Ex Parte McKenzie

Board of Patent Appeals and Interferences

Sep 20, 2007

10441484 (B.P.A.I. Sep. 20, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte REBECCA ANNE McKENZIE
____________

Appeal 2007-0486
Application 10/441,484
Technology Center 1700
____________

Decided: September 20, 2007
____________

Before EDWARD C. KIMLIN, PETER F. KRATZ, and
JEFFREY T. SMITH, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal from the Examiner’s final rejection of
claims 11-14, the only claims that remain pending in this application. We
have jurisdiction pursuant to 35 U.S.C. §§ 6 and 134.

Appeal 2007-0486
Application 10/441,484

Appellants’ invention is directed to a towel including protrusive
ridges located within the towel base, which towel is disclosed as being
useful for cleaning and dusting (Specification 5 and 6). Claim 11 is
illustrative and reproduced below.
11. In an ergonomically designed, hand reactive cleaning-dusting towel
with superior handling properties, comprising:

a single layer of body material having a plurality of protrusive ridges
formed by sewing, occurring within and on said body of material, a
means for superior finger grip, hand grasp and handling properties;

a plurality of separated panels delineated by said protrusive ridges for
structure and dimension so as to require less hand grip to maneuver
the tower thereby reducing hand fatigue;

a said plurality of protrusive ridges strategically positioned throughout
said body of material providing concentrations of mass thereby adding
substance and bulk to a cloth without adding an additional amount of
fabric;

said plurality of protrusive ridges for creating finger hold for ease of
scrunching or wadding of said towel within a user’s hand;

said protrusive ridges that automatically tend to fold at a seam site
when said towel is applied to a surface or put into motion by contact
with a said user’s hand;

ready-made folded edges for crevice cleaning.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Eng US 3,193,844 Jul. 13, 1965
Hoffman US 4,091,491 May 30, 1978
Ruddy US 5,666,679 Sep. 16, 1997

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Claims 11-13 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Eng. Claims 11-13 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Hoffman. Claims 11, 12 and 14 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Ruddy. Claim 14 stands rejected
under 35 U.S.C. § 112, second paragraph as being indefinite for failing to
particularly point out and distinctly claim the subject matter which
Applicants regards as the invention.
We affirm the anticipation rejections over Eng and Hoffman as to
claims 11 and 12 only. We reverse the anticipation rejection over Ruddy.
and we reverse the § 112, second paragraph rejection.
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997);
accord Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047, 34 USPQ2d
1565, 1567 (Fed. Cir. 1995). However, the law of anticipation does not
require that the reference teach what the appellants are claiming, but only
that the claims on appeal "read on" something disclosed in the reference (see
Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789
(Fed. Cir. 1983).
Anticipation under this section is a factual determination. See In re
Baxter Travenol Labs., 952 F.2d 388, 390, 21 USPQ2d 1281, 1283 (Fed.
Cir. 1991) (citing In re Bond, 910 F.2d 831, 833, 15 USPQ2d 1566, 1567
(Fed. Cir. 1990).
In the present case, the Examiner has determined that appealed claims
11-13 read on the subject matter described by Eng or Hoffman, and that
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appealed claims 11, 12, and 14 read on the subject matter described by
Ruddy.
We start with a brief review of the claimed subject matter. All of the
rejected claims require a towel with a body material layer having a plurality
of protrusive ridges formed by sewing, which ridges delineate a plurality of
separated panels of the towel body material. These two claim features are
recited as contributing to towel properties that are qualitatively and
functionally related in claim 11. The claimed towel is said to be
“ergonomically designed” and possessed of “hand reactive cleaning-dusting”
capabilities or qualities (cl. 11).
The protrusive ridges and separated panels are repeatedly recited as
contributing to the handling properties and ease of using the towel with a
user’s hand. In this regard, claim 11 refers to hand-grip qualities and
maneuverability of the towel. The ridges are said to “automatically tend to
fold at a seam site when said towel is applied to a surface or put into motion
by contact with a said user’s hand” (cl. 11). The ridges are said to allow for
finger hold and “ease of scrunching or wadding of said towel within a user’s
hand” (id.). In light of this pattern of recitations in claim 11 and upon
review of the Specification, we interpret the additional recitation in claim 11
of “a means for superior finger grip, hand grasp, and handling properties”
(cl. 11) as another one of the several ways claim 11 qualitatively describes
the handling properties of the towel based on the ridge/panel construction
thereof. In other words, this “means” clause is not the recitation of another
feature of the claimed towel but rather a recitation of a functional
characteristic required as a property of the towel; that is, this limitation
requires that the towel can be grasped with the hand, gripped by the finger[s]
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Application 10/441,484

of a user, and handled. This interpretation is a broadest reasonable
construction of claim 11 that is consistent with Appellant’s Specification as
it would be understood by one of ordinary skill in the art.1 Moreover, while
not binding on us, we note that this interpretation of the “means” limitation
of claim 11 as relating to a recited property of the towel is fairly consistent
with Appellant’s interpretation of this claim language as set forth in the
Reply Brief (Reply Br. 13).2
Turning to the Examiner’s separate anticipation rejections of claims
11 and 12 over Eng or Hoffman, we agree with the Examiner that each of
Eng and Hoffman describe articles of manufacture which both claims 11 and
12 read on.
Eng describes a pleated fabric useful in making articles of clothing
that includes a layer of body material including a plurality of folded stripes
(12) and a plurality of separate panels (13/14) delineated thereby (see Eng,
Figs 2-4 and col. 1, l. 71-col. 2, l. 19). We agree with the Examiner that the

1 During prosecution before the Examiner, claims are given their broadest
reasonable interpretation as they would ordinarily be used and understood by
one of ordinary skill in the art, taking into account any enlightenment or
definition found in the Specification. See In re Morris, 127 F.3d 1048,
1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997). Particular embodiments
appearing in the Specification will not be read into the claims when the
claim language is broader than such embodiments, and the Examiner should
only limit the claim based on an express disclaimer of a broader definition.
See Electro Med. Sys. S.A. v. Cooper Life Sciences Inc., 34 F.3d 1048, 1054,
32 USPQ2d 1017, 1021 (Fed. Cir. 1994); and In re Bigio, 381 F.3d 1320,
1325, 72 USPQ2d 1209, 1210-11 (Fed. Cir. 2004).
2 Indeed, a claim construction that would assign this “means” recitation an
interpretation that would require another element or structural feature as part
of the subject matter of claim 11and which would invoke the sixth paragraph
of 35 U.S.C. § 112 would not be consistent with Appellant’s Specification.
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folded portions of the fabric of Eng is read on by the claimed protrusive
ridges. In this regard, we observe that rejected claims 11 and 12 do not
require any specific degree of protrusion for the claimed ridges, any specific
width for the ridges, and/or any particular size for the panels so long as the
towel (fabric) can be grasped with the hand, finger gripped and maneuvered
for use in cleaning. Moreover, we note that the relative claim terms
“superior”, “ease”, etc. employed in the rejected claims do not serve to
patentably distinguish the claimed towel from Eng’s fabric.
While Eng does not explicitly describe a cleaning, hand
maneuverability, finger grasping functionality for their fabric, it is clear
from a fair reading of Eng that it would be reasonable to infer such
functionality from the fabric of Eng given the substantial correspondence
thereof with the structural features required of Appellant’s towel, especially
given that such hand and finger grasping characteristics would be expected
of a fabric used in an article of clothing as described by Eng. Concerning
the foldable edge feature of independent claim 11, we note that Appellant
does not argue that this feature distinguishes the claimed towel over the
fabric product of Eng.3 In this regard, we note that appealed claim 11 does
not require that the towel edges are in a permanently folded condition and it
is readily inferable that the flexible clothing fabric product of Eng has edges
that are foldable. When a claimed product appears to be substantially
identical to a product disclosed by the prior art, the burden is on the
Applicant to prove that the product of the prior art does not necessarily or
inherently possess characteristics or properties attributed to the claimed

3 Arguments not made in the Briefs are considered to be waived. See 37
C.F.R. § 41.37(c)(vii) (2006).
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product. In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657-58 (Fed.
Cir. 1990). Here, Appellant’s arguments in the Brief and the Reply Brief do
not establish that the fabric of Eng would not be capable of being hand
maneuvered and grasped with the fingers and a user’s hand for use as a
cleaning towel or otherwise established reversible error in the Examiner’s
anticipation rejection of claims 11 and 12.
Similarly, the Examiner has reasonably found that Hoffman describes
a skin care/cleaning device including a layer of body material that includes
protrusive ridges (folds) (15, Fig. 7) formed by sewing and delineating a
plurality of separate panels. Hoffman further describes the use of a fabric or
denim material, among others as being useful in making the mitt shaped
device. Hence, like the fabric article of Eng, the Hoffman device includes a
body of material with ridges that reasonably corresponds with the claimed
towel such that it is appropriate to shift the burden to Appellant to establish
that Hoffman’s device would not possess characteristics or properties, such
as maneuverability, and hand/finger grasping capability corresponding to
that claimed by Appellant. Appellant’s arguments in the Briefs do not
establish that the Hoffman structure would not have been capable of use as a
cleaning towel. Moreover, we note that appealed claims 11 and 12 employ
the open transitional term “comprising”, which does not exclude the
presence of other layers of material being present in the towel besides the
recited single layer of body material. Thus, Appellant’s argument with
respect to the lining layer of Hoffman are unpersuasive because the
provision of a lining layer such as the lining (3) of Hoffman is not excluded
by the appealed claims. Moreover, the lining of Hoffman is readily
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Application 10/441,484

understood to be disclosed as an optional layer to be added for comfort; not
as a required layer.
We have no doubt that the ridged structured layer of Hoffman is
capable of being grasped with a user’s hand and fingers and is maneuverable
for use as a cleaning towel even though the device is ultimately formed in
the shape of a mitt. In this regard, the location and relative size of the ridges
and panels of appealed claims 11 and 12 are not limited by the recitation of
specific numerical dimensions and/or a specific geometric profile.
On this record, we affirm the Examiner’s separate anticipation
rejections over Eng and Hoffman as to rejected claims 11 and 12.
However, our disposition of the Examiner’s separate anticipation
rejections over Eng and Hoffman as to rejected claim 13 is another matter.
This is because rejected claim 13 requires that a seam is affixed about 0.25
to 0.5 inches from an edge of a fold in forming a protrusive ridge.
Appellant mentions this claim feature several times throughout the
Brief and Reply Brief in the arguments presented (see, e.g., Br. 7, Reply Br.
12).4 Our review of Eng and Hoffman reveals no express description of a
seam being formed the claimed distance from a fold in forming a ridge. Nor
has the Examiner explained how that feature is inherently disclosed in these

4 We recognize that Appellant also seems to have referred to each of Eng
and Hoffman as disclosing the claimed seam offset distance from the edge of
the fold (see, e.g., Br. 7 and 11). However, these references to Eng and
Hoffman by Appellant are at odds with the descriptions found in these
references and other statements made in the Briefs, at least as to Eng.
Accordingly, like the Examiner, we do not refer to and rely on these
statements as admissions of fact in considering the rejections before us.
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applied references. It follows that we shall reverse the Examiner’s separate
anticipation rejections over Eng and Hoffman as to claim 13.
We reverse the Examiner’s anticipation rejection of claims 11, 12 and
14 over Ruddy. This is because we can find no description of a plurality of
protrusive ridges in a layer of body material that delineates a plurality of
separated panels as required by all of the rejected claims in the description or
figures of Ruddy. The Examiner points to column 5, lines 11-15 of Ruddy
(Answer 4). However, that section of the Ruddy disclosure merely notes
that at least one seam can extend along or parallel to a second diameter of a
blanket (40) that overlay another blanket layer having a first diameter and a
seam (Ruddy, col. 5, ll. 11-15 and Figs. 2 and 5). While Ruddy inferentially
describes two or more seams by the “at least one seam” language employed
(id. col. 5, l. 13), Ruddy does not describe multiple ridges and a plurality of
separated panels in a single body layer by this optional use of more than one
seam, as is required by the appealed claims.
It follows that we reverse the Examiner’s anticipation rejection of
claims 11, 12, and 14 over Ruddy.
We shall also reverse the Examiner’s § 112, second paragraph
rejection of claim 14.
The relevant inquiry under 35 U.S.C. § 112, second paragraph, is
whether the claim language, as it would have been interpreted by one of
ordinary skill in the art in light of Appellants’ Specification and the prior art,
sets out and circumscribes a particular area with a reasonable degree
of precision and particularity. See In re Moore, 439 F.2d 1232, 1235, 169
USPQ 236, 238 (CCPA 1971).
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The Examiner argues that “Claim 14 is directed to a tuft … and …
[s]ince claim 14 teaches a tuft, which is different than a tuck and can not be
part of a tuck, claim 14’s dependence on claim 12 renders it unclear”
(Answer 3).
The Examiner, however, does not fairly explain why the claim
language, as it would have been interpreted by one of ordinary skill in the art
in light of Appellants’ Specification and the prior art, fails to set out and
circumscribe a particular area with a reasonable degree of precision and
particularity. In this regard, claim 12 merely sets forth a sewing technique
that is used in forming the protrusive ridges (a product-by–process
limitation). It is not clear from the Examiner’s rejection how the additional
requirement for a protrusive ridge (designated as a tuft) formed at or near the
location where two bodies of material are adjoined using a seam, which
seam has a seam allowance is indefinite because of the dependency of claim
14 on claim 12. Consequently, we reverse the rejection under 35 U.S.C. §
112, second paragraph.

REMAND
We remand this application to the Examiner to order the Examiner to
consider whether claims 13 and/or 14 would have been obvious within the
meaning of 35 U.S.C. § 103(a) over any of the prior art of record, alone or in
combination together with any other prior art that the Examiner is or may
become aware of upon reconsideration of the claimed subject matter. For
example, the Examiner should determine whether claim 13 would have been
obvious, within the meaning of § 103(a), over either Eng or Hoffman in that
locating a seam at the distance recited in claim 13 from a folded edge of
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either of these references would appear to be a matter of selecting a
workable or optimum location for the seam associated with the appropriate
folds of these references, which folds were found by the Examiner to
correspond with Appellant’s’ claimed ridges.
CONCLUSION
The Examiner’s decision to reject claims 11 and 12 under 35 U.S.C. §
102(b) as being anticipated by Eng and to reject claims 11 and 12 under 35
U.S.C. § 102(b) as being anticipated by Hoffman is affirmed. The
Examiner’s decision to reject claim 13 under 35 U.S.C. § 102(b) as being
anticipated by Eng; to reject claim 13 under 35 U.S.C. § 102(b) as being
anticipated by Hoffman; to reject claims 11, 12 and 14 under 35 U.S.C. §
102(b) as being anticipated by Ruddy; and to reject claim 14 under 35
U.S.C. § 112, second paragraph as being indefinite for failing to particularly
point out and distinctly claim the subject matter which Applicants regards
as the invention is reversed.
In addition to affirming the Examiner's rejection of one or more claims,
this decision contains a remand. 37 CFR § 41.50(e) (effective September 13,
2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21
(September 7, 2004)) provides that
[w]henever a decision of the Board includes a remand, that
decision shall not be considered final for judicial review. When
appropriate, upon conclusion of proceedings on remand before the
examiner, the Board may enter an order otherwise making its decision
final for judicial review.

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Regarding any affirmed rejection, 37 CFR § 41.52(a)(1) provides
"[a]ppellant may file a single request for rehearing within two months from
the date of the original decision of the Board."

The effective date of the affirmance is deferred until conclusion of the
proceedings before the examiner unless, as a mere incident to the limited
proceedings, the affirmed rejection is overcome. If the proceedings before
the examiner do not result in allowance of the application, abandonment or a
second appeal, this case should be returned to the Board of Patent Appeals
and Interferences for final action on the affirmed rejections, including any
timely request for rehearing thereof.
AFFIRMED-IN-PART and REMANDED

tc/ls

REBECCA McKENZIE
1308 RD. 129, CABIN #4
GLENWOOD SPRINGS, CO 81601

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