Ex Parte Gibbons et al

Patent Trial and Appeal Board

Jan 5, 2018

12968842 (P.T.A.B. Jan. 5, 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.
12/968,842 12/15/2010 Haley Gibbons 81247-796467 3129
20350 7590 01/09/2018
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
HADEN, SALLY CLINE
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
01/09/2018 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):
ipefiling@kilpatricktownsend.com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HALEY GIBBONS and CLARICE BONZER
Appeal 2016-005386
Application 12/968,842
Technology Center 3700
Before LYNNE H. BROWNE, ANNETTE R. REIMERS, and
JILL D. HILL, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-0053 86
Application 12/968,842
STATEMENT OF THE CASE1’2
Haley Gibbons and Clarice Bonzer (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner’s decision to reject under 35 U.S.C. §
112, second paragraph, claims 13 and 18 for indefmiteness and to reject
under 35 U.S.C. § 103(a): (1) claims 1-5, 7, 10-13, 18, 19, 21, and 24 as
unpatentable over Ekelund (US 7,409,727 B2, issued Aug. 12, 2008) and
Byrd (US 2,317,176, issued April 20, 1943); and (2) claims 22 and 25 as
unpatentable over Ekelund, Byrd, and Germani (US 5,678,285, issued Oct.
1 The Examiner has withdrawn the rejection of claims 19, 21, and 22 under 35
U.S.C. § 112, first paragraph, for lack of written description. See Ans. 2
(dated Feb. 25, 2016); see also Non-Final Act. 3 (dated May 21, 2015).
2 The Examiner also objected to Appellants’ Specification under 37 C.F.R. §
1.75(d)(1) on the grounds that “[i]n claim 19, the recitations ‘integrally formed
extension’ and ‘permanently extends’ are not found in the disclosure.” Final
Act. 2. Ordinarily, an objection is reviewable by petition under 37 C.F.R.
§ 1.181 and a rejection is appealable to the Patent Trial and Appeal Board.
When the issue of new matter presented is the subject of both an objection and
a rejection, the issue is appealable. See Manual of Patent Examining
Procedure § 608.04(c) (9th ed., Rev. 07.2015, Nov. 2015) (providing that
“where the alleged new matter is introduced into or affects the claims, thus
necessitating their rejection on this ground, the question becomes an
appealable one, and should not be considered on petition even though that new
matter has been introduced into the specification also”). As noted in footnote
1 above, the Examiner has withdrawn the written description rejection of
claim 19. See Ans. 2. To the extent that the objection to the Specification in
the Non-Final Office Action turns on the same issue(s) as the written
description rejection, we suggest the Examiner withdraw the corresponding
objection. Consequently, we agree with Appellants that Figure 3 of the
subject invention illustrates “clip 34 having an integrally formed extension
that permanently extends outwardly from the track 22.” See Appeal Br. 5
(filed Oct. 13, 2015). We further note that Figure 3 of the subject invention
appears to have a typographical error, in that the lower “36” should be “26.”
See Spec. Tj 28 (“fabric 26”).
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Appeal 2016-0053 86
Application 12/968,842
21, 1997). Claims 6, 8, 9, 14-17, 20, and 23 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to “cover-ups having a variety of
features to facilitate nursing while protecting a mother’s privacy.” Spec. ^
5, Figs. 1-3. Claims 1, 13, and 19 are independent.
Claims 1 and 19 are illustrative of the claimed subject matter and
recite:
1. A nursing cover, comprising:
a flexible cover body that is configured to cover at least a
mother’s chest, the cover body having a top end with a top edge,
a bottom end with a bottom edge and two sides;
a fastening arrangement that is configured to be placed
about the mother’s neck to position the flexible cover body over
the mother’s chest, wherein the fastening arrangement comprises
a pair of straps that each have an end, and wherein the ends of
the straps are coupled to the top end of the cover body at two
separate and laterally spaced apart locations on the cover body to
permit the two straps to be fastened together to form a loop
around the mother’s neck;
a single track coupled to the top edge, the track having a
length, a round edge along the length and a continuous, smooth
surface, wherein the track is coupled to the cover body along
substantially the entire length of the track;
at least one clip comprising a clip body having a slotted
passage that fits over the track and a rounded region that receives
the round edge of the track, wherein the clip is slidingly engaged
with the track to permit the clip to be slid along the entire length
of the track, and wherein the clip includes an extension that
extends outwardly from the track and that is sized and configured
such that it may be grasped to slide the clip along the track.
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Application 12/968,842
19. A nursing cover, comprising:
a flexible cover body that is configured to cover at least a
mother’s chest, the cover body having a top end, a bottom end,
two sides and a center region midway between the two sides that
is configured to be over the mother’s chest;
a track coupled to the top end so as to be located at the
center region, the track extending laterally along the top as it
passes over the center region, wherein the track is coupled to the
cover body along substantially an entire length of the track;
a neck strap coupled to the top end of the cover body at
two spaced apart locations on the cover body to permit the neck
strap to be positioned about the mother’s neck;
at least one clip slidingly engaged with the track to permit
the clip to be slid laterally along the length of the track and over
the center region, wherein the clip includes an integrally formed
extension that permanently extends outwardly from the track and
that is sized and configured such that it may be grasped to slide
the clip along the track.
ANALYSIS
Indefiniteness
Claim 13
The Examiner determines that “[cjlaim 13 is rendered indefinite
because of the recitation ‘a length that extends to at least the mother’s
waist.’ The length of a mother’s torso is variable and dependent upon each
individual mother. A claim is rendered indefinite by reference to an object
that is variable.” Non-Final Act. 4 (citing MPEP 2173.05 (b) II). In
particular, the Examiner determines that “claim 13 is defining a length of
the cover body relative to a mother’s body, and the mother’s body is not
claimed and so the length of the cover body cannot be defined by the
unclaimed mother’s body” and “because the length of the mother’s torso
from neck to waist is not defined, the length of the cover body is not
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Application 12/968,842
defined because the length of the cover body relies on the length of the
mother’s torso length.” Ans. 3.
Appellants contend that “[cjlaim 1 describes that the fastening
arrangement is configured to be placed about the mother’s neck such that
the cover body is positioned over the mother’s chest. Claim 13 depends
from claim 1 and further describes that the cover body extends to at least
the mother’s waist.” Appeal Br. 6. In particular, Appellants contend that
“the present claims provide a positional relationship of the user and the
invention. Specifically, the claims describe the claimed nursing cover as
hanging from a user’s neck and extending to at least the user’s waist.” Id.
Appellants conclude that “[a]s claim 13 provides a positional relationship
between the user and the invention, the claim is sufficiently definite.” Id.
As an initial matter, Appellants correctly point out that MPEP
2173.05 (b) II “does not create a per se rule of indefmiteness” and “states
that ‘[a] claim may be rendered indefinite by reference to an object that is
variable.’” Appeal Br. 6. Appellants’ Specification discloses
[Referring to] Fig. 1, one exemplary embodiment of a
nursing cover 10 will be described. Cover 10 is shown being
worn by a mother nursing a baby. As also shown in Fig. 2, cover
10 is constructed of a cover body 12 that is sized sufficiently to
cover the mother’s chest. Typically, the cover body 12 will
extend at least to the mother’s waist so as to also cover and
protect the nursing baby.
Spec. ^ 23.
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Application 12/968,842
In this case, we agree with Appellants that although the mother’s
body is not positively recited in claim 13, the claim “shows a positional
relationship between the various components.” See Reply Br. 2.3 We
further agree with Appellants that “a person of skill in the art, given the
teachings of the application and the recitations of the claims, would readily
understand how to reproduce the claimed cover body that extends to at least
a mother’s waist,” in particular, given that “making garments of different
sizes to accommodate various body types is known in the art.” Id.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner’s rejection of claim 13 for indefiniteness.
Claim 18
In response to the Examiner’s rejection of claim 18 as indefinite,
Appellants state that “[cjlaim 18 stands rejected for the feature ‘the
attachment points’ allegedly lacking antecedent basis. This rejection will be
addressed upon resolution of the present appeal.” Appeal Br. 6. Because
Appellants have not presented any argument pertaining to the Examiner’s
rejection of claim 18 as indefinite (see Non-Final Act. 4), we summarily
sustain the rejection. See MPEP § 1205.02 (“[T]he Board may summarily
sustain any grounds of rejections not argued.”).
3 Filed Apr. 25,2016.
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Obviousness over Ekelund and Byrd
Claims 1—5, 7, 10—13, 18, and 24
Independent claim 1 is directed to a nursing cover including “[a] track
having a length, a round edge along the length and a continuous, smooth
surface.’ ’’ Appeal Br. 13, Claims App. (emphasis added). The Examiner
finds that “Ekelund does not expressly disclose a single track coupled to the
top edge, the track having a length, a round edge along the length and a
continuous, smooth surface.” Non-Final Act. 5. The Examiner finds that
“Byrd teaches a similar cover, including single track (40) coupled to the top
edge (via sewing, col 2 line 15-20), the track having a length (fig 1), and a
continuous, smooth surface.” See id. at 5-6.
Appellants contend that
zipper 40 of Byrd cannot be considered a track having a
continuous, smooth surface. Zippers do not have such a surface.
Rather, a zipper has teeth that are spaced apart forming a surface
made up of a series of discontinuous sections. Even when
intermeshed, the teeth of a zipper still produce a segmented
surface. The segmented surface cannot be considered a
continuous, smooth surface. By definition, the segmented nature
of the surface prevents a zipper from being considered
continuous.
Appeal Br. 8.
As an initial matter, we agree with Appellants that claim 1 “requires,
and would be understood by a person of skill in the art as requiring, that the
track have a continuous, smooth surface, not that a singular, minute portion
of a track have a continuous and smooth surface.” Reply Br. 5; see also
Ans. 4. Byrd discloses that “bag 24 is adapted to be opened and closed by
a slide fastener of usual form having complementary rows of teeth 36 and
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Application 12/968,842
38 attached to tapes 40 and 42” and that “a slide 44 [is] adapted to be
reciprocated between the rows of teeth to lace and unlace them.” Byrd 2:7—
14, Fig. 1. In other words, Byrd discloses that slide 44 reciprocates (i.e.,
moves forward and backward alternately)4 between rows of teeth 36 and 38
to lace and unlace them. We agree with Appellants that “such a
discontinuous and segmented feature cannot be considered to have a
continuous or a smooth surface.” Reply Br. 5-6; see also Appeal Br. 8. As
such, we further agree with Appellants that “zipper 40 of Byrd cannot be
used to disclose the presently claimed track having [a] continuous and
smooth surface.” Reply Br. 6; see also Appeal Br. 8.
Similar to independent claim 1, independent claim 18 is directed to a
nursing cover including “a track coupled to the top edge, the track having a
smooth, continuous surface along substantially an entire length of the
track.” Appeal Br. 14, Claims App.5 The Examiner relies on the same
unsupported findings in Byrd for claim 18 as those discussed above for
claim 1. See Non-Final Act. 4-6, 10-11. Thus, the Examiner’s findings
with respect to Byrd are deficient for claim 18 as well.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner’s rejection of claims 1-5, 7, 10-13, 18, and 24 as unpatentable
over Ekelund and Byrd.
4 An ordinary and customary meaning of the term “reciprocate” is “to move
forward and backward alternately.” See https ://www.merriam-
webster.com/dictionary/reciprocate (last visited Jan. 1, 2018).
5 We note that independent claim 18 recites “a track” not “a single track,” as
asserted by Appellants. See Appeal Br. 10; see also id. at 14, Claims App.;
Reply Br. 8.
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Application 12/968,842
Claims 19 and 21
Appellants do not offer arguments in favor of dependent claim 21
separate from those presented for independent claim 19. See Appeal Br. 10-
11; see also Reply Br. 8-9. We select claim 19 as the representative claim,
and claim 21 stands or falls with claim 19. 37 C.F.R. § 41.37(c)(l)(iv).
Appellants contend that
the combination of Ekelund and Byrd fails to teach or suggest “a
track coupled to the top end” and “at least one clip slidingly
engaged with the track to permit the clip to be slid laterally along
the length of the track and over the center region[,”] as recited in
claim 19.
Appeal Br. 11. In particular, Appellants contend that “the combination of
Ekelund and Byrd is improper due to Ekelund teaching away from making
the stiffener removable and the combination relying on impermissible
hindsight reconstruction.” Appeal Br. 11.
Regarding Ekelund teaching away from making the stiffener
removable, Appellants contend that
[Cjolumn 2, lines 14-17, as well as claim 1 and the abstract of
Ekelund indicate that the stiffener is “sewn or stitched
(“stitched”) into the an [sic.] edge, which allows positional
securing without inhibiting visibility.” As such, Ekelund teaches
that the stiffener is stitched into the edge of the nursing cover to
maintain the stiffener in a correct position relative to the nursing
cover and teaches away from making the stiffener removable.
Indeed, as Ekelund discloses that the stiffener is made of a
deformable material, it is important that the stiffener be
maintained in a proper position during deformation to provide
the desired coverage. By not securing the stiffener to the nursing
cover as in the suggested combination, one risks the stiffener
being improperly positioned within the nursing cover.
Appeal Br. 9; see also Reply Br. 6-7.
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Application 12/968,842
Ekelund merely discloses that the nursing cover includes “a stiffener
sewn or stitched (‘stitched’) into an edge, which allows positional securing
without inhibiting visibility.” Ekelund 2:14-17 (emphasis added). We
disagree with Appellants that “[s]uch stitching [is] for securing the stiffener
in a specific position.'1'’ Reply Br. 6 (emphasis added); see also Appeal Br.
9. Further, Appellants do not identify record evidence supporting the
contention that “the stiffener [of Ekelund would be] allowed to float within
a pocket of the nursing cover ... if inserted into a zippered pocket.” Reply
Br. 6. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s
argument in a brief cannot take the place of evidence.”). Moreover, in
response to Appellants’ argument, the Examiner finds that:
Replacing stitches with a zipper would not hinder positional
securing or inhibit visibility, as argued by Appellants]. A
zipper, like the stitches, would serve to close the pocket and
secure stiffener 402 in position at the top of the cover. Visibility
is caused by the stiffener bowing outward, and a zipper would
not prevent the stiffener from bowing outward thus inhibiting
visibility. A zipper would not have an effect on visibility, at least
as Ekelund intends. Furthermore, replacing stitches with a zipper
would have the advantage of allowing stiffener 402 to be
removed from pocket 134 so that the cover could be washed or
stored without the stiffener being damaged during washing or
storing, as discussed on page 12 of the previous Office Action.
Ans. 5-6; see also Non-Final Act. 12-14.
The Examiner’s findings are sound and supported by a
preponderance of the evidence, and the Examiner’s conclusions therefrom
are based on rational underpinnings. Appellants do not provide persuasive
evidence or argument apprising us of Examiner error. In particular,
Appellants do not apprise us how replacing Ekelund’s stitches with Byrd’s
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Application 12/968,842
zipper would prevent Ekelund’s stiffener 402 from being “maintained in a
proper position during deformation to provide the desired coverage” (i.e.,
how replacing Ekelund’s stitches with Byrd’s zipper would hinder
positional securing of Ekelund’s stiffener 402 or inhibit visibility). See
Appeal Br. 9; see also Reply Br. 6; Ans. 5-6.
Regarding hindsight, Appellants contend that
the stitching of Ekelund is clearly not a track as presently
claimed. The claimed track defines and controls a path of
movement of another object. Specifically, the track defines the
path of movement of the clip, which is slidingly engaged with
the track to permit the clip to be slid along the entire length of
the track. The cited stitching does not define a path of movement
of another object, nor is the stitching slidingly engaged by a clip.
Thus, the cited stitching of Ekelund is in no way a track as
presently claimed. Rather, the Office Action makes an incorrect
assertion that the stitching is a track to accommodate the
attempted “track” for “track” swap. However, in doing so, the
Office Action is engaging in impermissible hindsight
reconstruction by using Appellants’ claims as a roadmap to
provide a [track] coupled to the top [end] as presently claimed.
See Appeal Br. 9-10; see also Reply Br. 7-8.
As an initial matter, we note that unlike claims 1 and 18, claim 19
does not recite a track having “a continuous, smooth surface.” See Appeal
Br. 14, Claims App. Further, the Examiner correctly points out that (1) “the
Ekelund reference is not relied upon to teach the structure of the track, and
the structure of the track is taught by Byrd” and (2) claim 19 fails to recite
“the track defines the path of movement of the clip.” Ans. 6; see also Non-
Final Act 12-14; Appeal Br. 14, Claims App.; In re Self, 671 F.2d 1344,
1348 (CCPA 1982) (Limitations not appearing in the claims cannot be relied
upon for patentability).
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Application 12/968,842
In this case, the Examiner finds that (1) “Ekelund’s track functions to
retain stiffener 134 within the stiffener pocket, the stiffener pocket being
bound at the top edge by track/ stitching 106” (Non-Final Act. 14 citing
Ekelund 2:55) and (2) “Byrd’s track/ zipper functions to retain supplies
within the pocket 24, pocket 24 being bound at the top edge by track/
zipper 40” (Non-Final Act. 14 citing Byrd 1:1-5). The Examiner further
reasons that “[b]oth stitches and zippers are known for fastening textiles,
and performing the same function of closing pockets, such as Ekelund’s
pocket 134 and Byrd’s pocket 24.” Ans. 5. The Examiner concludes that it
would have been obvious “to have replaced the track/ stitching of Ekelund
with the track/zipper taught by Byrd, for the purpose of providing a
stiffener pocket that allows the stiffener to be easily removed from the body
for storage or in order to wash the body without damaging or reshaping the
stiffener.” Non-Final Act. 14; see also Ans. 5-6.
The Examiner’s findings are sound and supported by a preponderance
of the evidence, and the Examiner’s conclusions therefrom are based on
rational underpinnings. Appellants do not provide persuasive evidence or
argument apprising us of Examiner error.
We further are not persuaded that the Examiner engages in
impermissible hindsight in combining Ekelund and Byrd. The Examiner
cites specific teachings in the references themselves, not Appellants’
disclosure, in support of the Examiner’s articulated reasoning for
combining the references as proposed in the rejection. See Non-Final Act.
12-14.
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Appellants contend that claim 19 “recites that the clip includes an
integrally formed extension that permanently extends outwardly from the
track and that is sized and configured such that it may be grasped to slide
the clip along the track” and that the Examiner “relies on the handle of
zipper 44 of Byrd to describe such an extension.” Appeal Br. 11; see also
Reply Br. 8-9. We disagree with Appellants’ interpretation of the
Examiner’s findings.
The Examiner never explicitly states that “the handle” of zipper/clip
44 of Byrd is being relied on for the recited extension. See Non-Final Act.
13; see also Ans. 6-7. Rather, the Examiner finds that Byrd discloses “at
least one clip [44] slidingly engaged with the track [40] to permit the clip to
be slid laterally along the length of the track and over the center region.”
Non-Final Act. 13. The Examiner further finds that “clip [44 of Byrd]
includes an integrally formed extension (fig 1, portion of clip 44 with an
aperture, and the term ‘integral’ is sufficiently broad to embrace
constructions united by such means as fastening and welding) that
permanently extends outwardly from the track.” Id. Based on our
understanding, the Examiner is relying on the crown (i.e., handle holder) of
slide/clip 44 of Byrd as the recited extension. See Byrd Fig. 1; compare
with. Structure of a Zipper illustrated below.6
6 https://texeducation.wordpress.com/2013/12/28/zipper-the-continuous-
fasteners/ (last visited Jan. 1, 2018).
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c«ows a An imatcK)
SU»ER 60»Y
Under the broadest reasonable interpretation, the Examiner’s findings are
sound and based on rational underpinnings. Stated differently, slide/clip 44
of Byrd includes an integrally formed extension (i.e., crown/handle holder
is integrally formed with slide/clip 44 via welding) that permanently
extends outwardly from track 40. See Non-Final Act. 13; see also Byrd
Fig. 1. Appellants do not provide persuasive evidence or argument
apprising us of Examiner error.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 19 as unpatentable over
Ekelund and Byrd. Accordingly, we sustain the Examiner’s rejection of
claim 19 as unpatentable over Ekelund and Byrd. We further sustain the
Examiner’s rejection of claim 21, which falls with claim 19.
Obviousness over Ekelund, Byrd, and Germani
Claim 22
Appellants do not offer arguments in favor of dependent claim 22
separate from those presented for independent claim 19. Appeal Br. 11;
Reply Br. 9 (Claim 22 “depend[s] from claim 19” and is “believed to be
allowable over the current references based at least on [its] dependence
from an allowable base claim.”). As discussed above, Appellants’
arguments regarding claim 19 are not persuasive.
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Application 12/968,842
Accordingly, for the same reasons discussed above for claim 19, we
likewise sustain the Examiner’s rejection of claim 22 as unpatentable over
Ekelund, Byrd, and Germani.
Claim 25
Claim 25 depends from claim 1. See Appeal Br. 15, Claims App. The
Examiner’s rejection of claim 25 as unpatentable over Ekelund, Byrd, and
Germani is based on the same unsupported findings discussed above with
respect to claim 1. See Non-Final Act. 16. The Examiner does not rely on
Germani to remedy the deficiencies of Byrd. Accordingly, for reasons
similar to those discussed above for claim 1, we do not sustain the
Examiner’s rejection of claim 25 as unpatentable over Ekelund, Byrd, and
Germani.
DECISION
We REVERSE the decision of the Examiner to reject claim 13 as
indefinite.
We AFFIRM the decision of the Examiner to reject claim 18 as
indefinite.
We REVERSE the decision of the Examiner to reject claims 1-5, 7,
10-13, 18, and 24 as unpatentable over Ekelund and Byrd.
We AFFIRM the decision of the Examiner to reject claims 19 and 21
as unpatentable over Ekelund and Byrd.
We AFFIRM the decision of the Examiner to reject claim 22 as
unpatentable over Ekelund, Byrd, and Germani.
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We REVERSE the decision of the Examiner to reject claim 25 as
unpatentable over Ekelund, Byrd, and Germani.
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
16