Ex Parte Coenen et al

Patent Trial and Appeal Board

Oct 29, 2012

10954989 (P.T.A.B. Oct. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOSEPH DANIEL COENEN, ROBERT LEE POPP, and
HEATHER SCHENCK MORTELL
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Appeal 2011-004298
Application 10/954,989
Technology Center 3700
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Before JOHN C. KERINS, STEFAN STAICOVICI, and
WILLIAM V. SAINDON, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Joseph Daniel Coenen et al. (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner’s decision finally rejecting claims 1-4, 6, 9-11, 13,
14, 16-22, 24-33, and 35-39 under 35 U.S.C. § 103(a) as unpatentable over
Nordness (US 2004/0116881 A1, published Jun. 17, 2004). Claims 5 and 7
have been withdrawn and claims 8, 12, 15, 23, and 34 have been cancelled.
We have jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to “boxer shorts and methods of making
boxer shorts having side seams and selectively expanded areas.” Spec. 1,
para. [0002].
Claims 1 and 19 are illustrative of the claimed invention and read as
follows:
1. A pant made from a web, the pant comprising:
a garment shell, the garment shell including a front region, a
back region, a crotch region positioned between the front and back
regions, a front waist edge, a back waist edge, side seams connecting
the front region to the back region, two leg openings, and hanging
legs, at least a portion of each of the front region, the back region, and
the hanging legs comprising portions of the web;
wherein the crotch region comprises an expandable material, at
least a portion of the expandable material being set in an expanded
configuration relative to the front region.

19. A method of making a pant having side seams and hanging
legs, comprising:
providing a web having a crotch region positioned between a
front region and a back region;
defining a leg opening along each of two transversely opposed
edges of the web in the crotch region;
providing an expandable material in the crotch region;
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setting at least a portion of expandable material in the crotch
region in an expanded configuration relative to the front region; and
attaching the front region and the back region together to form
the side seams.

SUMMARY OF DECISION
We REVERSE.

ANALYSIS
Independent claims 1 and 10 require that a crotch region and,
respectively, a back region, of the claimed pant, include “an expandable
material,” with “at least a portion of the expandable material being set in an
expanded configuration relative to the front region.” App. Br., Claims
Appendix. Similarly, independent claims 19 and 29 require providing an
expandable material in a crotch region, and, respectively, a back region, and
“setting at least a portion of [the] expandable material . . . in an expanded
configuration relative to the front region.” Id.
The Examiner found that Nordness discloses all the limitations of
independent claims 1, 10, 19, and 29, but “does not explicitly state that the
expanded configuration is relative to a specific region.” Ans. 4.
Nonetheless, the Examiner concluded that, “it would have been obvious to
one of ordinary skill in the art to modify the areas of expansion as desired[,]
as Nordness acknowledges that the shell may include both inelastic and
elastic polymers.” Ans. 4, 6. Pointing to paragraphs [0055], [0057], and
[0086], the Examiner found that Nordness discloses “a crotch area that
includes a stretch bonded laminate (SBL) material,” which is a “material
[that] is extended or expanded when bonded.” Ans. 6. Thus, according to
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the Examiner, “[s]ince the material of Nordness is a SBL,” which “by
definition [is] a stretch and set material,” the expandable material in the
crotch area of the pant of Nordness “is fully capable of being set/expanded
as claimed” and as such, “is set relative to some portion of the garment.”
Ans. 6-7. The Examiner also noted that because the front/back region “can
reasonably include the waist region, which is not necessarily ‘expanded,’”
the expanded crotch of Nordness “would be expanded relative to the
respective region.” Ans. 4, 6.
Although we appreciate that the stretch bond laminate of Nordness is
an expandable material, and is capable of being set in an expanded
configuration, nonetheless, we agree with Appellants that Nordness fails to
teach that any of the disclosed materials are incorporated only in the crotch
region (as per claims 1 and 19) or the back region (as per claims 10 and 29).
App. Br. 7 and 10-12. Merely because garment shell 64 of Nordness
contains “blends of elastic and inelastic polymers” and is capable of being
set in an expanded configuration does not mean that the pant of Nordness
necessarily includes an elastic region and an inelastic region, as the
Examiner proposes. See Nordness, para. [0086]. Although we appreciate
that Nordness discloses a wide variety of materials that can be used for shell
64, we could not find any portion in Nordness and the Examiner has not
pointed to any portion that discloses using different materials for different
portions of shell 64.1 In other words, we agree with Appellants that
Nordness fails to teach that the materials of Nordness “may be included only

1 Pant 10 of Nordness includes a garment shell 64 including a front
panel 12, a back panel 14, and two leg panels 16. Nordness, para. [0064]
and figs. 1 and 1A.
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in portions of the garment shell 64,” that is, Nordness fails to “provide for a
crotch region that comprises a different material than the rest of the shell
[64] of the pant.” App. Br. 7.
Moreover, “the Examiner provides no rationale whatsoever why one
skilled in the art would set the expandable materials of Nordness et al. in an
expanded configuration,” as called for by each of independent claims 1, 10,
19, and 29. See Reply Br. 2. See also, App. Br. 8. Without an articulated
reasoning based on rational underpinning for modifying the reference as
proposed, the Examiner's rejection appears to be the result of hindsight
analysis. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with
approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007))
("rejections 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").
Merely because the pant of Nordness can be modified to include a crotch
region and, respectively, a back region, set in an expanded configuration
relative to a front region, this does not mean that one of ordinary skill in the
art would do so, without evidence or reasoning tending to demonstrate the
obviousness of the particularly claimed configuration.
Finally, we do not agree with the Examiner’s position that the
front/back region of Nordness’ pant “reasonably include[s] the waist
region.” See Ans. 4 and 6. Nordness specifically discloses front panel 12,
back panel 14, front waist edge 38 and back waist edge 39. Nordness, para.
[0064] and figs. 1 and 1A. Similarly, independent claims 1 and 10 recite,
inter alia, “a front region, a back region, . . . a front waist edge, a back waist
edge.” App. Br., Claims Appendix. Thus, in contrast to the Examiner’s
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position, we find that the waist region of Nordness’ pant includes the front
and back waist edges, but not the front and back regions.
In conclusion, for the foregoing reasons, the rejection of independent
claims 1, 10, 19, and 29, and their respective dependent claims 2-4, 6, 9, 11,
13, 14, 16-18, 20-22, 24-28, 30-33, and 35-39 under 35 U.S.C. § 103(a) as
unpatentable over Nordness cannot be sustained. See In re Fine, 837 F.2d
1071, 1076 (Fed. Cir. 1988) (If an independent claim is nonobvious under 35
U.S.C. § 103, then any claim dependent therefrom is nonobvious).

SUMMARY
The decision of the Examiner to reject claims 1-4, 6, 9-11, 13, 14, 16-
22, 24-33, and 35-39 is reversed.

REVERSED

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