Gary Rayford. Spruill et al.

Patent Trials and Appeals Board

Nov 25, 2019

14065680 - (D) (P.T.A.B. Nov. 25, 2019)

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.
14/065,680 10/29/2013 Gary Rayford Spruill OKC03812 1068
33900 7590 11/25/2019
Hall Estill Attorneys at Law
(MDMMY)
100 NORTH BROADWAY
SUITE 2900
OKLAHOMA CITY, OK 73102-8820
EXAMINER
TRIEU, TIMOTHY K
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
11/25/2019 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):
USPTO@dockettrak.com
danderson@hallestill.com
okcipdocketing@hallestill.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY RAYFORD SPRUILL and DOUGLAS VERNE THOM
Appeal 2019-002802
Application 14/065,680
Technology Center 3700
Before JENNIFER D. BAHR, DANIEL S. SONG, and
WILLIAM A. CAPP, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 34–53. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as the named
inventors. Appeal Br. 1.
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Application 14/065,680

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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to “compression fit pants/shorts, and
more particularly to compression fit pants or shorts with gussets, cut-
resistant fabric, and protective pads.” Spec. 1. Claims 34 and 48 are
independent. Appeal Br. 31–32, 35–36 (Claims App.). Claim 34,
reproduced below, is illustrative of the claimed subject matter.
34. A compression fit garment configured to be worn over the
lower torso of a human, comprising:
a waistband configured to encircle, when worn by the
human, a waist portion of the lower torso of the human;
a first gusset coupled to the waistband and configured
with a first shape adapted to cover, when worn by the human, a
first muscle group of the lower torso of the human, the first
gusset comprising a stretchable compression fabric having a
first elasticity selected to apply a first compression fit to the
first muscle group to isolate the first muscle group;
a second gusset coupled to the first gusset and configured
with a different, second shape adapted to cover, when worn by
the human, a different, second muscle group of the lower torso
of the human, the second gusset comprising a stretchable
compression fabric having a different, second elasticity selected
to apply a different, second compression fit to the second
muscle group to isolate the second muscle group; and
a portion of cut-resistant fabric attached to and covering a
first portion of an exterior surface of a selected one of the first
gusset or the second gusset so that a remaining second portion
of the exterior surface of the selected one of the first gusset or
the second gusset is not covered by the portion of cut-resistant
fabric, the cut-resistant fabric formed of a different material
than the selected one of the first gusset or the second gusset.
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Application 14/065,680

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EVIDENCE
The prior art relied upon by the Examiner is:
Brown US 8,214,926 B2 July 10, 2012
Davis
Nilforushan
Duffy
Berner
Sims
Wyner
US 2005/0229282 A1
US 2008/0040831 A1
US 2009/0025115 A1
US 2010/0024101 A1
US 2010/0024105 A1
US 2013/0061377 A1
Oct. 20, 2005
Feb. 21, 2008
Jan. 29, 2009
Feb. 4, 2010
Feb. 4, 2010
Mar. 14, 2013

REJECTIONS
I. Claims 34–53 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
II. Claims 34–38, 40, 41, 45, 46, 48, and 51–53 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Duffy and Davis.
III. Claim 39 stands rejected under 35 U.S.C. § 103(a) as being unpatentable
over Duffy, Davis, and Sims.
IV. Claims 42–44 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Duffy, Davis, and Brown.
V. Claims 47 and 49 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Duffy, Davis, Nilforushan, and Wyner.
VI. Claim 50 stands rejected under 35 U.S.C. § 103(a) as being unpatentable
over Duffy, Davis, and Berner.

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OPINION
Rejection I—Written Description
The basis of the Examiner’s rejection for failure to comply with the
written description requirement is that “[c]laims 47 and 49, recite ‘… poly-
paraphenylene terephthalamide…’.” Final Act. 3. Although the Examiner
includes claims 34–53 in this rejection, the Examiner does not set forth any
reasons why claims 34–46, 48, and 50–53, which do not recite “poly-
paraphenylene terephthalamide,” fail to comply with the written description
requirement. Thus, we do not sustain the rejection of claims 34–46, 48, and
50–53 under 35 U.S.C. § 112, first paragraph.
With respect to claims 47 and 49, Appellant submits that “[t]he
originally filed written description identified ‘Kevlar’ as a suitable cut-
resistant fabric that could be used in some embodiments.” Appeal Br. 11.
Appellant, noting that it is improper to use a trademark to identify goods
themselves, amended both the Specification and claims 47 and 49 to identify
the polymer associated with the trademark Kevlar® by its generic name
(“poly-paraphenylene terephthalamide”), “as would be recognized by the
skilled artisan.” Id. at 11–12. In support of the position that those skilled in
the art would associate the trademark Kevlar® with the polymer poly-
paraphenylene terephthalamide, Appellant cites Meier (US 2015/0272256
A1, published October 1, 2015). Id. at 12; see Meier, Abstract (disclosing a
material including “poly-paraphenylene terephthalamide (i.e., Kevlar®)”);
¶ 16 (disclosing same).
In response, the Examiner cites common dictionaries to refute
Appellant’s position regarding Kevlar®. Ans. 3 (stating that “Kevlar is not
the same as ‘poly-paraphenylene terephthalamide’”).
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The fundamental factual inquiry for ascertaining compliance with the
written description requirement is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date. See Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). Although Appellant correctly notes that a trademark is used to
identify the source of goods, rather than the goods themselves, we are
persuaded that persons of ordinary skill in the art associate Kevlar® with the
generic name poly-paraphenylene terephthalamide of the polymer marketed
under that trademark. Thus, Appellant’s disclosure of “[c]ut-resistant fabrics
such as Kevlar” on page 2 of the originally filed Specification of the present
application reasonably conveys to those skilled in the art that Appellant had
possession of the subject matter (i.e., a cut-resistant fabric comprising poly-
paraphenylene terephthalamide) now recited in claims 47 and 49 as of the
filing date. Accordingly, we do not sustain the rejection of claims 47 and 49
under 35 U.S.C. § 112, first paragraph.
Rejections II–IV and V1—Obviousness based on Duffy and Davis, alone or
in view of one of Sims, Brown, and Berner
Independent claim 34 recites, in pertinent part, “a portion of cut-
resistant fabric attached to and covering a first portion of an exterior surface
of a selected one of the first gusset or the second gusset . . . , the cut-resistant
fabric formed of a different material than the selected one of the first gusset
or the second gusset.” Appeal Br. 31–32 (Claims App.). Independent
claim 48 includes a similar recitation, namely, “a portion of cut-resistant
fabric attached to and covering a first portion of an exterior surface of a
selected one of the first, second, third or fourth gussets . . . , the selected one
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of the first, second[,] third[,] or fourth gussets formed of a first material,”
and “the portion of cut-resistant fabric formed from a different, second
material.” Id. at 36.
The Examiner finds that Davis lacks a portion of cut-resistant fabric
attached to and covering an exterior surface of a selected one of the gussets
as called for in claims 34 and 48. Final Act. 5, 13. However, the Examiner
finds that Davis teaches attaching a portion of cut-resistant fabric to the
outer surface of each knee area of pants to form a pocket. Id. at 5, 13–14
(citing Davis, Fig. 1; ¶ 13). In making this finding, the Examiner states that
“every fabric materials is configured to cut resistant at a certain degree
[sic].” Id. at 5, 14. The Examiner determines it would have been obvious
“to provide knee protective devices/a portion cut-resistant fabric of Davis to
attach on the outer surface of knee region 44 of the pants of Duffy in order
to provide better protection to the wearer’s knee areas during crawling.” Id.
(citing Davis ¶ 14). The Examiner adds:
[S]o that a remaining second portion of the exterior surface of
the selected one of the first gusset (fig.1 of Davis shows the
knee protection pad is being disposed on the knee area of the
garment of Duffy while the second gusset without the knee
protection pad) or the second gusset is not covered by the
portion of cut-resistant fabric, the cut-resistant fabric formed of
a different material than the selected one of the first gusset or
the second gusset.
Final Act. 5–6.
Appellant argues that the Examiner’s construction of “cut-resistant
fabric” is unreasonable, and thus is not the broadest reasonable construction,
“because it eviscerates the modifier ‘cut-resistant’ and simply changes ‘cut-
resistant fabric’ to mean ‘fabric.’” Appeal Br. 15. Further, Appellant
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emphasizes that claims 34 and 48 also require that the cut-resistant material
be a different material than the underlying gusset to which the cut-resistant
fabric is attached. Id. at 17. Appellant contends that “the pocket material in
Davis is the same material as the underlying pants, and regardless is not a
cut-resistant fabric as understood by the skilled artisan.” Id. According to
Appellant, “[u]nless Davis intended the purchaser of his product to allow an
infant to crawl over something that could be a cutting hazard to the child,
which is not supported by the reference, there would be no purpose for
making the fabric cut-resistant in the manner claimed.” Id.
In response, the Examiner points out that Davis shows two layers of
material attached to the form pockets 44 and 46 and concludes that, thus, “it
would have been obvious to one of ordinary skill in the art to recognize that
each material layer, fiber and/or fabric of the pocket is configured to cut
resistant at a certain degree and/or to prevent some external impact force that
affecting wearer’s skin [sic].” Ans. 4.
We agree with Appellant that the Examiner’s position that all fabrics
are “cut-resistant” to some degree and, thus, the layer of fabric forming
pocket 44 or 46 of Davis is a “cut-resistant fabric” as claimed is
unreasonable in that it effectively reads “cut-resistant” out of the claim. See
Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007)
(denouncing claim constructions which render phrases in claims
superfluous). Appellant’s Specification provides some guidance as to what
is meant by “cut-resistant” by providing two examples (“Kevlar” and
“Steelskin ®”) of “[c]ut-resistant fabrics.” See Spec. 2. Davis gives no
indication that the layers of fabric forming pockets 44 and 46 of knee
protective devices 24, 26 are made of fabrics manufactured to exhibit cut-
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resistance of this nature. Rather, the purpose of Davis’s pockets is to receive
removable inserts of soft padding 42 to provide padding for protection
during crawling. Davis ¶¶ 13, 14, 17.
Further, claims 34 and 48 also recite that the “cut-resistant fabric” is
made of a “different material” than the selected gusset to which the “cut-
resistant fabric” is attached. Appeal Br. 31–32, 35–36. The Examiner’s
cryptic explanation, quoted above, bridging pages 5 and 6 of the Final
Action is not sufficiently enlightening to satisfy the Examiner’s burden to
articulate a reason with rational underpinnings as to why a person having
ordinary skill in the art would have been prompted to attach a portion of cut-
resistant fabric to a portion of an exterior surface of a selected one of
Duffy’s gussets, wherein the cut-resistant material is of a different material
than the selected gusset.
For the above reasons, we do not sustain the rejection of independent
claims 34 and 48, or claims 35–38, 40, 41, 45, 46, and 51–53, which depend
from either claim 34 or claim 48, as being unpatentable over Duffy and
Davis.
The Examiner’s application of Sims, Brown, or Berner in rejecting
dependent claims 39, 42–44, and 50 does not overcome the aforementioned
deficiency in the combination of Duffy and Davis. Accordingly, we do not
sustain the rejection of claim 39 as being unpatentable over Duffy, Davis,
and Sims; the rejection of claims 42–44 as being unpatentable over Duffy,
Davis, and Brown; or the rejection of claim 50 as being unpatentable over
Duffy, Davis, and Berner.
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Rejection V–Obviousness based on Duffy, Davis, Nilforushan, and Wyner
Claims 47 and 49 depend from claims 34 and 48, respectively, and
further recite that the selected “gusset comprises spandex, and the portion of
cut-resistant fabric comprises poly-paraphenylene terephthalamide.” Appeal
Br. 35, 37 (Claims App.). The Examiner relies on Nilforushan for a teaching
to make Duffy’s compression material of spandex, and on Wyner for a
teaching to make the inner and outer layers of a cushioning pad of an
abrasion-resistant fabric such as Kevlar. Final Act. 15–16 (citing
Nilforushan ¶ 55, Fig. 1; Duffy ¶ 29, Fig. 1). In particular, the Examiner
determines it would have been obvious “to provide the Kevlar material for
the insert pad of Duffy as taught by Wyner in order to provide the abrasion
resistant [sic] for the garment.” Id. at 16 (emphasis added).
The Examiner’s application of Nilforushan does not address the cut-
resistant fabric and, thus, does not cure the aforementioned deficiency in the
rejection of claims 34 and 48. The Examiner’s proposed modification of
Duffy in view of Wyner also fails to remedy the aforementioned deficiency
of the rejection of claims 34 and 48 because the insert pad of the
combination of Duffy and Davis is placed within pocket 44 or 46 and, thus,
is not attached to the underlying panel (i.e., gusset) as is required of the
portion of cut-resistant fabric in claims 47 and 49. See Appeal Br. 28
(arguing that Wyner “fails to teach or suggest providing a layer of such
material onto a portion of a gusset formed of compressive material in the
manner claimed.”).
Accordingly, we do not sustain the rejection of claims 47 and 49 as
unpatentable over Duffy, Davis, Nilforushan, and Wyner.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
34–53 112, first
paragraph
Written Description 34–53
34–38, 40,
41, 45, 46,
48, 51–53
103(a) Duffy, Davis  34–38, 40,
41, 45, 46,
48, 51–53
39 103(a) Duffy, Davis, Sims 39
42–44 103(a) Duffy, Davis, Brown 42–44
47, 49 103(a) Duffy, Davis,
Nilforushan, Wyner
47, 49
50 103(a) Duffy, Davis, Berner 50
Overall
Outcome
34–53

REVERSED