Ex Parte Wechsler

Patent Trial and Appeal Board

Apr 20, 2018

13756555 (P.T.A.B. Apr. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/756,555 02/01/2013
7590
Lawrence I. Wechsler
One W ooleys Lane
Great N eek, NY 11023
04/20/2018
FIRST NAMED INVENTOR
Lawrence I. Wechsler
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Wl000-55 8476
EXAMINER
HA YES, KRISTEN C
ART UNIT PAPER NUMBER
3647
MAIL DATE DELIVERY MODE
04/20/2018 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 LA WREN CE I. WECHSLER
Appeal2017-006929
Application 13/756,555
Technology Center 3600
Before STEFAN STAICOVICI, LEE L. STEPINA, and
FREDERICK C. LANEY, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Lawrence I. Wechsler ("Appellant") 1 appeals under 35 U.S.C. § 134(a)
from the Examiner's decision in the Non-Final Action (dated Jan. 29, 2016,
hereinafter "Non-Final Act.") rejecting claims 1, 2, and 5-14. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM-IN-PART.
1 Lawrence I. Wechsler is identified as the real party in interest in
Appellant's Appeal Brief (dated Oct. 11, 2016, hereinafter "Appeal Br."), at
page 2.
Appeal2017-006929
Application 13/756,555
INVENTION
Appellant's invention relates to "a leash handle accessory for
attachment to a leash for allowing hands-free tethered control of a pet by a
user." Spec. 1, 11. 9-10.
Claims 1, 2, and 5 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A leash handle, comprising:
structure defining a loop portion through which a hand of a user
is insertable, and which is dimensioned and configured such
that once the hand is inserted and reoriented, a wrist of the user
is retained captively within the loop portion such that a
controlled tether is maintained without requiring grasping by
fingers of the user.
REJECTIONS 2
I. The Examiner rejects claims 1 and 12 under 35 U.S.C. § 102(b) as
anticipated by Paglericcio (US 6,089,193, iss. July 18, 2000).
II. The Examiner rejects claims 1, 2, 5-11, and 14 under 35 U.S.C.
§ I02(b) as anticipated by McCullough et al. (US 2010/0199926 Al, pub.
Aug. 12, 2010, hereinafter "McCullough").
III. The Examiner rejects claim 13 under 35 U.S.C. § I03(a) as being
unpatentable over McCullough and Hetland (US 2006/0185618 Al, pub.
Aug. 24, 2006).
2 The Examiner's rejection of claims 1-14 under 35 U.S.C. § 112(b) or 35
U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite has been
withdrawn. Examiner's Answer (dated Jan. 17, 2017, hereinafter "Ans."), at
page 2. The Examiner has also withdrawn the rejection of claims 3 and 4
under 35 U.S.C. § 112(d) or 35 U.S.C. § 112 (pre-AIA), fourth paragraph, as
being of improper dependent form for failing to further limit the subject
matter of the claim upon which it depends. Id.
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Appeal2017-006929
Application 13/756,555
ANALYSIS
Rejection I
Claim 1
Independent claim 1 requires, inter alia, "structure defining a loop
portion ... dimensioned and configured such that once the hand is inserted
and reoriented, a wrist of the user is retained captively within the loop
portion." Appeal Br. AI-I, Claims App.
The Examiner finds that Paglericcio discloses a leash handle including
a loop portion 14, as called for by claim 1. Non-Final Act. 5; see also
Paglericcio, Fig. 2. According to the Examiner, the above-noted limitation
constitutes a functional limitation and "[i]f the prior art structure is capable
of performing the intended use, then it meets the claim." Ans. 2-3. Thus,
the Examiner concludes that because a user's hand is insertable through
Paglericcio' s loop 14 and "the hand [size] of a user could vary from user to
user," "[t]he loop portion of Paglericcio would be dimensioned and
configured in a way that could retain a wrist of a user, depending on the size
and shape of the wrist." Id. at 3.
Appellant argues that "the structural configuration of the hand grip
disclosed in Paglericcio prohibits reception of the wrist." Appeal Br. 14.
According to Appellant, "Paglericcio does not provide enabling disclosure
for ... a loop portion [that] is dimensioned to allow reception of a hand of a
user up to a wrist such that 'a wrist of the user is retained captively within
the loop portion."' Reply Brief ( dated Mar. 24, 2017).
Paglericcio specifically discloses that loop portion 14 is "adapted to fit
reasonably snugly over the thumb" of a user. Paglericcio, col. 3, 11. 1-5. In
other words, Paglericcio' s loop portion 14 is configured to "retain[]
captively" the thumb of a user. Although we appreciate that the Examiner's
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Appeal2017-006929
Application 13/756,555
position that "the hand [size] of a user could vary from user to user,"
nonetheless, as the wrist of a user is larger than his or her thumb, we do not
agree with the Examiner's finding that "a user's hand is insertable" through
loop portion 14. See Ans. 3. Merely because loop 14 of Paglericcio's hand
grip 10 has an opening does not necessarily mean that loop 14 is "configured
such that ... a wrist of the user is retained captively within the loop
portion."
In conclusion, for the foregoing reasons, we do not sustain the
rejection of claim 1 under 35 U.S.C. § 102(b) as anticipated by Paglericcio.
Claim 12
Appellant is correct in that claim 12 does not depend from
independent claim 1, but rather from independent claim 5. Appeal Br. 15;
see also Appeal Br. AI-4, Claims App. Accordingly, dependent claim 12
includes all the limitations of claim 5.
As the Examiner has not made any findings with respect to the
limitations of claim 5, when discussing the disclosure of Paglericcio, the
Examiner's position that Paglericcio's anticipates claim 12 is not supported
by a preponderance of the evidence. Therefore, we also do not sustain the
anticipation rejection of claim 12.
Re} ection II
Claims 1 and 2
The Examiner finds that McCullough discloses a leash handle
including a loop 9, as recited by each of independent claims 1 and 2, and,
which "is capable of performing the functional language of the claims."
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Appeal2017-006929
Application 13/756,555
Non-Final Act. 5---6 (citing McCullough, Figs. 1, 2); Ans. 3. More
specifically, the Examiner finds:
McCullough discloses structure defining a loop portion through
which a user's hand is insertable, as shown in Figure 2 of
McCullough. The loop portion of McCullough would be
dimensioned and configured in a way that could retain a wrist
of a user, depending on the size and shape of the wrist.
McCullough discloses the loop having a length and width, and
the length being sufficiently sized to allow the passage of a
width of a hand, as seen in Figure 2. The loop of McCullough
meets the broad limitations of the dimensions of the length and
width defined by the hand of a user, as the hand of a user could
vary from user to user, depending on different factors such as
the gender of the user, or size of the user's hand.
Ans. 3--4.
Appellant argues that McCullough
[I]s devoid of disclosure even remotely suggesting that a wrist
is captively retained in a properly dimensioned and configured
loop portion such that use of fingers is not required. In fact, the
release of fingers gripping the handle 3 is never mentioned in
the disclosure, and all figures in the McCullough et al. reference
show the hand holding the grip.
Appeal Br. 16.
McCullough discloses a leash device including hook assembly 2,
stretchable main leash strand 1, handle 3, and arm pad 4, wherein a loop
portion is formed between arm pad 4 and handle 3. See McCullough, Figs.
1-3. McCullough further discloses that a user can either grip handle 3 by
extending his or her hand though the loop portion or position arm pad 4 on
his or her arm 17 near the triceps region by stretching the loop portion and
gripping handle 3. See id.
Appellant is correct in that "the release of fingers gripping the handle
3 is never mentioned in the [McCullough's] disclosure, and all figures in the
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Appeal2017-006929
Application 13/756,555
McCullough ... reference show the hand [15] holding the grip [3]." Appeal
Br. 16. As such, although we appreciate the Examiner's position that "the
hand [size] of a user could vary from user to user" (see Ans. 4 ), nonetheless,
because McCullough's disclosure is limited to a user that grips handle 3, we
agree with Appellant that it is not clear how a user's wrist is "retained
captively within ... [McCullough's] loop portion such that a controlled
tether is maintained without requiring grasping by fingers of the user."
Appeal Br. 17. In other words, the Examiner does not adequately explain
how McCullough's device can maintain "a controlled tether ... without
requiring grasping by fingers of the user" when McCullough specifically
discloses a user's hand 15 gripping handle 3. See McCullough, Figs. 2, 3.
In conclusion, for the foregoing reasons, we do not sustain the
rejection of claims 1 and 2 under 35 U.S.C. § 102(b) as anticipated by
McCullough.
Claims 5-11 and 14
With respect to the rejection of independent claim 5, Appellant's
argument amounts to a recitation of the claim elements and a "naked
assertion" that the elements are not found in the prior art. Appeal Br. 17.
Such statements do not constitute a separate argument for patentability. See
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011); see also 37 C.F.R.
§ 4I.37(c)(l)(iv).
Furthermore, Appellant argues that "the disclosure of the McCullough
... reference is limited to a leash having a loop large enough to
accommodate an entire bent arm of a user therethrough" and, thus, cannot
retain a user's wrist therein. Reply Br. 7-8; see also Ans. 3.
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Application 13/756,555
We are not persuaded by Appellant's argument because limitations
not appearing in the claims cannot be relied upon for patentability. In re
Self, 671 F.2d 1344, 1348 (CCPA 1982). Here, claim 5 requires that the
claimed "hands-free structural portion ... accommodate a width of a wrist
of the user," and not "retain a wrist of a user." 3 See Appeal Br. AI-2,
Claims App (emphasis added). McCullough's Figure 2 shows a loop portion
defined by arm pad 4 and handle 3 that accommodates ( makes room for) the
width of a user's wrist.
Accordingly, for the foregoing reasons, we sustain the anticipation
rejection of claim 5, and its dependent claims 6-11 and 14.
Rejection III
Appellant relies on the same arguments discussed supra in the
rejection of claim 5. See Appeal Br. 18.
Therefore, for the same reasons discussed above, we also sustain the
rejection under 35 U.S.C. § 103(a) of claim 13 as unpatentable over
McCullough and Hetland.
SUMMARY
The Examiner decision to reject claims 1 and 12 under 35 U.S.C.
§ 102(b) as anticipated by Paglericcio is reversed.
3 An ordinary and customary meaning of the term "accommodate" is "to
make room for" (http://www.merriam-webster.com/dictionary/accomodate
(last accessed April 5, 2018)).
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Application 13/756,555
The Examiner decision to reject claims 1, 2, 5-11, and 14 under 35
U.S.C. § 102(b) as anticipated by McCullough is affirmed as to claims 5-11
and 14, and reversed as to claims 1 and 2.
The Examiner decision to reject claim 13 under 35 U.S.C. § 103(a) as
unpatentable over McCullough and Hetland is affirmed.
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-IN-PART
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