Ex Parte GuineyDownload PDFPatent Trial and Appeal BoardDec 9, 201613138110 (P.T.A.B. Dec. 9, 2016) Copy Citation 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. 13/138,110 09/27/2011 Stephen Raymond Guiney BKK-4942-33 6146 23117 7590 12/13/2016 NIXON & VANDERHYE, PC 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON, VA 22203 EXAMINER ANNIS, KHALED ART UNIT PAPER NUMBER 3765 NOTIFICATION DATE DELIVERY MODE 12/13/2016 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): PTOMAIL@nixonvan.com pair_nixon @ firsttofile. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEPHEN RAYMOND GUINEY Appeal 2015-001428 Application 13/138,110 Technology Center 3700 Before JOHN C. KERINS, BENJAMIN D. M. WOOD, and ARTHUR M. PESLAK, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Stephen Raymond Guiney (“Appellant”) appeals under 35 U.S.C. § 134(a) from the Examiner’s Non-Final decision rejecting claims 1—13, 15, 17, 18, 23—34, and 37-44.1 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Claims 14, 16, 19-22, 35, and 36 are withdrawn. Non-Final Act. 1. Appeal 2015-001428 Application 13/138,110 THE CLAIMED SUBJECT MATTER Claim 1, the only independent claim, is reproduced below: 1. A climbing aid for attachment to the limbs, the climbing aid comprising: a front guard comprising a front surface, and with a plurality of teeth protruding from the front surface, the plurality of teeth being configured to assist a user in climbing over an obstacle; and a weight bearing support attached to the front guard, the weight bearing support being configured to bear a weight of a user, wherein the teeth include at least one engagement surface arranged to at least partially engage with a surface of the obstacle when pressure is applied to the weight bearing support. REJECTIONS 1) Claims 5, 6, and 8 are rejected under 35U.S.C. § 112, second paragraph as indefinite. 2) Claims 1—12, 17, 18, 23, 26, 29-32, 37, 38, and 40-44 are rejected under 35 U.S.C. § 102(b) as anticipated by Nascimento (US 2008/0178360 Al, pub. July 31, 2008). 3) Claims 13, 15, 24, 25, 27, 28, 33, 34, and 39 are rejected under 35 U.S.C. § 103(a) as unpatentable over Nascimento. DISCUSSION Rejection 1 The Examiner rejects claims 5, 6, and 8 under 35 U.S.C. § 112, second paragraph as indefinite. Non-Final Act. 6. Claims 5, 6, and 8 each recite “when the at least one engagement surface is at least partially engaged with the surface of the obstacle.” Appeal Br. 32 (Claims App.)(emphasis 2 Appeal 2015-001428 Application 13/138,110 added). The Examiner determines that the claims are indefinite because “it is unclear if the Applicant is claiming the combination of the engagement surface and the obstacle.” Non-Final Act. 6. Appellant contends that the limitation is “a functional limitation intended to define the structure of the ‘at least one engagement surface’ of the climbing aid teeth and does not incorporate the obstacle in the structure of the climbing aid.” Appeal Br. 5; Reply Br. 2. The Examiner responds that the claim language “A at least partially engaged with the surface” is “<2 positive limitation which inferentially connects the component... to the obstacle.” Ans. 2. An applicant “is free to recite features of an apparatus either structurally or functionally.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997), citing, In re Swinehart, 439 F.2d 210, 212 (CCPA 1971). Claims 5, 6, and 8 are not unclear because the word “when” prior to and in conjunction with “the at least one engagement surface” is a limitation that functionally defines the structure of the “engagement surface.” The limitation, thus, is a not a positive recitation of a connection of the engagement surface and the obstacle. We, therefore, do not sustain the rejection of claims 5, 6 and 8 as indefinite under 35U.S.C. § 112, second paragraph. Rejection 2 The Examiner finds that Nascimento discloses all the limitations of claim 1. Non-Final Act. 6—9. The Examiner specifically finds that the recited “plurality of teeth protruding from the front surface” reads on Nascimento’s protrusions 175 and that protrusions 175 are “capable” of assisting a user in climbing over an obstacle such as home plate. Id. at 8. 3 Appeal 2015-001428 Application 13/138,110 Appellant contends that the recited weight bearing support does not read on Nascimento’s shin strap 132 because Nascimento does not disclose “that the upper shin strap 132 bears a weight of the user.” Appeal Br. at 9— 10. Appellant also contends that the recited plurality of teeth do not read on Nascimento’s protrusions 175 because the Examiner has not shown that protrusions 175 are configured to assist a user in climbing over an obstacle or that the “at least one engagement surface is arranged to at least partially engage with a surface of the obstacle when pressure is applied to the weight bearing support.” Id. at 13—15. The Examiner responds that the recited “weight bearing support” is a foot strap or stirrup as shown in Appellant’s Figures 1 and 6. Ans. at 4. The Examiner finds that the recited weight bearing support reads on Nascimento’s mid-calf strap 132 because it “supports] the weight of the wearer.. .when the wearer is moving from upright to kneeling positions” and “supports the calf muscle which is a mass and therefore a weight.” Id. The Examiner also responds that Nascimento’s protrusions 175 “include at least one engagement surface which is the entire front surface that will be first in contact with the ground when the leg of the wearer touches the ground.” Id. at 6. With respect to the limitation “arranged to at least partially engage with a surface of the obstacle when pressure is applied to the weight bearing support,” the Examiner responds the limitation is “fully functional and has no structural effect on the functionality of the device” and Nascimento’s device is “fully capable to perform the function of the claimed invention.” Id. For the following reasons, we do not sustain the rejection of claim 1. The Specification describes foot strap 109 as “designed to be able to support or bear the weight of a user.” Spec. 5 (emphasis added). 4 Appeal 2015-001428 Application 13/138,110 Appellant’s Figure 1 illustrates that foot strap 109 is U-shaped with a horizontal bottom portion supported by vertical straps attached to lower portion 110 of shin guard 101. Id., Fig. 1. The Specification further describes that when a user is required to climb or clamber over a window ledge, the teeth of the shin guard are provided to enable the user to more easily grip onto the edge of the window ledge by moving their shin against the ledge and shifting their weight onto their leg. The weight of the user is thus applied as a downwards force onto the foot strap. The force is applied via the connection between the foot strap and shin portion of the guard to the teeth. The force thus causes the engagement surface of the teeth in communication with the ledge to at least partially engage the ledge. Id. at 9—10. Nascimento discloses that protrusions 175 “increase the flexibility and resiliency of shin plate 138 so shin plate 138 is less likely to shatter when hit by a pitch or another player’s cleats.” Nascimento, | 62. The Examiner’s premise for this rejection, i.e., one of ordinary skill in the art would consider a home plate to be an obstacle to be climbed over from the ground, is somewhat questionable. However, assuming, arguendo, that one of ordinary skill in the art would consider home plate to be an obstacle to be climbed over from the ground, the Examiner does not direct us to any disclosure in Nascimento that protrusions 175 are “configured” to assist a user to climb over home plate or any other obstacle. Nascimento’s Figure 6 illustrates that strap 132 is attached to front guard 122 in an approximately horizontal configuration and will be placed around a user’s mid-calf generally parallel to the ground. Nascimento, Figs. 2, 6. The Specification discloses an embodiment in which foot strap 109 is attached to shin guard 101 at a point located above the horizontal strap where a user’s foot would be placed. This embodiment is consistent with foot strap 109 supporting the user’s weight. 5 Appeal 2015-001428 Application 13/138,110 See Spec. 9-10. The Examiner does not direct us to any disclosure in Nascimento that horizontally oriented mid-calf strap 132 is “configured” to support the weight of a user or the weight of a calf muscle nor does the Examiner offer persuasive technical reasoning how strap 132 can support the weight of a user or a user’s calf muscle when the user is either standing, kneeling, or squatting. The Examiner also does not point to any disclosure in Nascimento that the at least one engagement surface of protrusions 175 is arranged to engage a surface of home plate or any other obstacle to be climbed over when pressure is applied to mid-calf strap 132 nor does the Examiner provide persuasive technical reasoning concerning the direction of pressure to be applied to mid-calf strap 132 that would result in such engagement. Non-Final Act. 8; Ans. 6. The Federal Circuit indicates that anticipation based on inherent functional properties of a prior art reference “may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Oelrich, 666 F.3d 578, 581 (CCPA 1981). The Examiner’s findings, noted hereinabove, are not based on the disclosure in Nascimento or sound technical reasoning but constitute speculation. Therefore, we do not sustain the rejection of claim 1 and claims 2—12, 17, 18, 23, 26, 29-32, 37, 38, and 40-44, which all ultimately depend from claim 1, as anticipated by Nascimento. Rejection 3 The Examiner rejects claims 13, 15, 24, 25, 27, 28, 33, 34, and 39 as unpatentable over Nascimento under 35 U.S.C. § 103(a). Non-Final Act. 14. These claims all ultimately depend from claim 1. Appeal Br. 31—38 (Claims App.). The Examiner’s additional findings in support of the rejection of 6 Appeal 2015-001428 Application 13/138,110 these claims do not cure the deficiencies in the rejection of claim 1 stated above. Non-Final Act. 14—17. Therefore, we do not sustain the rejection of claims 13, 15, 24, 25, 27, 28, 33, 34, and 39 as unpatentable over Nascimento. DECISION The Examiner’s decision rejecting claims 1—13, 15, 17, 18, 23—34 and 37-44 is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation