Barker, Stephen George Edward. et al.

Patent Trials and Appeals BoardAug 3, 2020

13636516 - (D) (P.T.A.B. Aug. 3, 2020)

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. 13/636,516 11/20/2012 Stephen George Edward Barker GJE.8675 9896 23557 7590 08/03/2020 SALIWANCHIK, LLOYD & EISENSCHENK A PROFESSIONAL ASSOCIATION P.O. BOX 142950 GAINESVILLE, FL 32614 EXAMINER KANE, KATHARINE GRACZ ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 08/03/2020 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): euspto@slepatents.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEPHEN GEORGE EDWARD BARKER, DARYL M. STUTCHBURY, and ROBERT ALBERT BROWN Appeal 2019-0044031 Application 13/636,516 Technology Center 3700 Before BENJAMIN D. M. WOOD, BRANDON J. WARNER, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision to reject claims 8 and 11.2, 3 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellant presented oral arguments on July 23, 2020. 2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Stuff of Life Limited as the real party in interest. Appeal Br. 1. 3 Claims 1–7, 9, and 10 have been cancelled. Appeal Br. 9 (Claims App.). Appeal 2019-004403 Application 13/636,516 2 CLAIMED SUBJECT MATTER The claims are directed to a method of wearing a band or garment to prevent or reduce the appearance of stretch marks. Spec. 1:3–5. Claim 8, reproduced below with emphasis and a line break added for clarity, is the sole independent claim on appeal. 8. A method for preventing or reducing the likelihood of stretch marks on a subject, which comprises the subject wearing a band comprising, a first edge, a second edge, and an inner surface between the first edge and the second edge, wherein said inner surface has an array of tacky pads arranged on the inner surface and between said first edge and said second edge, wherein the tacky pads are arranged separately to one another, with spaces therebetween, such that they do not touch and such that it is not possible to draw a continuous straight line starting from said first edge and crossing said second edge only within the spaces between the tacky pads wherein the straight line does not cross at least one of said tacky pads, and wherein each of said tacky pads forms a friction- creating contact adapted to adhere to skin so that skin in contact with the tacky pads moves with the tacky pads and the tacky pads function to dissipate foci of stress in the skin, thereby inhibiting the formation of stretch marks; wherein the band is worn by a subject in the second or third trimester of pregnancy on an area at risk of developing stretch marks. Appeal Br. 9 (Claims App.). Appeal 2019-004403 Application 13/636,516 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Lefevre US 1,605,959 Nov. 9, 1926 Spanel US 2,830,591 April 15, 1958 REJECTIONS I. Claims 8 and 11 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. II. Claims 8 and 11 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite. III. Claim 8 is rejected under 35 U.S.C. § 102(b) as anticipated by Lefevre. IV. Claims 8 and 11 are rejected under 35 U.S.C. § 103(a) as unpatentable over Spanel. V. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over Lefevre and Spanel. OPINION Rejection I–Written Description The Examiner finds that the limitation, “the tacky pads are arranged separately to one another, with spaces therebetween, such that they do not touch,” recited in claim 8 is not supported by the original disclosure because Figure 2 depicts tacky pads 6 touching each other, and the Specification does not describe the tacky pads as not touching.4 See Final Act. 2–3. 4 The Specification refers to these as “tacky protuberances.” Spec. 4:17. Appeal 2019-004403 Application 13/636,516 4 Appellant argues that Figures 1 and 3 disclose embodiments of the invention in which tacky pads do not touch each other. Appeal Br. 3. In response, the Examiner notes that the detail view in Figure 3 appears to show tacky pads touching one another. Ans. 3. The Examiner concludes that because some Figures depict tacky pads touching each other, it is unclear whether the original disclosure supports a recitation that the recited tacky pads do not touch each other. Id. at 3–4. We agree with Appellant that Figures 1 and 3 provide adequate written description for the requirement in claim 8 that the tacky pads do not touch each other. The fact that Figure 2 shows such pads in contact with each other does not negate the fact that the recited structure is disclosed in other Figures. Nor does the detail view in Figure 3 undermine Appellant’s argument. The portion of Figure 3 identified as the subject of the detail view depicts only tacky pads that do not touch each other. See Fig. 3. In the detail view itself, although tacky pads appear to touch each other, such an arrangement is inconsistent with the remainder of Figure 3. Further, we see no indication that the tacky pads depicted in the detail view should be understood to be on the same plane, i.e., that the detail view is a cross- section view that does not account for depth. Accordingly, we do not sustain the rejection of claims 8 and 11 as failing to comply with the written description requirement. Rejection II–Indefiniteness The Examiner determines that the limitation, the tacky pads are arranged separately to one another, with spaces therebetween, such that they do not touch and such that it is not possible to drawn a continuous straight line starting from Appeal 2019-004403 Application 13/636,516 5 said first edge and crossing said second edge, only within the spaces between the tacky pads and wherein the straight line does not cross at least one of said tacky pads, recited in claim 8 is unclear. See Final Act. 4. In this regard, the Examiner poses the inquiry “[i]s the line straight or diagonal?” and then concludes “[i]f a line can be drawn that crosses tacky pads, then the claim limitation has been met.” Id. Appellant contends “[claim 8] clearly and unambiguously states that the limitations of the claim are met only if it is not possible to drawn a straight line in the spaces. Whether a line can be drawn that does cross a tacky pad is irrelevant.” Appeal Br. 3. In response, the Examiner takes the position that the language at issue is “functional and conditional,” and that “if a thick continuous straight line is used, then clearly it would cross a tacky pad.” Ans. 5–6. The Examiner also determines that this language is “a step-type-limitation.” Id. at 6. Appellant replies that the requirements of claim 8 are met only by arrangements in which it is impossible to draw a straight line only between the spaces of the tacky pads and extending from one edge to another. Reply Br. 4–5. We do not sustain the rejection of claims 8 and 11 as indefinite because it is clear that the “continuous straight line” limitation describes the physical arrangement of the tacky pads and is not a “functional and conditional” requirement. As the disclosed purpose of the tacky pads (and their recited arrangement) is to dissipate foci of stress in the skin, we understand that the continuous straight line can extend in a diagonal direction, but must be straight along its entire length, i.e., it must not contain Appeal 2019-004403 Application 13/636,516 6 any bends or vertices. See Spec. 3:23–26.5 With respect to the Examiner’s discussion of the thickness of the line, we do not understand claim 8 to allow for the continuous straight line to have any thickness. Rather, the line recited in claim 8 is a mathematical construct (the shortest distance between two points), not a visual representation of a line having a thickness. Rejection III–Anticipation by Lefevre The Examiner finds that Lefevre discloses all of the steps and elements recited in claim 8, including the “continuous straight line” limitation. Final Act. 4–6. The Examiner applies the same interpretation of claim 8 discussed above regarding Rejection II, stating, “if one single straight line can be drawn crossing a tacky pad then the limitation has been met since it is functional and conditional . . . starting from said first edge and crossing said second edge.” Id. at 5. Appellant argues that, “[w]hile it is, of course, possible to draw lines across the array of the Lefevre device that do cross the studs and teats, it is also possible to draw a straight line entirely across the array of the Lefevre device that does not cross at least one stud or teat. Therefore, Lefevre does not meet the limitation.” Appeal Br. 5. In response, the Examiner reiterates the above-noted interpretation of claim 8 and then states, “if the line was thicker it would clearly always cross over a tacky pad; thus a line drawn only within the spaces is not possible.” Ans. 7. 5 Claim 8 explicitly requires the line to be straight. Appeal Br. 9 (Claims App.). Appeal 2019-004403 Application 13/636,516 7 We do not sustain the Examiner’s rejection of claims 8 and 11 as anticipated by Lefevre because the Examiner applies an unreasonably broad interpretation of the “continuous straight line” limitation. Claim 8 requires that it is not possible (i.e., it is impossible) to draw a continuous straight line starting from the first edge and crossing the second edge only within the spaces between the tacky pads. The Examiner appears to be interpreting this as merely requiring that it is possible to drawn a continuous straight line that crosses a tacky pad. Further, as discussed above, the recited continuous straight line is a mathematical line and has no measurable thickness. Thus, the Examiner’s discussion of line thickness is not relevant to the scope of claim 8. Rejection IV–Unpatentability over Spanel The Examiner finds that Spanel discloses many of the requirements of method claim 8, including that the band is worn by a subject in the second or third trimester of pregnancy on an area at risk of developing stretch marks. Final Act. 7–8. However, the Examiner finds that “Spanel does not specifically teach tacky pads not touching,” but that this arrangement would have been obvious to person of ordinary skill in the art “in order to cover more of the abdominal area.” Id. at 8–9. Appellant argues “[t]he bands of Spanel are for abdominal reinforcement and are ‘bulge resisting’ . . . . Such a bulge resisting band would not be suitable for a pregnant woman.” Appeal Br. 6. In response, the Examiner takes the position that, “[s]ince the device is used for abdominal support, a pregnant woman in the earlier stages of pregnancy could be drawn to wear the device to prevent from showing at Appeal 2019-004403 Application 13/636,516 8 first, as well as to keep the abdominal area supported during the early stages of pregnancy.” Ans. 8. Appellant has the better position because claim 8 recites the step of wearing the band “in the second or third trimester of pregnancy.” The Examiner’s finding that this step is disclosed by Spanel (Final Act. 8) is not supported by a preponderance of the evidence. In this regard, Spanel discloses “undergarments provided with means for restraining a bulging abdomen.” Spanel 1:17–18. The Examiner does not direct our attention to any portion of Spanel indicating that the garment disclosed therein is to be worn during pregnancy, much less during any particular time period in pregnancy. To the extent the Examiner determines that it would have been obvious for a subject to wear the garment disclosed by Spanel during “the early stages of pregnancy,” the Examiner has not explained how this time period would satisfy the requirement in claim 8 that the band be worn during “the second or third trimester of pregnancy,” as the claim requires. Ans. 8. Accordingly, we do not sustain the rejection of claim 8 and claim 11 depending therefrom as unpatentable over Spanel. Rejection V–Unpatentability over Lefevre and Hall The Examiner rejects claim 11 as unpatentable over Lefevre and Hall, relying on Hall to teach the particular materials comprising the tacky pads. Final Act. 9–10. For the same reasons discussed above regarding Rejection III, we do not sustain Rejection V. Appeal 2019-004403 Application 13/636,516 9 DECISION The Examiner’s rejections are reversed. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 8, 11 112, first paragraph Written description 8, 11 8, 11 112, second paragraph Indefiniteness 8, 11 8 102(b) Lefevre 8 8, 11 103(a) Spanel 8, 11 11 103(a) Lefevre, Hall 11 Overall Outcome 8, 11 REVERSED