Ex Parte Ernst et al

Patent Trials and Appeals Board

Mar 29, 2019

13978172 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/978,172 07/03/2013
160504 7590 04/02/2019
QUARLES & BRADY LLP/ITW Automotive OEM
Attn: IP Docket
411 E. WISCONSIN A VE.
SUITE 2350
MILWAUKEE, WI 53202-4426
Craig E. Ernst JR.
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
480805.00282(60251-US) 5232
EXAMINER
BATTISTI, DEREK J
ART UNIT PAPER NUMBER
3734
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIGE. ERNST JR., JEFFREY D. ANDERSON,
CHRISTOPHER A. J. IANNELLO, MARTIN J. NILSEN,
DAVID A. SHEREYK, and TIMOTHY P. COFFIELD 1
Appeal2018-007716
Application 13/978, 172
Technology Center 3700
Before JOHN C. KERINS, DANIELS. SONG, and SEAN P. O'HANLON,
Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Craig E. Ernst Jr. et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the final rejection of claims 8-11 and 21. Pending claims 6, 7, 12-15,
and 18-20 are allowed. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We AFFIRM.
1 The Appeal Brief identifies Illinois Tool Works, Inc., as the real party-in-
interest. Appeal Br. 1.
Appeal2018-007716
Application 13/978, 172
THE INVENTION
Appellants' invention relates to a personal equipment suspension
system including an active lumbar support mechanism. Independent claim
21 is illustrative of the claimed invention and reads as follows:
21. A personal equipment suspension system comprising:
a waist encircling belt to be worn by a user in surrounding
relation to the waist,
an active lumbar support mechanism;
mechanism connecting said active lumbar support mechanism to
said waist encircling belt for positioning in association with the
lumbar region of the user,
said active lumbar support mechanism comprising:
a molded polymeric member defining a distribution plate
having a generally rigid perimeter rim, and
a lattice of resilient webs in tension
wherein said distribution plate is sized and arranged to overlie a
user's lumbar region on attachment of said belt to the user's
waist.
THE REJECTIONS
The Examiner rejects:
(i) claims 8-11 and 21 under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter regarded as the invention;
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Application 13/978, 172
(ii) claims 8-10 and 21 under 35 U.S.C. § I02(b) as being anticipated
by Swetish (US 5,954,253, issued Sept. 21, 1999) (hereafter "Swetish
'253"); and
(iii) claims 8-11 and 21 under 35 U.S.C. § I03(a) as being
unpatentable over Swetish (US 6,199,732 Bl, issued Mar. 13, 2001)
(hereafter "Swetish '732") in view of Swetish '253 and Mc Umber (US
6,662,981 B2, issued Dec. 16, 2003).
ANALYSIS
Claims 8-11 and 21--35 US.C. § 112, second paragraph
The Examiner finds claim 21 to be indefinite for two reasons. Final
Act. 2. One reason is that "[t]he mechanism connecting the active lumbar
support mechanism to the waist encircling belt is unclear," and lacks
sufficient antecedent basis. Id. The Examiner further explains that, without
providing antecedent basis for the claim term "mechanism," there would be
some confusion as to whether the mechanism is a different mechanism from
the claimed lumbar support mechanism. Ans. 2.
Although claim 21 would preferably include the article "a" preceding
the recitation of "mechanism," the claim is not rendered indefinite by its
absence. The "mechanism" at issue is recited as "connecting said active
lumbar support mechanism to said waist encircling belt." Appeal Br.,
Claims Appendix. Taking the entire clause into account, it is sufficiently
clear that the recited "mechanism" is not the same element as the active
lumbar support mechanism.
We do not sustain this basis for the indefiniteness rejection.
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Appeal2018-007716
Application 13/978, 172
The Examiner additionally finds the claim to be indefinite, in that "it
is [] unclear how the lattice is in tension without the terminals."2 Final Act.
2. Appellants respond by pointing to paragraphs 29--31 of their
Specification, and quote from paragraph 29 language that states that plate
310 (which embodiment does not include terminals) is to be a molded
polymeric member with a formed lattice of resilient webs, and further that
"[t]he lattice is in tension." Appeal Br. 4. The Examiner clarifies that the
issue with the claim is not that the Specification fails to describe that the
lattice is in tension, but rather it is unclear how the lattice is in tension.
Ans. 2.
We agree with the Examiner that Appellants' argument against the
rejection might be germane to the issue as to whether the claim language has
adequate written descriptive support as required by the first paragraph of
35 U.S.C. § 112, however, it does not address the position taken by the
Examiner that claim 21 is unclear and indefinite on the basis that it is not
understood from the claim language how the recited lattice is in tension.
Appellants' argument does not address the rejection set forth by the
Examiner, and therefore does not apprise us of error in the rejection. 3
2 Certain embodiments of the invention disclosed, and claimed in the
allowed claims, call for a frame having attachment terminals, with a
membrane (roughly corresponding to the lattice of resilient webs in claim
21) connected to and held in tension by attachment terminals on the frame.
See, e.g., Appeal Br., Claims Appendix (allowed claims 6, 18); Spec., Figs.
5-7.
3 We note further that a rejection based on the enablement requirement set
forth in the first paragraph of 35 U.S.C. § 112 might be appropriate, for the
same reason stated by the Examiner, but we do not use our discretion at this
time to enter a new ground of rejection on that statutory basis.
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Appeal2018-007716
Application 13/978, 172
The rejection of claim 21, and of claims 8-11 depending therefrom, is
sustained as to this latter basis.
Claims 8-10 and 21--35 US.C. § 102(b)--Swetish '253
The Examiner finds that Swetish '253 discloses all limitations
appearing in claim 21, including an active lumbar support mechanism
(flexible frame 18) which comprises a distribution plate sized and arranged
to overlie a user's lumbar region on attachment of a belt to a user's waist.
Final Act. 3. Appellants argue that the distribution plate identified by the
Examiner is not arranged to overlie a user's lumbar region, rather only the
belt in Swetish '253 overlies the lumbar region. Appeal Br. 5. The
Examiner replies that claim 21 "does not claim that the belt [ sic, distribution
plate] needs to directly overlie the user's lumbar region." Ans. 3 (emphasis
omitted).
In taking this position, however, the Examiner fails to explain how
flexible frame 18 of Swetish '253 serves as an active lumbar support, as
claimed. Figure 9 of Swetish '253 evidences that flexible frame 18,
identified by the Examiner as corresponding to the active lumbar support
and distribution plate, is spaced apart from belt 84, and, as such, it appears
that the distribution plate does not provide any support to the user's lumbar
region. Thus, although claim 21 does not use the term "directly" in defining
that the distribution plate is arranged to overlie the user's lumbar region, the
claim as a whole requires the distribution plate to provide lumbar support,
and Swetish '253 has not been shown to disclose this aspect of claim 21.
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Appeal2018-007716
Application 13/978, 172
The rejection of claim 21, and of dependent claims 8-10, as
anticipated by Swetish '253, is not sustained.
Claims 8-11 and 21--35 US.C. § 103(a)--Swetish '732 in view of Swetish
'253 and McUmber
The Examiner takes the position that Swetish '732 discloses most of
the limitations set forth in claim 21, including an active lumbar support
mechanism (back panel 22 of load support 14) which defines a distribution
plate, but does not disclose that the distribution plate is molded with a lattice
of resilient webs in tension. Final Act. 5. The Examiner cites to Mc Umber
as teaching a distribution plate (lumbar support element 18) that is asserted
to be a molded polymeric member having a lattice of resilient webs. Id. The
Examiner additionally cites to Swetish '253 in the same manner as in the
anticipation rejection above, as disclosing a distribution plate with a lattice
of resilient webs. Id. The Examiner concludes that it would have been
obvious to have the distribution plate (back panel 22) of Swetish '732 be a
molded polymeric member that has a lattice of resilient webs in tension, "as
disclosed by Mc Umber and [Swetish] '253, in order to provide a strong yet
comfortable support to the user's back." Id.
Appellants maintain that back panel 22 of Swetish '732 is not an
active lumbar support mechanism, and that neither Swetish '253 nor
Mc Umber discloses a distribution plate comprising a molded polymeric
member having a lattice of resilient webs in tension. Appeal Br. 6.
Appellants note Swetish '732 discloses that back panel 22 resides in a plane
parallel to the back of the user, and that a mounting device spaces load
support 14 (of which back panel is a part) from the user. Id. Appellants
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Application 13/978, 172
make the same arguments directed to Swetish '253 as in the anticipation
rejection discussed above. Id. As to McUmber, Appellants point out that
the section of the disclosure of Mc Umber identified by the Examiner as
being pertinent ( column 4, lines 10-11) describes lumbar support element 18
as being a lightweight but rigid material. Id.
Appellants have the better position. The Examiner has not established
that either back panel 22 of Swetish '732 or flexible frame 18 of Swetish
'253 operates in any manner as an active lumbar support mechanism, in that
the elements do not engage, either directly or indirectly, the lumbar region of
the user. See, e.g., Swetish '732, Fig. 4; Swetish '253, Fig. 9. McUmber is
disclosed as having a lumbar support element, but describes that the element
is rigid, thus not having a lattice of resilient webs as required by claim 21.
See, e.g., Mc Umber, 4: 10-12. Thus, even if Swetish '732 were somehow
modified in view of the lumbar support element of Mc Umber, the modified
device does not appear to render obvious the subject matter of claim 21.
The rejection of claim 21, and of claims 8-11 depending therefrom, as
being unpatentable over Swetish '732 in view of Swetish '253 and
McUmber, is not sustained.
DECISION
The rejection of claims 8-11 and 21 under 35 U.S.C. § 112, second
paragraph, is affirmed.
The rejection of claims 8-10 and 21 under 35 U.S.C. § 102(b) is
reversed.
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Appeal2018-007716
Application 13/978, 172
The rejection of claims 8-11 and 21 under 35 U.S.C. § 103(b) 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
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