Ex Parte Jarboe

Patent Trial and Appeal Board

Nov 28, 2017

13285075 (P.T.A.B. Nov. 28, 2017)

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.
13/285,075 10/31/2011 Patrick G. Jarboe 3159/066 9946
23861 7590 11/28/2017
Met7 T ewk Rrnrltnan Miisit O'Keefe
EXAMINER
535 Smithfield Street FERREIRA, CATHERINE M
Suite 800
Pittsburgh, PA 15222 ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
11/28/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICK G. JARBOE
Appeal 2016-001274
Application 13/285,075
Technology Center 3700
Before JOHN C. KERINS, MICHAEL L. HOELTER, and
SEAN P. O’HANLON, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-001274
Application 13/285,075
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, 4, 6—9, 11, 13, 14, 23—25, and 27—31. App. Br. 1. Claims 3, 5,
10, 12, 15—22, and 26 have been canceled. App. Br. 35—38 (Claims
Appendix). Appellant’s counsel provided oral argument on November 7,
2017. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates generally to garments and like
apparel having a transparent window to reveal work that is performed within
the garment or like apparel.” Spec. 12. Apparatus claims 1, 8, and 23 are
independent. Claim 1 is illustrative of the claimed subject matter and is
reproduced below:
1. A hand garment for use in manipulating a handheld
electronic device within said hand garment while observing
said manipulation from without said hand garment through a
window in said hand garment so as to perform said hand-held
electronic device manipulation without exposing a user’s hands
to inclement weather without said hand garment, said hand
garment defining a hand garment having a window formed
therein and being adapted such that when at least one of a hand
and a hand-held electronic device is located within said hand
garment, at least one of said hand and said hand-held electronic
device is viewable thru said window from without said hand
garment, wherein said hand garment has an outer surface that is
an exterior surface of said hand garment, wherein said hand
garment further includes a first access opening and a second
access opening that each have a flexible and drapeable cuff,
wherein said hand garment further includes an openable and
1 Appellant identifies the Real Party in Interest as Jacob Ash Holdings, Inc.
App. Br. 2.
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Application 13/285,075
closable window covering that is completely spaced from said
cuffs of said first and second access openings such that said
outer surface is located between said window covering and said
cuff of said first access opening in an open and a closed
position of said window covering, and such that said outer
surface is located between said window covering and said cuff
of said second access opening in the open and dosed positions.
REFERENCES
Fowler
Worth
West
Johnson
REJECTIONS
US 5,139,187
US 5,924,135
US 7,168,098 B2
US 2008/0222780 A1
Aug. 18, 1992
July 20, 1999
Jan. 30, 2007
Sept. 18, 2008
Claims 1, 4, 6—8, 11, 13, 14, 23, 25, and 27—31 are rejected under 35
U.S.C. § 103(a) as unpatentable over Fowler, Worth, and West.
Claims 2, 9, and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fowler, Worth, West, and Johnson.
ANALYSIS
The rejection of claims 1, 4, 6—8, 11, 13, 14, 23, 25, and 27—31
as unpatentable over Fowler, Worth, and West
Appellant argues claims 1, 4, 6, and 7 together. App. Br. 9-15.
Appellant also supplements these arguments with separate arguments
specific to claim 29, which depends from claim 1. App. Br. 15—17.
Appellant further argues claims 8, 11, 13, and 14 together. App. Br. 17—23.
Claim 30 is provided with additional arguments supplemental to those above
and which depends from claim 8. App. Br. 23—24. Further, Appellant
argues claims 23, 25, 27, and 28 together. App. Br. 25—30. A separate
supplemental set of arguments is also presented with respect to claim 31,
which depends from claim 23. App. Br. 30—32. Accordingly, we select
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Application 13/285,075
claims 1, 29, 8, 30, 23, and 31 for review (in that order) with the remaining
claims standing or falling therewith. See 37 C.F.R. § 41.37(c)(l)(iv).
Claim 1
After discussing Fowler, Worth, West, and the Examiner’s rejection
that combines them (see App. Br. 9-11; Final Act. 4—6), Appellant addresses
West’s purported teaching of an outer surface of the garment that is located
between the window covering (flap) and the cuffs when the flap is in both an
open and closed position. App. Br. 11; Reply Br 3. However, in West,
because the flap is attached at the cuff and extends therefrom, Appellant
contends, “[w]hen closed, the flap 120 engages the cuff 106 and there is no
portion of the outer surface of the sleeve of the garment located between the
cuff 106 and the flap 120.”2 App. Br. 11; see also Reply Br. 3—4, 6.
Although Appellant is correct that the Examiner relies on West for
teaching a flap “in order to cover the window in the device” (i.e., the
garment), nevertheless, regarding the location of the window, the Examiner
does not rely on the window location disclosed in West (and hence such
location is not incorporated into the combination of Fowler and Worth).
Final Act. 6. Instead, the Examiner states, “the flap covering the opening
[i.e., the window] would be located wherever the opening is located,
2 Appellant also addresses the understanding of the recited “outer surface” of
the garment “that is an exterior surface of’ the garment. Reply Br. 3.
Appellant states that with respect to the teachings of West, “the Examiner
fails to also account for whether the outer surface taking up the space
between the window covering and the cuff remains exposed to the exterior
while in the closed position.” Reply Br. 3. According to Appellant, “[t]here
is thus no portion of the outer surface of the sleeve 110 located between the
cuff 106 and the flap 120 which remains exposed to the exterior in the
closed position.” Reply Br. 4 (referencing West Figs. 5, 6).
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Application 13/285,075
including having the flap located so that an outer surface of the garment is
located between the flap and both cuffs.”3 Final Act. 6 (emphasis added).
Hence, as understood, although West discloses one location for the
opening/window (and accompanying covering flap), the Examiner is not
basing the rejection on the window being at that location. Instead, the
Examiner states that the reliance on West “is not to remove but relocate a
window covering from the sleeve.” Ans. 6. This is because the Examiner
earlier stated that, additionally, it would have been obvious “to have placed
the flap so it does not attach to the cuff, since it has been held that
rearranging parts of an invention involves only routine skill in the art.”
Final Act. 6.
ft should here be noted that West is relied on for teaching a window
cover to protect the window whereas Worth is relied on for teaching a
window in a garment. Final Act. 5; Ans. 6. Worth expressly describes an
“improved ski jacket with an aperture [i.e., window] in the wrist area” and
further discloses the aperture at a “location above the cuff.” Worth 3:52—53;
4:13—14. Hence, Worth discloses that the window can be located both “in”
as well as “above” the wrist/cuff area (thereby lending credence to the
Examiner’s statement, “wherever the opening is located”).
Appellant contends that “movement of [West’s] flap 120 would in fact
modify the operation of West because once moved away from the cuff 106[,]
3 The Examiner emphasizes that with respect to West, “the flap extends from
the cuff to an upper part of the sleeve and the section that covers the window
is indeed completely spaced from the cuff.” Ans. 3; see also id. at 4
(“[i]ndeed the part covering the window, as clearly shown in [West] Figure 6
is completely spaced from the cuff’).
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Application 13/285,075
the flap 120 would not be capable of constricting the cuff 106.”4 App. Br.
12; see also id. at 13—14; Reply Br. 6—7. The Examiner explains that the
focus is only with respect to “the part of the flap that covers the window,”
and that “the flap with the window covering of the combined references
meet the limitations of the claimed invention.” Ans. 4. We understand the
Examiner is not contemplating any rearrangement of the ‘constricting’
portion of the flap (the Examiner is silent on this point), but instead is only
addressing the window-covering portion thereof and rearranging that
component “wherever the opening is located.” Final Act. 6. Thus, since the
constriction operation of West is not affected, Appellant’s contention that
West would no longer “be capable of constricting the cuff’ is not persuasive
of Examiner error. App. Br. 12. Furthermore, and equally important, the
Examiner is not modifying “the operation of West” (App. Br. 12), but
instead is modifying the combination of Fowler and Worth “with a flap, as
taught by West, in order to cover the window.” Final Act. 6.
Briefly stated, the Examiner is providing “the hand garment of Fowler
with a window, as taught by Worth” and “with a flap, as taught by West, in
order to cover the window.” Final Act. 4—6. The Examiner states that the
window opening can be located other than at the cuff (see supra) and that
this would entail “including having the flap located so that an outer surface
of the garment is located between the flap and both cuffs.” Final Act. 6.
Appellant is not persuasive that this rearrangement of parts would not have
4 “The flap 120 may be closed and the fastener 200 attached to the flap 120
selectively positioned to provide more or less constriction of opening 104.”
West 3:55-58.
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been obvious in view of the teachings of Fowler, Worth, and West. We
sustain the Examiner’s rejection of claims 1, 4, 6, and 7.
Claim 29
Claim 29 depends from claim 1 and includes the additional limitation
of “a fastening mechanism that secures said window covering to said hand
garment when said window covering is in the open position.” The Examiner
finds that West’s hook and loop mechanism (200) “is capable of holding the
covering in an open position.” Final Act. 12. The Examiner explains that
this can be accomplished if one mating component is “folded in a reverse
direction back underneath the arm and folded inward to attach to the mating
hook and loop fastener on the sleeve.” Ans. 6. Appellant disagrees with this
assessment because West’s “fastener 200 is not used to secure the flan 120
in the open position” and that “[tjhere is no disclosure of this in West.”
App. Br. 16. Appellant contends, “there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” App. Br. 17 (citation omitted).
We agree with Appellant. Our reviewing court has provided
instruction that the Patent Office has the initial duty to supply the factual
basis for the rejection and that “[i]t may not, because it may doubt that the
invention is patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis.” In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967). In the matter before us, it does
appear as if the Examiner is relying on conjecture to reach the conclusion of
obviousness. For example, the Examiner does not identify where such
capability is desired, disclosed, or even discussed in the cited art, nor does
the Examiner elaborate on the length of West’s flap so that it might actually
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Application 13/285,075
be capable of being folded back on itself and yet still achieve a mating
(open) connection. For these reasons, we do not sustain the Examiner’s
rejection of claim 29.5
Claim 8
Independent claim 8 includes limitations similar/identical to those
discussed above regarding claim 1. Appellant repeats the same arguments
for claim 8 as were previously presented with respect to claim 1. See App.
Br. 17—23. For similar reasons, we are not persuaded by such arguments
and, accordingly, we sustain the Examiner’s rejection of claims 8, 11, 13,
and 14.
Claim 30
Claim 30 depends from claim 8 and recites the same additional
limitation as discussed above regarding claim 29. For the same reasons
provided above with respect to claim 29, we likewise do not sustain the
Examiner’s rejection of claim 30. The above footnote regarding West’s
“secured side 102” also applies equally to claim 30.
Claim 23
Independent claim 23 includes limitations similar/identical to those
discussed above regarding claim 1. Appellant repeats the same arguments
for claim 23 as were previously presented with respect to claim 1. See App.
Br. 25—30. For similar reasons, we are not persuaded by such arguments
5 However, we could not help but notice West’s teaching of flap 120 having
a “secured side 102” that is “attached to the sleeve” (perhaps by stitching).
West 3:38-46. Clearly, as shown in West Figure 1, when flap 120 is in the
open position with the window uncovered as per claim 29, the flap is and
remains secured to the garment via secured side 102.
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Application 13/285,075
and, accordingly, we sustain the Examiner’s rejection of claims 23, 25, 27,
and 28.
Claim 31
Claim 31 depends from 23 and recites the same additional limitation
as discussed above regarding claim 29. For the same reasons provided
above with respect to claim 29, we likewise do not sustain the Examiner’s
rejection of claim 31. The above footnote regarding West’s “secured side
102” also applies equally to claim 31.
The rejection of claims 2, 9, and 24
as unpatentable over Fowler, Worth, West, and Johnson
Appellant argues claims 2, 9, and 24 together. App. Br. 32—33. We
select claim 2 for review with claims 9 and 24 standing or falling therewith.
Claim 2 depends from claim 1, and the Examiner relies on the
additional teachings of Johnson for disclosing, and rendering obvious, the
additional limitations of claim 2. Final Act. 12—13. Appellant does not
dispute the Examiner’s reliance on Johnson for these additional limitations,
but instead contends, “Johnson fails to correct the deficiencies noted in the
primary combination of Fowler, Worth and West as discussed above with
respect to independent claims 1, 8 and 23.” App. Br. 33; see also Reply Br.
8. Because we are not persuaded there are deficiencies with respect to these
independent claims, Appellant’s contention is not persuasive that the
Examiner erred in relying on Johnson for teaching the additional limitations
of claim 2 (and 9 and 24). We sustain the Examiner’s rejection of claims 2,
9, and 24.
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Appeal 2016-001274
Application 13/285,075
DECISION
The Examiner’s rejections of claims 1, 2, 4, 6—9, 11, 13, 14, 23—25,
27, and 28 are affirmed.
The Examiner’s rejection of claims 29—31 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)(l)(iv).
AFFIRMED-IN-PART
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