Ex Parte Cartagena et al

Patent Trial and Appeal Board

Sep 27, 2018

14812635 (P.T.A.B. Sep. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/812,635 07/29/2015
3624 7590 10/01/2018
VOLPE AND KOENIG, P.C.
UNITED PLAZA
30 SOUTH 17TH STREET, 18th Floor
PHILADELPHIA, PA 19103
FIRST NAMED INVENTOR
Angel L. Cartagena JR.
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.
BAG-PTOOl.lUS 8551
EXAMINER
ARYANPOUR, MITRA
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
10/01/2018 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):
eoffice@volpe-koenig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte ANGELL. CARTAGENA JR., ANNAKHARA CARTAGENA,
and ALEX Z. CLENDENON
Appeal 2018-002021
Application 14/812,635 1
Technology Center 3700
Before LINDA E. HORNER, EDWARD A. BROWN, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of the Examiner's
decision rejecting claims 1-3, 5, 6, and 11-19.2 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION.
1 Body Arts Gym, LLC, ("Appellant") is the applicant, as provided by
3 7 C.F .R. § 1.46, and is identified as the real party in interest. Br. 3.
2 Claims 4 and 7-10 are cancelled. Br. (Claims App.).
Appeal2018-002021
Application 14/812,635
CLAIMED SUBJECT MATTER
Claims 1, 13, and 1 7 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter on appeal:
1. An athletic training device for training a user to maintain
proper swinging position, the device comprising:
a mouth piece having symmetric top part and bottom part
configured in a spring loaded clam-shell-like clip arrangement;
wherein said top part and bottom part each include:
a grasp portion,
a bite guard portion, and
a clip opening portion;
wherein the top and bottom grasp portions are separated
by a spring that provides a preloaded closing force on the top and
bottom opening portions in order to attach the mouth piece onto
he [sic] collar or breast portion of a user's shirt;
wherein the top and bottom bite guard portions are each
shaped to allow the user to bite while swinging athletic
equipment and maintain proper head position; and
wherein the grasp portion is configured to allow the user
to easily open and close the opening portions using their fingers
or mouth.
Br. 13 (Claims App.).
REJECTIONS
1. Claims 1-3, 5, 6, and 13-18 are rejected under 35 U.S.C.
§ 102(a)(l) as anticipated by Levy (US 5,651,680, issued July 29, 1997).
2. Claims 11, 12, and 19 are rejected under 35 U.S.C. § 103 as
unpatentable over Levy and Kittelsen (US 8,074,658 B2, issued Dec. 13,
2011).
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ANALYSIS
Rejection 1
Claims 1-3, 5, and 6
The Examiner finds that Levy discloses all limitations in claim 1.
Final Act. 2-3. Particularly, the Examiner finds that Levy discloses an
athletic training device (golf training device 10) comprising a mouth piece
(mouthpiece 16) having symmetric top part and bottom part configured in a
spring loaded, clam-shell-like clip arrangement (fastening assembly 18). Id.
at 2. The Examiner also finds that the top part and bottom part each include
a grasp portion ( cover 20), a bite guard portion ("front portion of 16"), and a
clip opening portion (pressure clip 22), wherein the top and bottom grasp
portions are separated by a spring that provides a preloaded closing force on
the top opening portion and bottom opening portion ("the two arms of the
clip act as a spring in order to open and close"). Id. at 2-3 ( citing Levy, col.
3, 1. 5---col. 4, 1. 13, Figs 2, 3, 5). The Examiner provides an annotated
version of Figures 2 and 3 of Levy, identifying the locations of the "top
part," "bottom part," and "bite guard" on mouthpiece 16, and the "spring
loaded clam-shell-like clip" on fastening assembly 18. Ans. 24.
Appellant submits that Levy does not disclose all elements of claim 1,
and, "even if Levy can be said to somewhere disclose all elements of claim
1 [,] the elements are not 'arranged or combined in the same way as the
claim." Br. 5 (citing MPEP ,r 2152.02(b ); quoting Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008)). Particularly,
Appellant contends that Levy does not teach a mouth piece, as claimed. Id.
In support, Appellant reproduces Figures 2 and 3 of Levy and Figure 27 of
the application for comparison. Id. at 6. Appellant contends these figures
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show that Levy's mouthpiece 16 and fastening assembly 18 are separated by
long cord 14, which is not the same as the mouth piece, as claimed. Id. at 6.
Specifically, Appellant contends that mouthpiece 16 lacks a "spring loaded
clam-shell-like arrangement," and Levy also does not disclose "a grasp
portion, a bite guard portion, and a clip opening portion," as arranged in
claim 1. Id. at 7. Further, Appellant contends, Levy's "clip 18 is located
entirely separate from any piece that a user would bite on 16." Id. (citing
Levy, Fig. 3).
The Examiner responds:
Claim 1 as presented does not require the upper and lower
portions[3J of the device to form into a spring loaded clam-shell-
like clip, but rather that the mouth piece is configured to
include upper and lower portion and a means for attaching to a
user's clothing via a spring loaded clam-shell-like structure.
Ans. 23.
We disagree with the Examiner's interpretation of the language of
claim 1. Claim 1 recites a mouth piece that has "symmetric top part and
bottom part configured in a spring loaded clam-shell-like arrangement." Br.
13 (Claims App. (emphasis added)). We construe this claim language as
requiring the mouth piece to have symmetric top part and bottom part, and
as requiring the top and bottom parts to be configured in a spring loaded
clam-shell-like arrangement. In other words, we interpret the phrase
"configured in a spring loaded clam-shell-like arrangement" to modify the
phrase immediately preceding it, that is, "symmetric top part and bottom
part." This understanding comports with embodiment G depicted in
3 We understand the Examiner to be referring to the claimed "top part" and
"bottom part" as an "upper portion" and "lower portion," respectively.
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Appellant's Specification in Figures 25-28. Id. at 3 (Appellant identifying
claim 1 as covering embodiment G shown in Figures 25-28). We do not
read the claim to cover other embodiments depicted in Appellant's
Specification, such as embodiments C and F, shown in Figures 9-12 and 21-
24. See Ans. 24 (Examiner interpreting claim 1 to cover embodiments C and
F).
The Examiner also states that claim 1 "does not require the user to
bite down on a clam-shell-like clip but on a mouth piece." Id.
We again disagree. Claim 1 recites that "the top and bottom bite
guard portions are each shaped to allow the user to bite." Br. 13 (Claims
App.). The claim also requires that each of the top part and bottom part of
the mouth piece includes a "bite guard portion," such that top bite guard
portion and bottom bite guard portion are included in the top part and bottom
part, respectively. Id. It follows from the claim language that biting on the
top and bottom bite guard portions is biting on the mouth piece "configured
in a spring loaded clam-shell-like clip arrangement."
Claim 1 further requires that the top grasp portion and the bottom
grasp portion of the top part and the bottom part, respectively, of the mouth
piece are separated by a spring that provides a preloaded force on the top
opening portion and the bottom opening portion of the top part and bottom
part, respectively, of the mouth piece.
We are persuaded that Levy's device shown in Figures 2 and 3, for
example, does not include all elements of claim 1. Levy describes element
16 as mouthpiece 16. Levy also describes that "the golfer 12 put[ s] the
mouthpiece 14 [sic, 16] into his mouth." See Levy, col. 3, 11. 48--49. We
note, "[p ]rior art references may be 'indicative of what all those skilled in
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the art generally believe a certain term means ... [and] can often help to
demonstrate how a disputed term is used by those skilled in the art."' In re
Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999) (quoting Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996)). "Accordingly, the
PTO' s interpretation of claim terms should not be so broad that it conflicts
with the meaning given to identical terms in other patents from analogous
art." Id. Here, Levy demonstrates how the term "mouthpiece" is used by
those of ordinary skill in the art of athletic training devices. We agree with
Appellant that Levy's mouthpiece 16 does not have symmetric top part and
bottom part, where these parts are configured in a spring loaded clam-shell-
like arrangement, as we construe claim 1. In fact, the Examiner
acknowledges in annotated Figures 2 and 3 of Levy that fastening element
18 includes a "spring loaded clam-shell-like clip." Ans. 24. Accordingly,
the Examiner's finding that Levy discloses a mouth piece, as claimed, is
premised on an unreasonable claim construction and is not supported by a
preponderance of the evidence.
For these reasons, we do not sustain the rejection of claim 1, or of
claims 2, 3, 5, and 6 depending therefrom, as anticipated by Levy.
Claims 13-16
Claim 13 recites a method of using an athletic training device,
comprising, inter alia, "attaching said mouth piece with integral clam-shell-
like clip directly to a user's shirt/apparel at either of the left or right breast of
the shirt/apparel or on the collar of the shirt/apparel" and "bit[ing] on a top
and bottom portion of said mouth piece with integral clam-shell-like clip."
Br. 15 (Claims App. (emphasis added)).
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The Examiner finds that, during normal use of Levy's device, the
method steps recited in claim 13 inherently would be met. Final Act. 4
(citing Levy, col. 3, 1. 44---col. 4, 1. 13). Appellant contends that Levy's
mouthpiece 16 cannot inherently achieve the attaching step, as Levy does
not disclose "attaching said mouth piece with an integral clam-shell-like
clip," but rather, discloses attaching the clip. Br. 8. The Examiner responds
that the structure disclosed in Levy is formed into an integral device. Ans.
25. The Examiner submits that the term "integral" is defined as "formed
into one-piece," which "can be molded as a unitary piece or it can be
permanently or removably joined together to form a unit." Id. The
Examiner determines, "[ s ]ince the device disclosed by Levy is a unitary
piece[,] the mouth piece is naturally directly attached to a user's apparel and
as noted above, the clip disclosed by Levy is clam-shell-like." Id. The
Examiner determines that claim 13 does not preclude a "cord from
connecting the mouth piece to the 'clam-shell-like clip."' Id. at 25-26.
In contrast to claim 1, claim 13 does not recite that the mouth piece
includes a clam-shell-like-clip, that is, a clam-shell-like-clip forms part of
the mouth piece. Rather, the claim requires the mouth piece to be integral
with the clam-shell-like-clip. Appellant does not provide any persuasive
argument why the Examiner erred in finding that Levy's mouthpiece 16 is
"integral with" fastening assembly 18. Levy discloses that fastening element
18 is detachably secured to distal end 14D of cord 14. See Levy, col. 3, 11.
36-41, Fig. 5. Accordingly, Levy does not appear to disclose that
mouthpiece 16, cord 14, and fastening element 18 are molded as a single
piece. However, even if Levy's mouthpiece 16, cord 14, and fastening
assembly 18 are not molded as a single piece, these elements can be
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considered as removably joined together to form a device 10, consistent with
the Examiner's proposed definition of "integral." See Ans. 25.
Appellant also contends that Appellant's "mouthpiece includes the
grasp 106, the spring loaded clip 107 and clip opening 102, as shown
above." Br. 8. However, claim 13 does not recite these structural features
of the mouth piece. Accordingly, Appellant's argument is premised on
limitations that are not claimed. Limitations that do not appear in the claims
cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348
( CCP A 1982 ). Additionally, Appellant does not explain persuasively why
fastening element 18 cannot be considered to be configured to correspond to
the claimed "clam-shell-like-clip."
Appellant contends that Levy does not disclose the step of "attaching
said mouth piece ... directly to a user's shirt at either the left or right breast
of the shirt or on the collar," but instead, "discloses attaching the clip,
attached to a long cord then a mouth piece, at a user's waist." Br. 8-9.
Levy describes use of golf training device 10, as follows:
FIG. 1 shows the golf training device 10 in use. To use the
instant invention the golfer 12, who is wearing a shirt 13, secures
the fastening assembly 18 of the fully assembled golf training
device 10 to the shirt 13 (or any other suitable article of clothing)
at a location such that upon the golfer 12 putting the mouthpiece
14 [ sic, 16] into his mouth, the cord 14 located between said
mouthpiece 16 and fastening assembly 18 is semi-taught [sic,
taut] when the golfer's 12 head is tilted straight downward.
Levy, col. 3, 11. 44--52 (emphasis added). Accordingly, Levy discloses
attaching mouthpiece 16 with integral fastening assembly 18 to shirt 13.
Figure 1 of Levy appears to show fastening assembly 18 secured to shirt 13
above golfer 12's waist. We are unable to find any disclosure in Levy that
fastening element 18 is attached at a user's waist, as Appellant contends.
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However, we agree with Appellant in that Levy does not explicitly disclose
that fastening assembly 18 is secured to shirt 13 at either the left or right
breast of shirt 13. Thus, we agree that Levy does not anticipate claim 13.
Nonetheless, we determine that it would have been obvious to one of
ordinary skill in the art to attach Levy's mouthpiece 16 with integral
fastening assembly 18 to a shirt, by securing fastening assembly 18 at either
the left breast or the right breast of the shirt, such that cord 14 is semi-taut
when the golfer's head is tilted straight downward. Simply repositioning the
fastening location, disclosed in Levy to be slightly below the left breast or
the right breast of the shirt, to a location slightly higher does not present a
patentable distinction over the method disclosed in Levy. To ensure that
cord 14 is semi-taut during such use, one skilled in the art would know to
adjust the length of cord 14, as appropriate, depending on the height of the
golfer. Thus, we determine that the method recited in claim 13 would have
been obvious to one of ordinary skill in the art in view of Levy. Pursuant to
37 C.F.R. § 4I.50(b), we enter a new ground of rejection against claim 13,
and of claims 14--16, which are not separately argued, under 35 U.S.C.
§ 103(a) as unpatentable over Levy.
Claims 1 7 and 18
The Examiner finds that Levy discloses all limitations in claim 17.
Final Act. 4--5. Particularly, the Examiner finds that Levy discloses a
detachable mouth piece (mouthpiece 16) including a female detachable bite
guard that is a spherical dome shape and has a top portion configured for a
user to bite on ("forward portion of the mouth piece which includes a raised
spherical domed shaped end portion"), and a bottom portion; and a male
detachable clip (pressure clip 22) configured to lockingly engage with the
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bottom portion of the female detachable bite guard through the user's shirt
or apparel. Id. (citing Levy, col. 3, 1. 44---col. 4, 1. 13, Figs. 2---6).
Appellant contends, inter alia, that Levy's mouthpiece 16 does not
include a male detachable bite guard that lockingly engages with a male
detachable clip, as claimed. Br. 10. The Examiner responds that Levy
shows a male-female connection between cover 20 and clip 22. Ans. 28.
Appellant's contentions are persuasive. It is our understanding that
the Examiner's finding that Levy discloses a female detachable bite guard
that lockingly engages with a male detachable clip is premised on Levy's
fastening element 18 including detachable elements as shown in Figure 5.
However, these detachable elements are not provided in mouthpiece 16,
which is configured to be put into a user's mouth. Accordingly, the
Examiner finding that Levy discloses a detachable mouthpiece, as recited in
claim 17, is premised on an unreasonable claim construction and is not
supported by a preponderance of the evidence.
Thus, we do not sustain the rejection of claim 17, or of claims 18 and
19 depending therefrom, as anticipated by Levy.
Rejection 2
Claims 11, 12, and 19 depend from claim 1 or claim 1 7. The
Examiner's reliance on Kittelsen for teaching "the material used to form the
mouth guard/bite guard portion" does not cure the deficiencies in the
rejection of claims 1 and 17, as discussed above. Final Act. 6. Thus, we
sustain the rejection of claims 11, 12, and 19 as unpatentable over Levy and
Kittelsen for the same reasons as those for claims 1 and 1 7.
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DECISION
We reverse the rejection of claims 1-3, 5, 6, and 13-18 as anticipated
by Levy.
We reverse the rejection of claims 11, 12, and 19 as unpatentable over
Levy and Kittelsen.
We enter a new ground of rejection of claims 13-16 under 35 U.S.C.
§ 103(a) as unpatentable over Levy.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 4I.50(b) also provides:
When the Board enters such a non-final decision,
[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 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.
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(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 MPEP § 1214.01.
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).
REVERSED
37 C.F.R. § 4I.50(b)
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