Ex Parte Stinson et al

Patent Trial and Appeal BoardSep 30, 2014

12586663 (P.T.A.B. Sep. 30, 2014)

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. 12/586,663 09/25/2009 Brenda Stinson Silver Needle Cont 4498 26860 7590 10/01/2014 LAW OFFICE OF DUNCAN PALMATIER 124 North Howard Street MOSCOW, ID 83843 EXAMINER HOEY, ALISSA L ART UNIT PAPER NUMBER 3765 MAIL DATE DELIVERY MODE 10/01/2014 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 BRENDA L. STINSON and LARRY W. STINSON ____________ Appeal 2013-008076 Application 12/586,663 Technology Center 3700 ____________ Before JOHN C. KERINS, MICHAEL L. HOELTER, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Brenda L. Stinson and Larry W. Stinson (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 7, 8, 10, 11, 16, 18, and 20. Claims 12, 13, and 19 are withdrawn. Claims 1–6, 9, 14, 15, and 17 are cancelled. An oral hearing was held on September 23, 2014. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2013-008076 Application 12/586,663 2 The Grounds of Rejection are set forth below. (1) Claims 7, 8, 10, 11, 16, 18, and 20 stand rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over Stinson (US 7,594,281 B1; iss. Sept. 29, 2009). (2) Claim 7 stands rejected under 35 U.S.C. § 102(b) as being anticipated by Ekman (US 4,731,882; iss. Mar. 22 1988). (3) Claims 7 and 16 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Ferguson (US 6,101,631; iss. Aug. 15, 2000). (4) Claim 10 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Ekman and Fewtrell (US 5,960,475; iss. Oct. 5, 1999). (5) Claims 7 and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ekman and Aldridge (US 5,860,163; iss. Jan. 19, 1999). (6) Claim 8 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Ekman and Goldsby (US 5,182,812; iss. Feb. 2, 1993). CLAIMED SUBJECT MATTER The claimed subject matter “relates to a suit designed to protect the wearer from explosions and designed to allow remote retrieval of the wearer.” Spec. 1. Claim 7 is representative of the claimed subject matter and recites: 7. An explosion and fire safety suit with integral extraction harness comprising: a multi-layer coverall formed of a fire-resistant exterior material and an interior material specifically adapted to insulate from very high heat, said coverall having a torso, collar, shoulders, arms, waist, legs, thighs, an inner side on an inward- facing side of the interior material, an outer side on an outward- Appeal 2013-008076 Application 12/586,663 3 facing side of the exterior material, and front and back sides, and a harness disposed on the inner side and integral with the coverall, said harness comprising thigh bands at each thigh, a waistband at the waist, shoulder straps extending from the thigh bands and over the shoulders to the waistband, and a harness connection point attached to the harness and extending out of the suit. ANALYSIS (1) Claims 7, 8, 10, 11, 16, 18, and 20 — Nonstatutory obviousness-type double patenting The Examiner rejected claims 7, 8, 10, 11, 16, 18, and 20 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1–3, 7, and 8 of Stinson, finding that “[a]lthough the conflicting claims are not identical, they are not patentably distinct from each other because they claim a fire-resistant material garment with an integral harness.” Ans. 6–7. The Examiner explains that “[a] timely filed terminal disclaimer . . . may be used to overcome . . . a nonstatutory double patenting ground.” Id. at 6. Appellants point out that a terminal disclaimer was filed on June 1, 2013, however, we note that the terminal disclaimer was disapproved by the US Patent & Trademark Office. See June 3, 2013 Internal Document DISQ (Terminal Disclaimer review decision). Therefore, we summarily affirm the Examiner’s rejection. (2) Claim 7 — Anticipated by Ekman Claim 7 requires that the multi-layered coverall is formed of a fire resistant exterior material. Ekman discloses “a garment that is connectable to a safety line or the like” wherein the “material in the waistcoat is suitably Appeal 2013-008076 Application 12/586,663 4 synthetic and inelastic, with great tensional and tear strength.” Ekman 1:5– 6, 2:7–9. Notwithstanding Ekman’s failure to expressly disclose that the material is fire resistant, the Examiner finds that “[a] synthetic and inelastic material with a great tensional and tear strength and a zipper fastener would provide some degree of fire resistance, since all materials resist burning to a point and that degree of resistance makes the material fire resistant.” Ans. 13. Appellants correctly point out that “[t]he Ekman safety garment invention is not related to protection from fire or explosions” and argue that the Examiner has made an “unsupported factual assertion.” Appeal Br. 13. Appellants refer to Exhibit 11 (“the Guide”) to show that “the terms ‘fire resistance’ and ‘heat insulation’ . . . have meanings understood by person of ordinary skill in the art” and that “[s]uch persons would not regard any material as having fire resistance or heat insulation properties, but understand that these expressions refer to special material characteristics.” Id. at 13–14. Specifically, “[a]t page 1 of the Guide, a distinction is drawn between materials that are flame retardant and flame resistant (emphasis added): ‘Unlike flame-retardant treated (FRT) materials, NOMEX® brand fibers are inherently flame resistant (FR): the flame resistance is an inherent property of the polymer chemistry.’” Id. at 14. Moreover, Appellants refer to Exhibit 22 (“Horrocks”), which describes “the inherent flammability of various textiles.” Id. at 15 (emphasis added). Finally, 1 July 2001 “Technical Guide for Nomex® Brand Fiber,” published by E.I. du Pont de Nemours and Company. 2 Chapter 4, “Textiles,” from the book Fire retardant materials, edited by A.R. Horrocks, University of Bolton, U.K., and D. Price, University of Salford, U.K., published by E.I. du Pont de Nemours and company 2001. Appeal 2013-008076 Application 12/586,663 5 Appellants rely upon Exhibit 33 (“the Declaration”) which states, inter alia, that persons of ordinary skill in the art would “understand that the term ‘fire- resistant’ applies to materials whose ‘inherent’ properties resist flames.” Id. at 17. We are persuaded by Appellants that the Examiner’s assertion, namely, that “all materials” are fire-resistant, lacks factual support. We are further persuaded by Appellant’s supported assertion that the claim term “fire-resistant” would be understood by a person of ordinary skill in the art to be a material whose inherent properties resist flames. Thus, we agree with Appellants that Ekman does not disclose that the multi-layered coverall is formed of a fire resistant exterior material, as required by claim 7. Claim 7 also requires that the multi-layered coverall is formed of an interior material specifically adapted to insulate from very high heat. The Examiner finds that “[t]he interior layer of Ekman would provide insulation from very high heat as broadly claimed” and that “[i]t has been held that the recitation that an element is ‘adapted to’ perform a function is not a positive limitation but only requires the ability to so perform.” Ans. 14, citing In re Hutchinson, 69 USPQ 138. Appellants again argue that the Examiner’s finding lacks factual support and point out that “more recent cases have held that the ‘adapted to’ claim phrase . . . does connote a positive limitation.” Appeal Br. 8. We note that In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.1997) states that "[a] patent applicant is free to recite features of an apparatus either structurally or functionally" (citing In re Swinehart, 439 F.2d 210, 212 (CCPA 1971). However, it has also long been settled that claims must be distinguished from the prior art in terms of structure rather 3 Sept. 25, 2009 Declaration of Ms. Stinson. Appeal 2013-008076 Application 12/586,663 6 than function. Schreiber, 128 F 3d at 1477. Here, we are persuaded by Appellants that the Examiner’s assertion lacks factual support and, therefore, we agree with Appellants that Ekman does not disclose a material construction specifically adapted to insulate from very high heat (i.e., resist burning), as required by claim 7. Claim 7 further requires “a harness . . . integral with the coverall.” Ekman teaches that harness 14 is inserted in channels a–f formed by seams 4, 5, 6, 7, and 8 between the back and front layers of material of the garment. Ekman 2:9–34. The Examiner finds that “Ekman teaches the harness (14) being integral with the coverall (30)” because “[t]he term integral does not require permanent or un-movable attachments” but only that “the harness [is] located in the channels of the coverall to form a unit.” Ans. 15. Appellants disagree. Appellants argue that “[t]he word ‘integral’ distinguishes the present invention from Ekman, because it indicates that the coverall and harness are formed as a unit with one another, as opposed to being separate parts that are free to move with respect to each other” and contend that “[t]his understanding is consistent with the plain meaning of the word :integral” [sic], citing Merriam-Webster’s Collegiate Dictionary (10th ed.): “‘integral’(‘formed as a unit with another part’)”. Appeal Br. 20. We are persuaded by Appellants that “integral” means the harness is formed as a unit with the coverall, for example, by sewing the harness into an inner side of the coverall (see Spec. 16; Fig. 8), rather than being a separate member movable within channels in the coverall. Therefore, we agree with Appellants that Ekman does not disclose a harness integral with the coverall, as required by claim 7. Appeal 2013-008076 Application 12/586,663 7 Accordingly, for the reasons stated above, we reverse the Examiner’s rejection of claim 7 as anticipated by Ekman. (3) Claims 7 and 16 — Anticipated by Ferguson Claim 7 requires that the multi-layered coverall is formed of a fire resistant exterior material and an interior material specifically adapted to insulate from very high heat, and claim 16 further requires a lanyard to be constructed of a fire resistant material. Ferguson discloses “a full body harness that is built into an article of camouflage clothing” with “passageways 53 [] dimensioned to slidably receive the full body harness member 20.” Ferguson 1: 6–8, 4:1–6. Notwithstanding Ferguson’s failure to expressly disclose that the camouflage clothing material is fire or heat resistant, the Examiner again finds that “all fabrics are resistant to fire and high heat to a point.” Ans. 8. Regarding disclosure of a harness integral with the coverall, the Examiner finds “[t]he mere fact that the harness [disclosed in Ferguson] can move freely within the channels or become removable from the coverall does not make the coverall and harness non- integral as a unit when attached together.” Id. at 16. For the same reasons as stated above with respect to Ekman, we agree with Appellants that the Examiner’s assertion that all materials are fire and heat resistant lacks factual support and that the term “integral” requires the harness and coverall to be formed as a unit with one another, as opposed to being separate parts that are free to move with respect to each other. Therefore, we reverse the Examiner’s rejection of claims 7 and 16 as anticipated by Ferguson. Appeal 2013-008076 Application 12/586,663 8 (4) Claim 10 — Unpatentable over Ekman and Fewtrell Claim 10 depends from claim 7. Appellants argue that “[i]n light of the evidence submitted by [Appellants] to traverse the Examiner’s factual assertions, and the arguments set forth above in connection with the § 102 rejection based on Ekman, [Appellants] respectfully submits that Ekman does not stand as a primary reference and, therefore, the obviousness rejection is improper.” Appeal Br. 22–23. For the reasons set forth above, we agree with Appellants. Therefore, we reverse the Examiner’s rejection of claim 10 as unpatentable in view of Ekman and Fewtrell. (5) Claims 7 and 18 – Unpatentable over Ekman and Aldridge Appellants argue that “Ekman cannot stand as the primary reference, because it fails to disclose an integral harness.” Ans. 25. For the reasons set forth above, we agree with Appellants. Therefore, we reverse the Examiner’s rejection of claims 7 and 18 as unpatentable in view of Ekman and Aldridge. (6) Claim 8 — Unpatentable over Ekman and Goldsby Appellants argue that in light of the evidence submitted by [Appellants] to traverse the Examiner’s unsupported factual assertions concerning the “fire resistance” and “insulation” properties of any material, and the arguments set forth above in connection with the § 102 rejection based on Ekman, . . . Ekman does not stand as a primary reference and, therefore, the obviousness rejection is improper. Appeal 2013-008076 Application 12/586,663 9 Appeal Br. 27. For the reasons set forth above, we agree. Therefore, we reverse the Examiner’s rejection of claim 8 as unpatentable in view of Ekman and Goldsby. DECISION (1) We affirm the rejection of claims 7, 8, 10, 11, 16, 18, and 20 on the ground of nonstatutory obviousness-type double patenting over Stinson. (2) We reverse the rejection of claim 7 under 35 U.S.C. § 102(b) as being anticipated by Ekman. (3) We reverse the rejection of claims 7 and 16 under 35 U.S.C. § 102(b) as being anticipated by Ferguson. (4) We reverse the rejection of claim 10 under 35 U.S.C. § 103(a) as being unpatentable over Ekman and Fewtrell. (5) We reverse the rejection of claims 7 and 18 under 35 U.S.C. § 103(a) as being unpatentable over Ekman and Aldridge. (6) We reverse the rejection of claim 8 under 35 U.S.C. § 103(a) as being unpatentable over Ekman and Goldsby. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED tkl