Ex Parte He

Patent Trial and Appeal Board

Feb 29, 2016

12876092 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/876,092 09/03/2010
50163 7590 06/02/2016
WANG&HO
66 HILLTOP ROAD
MILLINGTON, NJ 07946
FIRST NAMED INVENTOR
Mike He
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.
DGNH01-2US 1565
EXAMINER
MUROMOTO JR, ROBERT H
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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):
georgewang@bei-ocean.com
georgewang.hk@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIKE HE
Appeal2014-002350
Application 12/876,092
Technology Center 3700
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Mike He (Appellant) filed a request for rehearing under 3 7
C.F.R. § 41.52 (hereinafter "Request"), dated April 29, 2016, of our decision
mailed March 2, 2016 (hereinafter "Decision"). In that Decision, we
affirmed the Examiner's rejections under 35 U.S.C. § 102(b) of claims 1, 2,
and 9-11 as anticipated by Yates (GB 2435049 A; pub. Aug. 15, 2007) and
under 35 U.S.C. § 103(a) of claim 8 as unpatentable over Yates and Yeung
(US 2002/0022433 Al; pub. Feb. 21, 2002).
Appeal2014-002350
Application 12/876,092
ANALYSIS
Appellant's Request alleges that "[c]laim 1 explicitly recites the
limitation 'said two side sections are longitudinally foldable onto each other
along said middle section for purposes of forming a tubular structure'" and
that "[t]here is absolutely no evidence or finding that the strap disclosed in
the Yates reference has such side sections having distinctive structural
features (and different from those of the middle section) as specifically
recited in the claim." Request 1.
In the Decision, the Board made explicit findings of the facts pertinent
to the issues raised in the Appeal Brief, including the structural
characteristics of Appellant's disclosed invention that render it capable of
the use recited in Appellant's claims and the structural characteristics of
Yates relied upon to show anticipation of the claimed subject matter.
Decision 5-7. Specifically, based on the Examiner's findings, the Board
pointed out that Yates includes t\'l/O "strt1cturally distinct" side sections 4 that
have "distinctive structural features" from the middle section 2, 3, as
required in claim 1. Decision 7; see also Request 1. The Board further
explained why those facts support the Examiner's finding of anticipation.
Decision 5-7.
Appellant's Request alleges that "[t]he Examiner made no finding that
the Yates reference discloses two side sections are longitudinally foldable
onto each other along the middle section for purposes of forming a tubular
structure" and that "[c]laim 1 does not just recite something capable of being
folded into a tubular structure. The two side sections are structurally distinct
sections and are also structurally different from the middle section."
Request 1; see also id. at 2.
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Appeal2014-002350
Application 12/876,092
As noted above, based on the Examiner's findings, the Board pointed
out that Yates includes two "structurally distinct" side sections 4 that are
"structurally different from the middle section" 2, 3, as required in claim 1.
Decision 7. The Board further pointed out that the Examiner found that the
fabric shown in figure 2a-2c of Yates "exhibit[ s] foldability along the
longitudinal direction of the side sections for folding into a tubular structure"
and that "the fabric [of Yates] would still be capable of folding along any
direction of itself to be folded into a tubular structure as functionally
claimed." Decision 5.
We disagree with Appellant's assertion that the Examiner "simply
ignored" the limitation "[the] two side sections are longitudinally foldable
onto each other along the middle section for purposes of forming a tubular
structure" (Request 2) because, at page 5 of the Decision, the Board pointed
out that the Examiner thoroughly explained his interpretation of
"longitudinal to the side sections" and his position that "the fabric shown in
figure 2a-2c [of Yates] does exhibit foldability along the longitudinal
direction of the side sections for folding into a tubular structure" and that
"the fabric [of Yates] would still be capable of folding along any direction of
itself to be folded into a tubular structure as functionally claimed." The
Board further pointed out that "Appellant does not provide any evidence or
persuasive technical reasoning why the identified structure of Yates would
not be capable of being longitudinally foldable." Decision 5. The Board
also noted that "claims directed to an apparatus, as here, must be
distinguished from the prior art in terms of structure rather than function."
Decision 4 (citing In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997);
see also Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468
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Appeal2014-002350
Application 12/876,092
(Fed. Cir. 1990) ("apparatus claims cover what a device is, not what a device
does")).
Appellant alleges (1) "[t]he term 'longitudinal [sic] foldable' is an
ordinarily one and does not require a special definition in the specification";
(2) "[a]ny person of ordinary skill in the art would understand, without any
doubt, that FIG.13 shows a cross-sectional view along the width of the
strap"; and (3) "[t]he second drawing presented in the Appeal Brief is
intended to illustrate the meaning of 'longitudinally foldable,' a term recited
in claim 1. While it is not taken from the specification, it accurately reflects
the meaning of what is described in paragraph 73 and is supported by FIG.
13." Request 2.
Although Appellant is correct that the term "longitudinally foldable,"
"does not require a special definition in the specification," as pointed out by
the Board, "aside from Appellant's claims, the phrase 'longitudinally
foldable' does not appear in Appellant's disclosure." Decision 5. In other
words, Appellant's Specification does not explicitly or inherently describe or
define the phrase/term "longitudinally foldable." Further, regarding
Appellant's assertion that the second drawing of the Appeal Brief (at Appeal
Br. 3) "accurately reflects the meaning of what is described in paragraph 73"
of the subject invention, we note that paragraph 73 of Appellant's disclosure
merely describes that "[i]n the present embodiment, the fabric strap itself is
an integrally woven tubular fabric formed by folding and sewing from the
middle, used as the outer package of the underwear wire." Spec. para. 73
(emphasis added). As noted above, "aside from Appellant's claims, the
phrase 'longitudinally foldable' does not appear in Appellant's disclosure."
Decision 5.
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Appeal2014-002350
Application 12/876,092
Moreover, Appellant asserts that "[t]he second drawing presented in
the Appeal Brief [at Appeal Br. 3] is intended to illustrate the meaning of
'longitudinally foldable,' a term recited in claim 1." Request 2. However,
as pointed out in the Decision, "the second drawing presented by Appellant
on page 3 of the Appeal Brief does not appear in Appellant's Figures."
Decision 5. In other words, there is no indication in the record before us that
the drawing was before the Examiner for review during prosecution.
Lastly, regarding Figure 13 of the subject invention, as pointed out by
the Board, "Appellant's disclosure of Figure 13 of the subject invention
merely states: 'Fig.13 shows the interweaving structural schematic diagram
of the present utility model"' (Decision 4 (citing Spec. 8, para. 33)) and
"Appellant does not direct us to any portion of the Specification that
describes Figure 13 of the subject invention as 'a cross-sectional view along
the width of the strip"' (Decision 4--5). Even assuming arguendo that
"[Figure] 13 of the present application is a cross-sectional view along the
width of the strap" as alleged by Appellant (Request 2), as pointed out in the
Decision, Appellant does not provide any evidence or persuasive technical
reasoning why the Examiner's findings that the fabric shown in Figures 2a-
2c of Yates "does exhibit foldability along the longitudinal direction of the
side sections for folding into a tubular structure" and that "the fabric [of
Yates] would still be capable of folding along any direction of itself to be
folded into a tubular structure as functionally claimed" are in error.
Decision 5.
For the above reasons, the arguments in Appellant's Request do not
convince us that we erred in affirming the Examiner's rejections of claims 1,
2, and 8-11.
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Appeal2014-002350
Application 12/876,092
DECISION
Appellant's Request has been granted to the extent that we have
reconsidered our Decision in light of the arguments in Appellant's Request,
but is denied with respect to our making any modification to the Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
DENIED
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