David Marker

Patent Trials and Appeals Board

Jul 9, 2021

2020006274 (P.T.A.B. Jul. 9, 2021)

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.
15/181,587 06/14/2016 David Marker 210729/57512-1 2630
43935 7590 07/09/2021
Shumaker, Loop & Kendrick, LLP
1000 Jackson Street
Toledo, OH 43604-5573
EXAMINER
LYNCH, MEGAN E
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
07/09/2021 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):
cgolupski@shumaker.com
dmiller@shumaker.com
tlopez@shumaker.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID MARKER
____________

Appeal 2020-006274
Application 15/181,587
Technology Center 3700
____________

Before JENNIFER D. BAHR, PHILLIP J. KAUFFMAN, and
SEAN P. O’HANLON, Administrative Patent Judges.

O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–4, 7, 8, 10–14, 16, 17, and 19–21. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM.
In explaining our Decision, we refer to the Specification filed June 14,
2016 (“Spec.”), the Non-Final Office Action mailed April 19, 2019 (“Non-
Final Act.”), the Appeal Brief filed September 6, 2019 (“Appeal Br.”), the
Claims Appendix filed October 18, 2019 (“Claims App.”), the Examiner’s

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Blindside Solutions.
Appeal Br. 4.
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Answer mailed June 25, 2020 (“Ans.”), and the Reply Brief filed August 24,
2020 (“Reply Br.”).
SUMMARY OF THE INVENTION
Appellant’s claimed invention relates to footwear with an integrally
formed gun holster. Spec. ¶ 1. Claims 1, 12, and 17 are independent. Claim
1, reproduced below from page 2 of the Claims Appendix is illustrative of
the claimed subject matter:
1. A footwear for carrying a firearm comprising:
an upper defining a cavity adapted to receive a foot, the
upper including an internal surface defining the cavity and an
external surface; and
a holster integrally formed with the upper, the holster
configured to receive a firearm and to stabilize the firearm
within the holster and to the upper, wherein the holster is
formed on a medial side of the footwear, wherein the holster
includes an internal layer and an external layer extending
outwardly from a first surface of the internal layer, the external
layer coupled to the internal layer by a first seam, the first seam
spaced from a periphery of the internal layer, wherein the upper
defines an opening formed therethrough, the opening receiving
the holster, wherein a second surface of the internal layer
opposite the first surface of the internal layer faces the cavity,
wherein the external layer extends from the first surface of the
internal layer through the opening, wherein an edge of the first
surface of the internal layer formed intermediate the periphery
of the internal layer and the first seam engages the internal
surface of the upper, wherein the internal layer of the holster
expands in an inward direction from the internal surface of the
upper into the cavity of the upper concurrently as the external
layer of the holster expands in an outward direction from the
external surface of the upper.
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REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Carey US D447,619 S Sept. 11, 2001
Zubyk US 2011/0225849 A1 Sept. 22, 2011
Deters US 2017/0049181 A1 Feb. 23, 2017
Boyle US 2017/0119065 A1 May 4, 2017
REJECTIONS
I. Claims 1–4, 7, 8, 12–14, 16, 17, and 19–21 stand rejected under
35 U.S.C. § 112(b) as being indefinite.2
II. Claims 1–4, 7, 10, and 11 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Deters, Boyle, and Carey.
III. Claim 8 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Deters, Boyle, Carey, and Zubyk.
IV. Claims 12–14, 16, 17, and 19–21 stand rejected under 35 U.S.C. § 103
as being unpatentable over Deters and Boyle.
ANALYSIS
Rejection I – Indefiniteness
Independent claim 1 recites, in relevant part, “an edge of the first
surface of the internal layer formed intermediate the periphery of the internal
layer and the first seam engages the internal surface of the upper.” Claims
App. 2. Independent claims 12 and 17 recite similar limitations. Id. at 5, 7.
The Examiner determines that the above limitation renders the claims

2 Notably, the Examiner did not include claims 10 and 11, which depend
(directly or indirectly) from claim 1, in this rejection.
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indefinite because “it is unclear how an edge of the internal layer is
intermediate its peripheral edge and the first seam, which is previously noted
as coupling the internal and external layers together.” Non-Final Act. 3.
The Examiner explains that “it appears the edge of the first surface of the
internal layer is the same structure as the periphery of the internal layer and[]
that the seam which couples the internal and external layers does not also
engage the internal surface of the upper.” Id.
Appellant argues that the identified claim language does not render
the claims indefinite. Appeal Br. 15–19. Appellant asserts that “the
periphery of the internal layer is the ‘perimeter’ or ‘border’ or ‘outer limits’
of the internal layer. (‘periphery.’ Merriam-Webster Online Dictionary).
The ‘edge’ is the narrow part adjacent the ‘periphery’ or ‘border.’ (‘edge.’
Merriam-Webster Online Dictionary defining ‘edge’ as ‘the narrow part
adjacent to a border.’).” Id. at 18 (emphasis omitted). Referring to
Figure 5A as annotated and reproduced on page 17 of the Appeal Brief,
Appellant asserts that “the edge is intermediate the periphery of the internal
layer and the first seam.” Id.
We agree with Appellant that the scope of the limitation in question
would be reasonably ascertainable by those skilled in the art when the claims
are read in light of the Specification, including the drawings. See Appeal
Br. 19. The Specification describes that edge 43 of internal layer 42 engages
internal surface 30 of footwear 10, and (second) seam 41 is formed along
edge 43 to join the internal layer to upper 14. Spec. ¶ 33, Fig. 3.
Appellant’s disclosure identifies edge 43 as the surface of internal layer 42
between the periphery of internal layer 42 and the first seam (at periphery 45
of opening 46). See id. at ¶ 33 (describing that periphery 45 of opening 46 is
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defined by the seam joining internal layer 42 to external layer 44), Fig. 5A.
That is, in view of the Specification, including the drawings, “an edge of the
first surface of the internal layer formed intermediate the periphery of the
internal layer and the first seam,” as recited in claim 1, means the area of the
first surface of the internal layer located between the first seam and the
periphery of the internal layer. This area engages and is joined to the
internal surface of the upper via the second seam.
Accordingly, we do not sustain the rejection of claims 1–4, 7, 8,
12–14, 16, 17, and 19–21 as being indefinite.
Rejection II – Obviousness based on Deters, Boyle, and Carey
Claims 1–4, 7, and 10
In contesting this rejection, Appellant presents arguments for
independent claim 1 and does not separately argue dependent claims 2–4, 7,
and 10. See Appeal Br. 19–23. We select claim 1 as representative, and
claims 2–4, 7, and 10 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2019). Appellant presents separate arguments for
dependent claim 11 (see Appeal Br. 24), which we address below.
In rejecting claim 1, the Examiner finds that Deters discloses footwear
for carrying a firearm including, in relevant part, a holster having an external
layer coupled to an internal layer by a first seam, the holster being integrally
formed with the upper of the footwear. Non-Final Act. 5–6 (citing Deters,
Figs. 1–3; ¶¶ 17–19). The Examiner finds that Deters does not disclose the
attachment arrangement between the holster and upper recited in claim 1
(i.e., an opening in the upper that receives the holster such that an edge area
of the first surface of the holster internal layer engages the internal surface of
the upper). Id. at 6. However, the Examiner finds that Boyle teaches such
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an attachment arrangement. Id. (citing Boyle, Figs. 6, 11; ¶ 25). The
Examiner concludes that it would have been obvious to “substitute[] the
holster attachment arrangement of Deters for the attachment arrangement, as
taught by Boyle, as a simple substitution of one well know[n] type of
attachment arrangement for another, in order to yield the predictable result
of a holster securely attached to the upper in a permanent manner.” Id. at 7.
The Examiner also explains that the combination of Deters and Boyle
renders obvious
the internal layer of the holster expands in an inward direction
from the internal surface of the upper into the cavity of the
upper and concurrently as the external layer of the holster
expands in an outward direction from the external surface of the
upper (para.13; rubber is an elastomer and would expand
inward and outward with respect to the upper).
Id. at 6–7 (citing Deters ¶ 13).
Appellant argues that there is no rationale for combining Deters and
Boyle as proposed by the Examiner. Appeal Br. 19. In particular, Appellant
asserts that “Boyle is not directed to a footwear for carrying a firearm at all.”
Id. Appellant asserts that Boyle teaches pocket 18 on a pair of pants, which
does not constitute a holster. Id. According to Appellant, “it is improper for
the Examiner to equate the pocket 18 with a holster or to rely on Boyle at
all.” Id. at 19–20; see also id. at 23 (asserting that “Boyle is concerned with
a seamless pocket on a pair of pants that is not configured for receiving a
firearm”). This argument is unpersuasive because it is not responsive to the
rejection as presented. As discussed above, the Examiner relies on Deters to
disclose footwear having a firearm holster attached to the outside of the
upper. See Non-Final Act. 5–6. The Examiner relies on Boyle to teach a
known arrangement for attaching a pocket to apparel (i.e., provide an
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opening that receives the internal layer of the pocket such that an edge area
of the first surface of the internal layer engages the internal surface of the
apparel material). See id. at 6. In other words, the Examiner’s rejection is
based on the combined teachings of Deters and Boyle. Appellant’s
arguments against Boyle individually do not apprise us of error. See In re
Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show non-
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references.”).
To the extent that Appellant argues that Boyle is non-analogous art
(see Appeal Br. 19–20), the argument is not persuasive because, although
Appellant arguably addresses the inventor’s field of endeavor, Appellant
does not address the particular problems with which the inventor was
involved. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citing In re
Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986)) (identifying “[t]wo separate
tests [to] define the scope of analogous prior art”).
Appellant argues that the “the Examiner fails to specify how the
attachment arrangement of Boyle would be specifically applied to the
backing material (i.e. internal layer) and to the holster (i.e. external layer) of
Deters, especially since Deters explicitly states the holster is attached to the
outside of the boot.” Appeal Br. 20 (emphasis omitted). Appellant asserts
that “it is unclear how the attachment arrangement of Boyle would be
combined with the boot of Deters which has no opening and has a holster
having a backing material coupled to the outside of the boot.” Id. (emphasis
omitted). According to Appellant, one of ordinary skill in the art would not
have combined the teachings of Deters and Boyle as proposed by the
Examiner absent impermissible hindsight. Id.
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The Examiner responds that,
[i]nstead of placing the holster/pocket of Deters on the outside
of the boot, an opening would be created in the boot, as taught
by Boyle shown with the opening in its apparel, in order to
place the holster of Deters within the opening and attach it such
that it is flush with the boot, as further illustrated by Boyle.
Ans. 7–8. In the Reply Brief, Appellant further asserts that “[i]t is
structurally inconceivable how such a combination could be created without
another non-obvious inventive step.” Reply Br. 8. However, Appellant does
not specifically address the Examiner’s position that one of ordinary skill in
the art would create an opening in Deters’s boot and attach the holster
backing material to the boot upper using the arrangement of Boyle. See Ans.
7–8. To the extent Appellant argues that Boyle’s attachment arrangement
would not be compatible with Deters’s footwear (see Reply Br. 8), Appellant
does not proffer factual evidence or persuasive rationale to explain how
combining the references’ teachings in an operable manner would be beyond
the level of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”). Moreover, we are unpersuaded by
Appellant’s contention that the Examiner relied on impermissible hindsight
in reaching the determination of obviousness of the claimed subject matter
(see Appeal Br. 20; Reply Br. 8) because Appellant does not identify, nor do
we discern, any knowledge relied upon by the Examiner that was gleaned
only from Appellant’s disclosure and that was not otherwise within the level
of ordinary skill at the time of the invention. See In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971) (“Any judgment on obviousness is in a sense
necessarily a reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of ordinary
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skill at the time the claimed invention was made and does not include
knowledge gleaned only from [Appellant’s] disclosure, such a reconstruction
is proper.”).
Next, Appellant argues that Deters fails to disclose “the internal layer
of the holster expands in an inward direction from the internal surface of the
upper into the cavity of the upper concurrently as the external layer of the
holster expands in an outward direction from the external surface of the
upper,” as recited in claim 1. Appeal Br. 21. Appellant asserts that,
although Deters discloses rubber material for the holster, “an elastic material
does not presuppose an inward expansion with respect to the internal surface
of the upper concurrently as the external layer expands in an outward
direction.” Id. According to Appellant, “[a]n outward pull on the holster of
Deters, which the Examiner equates with the external layer of the presently
claimed invention, . . . would cause a reciprocal outward expansion on the
backing material and the boot and not an inward expansion.” Id.
The Examiner responds that, with Deters’s elastic material, “both the
interior and exterior layer[s] of [the] holster would absolutely expand
outward from each other when a three dimensional object is placed within
the void of the holster.” Ans. 9. The Examiner explains that “it is a fact of
physics that[,] if a three dimensional object is inserted between the two
elastomeric layers of Deters, the inner layer would expand away from the
external layer and the external layer would, likewise, expand away from the
internal layer.” Id. at 9–10.
In this regard, Appellant does not persuasively refute the Examiner’s
position. We note that the Examiner’s position is consistent with the
Specification, which describes that internal layer 42 and external layer 44 of
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holster 40 can be formed of elastic materials (Spec. ¶ 35), and when
receiving a firearm, internal layer 42 and external layer 44 cooperate with
each other and upper 14 to allow holster 40 to expand partially outward and
partially inward from upper 14 (id. ¶ 36). Appellant maintains that an
outward pull on Deters’s holster would not cause a reciprocal inward
expansion of the internal layer “because there is no cavity, as recited in
Claim 1, in Deters and also the ‘holster’ of [D]eters is attached to the outer
surface of the ‘upper.’” Reply Br. 9. However, this argument does not
specifically address the rejection as presented or the Examiner’s position
articulated in support thereof. See Non-Final Act. 6–7; Ans. 9–10. As
discussed above, the rejection is based upon the combined teachings of
Deters’s footwear with Boyle’s attachment arrangement, and Appellant’s
argument against Deters individually is unavailing. See Keller, 642 F.2d
at 426.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s determination that the subject matter of claim 1 would have been
obvious. Accordingly, we sustain the rejection of claim 1, and of
claims 2–4, 7, and 10 falling therewith, as being unpatentable over Deters,
Boyle, and Carey.
Claim 11
Claim 11 depends from claim 1 through claim 7 and further recites the
holster includes an adjustable strap. Claims App. 4. In rejecting this claim,
the Examiner finds that Deters discloses
an adjustable detachable strap (para.5 & 17; i.e. tabs at the top
of the holster with Velcro or snaps) divided into a first portion
(i.e. one of the tabs on the backing material) thereof extending
from the internal layer (i.e. backing material) and a second
portion (i.e. one of the tabs on the holster) thereof extending
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from the external layer (i.e. holster), the first portion detachable
from the second portion (para.5 & 17).
Non-Final Act. 8–9.
Appellant argues that Deters is silent as to a first portion and a second
portion that are detachable, and “there is no disclosure whatsoever regarding
where the strap extends from.” Appeal Br. 24 (emphasis omitted). We are
not persuaded by this argument. Deters discloses that “[a] Velcro or snap
closure on the holster prevents the weapon from unintentionally coming out
of the holster.” Deters ¶ 5. In particular, “[t]here are tabs at the top of the
holster that act as a closure to prevent the firearm from accidentally coming
out of the holster.” Id. ¶ 17. The Examiner takes the position that “it is clear
that one tab would be on the internal layer and the other tab on the exterior
layer; otherwise[,] the opening would not be able to be closed so that it can
hold the firearm inside the holster.” Ans. 12–13. The Examiner also
explains that “Velcro and snap closures are known in the art as releasable
closures, i.e. they are not permanent, meaning they can be fastened and
unfastened over and over again.” Id. at 13.
Appellant does not persuasively refute the Examiner’s position.
Although Appellant contends that “Deters is utterly silent regarding where
the Velcro or snap extends from” (Reply Br. 10 (emphasis omitted)),
Appellant does not specifically address the Examiner’s position that the tabs
at the top of Deters’s holster include one tab with Velcro (i.e., first portion)
on the internal layer and another tab with Velcro (i.e., a second portion) on
the external layer. See Non-Final Act. 8–9; Ans. 12–13. Appellant also
argues for the first time in the Reply Brief that Deters is silent as to “whether
the tabs which the Examiner equates with a strap are adjustable.” Reply
Br. 10. Although this argument is untimely (see 37 C.F.R. § 41.41(b)(2)),
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the argument is unpersuasive because Appellant does not proffer any
evidence or persuasive technical rationale that a person of ordinary skill in
the art would question the adjustability of Velcro-based closures, which are
well known in the art.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s determination that the subject matter of claim 11 would have
been obvious. Accordingly, we sustain the rejection of claim 11 as being
unpatentable over Deters, Boyle, and Carey.
Rejection III – Obviousness based on Deters, Boyle, Carey and Zubyk
With respect to this rejection of dependent claim 8, Appellant does not
set forth any additional substantive arguments separate from the arguments
discussed above concerning Rejection II of base claim 1. See generally
Appeal Br. Thus, for the same reasons that Appellant’s arguments do not
apprise us of error in Rejection II, Appellant also does not apprise us of error
in Rejection III. Accordingly, we sustain the rejection of claim 8 as being
unpatentable over Deters, Boyle, Carey, and Zubyk.
Rejection IV – Obviousness based on Deters and Boyle
In contesting this rejection, Appellant presents arguments for
independent claim 12 (see Appeal Br. 24–26), relies on the same arguments
for independent claim 17 (see id.), and does not separately argue dependent
claims 13, 14, 16, and 19–21. We select claim 12 as representative, and
claims 13, 14, 16, 17, and 19–21 stand or fall with claim 12.
In rejecting claim 12, which includes similar limitations as claim 1,
the Examiner relies on findings and reasoning that are substantially similar
to those set forth for the rejection of claim 1. See Non-Final Act. 10–11; see
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also Appeal Br. 25 (acknowledging that “Claim 12 includes similar
limitations as Claim 1”). That is, the Examiner relies on Deters to disclose
footwear having an integral firearm holster (Non-Final Act. 10 (citing
Deters, Figs. 1–3, ¶¶ 17–19, code (57))), and Boyle to teach an attachment
arrangement (id. at 10–11 (citing Boyle, Figs. 6, 11, ¶ 25)). The Examiner
determines that it would have been obvious to substitute Boyle’s attachment
arrangement for Deters’s attachment arrangement so that Deters’s holster
attaches to the footwear upper as claimed (i.e., a window in the upper
receives the holster such that an edge area of the first surface of the holster
internal layer engages the internal surface of the upper). Id. at 11.
Appellant initially relies on the same arguments and reasoning that we
found unpersuasive in connection with the rejection of claim 1. See Appeal
Br. 24–25. Appellant also argues that “[t]he backing material of Deters is
attached to the outside of the footwear of Deters. Therefore, it is unclear
how the backing material can be possibly forming a separately formed
portion of the internal surface of the upper.” Id. at 26. Appellant asserts
that, because
the backing layer of Deters is attached to an outer surface of the
upper (i.e. the internal surface of the “holster” is on the outer
surface of the upper[)], there is no structural conception of how
the internal surface of the ‘holster’ of Deters defines a
separately formed portion of the external surface of the upper.
Reply Br. 11 (emphasis omitted). According to Appellant, “a window as
recited in Claim 12 is receiving the holster and thus the internal surface of
the holster defines a separately formed portion of the external surface of the
upper.” Id.
We are unpersuaded by Appellant’s argument because it attacks
Deters individually, whereas the rejection is based on the combined
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teachings of Deters and Boyle. In particular, the Examiner proposes
replacing Deters’s holster attachment arrangement with the attachment
arrangement taught by Boyle. See Non-Final Act. 10–11. Replacing
Deters’s holster attachment arrangement (i.e., where the holster backing
material is stitched or riveted to external surface of upper) with Boyle’s
attachment arrangement would involve creating a window in the footwear
upper, which receives the holster internal layer such that an edge of the first
surface of the internal layer engages the internal surface of the upper. See
Ans. 7–8. In the resulting combination, the internal layer of Deters’s holster
(i.e., backing material) defines a portion of the upper’s internal surface and
the holster external layer defines a portion of the upper’s external surface.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s determination that the subject matter of claim 12 would have
been obvious. Accordingly, we sustain the rejection of claim 12, and of
claims 13, 14, 16, 17, and 19–21 falling therewith, as being unpatentable
over Deters and Boyle.
CONCLUSION
In summary,
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 7, 8,
12–14, 16, 17,
19–21
112(b) Indefiniteness 1–4, 7, 8,
12–14, 16,
17, 19–21
1–4, 7, 10, 11 103 Deters, Boyle,
Carey
1–4, 7, 10,
11

8 103 Deters, Boyle,
Carey, Zubyk
8
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Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
12–14, 16, 17,
19–21
103 Deters, Boyle 12–14, 16,
17, 19–21

Overall Outcome 1–4, 7, 8,
10–14, 16,
17, 19–21

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