Ex Parte Duffin

Patent Trial and Appeal Board

Sep 12, 2016

13198250 (P.T.A.B. Sep. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/198,250 08/04/2011
92983 7590 09/14/2016
Jason P. Webb
1204 W South Jordan Pkwy
Ste B2
South Jordan, UT 84095
FIRST NAMED INVENTOR
Robert LaGrand Duffin
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5337.2.lNP 7417
EXAMINER
ANNIS, KHALED
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
09/14/2016 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):
dok@jpwebb.us
mariella@jpwebb.us
j ason@jpwebb.us
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT LAGRAND DUFFIN
Appeal2014-007549
Application 13/198,250
Technology Center 3700
Before KEN B. BARRETT, EDWARD A. BROWN, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert L. Duffin ("Appellant") appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 1-3, 8-10, and 15-18. 1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Claims 4--5, 7, 11, 12, 14, and 19-20 are withdrawn from consideration.
Non-Final Action 1 (dated October 10, 2013, "Non-Final Act."). Claims 6
and 13 are cancelled. Appeal Br. 27, 30 (Claims App.).
Appeal2014-007549
Application 13/198,250
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An absorbent sleeve configured to rest above a shoulder of a
user and to enable a user to envelop a user's head, thereby
enabling the user to absorb fluids disposed thereon by manual
manipulation thereof, without the sleeve being in substantial
contact with other parts of a user's body, consisting of:
a) a cylindrical member having a cross-sectional area
between about 180 cm/\2 and about 450 cm1\2, and a height
between about 20 cm and about 30 cm, consisting of:
al) a looped layer of absorbent material;
a2) a first aperture through a first end of the
cylindrical member; and
a3) a second aperture through a second end of the
cylindrical member, opposite the first end;
b) a first cinch loop coupled about the first aperture of the
cylindrical member and consisting of:
b 1) a first mode, wherein a cross-sectional area of
the first cinch loop is substantially smaller than the cross-
sectional area of the cylindrical member; and
b2) a second mode, wherein a cross-sectional area
of the first cinch loop is substantially equal to the cross-
sectional area of the cylindrical member; and
c) an elastic loop coupled about the second aperture of the
cylindrical member and consisting of:
c 1) a first mode, wherein a cross-sectional area of
the elastic loop is substantially smaller than the cross-
sectional area of the cylindrical member; and
c2) a second mode, wherein a cross-sectional area
of the elastic loop is substantially equal to the cross-
sectional area of the cylindrical member.
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Appeal2014-007549
Application 13/198,250
REJECTION
Claims 1-3, 8-10, and 15-18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sivret (US 5,960,478, iss. Oct. 5, 1999).
DISCUSSION
The Examiner finds that Sivret discloses all the limitations of claim 1
except that the "loop coupled about the second aperture" is not specifically
disclosed as elastic (or inelastic), and the recited area and height of the
cylindrical member, are not disclosed in Sivret. Non-Final Act. 4---6. The
Examiner reasons, however, that "[p ]roviding an elastic loop is a mere
substitution of a well-known material with another," and concludes that one
of ordinary skill in the art "would be motivated to experiment with different
well-known materials including elastic loops made of well-known elastic
material to obtain optimum configuration and to maximize durability,
comfort and functionality of the device." Id. at 6. With respect to the area
and height of the cylindrical member of Sivret, the Examiner asserts that
only routine skill in the art would be required to determine optimum
dimensions. Id.
Appellant contends it would not have been obvious to substitute an
elastic loop for Sivret's drawstring 46 and toggle 48 "because the two
structures function differently." Appeal Br. 10. Appellant argues that an
elastic loop has only one resting mode, while a drawstring and toggle have
an infinite number of resting modes. Id. Appellant also contends that the
result of substituting an elastic loop would be a structure comfortable for
only a small portion of users, thus leading one of ordinary skill in a direction
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Application 13/198,250
divergent from that taken by Appellant. Id. at 14. Appellant, relying on
Croes, Inc. v. U.S. International Trade Commission, 598 F.3d 1294 (Fed.
Cir. 2010), similarly argues that Sivret teaches away from the use of elastic
materials. Id. at 16-17.
Appellant also contends that the Examiner erred because Sivret does
not teach the first and second modes of the first cinch loop, whereby the
"cross-sectional area of the first cinch loop is substantially smaller than the
cross-sectional area of the cylindrical member" (Id. at 20-22) and the
"cross-sectional area of the first cinch loop is substantially equal to the
cross-sectional area of the cylindrical member." Id. at 22-25. Appellant
argues that these claim recitations cannot be determined from Sivret's
drawings. Id.
The Examiner responds that the recited "elastic" loop is a mere
substitution of a well-known material with another. Ans. 3. The Examiner
explains that Sivret's drawstring and toggle can be used to manipulate the
length of the drawstring resulting in the recited first and second modes. Id.
at 3--4.
Appellant's first contention that utilizing an elastic material for
Sivret's drawstring 46 would not have been obvious to one of ordinary skill
in the art as a simple substitution of materials is not persuasive for the
following reasons. First, Appellant points to several portions of Sivret to
support the contention that Sivret does not teach that drawstring 46 is made
from an elastic material. Appeal Br. 17-18 (citing Sivret Figs. 2-8; col. 3,
11. 16-20, 52-58). However, the cited portions are silent as to the material of
construction of drawstring 46 or whether the material should be elastic or
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Appeal2014-007549
Application 13/198,250
inelastic. Consequently, Appellant's contention that Sivret's drawstring is
not made from an elastic material is speculative.
Second, in Croes, Inc., the Federal Circuit held that substituting a
foam footwear strap for prior art elastic straps would not have been obvious
because the prior art specifically discouraged and taught away from the use
of foam straps. The Federal Circuit noted that the prior art depicted "foam
as unsuitable for straps" and "attaching footwear to the foot-required under
the prior art a material with enough elasticity around the Achilles tendon to
allow 'give and take' as the foot moved in the shoe." Croes, Inc., 598 F.3d
at 1308. In the present case, Sivret does not discuss the unsuitability of
elastic materials for drawstring 46. Therefore, Appellant's contention that
Sivret teaches away from the use of elastic material for the drawstring is not
persuasive.
With respect to the claimed first and second modes of the first cinch
loop, the Examiner finds that the length of Sivret' s drawstring can be
manipulated by tightening or loosening toggle fastener 36 resulting in the
two modes. Non-Final Act. 5. Appellant does not address the Examiner's
assertion that the length of Sivret' s drawstring is adjustable by the toggle
fastener, but rather argues that the length of the first cinch loop cannot be
definitively determined by reference to Sivret's drawings. Appeal Br. 20-
25. Appellant's argument is not persuasive because the Examiner does not
rely on Sivret's drawings for disclosure of the first and second modes, but
relies on the fact that the length of the drawstring can be adjusted by the
toggle. We also note Appellant admits that Sivret's drawstring and toggle
permit the length of the drawstring to be adjusted "to any desired size."
Appeal Br. 16.
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Appeal2014-007549
Application 13/198,250
Appellant, thus, fails to persuasively apprise us of error in the
Examiner's factual findings or rationale quoted above for rejecting claim 1
as unpatentable over Sivret. We thus sustain the rejection of claim 1 under
35 U.S.C. § 103(a). Appellants do not argue separately for the patentability
of dependent claims 2 and 3. We also sustain the rejection of claims 2 and
3.
Independent claims 8 and 15 each recite that "the absorbent sleeve
does not include a hood." Appeal Br. 29, 31 (Claims App.). The Examiner
finds that when apparel accessory 10 is configured as shown in Sivret's
Figures 5 and 6, it does not include a hood. Non-Final Act. 7. Appellant
contends that the Examiner erred in the rejection of claims 8 and 15 because
Sivret's garment includes a hood. Appeal Br. 19.
Sivret discloses apparel accessory 10 that includes hood portion 12.
Sivret, Fig. 2; col. 3, 11. 2-5. Apparel accessory 10 can be manipulated into
various configurations by the user. See id., Figs. 2-8.
Appellant's contention is persuasive. Figures 5 and 6 of Sivret
illustrate embodiments that include hood portion 12, but where the user's
head extends completely through opening 20 and hood portion 12 is folded
downward toward the shoulders. Sivret, col. 3 11. 6-11, 11. 44-48. The
Examiner's finding that Sivret "does not include a hood when worn as [a]
neck tube" (Ans. 3) is not supported by a preponderance of the evidence. As
the rejection of claims 8 and 15 is based on an erroneous factual finding, the
conclusion of obviousness cannot stand. See In re Warner, 379 F.2d 1011,
1017 (CCPA 1967) (Holding that "[t]he legal conclusion of obviousness
must be supported by facts. Where the legal conclusion is not supported by
facts it cannot stand."). Therefore, we do not sustain the rejection of claim 8
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Application 13/198,250
and claims 9 and 10 which are dependent on claim 8. We also do not sustain
the rejection of claim 15 and claims 16-18 which are dependent on claim 15.
DECISION
The Examiner's decision rejecting claims 1, 2, and 3 is affirmed.
The Examiner's decision rejecting claims 8-10 and 15-18 is reversed.
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)(l )(iv).
AFFIRMED-IN-PART
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