Ex Parte Frank

Patent Trial and Appeal Board

Dec 23, 2016

13271462 (P.T.A.B. Dec. 23, 2016)

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.
13/271,462 10/12/2011 Mary H. Frank 2904354-000042 3033
49840 7590 12/28/2016
Atlanta Raker Dnnelsinn
EXAMINER
Intellectual Property Department
Monarch Plaza, Suite 1600
GRACZ, KATHARINE
3414 Peachtree Rd.
ATLANTA, GA 30326
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
12/28/2016 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):
atlip@bakerdonelson.com
tdavis@bdbc.com
ipdocketing @bakerdonelson. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARY H. FRANK
Appeal 2015-000944
Application 13/271,462
Technology Center 3700
Before WILLIAM A. CAPP, GEORGE R. HOSKINS, and
BRANDON J. WARNER, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Mary H. Frank (“Appellant”)1 appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1—20 in this application. The Board
has jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Appeal Brief identifies Appellant as the real party in interest. Br. 2.
Appeal 2015-000944
Application 13/271,462
CLAIMED SUBJECT MATTER
Claims 1, 8, and 16 are independent. Although each independent
claim presents a different issue, claim 1 illustrates the general subject matter
on appeal, and it recites:
1. A safety slipper comprising:
a stretchable fabric material forming an upper portion
having a foot opening therein; and
a non-skid tread coupled to said upper portion, said non-
skid tread having a matrix of holes therethrough which are sized
to allow the passage of water through said non-skid material.
Br. 11 (Claims App.).
REJECTIONS ON APPEAL
Claims 1, 8, and 9 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Schwarzman (US 7,310,894 Bl, iss. Dec. 25, 2007).
Claim 16 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Schwarzman.
Claims 2, 3, 10, 11, and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Schwarzman and Aarons (US 6,766,536 Bl, iss. July 27,
2004).
Claims 4—7, 12—15, and 18—20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Schwarzman and Thomas
(US 2007/0251121 Al, pub. Nov. 1, 2007).
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Application 13/271,462
ANALYSIS
A. Anticipation by Schwarzman
Claim 1
In rejecting claim 1, the Examiner finds Schwarzman’s Figure 4
illustrates a slipper tread having, as claimed, “a matrix of holes
therethrough,” corresponding to water drainage slits 41. Final Act. 2—3
(citing Schwarzman, 3:31—36). The Examiner also finds Schwarzman’s
Figures 5—6 illustrate a slipper tread having a matrix of holes therethrough,
corresponding to holes 61 at the center of each element 51. Id. at 6.
Appellant argues neither slits 41 (Schwarzman Figure 4) nor holes 61
(Schwarzman Figures 5—6) are arranged in a “matrix,” as claimed. Br. 4—6.
Appellant cites two definitions of “matrix” found in the Merriam-Webster
Online Dictionary, namely, “a rectangular array of mathematical elements
(as the coefficients of simultaneous linear equations) that can be combined
to form sums and products with similar arrays having an appropriate number
of rows and columns,” and “something resembling a mathematical matrix
especially in rectangular arrangement of elements into rows and columns.”
Id. at 4 (emphases added). Appellant contends those definitions are
consistent with Appellant’s Specification, which shows threads 21 cris-
crossing each other in rows and columns. Id. at 4—5. Appellant contrasts
such rectangular arrays of rows and columns with Schwarzman’s slits 41,
which Appellant describes as “arranged along curved ridges (actually
grooves).” Id. at 5 (citing Schwarzman, Figs. 4 and 8).
The Examiner answers that Appellant’s Specification does not
disclose or define a “matrix” as corresponding to “a rectangular arrangement
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Application 13/271,462
of rows and columns,” so Appellant’s claim construction argument is not
persuasive. Ans. 2.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification.
In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
While dictionary definitions of claim terms may be considered, elevating
dictionary definitions to prominence over the specification problematically
“focuses the inquiry on the abstract meaning of words rather than on the
meaning of claim terms within the context of the patent [application].”
Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005). In particular,
“general dictionaries collect the definitions of a term as used not only in a
particular art field, but in many different settings,” so “it is inevitable that”
such definitions will extend beyond the construction confirmed by the
avowed understanding of the patent applicant in the patent application. Id.
at 1321-22.
In this case, Appellant relies on “mathematical” context definitions of
“matrix” involving “elements (as the coefficients of simultaneous linear
equations) that can be combined to form sums and products.” Appeal Br. 4.
We determine that such a mathematical context has little, if any,
applicability to the geometrical pattern of holes in a slipper tread to allow
passage of water, as disclosed in Appellant’s Specification. In that latter
context, a person of ordinary skill would not understand the term “matrix” to
be limited to a rectangular array of rows and columns. Further, we
appreciate that Appellant’s Figure 3 illustrates water passage holes 24
having select spacings SI, S2, S3 in orthogonal first and second directions.
Spec. 4:14—5:1. Nonetheless, reading such a specific embodiment into the
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Application 13/271,462
broad claim term “matrix” would improperly read a limitation from the
Specification into the claim. See Am. Acad., 367 F.3d at 1369 (cautioning
against reading limitations into a claim from a preferred embodiment of the
Specification, absent a clear disclaimer); In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994).
For the foregoing reasons, we are not persuaded by Appellant’s
argument that the claim term “matrix” is limited to a rectangular array of
rows and columns. Applying a broadest reasonable construction of “matrix”
consistent with Appellant’s Specification, the Examiner’s findings that
Schwartzman’s slits 41 (Figure 4) and holes 61 (Figures 5—6) are each
arranged in a matrix are supported by a preponderance of the evidence. We,
therefore, sustain the rejection of claim 1 as anticipated by Schwarzman.
Claims 8 and 9
In rejecting claim 8, the Examiner finds Schwarzman’s Figures 5—6
illustrate a slipper lower portion having, as claimed, “a matrix of
interconnected non-skid material nodes which are separated from each other
to form spaces therebetween,” corresponding to protrusions 63 separated by
grooves 62. Final Act. 2—3, 7.
Appellant argues Schwarzman fails to disclose a “matrix” of “nodes”
separated “to form spaces,” as claimed. Br. 6—8. Appellant asserts “a matrix
is a rectangular arrangement[] of rows and columns of items,” relying on the
same analysis discussed above in connection with claim 1. Id. at 6—7. As
discussed above in connection with claim 1, Appellant’s claim construction
of “matrix” is not persuasive. Applying a broadest reasonable construction
of “matrix” consistent with Appellant’s Specification, the Examiner’s
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Application 13/271,462
finding that Schwartzman’s protrusions 63 are arranged in a matrix is
supported by a preponderance of the evidence.
Appellant also contends Schwartzman’s protrusions 63 are not
“nodes” separated by “spaces,” because Schwarzman’s “material is simply a
solid material with grooves having slits cut into it.” Br. 7—8. Appellant
contends “[s]uch an arrangement of slits does not form ‘nodes’ which are
clearly shown and understood through” Appellant’s Specification. Id.
In response, the Examiner maintains Schwarzman’s protrusions 63 are
“nodes” as claimed because they “are bumps and bulges.” Ans. 3^4 (citing
Spec. 4:14—16).
Appellant’s Specification imparts a broad meaning to the claim term
“node.” Appellant’s written description indicates “nodes 23 may be joined
together in linear fashion so as to form elongated lines or strings of non-skid
material, rather than individual nodes,” so “the term node may be used
herein to describe an elongated formation of material.” Spec. 6:3—8.
Further, Appellant’s Figures 2 and 3 illustrate nodes 23 of non-skid material
as comprising inter-connected blob shapes. While Appellant contends such
disclosures distinguish Schwarzman’s protrusions 63 from the claimed
nodes, Appellant does not propose an affirmative claim construction of the
claim term in support of the alleged distinction. We are thus not persuaded
that Schwarzman’s protrusions 63 may not be considered nodes, and we
determine the Examiner’s finding in this regard is supported by a
preponderance of the evidence.
For the foregoing reasons, we sustain the rejection of claim 8 as
anticipated by Schwarzman. Because Appellant does not argue for the
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patentability of claim 9 separately from its parent claim 8, we likewise
sustain the rejection of claim 9 as anticipated by Schwarzman.
B. Obviousness based on Schwarzman
In rejecting claim 16, the Examiner finds Schwarzman’s Figures 5—6
illustrate a slipper lower portion 11 that is, as claimed, “a mesh.” Final
Act. 3. The Examiner states “[mjesh is defined in the Merriam-Webster
[dictionary] as a ‘web-like pattern or construction,” and determines
Schwarzman’s elements 51 are “web-like construction^] therefore satisfying
the limitations of the claim since [Appellant] has not specified the structure
of ‘mesh.’” Id. at 7. The Examiner further finds Schwarzman’s elements 51
are “configured to allow the passage of water therethrough, thus providing
the same function as the claimed slipper.” Id.
Appellant argues Schwarzman fails to disclose a “mesh,” as claimed.
Br. 8—10. Appellant asserts “[a] mesh is clearly shown in [Appellant’s]
specification and drawings as a weave of material wherein a scrim cloth
threads 21 cris-crossing each other.” Id. at 9 (citing Spec. 4:14—17).
Appellant contends there is no such mesh in Schwarzman, because
Schwarzman’s “lower portion is simply a solid piece of material having
grooves with slits cut therein.” Id.
The Examiner answers that Appellant’s Specification and claim 16 do
not disclose or define “mesh” “as ‘scrim cloth’ or ‘knit of polyester threads’
to distinguish over Schwarzman.” Ans. 4.
Appellant’s argument is not persuasive, because it mis-applies the
language of claim 16, which calls for “a mesh of poly-vinyl chloride
material.'” Br. 13 (Claims App.) (emphasis added). Thus, the corresponding
disclosure from Appellant’s Specification is poly-vinyl chloride material 22
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Application 13/271,462
forming a “mesh,” not polyester threads 21 forming a “mesh.” See
Spec. 4:6—19; Appellant’s Fig. 3. The structure of Schwarzman’s lower
portion 11 being formed into elements 51 comprising holes 62 for passage of
water is directly akin to the Specification’s material 22 comprising holes 24
for passage of water. We, therefore, determine the Examiner’s finding that
Schwarzman discloses a mesh is supported by a preponderance of the
evidence, and we sustain the rejection of claim 16 as obvious over
Schwarzman.
C. Obviousness based on Schwarzman and either Aarons or Thomas
Appellant does not argue for the patentability of dependent claims 2—
7, 10-15, and 17—20 separately from their respective parent independent
claims 1, 8, and 16. See Br. 4—10. For the reasons discussed above in
relation to the independent claims, we sustain the rejections of these
dependent claims as obvious over Schwarzman and either Aarons or
Thomas.
DECISION
The Examiner’s decision to reject claims 1—20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended, under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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