Ex Parte Spatt

Board of Patent Appeals and Interferences

Dec 16, 2009

10856690 (B.P.A.I. Dec. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOEL F. SPATT
____________________

Appeal 2009-002382
Application 10/856,690
Technology Center 3600
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Decided: December 16. 2009
____________________

Before: WILLIAM F. PATE III, JENNIFER D. BAHR and
MICHAEL W. ONEILL, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1, 3-6, 8-14, 16-25, 27-35, 59, and 60. App. Br 2. We have jurisdiction under
35 U.S.C. § 6(b).
Appeal 2009-002382
Application 10/856,690

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The claims are directed to a support garment for quadrupeds. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A support garment for quadrapeds comprising:
a support sleeve made of a three layer laminate material,
wherein the three layer laminate material includes an inner
lycra/nylon layer, a middle neoprene layer, and an outer loop
layer;
fasteners effective for closing the support sleeve around a
quadraped's leg; and
at least one longitudinal rod channel on each lateral side
of the support sleeve, wherein the longitudinal rod channels are
generally parallel to the quadraped's leg.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
McGuire
Clement
Stark
Walter
Gatto
US 518,044
US 878,347
US 5,408,812
US 6,082,308
US 6,539,898 B2
Apr. 10, 1894
Feb. 4, 1908
Apr. 25, 1995
Jul. 4, 2000
Apr. 1, 2003

Claim 59 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by McGuire. Ans. 3.
Claims 1, 3, 4, 8, 10-13, 20, 31 and 60 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over McGuire, Gatto and Stark or Walter.
Ans. 4, 11.
Claims 14, 16, 17, 21-28, 32-35 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over McGuire and Gatto. Ans. 6.
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Application 10/856,690

3
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over McGuire, Gatto, Stark or Walter, and Clement. Ans. 9.
Claims 18, 19, 29, and 30 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over McGuire, Gatto and Clement. Ans. 10.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over McGuire, Gatto and Stark. Ans. 12.

OPINION
Separate arguments are presented regarding the rejection of claim 59.
Appellant argues claims 1, 3, 4, 8, 10-13 and 60 as a group. Claim 1 is
selected as the representative claim and claims 3, 4, 8, 10-13 and 60 will
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
Appellant contends that the Examiner erred by rejecting claim 59 as
being anticipated by McGuire because “[McGuire] only includes rods
(designated D) and clearly no rod channel.” App. Br. 5. Appellant contends
that the Examiner erred by rejecting claim 1 as being unpatentable over
McGuire, Gatto and Stark or Walter for the same reason. App. Br. 5-6. This
argument is not persuasive.
A determination of anticipation, as well as obviousness, involves two
steps. First is construing the claim, a question of law, followed by, in the
case of anticipation or obviousness, a comparison of the construed claim to
the prior art. Key Pharmaceuticals v. Hercon Labs. Corp., 161 F.3d 709, 714
(Fed. Cir. 1998) (citations omitted). During examination of a patent
application, pending claims are given their broadest reasonable construction
consistent with the specification. In re Prater, 415 F.2d 1393, 1404-05
Appeal 2009-002382
Application 10/856,690

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(CCPA 1969); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004).
Regarding claims 1 and 59, Appellant has not established any reason
why the term “longitudinal rod channel” should be construed to exclude the
openings in McGuire’s clips b that extend along a portion of rods D. See
McGuire Figs. 1 and 2. Rods D, which extend in a longitudinal direction, are
accommodated within these openings and these openings are effective for
securing the rods D to the garment. McGuire 1:46-62. No particular
dimension of the channel relative to the rod or to the garment is required by
the claim. Although claims are interpreted in light of the Specification,
limitations from the Specification are not read into the claims. Appellant has
failed to establish that it was unreasonable for the Examiner to consider the
openings in clips b that accommodate rods D “longitudinal rod channel[s].”
Regarding claim 1, Appellant additionally argues that the rod channels
of the preferred embodiment provide several advantages over the prior art.
App. Br. 5-6. It is the language of the claims, however, that must patentably
distinguish the invention from the prior art. In re Vamco Machine and Tool,
Inc. 752 F.2d 1564, 1577 n.5 (Fed. Cir. 1985).
Appellant’s contention that none of the other cited references teach
rod channels is not responsive to the Examiner’s position, since McGuire is
the only reference cited by the Examiner as including the claimed “rod
channel.” Ans. 3, 4; App. Br. 6-7. Appellant has not disputed any of the
Examiner’s findings or conclusions relating to any of the other applied
references.
Appellant notes that to establish a prima facie case of obviousness
there must be a reasonable expectation of success and none of the applied
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references have anything to do with a protective garment for a quadruped.
App. Br. 8. Firstly, this statement is inaccurate. Although Appellant’s
device may be intended to protect the injured leg of a dog, devices that
protect other quadrupeds, such as horses, by, for example, restraining them
or warming them, are also protective garments for quadrupeds. To the extent
Appellant is arguing there is no reasonable expectation of success in the
Examiner’s proposed combination, this argument is not persuasive. Absolute
predictability that the substitution will be successful is not required. See In
re O'Farrell 853 F.2d 894, 903-904 (Fed. Cir. 1988). Gatto, Walter and
Stark are cited by the Examiner to demonstrate materials which are known
in the art and the known advantages that result from using those materials.
Ans. 4-5. Appellant has not suggested any reason why the Examiner erred
by concluding that it would have been obvious to one of ordinary skill in the
art to incorporate these known materials into the known device of McGuire
in order to predictably provide the known advantages of these materials.
Appellant has also not suggested any reason why one of ordinary skill in the
art would not have had a reasonable expectation of success that those
materials could be incorporated into McGuire’s device.
Appellant does not advance any arguments different from those
addressed above regarding claims 14 and 25. App. Br. 8. Appellant has not
provided any separate arguments regarding the Examiner’s rejections of
claims 5, 6, 9, 16-24, and 27-35. Accordingly such arguments are deemed
waived and the rejections of these claims are summarily affirmed.

Appeal 2009-002382
Application 10/856,690

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DECISION
For the above reasons, the Examiner’s rejections of claims 1, 3-6,
8-14, 16-25, 27-35, 59, and 60 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

Vsh

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