Ex Parte Boino et alDownload PDFPatent Trial and Appeal BoardSep 27, 201612542052 (P.T.A.B. Sep. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/542,052 08/17/2009 26161 7590 09/29/2016 FISH & RICHARDSON P,C (BO) P.O. BOX 1022 MINNEAPOLIS, MN 55440-1022 FIRST NAMED INVENTOR Jacqueline Boino 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. 99990-0233001 4739 EXAMINER THEIS, MATTHEW T ART UNIT PAPER NUMBER 3782 NOTIFICATION DATE DELIVERY MODE 09/29/2016 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): P ATDOCTC@fr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JACQUELINE BOINO and KALEE CARMEL Appeal2014-009883 Application 12/542,052 Technology Center 3700 Before KEN B. BARRETT, JAMES P. CAL VE, and GEORGE R. HOSKINS, Administrative Patent Judges. CAL VE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the rejection of claims 1, 2, 4--11, 13, 14, and 21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal2014-009883 Application 12/542,052 CLAIMED SUBJECT MATTER Claim 1, the sole independent claim, is reproduced below. 1. A personal object carrier apparatus comprising: a harness comprising a pair of generally vertical shoulder straps, a connector defining a connector axis and extending between, and mounted for vertical adjustment along, the generally vertical shoulder straps, and a platform comprising a gripping material mounted to the connector and configured to support an upright object in the form of a drink container resting on the platform and against a ventral surface of a body of a user at a desired height, such that the drink container, or a straw inserted in the drink container, is accessible by the user's mouth in a hands-free manner, the platform mounted to the connector in a manner to meet requirements for resistance to torques applied to the object about the connector axis, and the connector being configured to adjust a height of the connector and the platform vertically along the shoulder straps of the harness without needing to adjust a length of one or both of the shoulder straps. REJECTIONS Claims 1, 2, 4--11, 13, 14, and 21 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite. Claims 1, 2, 4, 8, and 21 are rejected under 35 U.S.C. § 102(e) as anticipated by Dormaar (US 2009/0242598 Al, pub. Oct. 1, 2009). Claims 5-7 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dormaar and Howard (US 2005/0072818 Al, pub. Apr. 7, 2005). Claims 9-11 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dormaar and Rosenberg (US 2,182,164, iss. Dec. 5, 1939). Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over Dormaar and Paredes (US 4,328,533, iss. May 4, 1982). 2 Appeal2014-009883 Application 12/542,052 Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over Dormaar and Kurzweil (US 2008/0287770 Al, pub. Nov. 20, 2008). ANALYSIS Claims 1, 2, 4--11, 13, 14, and 21 as indefinite The Examiner found that claim 1 is indefinite because it is unclear what is meant by "the platform mounted to the connector in a manner to meet requirements for resistance to torques applied to the object about the connector axis." Non-Final Act. 3. The Examiner found that because the requirements are not defined clearly, the scope of claim 1 is unclear. Id. The Examiner also found that Appellants' Specification does not disclose any torque resistance requirements so it is unclear to what degree a device must resist torque in order to meet the scope of the claim. Ans. 10. Appellants argue that a skilled artisan would understand that the platform is mounted to the connector in such a way that the object supported by the platform can resist rotation about the connector axis; because torque is understood to mean a force that tends to rotate an object about an axis, pivot point, or fulcrum. Appeal Br. 3. Appellants also argue that a skilled artisan would understand that the "requirements for resistance to torques applied to the object about the connector axis" requires enough resistance to torque to maintain the drink container in the upright position so liquid does not spill from the container. Reply Br. 2. If a claim tenn depends solely on the unrestrained, subjective op in ion of a particular person purportedly practicing the invention without sufficient guidance in the specification to provide objective direction to one of skill in the art, the term is indefinite. DDR Holdings, LLC v. Hotels.com, LP) 773 F.3d 1245, 1260 (Fed. Cir. 2014). 3 Appeal2014-009883 Application 12/542,052 The term "meet requirements for resistance to torques" in claim 1 is indefinite because it is unclear what requirements for torque must be met to satisfy that limitation. Appellants' argument that a skilled artisan would understand that the requirements for resistance to torque must be sufficient to retain a drink container in an upright position is not commensurate with the scope of claim 1, which does not specify any purpose of a resistance to torques, and thus is not persuasive. The Specification discloses that "[l]imits of platform diameter may be imposed by requirements for resistance to torques applied by the object about the axis of the connector 16." Spec., 5:10-12 (emphasis added); see Appeal Br. 2 (citing Spec., 5:10-12 as support for this limitation). This disclosure indicates that resistance to torques applied to objects in platform 14 is controlled by limiting the diameter of platform 14 to prevent objects contained therein from applying too much torque about the axis of connector 16. This disclosure also indicates that the platform does not resist torques entirely. Appellants do not identify any disclosure in their Specification of the manner in which platform 14 connects to connector 16 to resist torques of objects supported by platform 14, as claimed. We find no guidance for determining how the claimed requirements for resistance to torques are met. Because the claimed "to meet requirements for resistance to torques" depends solely on the unrestrained, subjective opinion of a person practicing the invention without sufficient guidance in the Specification to determine the metes and bounds of that limitation, claim 1 is indefinite. See DDR lloldingsi 773 F .3d at 1260. Thus, we sustain the rejection of claims 1, 2, 4-- 11, 13, 14, and 21 as indefinite. 4 Appeal2014-009883 Application 12/542,052 Claims 1, 2, 4, 8, and 21 as anticipated by Dormaar Because claims 1, 2, 4, 8, and 21 are indefinite, we cannot discern their scope so as to properly compare these claims to the disclosure of Dormaar. Thus, we do not sustain the rejection of claims 1, 2, 4, 8, and 21 as anticipated by Dormaar. Cf In re Aoyama, 656 F.3d 1293, 1298 (Fed. Cir. 2012); Appeal Br. 4. We do not reach the issue of whether Dormaar would anticipate a claim having definite scope. Claims 5-7, 9-11, 13, and 14 as unpatentable over Dormaar and either Howard, Rosenberg, Paredes, or Kurzweil In view of our holding that claim 1, the sole independent claim, is indefinite such that we cannot properly compare the claim to the prior art, we do not sustain the rejections of dependent claims 5-7, 9-11, 13, and 14 under 35 U.S.C. § 103(a) as unpatentable over Dormaar and either Howard, Rosenberg, Paredes, or Kurzweil. See In re Wilson, 424 F.2d 1382, 1385 (CCP A 1970) ("If no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious-the claim becomes indefinite."); In re Steele, 305 F.2d 859, 862-63 (CCPA 1962) (determinations of obviousness cannot be made where the determination of the claim scope requires considerable speculation and assumptions). We do not reach the issue of whether Dormaar in view of other prior art would render obvious a claim having definite scope. DECISION We AFFIRM the rejection of claims 1, 2, 4--11, 13, 14, and 21 under 35 U.S.C. § 112, second paragraph, as indefinite. We REVERSE the prior art rejections of claims 1, 2, 4--11, 13, 14, and 21under35 U.S.C. §§ 102(e) and 103(a). 5 Appeal2014-009883 Application 12/542,052 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 6 Copy with citationCopy as parenthetical citation