11535179 (B.P.A.I. Sep. 16, 2009)

Ex Parte Francis

Board of Patent Appeals and InterferencesSep 16, 2009

11535179 (B.P.A.I. Sep. 16, 2009)

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. 11/535,179 09/26/2006 Peter Francis 09470001AA 7175 30743 7590 09/16/2009 WHITHAM, CURTIS & CHRISTOFFERSON & COOK, P.C. 11491 SUNSET HILLS ROAD SUITE 340 RESTON, VA 20190 EXAMINER HOEY, ALISSA L ART UNIT PAPER NUMBER 3765 MAIL DATE DELIVERY MODE 09/16/2009 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 BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte PETER FRANCIS __________ Appeal 2009-004567 Application 11/535,179 Technology Center 3700 __________ Decided: September 16, 2009 __________ Before ERIC GRIMES, FRANCISCO C. PRATS, and MELANIE L. McCOLLUM, Administrative Patent Judges. McCOLLUM, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a shirt and a method of presenting a conventional business appearance. The Examiner has rejected the claims as anticipated or obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2009-004567 Application 11/535,179 2 STATEMENT OF THE CASE The Specification discloses a men’s shirt “composed of two sections, an office-style section and a jersey-style section” (Spec. 1). Specification Figure 2 is reproduced below: In the embodiment depicted in Figure 2: [O]ffice shirt 2 . . . consists of a traditional office shirt collar section 20 that will protrude from the jacket . . . at the neck area, and further consists of traditional office shirt sections 21R, 21L including at least a traditional cuff shirt. Traditional office shirt sections 21R, 21L preferably include a traditional sleeve section of sufficient length for comfortable wear when sewn to a sleeve 28 of a short-sleeve baseball jersey 29. (Id. at 4.) Appeal 2009-004567 Application 11/535,179 3 Claims 1-6, 8, 9, 11, and 12 are pending and on appeal (App. Br. 5). We will focus on claim 1, which reads as follows: 1. A menswear shirt wearable under a sports jacket or a suit jacket, comprising: cuffs, a collar and a section adjoining the collar, of office appearance, and at least one section of the shirt which is not visible when the shirt is worn under a sports jacket or suit jacket, wherein the at least one not-visible section is a short-sleeve baseball jersey. Claims 1-6, 8, 9, and 111 stand rejected under 35 U.S.C. § 102(b) as anticipated by Lippman (US 2,846,687, Aug. 12, 1958) (Ans. 3). Claim 12 stands rejected under 35 U.S.C. § 103(a) as obvious over Lippman (Ans. 5). ANTICIPATION The Examiner finds: Lippman discloses a man’s shirt 10 comprising collar 24, preferably formed of a plurality of plies of woven collar fabric material, such as a wrinkle-resistant synthetic polymer material like Dacron or nylon . . . , cuffs 38 of multi-ply woven material similar to that of fold-over collar 24 . . . , and yoke 42 and woven shirt-front 58, [which] present appellant’s section adjoining the collar, of office-appearance. Lippman additionally discloses a body of knitted material 30 . . . , appellant’s at least one section of the shirt not visible when the shirt is worn under a sports jacket or suit jacket. (Ans. 3.) The Examiner also finds that, “[a]s a baseball jersey is anything that is capable of being worn when playing baseball and the sleeve portion of knitted body 30 stops short of the wearer’s wrists due to cuffs 38, said 1 The Answer states that claim 7 is also rejected on this basis (Ans. 3). However, claim 7 was cancelled (App. Br. 5). Appeal 2009-004567 Application 11/535,179 4 knitted material 30 anticipates present appellant’s short sleeve baseball jersey” (id. at 4). Appellant argues that “Lippman fails to disclose a short-sleeve baseball jersey” (App. Br. 12). In particular, Appellant argues that “Lippman’s shirt is not short-sleeved” (Reply Br. 1). Issue Did the Examiner err in concluding that Lippman discloses a shirt having a section that is a short-sleeve baseball jersey? Findings of Fact 1. Lippman discloses a shirt that “possesses both the appearance of a dress shirt, and the ease of wear and comfort of a sport shirt” (Lippman, col. 1, ll. 15-18). 2. Lippman’s Figure 1 is reproduced below: Appeal 2009-004567 Application 11/535,179 5 Lippman’s Figure 1 depicts a shirt 10 “of the slip-over or pull-over dress shirt variety” (id. at col. 2, ll. 35-38). 3. Lippman discloses that “[s]hirt 10 is provided with a permanently attached fold-over collar . . . 24, . . . preferably formed of a plurality of plies of woven collar fabric material, preferably a wrinkle- resistant synthetic polymer material” (id. at col. 2, ll. 53-61). 4. Lippman also discloses that the “body 30 of shirt 10 is formed of knitted material” and that cotton fibers are “preferred for the knitted body portion, because of their high absorbency” (id. at col. 2, ll. 63-69). 5. In addition, Lippman discloses that the “[s]leeves 32 are of knitted material identical to that forming body 30” (id. at col. 2, ll. 70-71). 6. Lippman also discloses that the “[s]leeves 32 are provided with cuffs 38 of multi-ply woven material, such as material similar to fold-over collar 24” (id. at col. 3, ll. 5-7). 7. In addition, Lippman discloses a woven shirt front 58 “formed of a continuous piece of fabric, made from a wrinkle-resistant synthetic polymer” (id. at col. 3, ll. 25-28). Principles of Law “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). “It is axiomatic that, in proceedings before the PTO, claims in an application are to be given their broadest reasonable interpretation consistent with the specification.” In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983). Appeal 2009-004567 Application 11/535,179 6 Analysis Claim 1 requires that a section of the shirt is a short-sleeve baseball jersey. We interpret this language to require that the jersey section of the shirt extends to and not beyond a sleeve length that one of ordinary skill in the art would consider a short-sleeve. Lippman discloses a shirt having a body 30 formed of cotton knitted material and sleeves 32 formed of the same knitted material (Findings of Fact (FF) 4-5). Lippman discloses that sleeves 32 extend to the cuffs (FF 2 & 6). The Examiner finds that, as “the sleeve portion of knitted body 30 stops short of the wearer’s wrists due to cuffs 38, said knitted material 30 anticipates present appellant’s short sleeve baseball jersey” (Ans. 4). However, in the absence of any evidence to support this finding, we agree with Appellant that the Examiner has not set forth a prima facie case that one of ordinary skill in the art would consider a shirt to be a short-sleeve shirt simply because it has sleeve portions that “stop[] short of the wearer’s wrists.” Conclusion The Examiner erred in concluding that Lippman discloses a shirt having a section that is a short-sleeve baseball jersey. We therefore reverse the anticipation rejection of claims 1-6, 8, 9, and 11. OBVIOUSNESS As discussed above, the Examiner has not set forth a prima facie case that Lippman discloses a shirt having a section that is a short-sleeve baseball jersey. In addition, the Examiner has not set forth a prima facie case that Appeal 2009-004567 Application 11/535,179 7 such a shirt would have been obvious. We are therefore compelled to reverse the obviousness rejection of claim 12. REVERSED lp WHITHAM, CURTIS & CHRISTOFFERSON & COOK, P.C. 11491 SUNSET HILLS ROAD SUITE 340 RESTON VA 20190