Ex Parte Matthews

Patent Trial and Appeal Board

Nov 13, 2017

14484175 (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.
14/484,175 09/11/2014 Kevin L. Matthews 144045.00751 4701
26710 7590 11/15/2017
QUARLES & BRADY LLP
Attn: IP Docket
411 E. WISCONSIN AVENUE
SUITE 2350
MILWAUKEE, WI 53202-4426
EXAMINER
HOEY, ALISSA L
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
11/15/2017 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):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN L. MATTHEWS
Appeal 2016-006945
Application 14/484,175
Technology Center 3700
Before WILLIAM A. CAPP, AMANDA F. WIEKER, and
ANTHONY KNIGHT, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1—7, 9-16, and 18.2 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 Cabela’s Incorporated is an applicant as provided in 37 C.F.R. § 1.46. The
Appeal Brief (page 1) identifies Cabela’s Inc. as the real party in interest.
2 Claims 8, 17, 19, and 20 have been withdrawn in connection with an
election/restriction requirement. Final Action 2.
Appeal 2016-006945
Application 14/484,175
THE INVENTION
Appellant’s invention relates to garments that incorporate a seat.
Spec. 12. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A garment assembly, comprising:
a garment comprising a lower edge, wherein the garment is
configured to define separate holes for a left arm and a right
arm of a user;
a seat comprising a top surface, a bottom surface and a rear
surface; and
two hinging straps, wherein a first end of each hinging strap
is connected to the top surface, the bottom surface or the rear
surface of the seat and a second end of each hinging strap is
connected to the lower edge of the garment, wherein the two
hinging straps are configured to remain connected to the seat
and to the garment while the seat is pivoted between a vertical
stowed position outside of the garment and a horizontal
deployed position beneath the user.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Weymouth US 1,723,831 Aug. 6, 1929
Callahan US 6,256,791 B1 July 10,2001
The following rejections are before us for review:
1. Claims 1—7, 9-16, and 18 are rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1—14 of a
parent application, US 8,032,949 B1 to Matthews (iss. Oct. 11, 2011).
2. Claims 1—7, 9-16, and 18 are provisionally rejected on the ground
of nonstatutory double patenting as being unpatentable over claims 27, 29—
31, 36, and 50—53 of co-pending Application No. 13/231,432.
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Application 14/484,175
3. Claims 1—7, 9—16, and 18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Callahan and Weymouth.3
OPINION
Election/Restriction Requirement
Appellant argues against the Examiner’s entry of an election/
restriction requirement. Appeal Br. 5—7; Final Action 2. In the Answer, the
Examiner points out, correctly, that Appellant’s traverse to the election/
restriction requirement is a petitionable matter that is not reviewable by the
Board in this appeal. Ans. 2.
The propriety of a requirement to restrict, if traversed, is reviewable
by petition under 37 C.F.R. § 1.144. See In re Hengehold, 440 F.2d 1395
(CCPA 1971); MPEP § 821. The line of demarcation between appealable
matters for the Board and petitionable matters for the Director of the U.S.
Patent and Trademark Office (“Director”) should be carefully observed. The
Board will not ordinarily hear a question that should be decided by the
Director on petition, and the Director will not ordinarily entertain a petition
where the question presented is a matter appealable to the Board. MPEP
§ 1201.
We decline to review Appellant’s traverse of the Examiner’s
Election/Restriction requirement.
Double Patenting over the ’949 Patent
Appellant argues claims 1—7, 9-16, and 18 as a group. Appeal Br. 8.
Appellant argues that the independent claims of the ’949 Patent require “a
3 A rejection under 35 U.S.C. § 112 11 has been withdrawn by the
Examiner. Final Action 4—5; Ans. 2.
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Application 14/484,175
seat with an aperture and an elastic member that extends through the
aperture in the seat,” a limitation that is absent from the currently pending
claims. Appeal Br. 8. Appellant further argues that the current claims
require “two hinging straps that are configured to remain connected to the
seat and to the garment while the seat is pivoted between a vertical stowed
position outside of the garment and a horizontal deployed position beneath
the user,” a limitation absent in the claims of the ’949 Patent. Id.
In response, the Examiner agrees that the ’949 Patent claims contain
limitations that are not required in the currently pending claims, but notes
that the ’949 Patent claims “teach all of the structural limitations” of the
pending claims. Ans. 3. The Examiner states that the currently pending
claims are broader than those of the ’949 Patent. Id.
The doctrine of obviousness-type double patenting is intended to
prevent the extension of the term of a patent by prohibiting the issuance of
claims in a second patent not patentably distinct from the claims of a first
patent. See In reLongi, 759 F.2d 887, 892 (Fed. Cir. 1985). “A later patent
claim is not patentably distinct from an earlier claim if the later claim is
obvious over, or anticipated by, the earlier claim.” Eli Lilly & Co. v. Barr
Labs., Inc., 251 F.3d 955, 968 (Fed.Cir.2001). Just as the inquiry under 35
U.S.C. § 103(a) requires us to consider the claimed subject matter “as a
whole,” so too do we consider whether the currently claimed subject matter
“as a whole” is non-obvious over the claimed subject matter of the ’949
Patent. Eli Lilly & Co. v. Leva Parenteral Medicines, Inc., 689 F.3d 1368,
1377 (Fed. Cir. 2012).
Appellant essentially makes two arguments for patentability of the
current claims. The first argument is that the ’949 Patent claims contain
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Application 14/484,175
limitations that are not found in the current claims, a point taken up by the
Examiner in concluding that the current claims are broader than those of
the ’949 Patent Ans. 3. Appellant’s argument is unpersuasive as Appellant
fails to explain why broadening a claim by eliminating claimed content
would have required more than ordinary skill.
Appellant’s second argument relates to the alleged addition of hinging
strap limitations to the claims of the current application. Appeal Br. 8.
However, claims 5—8 of the ’949 Patent recite limitations directed to hinging
straps. Appellant fails to explain how the hinging strap subject matter of
pending claim 1 is patentably distinct from the hinging strap subject matter
of claims 5—8 of the ’949 Patent.
Thus, we are not apprised of Examiner error and we sustain the
Examiner’s double patenting rejection of claims 1—7, 9-16, and 18 over the
’949 Patent.4
Provisional Double Patenting Rejection
over Co-Pending Application No. 13/231,432
We do not reach the Examiner’s provisional rejection of claims 1—7,
9-16, and 18 on the ground of non-statutory obviousness-type double­
patenting over a co-pending application. See Ex parte Moncla, 95
U.S.P.Q.2d 1884 (BPAI 2010) (precedential).
4 The Examiner advises Appellant that the rejection may be overcome by
filing of a terminal disclaimer. Final Action 3.
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Application 14/484,175
Unpatentability of Claim of Claims 1—7, 9—16, and 18
over Callahan and Weymouth
Claims 1 and 10
Claims 1 and 10, the only independent claims in the application, are
argued together. Claims App., Appeal Br. 13—14. We select claim 1 as
representative. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Callahan teaches a garment assembly
substantially as claimed except that it has only one instead of two hinging
straps. Final Action 6. The Examiner notes that Appellant has not provided
evidence that using two straps instead of only one is critical to the invention.
Id. The Examiner further notes that Appellant has not provided evidence
that the use of two straps produces unexpected results. Id. “Applicant
details that any appropriate number of [lower] strap assemblies may be
used.” Id. at 6—7 (citing Spec. 127). The Examiner relies on Weymouth as
disclosing two hinging straps that attach a seat to a garment. Final Action 7.
The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to provide the
hinging strap of Callahan to be made into two separate hinging straps as
taught by Weymouth. Id. According to the Examiner, a person of ordinary
skill in the art would have done this to facilitate the seat being pivoted into
different configurations while employing less material. Id.
Appellant argues that the Examiner’s proposed combination fails to
disclose two hinging straps that are configured to remain connected to the
seat and to the garment while the seat is pivoted between a vertical stowed
position and a horizontal deployed position beneath the user. Appeal Br. 13.
Appellant argues that Callahan’s Velcro® seat attachment fastener is not
shaped as a “strap” within the meaning of claim 1. Id. Appellant next
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argues that, even if Callahan’s seat attachment fastener is a strap, it is only a
single strap and the claim requires two hinging straps. Id. Finally,
Appellant argues that Weymouth’s straps are not configured to remain
connected to the seat and garment during deployment. Id.
In response, the Examiner construes a strap as “material that secures
something” and finds that Callahan’s fastener is a strap, as the claims do not
require it to have specific dimensions. Ans. 3^4. With respect to
Appellant’s one versus two strap argument, the Examiner states that
Weymouth is relied on as teaching a seat attached to a garment by two
straps. Id. at 5. With respect to Appellant’s argument that Weymouth
completely detaches for deployment, the Examiner responds that the
deployment method is disclosed in Callahan. Id. The Examiner reiterates
that it would have been obvious to combine the teachings of Callahan and
Weymouth to achieve the claimed invention, further elaborating that one of
ordinary skill would be able to make known modification to strap
arrangements to connect seats to garments as desired based on projected use,
cost of manufacture, and/or aesthetics. Id.
Next, Appellant argues that it would not have been obvious to
combine Callahan and Weymouth because Callahan teaches away from
using straps that would allow the seat to “move freely in any direction.”
Appeal Br. 15. This argument is not persuasive. Claim 1 has no limitation
directed to “moving freely in any direction” and, consequently, the argument
is not commensurate with the scope of the claim. Claims App.
Appellant next argues that Weymouth teaches away from the
requirement of claims 1 and 10 directed to straps that remain connected to
the seat and garment. Appeal Br. 18. We disagree. The “mere disclosure of
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alternative designs does not teach away.” In re Mouttet, 686 F.3d 1322,
1334 (Fed.Cir. 2012). Rather, teaching away requires “clear
discouragement” from implementing a technical feature. Santarus, Inc. v.
Par Pharm., Inc., 694 F.3d 1344, 1356 (Fed. Cir. 2012). Appellant does not
direct our attention to any language in Weymouth that amounts to a “clear
discouragement” from being combined with Callahan in the manner
proposed by the Examiner. Callahan teaches that it was known to maintain
attachment between a seat and garment during deployment. See Callahan,
Figs. 1,2. Weymouth is merely relied on to show that it is known to use two
straps to attach a seat to a garment (a belt). The fact that Weymouth’s straps
have buckles that permit detachment does not preclude other uses where the
straps maintain attachment, as taught by Callahan, as it is well settled that
“[a] reference must be considered for everything that it teaches, not simply
the described invention or a preferred embodiment.” In re Applied
Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012). Thus, the mere fact
that Weymouth teaches straps that are detachable would not have
discouraged a later inventor, armed with the teachings of Callahan, from
modifying Callahan with two straps that maintain attachment of the seat
during deployment.
Finally, Appellant argues that the Examiner’s proposed combination
would change the principle of operation of Weymouth. Appeal Br. 19.
Weymouth’s straps are used to attach a seat to a garment. See Fig. 1. In the
Examiner’s proposed combination, the combined teachings of Callahan and
Weymouth are still used to attach a seat to a garment. The prospect that
Weymouth’s straps allow for detachment, if desired, is consistent with the
teachings of Appellant’s invention. See Spec. 1 6 (“The seat may be
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detachably interconnected”). Similarly, Appellant’s claim 7, which depends
from 1, provides for a buckle “to facilitate a detachable interconnection.”
Claims App.
In view of the foregoing discussion, we determine the Examiner's
findings of fact are supported by a preponderance of the evidence and that
the Examiner’s legal conclusion of unpatentability is well-founded.
Accordingly, we sustain the Examiner’s unpatentability rejection of claims 1
and 10.
Claims 2, 9, and 18
Claims 2 and 9 depend from claim 1. Claims App. Claim 18 depends
from claim 10. Id. Claims 2, 9, and 10 all have limitations directed to the
straps having buckles that are configured to keep the seat connected to the
garment before, during, and after deployment. Id. Appellant argues these
claims together and we select claim 2 as representative.
Appellant argues that Weymouth’s straps are intended to be removed
from the belt when the seat is in use. Appeal Br. 19. As with claim 1,
Appellant argues that the Examiner’s proposed combination changes
Weymouth’s principle of operation. We fully addressed Appellant’s
contention about changing the principle of operation of Weymouth in
relation to claim 1 above and found it unpersuasive and we also find it
equally unpersuasive here for the same reasons.
We sustain the rejection of claims 2, 9, and 18.
Claim 11
Claim 11 depends from independent claim 10 and adds the following
limitation:
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wherein the first upper strap section and the second upper strap
section are elastic and are configured to stretch when the seat is
moved between the vertical stowed position outside the
garment and the horizontal deployed position beneath the user.
Claims App. Appellant argues that the straps of Callahan and Weymouth
are not elastic as claimed. Appeal Br. 21—22. In addition, Appellant argues
that Weymouth’s straps are analogous to Appellant’s lower straps 48 not
upper straps 56. Id. at 22.
In response, the Examiner states that it is well-known that all fabric
materials are elastic in nature, because fabrics are all capable of being
stretched to some degree with some amount of force. Ans. 8.
Appellant’s Specification differentiates between straps that are
“elastic” and “non-elastic.” Spec. 7. Therefore, we do not agree with the
Examiner that a person of ordinary skill in the art, having read Appellant’s
disclosure, would understand that all straps are elastic. Claims must be
interpreted in light of the specification of which they are a part. Phillips v.
AWHCorp., 415 F.3d 1303, 1316 (Fed. Cir. 2005).
In view of the Examiner’s overly broad construction of “elastic,” the
Examiner’s finding that Callahan and/or Weymouth disclose straps that are
elastic is not supported by a preponderance of the evidence. Accordingly,
we do not sustain the Examiner’s rejection of claim 11 as unpatentable over
Callahan and Weymouth.
Claims 3—7 and 12—16
Appellant does not argue for the separate patentability of claims 3—7
and 12—16 apart from arguments presented with respect to claims 1 and 10
which we have previously considered. Consequently, we sustain the
Examiner’s rejection of claims 3—7 and 12—16 over Callahan and
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Weymouth. See 37 C.F.R. § 41.37(c)(iv) (failure to separately argue
claims).
DECISION
The decision of the Examiner to reject claims 1—7, 9—16, and 18 as
unpatentable on the grounds of non-statutory double patenting is affirmed.
The decision of the Examiner to reject claims 1—7, 9—10, 12—16, and
18 as unpatentable over Callahan and Weymouth patenting is affirmed.
The decision of the Examiner to reject claim 11 as unpatentable over
Callahan and Weymouth is reversed.
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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