Ex Parte Crocetti

Board of Patent Appeals and Interferences

Jun 14, 2012

11741973 (B.P.A.I. Jun. 14, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOSEPH CROCETTI
____________________

Appeal 2010-005688
Application 11/741,973
Technology Center 3700
____________________

Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
BENJAMIN D.M. WOOD, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-005688
Application 11/741,973

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1-5, 7-9, and 11-15. (App. Br. 2). Claims 6 and 10 have been
canceled. (Id.). We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

THE INVENTION
The invention is directed to a garment for treating obstructive sleep
apnea or snoring. (Spec. 1, ll. 12-13). Independent claim 1, reproduced
below, is representative of the appealed claims.
1. A garment for the treatment of sleep apnea
and/or snoring, to be worn by an individual
afflicted with sleep apnea and/or snoring and
preventing said individual from sleeping in a
supine position, said garment including an
elongate, position control member at the rear of the
garment and extending outwardly therefrom, said
position control member being a continuous
member having transversely spaced-apart side
surfaces, said side surfaces being joined to an outer
surface of said member at elongate side edges, said
side surfaces tapering away from each other in a
direction toward the outer surface, said side
surfaces and/or side edges being located to engage
a mattress or other sleeping surface when an
individual wearing the garment is sleeping in a
lateral position to aid in supporting the individual
in a lateral position.

Appeal 2010-005688
Application 11/741,973

3
THE REJECTIONS
The following rejections are before us for review:
1. The rejection of claims 1, 3-5, 14, and 15 under 35 U.S.C.
§ 102(b) as being anticipated by Parker (US 6,357,444 B1, issued Mar. 19,
2002).
2. The rejection of claims 2, 7-9, and 11-13 under 35 U.S.C.
§ 103(a) as being unpatentable over Parker and Barone (US 4,905,993,
issued Mar. 6, 1990).

ANALYSIS
Claims 1, 3-5, 14, and 15 – Anticipation - Parker
Regarding claim 1, the Examiner found that the recitation "to be worn
by an individual afflicted with sleep apnea and/or snoring" is an intended use
of the garment. (Ans. 3). The Examiner found Parker discloses a garment
that can be used as required by the claim, including a position control
member (pad 110) with transversely spaced-apart side surfaces which taper
away from each other in a direction toward the outer surface. (Ans. 3-4).
The Examiner indicated that the "side surfaces" are "spaced-apart side
surfaces… as pointed by [an] arrow to show element 110" in Figure 1 of
Parker. (Ans. 4). We understand that the Examiner found the "side
surfaces" of pad 110 are the left surface and right surface (identified by
reference number 110) shown in Figure 1.
The Examiner also found:
the outer surface of the position control member
could be either side of element 110, as shown in
figure 1 the side surfaces 110 tapers [sic.] away
Appeal 2010-005688
Application 11/741,973

4
from each other. Depending upon which way user
is looking at the device's position control member,
to one having ordinary skill can see that side
surfaces of Parker's position control member tapers
[sic.] away towards the wider surface of position
control member.
(Ans. 6) (emphasis added). We understand that the Examiner found the
"outer surface" of the pad 110 is either the surface (not shown) that directly
faces the back of the patient 100, or the surface opposite to that surface
(shown), in Figure 1 of Parker.
Appellant contends that Parker's pad 110 does not include "side
surfaces tapering away from each other in a direction toward the outer
surface." (App. Br. 5-6). Appellant contends that "[t]he side surfaces that
taper away from each other in a direction toward the outer surface 22 are
side surfaces 14 and 16, as shown clearly in Figs. 3 and 5." (App. Br. 6).
Figures 3 and 5 of Appellant's application depict a member 12 having
opposed surfaces 22, 24 and opposed surfaces 14, 16. Appellant's
Specification states, "[a]s can be seen best in Figs. 3 and 5, the side surfaces
14 and 16 taper toward each other in an inward direction, from outer surface
22 to inner surface 24 of the position control member 12." (Spec. 4, ll. 5-7).
Appellant contends that, in contrast, the side surfaces of Parker's pad 110
"taper toward each other in a direction toward the outer surface." (App. Br.
6; Reply Br. 2-3) (emphasis added). Appellant contends that the "outer
surface" of Parker's pad 110 is the surface opposite to the surface that
directly faces the back of patient 100 in Figure 1:
In the Parker device, the pad 110 is constructed
specifically to be attached to the straps 112, 114
and 116 with the wide, inner surface against the
Appeal 2010-005688
Application 11/741,973

5
back of the user; the narrow, outer surface facing
away from the user and side surface "tapering
toward" each other in a direction toward the outer
surface.
(Reply Br. 3) (emphasis added). Appellant contends that the Examiner erred
in considering the "inner surface" of Parker's pad 110 as the "outer surface"
specified in claim 1. (Reply Br. 3).
Appellant's contentions are not persuasive. Appellant appears to
contend the Examiner did not construe the direction of taper of the side
surfaces of the claimed position control member as a structural limitation.
(Reply Br. 3). However, we understand the Examiner's position to be that
Parker's pad satisfies all of the structural limitations of the claim. Moreover,
Parker discloses that the device is worn by a patient to prevent sleep apnea
or snoring, as is the claimed garment. (See Parker, col. 8, ll. 30-39).
The Examiner correctly found that Parker's pad 110 includes side
surfaces that taper away from each other in a direction toward the surface of
the pad shown facing the user's back in Figure 1. The issue is whether the
Examiner erred in finding that the claimed "outer surface" reads on the
surface of Parker's pad that is shown facing the user's back.
Firstly, claim 1 itself does not specify any positional relationship
between the "outer surface" and any portion of the garment, or the
individual. The Patent and Trademark Office determines the scope of the
claims "not solely on the basis of the claim language, but upon giving claims
their broadest reasonable construction 'in light of the specification as it
would be interpreted by one of ordinary skill in the art.'" Phillips v. AWH
Corp., 415 F.3d 1303, 1316-17 (Fed. Cir. 2005). Here, Appellant does not
Appeal 2010-005688
Application 11/741,973

6
contend that the Specification specifically defines the term "outer surface,"
or contains any disclosure that precludes the Examiner's construction. See In
re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994); In re Bigio, 381 F.3d 1320,
1325 (Fed Cir. 2004).1 Appellant refers to the embodiment of the garment
shown in Figures 3 and 5 in describing limitations recited in claim 1. (App.
Br. 5-6). The Specification describes the compressible member 12 shown in
these figures as "a preferred structure," and also states that "it is within the
broad scope of this invention to provide side surfaces or walls 14 and 16 in
other orientations." (Spec. 4, ll. 7-11). A particular embodiment appearing
in the written description may not be read into the claim if the claim
language is broader than the embodiment. See Superguide Corp. v. DirecTV
Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). (Spec. 4, ll. 7-11). In view
of the above, Appellant has not provided any persuasive argument why the
Examiner's construction of "outer surface" is in error. Thus, we sustain the
rejection of claim 1. Appellant does not separately argue any specific
limitations of claims 3-5, 14, and 15 which depend from claim 1 and, hence,
we also sustain the rejection of these claims.

1 Appellant's Specification describes "[t]hroughout this application,
reference to the position or location of surfaces or members, (e.g., rear,
upward, lower, side, outer, inner, etc.) refers to the relative
orientation/position of such surfaces or members when the garment is being
worn by an individual who is in a standing position." (Spec. 3, ll. 19-22).
Appellant does not contend, and we do not find, that this description
provides a specific definition of "outer surface" that precludes the
Examiner's construction.
Appeal 2010-005688
Application 11/741,973

7
Claims 2, 7-9, and 11-13 – Obviousness – Parker and Barone
The Examiner found Parker does not disclose "a positioning rib
extending outwardly from the outer surface of the position control member"
(claim 2), and the further limitations of the positioning rib recited in claims
11-13, which depend from claim 2. (Ans. 5).
The Examiner found Barone discloses a lumbar support for weight
lifting comprising a position control member (18) including a rib (14) which
extends outwardly from the outer surface of the position control member.
(Ans. 5-6, citing Barone Fig. 2). The Examiner concluded that it would have
been an obvious design choice to make Parker's position control member to
have a positioning rib as taught by Barone, to restrict the user from turning
on their back. (Ans. 6).
Appellant contends that Parker relates to a device for limiting body
motion of a patient lying down, and Barone relates to lumbar support worn
by a standing weightlifter, and a person skilled in the art of dealing with
snoring and sleep apnea problems would have had no reason to modify
Parker's garment to include a raised positioning rib in view of Barone's
disclosure. (Reply Br. 4). Appellant's contentions are persuasive.
Barone discloses a lumbar support 10 for weight lifting that includes a
cylindrical surface 18 with a spinal extension 14 which is centered against
the spinous process of the wearer. (See Barone col. 2, ll. 40-45; col. 3, ll.
10-14). Claim 1 recites that the side surfaces taper away from each other in
a direction toward the outer surface, and claim 2 recites the "positioning rib
extending outwardly from the outer surface of the position control member."
The Examiner has not articulated an adequate reason based on rational
Appeal 2010-005688
Application 11/741,973

8
underpinnings why one of ordinary skill in the art would have provided
Barone's spinal extension 14 on the surface of Parker's pad 110 facing the
back of the patient. Hence, we do not sustain the rejection of claim 2, and
claims 7-9 and 11-13 which depend from claim 2.

DECISION
1. The rejection of claims 1, 3-5, 14, and 15 under 35 U.S.C.
§ 102(b) as being anticipated by Parker is AFFIRMED.
2. The rejection of claims 2, 7-9, and 11-13 under 35 U.S.C.
§ 103(a) as being unpatentable over Parker and Barone 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

mls