Ex Parte Paxton et al

Patent Trial and Appeal Board

Mar 30, 2016

13176722 (P.T.A.B. Mar. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/176,722 07/05/2011
27119 7590
ALBERTW. WATKINS
30844 NE 1 ST A VENUE
ST. JOSEPH, MN 56374
03/31/2016
FIRST NAMED INVENTOR
Stephen E. Paxton
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.
PaxtonDogBootContl 5070
EXAMINER
XAVIER, VALENTINA
ART UNIT PAPER NUMBER
3647
MAILDATE DELIVERY MODE
03/31/2016 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 STEPHEN E. PAXTON and LISA M. LUGO-PAXTON
Appeal2014-003475
Application 13/176,722
Technology Center 3600
Before JOHN C. KERINS, GEORGE R. HOSKINS,
and ARTHUR M. PESLAK, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Stephen E. Paxton and Lisa M. Lugo-Paxton (Appellants) appeal
under 35 U.S.C. § 134(a) from the Examiner's Final decision rejecting
claims 1-20. We have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2014-003475
Application 13/176,722
THE INVENTION
Appellants' invention relates to a dog boot.
Claim 1 is illustrative and is reproduced below:
1. A dog boot, suitable for insertion and removal of a dog's
leg and paw and providing an operatively protective covering
about said dog paw, comprising:
a generally tubular body member having a closed end and an
open end and defining a dog paw region operative to surround
said dog's paw and a dog leg region operative to surround said
dog's leg;
a means for contracting said dog leg region; and
at least one cushion on an interior of said dog leg region
protruding interiorly from said generally tubular body member
above and immediately adjacent to said dog paw region by an
amount of protrusion when said contracting means is contracted
about said dog leg region to produce interference with said
dog's paw and thereby prevent said dog leg region from sliding
into contact with said dog's paw.
THE REJECTIONS
The Examiner has rejected:
(i) claims 1-6, 11-13, and 16-20 under 35 U.S.C. § 102(b) as being
anticipated by Stafford (US 5,148,657, issued Sept. 22, 1992);
(ii) claims 14 and 15 under 35 U.S.C. 103(a) as being unpatentable
over Stafford; and
(iii) claims 9 and 10 under 35 U.S.C. § 103(a) as being unpatentable
over Griffin (US 6,526,920 B 1, issued Mar. 4, 2003) in view of Bourdeau
(US 5,937,542, issued Aug. 17, 1999).
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Appeal2014-003475
Application 13/176,722
Claims 7 and 8 are indicated by the Examiner as containing allowable
subject matter. Final Act. 9.
A rejection of claims 1-15 on the ground of obviousness-type double
patenting has been withdrawn. Ans. 2-3.
ANALYSIS
Claims 1-6, 11-13, and 16--20---Anticipation--Stafford
The Examiner finds that Figure 10 of Stafford discloses the claimed
"at least one cushion on an interior of said dog leg region protruding
interiorly from said generally tubular body member." Final Act. 4; see also
Ans. 4. The Examiner reproduces and annotates Figure 10 with an arrow
indicating where the Examiner believes that drawing figure illustrates the
claimed cushion. Final Act. 6.
Appellants maintain that the drawing figures in Stafford, and
particularly Figures 7-10, illustrate that calf portion 24 of the dog boot
disclosed therein is a single layer or sheet, and that Figure 10 illustrates that
single layer in a bunched configuration, due to a tightening of strap 32. Br.
14. Appellants note that the calf portion 24 corresponds to the claimed
tubular member, and assert that "[t]here is no disclosure of any additional
cushion or any other layer or feature interior therefrom described or
illustrated." Id. at 15 (emphasis omitted). Appellants further posit that
single layer calf portion 24 cannot protrude from itself, whereas the claim
requires that the cushion protrude interiorly from the tubular body member.
Id.
The Examiner retorts that "what is disclosed [in Figure 1 OJ is clearly
padding (cushion) that juts out from the outer surface" of the calf portion 2 4,
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Appeal2014-003475
Application 13/176,722
that "the claim does not specify whether the cushion is a 'separate
cushioning,'" and that "[t]he claim language allows room for interpreting
that the cushion could be integral with or attached to the tubular body
member." Ans. 4.
Appellants have the better position here. As far as the Examiner's
eleventh-hour claim construction goes, the claims separately recite a
"tubular body member" and a "cushion ... protruding interiorly from [the]
tubular body member." That two different terms are used strongly implies
that the claims require that there be two elements distinguishable from each
other. Although the claim may be sufficiently broad so as to encompass a
cushion that is integral with the tubular body member, as suggested by the
Examiner, the claim still requires that there be a structure in which a cushion
and a tubular body member can be discerned. To the extent that the
Examiner is taking the position that a single layer of material can be
regarded as both elements, we reject such a construction. See Stumbo v.
Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing
claim constructions which render phrases in claims superfluous).
The Examiner's reliance on Figure 10 as illustrating a cushion
protruding inwardly from a tubular member is also misplaced. We
acknowledge that, at first blush, Figure 10 appears to show interior padding.
However, the preponderance of the evidence is to the contrary. Nowhere
does Stafford describe the provision of a cushion. Figures 7-9 appear to
show calf portion 24 as a single layer of material. Although the type of
material is not disclosed, Stafford calls for the calf portion to be "of a
flexible nature such that ... the calf portion may be tightened to a relatively
smaller cross-sectional size." Stafford, col. 4, 11. 1-5. At best, Figure 10
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Appeal2014-003475
Application 13/176,722
might be seen as potentially portraying somewhat inaccurately the tightening
or bunching of calf portion 24. To say, however, that Figure 10 is a
disclosure of cushioning material protruding from a tubular member requires
speculation beyond what Stafford actually discloses.
As such, the Examiner has failed to present a prima facie case of
anticipation. The rejection of claims 1---6, 11-13, and 16-20 as anticipated
by Stafford is therefore not sustained.
Claims 14 and 15--0bviousness--Stafford
The positions taken by the Examiner in the obviousness rejection of
claims 14 and 15 do not remedy the deficiency noted above in the
anticipation rejection in view of Stafford. Accordingly, the rejection of
claims 14 and 15 as being unpatentable over Stafford is not sustained.
Claims 9 and 1 O--Obviousness-Grij]zn/Bourdeau
Independent claim 9, and claim 10 depending therefrom, include a
limitation requiring that a cushion on an interior of a dog leg region of a dog
boot have "an insertion edge" sloped away from an open end of the dog boot
to facilitate insertion of a dog's paw into the boot. See, Specification, Figure
8, top portion of elements 14, 24. The Examiner finds that Griffin discloses
all limitations in claims 9 and 10, including an insertion edge, but not an
insertion edge that is sloped away from an open end of the dog boot, as
claimed. Final Act. 8-9. The Examiner cites to Bourdeau as disclosing a
boot liner having a pad 6 that is sloped toward the interior of the boot, and
concludes that it would have been obvious to modify Griffin to provide such
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Appeal2014-003475
Application 13/176,722
a feature, in order to facilitate insertion of a dog's paw into the boot. Id. at
9.
Appellants argue, inter alia, that Bourdeau "does not explicitly
disclose or teach the taper recited" in claim 9, and although "there is some
sort of shaping illustrated in Bourdeau Figure 1, this shaping may simply be
a rounding of the top such as might occur with a loose fabric covering a
foam liner at the top." Br. 25. The Examiner does not respond to this
argument. See Ans. 6-7.
Appellants again have the better position. Figure 1 of Bourdeau does
not clearly show that the top of pad 6 is sloped toward the interior of the
boot, as asserted by the Examiner. The written description in Bourdeau is
silent as to the contour or configuration of the top of its boot liner. The
Examiner's position is thus based on speculation as to what that contour is.
As such, the Examiner has not presented a prima facie case that
claims 9 and 10 would have been obvious over the combination of Griffin
and Bourdeau. The rejection of claims 9 and 10 is therefore not sustained.
DECISION
The decision of the Examiner to reject claims 1-20 is reversed.
REVERSED
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