device, comprising:
a chest portion having a top region and a bottom region;
an abdominal portion; and
a connecting portion positioned between the bottom
region of the chest portion and the abdominal portion and
extending only from a center region of the chest portion,
wherein the width of the connecting portion is smaller than the
width of both the chest portion and the abdominal portion,
wherein the connecting portion is configured in a manner to
extend along a wearer's sternum such that the connecting
portion does not extend substantially along a wearer's ribs,
wherein the width of the connecting portion is between
approximately 1—5 inches, and the ratio of the width of the
connecting portion to the width of the chest portion is at least
approximately 1:3; and
wherein the chest portion, the abdominal portion and the
connecting portion are each configured to be buoyant.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1—3, 5—13, and 16 under 35
U.S.C. § 103(a) as unpatentable over Bateman (US 5,759,076,
iss. June 2, 1998).
II. The Examiner rejected claims 14 and 15 under 35 U.S.C.
§ 103(a) as unpatentable over Bateman and Bailhe (US
2,607,934, iss. Aug. 26, 1952).
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Appeal 2015-002799
Application 12/174,452
ANALYSIS
Rejection I
Claim 1
Appellants argue for patentability of claims 1, 2, 8—13, and 16
together as a group. See Br. 7—13. Appellants do not separately argue for
the patentability of claims 2, 8—13, and 16. Id. We select claim 1 as
representative, and claims 2, 8—13, and 16 stand or fall with claim 1. See 37
C.F.R. § 41.37(c)(l)(iv) (2016).
For claim 1, Appellants allege, “Bateman does not teach the claimed
connecting portion ‘configured in a manner to extend along a wearer's
sternum such that the connecting portion does not extend substantially along
a wearer's ribs.’” Br. 7. Although acknowledging that the Examiner
identifies evidence from Bateman teaching that the personal floatation
device may be designed so that “[t]he front panel 16 of bladder 14 fits
between the breasted portions (not shown) of the torso 12 to thereby allow a
snug fit” (Bateman 4:60—62) (emphasis added), Appellants argue “this
sentence is interpreted in the Office Action with hindsight, and ignores other
portions of Bateman as well as how one of ordinary skill would have
understood this sentence in the overall context of Bateman.” Br. 7. In
particular, Appellants assert a skilled artisan would understand Bateman as
simply describing the “front panel 16 [as] fitting] the wearer’s body so that
there is a snug fit between the breasts” and that it “need not avoid all overlap
with the breasts.” Id at 8.
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Appeal 2015-002799
Application 12/174,452
Appellants’ argument is not persuasive at least because it is not
commensurate with the scope of the claim. We agree with the Examiner that
claim 1 does not require the connecting portion to avoid all overlap with the
breasts, nor does it require this portion to fit only between a wearer’s breasts.
Ans. 6. Instead, claim 1 recites, “the connecting portion does not extend
substantially along a wearer’s ribs.” The term “substantially,” when given
its broadest reasonable interpretation, provides a significant degree of
latitude for the allowable amount of overlap afforded to the “connecting
portion” along a wearer’s ribs. Seee.g., Spec. p. 14,11.11—16. The
Examiner correctly determined that claim 1 “is not so exacting as to
preclude extension along the ribs.” Id. Given the breadth of claim 1, we do
not agree that the Examiner’s reliance on Bateman to show a connecting
portion configured to extend along a wearer’s sternum such that the
connecting portion does not extend substantially along a wearer’s ribs was in
error. Therefore, we sustain the rejection of claim 1, as well as, claims 2, 8—
13, and 16 depending therefrom.
Claim 3
Appellants argue that the Examiner’s rejection of claim 3 is improper
because Bateman discloses an hourglass shape for the disclosed personal
floatation device, which “effectively rules out any teaching that a bottom
edge of the chest portion of the front panel angles upwardly toward a
centerline,” as claim 3 requires. Br. 11. The Examiner rejected claim 3
because Appellants did not explain why angling upward of the bottom edge
of the chest portion is critical and “[wjithout any recited criticality, such can
be considered to be no more than an obvious choice of design.” Final Act.
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Appeal 2015-002799
Application 12/174,452
7; Ans. 8—9. We are persuaded the Examiner erred in rejecting claim 3. The
Examiner offers no rationale with a rational underpinning for why a skilled
artisan would have modified the hourglass shaped personal floatation device
Bateman discloses. Therefore, we do not sustain the Examiner’s rejection of
claim 3.
Claim 5
Appellants contend the rejection of claim 5 is improper because
nothing in Bateman teaches or suggests the ratio of the width of the
connecting portion to the width of the abdominal portion is at least
approximately 1:3. Br. 12. In the Final Action, the Examiner does not
clearly address claim 5. See Final Act. 3—7. In the Answer, the Examiner
responds to Appellants’ challenge by stating,
note the comments made by the examiner above regarding
custom sizing. Also note figure 2 of Bateman et al. showing a
ratio of 1:2. A ratio of 1:2 is considered sufficient to anticipate
a claim limitation of “approximately 1:3.”
Ans. 9.
We agree with Appellants, however, that the Examiner’s rejection is
deficient. The absence of any discussion regarding claim 5 in the Final
Action and the Examiner’s mere reference to non-specified previous
comments in the Answer “regarding custom sizing” fails to satisfy the
Examiner’s initial burden of production because it does not provide an
adequate notice to Appellants of the shortcomings perceived with claim 5.
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Additionally, because
Bateman is completely silent regarding the dimensions for the widths of the
connecting and abdominal portions of the disclosed personal floatation
device, the Examiner’s reliance on proportions allegedly illustrated in the
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Application 12/174,452
Bateman figures is insufficient to establish, by a preponderance of the
evidence, the disclosure of an “approximately 1:3” ratio between the
connecting and abdominal proportions. See Hockerson-Halberstadt, Inc. v.
Avia Group Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000). Therefore, we do not
sustain the Examiner’s rejection of claim 5.
Claim 6
Appellants argue that the Examiner’s reliance on Bateman is
misplaced to demonstrate an abrupt transition between the connecting
portion and the chest portion, as claim 6 requires. Br. 12. In particular,
Appellants contend Bateman “repeatedly states that the front panel of the
bladder has an hourglass shape, which is directly contrary to having an
abrupt transition between the chest portion and the connecting portion.” Id.
Pointing to Figure 1 of the Specification, Appellants take the position that an
abrupt transition is “the antithesis of an hourglass shape.” Id.
Appellants’ argument is unpersuasive, however, because it is not
commensurate with the broad scope provided to the meaning of “abrupt” in
view of the Specification. We note that, in the Specification, Appellants
clearly describe that a transition angle of approximately 30° between the
connecting portion and the chest portion may qualify as “abrupt.” Spec. 7.
As a result, giving “abrupt” its broadest reasonable interpretation in view of
the Specification, we see no error with the Examiner’s finding that the
transition between the chest portion and the connecting portion in an
hourglass shaped personal floatation device is sufficient to show Bateman
discloses the limitation of claim 6. Final Act. 3^4. Therefore, we sustain
the Examiner’s rejection.
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Application 12/174,452
Claim 7
Finally, the Examiner finds “an hourglass shape is considered to meet
the limitation of ‘approximately I-shaped,’” as required by claim 7. Ans. 9.
Appellants disagree with the Examiner’s finding because it’s a “mystery”
how an hourglass shape can be viewed as an I-shape. Br. 13. Appellants,
however, appear not to appreciate that the claim language scope is not
limited to just an “I-shaped” floatation device, but is more broadly recited as
“approximately I-shape.” Appellants notably do not point to any evidence
within the Specification or the claims that would indicate it was
unreasonable for the Examiner to conclude the broadest reasonable
interpretation of "approximately I-shaped” covers hourglass shaped devices.
Nor do we find any support for such an assertion. As a result, we do not find
Appellants’ argument commensurate with the scope of claim 7. Therefore,
we sustain the Examiner’s rejection.
Rejection II
Appellants do not present separate arguments with respect to
Rejection II. See Br. 5—13. Therefore, we affirm Rejection II.
SUMMARY
We affirm the Examiner’s decision to reject claims 1, 2, and 6—16 and
reverse the Examiner’s decision to reject claims 3 and 5.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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