Ex Parte DidierDownload PDFPatent Trial and Appeal BoardNov 9, 201713516827 (P.T.A.B. Nov. 9, 2017) Copy Citation 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. 13/516,827 06/18/2012 Bertrand Didier K-163 (K 80 480/7 ch) 5583 802 7590 ] PATENTTM.US P. O. BOX 82788 PORTLAND, OR 97282-0788 EXAMINER QUINN, RICHALE LEE ART UNIT PAPER NUMBER 3765 NOTIFICATION DATE DELIVERY MODE 11/14/2017 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): IP @ P ATENTTM. U S patents @ onemain.com patenttmus @ gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BERTRAND DIDIER Appeal 2017-001941 Application 13/516,827 Technology Center 3700 Before JOHN C. KERINS, EDWARD A. BROWN, and LYNNE H. BROWNE, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Bertrand Didier (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1—24. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. CLAIMED SUBJECT MATTER Appellant’s invention relates to a face cover device such as goggles or a face mask that provides an improved fit to a user’s face. Spec. p. 1,11. 6—7. Appeal 2017-001941 Application 13/516,827 Claim 1 is independent. Claim 1 is representative and is reproduced below: 1. A face cover device providing a closure over a predetermined area of a face, having a functional part and a face rest part which are interconnected by one connecting section or a plurality of connecting sections, characterized in that the one connecting section or at least one of the plurality of connecting sections is an adjustable connecting section that allows for adjusting the position of the face rest part relative to the functional part by selecting one of a plurality of predetermined positions of the adjustable connecting section, thereby adapting the face rest part to the shape of the face at least in the nose region. THE REJECTIONS The Examiner has rejected: (i) claims 201 and 23 under 35 U.S.C. § 112, second paragraph, as being indefinite2; (ii) claims 1—16, 18—22, and 24 under 35 U.S.C. § 102(b) as being anticipated by Dondero (US 2005/0015862 Al, published Jan. 27, 2005); and (ii) claims 17 and 23 under 35 U.S.C. § 103(a) as being unpatentable over Dondero and Kopfer (US 5,191,364, issued Mar. 2, 1993). 1 Claim 20 is not included in the list of rejected claims, but is included in the body of the rejection. See Final Act. 2—3. This appears to be a clerical error, and we regard claim 20 as being subject to this rejection. 2 We note Appellant’s contention that claim 2 is not indefinite, in response to the Examiner’s concerns that were raised in the Advisory Action mailed February 19, 2016. See Appeal Br. 11—12. However, as the Examiner points out, claim 2 is not rejected as being indefinite. See Ans. 2. 2 Appeal 2017-001941 Application 13/516,827 The Final Action includes an objection based on alleged informalities present in claim 11. Final Act. 3; see also Appeal Br. 12. To the extent that the Examiner continues to maintain this objection, review thereof is a petitionable matter that is not within the jurisdiction of the Board. ANALYSIS Claims 20 and 23—Indefiniteness Claim 20 With respect to claim 20, the Examiner finds that the phrase “the shape of the adjustable part is adjustable” renders the claim indefinite, because it is unclear if Appellant is “trying to say that the material is deformable, flexible, or changes from one shape to another.” Final Act. 3. According to the Examiner, it is unclear how the shape is adjustable. Ans. 2. A claim is properly rejected as being indefinite under 35 U.S.C. § 112, second paragraph if, after applying the broadest reasonable interpretation in light of the specification, the metes and bounds of a claim are not clear because the claim “contains words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1310 (Fed Cir. 2014). Although claim 20 does not set forth the manner in which the shape of the adjustable part is adjustable, that consideration relates to the breadth of the claim, not whether the claim is indefinite. SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed. Cir. 2005) (breadth is not indefmiteness). Accordingly, the rejection of claim 20 as being indefinite is not sustained. 3 Appeal 2017-001941 Application 13/516,827 Claim 23 In regard to claim 23, the Examiner finds that the phrase “preferably flexible” renders the claim indefinite, because it is unclear if the limitation is required by the claim. Final Act. 2; see also Ans. 2. Appellant contends that the phrase does not render the claim indefinite because similar language is recited in claims of other issued patents. Appeal Br. 10. Appellant argues that the phrase merely changes the scope of the claim. Id. The fact that claims in one or more issued patents recite the same language here found to be indefinite is not germane. We agree with the Examiner that inclusion of the term “preferably” makes it unclear whether the limitation is required, and thus the metes and bounds of the claim 23 are unclear.3 See Ans. 2. Accordingly, the rejection of claim 23 as being indefinite is sustained. Claims 1—16, 18—22, and 24—Anticipation—Dondero The Examiner finds, for claim 1, that Dondero discloses a face covering device that provides a closure over a predetermined area of a face, having a functional part 24 and a face rest part 32, which are interconnected by one connecting section or a plurality of connecting sections 28. Final Act. 3; see also Dondero, Fig. 1. The Examiner also finds that Dondero discloses that the one connecting section or plurality of connections 28 is an adjustable connecting section 162 that allows adjusting of the face rest part 3 We observe that claims 3, 5, 11, and 17 also recite “preferably.” See Appeal Br. 28—30, 32 (Claims App.). 4 Appeal 2017-001941 Application 13/516,827 32 relative to the functional part 24, by selecting one of a plurality of predetermined positions of the adjustable connecting section 162, thereby adapting the face rest part 32 to the shape of the face at least in the nose region. Final Act. 3^4 (citing Dondero, Figs. 11—12). Appellant contends that Dondero’s frame 24 and face-contoured perimeter 40 are face rest parts, as opposed to the lens contacting surface 32 cited by the Examiner as corresponding to the claimed face rest part. Appeal Br. 13 (citing Dondero, paras. 48, 61); see also Dondero, Fig. 1. Appellant argues that because the lens contacting surface 32 is oriented away from the face, a user’s nose would contact the lens contacting surface 32 only if the user’s nose loops back towards the face, which is not a normal situation. Appeal Br. 17. As such, Appellant argues that the lens contacting surface 32 cannot contact a nose or other part of the face when Dondero’s face cover device is worn by an individual. Id. The Examiner responds that the bottom surface of the element 32, referred to by Dondero as a lens contacting surface, would rest on a nose when Dondero’s face cover device is worn by an individual. Ans. 3. The Examiner additionally asserts that claim 1 does not require the face rest part be in direct contact with the user’s face. Id. at 4. Dondero fails to evidence that the so-called bottom surface of element 32 would rest on the nose of a user. Referring to Figure 4 of Dondero, it appears that the bottom surface referenced by the Examiner is the bottom surface of the lower part of Dondero’s frame 24, which is the element regarded by the Examiner as corresponding to the claimed functional part, not the claimed face rest part, with element 32 being the vertically disposed front surface of frame 24. However, even if the bottom surface of that lower 5 Appeal 2017-001941 Application 13/516,827 part of frame 24 were regarded as a face rest part, and not part of the claimed functional part, the Examiner does not establish that that surface will come into contact with the user’s face when worn. Indeed, referring to Figure 3 of Dondero, which is the view through which the cross-section of Figure 4 is taken, the lower portion of frame 24 extends horizontally forward from a downwardly sloping element (immediately to the right of reference numeral 84) which a person of ordinary skill in the art would understand to be intended to engage the nose at approximately the bridge thereof. Dondero, Figs. 3, 4; see Reply Br. 3. Only if a person’s nose were to begin to extend horizontally at the bridge area would the bottom surface of the lower portion of frame 24 contact the user’s face. The Examiner’s position that the face rest part need not contact a user’s face calls into question the interpretation of “rest” with respect to whether the “face rest part” is intended to touch the face, as set forth in claim 1. Appellant’s Specification does not appear to provide an explicit definition for the term “rest.” The Specification, however, discloses: The inventive face cover device further comprises a face rest part that preferably has a flat surface lying tight against the surface of a user’s face. The face rest part is adapted to the shape of the human face in an area surrounding the predetermined area of the face over which a closure is to be formed in order to provide a tight fit of the face cover device on a user’s face. Spec. p. 4,11. 19-20 (emphasis added); see also id. at p. 8,11. 10—11. The Specification further discloses that “[a] close contact and a good fit of the face rest part with the user’s face can thereby be assured.” Id. at p. 8,11. 8—9 (emphasis added). 6 Appeal 2017-001941 Application 13/516,827 Based upon the above-quoted passages in the Specification, the broadest reasonable interpretation of the claim term “rest,” requires contact between the face rest part and a user’s face when in use. This construction is consistent with Appellant’s disclosure that adjustment by the adjustable connecting section “allows for positioning the face rest part of the face cover device on the user’s face, such that a close fit is obtained.” Id. at p. 5,11. 21— 23 (emphasis added). Using the above construction of the term “rest,” we agree with Appellant that the Examiner has not established that any part of Dondero element 32 is a face rest part. A reference anticipates claimed subject matter only when every element of the subject matter is literally present, and arranged as in the claim. Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 894 (Fed. Cir. 1984), cert, denied, 469 U.S. 857 (1984); Kalman v. Kimberly- Clark Corp., 713 F.2d 760, 771—72 (Fed. Cir. 1983), cert, denied, 465 U.S. 1026 (1984). The Examiner has not established that claim 1 is anticipated by Dondero, as discussed supra. Accordingly, the rejection of claim 1 and of claims 2—16, 18—22, and 24, which depend therefrom, as being anticipated by Dondero, is not sustained. Claims 17 and 23—Obviousness—Dondero/Kopfer The Examiner does not rely on Kopfer in any manner that remedies the above-noted deficiency in the rejection of claim 1, from which claims 17 and 23 depend, over Dondero. Final Act. 6—7. For the same reasons discussed supra, we do not sustain the rejection of claims 17 and 23. 7 Appeal 2017-001941 Application 13/516,827 DECISION The rejection of claim 20 under 35 U.S.C. § 112, second paragraph, as being indefinite, is reversed. The rejection of claim 23 under 35 U.S.C. § 112, second paragraph, as being indefinite, is affirmed. The rejection of claims 1—16, 18—22, and 24 under 35 U.S.C. § 102(b) as being anticipated by Dondero is reversed. The rejection of claims 17 and 23 under 35 U.S.C. § 103(a) as being unpatentable over Dondero and Kopfer 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). AFFIRMED-IN-PART 8 Copy with citationCopy as parenthetical citation