Ex Parte YairDownload PDFPatent Trial and Appeal BoardJan 8, 201813085872 (P.T.A.B. Jan. 8, 2018) Copy Citation 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. 13/085,872 04/13/2011 David Ben Yair Y08.12-0001 2985 27367 7590 01/10/2018 WESTMAN CHAMPLIN & KOEHLER, P.A. SUITE 1400 900 SECOND AVENUE SOUTH MINNEAPOLIS, MN 55402 EXAMINER HADEN, SALLY CLINE ART UNIT PAPER NUMBER 3765 NOTIFICATION DATE DELIVERY MODE 01/10/2018 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 @ wck.com tsorbel@wck.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID BEN YAIR Appeal 2017-002190 Application 13/085,872 Technology Center 3700 Before LINDA E. HORNER, THOMAS F. SMEGAL, and ERIC C. JESCHKE, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE David Ben Yair (“Appellantâ€) seeks review under 35 U.S.C. § 134(a) of the Examiner’s decision, as set forth in the Final Office Action dated November 3, 2015 (“Final Act.â€), and as further explained in the Advisory Action dated May 24, 2016 (“Adv. Act.â€), rejecting claims 1, 2, and 4—10. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2017-002190 Application 13/085,872 BACKGROUND The disclosed subject matter “relates to body protection devices and, in particular, to a new and useful heat protection suit, including inner and outer suits and a cooling device with cooling agents.†Spec. | l.1 Claims 1 and 5 are independent. Claim 1 is reproduced below, with emphasis added: 1. A composite suit for protection of a wearer’s body from heat, the composite suit comprising: an inner suit adapted to be positioned on the wearer’s body and covering at least a substantial portion of the wearer’s body, the inner suit being short sleeved or sleeveless and extending in length to cover at least a portion of the lower portion of the wearer’s body; an outer suit adapted to be positioned overlying said inner suit on the wearer’s body, the outer suit having sleeves and pant legs and adapted to surround the inner suit and substantially the wearer’s body; and a plurality of 3 ply pockets having two compartments, wherein: a first ply and a first side of a second ply of said 3 ply pocket are apposed to each other, and said first ply and said first side of said second ply of said 3 ply pocket surround a first void wherein said first ply of said 3 ply pocket is positioned proximate to an outer surface of the inner suit and together with said first side of said second ply, said void is a first compartment configured to enclose a thermo insulating material; and 1 Citations to the Specification refer to the version filed on August 20, 2015. 2 Appeal 2017-002190 Application 13/085,872 a third ply and a second, opposing side of said second ply of said 3 ply pocket are apposed to each other and said second ply positioned between said first and third ply such that said third ply together with the opposing side of said second ply of said 3 ply pocket surrounds a second void wherein said third ply of said 3 ply pocket is positioned distally from the outer surface of the inner suit and said second void is a second compartment configured to contain dry ice wherein said pocket is further configured with a cover to selectively open or close the pocket to control the protection of the wearer’s body from heat. REJECTIONS 1. Claims 1, 2, and 4—10 stand rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. 2. Claims 1, 2, 4, and 6—9 stand rejected under 35 U.S.C. § 112, second paragraph, as failing to particularly point out and distinctly claim the subject matter regarded as the invention. 3. Claims 1, 2, and 4—10 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Nilforushan (US 2008/0201818 Al, published Aug. 28, 2008) and Warner (US 7,216,370 Bl, issued May 15, 2007). DISCUSSION Rejections 1 and 2 The Examiner rejected claims 1,2, and 4—10 under 35 U.S.C. § 101 based on certain language in independent claims 1 and 5. See Final Act. 3. In addition, the Examiner rejected independent claim 1 (and claims 2, 4, and 3 Appeal 2017-002190 Application 13/085,872 6—9, which depend therefrom) as indefinite under 35 U.S.C. § 112, second paragraph. See id. at 4. The Examiner also rejected claim 4 under 35 U.S.C. §112, second paragraph (in addition to its dependence from rejected claim 1) as lacking sufficient antecedent basis for “said pockets configured to contain dry ice.†See id. at 4—5. On May 13, 2016, Appellant proposed claim amendments regarding certain language identified by the Examiner in Rejections 1 and 2.2 Compare Amendment 2-4 (filed May 13, 2016), with Final Act. 3—5. In the Advisory Action dated May 24, 2016, the Examiner stated that the Proposed Amendments would not be entered. See Adv. Act. 1 (§§ 1, 4). As noted by the Examiner, Appellant does not present arguments regarding Rejections 1 and 2. See Ans. 2. Instead, Appellant takes the position that the Proposed Amendments overcome Rejections 1 and 2. Appeal Br. 10; see also Reply Br. 4—5 (stating, for both Rejections, “[a]s the claims were amended to correct the identified issues in the independent claims before [Appellant] filed the Appeal Brief, it is respectfully submitted this is why [Appellant] did not present arguments rebutting the rejectionsâ€). Appellant has not apprised us of error in Rejections 1 and 2. The claims before us in this Appeal are those in the Claims Appendix (Appeal Br. 21—23), which do not reflect the changes in the Proposed Amendments. Because Appellant’s discussion relies on the Proposed Amendments and does not address the pending claims, we sustain Rejections 1 and 2.3 2 We will refer to these amendments as the “Proposed Amendments.†3 We note that the refusal by an examiner to enter a proposed amendment filed after a final rejection is a petitionable matter, rather than one for appeal. See In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (citing 4 Appeal 2017-002190 Application 13/085,872 Rejection 3 Both independent claims 1 and 5 recite an “inner suit†and an “outer suit.†Appeal Br. 21 and 22 (Claims App.). For both claims, the Examiner identified first layer 10 in Nilforushan as the “inner suit†and outer layer 11 in Nilforushan as the “outer layer.†Final Act. 5 and 11 (discussing Nilforushan, Figs. 1—4). Appellant argues that “Nilforushan does not disclose the inner and outer suits as claimed,†but rather, “Nilforushan teaches clothing having an inner and outer layer that provide openings, or spaces, preferably at the shoulders or sides of the torso or at the pocket areas of pants where a transfer element can be positioned therein.†Appeal Br. 11 (citing Nilforushan, Abstract). According to Appellant, “[ijnstead of teaching an inner and an outer suit, Nilforushan teaches an item of clothing where the singular item of clothing has layers that define a space.†Id. We agree with Appellant that the record does not support the finding that Nilforushan discloses the recited “inner suit†and “outer suit†under the proper construction of those terms. During examination, claims are given their broadest reasonable interpretation consistent with the specification, reading the claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990). The Examiner’s position that the limitations at issue read on two layers of a single article of In re Mindick, 371 F.2d 892, 894 (CCPA 1967) (stating that the predecessor to the PTAB “does not consider the issue of whether the examiner’s refusal to enter the proposed amendment after final rejection constituted an abuse of discretionâ€)); see also 37 C.F.R. § 1.127 (2015) (“From the refusal of the primary examiner to admit an amendment, in whole or in part, a petition will lie to the Director under § 1.181.â€). 5 Appeal 2017-002190 Application 13/085,872 clothing—i.e., article of clothing 1 in Nilforashan (see, e.g., H 46-49)—is inconsistent with the Specification. See also In re Smith Int’l, Inc., 871 F.3d 1375, 1382—83 (Fed. Cir. 2017) (stating that the “broadest reasonable interpretation in light of the specification ... is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is ‘consistent with the specification’†(quoting In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997)). Here, the Examiner has not identified any disclosure in the Specification (and we do not discern any from our review) indicating that an “inner suit†and “outer suit†could be two layers of a single article of clothing. Instead, the Specification consistently describes the “inner suit†and “outer suit†as separate components. See, e.g., Spec, 29, 30, 32 (discussing inner suit 15 shown in Figure 6). In the Answer, the Examiner states that, in paragraph 51, Nilforushan “discloses the article of clothing can be any type including shirts, vests, shorts, pants, bodysuits, skirts, dresses, and robes†and states that “Nilforushan’s disclosure of a bodysuit demonstrates that a suit is within the scope of the Nilforushan reference.†Ans. 2—3. The fact that Nilforushan discloses that article of clothing 1 can be, for example, a “bodysuit[]†does not support the Rejection, however, because the disclosed “bodysuit[]†would still include first layer 10 and outer layer 11, which, for the reasons discussed above, have not been shown to satisfy the limitations at issue. See, e.g., Nilforushan H 51 (disclosing that “article of clothing 1 can be of any type including, without limitation, shirts, vests, shorts, pants, bodysuits, skirts, dresses, robes, and so forthâ€), 49 (disclosing that “the article of clothing has a first layer 10 and an outer layer 11â€). 6 Appeal 2017-002190 Application 13/085,872 Moreover, to the extent the Examiner relies on the disclosed “bodysuit[]†in Nilforushan to address either the “inner suit†or the “outer suit†(rather than, for example, the “composite suit†in the preamble to claim 1), the Examiner has not shown that Nilforushan discloses the presence of two “bodysuits†at the same time. For these reasons, we do not sustain the rejection of independent claims 1 and 5, and also do not sustain the rejection of claims 2, 4, and 6—9 (which depend from claim 1) and claim 10 (which depends from claim 5), under 35 U.S.C. § 103(a). DECISION We affirm the decision to reject claims 1, 2, and 4—10 under 35 U.S.C. § 101, we affirm the decision to reject claims 1, 2, 4, and 6—9 under 35 U.S.C. § 112, second paragraph, and we reverse the decision to reject claims 1, 2, and 4—10 under 35 U.S.C. § 103(a).4 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 4 See 37 C.F.R. § 41.50(a)(1) (“The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed.â€). 7 Copy with citationCopy as parenthetical citation