Ex Parte Quiroga et al

Patent Trial and Appeal Board

Sep 29, 2017

13363104 (P.T.A.B. Sep. 29, 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.
13/363,104 01/31/2012 Luz A. Quiroga 0010-160332 7262
30764 7590 10/03/2017
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
12275 EL CAMINO REAL, SUITE 200
SAN DIEGO, CA 92130
EXAMINER
KINSAUL, ANNA KATHRYN
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
10/03/2017 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):
DOCKETING@ SHEPPARDMULLIN.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUZ A. QUIROGA and
CORINA ELIZABETH QUIROGA BANZER
Appeal 2015-007938
Application 13/363,104
Technology Center 3700
Before SUSAN L. C. MITCHELL, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Luz A. Quiroga and Corina Elizabeth Quiroga Banzer (“Appellants”)
appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting
claims 1—14, which are all the pending claims. See Appeal Br. 1, 6. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2015-007938
Application 13/363,104
CLAIMED SUBJECT MATTER
Appellants’ disclosed invention “relates generally to medical
garments,” and, more specifically, “to a medical garment designed to
outwardly resemble a standard t-shirt, while providing easy access to
medical devices attached to the wearer’s chest.” Spec. 11. Claims 1 and 8
are independent. Claim 8, reproduced below with emphasis added, is
illustrative of the subject matter on appeal.
8. A medical garment, comprising:
a body, comprising a front portion attached to a back
portion by one or more non-partable seams;
first and second sleeves on opposite sides of the medical
garment and coupled to the front portion and the back portion;
a flap, formed on the front portion and configured to
open and close to expose a portion of an upper torso of a person
when in an open position, the flap comprising:
a partable seam that extends along a portion of a
top edge of the body and a portion of a side edge of the
body down to but not beyond a bottom part of the first
sleeve where the first sleeve attaches to the body; and
fasteners that hold the partable seam in a closed
position;
wherein the medical garment largely resembles a t-shirt,
in that the first and second sleeves extend to about the person’s
elbows, the front and back portions extend to about the person’s
waist, and, other than the flap, the body is substantially devoid
of openings that would expose the upper torso.
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Appeal 2015-007938
Application 13/363,104
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Clark
Thompson
Jakub
Feodoroff
US 818,351
US 1,489,046
US 5,062,159
US 7,454,798 B2
Apr. 17, 1906
Apr. 1, 1924
Nov. 5, 1991
Nov. 25, 2008
REJECTIONS
The following rejections are before us for review:
I. Claims 1, 2, 4, 7—9, 11, and 14 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Clark. Final Act. 4—8.
II. Claims 6 and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Clark and Thompson. Id. at 8—9.
III. Claims 3, 5, 10, and 12 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Clark and Feodoroff. Id. at 9—11.
IV. Claims 1 and 8 stand alternatively rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Clark and Jakub. Id.
at 11-14.
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Appeal 2015-007938
Application 13/363,104
ANALYSIS
Each of independent claims 1 and 8 involves, in relevant part, a
medical garment including multiple seams, some of which are specifically
recited as “non-partable seams,” and others of which are specifically recited
as “partable seams.” Appeal Br., Claims App. A key disputed issue in this
case is the proper claim construction of the structure required by these
distinctly identified seams. See Appeal Br. 7—8; Reply Br. 2—7; Final Act. 2;
Ans. 2—3. After careful consideration of the arguments and evidence before
us, we agree with Appellants that the Examiner interprets the claims
unreasonably broadly. See Appeal Br. 7—8; Reply Br. 2—3.
In rejecting the claims, the Examiner construes the designations of a
seam being either “non-partable” or “partable” to be a matter of “intended
use.” Final Act. 2 (emphasis added); see Ans. 2. The Examiner’s
interpretation is that “[a] seam is only non-partable if a user decides to leave
a seam attached or together.”1 Final Act. 2. This interpretation leads to
reliance on Clark as disclosing “non-partable seams” because Clark’s
identified seams—where material is joined by tying together soft securing
tapes—are stated as being “fully capable of being non-partable if [a] user
never decides to unfasten the fasteners.” Id.', see also Clark, Figs. 1, 2
(depicting separate front and back gown portions with securing tapes).
1 The Examiner’s position is further illustrated by the statement that
“even a stitched seam [(i.e., a non-partable seam)] may be considered to be
partable if a user desires for it to be parted since it may be ripped with a
seam ripper, scissors, pulled with force, etc.” Final Act. 2. This position is
unreasonable, as it fails to give the term “non-partable” any meaningful
effect, since virtually anything could be forcefully parted in some way. See
Reply Br. 2—3.
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Appeal 2015-007938
Application 13/363,104
Appellants argue, and we agree, that the Examiner errs by relying on a
claim interpretation that is unreasonably broad. See Appeal Br. 7—8; Reply
Br. 2—7. The Examiner’s intended use position dismisses any structural
difference between “non-partable seams” and “partable seams,” which is in
direct contradiction to the fact that both terms are expressly recited in the
claims to identify structurally distinct types of seams.2 Moreover, the
Examiner’s interpretation effectively reads out any meaning imparted by the
modifiers “non-partable” and “partable,” such that a clearly partable seam
could somehow be considered non-partable simply if it was not actually
parted (i.e., separated) at any given time.3 This is unreasonable. A
“partable” seam does not become “non-partable” simply because it is
fastened together (even though the seam may be un-parted in such a
condition).
It is not the province of the Board, during appellate review, to pass
judgement on the ultimate issue of patentability of claims in the abstract.
Instead, we review the decision of the Examiner as presented in the rejection
of record, in light of the arguments made, to evaluate whether an appellant
persuasively apprises the Board of error. It may well be possible that the
claims here would have been obvious to one of ordinary skill in the art, in
light of conventional garments or other known art. But we must review the
rejection presented in the record before us.
2 We agree with Appellants that a person of ordinary skill in the art
would understand there to be a structural distinction between “non-partable
seams” and “partable seams.” See Reply Br. 2—3.
3 See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed.
Cir. 2007) (denouncing claim constructions that render phrases in claims
superfluous).
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Appeal 2015-007938
Application 13/363,104
Based on the record presently before the Board, we agree with
Appellants that the Examiner’s claim construction of “non-partable seams”
is unreasonably broad, such that the rejections based thereon are in error.
For this reason, we do not sustain them.
DECISION
We REVERSE the Examiner’s rejections of claims 1—14.
REVERSED
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