Ex Parte Hall et al

Patent Trial and Appeal Board

Sep 21, 2016

12784052 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121784,052 05/20/2010 Jacob Hall
56273 7590 09/23/2016
BAKER & ASSOCIATES PLLC
358 S 700 E B154
SALT LAKE CITY, UT 84102
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
12832.69 8040
EXAMINER
CHIN-SHUE, AL VIN CONSTANTINE
ART UNIT PAPER NUMBER
3634
NOTIFICATION DATE DELIVERY MODE
09/23/2016 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):
trent@bakeriplaw.com
admin@bakeriplaw.com
trentbaker@comcast.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACOB HALL and PEATER KARL WILKENING
Appeal2014-008175
Application 12/784,052
Technology Center 3600
Before JILL D. HILL, THOMAS F. SMEGAL, and
GORDON D. KINDER, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jacob Hall and Peater Karl Wilkening (Appellants)1 seek our review
under 35 U.S.C. § 134 of the Examiner's final rejection of claims 1-14. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 1 and 14 are independent. Claim 1 is reproduced below and
illustrates the claimed subject matter, with disputed limitations emphasized.
1. A harness leg loop system comprising:
1 According to Appellants, the real party in interest is Black Diamond
Equipment, Ltd. Appeal Br. 3.
Appeal2014-008175
Application 12/784,052
a first leg loop including a first interior region and a first
coupling point;
a second leg loop including a second interior region and a
second coupling point, wherein the first and second coupling
points are intercoupled, and wherein the first and second leg loop
include a particular minimum shear strength of the first and
second interior regions with respect to the coupling point;
wherein the area of the first and second interior regions are
individually selectively adjustable via a first and second slidable
member intercoupled with the first and second leg loop
respectively, wherein the first and second slidable members are
translatable buckle members, wherein the translatable buckle
members include a plurality of independent recesses through
which independent portions of the first and second leg loop
extend respectively, and wherein a plurality of independent
portions of the first and second leg loop extend through at least
one of the plurality of independent recesses of the translatable
buckle members; and
wherein the particular minimum shear strength of the first
and second leg loop is independent of the first and second
slidable member and the area of the first and second interior
reg10n.
REJECTIONS
The following Examiner's rejections are before us for review. 2
1. Claims 1-14 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
2. Claims 1--4, 10, and 13 are rejected under 35 USC§ 103(a) as
unpatentable over Wachtel (US 2,252,998, iss. Aug. 19, 1941) and Soubry
(US 4,480,716, iss. Nov. 6, 1984).
2 Claims 15-20 are withdrawn. Appeal Br. 5.
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Application 12/784,052
3. Claims 5-9 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Wachtel, Soubry, and Fildan (US 6,056,626, iss. May, 2, 2000).
4. Claims 1--4 and 10-14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Birckhahn (CH 697,423 Bl, pub. Oct. 15, 2008), Wachtel,
and Soubry.
5. Claims 1-8 and 10-14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Quatrehomme (EP 1,557,198 Al, pub. July 27, 2005),
Birckhahn, Wachtel, and Soubry.
6. Claims 5-9 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Quatrehomme, Birckhahn, Wachtel, Soubry, and Davis (US 4,768,689,
iss. Sept. 6, 1988).
ANALYSIS
First Ground of Rejection: Lack of Written Description
We are not persuaded that the Examiner erred in finding that the
Specification fails to provide the required written description support for the
claim phrase "a plurality of independent portions of the first and second leg
loop extend through at least one of the plurality of independent recesses of
the translatable buckle members." Appeal Br. 12-13, 27 (Claims App.);
Final Act. 2.
The purpose of the written description requirement in 35 U.S.C.
§ 112, first paragraph, is to "clearly allow persons of ordinary skill in the art
to recognize that [the inventor] invented what is claimed." Ariad Pharms.,
Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane)
(quoting Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991).
"[T]he test for sufficiency is whether the disclosure of the application relied
upon reasonably conveys to those skilled in the art that the inventor had
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possession of the claimed subject matter as of the filing date." Id. This test
"requires an objective inquiry into the four comers of the specification from
the perspective of a person of ordinary skill in the art." Id. "Based on that
inquiry, the specification must describe an invention understandable to that
skilled artisan and show that the inventor actually invented the invention
claimed." Id.
Appellants contend that the claimed plurality of independent portions
"is clearly illustrated in the original figures and would be understood by one
skilled in the art." Appeal Br. 12 (citing to annotated Fig. 1 and 2). 3
Appellants continue by contending that "portions 134, 125, and 115 [are all
part of the leg loop that] extend through a single recess [in the translatable
buckle member] in the illustrated Figure 1." Id. Appellants also contend
that "[a] 'portion of the leg loop' should be reasonably interpreted to include
all 'portions' including portions 132, 134, and 125 shown in Figure 1 ...
because they all form parts of the general leg loop structure." Reply Br. 3.4
However, the Examiner correctly points out that Figure 1, not Figure
2, is the elected species. 5 Id. at 20; see also Final Act. 15. We agree with
the Examiner that Appellants' contention is unsupported by Figure 1 which
illustrates that "portion 134 is a portion of the secondary loop 125 that
passes through a single recess [along] with a portion 115 of the leg loop,"
explaining that "[t]he leg loop consists of [only] two portions 110 and 115
3 However, by also being limited to "wherein the translatable buckle
members include a plurality of independent recesses through which
independent portions of the first and second leg loop extend respectively,"
independent claims 1 and 14 exclude the embodiment illustrated in Figure 2.
4 Claim 1 does not recite a second elongate member 134.
5 See Amendment 8 (filed April 19, 2012).
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Application 12/784,052
[each] passing through different [recesses] of the translatable buckle 120."
Ans. 18 (citing Specification i-f 28).
Accordingly, we sustain the Examiner's rejection of claims 1-14
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Second Ground of Rejection: Obviousness of Claims 1--4, 10, and 13
over Wachtel and Soubry
Appellants argue claims 1--4, 10, and 13 together in contesting the
rejection of these claims as obvious over Wachtel and Soubry. See Appeal
Br. 15-17; see also Reply Br. 5-7. We select claim 1 as the representative
claim for this group, and the remaining claims stand or fall with claim 1.
See 37 C.F.R. 41.37(c)(l)(iv). We have considered Appellants' arguments
raised in the Appeal Brief and Reply Brief, but do not find them persuasive
to demonstrate error in the Examiner's rejection of claim 1 as being obvious
over Wachtel and Soubry.
In rejecting claim 1, the Examiner finds that Wachtel discloses a
harness leg loop system comprising, inter alia, first and second leg loops
each having a translatable buckle member 33, and relies on Soubry for
teaching "a closed loop 11 with a translatable buckle member (below and
adjacent to element 18) [where] a plurality of the independent portions of the
loop 11 extend through at least one of the plurality of independent recesses
of the translatable buckle member[] [of Soubry]." Final Act. 3--4 (citing
Soubry, Fig. 2).
Based on the foregoing, the Examiner reasons that
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[i]t would have been obvious ... to have combined, provided or
substituted each of the translatable buckle members of Wachtel
for a translatable buckle member, as taught by Soubry, by the
substituted use of one known slide buckle for another, since it
would have provided the predictable result of allowing [an]
independent portion of his leg loop therethrough in adjusting the
loop size.
Id. at 4.
Appellants first misstate the final rejection, contending that the
Examiner is "citing the adjustable leg loop buckle element 11 of Wachtel to
teach a selective area adjustment for each leg loop since element 33 cannot
adjust the area within the leg loops because of the rigid leather material,"
(citing Wachtel, 2, col. 1, 11. 21-25) and concluding that "Wachtel fails to
teach a 'first and second slidable member' consistent with the claims."
Appeal Br. 16.
However, the Examiner correctly explains that Wachtel's members 33
slide "to maintain desired loop formation[ s] 8 and 9, and the [Examiner] did
not use buckle 11 for the slide member as argued by Appellant[ s]. "6 Ans. 22
(citing Wachtel 2:21-22). Appellants' contention does not address the
rejection set forth by the Examiner and is therefore not persuasive.
Appellants also contend that while "the Examiner cites the unlabeled
buckle of Figure [2] of Soubry to teach the limitations pertaining to the
translatable buckle members of claim 1," that "substitution of the buckle of
Soubry cannot be used to replace both elements 11 and 33 of Wachtel."
Appeal Br. 16. Appellants again misstate the final rejection, which is based
on the substitution of the unlabeled buckle of Soubry for only the
6 In an appeal under 35 U.S.C. § 134(a), it is the Examiner's final rejection
that we review. See In re Webb, 916 F.2d 1553, 1556 (Fed. Cir. 1990).
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Application 12/784,052
translatable buckle member 33 of Wachtel. See Ans. 24. Furthermore, the
presence of additional structure in Wachtel, such as element 11, does not
undermine a rejection where the claim uses an open ended transition
"comprising." See Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312,
1319 (Fed. Cir. 2009) ("The claim uses the term 'comprising,' which is well
understood in patent law to mean 'including but not limited to."' (quoting
CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir.
2007))).
For these reasons, we sustain the rejection of claims 1--4, 10, and 13
under 35 U.S.C. § 103(a) as unpatentable over Wachtel and Soubry.
Third Ground of Rejection: Obviousness of Claims 5-9 over Wachtel,
Soubry, and Fildan
In rejecting claim 5, the Examiner finds that "Fildan shows a slidable
friction buckle at 30 to enable enhance[d] adjustment," and that
[i]t would have been obvious ... to have combined, provided or
substituted the friction buckle member [30] of Fildan for [only]
that of Wachtel at 11, by the substitute use of one known
equivalent member for another for its known advantages ...
since it would have provided the predictable result of enhancing
the adjusting of [Wachtel' s] leg loops.
Final Act. 5-6.
Appellants contend that "[n]either Wachtel nor Soubry teach[ es] two
intercoupled slidable members providing any form of adjustable
functionality for the area within a leg loop," and that "Fildan merely teaches
a type of buckle without any type of intercoupling scheme or area
adjustment functionality." Appeal Br. 21. However, Appellants are simply
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Application 12/784,052
attacking Fildan in isolation for lacking support for findings not relied upon
by the Examiner, rather than addressing the Examiner's combination of
Wachtel, Soubry, and Fildan. Nonobviousness cannot be established by
attacking references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986). First, Appellants misread Wachtel which teaches two
intercoupled slidable members 11 and 33. See Fig. 1. Furthermore, the
Examiner points out that Appellants agree that "it is the teaching of Fildan
which was used as the friction member, in lieu of element 11 of Wachtel, in
providing a secondary individually selective adjustment means [in addition
to] the adjustment by slidable member 3 3 of Wachtel." Ans. 2 7.
Appellants respond by observing that "the Examiner is relying on
Wachtel as the primary reference and Fildan as the secondary reference to
teach specific limitations," and that "[i]f either of these references fails to
teach the respective limitations individually or in combination, the
obviousness rejection is improper." Reply Br. 9. However, Appellants fail
to point out where either reference fails to teach the disclosure relied upon
by the Examiner. See generally Reply Br.
For the foregoing reasons, we sustain the rejection of claims 5-9
under 35 U.S.C. § 103(a) as unpatentable over Wachtel, Soubry, and Fildan.
Fourth, Fifth, and Sixth Grounds of Rejection: Obviousness of Claims
1--4 and 10--14 over Birckhahn, Wachtel, and Soubry; of Claims 1-8 and
10--14 over Quatrehomme, Birckhahn, Wachtel, and Soubry; and of Claims
5-9 over Quatrehomme, Birckhahn, Wachtel, Soubry, and Davis
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Application 12/784,052
Claims 1-10 and 13
We have affirmed the rejection of claims 1--4, 10, and 13 under 35
U.S.C. § 103(a) as being obvious over Wachtel and Soubry and claims 5-9
under 35 U.S.C. § 103(a) as being obvious over Wachtel, Soubry, and
Fildan. These affirmances dispose of these claims before us on appeal. See
37 C.F.R. § 41.50(a)(l) ("The affirmance of the rejection of a claim on any
of the grounds specified constitutes a general affirmance of the decision of
the examiner on that claim, except as to any ground specifically reversed.").
Claims 11 and 12
We understand Appellants' appeal of claims 11 and 12 to rest on
arguments presented against the proposed combination of Wachtel and
Soubry, which we found not demonstrative of error in the Examiner's
rejection of claim 1, as set forth supra. See Appeal Br. 19. Accordingly, we
sustain the rejections of claims 11 and 12 over the cited references, for the
same reasons stated above with respect to the rejection of claim 1.
Claim 14
In contesting the rejection of claim 14, Appellants first argue that
"[s]ince Quatrehomme and Buckhahn [sic] fail to teach ANY type of
slidable member it is assumed the Examiner is again relying on Wachtel to
teach the missing elements of claim 14." Appeal Br. 20. Appellants
continue by again misstating the final rejection in contending "elements 11
and 33 of Wachtel fail to teach an element that meets all of the slidable
member limitations," because " [ n] either element 3 3 nor element 11 teach the
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limitations of claim 14 pertaining to both 1) the adjustable functionality and
2) the translatable buckle member." Id.
While noting that "[t]he Examiner also cites the unlabeled buckle of
Figure [2] of Soubry to teach the limitations pertaining to the translatable
buckle members of claim 14," Appellants repeat the prior contention that
"the substitution of the buckle of Soubry cannot be used to replace both
elements 11 and 3 3 of Wachtel and therefore also fails to teach all of the
slidable member limitations of claim 14. "7 Id; see also Reply Br. 8.
In response, the Examiner first explains that "the difference at hand to
be resolved between either Quatrehomme or Buckhahn [sic] and the claimed
invention is the use of a slidable member for adjusting [the size of] the leg
loops," again pointing out that it is Wachtel that "teaches the use of a
slidable member [33] for adjusting the size of his leg loops, ... deemed
proper for one of ordinary skill in the art to appreciate teaching of analogous
arts in resolving the difference at hand." Ans. 32-33. Appellants have not
apprised us that the Examiner's finding or rationale is in error.
In view of the foregoing, we sustain the Examiner's unpatentability
rejection of claim 14 over Quatrehomme, Birckhahn, Wachtel, and Soubry.
7 As pointed out previously, the Examiner only relies on element 33 of
Wachtel for teaching the buckle member for which the buckle of Soubry is
substituted. See Final Act. 3--4.
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DECISION
We AFFIRM the Examiner's rejections of claims 1-14.
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
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