Ex Parte Boykin

Patent Trial and Appeal Board

Mar 20, 2018

14043400 (P.T.A.B. Mar. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/043,400 10/01/2013
15698 7590
James C. Carver
The Carver Law Firm
201 St. Charles Street
Baton Rouge, LA 70808
03/20/2018
FIRST NAMED INVENTOR
Jerald L. BOYKIN
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.
BOY-0002 6789
EXAMINER
MAI, TRIM
ART UNIT PAPER NUMBER
3781
MAILDATE DELIVERY MODE
03/20/2018 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 JERALD L. BOYKIN
Appeal2017-002631
Application 14/043,400
Technology Center 3700
Before CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and
PAUL J. KORNICZKY, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jerald L. Boykin (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 1-15. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
Appeal2017-002631
Application 14/043,400
THE CLAIMED SUBJECT MATTER
Claim 1 is reproduced below and is representative of the claimed
subject matter on appeal.
1. A protective saxophone stand cover for protecting saxophones
from damage while said saxophones are resting on commercial
saxophone stands, being placed on commercial saxophone
stands, or being removed from commercial saxophone stands,
and wherein the protective saxophone stand cover is designed to
fit precisely onto the commercial saxophone stand, and -.vherein
said protective saxophone stand cover comprises
a. a front side,
b. a back side, comprising a top side and a lower side,
wherein the top side contains a fiap that fits over commercial
saxophone stand protrusions, and the lower side contains elastic
bands that fit over adjustable commercial saxophone stand
protrusions;
c. a securing strap, and
vVherein said commercial saxophone stand comprises a LT-
shaped top protrusion, an adjustable U-shaped bottom
protrusion, a tightenir1g device, a set of three legs, and, a
backbone, where there are two or more holes in the backbone
available to adjust the position of the lJ-shaped lower protmsion.
Appeal Brief1 12 (Claims App.).
1 We refer to the Substitute Specification filed Nov. 30, 2015 ("Spec.");
Final Office Action, mailed Feb. 9, 2016 ("Final Act."); Appeal Brief filed
July 6, 2016 ("Appeal Br."); and Examiner's Answer filed Oct. 20, 2016
("Ans."). It is noted that a Reply Brief was filed on Dec. 19, 2016; however,
the Reply Brief was not cited in this Decision.
2
Appeal2017-002631
Application 14/043,400
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Magnusson
Barattini
Katz
Gray
us 3,278,226
us 4,958,886
US 6,473,905 Bl
US 2010/0001565 Al
THE REJECTIONS2
Oct. 11, 1966
Sept. 25, 1990
Nov. 5, 2002
Jan. 7,2010
I. Claims 1 and 2 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Magnusson. Final Act. 3.
II. Claims 3, 4, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Magnusson. Id.
III. Claims 4-9 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Magnusson and Gray. Id. at 3-4.
IV. Claims 10-13 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Magnusson and Barattini. Id. at 4.
V. Claims 1 and 2 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Katz. Id. at 4.
2 The rejection under 35 U.S.C. § 102(a) of claims 1 and 2 as anticipated by
Keeler (US 2009/0025843; pub. Jan. 29, 2009) and the rejections, under 35
U.S.C. § 103(a), of: claim 3 as unpatentable over Keeler and Schreiber (US
2011/025324 Al; pub. Oct. 2011); claims 4-13 as unpatentable over Keeler;
claims 4-9 as unpatentable over Magnusson and Gross (US 8,733,836 B2;
iss. May 27, 2014); and claims 10-13 as unpatentable over Magnusson and
Scheiner (US 2008/0281701 Al; pub. Nov. 13, 2008) are withdrawn. Ans.
8-9. We understand the Examiner's reference to "claims 3" (Ans. 8), rather
than "[c]laims 4-13" (Final Act. 2) in connection with the withdrawal of the
rejection as unpatentable over Keeler is a typographical error.
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Appeal2017-002631
Application 14/043,400
VI. Claims 3-15 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Katz. Id.
OPINION
New Ground of Rejection
Pursuant to our authority under 37 C.F.R. § 41.50(b), claims 1-15 are
rejected under 35 U.S.C. § l 12(b) as indefinite. In determining whether a
claim is definite under 35 U.S.C. § l 12(b ), "[t]he USPTO, in examining an
application, is obliged to test the claims for reasonable precision." In re
Packard, 751F.3d1307, 1313 (Fed. Cir. 2014). "[A] claim is indefinite
when it contains words or phrases whose meaning is unclear." Id. at 1322
(citing MPEP § 2173.05(e)).
Independent claim 1 recites, in relevant part, that "the protective
saxophone stand cover is designed to fit precisely onto the commercial
saxophone stand!' Appeal Br. 12 (Claims App.). Appe11ant has not clearly
and precisely set out the metes and bounds of the claimed subject matter.
Neither the claims, r1or i\ppd1anf s Specification, identifies a \vorkabk
objective standard for deten11ining whether a cover is "designed to fit
precisely" onto a commercial saxophone stand. See Datamize, LLC v.
Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005) ("Some
objective standard must be provided in order to allow the public to
determine the scope of the claimed invention.").
Appellant's Specification provides generally that " [ t ]he protective
saxophone stand covering is designed to precisely fit on [] commercial
saxophone stands. " Spec. ,-i 13. The Specification further provides that the
covering "is held in place on said commercial saxophone stand by fitting the
top part of the covering over the vertical extension on the top of said
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Appeal2017-002631
Application 14/043,400
commercial saxophone stands and fitting elastic bands ... over lower
protrusion on said commercial saxophone stand." Id. The Specification
additionally provides that " [ t ]he top of the protective cover 10 comprises a
curved outline with 'ears' 24 and 26, a flap 18 that has an opening 30 ...
that fits over the top of a [commercial] saxophone stand" (id. ii 28)
(boldface; citations omitted) and "[t]he protective saxophone cover 'ears' 24
and 26 fit over the U-shaped top protrusion 40 on a commercial saxophone
stand 50" (id. ii 31) (boldface omitted).
It is unclear from the claims and Specification whether a cover
designed to fit precisely onto a commercial saxophone stand (i) must be
specifically shaped in a way to account for commercial saxophone stand
protrusions (e.g., have "ears" to fit over the U-shaped top protrusion of a
commercial saxophone stand) or (ii) merely must be flexible enough to be
folded, or otherwise conformed to, commercial saxophone stand protrusions,
such as with the use of wrappers/fasteners, as contemplated by the Examiner
in the rejection. See Ans. 9. We do not see where the claims or
Specification require a cover designed to fit precisely onto a commercial
saxophone stand to have a specific shape, such as "ears," in that there is no
clear association in the Specification between, for example, having "ears"
and providing a "precise" fit.
Moreover, it is unclear from the claims and Specification what degree
of precision is required to meet the claim language. That is, exactly how
closely the cover must conform to a commercial saxophone stand to be
"designed to fit precisely onto the commercial saxophone stand," as claimed,
is not defined in the claims or Specification. For example, despite a
commercial saxophone stand having three legs (see elements 48 of Spec.
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Appeal2017-002631
Application 14/043,400
Fig. 4), it appears that Appellant contemplates the protective saxophone
cover need not fit over the legs (see id. at Fig. 5), suggesting that one or
more of the parts of the commercial saxophone stand need not be covered to
still result in a precise fit. For another example, the saxophone stand cover
10 is wider than at least a portion of backbone 44 (see id.), suggesting that
some amount of slack in how the cover fits over at least some parts of the
commercial saxophone stand is acceptable, even in a precise fit.
In addition, it is unclear from the claims and Specification whether a
cover designed to fit precisely onto a commercial saxophone stand must
have any particular dimension or size because it is unclear from the
Specification and claims whether commercial saxophone stands are limited
to any particular dimension or size. Neither the claims nor the Specification
define commercial saxophone stands by dimension or size, with the
Specification stating only that "[t]he adjustable U-shaped lower protrusion
42 may be placed at approximately seven (7) inches below the U-shaped top
protrusion[] 40 for alto saxophones and at approximately nine (9) inches
below the U-shaped top protrusion 40 for tenor saxophones." Spec. iJ 29
(boldface omitted). The use of the permissive language "may" in connection
with the provided measurements for a commercial saxophone stand is not
indicative of the dimension or size of commercial saxophone stands being
limited in nature.
One of ordinary skill in the art would not be able to ascertain the
metes and bounds of a protective cover "designed to fit precisely onto the
commercial saxophone stand" without resorting to speculation regarding the
meaning of this claimed phrase. Consequently, claim 1 is "ambiguous,
vague, incoherent, opaque, or otherwise unclear in describing and defining
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Application 14/043,400
the claimed invention." Packard, 751 F.3d at 1311. Dependent claims 2-15
inherit this problematic ambiguity. Accordingly, we determine that claims
1-15 are indefinite under 35 U.S.C. § l 12(b), for failing to particularly point
out and distinctly claim the subject matter which Appellant regards as the
invention.
Claims 5, 6, 8, 9, 11, and 13 suffer from an additional ambiguity in
that it is unclear if these claims are directed to "securing strap[ s ]" (claims 5,
6, 8, 9) or "[ e ]lastic loops" (claims 11, 13) as stand-alone items that merely
may interface with or be useful with a protective saxophone cover, or instead
are directed to the combination of the items with a protective saxophone
cover meeting all of the limitations of independent claim 1. 3 The function of
claims is (i) to point out what the invention is in such a way to distinguish it
from the prior art; and (2) to define the scope of protection afforded by the
patent. In re Vamco Machine & Tool, Inc., 752 F.2d 1564, 1577 n.5 (Fed.
Cir. 1985). One is not reasonably apprised as to whether a protective
saxophone cover meeting all of the limitations of independent claim 1 is
required for infringement of dependent claims 5, 6, 8, 9, 11, and 13.
Consequently, claims 5, 6, 8, 9, 11, and 13 are "ambiguous, vague,
incoherent, opaque, or otherwise unclear in describing and defining the
claimed invention." Packard, 751 F.3d at 1311.
3 We note the requirement in 35 U.S.C. § l 12(d) that a claim in dependent
form "specify a further limitation of the subject matter claimed." Any
attempt to clarify that claims 5, 6, 8, 9, 11, and 13 are intended to cover only
the "securing strap[ s ]" or "[ e ]lastic loops" themselves would appear to run
afoul of the requirement that a dependent claim further limit and include all
of the limitations of the claim from which it depends.
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Application 14/043,400
Accordingly, for this additional reason, we determine that claims 5, 6,
8, 9, 11, and 13 are also indefinite under 35 U.S.C. § l 12(b) as failing to
particularly point out and distinctly claim the subject matter which Appellant
regards as the invention.
Rejections I-VI
We do not sustain the Examiner's rejections of claims 1-15 under 35
U.S.C. §§ 102(b) or 103(a). For the reasons discussed above, claims 1-15
are indefinite. Before a proper review of these rejections can be performed,
the subject matter encompassed by the claims on appeal must be reasonably
understood without resort to speculation. Therefore, because the claims fail
to satisfy the requirements of 35 U.S.C. § l 12(b ), we are constrained to
reverse, proforma, the prior art rejections as they necessarily are based on
speculative assumptions as to the scope of the claims. See ln re Steele, 305
F.2d 859, 862-63 (CCPA 1962) (holding that the Board erred in affirming a
rejection of indefinite claims because the rejection was based on speculative
assumptions as to the meaning of the claims). We emphasize, however, that
our decision in this regard is based solely on the indefiniteness of the
claimed subject matter, and does not address the adequacy of the prior art
evidence applied in support of the rejections.
DECISION
We enter a new ground of rejection of claims 1-15 under 35 U.S.C.
§ l 12(b) as being indefinite.
The Examiner's decision to reject claims 1 and 2 under 35 U.S.C.
§ 102(b) as anticipated by Magnusson is reversed proforma.
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Appeal2017-002631
Application 14/043,400
The Examiner's decision to reject claims 3, 4, 14, and 15 under 35
U.S.C. § 103(a) as being unpatentable over Magnusson is reversed pro
forma.
The Examiner's decision to reject claims 4-9 under 35 U.S.C.
§ 103(a) as unpatentable over Magnusson and Gray is reversed proforma.
The Examiner's decision to reject claims 10-13 under 35 U.S.C.
§ 103(a) as unpatentable over Magnusson and Barattini is reversed pro
forma.
The Examiner's decision to reject claims 1 and 2 under 35 U.S.C.
§ 102(b) as anticipated by Katz is reversed proforma.
The Examiner's decision to reject claim 3-15 under 35 U.S.C.
§ 103(a) as unpatentable over Katz is reversed proforma.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 3 7
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
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Appeal2017-002631
Application 14/043,400
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and
state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ l .136(a)(l )(iv).
REVERSED; 37 C.F.R. § 41.50(b)
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