Ex Parte EGLI

Patent Trial and Appeal Board

Feb 20, 2018

13553510 (P.T.A.B. Feb. 20, 2018)

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.
13/553,510 07/19/2012 LaRECE EGLI EGLR101 6590
21658 7590 02/22/2018
SHAVER & SWANSON, LLP
P.O. BOX 877
BOISE, ID 83701-0877
EXAMINER
VAN BUSKIRK, JAMES M
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
02/22/2018 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):
bob @ shaverswanson. com
amy @ shaverswanson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LARECE EGLI
Appeal 2017-0066191
Application 13/553,5102
Technology Center 3700
Before BRUCE T. WIEDER, KENNETH G. SCHOPFER, and
SHEILA F. McSHANE, Administrative Patent Judges.
SCHOPFER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1—9, 17, 19-21, and 24. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Our decision references the Appeal Brief (“Appeal Br.,” filed Apr. 27,
2016) and Reply Brief (“Reply Br.,” filed Mar. 13, 2017), and the
Examiner’s Answer (“Ans.,” mailed Jan. 12, 2017) and Final Office Action
(“Final Act.,” mailed June 15, 2015).
2 Appellant does not list a real party in interest in either the Appeal Brief or
the Reply Brief.
Appeal 2017-006619
Application 13/553,510
BACKGROUND
According to Appellant, the invention “generally relates to
apparatuses for storage and transportation, and more particularly to a
transport and storage system including, for example, detachable and
interchangeable storage attachments, including apparatuses for jewelry
storage.” Spec. 11.
ILLUSTRATIVE CLAIM
Claim 1 is illustrative of the appealed claims and recites:
1. An adjustable storage system, said system comprising:
a first item, wherein said first item comprising a back, said
back comprising a plurality of connectors for releasably
connecting an attachment;
a plurality of attachments configured to attach with said
connectors to said back, wherein said attachments are configured
to releasably secure said attachment to said back, wherein said
attachments and said connectors are configured such that said
attachments are interchangeable with said connectors, wherein
said attachments are configured to store an object; and
a second item, wherein said second item comprises a
plurality of connectors for releasably connecting said
attachments to said second item, wherein said connectors of said
first item and said connectors of said second item are configured
such that said attachments are configured to be interchangeable
between said connectors of said first item and said connectors of
said second item, wherein said first and said second items
constitute different goods or non-identical items.
Appeal Br. 10.
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Application 13/553,510
REJECTIONS
1. The Examiner rejects claims 1—9, 17, 19-21, and 24 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
2. The Examiner rejects claims 1—9 and 21 under 35 U.S.C. § 112, second
paragraph, as indefinite.
3. The Examiner rejects claims 1—9, 17, 19-21, and 24 under 35 U.S.C.
§ 103(a) as unpatentable over Moshirisfahini.3
DISCUSSION
Written Description
With respect to this rejection, the Examiner finds:
In the original specification, reference number 2 related to the
back. In the amended specification, reference number 2 relates to
the first item. This is new matter and is not allowed. Claims 2-9
are rejected as being dependent on claim 1 and claims 19-21 and
24 are rejected as being dependent on claim 17.
Final Act. 4.
We will not sustain this rejection. The purpose of the written
description requirement is to convey with reasonable clarity to those skilled
in the art that, as of the filing date sought, applicant was in possession of the
invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563-64 (Fed. Cir. 1991). Here, the Examiner has not identified any portion
of the claim that was not adequately described in the Specification as
originally filed. Rather, the Examiner points only to alleged new matter
3 Moshirisfahini et al., US 2009/0288744 Al, pub. Nov. 26, 2009.
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added to the Specification, which is more appropriately the subject of an
objection. See MPEP § 2163.061.
Further, to the extent the Examiner indicates in the Answer that the
addition of the term “a first item” to claim 1 is not supported in the original
Specification, we disagree. See Ans. 5. For example, the Specification
describes a “primary item” that may be “a belt, backpack, or purse.” Spec.
14. We find that this conveys with reasonable clarity that Appellant was in
possession of a first item as claimed at the time of filing of the original
Specification.
Indefiniteness
Claims 1—9
With respect to claim 1, the Examiner indicates that the limitation
“wherein said first and second items constitute different goods or non­
identical items” is indefinite because it “is not clearly understood.” Final
Act. 4. The Examiner states that “[t]he first and second items are what the
‘attachments hook to’ [and] the attachments would be what hold the
different goods or items.” Id. Further, in the Answer, the Examiner
indicates that ambiguity arises because the Specification states that “[i]n a
preferred embodiment, the storage roll is designed to hold a variety of items
including jewelry, but a wide variety of articles or items may be placed in
the storage roll.” Ans. 6 (quoting Spec. 130); See also id. (citing Spec. 14).
Thus, the Examiner indicates that ambiguity arises because the Specification
indicates that an item can be “an item, a good and an article.” Id. at 7. And
“[t]he Examiner questions, if the Appellant can’t decide what an ‘item’ is,
how can a person of ordinary skill in the art at the time the invention was
made be expected to know what an item is.” Id.
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We will not sustain this rejection. The test for definiteness under
35 U.S.C. § 112,12, is whether “those skilled in the art would understand
what is claimed when the claim is read in light of the specification.”
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed.
Cir. 1986). Here, we find that the claim as presently worded would be
readily understood by a person of ordinary skill in the art. Although the
Specification and the claims may use the term “item” broadly, the breadth of
a claim is not to be equated with indefmiteness. See, e.g., In re Miller, 441
F.2d 689, 693 (CCPA 1971). We find that the claim clearly differentiates an
item with connectors and a plurality of attachments that may store an object.
Thus, the wording of the claim itself, contrary to the Examiner’s indication,
does not suggest that the objects held by the plurality of attachments are
items as used in the claim. Furthermore, even if that were the case, we do
not see any ambiguity in the claim. The claim makes clear that the items
include connectors configured to connect with attachments, and one of
ordinary skill in the art would recognize that the object held by one or more
of the plurality of attachments could itself also be an item that includes
connectors.
Claim 21
With respect to claim 21, the Examiner finds that there is insufficient
antecedent basis for the limitations “the first piece in line 4 and second piece
in line 7.” Final Act. 5. In response, Appellant states that “[tjhis appears to
have been an error in drafting of the claims.” Appeal Br. 8. Appellant also
submitted an amendment that sought to amend this claim with the Appeal
Brief, but it does not appear that this amendment has been entered. See
Advisory Action, filed May 10, 2016. Thus, Appellant does not present
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substantive arguments with respect to this rejection and appears to agree that
these terms lack sufficient antecedent basis. Accordingly, we summarily
sustain this rejection.
Obviousness
We are persuaded by Appellant’s argument that the Examiner erred in
finding that Moshirisfahini discloses first and second items as claimed.
Appeal Br. 5—6.
With respect to claim 1, the Examiner finds, inter alia, that
Moshirisfahini discloses an adjustable storage system including a first item
and a second item with connectors and constituting different goods or non­
identical items as well as a plurality of attachments as claimed. Final
Act. 5—6. In particular, the Examiner finds that element 10 is a first item,
elements 20a and 30 are attachments, and that element 20a is also a second
item. Further, in response to Appellant’s arguments, the Examiner finds that
Moshirisfahini discloses four separate items including a main body panel 10,
side panels 20A/B, and a flap panel 30. Ans. 7 (citing Moshirisfahini,
Fig. 1). The Examiner finds that each of these items includes connectors as
claimed such that an attachment could be attached to any one of them. Id.
Claim 1 requires, inter alia, first and second items with connectors
and a plurality of attachments such that the attachments and connectors are
configured such that said attachments are interchangeable with said
connectors. More specifically, claim 1 requires, inter alia, that the second
item is “configured such that said attachments are configured to be
interchangeable between said connectors of said first item and said
connectors of said second item.” Thus, the claims require more than the
mere capability of interchangeability, but require that the second item is
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designed to accomplish the function claimed. See Aspex Eyewear, Inc. v.
Marchon Eyewear, Inc., 672 F.3d. 1335, 1349 (Fed. Cir. 2012) (noting that
claim language “configured to” is construed more narrowly than “capable
of’ and holding that where claim language including the phrase “adapted to”
is to be construed consistent with “configured to” language it requires that
the structure must be “designed or configured to accomplish the specified
objective, not simply that [it] can be made to serve that purpose.”)
With respect to the rejection, we find that the Examiner has not
identified a second item to which the identified attachments 20a and 30 are
configured to attach. Moshirisfahini indicates only that side panels 20a/b
and flap 30 are configured to attach to a single item, body panel 10.
Although Moshirisfahini indicates that body panel 10, side panels 20a/b, and
flap 30 include connectors 14, Moshirisfahini only describes those
connectors as snaps, which would necessarily require corresponding male
and female parts to make a connection. See Moshirisfahini 123. Thus, if
side panel 20a includes male connectors, body panel 10 must necessarily
include corresponding female connectors. Further, side panel 20a and 20b
are depicted as including the same connectors, such that they and flap panel
30 may snap into corresponding connectors on the body panel to form a
finished construction of the handbag. Id. at 124. Based on this description,
we fail to see how either of side panels 20a/b or flap panel may be a second
item as claimed that includes connectors such that the attachments are
configured to be interchangeable between the connectors of the first item
and the connectors of the second item. In other words, the Examiner does
not adequately explain, and it is not readily apparent from Moshirisfahini,
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how the identified plurality of attachments would interchangeably connect to
any of the proposed second items (either side panels or flap panels).
Based on the foregoing, we are persuaded of reversible error in the
rejection of claim 1 as obvious. Accordingly, we do not sustain the rejection
of claim 1 here. We also do not sustain the rejection of claims 2—9, 17, 19—
21, and 24 for the same reasons.
CONCLUSION
We REVERSE the rejection of claims 1—9, 17, 19-21, and 24 under
35 U.S.C. § 112, first paragraph. We REVERSE the rejection of claims 1—9
under 35 U.S.C. § 112, second paragraph. We AFFIRM the rejection of
claim 21 under 35 U.S.C. § 112, second paragraph. We REVERSE the
rejection of claims 1—9, 17, 19—21, and 24 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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