Ex Parte Davis et al

Patent Trial and Appeal Board

Dec 5, 2012

10839695 (P.T.A.B. Dec. 5, 2012)

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.
10/839,695 05/06/2004 Carrie Lynn Davis 005127.00298 7622
22907 7590 12/06/2012
BANNER & WITCOFF, LTD.
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
HOEY, ALISSA L
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
12/06/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte CARRIE LYNN DAVIS, LASHURYA M. WISE,
JORDAN J. WAND, MICHAEL ROBERT BARON, LOREN G. MYHRE,
and IAN H. MUIR
__________

Appeal 2011-012700
Application 10/839,695
Technology Center 3700
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and ERIC GRIMES,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a vented
garment. The Examiner has rejected the claims as anticipated, obvious and
directed to nonstatutory subject matter. We have jurisdiction under 35
U.S.C. § 6(b). We reverse.
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Application 10/839,695

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STATEMENT OF THE CASE
The Specification discloses “garments that include targeted vented
zones that assist in efficiently and effectively cooling the wearer” (Spec. 3,
¶ 08). Figure 4 of the Specification is shown below:

Figure 4 is “an example upper torso garment in accordance with the
invention having a center back vented zone and two side vented zones”
(Spec. 5, ¶ 15).
Claims 1, 3, 6-8, 11, 12, 17-19, 21, 24, 25, 28 and 56-86 are on
appeal. Claim 1 is representative of the product claims and is directed to a
garment comprising, among other features, vented zones that extend along
the first and second torso sides of the garment structure “from proximate to a
first [and second] underarm seam or a first [and second] arm opening to
proximate to the waist opening of the garment structure.” The full text of
claim 1 is reproduced in the Claims Appendix of the Appeal Brief.
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Claim 19 is representative of the method claims and is directed to a
“method for forming a garment” comprising “providing” first, second, third,
and fourth garment portions, each of which has specified properties. The full
text of claim 19 is reproduced in the Claims Appendix of the Appeal Brief.
The claims stand rejected as follows:
• Claims 1, 3, 6-8, 11, 12, 17-19, 21, 24, 25, 28, and 56-85 under 35
U.S.C. § 102(b) as anticipated by Gracey;1
• Claim 86 under 35 U.S.C. § 103(a) as obvious in view of Gracey
and Emmanuel;2 and
• Claims 19, 21, 24, 25, 58-61, 64, 65, 68, 69, 72, 73, 76, 77, and 82-
85 under 35 U.S.C. § 101 as directed to nonstatutory subject matter.
I.
The Examiner has rejected all of the claims except claim 86 as
anticipated by Gracey, and has rejected claim 86 as obvious in view of
Gracey and Emmanuel. Since the same issue is dispositive for both
rejections, we will consider them together.
The Examiner finds that Gracey discloses a garment that meets all the
limitations of claim 1 (Answer 6-8). The Examiner points to element 30 in
Gracey’s Figures 16a-16c as corresponding to the torso-side vented zones
recited in claim 1 (id. at 7-8).
Appellants argue that Gracey does not disclose a garment with vented
zones that extend along first and second torso sides of the garment structure

1 Gracey, US 6,332,221 B1, Dec. 25, 2001.
2 Emmanuel, US 2003/0061650 A1, Apr. 3, 2003.
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from proximate the underarm seam or arm opening to proximate to the waist
opening, as required by claim 1 (Appeal Br. 16-18).
The Examiner responds that the “term ‘proximate’ is well understood
to mean ‘near or adjacent to’. This is not a definite term as to the exact
location of the vented zone, since the distance accompanying ‘near or
adjacent to’ can be interpreted differently.” (Answer 15.) The Examiner
notes that, although in the Specification “‘proximate’ is defined as ‘within
about 3 inches’, this is still not limiting to the exact location of the vented
zones. Within about 3 inches can accompany many different
measurements.” (Id.)
We agree with Appellants that the evidence does not support the
Examiner’s finding that Gracey discloses a garment with vented zones that
extend along the torso sides of the garment structure from proximate to the
underarm seam or arm opening to proximate to the waist opening of the
garment structure, as required by claim 1. Gracey discloses “articles of
clothing incorporating sectors providing for heat and/or vapour exchange
different from that of the rest of the garment, these sectors being located
specifically, substantially, and substantially exclusively in … temperature
sensitive sites” (Gracey, col. 5, ll. 13-17). Gracey discloses that the
temperature sensitive sites include the armpits, among others (id. at col. 6, l.
50; col. 7, l. 13).
Gracey’s Figures 16a-c are shown below:
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Figures 16 a-c show a “one piece garment, for example a wetsuit or drysuit”
(id. at col. 9, ll. 61-62). Gracey discloses that element 30 of Figure 16c is an
armpit sector (id. at col. 11, l. 24).
We agree with Appellants that the armpit sector of Gracey’s garment
cannot reasonably be understood to extend from proximate an underarm
seam or arm opening to proximate to the waist opening of the garment. The
Specification states that “‘[p]roximate’ to the neck opening 102, as used in
this example (and as also generally used in this specification), means having
an end within about 3 inches from the neck opening 102” (Spec. 13-14,
¶ 43). The Examiner has not pointed to evidence or provided sound
reasoning to show that a person of ordinary skill in the art would have
understood the armpit sectors shown in Gracey’s Figure 16 to extend to
“within about three inches” from the waist opening.
Thus, the Examiner has not shown that Gracey disclosed a product
meeting all of the limitations of claim 1. Like claim 1, the other independent
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claims on appeal (claims 7, 19, and 25) also recite vented zones that extend
to proximate to the waist opening or waist area. We therefore reverse the
anticipation rejection of claims 1, 3, 6-8, 11, 12, 17-19, 21, 24, 25, 28 and
56-85.
The Examiner has also rejected claim 86, which depends from claim
1, under 35 U.S.C. § 103(a) as obvious in view of Gracey and Emmanuel.
The Examiner relies on Gracey as discussed above and relies on Emmanuel
to provide the additional limitation of claim 86 (Answer 12). Thus, the
Examiner has not shown that Emmanuel would have made obvious the
limitation that is missing from Gracey, and we reverse the rejection of claim
86 as well.
II.
The Examiner has rejected claims 19, 21, 24, 25, 58-61, 64, 65, 68,
69, 72, 73, 76, 77 and 82-85 under 35 U.S.C. § 101. The Examiner
concludes that these claims do not define a patent-eligible method because
(1) the only machine recited in the claims does not actually perform any of
the recited steps and “does not alter or transform the garment” (Answer 4-5)
and (2) “the ‘providing’ steps recited in the claims amount to a mere
statement of general concept or an abstract idea…. To supply garment parts
or make them available to use is an abstract idea.” (Id. at 5.)
Appellants argue that the “Supreme Court has ruled that the ‘machine-
or-transformation test’ is not the sole test for determining what constitutes a
process under 35 U.S.C. § 101” (Appeal Br. 15). Appellants argue that the
“claims recite ‘a method of forming a garment’” (id.) and “[f]orming a
garment as recited in claim 19 is, in fact, a transformation, as a garment is
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actually created” (Reply Br. 5). Appellants also argue that “providing” a
garment portion involves a physical action; “[i]f the step of providing a first
garment portion formed of a fabric material was abstract, then no garment
could be formed” (id.).
We agree with Appellants that the Examiner has not shown that the
rejected claims are directed to nonstatutory subject matter. “Phenomena of
nature …, mental processes, and abstract intellectual concepts are not
patentable.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct.
1289, 1293 (2012). The machine-or-transformation test, while “a useful and
important clue … is not the sole test for deciding whether an invention is a
patent-eligible ‘process.”’ Bilski v. Kappos, 130 S.Ct. 3218, 3227 (2010).
Here, the Examiner reasons that the steps of the claims which require
providing particular garment portions amount to a mere statement of a
general concept or an abstract idea. We disagree with the Examiner’s
finding that claim steps that require providing garment portions with
particular characteristics amount to a mere statement of an abstract idea.
The claims require providing specific materials for use in a process of
“forming a garment,” as recited in the preamble of claims 19 and 25.
Although the recitation of “forming a garment” is found in the
preamble of the claims, that language is necessary to give meaning to the
recited process steps and therefore is entitled to weight. See Pitney Bowes
Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (“[I]f the
claim preamble is ‘necessary to give life, meaning, and vitality’ to the claim,
then the claim preamble should be construed as if in the balance of the
claim.”). See also Boehringer Ingelheim Vetmedica v. Schering-Plough
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Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003) (“[P]reamble language will
limit the claim if it recites not merely a context in which the invention may
be used, but the essence of the invention without which performance of the
recited steps is nothing but an academic exercise.”).
We conclude that the Examiner has not carried the initial burden of
showing that the claimed methods are nonstatutory subject matter under 35
U.S.C. § 101. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)
(“[T]he examiner bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability.”).
SUMMARY
We reverse the rejection of claims 1, 3, 6-8, 11, 12, 17-19, 21, 24, 25,
28, and 56-85 under 35 U.S.C. § 102(b), the rejection of claim 86 under 35
U.S.C. § 103(a), and the rejection of claims 19, 21, 24, 25, 58-61, 64, 65, 68,
69, 72, 73, 76, 77, and 82-85 under 35 U.S.C. § 101.

REVERSED

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