Ex Parte Grilliot et al

Patent Trial and Appeal BoardSep 17, 2012

10695404 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte WILLIAM L. GRILLIOT and MARY I. GRILLIOT ____________________ Appeal 2010-005532 Application 10/695,404 Technology Center 3700 ____________________ Before: NEAL E. ABRAMS, CHARLES N. GREENHUT, and REMY J. VANOPHEM, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005532 Application 10/695,404 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 8. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to protective pants, such as firefighter’s pants, with puncture-resistant layers at below-knee regions of the leg portions. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A pair of protective pants having an upper portion which when worn covers a wearer's torso, between the wearer's waist and the wearer's legs, the pair of protective pants having two leg portions, each of which when worn covers one of the wearer's legs, wherein each leg portion has an upper region which extends downwardly from the upper portion, and a lower region which extends upwardly from a lower end of said leg portion toward the upper region and which terminates not higher than where said leg portion when worn covers the wearer's knee, wherein the lower region has a puncture-resistant layer made from a cloth fabric that is puncture-resistant, the puncture-resistant layer extends upwardly from the lower end of said leg portion and surrounds the lower end of said leg portion, the cloth fabric being resistant to puncture by snakes or by thorny or spiky plants, wherein the upper region of each leg portion has an outer layer of abrasion-resistant material, the abrasion-resistant material being less resistant to punctures than the puncture-resistant cloth fabric. REJECTIONS Claims 1, 2, 5 and 6 are rejected under 35 U .S.C. § 102(b) as being anticipated by Campbell (US 4,601,066 iss. Jul. 22, 1986). Ans. 3. Claims 3, 4, 7 and 8 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Campbell in view of Eastbay Lined Windpants (see Eastbay Catalog, page 19)(hereafter “Eastbay”). Ans. 5. Appeal 2010-005532 Application 10/695,404 3 OPINION Appellants correctly point out that it was unreasonable for the Examiner to regard any fabric as “puncture-resistant” due to the fact that “all fabrics are puncture-resistant to a degree.” Ans. 6. We recognize that puncture resistance may essentially be regarded as a term of degree as the Examiner suggests. However, we cannot agree with the Examiner that any amount of resistance to puncture, no matter how slight, would render a fabric “puncture-resistant” as that term would be understood by one of ordinary skill in the art. Such a construction essentially deprives the phrase “puncture-resistant” of any meaning when describing a fabric. Although the PTO must give claims their broadest reasonable interpretation, this interpretation must be consistent with the one that those skilled in the art would reach. In re Cortright, 165 F. 3d 1353, 1358 (Fed. Cir. 1999). We recognize that description of the fabric as “puncture-resistant” along with the portion of the claim involving resistance to puncture by snakes or thorny or spiky plants define the claimed structure by a latent property or expected behavior of the fabric. We are mindful that there is a line of cases represented by In re Swinehart , 439 F.2d 210 (CCPA 1971) which indicates that where an examiner has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, the examiner possesses the authority to require an applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. Nevertheless, before an applicant can be put to this burdensome task, the examiner must provide some evidence or scientific reasoning to establish the reasonableness of the examiner's belief that the Appeal 2010-005532 Application 10/695,404 4 functional limitation is an inherent characteristic of the prior art. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). In the case before us, other than expressing concern with stretchable fabrics (col. 1, l. 12) and soft bindings 55, the material composition of Campbell’s garment is unknown. Thus, the degree of puncture-resistance is also unknown. The Examiner also appears to rely upon the “double layer construction” of Campbell as providing puncture resistance. However, even if it were reasonable to interpret multiple layers as making the layer puncture resistant, the claim calls for the fabric itself to be puncture resistant. Reply Br. 1-2. Thus, even assuming that the Examiner’s presumption that doubling the material enhances puncture resistance is correct, interpreting the bindings 55 and/or reinforced edges 57 as the claimed “layer” still says nothing about the fabric or material it is made from, and therefore, does not demonstrate that Campbell anticipates the claims. Campbell does not provide enough information to determine whether one of ordinary skill in the art would consider any portion of the fabric or material used therein as puncture resistant (claim 1) or, more puncture resistant than the material of any other portion (claim 5). The Examiner appears to include an alternative reasoning in the Answer that differs significantly from the reasoning discussed in the Final Rejection. The Examiner contends, apparently in the alternative, that Campbell’s Velcro® fasteners can be interpreted as the outer layer of material having greater puncture resistance. Ans. 9. First, it is unclear why the Examiner believes that Velcro® would be understood by one of ordinary skill in the art as a puncture-resistant fabric. Reply Br. 2-3. Second, the Examiner has not established how Campbell’s Velcro® portions 58a, 58b, Appeal 2010-005532 Application 10/695,404 5 59a, 59b are a material or fabric that makes up a lower region of each leg portion of Campbell’s pants extending upwardly from the lower end thereof. Eastbay, as applied by the Examiner, fails to cure the deficiencies noted above. DECISION The Examiner’s rejection of claims 1-8 are reversed. REVERSED mls