Ex Parte Carstens

Board of Patent Appeals and Interferences

Mar 24, 2011

11311774 (B.P.A.I. Mar. 24, 2011)

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.
11/311,774 12/19/2005 Jerry Edward Carstens RUS-111 9188
26868 7590 03/25/2011
Hasse & Nesbitt LLC
8837 Chapel Square Drive
Suite C
CINCINNATI, OH 45249
EXAMINER
TOMPKINS, ALISSA JILL
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
03/25/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JERRY EDWARD CARSTENS1
____________

Appeal 2009-013279
Application 11/311,774
Technology Center 3700
____________

Before MICHAEL W. O’NEILL, DANIEL S. SONG, and
FRED A. SILVERBERG, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is RUSL, LLC. (App. Br. 3).
Appeal 2009-013279
Application 11/311,774

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The Appellant appeals under 35 U.S.C. § 134 from a Final Rejection
of claims 1-24. We have jurisdiction over this appeal under 35 U.S.C. § 6(b)
(2002).
In addition to the Appeal and Reply Briefs, the Appellant also relies
on a Declaration of inventor Mr. Carstens in support of patentability (App.
Br. 18; Evidence App'x).
The claimed invention is directed to a system for holding an electronic
device in an absorbent system that includes a body conforming holder.
Representative independent claim 1 reads as follows (App. Br. 17, Claims
App'x.):
1. An electronic device holding system comprising:
a) a body conforming, reusable, washable, textile holder
for removably holding at least one electronic device in close
bodily contact, said holder being a wrap or tube constructed to
enclose a portion of the body, and comprising an elastic region
comprising elastic woven or knit material suitable for use in a
reusable, washable holder, said elastic region having a high
stretch in both the lateral and longitudinal directions as
measured by having a Holding Force (HF-4.0) of greater than
about 0.1 kgf and a Holding Force (HF-3.0) of less than about
1.0 kgf; and
b) at least one electronic device capable of being
removably held in close bodily contact by said holder.

Independent claims 14 and 22 are similar, both requiring high stretch
in both the lateral and longitudinal directions, and having the Holding Force
requirements as recited in claim 1.
The evidence relied upon by the Examiner in rejecting the claims is:
Ishihara US 2006/0117458 Jun. 8, 2006

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Application 11/311,774

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The Examiner rejected claims 1-24 under 35 U.S.C. § 103(a) as
unpatentable over Ishihara.
We REVERSE.

ISSUE
The sole issue is whether the Examiner erred in concluding that
Ishihara renders obvious, the electronic device holding system claimed.
FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Ishihara describes an article of apparel 10 such as a wristband
20 that includes a separable electronic device 30 (¶ [0022]; Figs. 1, 2).
2. Ishihara describes that "[a]lthough a variety of textile materials
are suitable for wristband 20, exemplar textile materials include either
a single-sided terry knit textile or a double-sided terry knit textile."
(¶ [0023]).
3. Ishihara further describes that in addition to Lycra®, "[o]ther
material elements, in addition to the textile materials discussed above,
may be utilized for wristband 20." (¶ [0023]).
4. Ishihara further describes that the features of the invention may
be incorporated into gloves, shirts, pants, hats, socks, footwear,
underwear, coats, jackets and any article of apparel (¶ [0039]).
5. The Declaration of Mr. Carstens establishes that terry knit
wristbands typically have a Holding Force-3.0 of about 1.3 to 3.1 kgf
(Decl. ¶ 9).
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Application 11/311,774

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PRINCIPLES OF LAW
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The Court also noted that "[t]o facilitate review, this analysis should
be made explicit." KSR, 550 U.S. at 418, (citing In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness")).
"The inherent teaching of a prior art reference, a question of fact,
arises both in the context of anticipation and obviousness". In re Napier, 55
F.3d 610, 613 (Fed. Cir. 1995). Where the claimed and prior art products are
identical or substantially identical, "the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255
(CCPA 1977). Inherency "may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient." In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (citations and internal quotation marks omitted).
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ANALYSIS
The Examiner rejects claims 1-24 as being obvious in view of Ishihara
which discloses a wristband for holding an electronic device, the wristband
being made of a terry knit textile including a suitable elastic fiber (FF 1-3;
Ans. 4). The Examiner states "[a]lthough Ishihara does not specifically state
the holding force of the wristband, the wristband is capable of performing in
the claimed manner. The wristband is comprised of the same materials as
claimed and would therefore function in the same way." (Ans. 4-5). Hence,
the Examiner's position is essentially that the Holding Force properties as
claimed are inherent in the apparel disclosed in Ishihara.
The Appellant disagrees and contends that "[i]t would not have been
obvious from Ishihara to provide a holder having high stretch in both the
lateral and longitudinal directions and low Holding Force" as claimed (App.
Br. 9-10, emphasis in original). The Appellant relies on the Declaration of
Mr. Carstens as establishing that terry knit wristbands provide only one-way
stretch of about 100% in the longitudinal direction, and very low stretch of
less than about 20% in the lateral direction (App. Br. 10; see also Decl. ¶ 6).
In contrast, the claimed invention requires high stretch in the lateral
direction which is argued as being "greater than about 70% stretch, along
with high stretch in the longitudinal direction greater than 100% stretch[,]"
and the holders of the invention are further argued as typically providing
"stretch in both directions of greater than 200%." (App. Br. 10; see also
Decl. ¶ 6).
We find the Appellant's argument persuasive in view of the
Declaration evidence. The Examiner's initial position that the terry knit
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wristband of Ishihara inherently satisfies the limitations of the claims
because it is made of a terry knit textile was entirely reasonable and
appropriate. However, the Declaration of Mr. Carstens establishes through
objective evidence that terry knit wristbands typically have a Holding Force-
3.0 of about 1.3 to 3.1 kgf (FF 5) using the measurement method set forth in
the Appellant's specification (Decl. ¶ 9). Thus, the evidence rebuts the
Examiner's position.
Whereas the Examiner observes that Ishihara does not limit the textile
material of the disclosed wristband 20, and discloses other types of apparel
(FF 2-4; Ans. 5), no other specific textile beyond terry knit material appears
to be disclosed in Ishihara or relied upon by the Examiner. Hence, it would
be speculative to find that such unspecified textiles or the apparel generally
identified in Ihsihara would have the degree of stretch in both longitudinal
and lateral directions with the corresponding Holding Force as claimed in
the rejected claims. The Examiner also does not articulate a rational basis
for providing apparel, whether it is a wristband or any of the other disclosed
apparel items of Ishihara, having a degree of stretch in both longitudinal and
lateral directions, with the corresponding Holding Force as claimed. Thus,
we do not sustain the Examiner's rejection.

DECISION
The Examiner's rejection of claims 1-24 under 35 U.S.C. § 103(a) as
unpatentable over Ishihara is REVERSED.

REVERSED

ack
Appeal 2009-013279
Application 11/311,774

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Hasse & Nesbitt LLC
8837 Chapel Square Drive
Suite C
Cincinnati, OH 45249