Ex Parte Willet et al

Patent Trials and Appeals Board

May 21, 2019

14839004 - (D) (P.T.A.B. May. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/839,004 08/28/2015
85943 7590
K&L Gates LLP-Seattle
925 Fourth A venue
Suite 2900
Seattle, WA 98104-1158
05/23/2019
FIRST NAMED INVENTOR
Jay Barrett Willet
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.
2042405.00062 7987
EXAMINER
MCNURLEN, SCOTT THOMAS
ART UNIT PAPER NUMBER
3734
NOTIFICATION DATE DELIVERY MODE
05/23/2019 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAY BARRETT WILLET, LAUREN ROSE MEYER,
and SHON KENDALL HANCOCK
Appeal2018-005498 1
Application 14/839 ,0042
Technology Center 3700
Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 1-5, 7-9, 11-19, 21, and 22. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 Our decision references the Appeal Brief ("Appeal Br.," filed Dec. 4,
2017), the Reply Brief ("Reply Br.," filed May 7, 2018), the Examiner's
Answer ("Ans.," mailed Mar. 5, 2018), and the Final Office Action ("Final
Act.," mailed Apr. 13, 2017).
2 According to Appellants, the real party in interest is "RECREATIONAL
EQUIPMENT, INC." Appeal Br. 3.
Appeal2018-005498
Application 14/839,004
BACKGROUND
The embodiments described in the Specification are directed to
contoured waist straps. See, e.g., Spec. ,r,r 2, 3.
ILLUSTRATIVE CLAIM
Claim 1 is the only independent claim on appeal and recites:
1. A waist strap, comprising:
a strap anchor point;
a first strap portion having a first end and a second strap
portion having a second end, each strap portion having an inner
side and an outer side, wherein each strap portion is coupled to
the strap anchor point and comprises:
a preformed lengthwise curvature such that the inner side
is a concave side of the lengthwise curvature and the outer side
is a convex side of the lengthwise curvature; and
a preformed crosswise curvature such that the inner side is
a concave side of the crosswise curvature and the outer side is a
convex side of the crosswise curvature; and
a belt fastener coupled to each of the first end and second
end.
Appeal Br. 19.
REJECTIONS
1. The Examiner rejects claim 5 under 35 U.S.C. § 112(b) as indefinite.
2. The Examiner rejects claims 1-5, 7-9, 11-14, 16-19, and 21 under
35 U.S.C. § 103 as unpatentable over Feldman3 in view ofVerhulst. 4
3 Feldman, Jr., US 6,182,874 Bl, iss. Feb. 6, 2001.
4 Verhulst, US 7,604,288 Bl, iss. Oct. 20, 2009.
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Application 14/839,004
3. The Examiner rejects claim 15 under 35 U.S.C. § 103 as unpatentable
over Feldman in view of Verhulst and Talkish. 5
4. The Examiner rejects claim 22 under 35 U.S.C. § 103 as unpatentable
over Feldman in view of Verhulst, Talkish, and Hagan. 6
DISCUSSION
Rejection 1
With respect to claim 5, the Examiner finds that "it is not clear how
the radius of curvature is measured." Final Act. 2. The Examiner explains
that "[i]n Fig. 3, two radii of curvature (102, 106) are shown apart from the
waistbelt, but no method is disclosed for how the radii of curvature are
calculated as it is not clear how the illustrated radii correspond to the
waistbelt curvature," and thus, "[o]ne of ordinary skill would not be able to
determine the metes and bounds of the claim." Id.
A claim is indefinite when its metes and bounds are unclear because
the claim contains words or phrases whose meaning is unclear. In re
Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014) (during prosecution a claim
is indefinite when it contains words or phrases whose meaning is unclear);
Ex parte McAward, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017)
(precedential) ( explaining that the USPTO considers a claim indefinite
"when it contains words or phrases whose meaning is unclear"). The
rejection does not explain adequately what words or phrases in the claim the
Examiner has determined are unclear. Further, we agree with Appellants
that one of ordinary skill in the art would understand how the radius of
5 Talkish, US 2,687,129, iss. Aug. 24, 1954.
6 Hagan, US 5,152,443, iss. Oct. 6, 1992.
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Application 14/839,004
curvature would be measured in light of the Specification. Appeal Br. 9-10
( citing Spec. ,r,r 28, 29). Accordingly, we do not sustain this rejection.
Obviousness
As discussed below, we are persuaded of reversible error by
Appellants' argument that the Examiner has not established that the
references of record teach a preformed lengthwise curvature as required by
claim 1. See Appeal Br. 10-11.
With respect to claim 1, the Examiner finds that Feldman discloses a
waist strap including a preformed lengthwise curvature. Final Act. 2-3
(citing Feldman Figs 1, 3). Regarding Feldman's Figures, the Examiner
finds:
Figures 1 and 3 each show the belt with a curvature that is
preformed (i.e. without the user wearing the belt). Figure 1
shows the belt attached to an object (see connections 24, 26),
which creates a greater preformed curvature for the belt. Figure
3 shows the belt unattached to any object, which results in less
curvature than in Fig. 1 (but a significant preformed curvature
remains). The figures are part of the disclosure, and on their face
disclose the claimed feature.
Ans. 8.
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims "their broadest
reasonable interpretation consistent with the specification" and "in light of
the specification as it would be interpreted by one of ordinary skill in the
art." In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). We determine, from the context provided in the Specification, one of
ordinary skill in the art would understand that the claimed "preformed
lengthwise curvature" is not merely a curve that may be made by deforming
the device before its use, but it refers to a curve that is part of the
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Appeal2018-005498
Application 14/839,004
prefabricated shape of the waist strap. See, e.g., Spec. ,r,r 10 ( discussing the
use of a "preformed mold" for "contour curvature construction ... through
injection molding"), 54 ( discussing construction of "preformed lengthwise
curvature" by "injection molding into a prefabricated shape."). Thus, we
determine that the broadest reasonable construction of the phrase "preformed
lengthwise curvature" requires a curvature that is formed during the
construction of the device, e.g., through the use of molding into a
prefabricated curved shaped.
Based on the above construction of the term "preformed lengthwise
curvature," we find that the Examiner neither has established that the art of
record teaches such a preformed curvature nor that the use of preformed
lengthwise curvature would have been obvious. The Examiner points only
to the difference in curvature of the device depicted in Figures 1 and 3 of
Feldman, and the Examiner indicates that the claim language requires only
that the device has a lengthwise curvature present at any time while the belt
is not being used. This does not comport with the broadest reasonable
interpretation of the claim discussed above. Further, the Examiner does not
otherwise cite to any portion of Feldman that expressly discloses a
preformed lengthwise curvature that is formed when the device is
constructed, and the Examiner does not determine that fabricated the device
with such curvature would have been obvious. For these reasons, we are
persuaded of error in the rejection of claim 1.
Accordingly, we do not sustain the rejection of claim 1. For the same
reasons we also do not sustain the rejection of dependent claims 2-5, 7-9,
11-14, 16-19, and 21. With respect to the rejections of claims 15 and 22,
the Examiner does not rely on either Talkish or Hagan in a manner that cures
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Application 14/839,004
the deficiency in the rejection of claim 1. Thus, we also do not sustain the
rejections of claims 15 and 22.
CONCLUSION
We REVERSE the rejections of claims 1-5, 7-9, 11-19, 21, and 22.
REVERSED
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