Ex Parte 8864544 et al

Patent Trial and Appeal BoardMar 26, 2018

90013508 (P.T.A.B. Mar. 26, 2018)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 90/013,508 06/03/2015 8864544 18708.3 4444 21999 7590 03/26/2018 KIRTON MCCONKIE Key Bank Tower 36 South State Street, Suite 1900 SALT LAKE CITY, UT 84111 EXAMINER ENGLE, PATRICIA LYNN ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 03/26/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte INFINITY HEADWEAR & APPAREL, LLC ____________________ Appeal 2017-001784 Reexamination Control 90/013,508 Patent US 8,864,544 B21 Technology Center 3900 ____________________ Before JEFFREY S. ROBERTSON, DANIEL S. SONG, and BRETT C. MARTIN, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING 1 Issued to Anderman, et al. on October 21, 2014 and assigned to Infinity Headwear & Apparel, LLC (hereinafter the ’544 patent). Appeal 2017-001784 Reexamination Control 90/013,508 Patent US 8,864,544 B2 2 The Appellant filed a REQUEST FOR REHEARING on June 30, 2017 (hereinafter “Rehearing Request” or “Reh’g Req.”) under 37 C.F.R. § 41.52, seeking rehearing of our Decision, mailed May 1, 2017 (hereinafter “Decision” or “Dec.”), which affirmed certain final rejections of the claims made by the Examiner. We grant the Rehearing Request to the extent that we consider the Requester’s arguments, but DENY the request to modify the Decision. The Appellant first argues that our Decision misconstrued the edge that defines the hood and also failed to consider all of the limitations when construing the hood and its edge(s). Reh’g Req. 2. On the contrary, the Appellant mischaracterizes the Decision to create ambiguity where there is none. In the Decision, we clearly explained that the zipper 26 in Katz defines the edge of the hood. See Dec. 7. Furthermore, in the context of Appellant’s invention, the hood is not simply a traditional hood, but is both a portion of a garment that covers some or all of the head while also forming a compartment into which the rest of the garment may be stuffed. Taken in that context, element 20 in Katz, which also forms the stuffed animal is properly understood as meeting the claims because when in stuffed-animal form, any portion of the garment extending beyond the zipper is tucked inside along with the rest of the garment. To be clear, the claimed hood as applied to Katz, is defined by element 20 ending in an edge surface, the zipper 26. Although we agree that the hood 14 would further extend the exterior and interior of the hood when in place as shown, it does not, by itself, form a wearable hood without element 20. In contrast, we find that hood 14 would not be necessary for Appeal 2017-001784 Reexamination Control 90/013,508 Patent US 8,864,544 B2 3 element 20 to be worn as a hood, and could be tucked inside element 20 (i.e. the claimed hood) such that it would be located entirely in the interior thereof, thus meeting the claims. Furthermore, regardless of the position of hood 14, it is essentially irrelevant to the claims because, the hood is element 20 in Katz, which has its own interior and exterior as described supra. Accordingly, Appellant’s arguments as to how the hood 14 contradicts the claim language is not relevant because under the Examiner’s application of Katz to the claims, hood 14 is not the claimed hood. As to the sub-elements, element 20 of Katz clearly meets all of the sub-elements identified by the Appellant. See Reh’g Req. 2. We further disagree with Appellant’s mischaracterization of our Decision as suggesting that a hood could have multiple edges. Again, Katz’s hood as applied in the rejection has only one edge and that is the edge where the zipper is, which then extends along the seam between the garment and the hood. Anything forward of the zipper is not the hood, but an extension relative to element 20 as the hood in Katz, which has its own edges as noted by the Examiner. Regarding the alleged contradiction with the Examiner’s Answer, we note that the Appeal is from the Examiner’s rejection, not from arguments made in the Answer. The portion cited by Appellant (Reh’g Req. 8) is in response to the Examiner’s reannotation of Appellant’s drawing purporting to point out the proper edge surfaces in Katz in the context of the claims. App. Br. 12. The Examiner’s main purpose in re-annotating Appellant’s drawing is to add the edge surfaces corresponding to the Examiner’s interpretation of what are considered the attached edge portions that Appellant omitted from its annotated drawing. The Examiner nowhere Appeal 2017-001784 Reexamination Control 90/013,508 Patent US 8,864,544 B2 4 explicitly accepts Appellant’s annotations as being the edges in the claims. The fact that the Examiner used Appellant’s language in responding to Appellant’s arguments in no way changes the actual rejection, which as noted above we interpret such that the zipper is the edge of the hood and is attached at the bottom of the hood to the garment as depicted by Katz’ dashed line. Again, we do not take the Examiner’s re-annotation as accepting that Appellant’s annotations must be the edge of the hood. The Examiner appears actually to be rejecting Appellant’s annotation of the claimed edges by adding additional annotation and highlighting them by placing boxes around the term “edge surface” and also including arrows, which also point to the intersection of the zipper and the dashed line of Katz. Accordingly, we do not agree that anything in our Decision contradicts the Examiner’s interpretation. The only thing it arguably conflicts with is the Examiner’s restatement of Appellant’s arguments and use of Appellant’s annotations, and we do not consider anything in the Examiner’s Answer to be an acceptance of the arguments themselves. In fact, we consider the Examiner’s re-annotation actually to refute Appellant’s arguments and annotations. Accordingly, we are not persuaded of any basis for granting the Rehearing Request. REHEARING DECISION While we have considered the Decision in light of the Request for Rehearing, we decline to modify it in any respect. Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose of judicial review. A party seeking judicial review must timely serve notice Appeal 2017-001784 Reexamination Control 90/013,508 Patent US 8,864,544 B2 5 on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. DENIED