Ex Parte 6,598,235 B2 et al

Patent Trial and Appeal Board

May 24, 2016

90012424 (P.T.A.B. May. 24, 2016)

MOD PTOL-90A (Rev.06/08)

APPLICATION NO./
CONTROL NO.
FILING DATE FIRST NAMED INVENTOR /
PATENT IN REEXAMINATION
ATTORNEY DOCKET NO.
EXAMINER
ART UNIT PAPER NUMBER
DELIVERY MODE
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.
UNITED STATES DEPARTMENT OF COMMERCE
U.S. Patent and Trademark Office
Address : COMMISSIONER FOR PATENTS
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UNITED STATES PATENT AND TRADEMARK OFFICE
_____________________________________________________________________________________
90/012,424 08/08/2012 6,598,235 B2
ENGLISH, PETER C
3993
MAIL DATE
05/24/2016
7590 05/24/2016
ATHALENE APRIL BULLA
7108 NORTH PALLM OAK DRIVE
HERNANDO, FL 34442
PAPER
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ATHALENE APRIL BULLA
____________________

Appeal 2016-003014
Reexamination Control 90/012,424
Patent No. US 6,598,235 B2
Technology Center 3900
____________________

Before MARC S. HOFF, JOHN C. KERINS, and
STEVEN D.A. McCARTHY,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
1–28. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We affirm.
U.S. Patent No. 6,598,235 B2 (“’235 patent”) issued to Bulla on July
29, 2003.1 The ’235 patent is a device for applying heat from a heating
device to an appendage of a wearer. The device includes a base layer

1 The owner of record of the ʼ235 patent, and thus the real party in interest,
is Lavagear Inc. of Sayville, New York.
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including a pocket, with the base layer being configured to accommodate the
appendage of the wearer. The pocket is configured for removable insertion
of the heating device, so that when the heating device is inserted in the
pocket and the device is worn by the wearer, heat from the heating device is
applied to the appendage. Abstract.
Claim 1 illustrates the claims on appeal:
1. A body fitting garment, said garment having an open end
for receiving a body portion of the wearer and a second open
end for receiving a body portion of that body portion to pass
through comprising:
a base layer including a pocket, the base layer configured
to accommodate the appendage of the wearer, the pocket
configured for removable insertion of a heating device so that
when the heating device is inserted in the pocket and the device
is worn by the wearer, heat from the heating device is applied to
the appendage[,]
wherein the body garment covers a major muscle group
of the body portion.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Arango US 3,882,873 May 13, 1975
Abare US 4,527,566 July 9, 1985
Barry et al. (“Barry”) US 5,038,779 Aug. 13, 1991
Gnegy US 5,152,285 Oct. 6, 1992
Stafford et al. (“Stafford”) US 5,395,400 Mar. 7, 1995
Brunson et al. (“Brunson”) US 5,466,251 Nov. 14, 1995
Rosenwald US 5,496,358 Mar. 5, 1996
Simmons et al. (“Simmons”) US 5,605,144 Feb. 25, 1997
Brink et al. (“Brink”) US 5,697,962 Dec. 16, 1997
Picchione, II (“Picchione”) US 6,029,277 Feb. 29, 2000

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Throughout this decision, we make reference to Appellants’ Brief
(“App. Br.,” filed Apr. 29, 2015) and Reply Brief (“Reply Br.” filed Aug.
22, 2015), and the Examiner’s Answer (“Ans.,” filed May 22, 2015) for their
respective details.
REJECTIONS
The claims stand rejected as follows:
Claims 1, 3, 9, 10, 13, 16, 21, and 24 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Brunson.
Claims 1, 2, 9, 12, 13, 17, 21, and 26 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Brink.
Claims 13, 16, and 18 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Barry.
Claim 13 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Arango.
Claims 1, 2, 4–6, 8–11, 13, 15, 16, 18–21, 23–25, 27, and 28 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Abare and
Stafford.
Claims 11, 18, and 25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Abare, Stafford, and Simmons.
Claims 12, 17, and 26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Abare, Stafford, and Gnegy.
Claims 1, 3–6, 9–11, 13, 16, 18–21, 24, 25, 27, and 28 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Brunson and Stafford.
Claims 11, 18, and 25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Brunson, Stafford, and Simmons.
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Claims 1, 3–8, 10, 11, 13–16, 18–25, 27, and 28 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Picchione and Stafford.
Claims 1, 2, 4–10, 13–16, 19–24, 27, and 28 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Rosenwald and Stafford.
Claims 12, 17, and 26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Rosenwald, Stafford, and Gnegy.

ISSUES
Appellant argues, inter alia, that wrap 2 of Brink is not worn over a
major muscle group of the person’s body. App. Br. 57–59. Appellant
contends that Brink does not disclose a base layer including a pocket as
claimed. App. Br. 58, 61. Appellant further argues that Brink does not
inherently disclose the limitations of the patent claims. App. Br. 58–63.
Appellant argues against the combinability of Picchione and Stafford
by referring to her prior argument regarding the combinability of Abare and
Stafford. App. Br. 166–169. In that argument, it is Appellant’s position that
Stafford teaches away from combination with Picchione because Stafford
teaches insulation material to provide thermal protection for the user’s skin,
whereas Picchione (and Abare, in the rejection argued) discloses the use of a
thin, breathable material. App. Br. 111–117. Appellant contends that
Stafford teaches away from the use of exothermic heat-generating packs
next to a person’s joints or extremities, due to the heat pack temperatures
mentioned in Stafford. App. Br. 107, 112–113, 138–140, 143–148.
Appellant’s arguments present the following issues:
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1. Does Brink disclose a wrap that is worn over a major muscle
group?
2. Does Brink disclose a base layer including a pocket?
3. Does Brink expressly or inherently disclose the limitations of the
claimed invention?
4. Does Stafford’s disclosure of insulation between its heat pack and a
person’s body constitute a teaching away from Appellant’s invention?
5. Does Stafford’s disclosure of heat packs next to a user’s skin,
joints, or extremities teach away from Appellant’s invention?

PRINCIPLES OF LAW
The determination of obviousness must consider, inter alia, whether a
person of ordinary skill in the art would have been motivated to combine the
prior art to achieve the claimed invention and whether there would have
been a reasonable expectation of success in doing so. Brown & Williamson
Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1124 (Fed. Cir. 2000);
Medichem S.A. v. Rolabo S.L., 437 F.3d 1157, 1164 (Fed. Cir. 2006). Where
the teachings of two or more prior art references conflict, the Examiner must
weigh the power of each reference to suggest solutions to one of ordinary
skill in the art, considering the degree to which one reference might
accurately discredit another. In re Young, 927 F.2d 588, 591 (Fed. Cir.
1991). If the proposed modification would render the prior art invention
being modified unsatisfactory for its intended purpose, then there is no
suggestion or motivation to make the proposed modification. In re Gordon,
733 F.2d 900, 902 (Fed. Cir. 1984). Further, our reviewing court has held
that “[a] reference may be said to teach away when a person of ordinary
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skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994); Para-Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d 1085,
1090 (Fed. Cir. 1995).

ANALYSIS
OBVIOUSNESS REJECTION OF CLAIMS 1, 3–8, 10, 11, 13–16, 18–25, 27, AND 28
OVER PICCHIONE AND STAFFORD
Appellant’s arguments against this combination are entirely concerned
with Stafford allegedly teaching away from the use of exothermic heat packs
adjacent to a person’s body. App. Br. 166–169. Appellant appears to argue
that Stafford’s invention, featuring insulated heat packs proximate to the
user’s head, teaches away from use on other parts of the body. Id. We are
not persuaded by Appellant’s arguments, and we adopt the Examiner’s
findings and conclusions as our own.
A reference may be said to teach away “when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” Gurley, 27 F.3d at 553. We note
that both Picchione and Stafford are concerned with garments, meant to be
worn on the body, having pockets into which one may place a heat pack.
The Examiner relies upon Stafford only for its disclosure of heat packs that
contain iron powder and are air-activated, and for access openings located
on the inner walls of the pockets facing the wearer. Ans. 25. The Examiner
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does not rely on Stafford to disclose heat packs at any particular
temperature, as such a feature is not claimed. The Examiner does not rely
on Stafford to teach any other structural features of the garment; rather,
Picchione is cited for such teachings. As the Examiner noted, Stafford
discloses the option to use insulation to mitigate the potential problem of
excess heat being applied to a user’s body. See Ans. 25. Because of this
teaching, we conclude that a person of ordinary skill in the art, upon reading
Stafford, would not be discouraged from following Stafford’s teachings, or
be led in a direction divergent from that taken by Appellant. That Stafford’s
particular invention is employed on the wearer’s head does not amount to a
teaching away from using the Stafford device on other parts of the body.
Stafford also does not teach away from using, in conjunction with garments
employed on other parts of the body, heat packs that contain iron powder
and are air-activated; nor the use of access openings located on the inner
walls of the pockets facing the wearer.
The Federal Circuit recently held that the person having ordinary skill
in the art would have found it obvious to lower the pivot axis of a wheelchair
in accordance with the teachings of the prior art. Such lowering would
enable the front caster wheel to move “rear upward” and thereby more easily
rise up and overcome an obstacle such as a curb. The court recognized that
such a modification would come at the cost of introducing instability
problems in the wheelchair, but reasoned that the skilled artisan would have
“known to compensate for” the instability problems in ways that preserved
the acceptability of the wheelchair. Pride Mobility Products Corp. v.
Permobil, Inc., Nos. 2015-1585, 2015-1586, slip op. at 13 (Fed. Cir. Apr. 5,
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2016). Similarly, in this appeal, a person having ordinary skill in the art
would have found it obvious to use air-activated iron powder heat packs, and
provide access openings on the inner walls of the pockets facing the wearer,
so as to efficiently apply heat to the wearer’s body. Just as in Pride
Mobility, the skilled artisan would have known to compensate for any
potentially excess heat in ways that preserved the acceptability of the
garment — for example, by controlling “the amount of air which the packet
is allowed to access and, therefore, the amount of heat which the packet is
made to generate.” Stafford col. 3:34–36.
We conclude that the Examiner did not err in rejecting claims 1, 3–8,
10, 11, 13–16, 18–25, 27, and 28 as unpatentable over Picchione and
Stafford. We sustain the § 103 rejection.

ANTICIPATION REJECTION OF CLAIMS 1, 2, 9, 12, 13, 17, 21, AND 26 OVER
BRINK
We are not persuaded by Appellant’s arguments regarding the
rejection over Brink, and we adopt the Examiner’s findings as our own.
We agree with the Examiner’s finding that Brink discloses a body
garment covering a major muscle group. Brink illustrates the covering of a
portion of a person’s thigh, a portion of a person’s calf, and the entire knee
region. Brink Fig. 5. The ’235 patent contains embodiments in which the
same area of the body is covered by the body garment. See Figs. 20–25.
We agree with the Examiner that Brink discloses a base layer formed
in part by flexible layer 20 of pile material 22 on a foam substrate. Fig. 3;
col. 4, l. 62 – col. 5, l. 14. This base layer includes pockets 10a, 10b having
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access openings 16a, 16b configured for removable insertion of heating
members. See Figs. 1, 3; col. 3, l. 58 – col. 4, l. 19.
Appellant’s argument that the access openings 16a, 16b of Brink are
constructed on the outside of the garment, whereas the openings in the ’235
patent face the wearer on the inside of the garment (App. Br. 64), is not
germane to the particular claims rejected as being anticipated by Brink,
which do not recite such limitations.
Appellant’s argument that the heating devices of Brink may be
inserted and removed without removing the apparatus from the wearer (App.
Br. 67–68) is also not persuasive of Examiner error, because it is not
germane to the invention recited in the rejected claims.
Appellant’s arguments concerning inherency (App. Br. 58–63) are
also unpersuasive, in view of our findings that Brink explicitly discloses the
limitations of the rejected claims.
We find that the Examiner did not err in rejecting claims 1, 2, 9, 12,
13, 17, 21, and 26 as being anticipated by Brink. We sustain the § 102
rejection.
SECONDARY CONSIDERATIONS OF NONOBVIOUSNESS
We are not persuaded of Examiner error by Appellant’s argument and
evidence concerning secondary considerations of nonobviousness.
Appellant asserts commercial success of the patented product based
on the allegation that several competitors are selling the product. Bulla
Decl. 3–4; Reply Br. 13–15. Appellant, however, has provided no evidence
regarding the dollar amount of any sales, either by Appellant or by any other
entity, and no evidence regarding market share. Appellant has also failed to
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establish any nexus between the limitations of the claimed invention and any
alleged commercial success.
Appellant argues that the invention “was copied and infringed upon
after one meeting.” Bulla Decl. 5. Even if true, more than the mere fact of
copying is necessary to make such copying significant, because copying may
be attributable to other factors such as a lack of concern for patent property
or contempt for the patentee’s ability to enforce the patent. Cable Electric
Products, Inc. v. Genmark, Inc., 770 F.2d 1015 (Fed. Cir. 1985). Evidence
of copying was persuasive of nonobviousness when an alleged infringer
tried for a substantial length of time to design a product or process similar to
the claimed invention, but failed and then copied the claimed invention
instead. Dow Chem. Co. v. American Cyanamid Co., 816 F.2d 617 (Fed.
Cir. 1987). Alleged copying is not persuasive of nonobviousness when the
copy is not identical to the claimed product, and the other manufacturer had
not expended great effort to develop its own solution. Pentec, Inc. v.
Graphic Controls Corp., 776 F.2d 309 (Fed. Cir. 1985). Appellant has not
provided evidence that any alleged infringer tried for any substantial length
of time to design a similar product or process. Appellant has not supplied
evidence to establish that the allegedly copied product is identical to the
claimed invention. Accordingly, Appellant’s declaration evidence
concerning copying is not persuasive to show Examiner error.

OTHER REJECTIONS NOT SPECIFICALLY DISCUSSED
In affirming the rejected claims on appeal on these grounds, we
decline to address the merits of additional grounds of rejection appealed by
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the Patent Owner. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed.
Cir. 1984) (having decided a single dispositive issue, the ITC was not
required to review other matters decided by the presiding officer).
Therefore, unless specifically mentioned, we do not reach the anticipation
rejections over Brunson, Barry, or Arango. We also do not reach the
obviousness rejections over Abare and Stafford; Abare, Stafford, and
Simmons; Abare, Stafford, and Gnegy; Brunson and Stafford; Brunson,
Stafford, and Simmons; Rosenwald and Stafford; or Rosenwald, Stafford,
and Gnegy.

CONCLUSIONS
1. Brink discloses a wrap that is worn over a major muscle group.
2. Brink discloses a base layer including a pocket.
3. Brink expressly discloses the limitations of the claimed invention.
4. Stafford’s disclosure of insulation between its heat pack and a
person’s body does not constitute a teaching away from Appellant’s
invention.
5. Stafford’s disclosure of heat packs next to a user’s skin, joints, or
extremities does not teach away from Appellant’s invention.
DECISION
The Examiner’s decision to reject claims 1–28 is affirmed.
Requests for extensions of time in ex parte reexamination proceedings
are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED
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Patent Owner:

Athalene April Bulla
7108 North Palm Oak Drive
Hernando, FL 34442

Third Party Requester:

Buckingham, Doolittle & Burroughs, LLP
3800 Embassy Parkway, Suite 300
Akron, OH 44333-8332