Ex Parte Ingram et al

Patent Trial and Appeal Board

Nov 13, 2017

11860994 (P.T.A.B. Nov. 13, 2017)

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.
A-75165-1 7587
EXAMINER
LONG, ROBERT FRANKLIN
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
11/860,994 09/25/2007
40461 7590 11/13/2017
Law Offices of Edward S. Wright
1259 El Camino Real, No. 400
Menlo Park, CA 94025
Kenneth Robert Ingram
11/13/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH ROBERT INGRAM and
MICHELE MARIE GAEDKE
Appeal 2016-001789
Application 11/860,9941
Technology Center 3700
Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and
FREDERICK C. LANEY, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE2
1 According to Appellants’ Appeal Brief (hereafter “Appeal Br.”),
filed May 26, 2015, McCrane, Inc., dba Harbinger, is the real party in
interest. Appeal Br. 1.
2 This is Appellants’ second appeal before the Patent Trial and Appeal
Board. In the first appeal (20012-000017, Decision mailed February
13, 2014) (hereafter “Decision,”), the Examiner’s rejections of claims
1, 4, 9, 10, and 15—22 were reversed, and pursuant to 37 C.F.R.
§ 41.50(b), a new ground of rejection under 35 U.S.C. § 112, second
paragraph, of claims 1,9, 10, and 15—22, was entered. Decision 9; see
also Appeal Br., App’x. C.
Appeal 2016-001789
Application 11/860,994
Kenneth Robert Ingram and Michele Marie Gaedke (“Appellants”)
appeal under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final
Action (dated December 2, 2014, hereafter “Final Act.”) rejecting claims 1,
4, 9, 10, and 14—24.3 We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b).
SUMMARY OF DECISION
We REVERSE.
INVENTION
Appellants’ invention relates to “weight lifting and fitness
equipment.” Spec. 1,1. 5.
Claims 1, 4, 9, 14, 23, and 24 are independent. Claim 1 is illustrative
of the claimed invention and reads as follows:
1. A lifting strap comprising an elongated, flexible wrist
band, a cushion on one side of the wrist band, a gripping strap
comprising an elongated length of flexible fabric with
rubberized strands woven into the fabric on only one side of the
gripping strap, one end portion of the gripping strap being
disposed between and affixed to the wrist band and the cushion
with the rubberized strands on the side of the gripping strap
facing the cushion and not on the side facing the wrist band,
and means for securing the wrist band about the wrist of a
person with the cushion on the palm side of the wrist and the
gripping strap extending across the palm and fingers in position
to be wrapped about an object gripped by the hand with the
rubberized strands facing the object.
3 Claims 5—8 are canceled and claims 2, 3, and 11—13 are withdrawn.
Appeal Br. 1.
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Application 11/860,994
REJECTIONS
I. The Examiner rejected claims 1, 4, 9, 10, and 14—24 under 35
U.S.C. § 112, first paragraph, as failing to comply with the
enablement requirement.
II. The Examiner rejected claims 1, 4, 9, 10, and 14—24 under 35
U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.
III. The Examiner rejected claims 1, 4, 9, 10, and 14—24 under 35
U.S.C. § 103(a) as being unpatentable over Wang (US
2008/0090705 Al, published Apr. 17, 2008), Skinner (US
3,893,604, issued July 8, 1975), McBride (US 7,004, 889 B2,
issued Feb. 28, 2006), and Pereira et al. (US 2007/0267084 Al,
published Nov. 22, 2007, hereinafter “Pereira”).
The Examiner also objected under 35 U.S.C. § 132(a) and 37 C.F.R.
§ 1.83(a) to Appellants’ Specification and Drawings, respectively, as failing
to support ‘“the rubberized strands on the side of the gripping strap facing
the wrist band and not on the side facing the cushion.’” Final Act. 2—3. The
Examiner’s rejections under 35 U.S.C. § 112, first paragraph, for failing to
comply with the enablement and written description requirements is related
to the objections made by the Examiner to Appellants’ Specification and
Drawings. See Final Act. 4—5. In particular, the Examiner objected to the
Specification and the Drawings and rejected under 35 U.S.C. § 112, first
paragraph, the same subject matter on the ground that these claimed features
are not supported by the original disclosure.
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Application 11/860,994
ANALYSIS
Lack of Enablement Rejection
The Examiner finds that Appellants’ Specification “does not
reasonably provide enablement for the rubberized strands facing the wrist
band and not facing the cushion.” Final Act. 4. The Examiner further finds
that “[t]he drawings also do not make up for this deficiency since they show
the rubberized strands facing the cushion and the wrist band and the side
with no rubberized strands faces away from both the wrist band and
cushion.” Id. According to the Examiner, “the [Specification does not
clear[ly] establish any origin to base []front side, back side, and etc. making
it confusing as to what is the front side and what is the back side.” Id.
At the outset, we note that the claims do not require that “the
rubberized strands fac[e] the wrist band and not fac[e] the cushion,” as the
Examiner finds. Appeal Br. 5; see also Reply Br. 2. Rather, each of
independent claims 1, 4, and 23 requires that “the rubberized strands . . .
fac[e] the cushion and not... the wrist band.” See Appeal Br., App’x A.
We further note that each of independent claims 9, 14, and 24 are broader
because they do not require the disputed limitation, but merely that the
rubberized strands are on only one side of the claimed gripping strap.* * * 4 Id.
“The test of enablement is whether one reasonably skilled in the art
could make or use the invention from the disclosure in the patent coupled
with information known in the art without undue experimentation.” U.S. vs.
4 Claim 9 recites “a gripping strap . . . with rubberized strands woven
into the fabric on only one side of the gripping strap.” Each of claims
14 and 23 recites “a gripping strap . . . with rubber strands woven into
the fabric on only one side of the gripping strap.”
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Application 11/860,994
Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988). In calling into
question the enablement of the Appellants’ disclosure, the Examiner has the
initial burden of advancing acceptable reasoning inconsistent with
enablement to shift the burden to the Appellants to show that one of ordinary
skill in the art could have practiced the claimed invention without undue
experimentation. See In re Strahilevitz, 668 F.2d 1229, 1232 (CCPA 1982).
Determining whether any necessary experimentation is undue involves
consideration of many relevant factors. See In re Wands, 858 F.2d 731, 737
(Fed. Cir. 1988). The Examiner has not discussed any of these factors in
ascertaining that Appellants’ disclosure is non-enabling. In other words, the
Examiner does not set forth the requisite findings and analysis to show that a
person of ordinary skill in the art could make or use the invention without
undue experimentation.
Furthermore, Appellants’ Specification states that “the proximal end
portion of the strap [54] is disposed between the back side of cushion 47 and
the front side of wrist band 46.” Spec. 5,11. 10-13. The Specification
further describes cushion 47 as located on the front side of wrist band 46 and
hook and loop fasteners 51, 52 as located on the backside of wrist band 46.
Id. at 4,11. 26, 30. As such, in light of Appellants’ Specification, the front
and back sides are defined and, with respect to wrist band 46, strap 54 can be
disposed only in two positions, that is, with rubberized strands 57 either
facing the back side of cushion 47 or the front side of wrist band 46. As
strap 54 can be disposed in only two positions, we do not believe that such
positioning would require undue experimentation on the part of the person of
ordinary skill in the art practicing the claimed invention.
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Application 11/860,994
Accordingly, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 112, first paragraph, of claims 1, 4, 9, 10, and 14—24 as
failing to comply with the enablement requirement.
Lack of Written Description Rejection
The Examiner finds that “[t]he amended claims now recite the
strands/enhanced gripping on the side of the gripping strap facing the
cushion and not on the side facing the wrist band in which the newly
submitted drawings do not show nor do the prior drawings.” Final Act. 5.
According to the Examiner, “it is not clear which side the enhanced
gripping/rubberized strands are on.” Id.
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.’” AriadPharm.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). “[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
possession of the claimed subject matter as of the filing date.” Id. In this
case, Appellants’ Specification states that “the proximal end portion of the
strap [54] is disposed between the back side of cushion 47 and the front side
of wrist band 46.” Spec. 5,11. 10—13.5 The Specification further describes
5 We note Appellants’ reliance on the Amendment filed May 26, 2015
(hereinafter “Amendment”). See Appeal Br. 5; see also Examiner’s Answer
2 (filed Sept. 30, 2015). However, there is no explicit indication from the
record whether the Examiner entered the Amendment, and if further
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Application 11/860,994
cushion 47 as located on the front side of wrist band 46 and hook and loop
fasteners 51, 52 as located on the backside of wrist band 46. Spec. 4,11. 26,
30. Hence, Appellants’ Specification supports strap 54 being disposed with
rubberized strands 57 either facing cushion 47 or wrist band 46. We, thus,
agree with Appellants, that in light of Appellants’ Specification, original
Figure 14 of Appellants’ Drawings supports strap 54 being disposed with
rubberized strands 57 facing cushion 47. See Appeal Br. 6.
Accordingly, the disputed limitation is supported by the Specification,
and therefore, we do not sustain the rejection under 35 U.S.C. § 112, first
paragraph, of claims 1, 4, 9, 10, and 14—24 as failing to comply with the
written description requirement.
The Examiner also objected under 35 U.S.C. § 132(a) and 37 C.F.R.
§ 1.83(a) to Appellants’ Specification and Drawings, respectively, as failing
to support ‘“the rubberized strands on the side of the gripping strap facing
the wrist band and not on the side facing the cushion.’” Final Act. 2—3.
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 MPEP § 608.04(c) (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”). Because the
prosecution should occur in this application, the Examiner may wish to
review this issue.
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Application 11/860,994
objections to the Specification and the Drawings in the Final Office Action
turns on the same issue as the rejection under 35 U.S.C. § 112, first
paragraph, our decision with respect to the rejection is dispositive as to the
corresponding objections.
The Obviousness Rejection
The Examiner finds that Wang discloses most of the limitations of
independent claims 1, 4, 9, 14, 23, and 24, but fails to disclose
that gripping portion 14 is rubber and the fabric is nylon and the
rubberized strands woven into the fabric on only one side of the
gripping strap with the rubberized strands on the side of the
gripping strap facing the cushion and not on the side facing the
wrist band.
Final Act. 7. Nonetheless, the Examiner finds that:
(1) Skinner discloses a garment strap made of woven material with
rubberized strands 28, woven into the material, on one side facing a user’s
shoulder so as to not slip off the shoulder (citing Skinner, col. 1,11. 48—59
and 63—67, col. 2,11. 1—26, and Figs. 1—3);
(2) McBride discloses a strap 10, 12 wrapped in a helical manner
about a bar with rubberized strands 26/28 woven into the material on the
side facing the bar but not on the side facing the hand (citing McBride, col.
2,11. 60-67, col. 4,11. 8—17, 20-64, and Figs. 4, 8); and
(3) Pereira discloses a strap 10 of woven material 30 with rubberized
strands 44 woven into the material on one side or more (citing Pereira, paras.
3, 7, 103—115, Figs, 1—7). Final Act. 8—9. The Examiner concludes that as
Pereira discloses a strap with only one side of rubberized layer,
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Application 11/860,994
it would have been obvious to a person having ordinary skill in
the art at the time of the invention to modify the strap of Wang
to be used for weight lifting with a bar and be wrapped in
helical fashion about a bar and gripped by a hand as taught by
McBride with opposite sides of the strap facing the bar and the
hand with the rubberized strands on the side which faces
the bar but not on the side which faces the hand for the desired
gripping as also taught and evidenced by Skinner having a
gripping side face away from the hand and face a shoulder to
not slip off the shoulder.
Id. at 9—10. In the alternative, the Examiner further determines that
it would have been obvious to one having ordinary skill in the
art at the time the invention was made to reverse the side of the
rubberized parts/strands (turning side with rubber strands
toward or away from an object) since it has been held
rearrangement of parts or a reversal of parts has been held to be
obvious for a skilled artisan for any reason such as aesthetics,
ergonomics, and/or safety of the device[.]
Id. at 10 (emphasis omitted) (citing In re Kuhle, 526 F.2d 553, 555 (CCPA
1975), In re Gazda, 219 F.2d449 (1955), In reJapikse, 181 F.2d 1019
(CCPA 1950), and In re Einstein, 46 F.2d 373 (1931)).
Appellants argue that the Examiner’s modification would render
Wang’s device unfit for its intended purpose because McBride specifically
discloses that the side facing the weight bar should not be provided with
anti-slip material. Appeal Br. 8, 10 According to Appellants, McBride’s
disclosure is so that when a user is overwhelmed by a load and is forced to
drop the weight, the strap can easily disengage from the weight bar, thereby
enhancing user safety and security. Id. at 8; see also McBride, col. 4,1. 65-
col. 5,1. 3. In other words, we understand Appellants’ argument to be that
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McBride teaches away from the Examiner’s modification of Wang’s band
device, according to the teachings of Skinner, McBride, and Pereira.
Wang discloses a guiding band 10 including a band 13 that reeves
around bar 20 and passes through ring 15 to be folded and adhered to itself.
See Wang, para. 15, Fig. 3. Pereira discloses a strap having a ffictionally
enhanced top layer 34 woven from rubber threads 22A and nylon threads
22B and non-frictionally enhanced layer 38 woven from nylon threads 14.
See Pereira, paras. 110, 111, Figs. 1 A, IB. Skinner discloses a strap 14
having a non-slip surface 28 for preventing strap 14 from slipping off the
shoulder of a user. See Skinner, col. 1,1. 66— col. 2,1. 2, Fig. 4. McBride
discloses a strap 10, 12, which wraps around a weight bar in a helical
manner, and includes an anti-slip coating 28 on a surface that faces a user’s
hand, but not on a surface facing a weight bar. See McBride, col. 4,1. 23-
col. 5,1. 3, Fig. 8. As such, the Examiner’s rejection modifies Wang’s band
13 of device 10 to include rubberized strands woven only on the side facing
bar 20 for desired gripping, as taught by Pereira and Skinner, and helically
winds band 13 about bar 20 for gripping by a user’s hand, as taught by
McBride.
Teaching away requires a reference to actually criticize, discredit, or
otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). In this case, McBride discourages providing an anti­
slip surface, as taught by Pereira, on the surface of Wang’s strap 13 facing
weight bar 20, according to Skinner, because McBride specifically discloses
not providing an anti-slip surface 28 on the surface of strap 10, 12 facing a
weight bar for safety reasons. See Appeal Br. 8. According to McBride,
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Application 11/860,994
when a user is overwhelmed by a load and is forced to drop the weight, strap
10, 12, due to its helical wrap, can disengage with ease from the weight bar,
and thus, enhance user safety and security. See McBride, col. 4,1. 66—col. 5,
1. 3, Fig. 8. For the same reason, a person of ordinary skill in the art would
not provide an anti-slip surface on the surface of Wang’s modified strap 13
that is helically wrapped around and faces weight bar 20. We, thus, do not
agree with the Examiner’s position that although “McBride shows the strap
having rubberized strands facing ... [a user’s] hand in [F]ig. 8 ... the strap
can be turned around to have rubber side face the bar (if desired).” Final
Act. 8—9.
For the same reasons, we also do not agree with the Examiner’s
determination that reversing the sides of Wang’s strap on which to apply
rubberized strands is obvious because it is merely a “rearrangement of parts
or a reversal of parts.” See Final Act. 10. The Examiner’s rationale is not
sufficient because the lifting strap of the present claims functions differently
from McBride’s strap 10. See In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992)
(finding of obvious design choice precluded when claimed structure and the
function it performs are different from the prior art). Specifically, the lifting
strap of the present claims includes rubberized strips that face bar 61 and
thus, enhance a gripping action of bar 61, whereas McBride’s strap does not
have an anti-slip surface 28 facing a weight bar, which reduces the gripping
action of the bar. Compare Spec., Fig. 16 with McBride, Fig. 8.
Furthermore, we appreciate that if there are tradeoffs involved
regarding features, costs, manufacturability, or the like, such things do not
necessarily prevent the proposed combination. See Medichem, S.A. v.
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Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). However, in this case,
the Examiner has not set forth any other advantage that may result to
Wang’s gripping band 10 if it is modified according to the Examiner’s
rejection. The Examiner’s reasoning to modify Wang’s gripping band 10,
namely, to provide “desired gripping,” appears to already be performed by
Wang’s gripping band 10, and thus we agree with Appellants that the
rejection appears to improperly rely on hindsight reconstruction using the
claims as a guide. See Appeal Br. 10. Wang discloses using strap 13 to grip
bar 20 and, moreover, discloses that “a danger of loosening from the
equipment [bar 20] due to an insufficient gripping force of a user can be
avoided” by using its gripping band 10. See Wang, Abstract, Fig. 4. The
Examiner has not provided any findings that Wang recognized a problem
with gripping or fitness equipment 20. Without a persuasive articulated
rationale based on rational underpinnings for modifying the reference as
proposed, the Examiner’s rejection appears to be the result of hindsight
analysis. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 103(a) of claims 1, 4, 9, 10, and 14—24 as
unpatentable over Wang, Skinner, McBride, and Pereira.
SUMMARY
The Examiner’s decision to reject claims 1, 4, 9, 10, and 14—24 under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement is reversed.
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The Examiner’s decision to reject claims 1, 4, 9, 10, and 14—24 under
35U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement is reversed.
The Examiner’s decision to reject claims 1, 4, 9, 10, and 14—24 under
35 U.S.C. § 103(a) as unpatentable over Wang, Skinner, McBride, and
Pereira is reversed.
REVERSED
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