Jasen WebbDownload PDFPatent Trials and Appeals BoardJun 24, 20212020006364 (P.T.A.B. Jun. 24, 2021) Copy Citation 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. 15/214,110 07/19/2016 Jasen L. Webb A157-0005US 3499 29150 7590 06/24/2021 LEE & HAYES, P.C. 601 W. RIVERSIDE AVENUE SUITE 1400 SPOKANE, WA 99201 EXAMINER HARMON, CHRISTOPHER R ART UNIT PAPER NUMBER 1796 NOTIFICATION DATE DELIVERY MODE 06/24/2021 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): lhpto@leehayes.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JASEN L. WEBB Appeal 2020-006364 Application 15/214,110 Technology Center 3600 Before BENJAMIN D. M. WOOD, WILLIAM A. CAPP, and GEORGE R. HOSKINS, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s December 2, 2019 Final Action rejecting claims 1–10, 13, 15– 19, and 21–24. See Final Act. 1 (Summary). Claims 11, 12, 14, and 20 have been canceled. Appeal Br. 26, 28 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as A7 Fitness Inc. Appeal Br. 3. Appeal 2020-006364 Application 15/214,110 2 CLAIMED SUBJECT MATTER The claims are directed to “a garment comprising a grip surface on the fabric.” Spec. ¶ 7. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An apparel comprising: a garment comprising, at least one of, a shirt or a pant; a grip area disposed on the garment, wherein the grip area includes a plurality of gripping members, wherein the grip area is configured to provide a frictional force on an object or surface during an exercise, the plurality of gripping members comprising a gripping material configured to provide the frictional force on the object or surface, in contact with the grip area, the plurality of gripping members comprising an apparel surface attached to the apparel and a grip surface, the plurality of gripping members forming a surface pattern of the grip area, wherein the surface pattern enables breathability of the garment, wherein the plurality of gripping members include a plurality of hexagonal gripping members resulting in the grip surface pattern forming a honeycomb grip pattern, wherein at least one of the plurality of hexagonal gripping members define perforations that extend to an edge of the at least one of the plurality of hexagonal gripping members. REFERENCES Name Reference Date Bouza US 8,245,322 B1 Aug. 21, 2012 Baldino US 2014/0026285 A1 Jan. 30, 2014 Johnson US 2014/0223630 A1 Aug. 14, 2014 The Gripper Glove NPL2 Sept. 28, 2015 2 “The Gripper Glove” sales listing on Amazon.com; http://www.amazon.com/Fit-Four-Weightlifting-Training- Athletes/dp/BOOFKZS1YW. Appeal 2020-006364 Application 15/214,110 3 REJECTIONS Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1–10, 13, 15–19, 21–24 112(a) Written Description 1–10, 13, 15–19, 21–24 112(b) Indefiniteness 1–9, 13, 15–19, 21–24 103 Johnson, The Gripper Glove 10 103 Johnson, The Gripper Glove, Bouza 18, 21–24 103 Baldino, Johnson OPINION Claims 1–10, 13, 15–19, and 21–24—§ 112(a)—Written Description Appellant argues claims 1–10, 13, 15–19, and 21–24 as a group. Appeal Br. 11–13. We select claim 1 as representative of the group, and decide the appeal of this rejection on the basis of claim 1 alone. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds that the Specification fails to adequately describe “wherein at least one of the plurality of hexagonal gripping members define perforations that extend to an edge of the at least one of the plurality of hexagonal gripping members.” Final Act. 2. The Examiner asserts that the Specification “generally describes hexagonal gripping members with a hole in a proximate middle (para. 64) however is not considered to extend to an edge.” Id. According to the Examiner, “[w]hile ordinary consideration of the term ‘edge’ may provide to fulfill the written description requirement, other consideration [i.e.,] extending to one of the six side face edges of the hexagonal shape is not fully supported by the originally filed papers.” Id. Appellant disputes this finding. Relying primarily on the embodiments depicted in Figures 1C and 3 of the Specification for written- description support, Appellant asserts that the term “perforations” refers to Appeal 2020-006364 Application 15/214,110 4 “regions not covered by the gripping members 110 and 305 on the apparel,” which “extend to an edge of the at least one of the plurality of hexagonal gripping members.” Appeal Br. 11–13 (citing Spec. ¶ 65, Figs. 1C, 3); see Reply Br. 4 (same). We are not persuaded of Examiner error. First, the Specification does not expressly define “perforations,” much less define them as regions not covered by gripping members. And while the Specification does discuss “perforations,” it is in connection with a different embodiment: one in which the gripping surface comprises “large perforated patches of the gripping material rather than multiple gripping members.” Spec. ¶ 64 (emphasis added). Second, the excerpts from the Specification on which Appellant relies as disclosing the claimed perforations do not, in fact, provide such support. Of the two figures relied on as depicting the claimed perforations, only Figure 1C is described as comprising a plurality of hexagonal gripping members arranged in a honeycomb grip pattern, as claim 1 requires. Spec. ¶ 64. The Figure 1C embodiment is described as follows: In the present embodiment, gripping areas 101 may comprise multiple hexagonal gripping members 110, which may form a honeycomb grip pattern. Holes disposed in a proximate middle of each hexagonal member and gaps in between and surrounding each hexagonal member may provide breathability of the garment. This grip pattern may enable gripping areas 101 to cover large portions of garment 100 while typically maintaining the breathability of the fabric from which garment 100 is made. Spec. ¶ 64. The only “regions not covered by the gripping members 110” described in this excerpt are “[h]oles disposed in a proximate middle of each Appeal 2020-006364 Application 15/214,110 5 hexagonal member” and “gaps in between and surrounding each hexagonal member.” We agree with the Examiner that “‘holes’ . . . are reasonably considered ‘perforations,’ given the plain and ordinary use of the term.” Ans. 4. But, as the Examiner states, the described holes are “disposed in a proximate middle of each hexagonal member” rather than “extend[ing] to an edge of the at least one of the plurality of hexagonal gripping members.” That is, it appears that each of the hexagonal gripping members depicted in Figure 1C has a continuous outer wall such that no hole or perforation extends to the outer wall. As for the “gaps in between and surrounding each hexagonal member,” Appellant has not provided support for the notion that one of ordinary skill in the art would have considered these gaps to correspond to the claimed perforations. Moreover, to do so would render part of the claim superfluous. That is, gaps between hexagonal members necessarily “extend to an edge” of the members on either side of the gap; they are essentially defined as that region beyond the edge of the members. It would thus be superfluous to also require the perforations to “extend to an edge of the at least one of the plurality of hexagonal gripping members.” Construing a claim in a way that renders a term superfluous is “a methodology [that our reviewing court] has denounced.” Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007). We also note that claim 5, which depends indirectly from claim 1, further recites “a gap between each of the plurality of hexagonal gripping members.” Thus, claim 5 is properly read to recite a limitation in additional to the perforations recited in claim 1, making it that much more difficult to interpret “perforations” as corresponding to the gaps. Appeal 2020-006364 Application 15/214,110 6 For the above reasons, we are not persuaded that the Examiner erred in finding that claim 1 is not described adequately to demonstrate possession of the invention of claim 1. Accordingly, we sustain the Examiner’s rejection of claims 1–10, 13, 15–19, and 21–24 under 35 U.S.C. § 112(a). Claims 1–10, 13, 15–19, and 21–24—§ 112(b)—Indefiniteness For independent claims 1, 18, and 22, the Examiner determines that “[i]t is not understood what is intended by ‘wherein at least one of the plurality of hexagonal gripping members define perforations that extend to an edge of the at least one of the plurality of hexagonal gripping members.’” Final Act. 3. The Examiner’s position is that given the description in the Specification of “hexagonal gripping members with a hole in a proximate middle,” it is not understood how a perforation “extend[s] to any edge other than a surface thereof.” Id. The Examiner also submits that it is not clear how gripping members “define” perforations. Id. In addition, for claim 18, the Examiner further determines: [R]egarding the alternative limitations of claim 18, note that “at least one of” a gap and a perforation which later includes the newly added limitation which refers back to the perforation seems to make the selection of the perforation. It is not clear if the intended scope is to include an embodiment with a selection of a gap only. Also note that “at least one of, a perforated patch of the plurality of gripping members” (18:7–8) seems inconsistent with the described perforated patch as an alternate embodiment to a gripping member. Final Act. 3. Appellant does not specifically respond to the indefiniteness rejection in the Appeal Brief. In the Reply Brief, Appellant largely relies on arguments made in opposition to the written-description rejection. See, e.g., Appeal 2020-006364 Application 15/214,110 7 Reply Br. 5 (stating that, “[a]s discussed above with respect to the rejections under 35 U.S.C. § 112(a), the Specification provides support for ‘wherein at least one of the plurality of hexagonal gripping members define perforations that extend to an edge of the plurality of hexagonal gripping members,’ as recited in independent claim 1.”). As discussed above, we found these arguments unpersuasive. Further, we agree with the Examiner that it is unclear what it means for a perforation to extend to an edge of at least one of the hexagonal gripping members, and it is unclear what it means for a hexagonal gripping member to “define” perforations. For these reasons, we sustain the Examiner’s rejection of claims 1–10, 13, 15–19, and 21–24 as indefinite. Rejections Under 35 U.S.C. § 103 Claims 1–10, 13, 15–19, and 21–24 are rejected as being indefinite under 35 U.S.C. § 112(b), discussed above. In view of the indefiniteness of these claims, we find that it is not possible to ascertain their scope. Accordingly, we find that the Examiner’s rejections of claims 1–10, 13, 15– 19, and 21–24 under 35 U.S.C. § 103 are necessarily based on speculation and assumptions. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (“[W]e do not think a rejection under 35 U.S.C. § 103 should be based on . . . speculations and assumptions. . . . [I]t is essential to know what the claims do in fact cover.”). Therefore, we summarily decline to sustain the rejections of claims 1–10, 13, 15–19, and 21–24. It should be understood, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter and does not reflect the adequacy of the prior art evidence applied in support of the rejection before us. Once definite claims are presented, the Examiner is free Appeal 2020-006364 Application 15/214,110 8 to apply the same, different, or additional prior art as the Examiner so chooses. CONCLUSION The Examiner’s rejections are decided as follows: DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–10, 13, 15– 19, 21–24 112(a) Written Description 1–10, 13, 15– 19, 21–24 1–10, 13, 15– 19, 21–24 112(b) Indefiniteness 1–10, 13, 15– 19, 21–24 1–9, 13, 15– 19, 21–24 103 Johnson, The Gripper Glove 1–9, 13, 15– 19, 21–24 10 103 Johnson, The Gripper Glove, Bouza 10 18, 21–24 103 Baldino, Johnson 18, 21–24 Overall Outcome 1–10, 13, 15– 19, 21–24 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation