Ex Parte Carter et al

Patent Trial and Appeal BoardAug 31, 2017

13679541 (P.T.A.B. Aug. 31, 2017)

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. 13/679,541 11/16/2012 Karin E. Carter 005127.01791/05-0074US75 6469 115726 7590 09/05/2017 BANNER & WITCOFF, LTD & attorneys for client 005127 1100 13th STREET NW SUITE 1200 WASHINGTON, DC 20005 EXAMINER HOEY, ALISSA L ART UNIT PAPER NUMBER 3765 NOTIFICATION DATE DELIVERY MODE 09/05/2017 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): PTO-115726@bannerwitcoff.com nike_docketing @ cardinal-ip. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KARIN E. CARTER, CHIAPEI C. HUNG, REBECCA P. HURD, and DOBRIANA GHENEVA Appeal 2015-006965 Application 13/679,541 Technology Center 3700 Before LINDA E. HORNER, BRETT C. MARTIN, and PAUL J. KORNICZKY, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 9-13 and 15—21. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2015-006965 Application 13/679,541 THE INVENTION Appellants’ claims are directed generally to an article of apparel with material elements having a reversible structure. Claim 9, reproduced below with emphasis added to highlight claim language of particular note, is illustrative of the claimed subject matter: 9. An article of apparel at least partially formed from a textile element, the textile element comprising: a substrate with a first surface and an opposite second surface; a first elongate projection extending from the first surface of the substrate, the first projection having a first terminal end located opposite the substrate, and the first projection having a first plurality of connecting fibers with adjacent connecting fibers extending substantially parallel to each other and extending between the first terminal end and the substrate; a second elongate projection extending from the first surface of the substrate adjacent but spaced from the first projection, the second projection having a second terminal end located opposite the substrate, and the second projection having a second plurality of connecting fibers extending between the second terminal end and the substrate; and a third elongate projection extending from the first surface of the substrate adjacent but spaced from the second projection and on a side of the second projection opposite from the first projection, the third projection having a third terminal end located opposite the substrate, and the third projection having a third plurality of connecting fibers extending between the third terminal end and the substrate, wherein the first, second, and third terminal ends each constitutes a textile sheet that is not connected to other textile sheets. 2 Appeal 2015-006965 Application 13/679,541 REFERENCE The prior art relied upon by the Examiner in rejecting the claims on appeal is: Hutcheon US 5,807,295 Sept. 15, 1998 REJECTION The Examiner made the following rejection that is before us on appeal: Claims 9-13 and 15—21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hutcheon. Non-Final Act. 3. ANALYSIS The main issue before us in this case is the proper construction of the term “adjacent.” Independent claim 9 requires “the first projection having a first plurality of connecting fibers with adjacent connecting fibers extending substantially parallel to each other and extending between the first terminal end and the substrate.” According to the Examiner, Hutcheon teaches this feature via certain, selected fibers 40. Ans. 2. Appellants do not disagree that the fibers specifically selected by the Examiner (as shown in the figure below) are substantially parallel, but point out that the Examiner has chosen fibers that are not adjacent to each other as the term is used in the Specification and that adjacent fibers in Hutcheon are not parallel as claimed. See, e.g., Reply Br. 1. The disagreement may be best seen in the Examiner’s and Appellants’ annotated figures provided below: 3 Appeal 2015-006965 Application 13/679,541 The above figures are the Appellants’ (App. Br. 9, on the left) and the Examiner’s (Ans. 3, on the right) versions of Fig. 9b showing their different interpretations of which fibers may be considered parallel and adjacent. The Examiner asserts that the “term adjacent, as broadly interpreted, requires the strands to be near or close to each other.” Ans. 2. This allows the Examiner to consider two fibers as parallel to each other that have an intervening, non-parallel fiber in between. While we do not disagree that a definition of the term “adjacent” could be this broad, as the Appellants point out, “the claims must be ‘given their broadest reasonable interpretation consistent with the specification. See MPEP § 2111 (citing Phillips v. A WH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005)) (emphasis added)).” Reply Br. 1. We agree with the Appellants that, in this instance, the Examiner has gone beyond a reasonable interpretation consistent with the Specification and that the proper interpretation would eliminate Hutcheon because “intervening members would prevent two items from reasonably being considered adjacent when applying a plain language interpretation of the term.” Id. A review of the Specification shows that when referring to the fibers at issue, the “specification clearly describes the importance of spacing of the projections and the effect of spacing, orientation, etc. on permeability of the 4 Appeal 2015-006965 Application 13/679,541 textile element.” App. Br. 9; see also, e.g., Spec. 137. Furthermore, all of the figures in Appellants’ Specification, when depicting parallel fibers show fibers that are parallel with no intervening fibers. We agree with the Appellants that simply defining “adjacent” as “nearby” is not consistent with the Specification and that as used by Appellants should at least preclude intervening fibers such as that shown in Hutcheon. Accordingly, because Hutcheon fails to teach parallel, adjacent fibers as claimed, we do not sustain the Examiner’s rejection of claim 9. Claim 16 contains the same or similar language as claim 9 and so the rejection of claim 16 fails for the same reasons as stated above. The remaining claims depend either from claim 9 or 16 and so the rejections of these claims suffer the same deficiency. DECISION For the above reasons, we REVERSE the Examiner’s decision to reject claims 9—13 and 15—21. REVERSED 5