Petra Schachtner

Patent Trials and Appeals Board

Jan 31, 2020

12597756 - (D) (P.T.A.B. Jan. 31, 2020)

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.
12/597,756 02/23/2010 Petra Schachtner 12007-0142 2383
22902 7590 01/31/2020
CLARK & BRODY
1700 Diagonal Road
Suite 310
Alexandria, VA 22314
EXAMINER
WAGGENSPACK, ADAM J
ART UNIT PAPER NUMBER
3734
MAIL DATE DELIVERY MODE
01/31/2020 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 PETRA SCHACHTNER
____________

Appeal 2018-005603
Application 12/597,756
Technology Center 3700
____________

Before MURRIEL E. CRAWFORD, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 43, 45–50, 52, 54–60, and 62. We have jurisdiction
under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Our decision references Appellant’s Specification (“Spec.,”
filed Oct. 27, 2009), Published Application (“Pub. Appl.,” 2010-014790,
pub. June 17, 2010), Appeal Brief (“Appeal Br.,” filed Feb. 23, 2018) and
Reply Brief (“Reply Br.,” filed May 10, 2018), and the Examiner’s Answer
(“Ans.,” mailed Mar. 13, 2018) and Final Office Action (“Final Act.,”
mailed July 27, 2017). Appellant identifies Schachtner
Vermoegensverwaltungs Gmbh & Co. KG as the real party in interest.
Appeal Br. 3.
Appeal 2018-005603
Application 12/597,756

2
We AFFIRM IN PART.
CLAIMED INVENTION
Appellant’s claimed invention relates to a carrying device. Spec. 1,
ll. 3–4.
Claim 43, reproduced below, is the sole independent claim on appeal
and is representative of the claimed subject matter:
43. A carrying device (10) for receiving a baby or small child
in such a manner that at least a region of the baby’s or small
child’s back can be received and/or can be supported therein,
the carrying device comprising:
a holding harness system (40, 60) for fastening a
receiving body (12) to a person, comprising a hip strap (40) and
a pair of shoulder straps (60), each shoulder strap having a free
end, the receiving body having a longitudinal length and
positioned with respect to the holding harness system to contact
and support at least a region of a back of the baby or small
child;
wherein the receiving body (12) further comprises:
a main body portion having a lower edge;
an end portion, the end portion having an upper end, the
upper end including opposing edges, which are angled with
respect to a longitudinal axis of the receiving body;
an extension element positionable between the main body
portion and the end portion, wherein the extension element, the
main body portion, and the end portion are of a unitary one
piece construction or a multiple piece construction with the
multiple pieces stitched together, and
means for changing the longitudinal length of the
receiving body using the extension element to be able to
accommodate both the baby and the small child, the extension
element is positioned between the main body portion and the
end portion so as to contact the region of the baby’s or small
child’s back, and further wherein
the hip strap (40) is fastened along a central portion
thereof to a lower edge of the main body and each shoulder
Appeal 2018-005603
Application 12/597,756

3
strap (60) is fastened to each respective opposing edge of the
upper end of the end portion.
REJECTIONS2
Claims 43, 45–50, 52, 54–60, and 62 are rejected under 35 U.S.C.
§ 112, second paragraph, as indefinite.
Claims 43, 45–50, 55, 56, 60, and 62 are rejected under 35 U.S.C.
§ 103(a) as obvious over Linday (US 4,986,458, iss. Jan. 22, 1991), Bricout
(FR 2,546,389, iss. Nov. 30, 1984) or Bricout (FR 2,481,093, iss. Oct. 30,
1981) (“Bricout2”), and Elf (US 4,428,514, iss. Jan. 31, 1984).3
Claims 55–60 are rejected under 35 U.S.C. § 103(a) as obvious over
Linday, Bricout or Bricout2, Elf, and Donine (US 2001/0030210 A1, pub.
Oct. 18, 2001).

2 The Examiner has withdrawn the rejections of the claims under 35 U.S.C.
§ 103 involving Gray (US 2008/0190972 A1, pub. Aug. 14, 2008) and Grant
(US 2009/0206116 A1, pub. Aug. 20, 2009). Ans. 18.
3 It is unclear what combination of references the Examiner is applying in
various rejections. For example, the heading for this rejection recites
“Linday . . . in view of . . . Bricout . . . and . . . Elf . . . , either alone or also
in view of . . . Bricout2[],” suggesting that the claims are rejected under
Linday, Bricout, and Elf, and also Linday, Bricout, Elf, and Bricout2. Final
Act. 6. In the body of this rejection, the Examiner appears to apply a
combination of Linday, Bricout, and Elf, and appears to rely on Bricout2
regarding attaching shoulder straps as disclosure of a shape of an end
portion. Id. at 8–9. Yet, the rejection of claims 55–60 rejects the claims
over “Linday in view of either Bricout or Bricout[2] and . . . Elf . . . as
applied to claim 43 above, and further in view of . . . Donine,” suggesting
that the rejections of claim 43 was over Linday, Bricout, and Elf; and
Linday, Bricout2; and Elf. Id. at 11; see also id. at 14, 16 (indicating the
same combinations for the rejection of claim 43). We treat the rejection as
applying the Bricout references in the alternative.
Appeal 2018-005603
Application 12/597,756

4
Claims 55–58, and 60 are rejected under 35 U.S.C. § 103(a) as
obvious over Linday, Bricout or Bricout2, Elf, and Dotseth (US 5,246,152,
iss. Sept. 21, 1993).
Claims 52 and 54 are rejected under 35 U.S.C. § 103(a) as obvious
over Linday,4 Bricout or Bricout2, Elf, and Hiniduma-Lokuge
(US 2012/0234877 A1, pub. Sept. 20, 2012).

ANALYSIS
Indefiniteness
Claim 43 recites a “means for changing the longitudinal length of the
receiving body using the extension element to be able to accommodate both
the baby and the small child.” The Examiner determines (Final Act. 2), and
Appellant does not dispute (see Appeal Br. 17–18; see also Reply Br. 1),
that this limitation qualifies as a means-plus-function pursuant to 35 U.S.C.
§ 112, sixth paragraph. When employing means-plus-function claim
language, the Specification must adequately disclose what is meant by that
language to satisfy the requirement under 35 U.S.C. § 112, second
paragraph, to particularly point out and distinctly claim the invention. In re
Donaldson Co., Inc., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc); see also
Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1382
(Fed.Cir.1999) (“In order for a claim to meet the particularity requirement of
¶ 2, the corresponding structure(s) of a means-plus-function limitation must
be disclosed in the written description in such a manner that one skilled in

4 We treat the Examiner’s identification in the rejection heading of
“Parness,” instead of “Linday,” as inadvertent error. See Final Act. 16.
Appeal 2018-005603
Application 12/597,756

5
the art will know and understand what structure corresponds to the means
limitation.”).
The Examiner finds that the Specification discloses the following
three structures as the corresponding structure for the claimed means for
changing the longitudinal length of the receiving body: (1) a pair of zipper
tracks with excess material between them (Final Act. 5 (citing Pub. Appl.
¶ 115, Figs. 1–3)); (2) a removable portion that can be added to increase size
(id. at 5 (citing Pub. Appl. ¶ 106); and (3) a part that can be rolled or folded
up (id. at 5 (citing Pub. Appl. ¶ 11)). However, the Examiner finds that the
Specification only describes a part that can be rolled up (i.e., item (3)) as
relating to head part 110. Id. at 2, 5 (citing Pub. Appl. ¶ 697). Therefore, the
Examiner finds that it is unclear whether head part 110 is the means for
changing the longitudinal length of the receiving body, or whether the means
for changing the longitudinal length is some other structure. Id. at 2–3.
Appellant argues that the head part is described as a separate structure
from the extension part, and that one of ordinary skill in the art would not
confuse the head part for the extension element. Appeal Br. 17 (citing Spec.
7, l. 7; 16, l. 30–18, l. 17); see also Reply Br. 1–2. Appellant also argues
that rolling the extension section is described in the Specification as an
alternative to folding, and that one of ordinary skill in the art would not be
confused because the Specification describes that the head part can be rolled

5 Paragraph 11 of Appellant’s Published Application corresponds to page 3,
line 33 to page 4, line 7 of the Specification, as filed.
6 Paragraph 10 of Appellant’s Published Application corresponds to page 3,
lines 23–31 of the Specification, as filed.
7 Paragraph 69 of Appellant’s Published Application corresponds to page 18,
lines 11–13 of the Specification, as filed.

Appeal 2018-005603
Application 12/597,756

6
for storage. Appeal Br. 16–17 (citing Spec. 3, l. 33–4, l. 7; 9, l. 30–10, l. 30,
18, ll. 11–13; claim 9).
As an initial matter, structures (2) and (3) identified by the Examiner
correspond to the claimed extension element, not the claimed means for
changing the longitudinal length of the receiving body using the extension
element. Also, as acknowledged by the Examiner in the remarks section of
the Final Office Action, aspects regarding folding or rolling the extension
section pertain to actions/activities, not any particular structure that could
constitute the claimed means. See Final Act. 18; see also Ans. 3.
Appellant asserts that the Specification discloses the following
structures for the claimed means for changing the longitudinal length of the
receiving body: (1) zippers, (2) snap fasteners, and (3) touch and close
fasteners, which include hook or barb and loop surfaces, alone or in
combination. See Appeal Br. 9 (citing Spec. 4, ll. 9–20); see also id. at 17
(“[t]he specification clearly describes the embodiment wherein zipper
segments or fasteners may be used to change the length”).
We agree. See Spec. 4, ll. 9–20 (describing using “a zipper and/or
snap fasteners and/or touch and close fasteners,” which include a barb and
loop surfaces, to fix the extension element in a first position); see also id. at
9, ll. 13–25 (describing that zipper strips are spaced apart to increase the
overall receiving body length when unzipped, and shortened when the two
strips are fastened together with a zipper slide); 13, l. 35–14, l. 10
(describing that touch and close fasteners are brought together to secure
folded extension section when the zipper strips are engaged with each other
by the zipper slide), Figs. 1, 2, 4.
Appeal 2018-005603
Application 12/597,756

7
We also agree with Appellant that the Specification makes clear that
the head part is a separate structure from the receiving body. See Appeal
Br. 16–17; see also Reply Br. 1–2. The Specification describes, for
example, the head portion as connected to the receiving body and as
supporting the head and/or back of the neck of a child. See, e.g., Spec. 7, ll.
7–19. In contrast, the Specification describes the extension element as
positioned on the receiving body between a main body portion and an end
portion. See id. at 3, ll. 12–21. The portion of the Specification cited by the
Examiner describes that the head part can be rolled or folded, and then
stowed in a pocket formed in the end section of the receiving body.
Spec. 18, ll. 11–13. But such disclosure of stowing the head part would not
suggest to one of ordinary skill in the art that the head part is part of the
extension element.
In the Answer, the Examiner additionally finds that the claimed means
is an overly expansive Markush group limitation that renders the metes and
bounds of the limitation impossible to determine. See Ans. 3. Appellant
replies that there is no Markush group language in claim 43, and that
interpreting claim 43 as using an overly expansive Markush group is in
error. Reply Br. 2. We agree. The claimed means for changing is not
recited as part of a Markush group. Moreover, as set forth above, we find
that one of ordinary skill would understand a zipper, snap fasteners, and
touch and close fasteners as structures corresponding to the claimed means
limitation, as recited in independent claim 43.
Therefore, we do not sustain the rejection under 35 U.S.C. § 112,
second paragraph, of claim 43 as indefinite, or its dependent claims 45–48,
52, 54–60, and 62.
Appeal 2018-005603
Application 12/597,756

8
However, the Examiner correctly points out in the Answer that some
dependent claims further recite fastening devices, which appear to constitute
the claimed means for changing the longitudinal length. See Ans. 3 (citing
claims 47–50).8 In particular, dependent claim 49 further recites that the
carrying device includes a fastening device to fix the extension element in a
first position. Dependent claim 50 depends from claim 49 and further recites
that the fastening device is a zipper, snap fastener, and/or hook-and-loop
fastener.
We agree with the Examiner that the fastening device of claims 49
and 50 appears to correspond to the claimed means for changing the
longitudinal length, as recited in claim independent 43. Indeed, Appellant
points to the description for a fastening device as describing structures
corresponding with the claimed means for changing. See Appeal Br. 9
(citing Spec. 4, ll. 9–20); see also Spec. 4, ll. 9–11 (“[a] fastening device is
advantageously provided in order to fix the extension element in the first
position”). Because it is unclear in view of the Specification how the
fastening device recited in claims 49 and 50 distinguishes from the claimed
means for changing longitudinal length, we sustain the rejection of claims 49
and 50 under 35 U.S.C. § 112, second paragraph, as indefinite.

8 Claims 47 and 48 further recite that the extension element can be folded or
rolled, respectively, but this rolling and folding constitute actions, not
structures corresponding to the claimed means for changing. We do not find
that these additional limitations render the scope of the claimed means
unclear to one of ordinary skill.
Appeal 2018-005603
Application 12/597,756

9
Obviousness
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting claim 43 under 35 U.S.C. § 103(a), because Elf and Bricout do not
disclose or suggest
an extension element positionable between the main body
portion and the end portion, wherein the extension element, the
main body portion, and the end portion are of a unitary one
piece construction or a multiple piece construction with the
multiple pieces stitched together, and
means for changing the longitudinal length of the
receiving body using the extension element to be able to
accommodate both the baby and the small child, the extension
element is positioned between the main body portion and the
end portion so as to contact the region of the baby’s or small
child’s back,
as recited in claim 43. Appeal Br. 18–29; Reply Br. 3–5. In rejecting claim
43, the Examiner acknowledges that Linday does not disclosed the claimed
extension element or the claimed means for changing, and relies on Elf and
Bricout to cure the deficiency.
Elf describes an infant carrier made of flexible material, having a back
end 2 and a bib end 3. See Elf col. 2, ll. 50–54. Between back end 2 and bib
end 3 is a generally rectangular back end portion 4, having a width equal to
or somewhat wider than the infant or toddler to be carried. Id. at col. 2, ll.
54–58. A longitudinal height of back end portion 4 can be adjusted by
sliding and ruffling. Id. at col. 3, ll. 1–7, Fig. 2. For example, “[f]or more
developed infants or toddlers, the back end portion can be ruffled downward
to a desired height, as indicated in FIG. 8, such that it engages only the back
or the back and the neck of the carried infant or toddler. Id. at col. 4, ll. 4–8
(emphasis omitted). For young infants with less developed neck muscles,
Appeal 2018-005603
Application 12/597,756

10
the back end portion is left fully extended so that the back end engages the
back of the infants head. Id. at col. 3, l. 67–col. 4, l. 4, Figs. 6–7.
As pointed out by Appellant, Elf does not teach an extension element
positionable between the main body portion and the end portion, as recited
by claim 43, but rather teaches a back end that can be ruffled to adjust
length. Appeal Br. 19. Elf also does not teach a means for changing the
longitudinal length of the receiving body, as recited in claim 43.
Bricout discloses a fabric baby carrier for receiving a child. As shown
in Figures 1 and 2 of Bricout, a back 1 of the carrier is divided
longitudinally, and secured by longitudinal zippers 7 and 8. A carrier side
panel of the receiving body and the infant side portion of the receiving panel
are connected by side panels 3. A slide 12 allows the width of seat portion 4
to be adapted. Thus, Bricout teaches adjusting the width of the seat portion
of the receiving body, but not the longitudinal length. As pointed out by
Appellant (Reply Br. 3), Bricout’s side panels 3 prevent changing the
longitudinal length of the receiving body.
The Examiner interprets the claimed means for changing the
longitudinal length, for examination of the merits, as encompassing “any
length adjustment device.” Final Act. 3; see also Ans. 4. This
interpretation, applied to the Examiner’s analysis, is erroneous. As set forth
above, the structures corresponding to the means for changing include a
zipper, snap fasteners, and touch and close fasteners. The Examiner finds
that Elf teaches that the longitudinal length of a receiving body can be
adjustable, and that Bricout teaches a means for changing a “size” of a
receiving body. Final Act. 8. Based on these disclosures, the Examiner
determines that it would have been obvious to modify Linday in view of Elf
Appeal 2018-005603
Application 12/597,756

11
and Bricout to include the claimed extension element and the claimed means
for changing the longitudinal length, as required by claim 43. Id. In
particular, the Examiner reasons that the proposed modification results in
merely making Linday’s carrier adjustable, which does not distinguish over
the prior art. Id. The Examiner further reasons that it would have been
obvious “to locate the extension element between [Linday’s] drawstrings
(e.g. approximately at the midpoint between them or higher) . . . to avoid
interfering with the drawstring (18),” and/or that the modification is “a mere
rearrangement of parts.” Id.
In our view, the Examiner does not adequately explain, and it is not
readily apparent, why a person of ordinary skill in the art would have an
apparent reason to modify Linday’s receiving body to have the claimed
extension element and the claimed means for changing the longitudinal
length of the receiving body, where the extension element is positioned
between the main body portion and end portion so as to contact the region of
the baby’s or small child’s back based on the teachings of Elf and Bricout.
Significantly, neither Elf nor Bricout teach a means for changing the
longitudinal length of a receiving body, much less that the means changes
the longitudinal length using an extension element positioned between the
main body portion and the end portion so as to contact the region of a baby’s
or small child’s back. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (holding that a prima facie case of obviousness requires showing that
one of ordinary skill in the art would have had both an apparent reason to
modify the prior art and predictability or a reasonable expectation of success
in doing so).
Appeal 2018-005603
Application 12/597,756

12
In view of the foregoing, we do not sustain the Examiner’s rejection
of claim 43 or dependent claims 45–50, 55, 56, 60, and 62 under 35 U.S.C. §
103(a) as unpatentable over Linday, Bricout, and Elf.
The only additional finding the Examiner makes in rejecting claim 43
under 35 U.S.C. § 103(a) as unpatentable over Linday, Bricout2, and Elf
relates to a different claim limitation (i.e., “an end portion, the end portion
having an upper end . . . including opposing edges, which are angled with
respect to a longitudinal axis of the receiving body”). See Final Act 8–9; see
also Ans. 6–7. Therefore, the Examiner’s rejection of claim 43 under
35 U.S.C. § 103(a) as unpatentable over Linday, Bricout2, and Elf suffers at
least from the same deficiencies described above with respect to the
Examiner’s rejection of claim 43 over Linday, Bricout2, and Elf under 35
U.S.C. § 103(a).
The additional rejections of the dependent claims under 35 U.S.C.
§ 103(a) do not cure the deficiencies in the rejections of independent
claim 43 under 35 U.S.C. § 103(a). Accordingly, we do not sustain any of
the rejections of the dependent claims under 35 U.S.C. § 103(a) for the same
reasons set forth above with respect to the rejections of the independent
claim.

Appeal 2018-005603
Application 12/597,756

13
DECISION
In summary:
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
43, 45–
50, 52,
54–60,
62
112,
¶ 2
Indefiniteness 49, 50 43, 45–
48, 52,
54–60, 62
43, 45–
50, 55,
56, 60,
62
103(a) Linday, Bricout,
Elf
43, 45–
50, 55,
56, 60, 62
55–60 103(a) Linday, Bricout,
Elf, Donine
55–60
55–58,
60
103(a) Linday, Bricout,
Elf, Dotseth
55–58, 60
52, 54 103(a) Linday, Bricout,
Elf, Hiniduma-
Lokuge
52, 54
43, 45–
50, 55,
56, 60,
62
103(a) Linday, Bricout2,
Elf
43, 45–
50, 55,
56, 60, 62
55–60 103(a) Linday, Bricout2,
Elf, Donine
55–60
55–58,
60
103(a) Linday, Bricout2,
Elf, Dotseth
55–58, 60
52, 54 103(a) Linday, Bricout2,
Elf, Hiniduma-
Lokuge
52, 54
Overall
Outcome
49, 50 43, 45–
48, 52,
54–60, 62

Appeal 2018-005603
Application 12/597,756

14
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 IN PART