Ex Parte Greer

Patent Trial and Appeal Board

Oct 31, 2012

11553873 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARK GREER
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Appeal 2010-009309
Application 11/553,873
Technology Center 3700
____________________

Before: KEN B. BARRETT, BENJAMIN D. M. WOOD, and
RICHARD E. RICE, Administrative Patent Judges.

WOOD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1-26. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
THE INVENTION
The claims are directed to a wristband with contoured comfort sides.
Claim 1, reproduced below with emphasis added, is illustrative of the
claimed subject matter:
1. In a wristband having at least a strap portion for
at least partially surrounding a wearer’s limb
and a panel portion for displaying information,
the strap portion and the panel portion being
integrally formed into a single length of
material with the panel portion being adapted
to receive the information desired to be
displayed, the panel portion having opposing
side edges and a width no less than said strap
portion, the improvement comprising at least
one of said side edges having a relieved edge
structure.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Richmond US 2,641,074 Jun. 9, 1953
Saint US 2006/0236578 A1 Oct. 26, 2006

REJECTIONS
Claims 1-4, 6-8, 10-18, and 21-26 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Richmond. Ans. 3.
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Claims 1, 4-5, and 19-20 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Saint. Ans. 6.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Richmond. Ans. 7.

ANALYSIS
Claims 1-4, 6-8, 10-18, and 21-26 – Anticipation – Richmond
Claims 1-4 and 6-8
Appellant argues claims 1-4 and 6-8 as a group. App. Br. 8. We
select claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appellant first argues that it is not clear what feature of Richmond’s
wristband the Examiner contends corresponds to the “relieved edge
structure” limitation. App. Br. 5. We believe, however, that it is reasonably
clear from the Examiner’s Answer that the Examiner is relying on the
scalloped edges of flattened tube 10. See Ans. 8 (“Richmond discloses the
longitudinal edges of element 10 are scalloped, as shown in figure 5 . . . .
The panel portion 10 has opposing side edges and at least one of those side
edges has a relieved edge structure.”). Appellant next contends that if this is
so, “there is NO teaching in Richmond of just what that edge is or what it
does or why it is there.” App. Br. 6 (emphasis in original); see Reply Br. 2
(“the Office is merely looking at drawing figures and is completely ignoring
the written specifications.”). This argument suggests that figure 5 is
insufficient evidence of this claimed feature unless it is confirmed in writing
in the written description. We disagree. Drawings can be relied upon for
what they reasonably disclose and suggest to one of ordinary skill in the art.
See In re Aslanian, 590 F.2d 911, 914 (CCPA 1979); In re Mraz, 455 F.2d
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1069, 1072 (CCPA 1972). Here, there does not seem to be any dispute that
Figure 5 depicts item 10 with scalloped edges. Further, the Specification
describes a scalloped edge as one example of a “bending yielding feature”
(Spec. 5, ¶ [0005]), which the Specification later equates with a “relieved
edge” (Spec. 8, ¶ [0017]). Accordingly, we believe that the Examiner has
shown by a preponderance of the evidence that Figure 5 depicts the claimed
“relieved edge.”
Appellant next argues that Tube 10 is not a “ply” of material. App.
Br. 6. However, claim 1 does not appear to require a “ply” of material.
Appellant further argues that Richmond’s wristband and panel are not
“integrally formed into a single length of material;” rather, according to
Appellant, Richmond “discloses these as separately formed elements
including a tube 10 and a strap 22 which must be assembled, with notches
and projections and bosses and studs.” App. Br. 8. The Examiner
responded that “the term ‘integral’ is sufficiently broad to embrace
constructions united by such means as fastening and welding.” Ans. 3
(citing In re Hotte, 475 F.2d 644, 647 (CCPA 1973)). The Examiner noted
that Richmond’s wristband is “assembled into a single piece for use, and is
therefore considered integral.” Ans. 10. The Appellant responded that
Hotte is not applicable because “integrally formed” is not the same as
“integral,” the term at issue in that case. Reply Br. 6.
As an initial matter, we disagree with the Appellant that in the context
of this case, the term “integrally formed” has a different meaning than
“integral.” Claim 1 is drawn to an apparatus and its patentability depends on
the claimed structure rather than how the apparatus is made. See 3M
Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371 (Fed.
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Cir. 2003) (“[E]ven words of limitation that can connote with equal force a
structural characteristic of the product or a process of manufacture are
commonly and by default interpreted in their structural sense.”); Hazani v.
U.S. Int’l Trade Comm’n, 126 F.3d 1473, 1479 (Fed. Cir. 1997) (limitation
requiring product to be “chemically engraved” described structure of product
rather than how it was obtained). We therefore conclude that the “integrally
formed” limitation describes the structure of the product rather than the
process used to construct it.
Further, as the Examiner observed, the meaning of “integral” is
“sufficiently broad to embrace constructions united by such means as
fastening and welding.” Hotte, 475 F.2d at 647. We also agree with the
Examiner that Richmond’s wristband is formed “into a single length of
material.” Notably, the claim does not require that the wristband be made
“from” a single “piece” or “layer” of material, as Appellant’s argument
suggests, but simply that it is made into a single “length” of material. See
Hotte, 475 F.2d at 647 (holding that term “‘integral’ is sufficiently broad to
embrace constructions united by such means as fastening and welding).
Claims 10-14
Unlike the claims discussed above, claims 10-14 require that “at least
said strap portion and information receiving area [be] formed in a single
layer of material.” App. Br. 12 (emphasis added). The Examiner found that
Richmond’s strap 12 and flattened tube 10 – which the Examiner found
corresponds to the information receiving area – are formed in a single layer
of material. Ans. 4. We agree with Appellant, however, that Richmond’s
tube 10 has several layers that are not in the same plane as strap 12, and that,
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accordingly, Richmond does not teach this limitation. This rejection is not
sustained.
Claims 15-18
Appellant argues claims 15-18 as a group. App. Br. 8. We select
claim 15 as representative. In addition to the limitations discussed above,
claim 15 recites a wristband comprising “an information receiving ply, [and]
a laminating ply for overlying said information receiving ply and
substantially encapsulating it.” App. Br. 13. The Examiner identified
Richmond’s element 30 as corresponding to the information receiving ply,
and transparent flattened tube 10 as corresponding to the laminating ply.
Ans. 5. Appellant contends that Richmond’s wristband is not “self
laminating” because “the tube ends are not sealed, leaving the name
band/tab 30 unlaminated.” App. Br. 8. But the claim does not require that
the “laminating ply” seal the information receiving ply, but only that it
“overly[]” and substantially encapsulat[e]” it. We agree with the Examiner
that Richmond’s tube 10 overlies and substantially encapsulates element 30,
and thus teaches the claimed lamination ply. We sustain the Examiner’s
rejection of claims 15-18.
Claims 21-23, 25-26
Appellant raises the same arguments in support of the patentability of
claims 21-23 and 25-26 as were raised above with respect to claims 1-4 and
6-8. For the reasons stated above with respect to those latter claims, we
sustain the rejection of claims 21-23 and 25-26.
Claim 24
Appellant raises the same arguments in support of the patentability of
claim 24 as were raised above with respect to claims 1-4 and 6-8. For the
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reasons stated above with respect to those latter claims, we sustain the
rejection of claim 24.

Claims 1, 4-5, and 19-20 – Anticipation – Saint
Claims 1 and 4-5
The Examiner relies on the folded edge 30 of Saint’s wristband as
corresponding to the claimed relieved edge structure. Final Rej. 6; Ans. 6.1
The Appellant acknowledges that while a folded-over edge can be a bending
yielding structure, it is not a “relieved edge structure.” App. Br. 9.
The Specification describes a folded over edge as one example of a
bending yielding feature. See Spec. 3, ¶ [0005] (“In simple terms, a
‘bending yielding feature’ can be understood as any design that, inter alia,
essentially adds ‘yieldability’, adds flex, or presents a smooth surface to a
wearer’s skin. . . . Examples of this feature include a . . . ‘folded over’ edge
design.”). Moreover, the Specification does not support the notion,
suggested by Appellant’s argument, that there is a difference in meaning
between the “bending yielding feature” and “relieved edge structure.”
Appellant’s Written Description only uses the term “relieved edge” once,
and in that case it refers to the “bending yielding feature” 26 of Figure 4E.
Spec. 7-8, ¶ [0017].

1 As Appellant points out, The Examiner suggests in the Response to
Argument section of the Answer that the curved ends of Saint’s wristband
correspond to the relieved edge structure. Reply Br. 9-10; Ans. 11.
However, we believe that the Examiner has made clear in both the Final
Rejection (which, rather than the Answer, is before us for review) and the
Grounds of Rejection portion of the Answer that the Examiner relies on the
folded edge 30 to teach this limitation.
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Claims 19-20
Claim 19 recites a self-laminating wristband comprising a “first
[]information receiving ply, and a second clamshell laminating ply for
folding over and substantially encapsulating the information receiving ply
[and] having a bending yielding feature extending along at least a part of its
length adjacent the information receiving ply.” App. Br. 13. We agree with
the Examiner that panel portions 28 and 26 correspond to the information
receiving ply and clamshell laminating ply, respectively, and that the folded
over edge 30 corresponds to the bending yielding feature. We further note,
as we did above, that Appellant has acknowledged in the Specification that a
folded over edge is an example of a bending yielding feature. We sustain
the rejection of claim 19. However, the Examiner has not shown how the
bending yielding feature extends along opposing side edges of the clamshell
laminating ply, as called for in claim 20. Accordingly, we do not sustain the
rejection of claim 20.
Claim 9 – Obviousness – Richmond
Claim 9 depends indirectly from Claim 1 and further recites (1)
“wherein said strap portion has a width greater than the panel portion,” and
(2) “a cinch for attaching said wristband to a wearer’s limb.” App. Br. 12.
As for the first of these limitations, the Examiner found that the relative
widths of the strap and panel portions would have been “an obvious matter
of design choice to a person of ordinary skill in the art,” because “Appellant
has not disclosed the strap portion [having] a greater width than the panel
portion provides an advantage, is used for a particular purpose, or solves a
stated problem.” Ans. 7-8. Appellant responds that Claim 9 contains a
typographical error, that it should actually require that the panel portion
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should have a greater width than the strap. Appellant asserts that “[w]hen
this correction is made, it is anticipated that it will be deemed patentable as
being dependent from an allowable claim 1.” App. Br. 10. We find this
statement to be unresponsive to the Examiner’s obvious-design-choice
analysis.
Regarding the claimed “cinch,” the Examiner relies on Richmond’s
closing mechanism, i.e., studs 14 inserted into holes in the strap 12 to attach
the strap to both ends of tube 10. Ans. 4. According to the Examiner,
“Richmond’s attachment is considered a cinch attachment because it
‘cinches’ two pieces of material together.” Ans. 10. Appellant responds that
“Richmond has no cinch, as described and claimed in the subject
application.” App. Br. 7. But the Specification does not describe a “cinch”
per se; it only refers to “cinch slots 46” shown in Figure 2. Spec. Fig. 2; 6-7,
¶ [0014]. Nor does Appellant point us to any intrinsic or extrinsic evidence
as to the specific meaning of “cinch” or suggesting that a person of ordinary
skill would not consider Richmond’s closing mechanism to be a cinch.
Accordingly, Appellant has not persuaded us that the Examiner’s use of the
term cinch is inconsistent with the Specification or otherwise overly broad.
We sustain the rejection of claim 9.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-9, 15-19,
and 21-26 is affirmed. The Examiner’s rejection of claims 10-14 and 20 is
reversed.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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