Ex Parte Zucchelli et al

Patent Trial and Appeal Board

Aug 14, 2017

13270620 (P.T.A.B. Aug. 14, 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.
13/270,620 10/11/2011 JOANNE DREW ZUCCHELLI NEKDOODLE-OOl-US 5975
62008 7590 08/16/2017
MAIER & MAIER, PLLC
345 South Patrick Street
ALEXANDRIA, VA 22314
EXAMINER
POLAY, ANDREW
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
08/16/2017 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):
patent @ maierandmaier. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOANNE DREW ZUCCHELLI and DEBRA EHRLICH MAY
Appeal 2016-005976
Application 13/270,620
Technology Center 3600
Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
SCOTT B. HOWARD, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
rejection of claims 1, 2, and 5—12, which are all the claims pending in this
application.1 Claims 3 and 4 are cancelled. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 We refer herein to the Final Office Action, mailed April 24, 2015; the
Appeal Brief, filed on October 26, 2015; and the Examiner’s Answer mailed
March 14, 2016. No Reply Brief was filed.
Appeal 2016-005976
Application 13/270,620
STATEMENT OF THE CASE
Invention
The disclosed and claimed invention on appeal “generally relates to a
water floating support device. More particularly, the present invention
relates to a water floating device designed to support the user's head or neck
for recreational or exercise purposes.” (Spec. |2).
Claim 1 is representative, and is reproduced below:
1. A floating support device comprising:
a unitary piece body having a solid core and made of a floating
and waterproof material;
wherein the unitary piece body has a U-shape including a curved
central section having a first leg on a first end and a second leg
on a second end, and a hole formed between the first leg and the
second leg and configured to receive the neck of the user;
wherein the first leg and the second leg project from the curved
central section;
wherein the first leg and the second leg angle inwardly to one
another, and
wherein the unitary piece body has a flat top face, a flat bottom
face, and at least one wall disposed vertically between the flat
top face and flat bottom face forming a substantially rectangular
cross section, wherein the curved central section is operable to
surround the neck of a user such that a head of the user rests on
the flat top face a distance above a surface of the water, [L] and
configured to allow the user to place a front portion of their
torso above the surface of the water.
(Bracketed matter and emphasis added with respect to contested limitation
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Application 13/270,620
Rejections 2
A. Claim 1, 2, 6, and 10 are rejected under pre-AIA 35 U.S.C. § 102(b),
as being anticipated by Lariviere (US 2002/0094735 Al; July 18,
2002).
B. Claim 7 is rejected under pre-AIA 35 U.S.C. § 103(a), as being
obvious over the combined teachings and suggestions of Lariviere in
view of Hoffmann (US 6,089,936; July 18, 2000).
C. Claims 8 and 9 are rejected under pre-AIA 35 U.S.C. § 103(a), as
being obvious over the combined teachings and suggestions of
Lariviere in view of Cynamon (US 2001/0024916 Al; Sept. 27,
2001).
D. Claims 5, 11, and 12 are rejected under pre-AIA 35 U.S.C. § 103(a),
as being obvious over the combined teachings and suggestions of
Lariviere in view of Ettl (US 6,042,440; Mar. 28, 2000)
Grouping of Claims
Based upon Appellants’ arguments, we decide the appeal of § 102
rejection A of claims 1, 2, 6, and 10 on the basis of representative
independent claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). We address the
remaining §103 rejections B, C, and D, infra. To the extent Appellants have
not advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
2 The Examiner withdrew the rejection under 35 U.S.C. §112, first
paragraph. (Ans. 2).
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Appeal 2016-005976
Application 13/270,620
ANALYSIS
Rejection A of Representative Independent Claim 1 under §102
Issue: Under § 102(b), did the Examiner err in finding the cited
Lariviere reference expressly or inherently discloses contested limitation L:
wherein the curved central section is operable to
surround the neck of a user such that a head of the user rests on
the flat top face a distance above a surface of the water, [L] and
configured to allow the user to place a front portion of their
torso above the surface of the water[,]
within the meaning of representative claim 1? 3
Regarding rejection A under § 102, we have considered all of
Appellants’ arguments and any evidence presented. We disagree with
Appellants’ arguments, and we adopt as our own: (1) the findings and legal
conclusions set forth by the Examiner in the action from which this appeal is
taken (Final Act. 4—10), and (2) the findings, legal conclusions, and
explanations set forth in the Answer (3—9) in response to Appellants’
arguments. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Regarding representative claim 1, Appellants contend, inter alia:
Notably, Lariviere does not teach or suggest a floating
support device of the claimed configuration which “is operable
3 We give the contested claim limitation the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997). Cf. Spec. 138: “It should be understood, of
course, that the foregoing relates to exemplary embodiments of the invention
and that modifications may be made without departing from the spirit and
scope of the invention as set forth in the following claims” (emphasis
added).
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Appeal 2016-005976
Application 13/270,620
to surround the neck of a user such that a head of the user rests
on the flat top face a distance above a surface of the water, and
configured to allow the user to place a front portion of their
torso above the surface of the water”, as recited by the present
invention.[(See Spec. 130)] To the contrary, Lariviere is
explicitly designed “'wherein said second means 9 are
positioned underneath said first means 3 to position a center of
gravity of the resulting combination ‘wearer—personal
floatation device’ substantially under the water level and
prevent overturning of the same.” [(In support, Appellants cite
by footnote to Lariviere at page 2, paragraph 0042 (Emphasis
Added))”).]
(App. Br. 4) (emphasis omitted).
The Examiner responds in the Answer (4) by reproducing paragraph
20 of the Final Rejection (9—10):
“Examiner agrees that Lariviere does not explicitly
disclose the limitation. However, Lariviere inherently
discloses the limitation because a user is capable of
“maintaining a torso of the user at least partially above the
surface of the water” when using the central section of
Lariviere. (See MPEP 2114.) Evidence that the functional
limitation is capable of being fulfilled is found in Fig. 4 of
similar device by Deslauriers (US 6537119 B2) where the
center of gravity is substantially under the water and a portion
of the torso is above the water. A “torso of the user at least
partially above the surface of the water” is a capability of a user
while using Lariviere for a small portion of the torso by simply
leaning back and by a larger portion of the torso if a user
operates the device of Lariviere while kicking his or her legs.”
(emphasis added).
We note that “after the PTO establishes a prima facie case of
anticipation based on inherency, the burden shifts to appellant to ‘prove that
the subject matter shown to be in the prior art does not possess the
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Appeal 2016-005976
Application 13/270,620
characteristic relied on.”’ In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986)
(quoting In re Swinehart, 439 F.2d 210, 212-13, (CCPA 1971)).
Here, Appellants have provided no evidence to prove that Lariviere’s
flotation device (bouyant member 5, Fig. 2) does not possess the
characteristic relied upon regarding the Examiner’s finding of inherency.
(Ans. 4). Moreover, we find a preponderance of the evidence supports the
Examiner’s findings, because Figures 1, 2, and 8 of Lariviere disclose a
flotation structure (5) that that we find falls under the scope of claim 1,
under a broad but reasonable interpretation. See n.3, supra. Further
buttressing the Examiner’s finding of inherent anticipation, and regarding
the contested “intended use” functional limitation L, the Examiner provides
an extrinsic reference (Deslauriers, US 6,537,119 B2; Mar. 25, 2003) to
show that a characteristic not expressly disclosed in the Lariviere reference
is inherent, as permitted under the guidance of MPEP § 2131.01(C).
After reviewing the evidence, we agree with the Examiner (Ans. 5)
that Deslauriers’ similar device as depicted in Figure 4 evidences that the
user in Lariviere could also lean back and expose at least some portion of
the upper chest part of the torso, for a least some time period. We note
Appellants’ contested limitation L includes no temporal restrictions.
We further note the claimed “user” is outside the scope of the recited
“floating support device” apparatus. (Claim 1). “[Apparatus claims cover
what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch &
Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990). Moreover, a human
being cannot constitute a means. Default Proof Credit Card System, Inc. v.
Home Depot U.S.A., Inc., 412 F.3d 1291, 1300 (Fed. Cir. 2005) (citing In re
Prater, 415 F.2d 1393, 1398 (CCPA 1969)).
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Appeal 2016-005976
Application 13/270,620
We additionally note Appellants appear to admit the user in Lariviere
could lean back and expose at least some portion the upper chest part of the
torso, for a least some time period:
the device shown in Fig. 4 of U.S. Pat. No. 6,537,119 to
Deslauriers, on which the Office relies to support its argument,
does not teach or suggest this configuration. Rather, as noted in
the Office Action, a user would be forced to kick his or [her]
legs in an effort to get even a small portion of their torso
slightly above a surface of the water for a limited time.
(App. Br. 5) (emphasis added).
We conclude contested limitation L does not preclude a user from
“kick[ing] his or her legs in an effort to get even a small portion of their
torso slightly above a surface of the water for a limited time.” (Id.). 4 Claim
1 merely requires that a “curved central section. . . is configured to allow
the user to place a front portion of their torso above the surface of the
water.” (Claim 1, emphasis added).
For at least the aforementioned reasons, and based upon a
preponderance of the evidence, Appellants have not persuaded us the
Examiner erred. Accordingly, we sustain rejection A of representative
independent claim 1, and rejection A of associated dependent claims 2, 6,
and 10 (not argued separately), which fall with claim 1. See Grouping of
Claims, supra.
4 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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Appeal 2016-005976
Application 13/270,620
Remaining Dependent Claims Rejected under §103
The remaining dependent claims, rejected under §103 rejections B, C,
and D, are not separately and substantively argued. See 37 C.F.R.
§ 41.37(c)(l)(iv). Appellants merely urge that “none of Hoffman, Cynamon
or Ettl cures the deficiencies of Lariviere.” (App. Br. 6). Because we find no
deficiencies with Lariviere, for the reasons discussed above regarding
rejection A of claim 1, we also sustain the Examiner’s rejections B, C, and D
of the remaining dependent claims on appeal for similar reasons.
DECISION
We affirm the Examiner’s decision rejecting claims 1, 2, 6, and 10
under pre-AIA 35 U.S.C. § 102(b).
We affirm the Examiner’s decision rejecting claims 5, 7—9, 11, and 12
under pre-AIA 35 U.S.C. § 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37 C.F.R. § 41.50(f).
AFFIRMED
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