Ex Parte Culhane

Board of Patent Appeals and Interferences

Dec 9, 2009

10106681 (B.P.A.I. Dec. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte STEVEN D. CULHANE
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Appeal 2009-000462
Application 10/106,681
Technology Center 3700
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Decided: December 10, 2009
____________________

Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
KEN B. BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Steven D. Culhane (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1, 5-9, 20, and 21. We
have jurisdiction under 35 U.S.C. § 6(b).

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SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
Appellant’s claimed invention pertains to garments to be worn by
outdoors people and which provide comfort and mobility. Spec. 1. Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A garment to be worn by a human being comprising:
a waist portion and a pair of legs extending downwardly
from said waist portion;
each of said legs having an articulated knee portion and a
hinged knee portion;
both the articulated knee portion and the hinged knee
portion being formed from a stretch fabric material;
said stretch fabric material forming the articulated knee
portion having a span greater than a span of the stretch fabric
material forming the hinged knee portion;
other portions of said legs being formed by a non-stretch
fabric material; and
a seat portion formed from a stretch fabric material.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Fels US 1,414,349 May 2, 1922
Aldridge US 5,031,242 July 16, 1991
Baxter US 5,918,319 July 6, 1999

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The following Examiner’s rejections are before us for review:
1. Claims 1, 5-9, 20, and 21 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement;
2. Claims 1, 5, 6, and 21 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Baxter and Aldridge; and
3. Claims 7-9 and 20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Baxter, Aldridge, and Fels.

ISSUES
The Examiner rejected the claims on appeal for lack of enablement
because the Specification does not provide a definition for or examples of
“non-stretch fabric material.” Ans. 3-4, 7. Appellant contends that the term
is well understood by those skilled in the art, and that the Examiner has
failed to establish that undue experimentation would be required to make or
use the claimed garment. App. Br. 5; Reply Br. 2. Thus, the first issue on
appeal is:
Has Appellant shown that the Examiner, in rejecting the claims for
lack of enablement, erred by failing to establish that undue experimentation
would be required to practice the claimed invention?
Appellant contends that the Examiner’s conclusion of obviousness is
erroneous because none of the cited references disclose or render obvious
the formation of a hinged knee portion from a stretch material. See App. Br.
9, 10. Thus, the second issue on appeal is:
Has Appellant shown that the Examiner failed to demonstrate that the
combined teachings of the references would have led one of ordinary skill in
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the art to a garment having a hinged knee portion formed from a stretch
material?

PRINCIPLES OF LAW
When rejecting a claim for lack of enablement, “the [United States
Patent and Trademark Office] bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of protection
provided by that claim is not adequately enabled by the description of the
invention provided in the specification of the application ….” In re Wright,
999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (citing In re Marzocchi, 439 F.2d
220, 223-24 (CCPA 1971)). The test for compliance with the enablement
requirement is whether the disclosure, as filed, is sufficiently complete to
enable one of ordinary skill in the art to make and use the claimed invention
without undue experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir.
1988). Some experimentation, even a considerable amount, is not “undue”
if, e.g., it is merely routine, or if the specification provides a reasonable
amount of guidance as to the direction in which the experimentation should
proceed. Id. (quoting Ex parte Jackson, 217 USPQ 804, 807 (Bd. App.
1982)). The “undue experimentation” analysis involves the consideration of
several factors, including: (1) the quantity of experimentation; (2) the
amount of direction or guidance presented; (3) the presence or absence of
working examples; (4) the nature of the invention; (5) the state of the prior
art; (6) the relative skill of those in the art; (7) the predictability or
unpredictability of the art; and (8) the breadth of the claims. Wands, 858
F.2d at 737.
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In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). The analysis supporting an obviousness
rejection should contain articulated reasoning with some rational
underpinning. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (citations
omitted) (cited approvingly in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007)).

ANALYSIS
The rejection of claims 1, 5-9, 20, and 21 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement
The Examiner found that Appellant’s Specification lacks a definition
for the term “non-stretch fabric material” and fails to provide examples of
such material. Ans. 3. The Examiner maintains that “[a]ll fabrics have
some degree of stretch and without providing examples of what the
‘non-stretch’ material of the invention is, the term is not enabled.” Id. at 7.
The rejection appears to be premised on the Examiner’s belief that the
apparel industry is using the term “non-stretch” incorrectly. See id. at 7-8.
However, enablement is evaluated from the perspective of the person of
ordinary skill in the art, and the Examiner seems to recognize that such
persons have an understanding as to which materials are categorized as
non-stretch. See id. at 7 (“In the industry a material with elastic is the stretch
material and the inelastic/non-elastic material is the more stable/‘non-
stretchable’ material in comparison.”); id. at 8 (“In the appeal [sic, apparel]
industry manufacturers/companies refer to certain materials as ‘non-stretch’,
even through [sic] they exhibit some degree of stretch.”). Thus, we cannot
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find that the Specification’s lack of a definition for or examples of “non-
stretch fabric material” renders the claims non-enabled.
The Examiner also found that it would be difficult for one of ordinary
skill to determine which materials are non-stretch. Ans. 8. However, the
Examiner has not adequately addressed the Wands factors or otherwise
explained why one of ordinary skill in the art would have to engage in undue
experimentation to practice the claimed invention. Even if the determination
would be difficult, as the Examiner maintains, it does not necessarily follow
that undue experimentation would be required. Therefore, the Examiner has
failed to establish a prima facie case of non-enablement of claims 1, 5-9, 20,
and 21, and we are constrained to reverse the rejection.

The rejection of claims 1, 5, 6, and 21 under 35 U.S.C. § 103(a) as being
unpatentable over Baxter and Aldridge
The sole independent claim on appeal, claim 1, recites a garment with
stretch fabric material forming both the articulated knee portion (the portion
over the front of the knee) and the hinged knee portion (the portion over the
back of the knee). The span of the front portion is greater than the back
portion.
Baxter discloses protective pants suitable for motorcyclists where
patches of protective fabric are sewn to the inside of conventional denim
jeans in the front knee portion and seat areas. Baxter, col. 1, ll. 9-15; col. 3,
ll. 15-18; fig. 1. The Examiner found that the protective fabric is a stretch
material, but that Baxter fails to teach stretch material at the hinged knee
portion. See Ans. 4-5. The Examiner turns to Aldridge for the disclosure of
both hinged and articulated knee portions, and found that these portions of
Aldridge’s firefighter pants are formed of a stretch material. See Ans. 5.
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The Examiner concluded that it would have been obvious to provide
Baxter’s pants with Aldridge’s hinged knee portion because the resulting
pants would have stretch articulated and hinged knee portions allowing for
greater movement of the wearer. Ans. 5.
Appellant argues that Aldridge does not teach stretch material at the
knee portions, and thus neither reference discloses or renders obvious a
hinged knee portion of stretch material. App. Br. 8-9. The Examiner does
not direct us to any support in Aldridge indicating that the knees are of
stretch material, and concedes that the flexibility in Aldridge’s garment is
due to the use of bellows at the knee. See Ans. 5, 9. On the record before
us, we cannot find by a preponderance of the evidence that Aldridge
discloses knee portions formed from stretch material. Therefore, the
Examiner’s reasoning – that one would combine the references so as to have
Aldridge’s stretchy hinge portion to allow for greater movement – lacks
factual support.
Additionally, the Examiner has not adequately articulated how the
teachings of Baxter are modified or why one would do so. It is not clear
whether the proposed combination yields motorcycle jeans having
Aldridge’s hinge portion sewn to the inside, or yields jeans in which the
entire knee portions are replaced by stretch material fabric formed into
Aldridge’s bellows. See Ans. 5, 9. As to the first scenario, the Examiner
found Baxter’s denim to be non-stretch, id. at 5, and therefore we fail to see
how the addition of Aldridge’s portions to the inside of non-stretch pants
would result in a more flexible garment. As to the second scenario, the
Examiner has not offered a persuasive explanation why one would insert
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bellow knee portions into a garment designed to resemble conventional
jeans, see Baxter, col. 1, ll. 9-11.
In light of the above, we cannot sustain the obviousness rejection of
independent claim 1 or the rejection of claims 5, 6, and 21 which depend
therefrom.

The rejection of claims 7-9 and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Baxter, Aldridge, and Fels
Claims 7-9 and 20 depend from claim 1. The Examiner found that
Fels discloses a bib overall type garment. The Examiner does not rely on
Fels in any manner that cures the deficiency of the underlying rejection of
claim 1 based on Baxter and Aldridge. Ans. 6, 10-11. Accordingly, we also
reverse the rejection of claims 7-9 and 20.

CONCLUSIONS
Appellant has shown that the Examiner, in rejecting the claims for
lack of enablement, erred by failing to establish that undue experimentation
would be required to practice the claimed invention.
Appellant also has shown that the Examiner failed to demonstrate that
the combined teachings of the references would have led one of ordinary
skill in the art to a garment having a hinged knee portion formed from a
stretch material.
DECISION
The decision of the Examiner to reject claims 1, 5-9, 20, and 21 is
reversed.

REVERSED
Appeal 2009-000462
Application 10/106,681

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