Ex Parte Beland et al

Patent Trial and Appeal BoardMay 14, 2013

10942075 (P.T.A.B. May. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JEAN-FRANCOIS BELAND and MARC GAGNON ____________ Appeal 2011-000508 Application 10/942,075 Technology Center 3700 ____________ Before STEFAN STAICOVICI, HYUN J. JUNG, and ADAM V. FLOYD, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-000508 Application 10/942,075 2 STATEMENT OF THE CASE Jean-Francois Beland and Marc Gagnon (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting under 35 U.S.C. § 102(b) claims 1-3 and 12 as anticipated by Kato (US 5,337,418, iss. Aug. 16, 1994) and under 35 U.S.C. § 103(a) claims 17-19 as unpatentable over Kato and Allred (US 5,822,794, iss. Oct. 20, 1998) and claims 20 and 22-24 as unpatentable over Kato and Savarino (US 3,991,420, iss. Nov. 16, 1976). Claims 4-9 and 21 have been withdrawn, and claims 10, 11, and 13-16 have been canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). INVENTION Appellants’ invention relates to “a shirt for a sports player that has gripping means for maintaining the protective equipment in their intended positions.” Spec. 1, ll. 26-27 and fig. 1. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A hockey shirt suitable for being worn by a hockey player having arms, each arm having an inside portion, an outer portion, biceps, an elbow point and a forearm, said hockey shirt comprising: (a) a torso portion having a head opening and a lower trunk opening; and (b) first and second sleeves, each of said first and second sleeves extending along a longitudinal axis and comprising biceps, elbow and forearm portions, inside and outer arm portions for facing the respective inside and outer portions of the arm, and a gripping zone provided on one of said biceps, elbow and forearm portions, said gripping zone being provided on said outer arm portion of said sleeve and being formed of a plurality of separate bands being generally transverse relative to the longitudinal axis of said sleeve and wherein, when said shirt is worn by the hockey player, said separate bands face a hockey elbow pad worn by the hockey player on said outer arm portion Appeal 2011-000508 Application 10/942,075 3 of said sleeve for protecting the elbow point of the arm, said separate bands having a coefficient of friction sufficient for preventing movement between said sleeve and the hockey elbow pad. SUMMARY OF DECISION We REVERSE. ANALYSIS Each of independent claims 1 and 22 requires “a shirt.” App. Br., Clms. App’x. The Examiner found that Kato teaches a shirt 1. Ans. 3 (pointing to Figure 1 of Kato). Appellants argue that because Kato’s garment is “a type of body suit worn under skiing apparel over the entire body of the skier,” Kato’s garment does not constitute a “shirt.” App. Br. 9. In response, the Examiner finds that “Kato et al. discloses an upper body garment void of the lower body garment (18)1.” Ans. 6. The Examiner further notes that, “appellant uses comprising language and does not limit the torso garment from being part of a full body garment.” Id. 1 We note that reference number 18 refers to a “leg protector” shown in Figures 13 and 14. Kato, col. 4, l. 43. For the purpose of this appeal, we assume this to be a typographical error on the part of the Examiner and that the Examiner is in fact referring to Figure 18 of Kato. See also Fin. Rej., mailed Sep. 2, 2009, at 2. Appeal 2011-000508 Application 10/942,075 4 The anticipation rejection At the outset, we note that Appellants’ Specification does not expressly define the term “shirt” or otherwise indicate that it is used in a manner other than its ordinary and customary meaning. An ordinary and customary meaning of the term “shirt” that is most consistent with the Specification and the understanding of those of ordinary skill in the art is “a garment for the upper part of the body: as a: a cloth garment usu. having a collar, sleeves, a front opening, and a tail long enough to be tucked inside trousers or skirt.” MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997). In contrast, Kato’s garment also includes a bottom portion having legs. See Kato, figs. 1 and 2. Since claim language must be construed in a manner that is not inconsistent with the usage of such language in the Specification, it would be unreasonable to interpret the term “shirt” of independent claim 1 as encompassing a garment including leg portions as the full body garment of Kato. Furthermore, Figure 18 of Kato merely teaches an upper body chest protector 60. Kato, col. 5, ll. 24-26. It is not clear whether chest protector 60 is part of Kato’s garment 1 or a “shirt,” as called for by independent claim 1. The Examiner has not provided a basis in fact and/or technical reasoning to reasonably support the determination that Kato’s garment in the embodiment shown in Figure 18 necessarily constitutes a “shirt,” as called for by independent claim 1. See Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990). Lastly, we note that the Examiner’s reliance on the use of the term “comprising” to support the position that the term “shirt” is sufficiently broad to cover Kato’s full body garment is unavailing. While the use of the term “comprising” in the preamble of independent claim 1 allows for Appeal 2011-000508 Application 10/942,075 5 additional structural elements not recited in the claim, it does not justify construing claim language in a manner that is inconsistent with the usage of such language in the Specification. In conclusion, for the foregoing reasons, we agree with Appellants that Kato fails to teach a “shirt,” as called for by independent claim 1. See Reply Br. 1. Therefore, we do not sustain the rejection of independent claim 1 and its dependent claims 2, 3, and 12 under 35 U.S.C. § 102(b) as anticipated by Kato. The obviousness rejections The Examiner turns to Allred to show a shirt made of a polyester spandex blend that includes a gripping zone formed from a rubber material. Ans. 4. The Examiner further uses Savarino to show “a shirt and elbow pad (8, 10) with first and second gripping zones (27, 28) comprising separate bands formed from a hook and loop material.” Ans. 5 (citing to col. 2, ll. 55-60). However, the Examiner does not make findings regarding modifying Kato’s full body garment into a shirt, as taught by each of Allred and Savarino, nor does the Examiner explain why it would have been obvious to modify Kato as such. Thus, the Examiner has not made the initial factual findings required to demonstrate a prima facie case of obviousness of claims 17-20 and 22-24. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (the examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts that the invention is patentable, resort to speculation, unfounded assumptions, or hindsight reconstruction to supply deficiencies in the factual basis). Appeal 2011-000508 Application 10/942,075 6 As such, we likewise do not sustain the rejections under 35 U.S.C. § 103(a) of claims 17-19 as unpatentable over Kato and Allred and of claims 20 and 22-24 as unpatentable over Kato and Savarino. SUMMARY The decision of the Examiner to reject claims 1-3, 12, 17-20, and 22- 24 is reversed. REVERSED hh