Ex Parte Bratcher

Patent Trial and Appeal Board

Jan 31, 2018

13225163 (P.T.A.B. Jan. 31, 2018)

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.
13/225,163 09/02/2011 Thomas Paul Bratcher TB001 1957
13143 7590 02/02/2018
Law Office of Kevin Jackson
6315 E. Cactus Wren Rd
Paradise Valley, AZ 85253
EXAMINER
HOEY, ALISSA L
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
02/02/2018 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):
kevinj acksonlaw @ gmail.com
kj acksonlaw @ cox.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS PAUL BRATCHER
Appeal 2016-007808
Application 13/225,163
Technology Center 3700
Before STEVEN D.A. MCCARTHY, MICHELLE R. OSINSKI, and
PAUL J. KORNICZKY, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Thomas Paul Bratcher (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner’s Final Rejection of claims 6—9, 11, 18, 20, 22, 24, 26,
28—30, and 36—38.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Claims 4, 5, 10, 12—17, 19, 21, 23, 25, 27, and 31—35 are withdrawn from
consideration. Final Act. 1.
Appeal 2016-007808
Application 13/225,163
THE CLAIMED SUBJECT MATTER
Claims 6 and 36 are independent. Claim 6, reproduced below, is
illustrative of the claimed subject matter on appeal.
6. A weighted garment comprising:
a body suit configured to substantially conform to at least
a portion of a body of an intended wearer when placed on the
intended wearer, where the body suit has a plurality of parts; and
a plurality of weights that sum to a total weight, where
portions of the plurality of weights are engaged with and located
wi thin each part of the body suit, and where the portions of the
plurality of weights engaged with each part are apportioned from
the total weight based on a predetermined body mass distribution
of the intended wearer.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Squittieri US 2006/0046913 A1 Mar. 2, 2006
THE REJECTIONS2
I. Claims 7, 30, and 38 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2—3.
II. Claims 36—38 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Id. at 3^4.
III. Claims 6, 7, 8, 30, 36, and 38 stand rejected under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly
2 Claim 8 is objected to because of an informality relating to grammar.
Final Act. 5. Although Appellant provides arguments in an effort to address
the objection to claim 8 (Appeal Br. 12), any claim objection is properly
reviewed by way of petition to the Director rather than by appeal to the
Board. See 37 C.F.R. § 1.181(a)(1) and Manual of Patent Examining
Procedure (MPEP) §§ 1002.02(c)(4) and 1201.
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Application 13/225,163
claim the subject matter which the applicant regards as the invention.
Id. at 4—5.
IV. Claims 6, 8, 9, 11, 18, 20, 22, 24, 26, 28, 29, 36, and 373 stand
rejected under 35 U.S.C. § 102(b) as anticipated by Squittieri. Id. at
5-8.
V. Claims 7, 30, and 38 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Squittieri. Id. at 8—11.
OPINION
Rejection I
The Examiner rejects claims 7, 30, and 38 under 35 U.S.C. § 101 as
being directed to or encompassing a human organism. Final Act. 2. In
particular, the Examiner asserts that the limitations reciting a portion of the
weight being “located within” various regions of the body (e.g., thorax,
abdominal, pelvic, thigh, calf, foot, upper arm, forearm, hand, neck, and
head) “all claim the human body.” Id. at 2—3. As noted by the Examiner,
Appellant may have intended to claim the weight being located within
certain parts of the garment configured to cover certain regions of the human
body, as opposed to claiming the weight being located within regions of the
human body. Id. at 3.
Appellant argues that because of the “antecedent basis structure” of
the claims, “it is clear that the thorax region and the abdominal region are
portions of the first part of the body suit.” Appeal Br. 9. Appellant
maintains that the “claims are not directed to encompassing a human
organism as asserted by the Examiner, but instead are directed to
3 We understand that the statement that claims “28—39” are rejected is a
typographical error. Final Act. 5.
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Application 13/225,163
encompassing a body suit having parts configured to cover specified regions
of living organisms, such as humans.” Id. at 9-10.
We determine that in the context of the claims, it is reasonably
understood that the weight is located within the part of the garment that is
configured to cover the named region of the body, as opposed to the weight
being located within the actual named region of the human body.
Accordingly, we are not persuaded that the broadest reasonable
interpretation of the claimed invention encompasses a human organism.
As such, we do not sustain the Examiner’s rejection of claims 7, 30,
and 38 under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter.
Rejection II
The Examiner rejects claim 36 and its dependent claims 37 and 38 as
failing to comply with the written description requirement because “[tjhere
is no support in the originally filed disclosure for ‘portions of the plurality of
weights are unevenly allocated and joined to each part of the body suit.’”
Final Act. 3^4. Appellant argues that paragraphs 7—20 of the Specification
and Figures 1—34 “make[] it clear that the plurality of weights are allocated
in accordance with the body mass of the intended wearer instead of being
evenly distributed on the body suit.” Appeal. Br. 10.
In our view, the identified paragraphs of the Specification describe
distributing weights of differing amounts to different parts of the body suit
(e.g., weight of 4.4 pounds distributed within part 71 configured to cover a
thorax region, weight of 3.0 pounds distributed within part 73 configured to
cover an abdominal region, weight of 2.7 pounds distributed within part 76
configured to cover a pelvic region, and weight of 4.1 pounds distributed
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within parts 771, 772 configured to cover thigh regions, including an
unequal split between parts 771, 772 as necessary). See, e.g., Spec. 126,
Figs. 4, 6. Because this results in portions of the plurality of weights being
unevenly allocated and joined to each part of the body suit in accordance
with a predetermined body mass distribution, it reasonably conveys to a
person of ordinary skill in the art that Appellant was in possession of the
claimed subject matter as of the filing date. SeeAriad Pharm., Inc. v. Eli
Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
Thus, the rejection of claims 36—38 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
not sustained.
Rejection III
Claims 6 and 36
The Examiner rejects claims 6 and 36 as indefinite because “[tjhere is
insufficient antecedent basis for th[e] limitation [‘each part’] in the claims.”
Final Act. 4. Appellant responds that one of ordinary skill in the art would
understand “each part” to refer to the previously introduced “plurality of
parts” of the body suit. Appeal Br. 11. The failure to provide explicit
antecedent basis for terms does not always render a claim indefinite. In this
case, we agree with Appellant that one skilled in the art would understand
“each part,” when read in light of the remainder of claims 6 and 36, to refer
to each of the plurality of parts of the body suit. This understanding is
supported by Appellant’s Specification, which describes a body suit having a
plurality of parts for covering various regions of the human body and
distributing weights in each of these parts. See, e.g., Spec. ]ff[ 25—26.
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The Examiner also rejects claim 36 as indefinite because “[i]t is
unclear what ‘portions of the plurality of weights’ is referring to, how what
the portions are when referring to multiple things.” Final Act. 5. Appellant
responds that “it is clear claim 36 is referring to a division of the plurality of
weights into separate portions that are joined to each part of the body suit in
accordance with a predetermined body mass distribution of the intended
wearer.” Appeal Br. 12. In this case, we agree with Appellant that one
skilled in the art would understand “portions of the plurality of weights” to
refer to one or more of the plurality of weights that have been portioned out
for distribution within the plurality of parts of the body suit. This
understanding is supported by Appellant’s Specification, which describes a
plurality of weights summing to a particular total weight and portions of
different weights that are then distributed within the body suit. See, e.g.,
Spec. 126.
In our view, claims 6 and 36 are not indefinite because the scope of
the claim is reasonably ascertainable by those skilled in the art.
Accordingly, we do not sustain the rejection of claims 6 and 36 under 35
U.S.C. § 112, second paragraph.
Claims 7, 30, and 38
The Examiner rejects claims 7, 30, and 38 as indefinite because
“[rjanges with the term ‘about’ are indefinite, since we do not know where
the range begins or ends[,] and therefore[,] it is unclear what is being
claimed.” Final Act. 5. Appellant responds that “the use of terms, such as
‘about’ and ‘substantially[,]’ are descriptive terms and acceptably used in
patent claims to accommodate minor variations and to avoid strict numerical
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boundaries.” Appeal Br. 11 (citing Verve LLC v. Crane Cams, Inc., 311
F.3d 1116, 1120 (Fed. Cir. 2002).
We agree with Appellant that the term “about” based on its ordinary
and customary meaning, denotes approximation. “When ‘about’ is used as
part of a numeric range, the use of the word ‘about,’ avoids a strict
numerical boundary to the specified parameter. Its range must be interpreted
in its technologic and stylistic context.” Cohesive Techs, Inc. v. Waters
Corp., 543 F.3d 1351, 1368 (Fed. Cir. 2008) (quoting Pall Corp. v. Micron
Separations, Inc., 66 F. 3d 1211, 1217 (Fed. Cir. 1995) (internal quotation
marks omitted). The Examiner has not adequately explained why one of
ordinary skill in the art would not have been reasonably apprised of the
scope of the claim as a result of the claim term “about.” Cf. Accentra, Inc. v.
Staples, Inc., 500 Fed. Appx. 922, 930 (Fed. Cir. 2013) (non-precedential)
(explaining the term “about” is not indefinite if it can be understood in the
context of the technology).
Accordingly, we do not sustain the rejection of claims 7, 30, and 38
under 35U.S.C. § 112, second paragraph.
Claim 8
Claim 8 recites that “the plurality of weights is substantially equally
distributed within each part in accordance with centers of mass of the
respective parts.” Appeal Br. 26 (Claims App.). The Examiner rejects claim
8 as indefinite because “[i]t is unclear what is being claimed since we don’t
know what ‘the respective parts’ are referring to.” Final Act. 4. Appellant
responds that the language of the claim supports that “the respective parts
are each part of the body suit configured to cover various portions of the
intended wearer.” Appeal Br. 11.
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Application 13/225,163
Assuming arguendo that one of ordinary skill would understand
“respective parts” to refer to parts of the body suit as argued by Appellant,
Appellant’s explanation is inconsistent with the Specification, which
nowhere describes the body suit parts having centers of mass that are of
interest in practicing the claimed invention. See, e.g., Spec. ]Hf 21—22.
Rather, we understand from the Specification that body parts of an intended
wearer of the garment have corresponding centers of mass, and we further
understand from the Specification that weights are distributed within each
body suit part in accordance with the corresponding center of mass of the
body part that is configured to be covered by the body suit part. See id. In
view of the disclosure in Appellant’s Specification and drawings, it is
unclear how the centers of mass of the body suit parts, as identified in
Appellant’s argument, are of any interest in practicing the claimed invention,
whereas the centers of mass of the parts of an intended wearer’s body
intended to be covered by corresponding body suit parts are clearly of
interest in practicing the claimed invention. This inconsistency in the
language of the claims and in the disclosure of the Specification creates
uncertainty as to what is meant by “the respective parts.” Consequently, in
our view, claim 8 is indefinite because it does not reasonably apprise those
of skill in the art of the scope of the claimed invention.
Accordingly, we sustain the rejection of claim 8 under 35 U.S.C.
§112, second paragraph.
Rejection IV
The Examiner finds that Squittieri discloses all of the limitations of
independent claim 6, including, inter alia, “the portions of the plurality of
weights [being] engaged with each part [of a body suit] are apportioned from
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the total weigh[t] based on predetermined body mass distribution of the
intended wearer.” Final Act. 6 (citing Squittieri || 48-49). The Examiner
makes similar findings in connection with independent claim 36. Id. at 7—8.
The Examiner further finds that “Squittieri teaches portions of the plurality
of weights are engaged with each part and are capable of being apportioned
from the total weigh[t] based on predetermined body mass distribution of the
intended wearer.” Id. at 11 (citing Squittieri || 14, 48-49, Figs. 1 4).
According to the Examiner, “as long as . . . Squittieri teaches all of the
garment structure as claimed, body suit and customizable weight, it reads on
the invention as disclosed” and “[t]he intended use of the garment does not
further distinguish in terms of structure.” Id.
Appellant argues that “Squittieri only teaches an even distribution or
targeting specific muscle groups,” but “[njeither one of these approaches is
based on the body mass distribution of the intended wearer.” Appeal Br. 14.
To support a rejection premised upon a theory of anticipation, it is not
enough to find that a prior art device is capable of being adapted or modified
to operate in a manner that would anticipate the claims. See Typhoon Touch
Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing
Fantasy Sports Props, Inc. v. Sportsline.com, Inc., 287 F.3d 1108, 1117—18
(Fed. Cir. 2002). Anticipation requires the prior art apparatus, as provided,
to be capable of performing the recited function, not merely one that might
be modified to include such capability. Id. Here, the Examiner has shown
only that Squittieri could be customized to meet a user’s desired end goal,
and thus, is capable of being adapted or modified to have the weights be
apportioned based on predetermined body mass distribution of the intended
wearer. Ans. 10. The Examiner, however, has not shown that Squittieri’s
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apparatus, as provided, is capable of having the weights be apportioned
based on a predetermined body mass distribution of the intended wearer
when apportioning weights in accordance with Squittieri’s specific teachings
of even distribution of weights over the surface area of the body. Squittieri
148. The Examiner improperly relies on modification of Squittieri so as to
customize weight distribution based on body mass distribution of an
intended wearer in articulating an anticipation rejection.
Accordingly, we do not sustain the rejection of independent claims 6
and 36 as anticipated by Squittieri. We also do not sustain the rejection of
claims 8, 9, 11, 18, 20, 22, 24, 26, 28, 29, and 37, which depend directly or
indirectly from independent claim 6 or 36.
Rejection V
Dependent claims 7, 30, and 38 require that weights are located within
parts of a weighted garment configured to cover foot and head regions.
Appeal Br. 25—26, 29-30, 32. The Examiner finds that “weight is located
within the foot regions (bottom row of weights: [Fjigure 2)” and that
“weight is located within the at least part of the head region (middle two
weights in first row).” Final Act. 9—10 (citing Squittieri, Figs. 1—2). The
Examiner finds that the “regions have not been identified in the claims as to
what portion of the garment structure they include or do not include” and
that “Squittieri teaches all of the weight structure and location as broadly
claimed.” Id. at 10.
Appellant argues that Squittieri “fails to teach or suggest the
allocation of any weights to the head ... or foot regions.” Appeal Br. 20
(citing Squittieri, Figs. 1—2). We agree with Appellant. That is, we do not
agree with the Examiner’s position that it would be reasonable to consider
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any of the locations of weights illustrated in Figures 1, 2, and/or 4 of
Squittieri (see, e.g., Ans. 19) to be in a part of the body suit configured to
cover head or foot regions. See, e.g., Squittieri Figs. 7—8 (illustrating that
Squittieri’s body suit does not extend onto the head of an intended wearer),
151 (explaining that weights are applied until “all positions to the ankle are
occupied”). The Examiner does not explain why it would be obvious to
modify Squittieri to have weights located within head and foot regions of a
body suit, but rather seeks only to explain why it would be obvious to
modify Squittieri to have specific percentages applied to the various regions.
See Final Act. 10-11. Accordingly, we do not sustain the rejection of claims
7, 30, and 38 as unpatentable over Squittieri.
DECISION
The Examiner’s decision to reject claims 7, 30, and 38 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter is
reversed.
The Examiner’s decision to reject claims 36—38 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement is reversed.
The Examiner’s decision to reject claims 6, 7, 30, 36, and 38 under
35 U.S.C. § 112, second paragraph, as failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention is reversed.
The Examiner’s decision to reject claim 8 under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim the
subject matter which the applicant regards as the invention is affirmed.
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The Examiner’s decision to reject claims 6, 8, 9, 11, 18, 20, 22, 24,
26, 28, 29, 36, and 37, under 35 U.S.C. § 102(b) as anticipated by Squittieri
is reversed.
The Examiner’s decision to reject claims 7, 30, and 38 under
35 U.S.C. § 103(a) as unpatentable over Squittieri is reversed.
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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