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Patent Trials and Appeals Board

Nov 27, 2019

13219785 - (D) (P.T.A.B. Nov. 27, 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.
13/219,785 08/29/2011 Ikuo Toratani OSA-35083 1607
40854 7590 11/27/2019
RANKIN, HILL & CLARK LLP
38210 GLENN AVENUE
WILLOUGHBY, OH 44094-7808
EXAMINER
COLLIER, JAMESON D
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
11/27/2019 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):
40854@rankinhill.com
spaw@rankinhill.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IKUO TORATANI
Appeal 2019-003873
Application 13/219,785
Technology Center 3700
Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–20. 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 Toratani Co., LTD.
Appeal Br. 3.
Appeal 2019-003873
Application 13/219,785

2
BACKGROUND
Appellant’s invention relates to clothing such as shorts. Independent
claims 1, 2, 3, and 4 are pending. Claim 1, reproduced below, illustrates the
claimed invention, with certain limitations italicized:
1. Shorts, comprising:
a tubular body (14) including a stretchable front covering
portion (11) and a stretchable back covering portion (12), the
front covering portion (11) having high-thigh-size formation
portions (15) which are bilaterally symmetrical and each coved
upward in a lower end of the front covering portion (11); and
a gusset portion (13) disposed between an inner-crotch
front portion (16) at the lower end of the front covering portion
(11) and an inner-crotch back portion (17) at a lower end of the
back covering portion (12), wherein
the body (14) includes a left half (12a) and a right half
(12b) of the back covering portion (12) on left and right sides
respectively of the front covering portion (11), and a sewing part
in which an edge of the left half (12a) of the back covering
portion (12) and an edge of the right half (12b) of the back
covering portion (12) are sewn, and wherein
in a development plan view of the body (14) in which the
body (14) is opened along a back center line (S2) vertically
running through a middle in a lateral direction of the back
covering portion (12), the back center line (S2) is extended from
a vicinity of an upper end of the back center line (S2), which
corresponds to an upper end of the back covering portion (12), to
a lower end of the back center line (S2), which corresponds to
the lower end of the back covering portion (12), in a downward
narrowing manner with respect to a front center line (S1)
vertically running through the middle in the lateral directions of
the front covering portion (11) so that a downward extension of
the back center line (S2) approaches a downward extension of
the front center line (S1).
Appeal 2019-003873
Application 13/219,785

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REJECTIONS2
I. Claims 3, 10, 13, 16 and 19 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Osborne (WO 96/23426 A1, pub. Aug. 8, 1996).
Final Act. 6.
II. Claims 1, 2, 4–9, 11, 12, 14, 15, 17, 18, and 20 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Osborne. Final Act. 12.

ANALYSIS
Rejection I – Anticipation by Osborne
In rejecting independent claim 3 as anticipated by Osborne, the
Examiner finds that the limitation “in a development plan view of the body
. . . a downward extension of the back center line approaches a downward
extension of the front center line,” is a “non-assembled state before the final
product (that) is not germane to the patentability of the final product in the
present product claim.” Final Act. 8. The Examiner considers this
limitation to be a product-by-process limitation describing an intermediate
shape that “adds no patentable distinction to the claim,” and the final product
of the claimed invention being structurally the same as the Osborne product.
Id. at 10 (citing In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985); see also
MPEP § 2113.
Appellant argues that the “development plan view” limitation is not a
product-by-process limitation, instead defining “the shape of the back
covering portion (12)” when the final product is opened, the shape being

2 A rejection of claims 1, 2, 5–9, 12, 15, and 18 under 35 U.S.C. § 112,
second paragraph, and a rejection of claim 3, 10, 13, 16, and 19 under
35 U.S.C. § 103(a) are withdrawn. Ans. 3–4; Final Act. 4, 6.
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Application 13/219,785

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“germane to the claimed overall structure of the shorts.” Appeal Br. 12.
Appellant further argues that the Examiner does not explain how Osborne’s
product would be “opened along a ‘hypothetical back centerline’ running
through a middle in a lateral direction of the rear panel 16, so that downward
extensions of a ‘hypothetical front center line and back center line’ are
capable of approaching one another in a downward narrowing manner.” Id.
at 11. Indeed, Appellant contends that downward extensions of Osborne’s
“hypothetical front center line and back center line,” if such extensions
existed, would not be capable of approaching one another in a downward
narrowing manner. Id.
The Examiner responds that Appellant’s arguments are directed to an
intermediate product, not the final product. Ans. 5. According to the
Examiner, “[a]ll of the limitations directed to the shorts ‘in a development
plan view’ are not describing the final ‘shorts’ product,” and because
“Osborne teaches all of the limitations of independent claim 3 regarding the
final ‘shorts’ product, Osborne is anticipatory.” Ans. 5–6.
In reply, Appellant again argues that the disputed “recitation defines a
specific shape of the back covering portion (12) (as depicted in Fig. 3 of the
present application), and this shape imparts specific structure to the claimed
shorts.” Id. at 3.
Appellant has the better position. Appellant’s “development plan
view” illustrates the shape of the claimed back covering portion 12 when the
final product is opened along a middle of its back covering portion, such that
claim 3 is not a product-by-process claim merely describing an intermediate
shape. Rather, claim 3 defines the structure of the final product. Claim 3
requires that, after the final product is produced, the final product, when
Appeal 2019-003873
Application 13/219,785

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viewed in a particular manner, namely, as split (opened) through the middle
in a vertical direction of the back covering, defines a specific shape. This
shape requires the back center line (S2) to extend “in a downward narrowing
manner with respect to a front center line (S1) vertically running through the
middle in the lateral directions of the front covering portion (11).” Appeal
Br. 19 (Claims App.). As such, although Appellant claims a “tubular body,”
the body will have a taper causing the body to extend in a narrowing
manner. This is consistent with the Specification, which discloses that
“body 14 is formed into a tubular shape so that the vicinity of the hip hem
can be three-dimensionally narrowed down in a non-worn state.” Spec. ¶
21.
The Examiner has not provided evidence that Osborne’s tubular blank
would have such a taper. It is our understanding that a development plan
view of Osborne would illustrate its back center line being parallel to its
front center line, because Osborne’s tubular blank is cylindrical. See
Osborne, Figs. 7 and 8. We agree with Appellant that the Examiner does not
provide evidence that, or sufficiently explain how, Osborne’s product could
have a back center line approaching a front center line in a downward
narrowing manner. Moreover, the Examiner provide no factual basis for the
finding that, because Osborne’s product is made from a flexible material, its
front and rear center lines can approach one another (see Final Act. 8).
Because the Examiner has not provided evidence that a development plan
view of the body of Osborne opened along a back center line would result in
a downward extension of the back center line approaching a downward
extension of the front center line, anticipation has not been established.
Appeal 2019-003873
Application 13/219,785

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For these reasons, we do not sustain the rejection of claim 3 as
anticipated by Osbourne. Claims 10, 13, 16, and 19 depend from claim 3,
containing all of the limitations thereof. We do not sustain the rejection of
the dependent claims for the same reasons.

Rejection II – Obviousness Based on Osborne
Each of independent claims 1, 2, and 4 recites, inter alia, “in a
development plan view of the body . . . a downward extension of the back
center line approaches a downward extension of the front center line.” The
Examiner makes the same findings regarding Osborne set forth above in
Rejection I, again finding that the limitation regarding the developmental
plan view is not germane to the patentability of the final product, that the
flexibility of the fabric of Osborne makes it capable of meeting the
limitation, and that the limitation is a product-by-process limitation. See
Final Act. 13–22. Appellant makes the same arguments contending the
Examiner’s findings. Appeal Br. 14–15.
For the reasons set forth above in Rejection I, we do not sustain
Rejection II.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
3, 10, 13, 16, 19 102(b) Osborne 3, 10, 13,
16, 19
1, 2, 4–9, 11, 12,
14, 15, 17, 18, 20
103(a) Osborne 1, 2, 4–9,
11, 12, 14,
15, 17, 18,
20
Appeal 2019-003873
Application 13/219,785

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Overall
Outcome
1–20

REVERSED