Ex Parte Culhane

Board of Patent Appeals and Interferences

Aug 30, 2007

10687228 (B.P.A.I. Aug. 30, 2007)

The opinion in support of the decision being entered today 1
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is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte STEVEN D. CULHANE
____________________

Appeal 2006-3161
Application 10/687,228
Technology Center 3700
____________________

Decided: August 30, 2007
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Before MURRIEL E. CRAWFORD, JENNIFER D. BAHR, and LINDA E.
HORNER Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection
of claims 10 to 19. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
Appellant invented a garment to be worn by a human being
(Specification 1).

Appeal 2006-3161
Application 10/687,228

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Claim 10 under appeal reads as follows:
10. A garment to be worn by a human being
comprising:

a front portion and a rear portion;

a pair of arms being joined to said front and rear portions;

each of said arms having an outer elbow portion formed
from a stretch fabric material and other portions formed
from a non-stretch fabric material; and

underarm portions formed from a stretch fabric material.

The Examiner rejected claims 10 to 19 under 35 U.S.C. § 112, first
paragraph, because the specification does not reasonably provide enablement
for defining a non-stretch fabric material.
The Examiner rejected claims 10 to 13 under 35 U.S.C. § 102(b) as
being anticipated by Kratz.
The Examiner rejected claims 14 to 16 under 35 U.S.C. § 103(a) as
being unpatentable over Kratz in view of Blauer.
The Examiner rejected claims 17 to 19 under 35 U.S.C. § 103(a) as
being unpatentable over Kratz in view of Lipson.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lipson US 2,002,955 May 28, 1935
Kratz US 4,722,099 Feb. 2, 1988
Blauer US 5,593,754 Jan. 14, 1997

Appellant contends that the Examiner has not made out a case of non-
enablement because the Examiner has not established or averred that the
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present invention could only be made with a significant amount of
experimentation (Brief p. 5).
Appellant further contends that Kratz does not disclose outer elbow
portions formed from a stretch fabric material (Brief p. 8).

ISSUES
The first issue is whether the Appellant has shown that the Examiner
erred in holding that the recitation in claim 10 of a “non-stretch” fabric
material does not satisfy the requirements of the enablement portion of the
first paragraph of 35 U.S.C. § 112.
The second issue is whether the Appellant has shown that the
Examiner erred in finding that Kratz discloses an outer elbow portion
formed from a stretch fabric material.

FINDINGS OF FACT
The Appellant discloses and claims a garment with outer elbow
portions 86, 88 formed of stretch fabric material (Claim 10; Specification, p.
8; Figure 5).
Kratz discloses a garment to be worn by a human being having
portions of the garment formed of mesh material and portions of the garment
comprised of natural or artificial leather (col. 1, ll. 63 to 67). The Examiner
is of the opinion that the mesh material is a stretch material and that this
mesh material is formed in the outer elbow portions.
Kratz teaches that the mesh material is located from the armpits
forward on the chest, rearward toward the back, and on the inside elbows
and the neck (col. 1, l. 61 to col. 2, l. 1). Kratz does not disclose that the
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outer elbow portions are formed of mesh material. In fact, Kratz discloses
that the outer elbow is formed of natural or artificial leather and may be
provided with reinforcing patches (Figure 3; col. 3, ll. 27 to 28; col. 7, ll. 12
to 18).
PRINCIPLES OF LAW
An analysis of whether the claims under appeal are supported by an
enabling disclosure requires a determination of whether that disclosure
contains sufficient information regarding the subject matter of the appealed
claims as to enable one skilled in the pertinent art to make and use the
claimed invention. The test for enablement is whether one skilled in the art
could make and use the claimed invention from the disclosure coupled with
information known in the art without undue experimentation. See United 12
States v. Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed.
Cir. 1988),
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cert. denied, 109 S.Ct. 1954 (1989); In re Stephens, 529 F.2d
1343, 1345, 188 USPQ 659, 661 (CCPA 1976).
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DISCUSSION
We will not sustain the Examiner’s rejection of claims 10 to 19 under
the enablement requirement of the first paragraph of 35 U.S.C. § 112
because the Examiner has not established that a person of ordinary skill in
the art would not be able to make or use the claimed garment with non-
stretch fabric material without undue experimentation. In fact, the Examiner
has not even discussed undue experimentation. In addition, in our view a
person of ordinary skill in the art would know how to make a non-stretch
fabric material (See Appendix D to the Appeal Brief).
We will not sustain the Examiner’s prior art rejections because each
of the rejections relies on Kratz for teaching a stretch material in the outer
elbow portion of the garment. Even if we were to agree with the Examiner
that the mesh material disclosed in Kratz is a stretch material, such mesh
material is not disposed in the outer elbow portion of the garment.

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REVERSED

jlb

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