Ex Parte Parzick

Patent Trial and Appeal Board

Aug 28, 2017

13540228 (P.T.A.B. Aug. 28, 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.
13/540,228 07/02/2012 Charles Parzick FLU002US 3556
57580 7590 08/30/2017
Pnnveraent T aw Crroim T T P
EXAMINER
601 Sixteenth Street, Suite C-391
Golden, CO 80401
CHEN, KUANGYUE
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
08/30/2017 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):
patents @ convergentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES PARZICK
Appeal 2016-0037241
Application 13/540,22 82
Technology Center 3700
Before HUBERT C. LORIN, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
SCHOPFER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 1—12. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
BACKGROUND
According to the Specification, “[t]he present invention relates
generally to a portable device for heating the ends of plastic tubing to
1 Our decision references the Appeal Brief (“Br.,” filed Sept. 8, 2015), the
Examiner’s Answer (“Ans.,” mailed Jan. 12, 2016), and the Final Office
Action (“Final Act.,” mailed Apr. 3, 2015).
2 According to Appellant, the real party in interest is Charles Parzick. Br. 2.
Appeal 2016-003724
Application 13/540,228
temporarily enlarge the diameter and increase the flexibility of the tubing to
more easily connect with various fittings.” Spec. 12.
CLAIMS
Claims 1 and 12 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A wearable, portable device for heating plastic or
polymer tubing comprising:
a power source;
a thermostatically-controlled heating chamber connected
to the power source, wherein the heating chamber comprises an
opening adequate to accommodate plastic or polymer tubing of
a diameter of less than 3 inches, and wherein the heating
chamber holds and heats fluid to a working temperature
sufficient to reshape the plastic or polymer tubing; and
a carrier to allow a human subject to carry the power
source and the heating chamber.
Br. 26.
REJECTIONS
1. The Examiner rejects claims 1—12 under 35 U.S.C. § 112, first paragraph
as failing to comply with the written description requirement.
2. The Examiner rejects claims 1, 2, 5, 7, 8, 10, and 11 under 35 U.S.C.
§ 102(b) as anticipated by Shippert.3
3. The Examiner rejects claims 1, 2, and 5—11 under 35 U.S.C. § 102(b) as
anticipated by Jelesko.4
3 Shippert, US 2005/0203450 Al, pub. Sept. 15, 2005.
4 Jelesko, US 3,957,032, iss. May 18, 1976.
2
Appeal 2016-003724
Application 13/540,228
4. The Examiner rejects claims 3 and 4 under 35 U.S.C. § 103(a) as
unpatentable over Shippert in view of Bouchard.5
5. The Examiner rejects claims 3 and 4 under 35 U.S.C. § 103(a) as
unpatentable over Jelesko in view of Bouchard.
6. The Examiner rejects claim 12 under 35 U.S.C. § 103(a) as unpatentable
over Shippert in view of Palena.6
7. The Examiner rejects claim 12 under 35 U.S.C. § 103(a) as unpatentable
over Jelesko in view of Palena.
DISCUSSION
Written Description
The Examiner finds that the language “to allow a human subject to
carry” found in both independent claims 1 and 12 lacks written description
support because such is not described in the Specification. Final Act. 3. We
are persuaded of error by Appellant’s arguments. See Appeal Br. 12—13.
The Specification discloses that the device may be attached to a belt or “may
be carried in a tote gab or backpack.” See Spec. Fig. 1; 117. This
statement, along with other disclosure in the Specification, conveys with
reasonable clarity to those skilled in the art that Appellant was in possession
of a device that may be carried by a human subject as required by the
independent claims. See, e.g., Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563-64 (Fed. Cir. 1991). Accordingly, we do not sustain the rejection
under 35 U.S.C. § 112, first paragraph.
5 Bouchard, US 2008/0034568 Al, pub. Feb. 14, 2008.
6 Palena et al., US 2008/0251063 Al, pub. Oct. 16, 2008.
3
Appeal 2016-003724
Application 13/540,228
Anticipation and Obviousness
We are persuaded by Appellant’s argument that the Examiner does
not sufficiently establish that the prior art shows or suggests a device as
claimed. In particular, we agree with Appellant that the term “wearable,”
recited in the preambles of independent claims 1 and 12, “should be
considered to be a limitation of the claims.” Br. 15. This term, when
viewed in the light of the Specification (see e.g., Spec. 117, Fig. 1) and
when read in the context of the entire claim, limits the structure of the device
by, for example, providing constraints on its size and shape. And, on the
record before us, the Examiner does not adequately support a finding that the
prior art shows or suggests a “wearable” device as required by the claims.
(See Final Act. 3—12.) Accordingly, we do not sustain the rejections of
claims 1—12 under 35 U.S.C. §§ 102 and 103.
CONCLUSION
We REVERSE the rejections of claims 1—12 for the reasons stated
herein.
REVERSED
4