Ex Parte GaffneyDownload PDFPatent Trial and Appeal BoardAug 29, 201613843046 (P.T.A.B. Aug. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/843,046 03/15/2013 John Travis Gaffney 93756 7590 08/31/2016 Adam R Stephenson, LTD, 40 W. Baseline Rd., Ste 101 Tempe, AZ 85283 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. AME042 8038 EXAMINER COLLADO, CYNTHIA FRANCISCA ART UNIT PAPER NUMBER 3781 NOTIFICATION DATE DELIVERY MODE 08/31/2016 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): ipdocket@iptech.law adam@iptech.law PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN TRAVIS GAFFNEY Appeal 2014-009544 1,2 Application 13/843,046 Technology Center 3700 Before PHILIP J. HOFFMANN, JAMES A. WORTH, and KENNETH G. SCHOPPER, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the rejection of claims 1--4, 6-8, and 10. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Our decision references Appellant's Specification ("Spec.," filed Mar. 15, 2013), Appeal Brief ("Appeal Br.," filed Apr. 25, 2014), and Reply Brief ("Reply Br.," filed Sept. 4, 2014), as well as the Examiner's Answer ("Answer," mailed July 17, 2014). 2 According to Appellant, John Travis Gaffney is the real party in interest. Appeal Br. 3. Appeal2014-009544 Application 13/843,046 Claims 1, 6, 8, and 10 are the only independent claims. See Appeal Br., Claims App. We reproduce claims 1 and 10, below, as representative of the appealed claims. Id. 1. A golf club head cover comprising: a body portion defining an internal cavity for receiving a golf club head; a first flap disposed on the body portion, the first flap comprising a first fastener enclosed in a first pocket, the first pocket coupled within material of the first flap; and a second flap disposed on the body portion, the second flap comprising a second fastener enclosed in a second pocket, the second pocket coupled within material of the second flap; wherein the first fastener and the second fastener substantially align with each other when the first flap is held against the second flap through the first fastener and the second fastener. 10. A golf club head cover comprising: a body portion defining an internal cavity for receiving a golf club head; a first flap disposed on the body portion, the first flap comprising a first magnetic fastener enclosed in a first pocket; and a second flap disposed on the body portion, the second flap comprising a second magnetic fastener enclosed in a second pocket; wherein the first magnetic fastener and the second magnetic fastener substantially align with each other; and wherein the entire gross external shape of the first pocket and the entire gross external shape of the second pocket are coupled to the first flap and to the second flap, respectively. 2 Appeal2014-009544 Application 13/843,046 REJECTION AND PRIOR ART3 The Examiner rejects claims 1--4, 6, and 8-10 under 35 U.S.C. § 102(b) as anticipated by Kim (US 7,699,083 Bl, iss. Apr. 20, 2010). See Answer 3-5. ANALYSIS Independent claim 1, from which claims 2--4 depend, recites the limitations a first flap disposed on the body portion, the first flap comprising a first fastener enclosed in a first pocket, the first pocket coupled within material of the first flap; and a second flap disposed on the body portion, the second flap comprising a second fastener enclosed in a second pocket, the second pocket coupled within material of the second flap. Appeal Br., Claims App. (emphases added). Appellant argues that the Examiner's rejection is erroneous because Kim does not show fasteners enclosed in pockets that are within the material of the flaps. See Appeal Br. 20-21; see also Reply Br. 4--5. More specifically, Appellant argues that "the alleged 'pockets' of Kim are not coupled 'within material of any flaps but, instead, are only located on the peripheral edges of structures of the device of Kim." Appeal Br. 21; see also Reply Br. 5. Based on our review of Kim, including the figures reproduced and annotated by the Examiner, we determine that the Examiner fails to establish that Kim teaches pockets within the material of the flaps. See Answer 7-8, reproducing Kim's 3 The Examiner maintains the objection to claims 5, 7, and 11 made in the Final Office Action mailed February 21, 2014. See Final Office Action 5. Inasmuch as these claims are not rejected, we do not further review the claims. 3 Appeal2014-009544 Application 13/843,046 Fig. lB. Rather, consistent with Appellant's argument, it appears that material strips 22a and 22b are connected to, rather than within, the flaps. See Kim Fig. lB; see also id. at col. 2, 11. 47--48 ("Each material strip 22 a,b is connected to its respective section of the golf club head cover.") (underlining and italics added). Thus, we do not sustain the anticipation rejection of independent claim 1 or its dependent claims 2--4. Independent claims 6 and 8 recite substantially the same limitation as that discussed above with respect to claim 1. Thus, we also do not sustain the anticipation rejection of claims 6 and 8, or its dependent claim 9. With respect to claim 10, we sustain the Examiner's rejection. Appellant initially argues that "the Examiner has come nowhere near meeting the evidentiary burden required to establish anticipation of claim 10 over Kim." Appeal Br. 33. We disagree, however, and determine that the Examiner's findings and conclusions in the Answer, including specific citations to Kim's figures and description, are sufficient to establish a prima facie case of anticipation. See Answer 3-8. Appellant argues that Kim does not teach the required first and second flaps, but, at most teaches one flap. See Appeal Br. 14--18, 33. Appellant's argument does not convince us that the claimed flaps exclude the portions of Kim the Examiner identifies as a flap. We note, for example, that Appellant does not draw our attention in the Appeal Brief to a portion of the Specification requiring that both of the claimed flaps must move relative to the body. Further, it appears that at least some movement of both of Kim's flaps would be expected upon insertion or removal of a golf club from Kim's device. 4 Appeal2014-009544 Application 13/843,046 Appellant argues that Kim does not teach the required first and second pockets, but, instead discloses "piping" that would not be understood to teach the claimed pockets. See Appeal Br. 18-20, 33. Appellant's argument does not convince us that the claimed pockets exclude Kim's piping. We note, for example, that Appellant does not draw our attention in the Appeal Brief to a portion of the Specification that excludes Kim's piping from teaching the claimed pockets. Finally, Appellant argues that "the Examiner [has not] made any argument that would indicate how Kim teaches or discloses 'wherein the entire gross external shape of the first pocket and the entire gross external shape of the second pocket are coupled to the first flap and to the second flap, respectively."' Appeal Br. 34. As discussed above with respect to claim 1, we find that Kim discloses material strips 22a and 22b that are connected (i.e., coupled) to the flaps. Thus, inasmuch as Appellant does not establish any difference between Kim's material strips connected to the flaps and the claim language reproduced above, we sustain the rejection of claim 10. DECISION We REVERSE the Examiner's anticipation rejection of claims 1--4, 6, 8, and 9. We AFFIRM the Examiner's anticipation rejection of claim 10. 5 Appeal2014-009544 Application 13/843,046 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 6 Copy with citationCopy as parenthetical citation