Ex Parte JarboeDownload PDFPatent Trial and Appeal BoardNov 28, 201713285075 (P.T.A.B. Nov. 28, 2017) Copy Citation 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. 2 Appeal 2016-001274 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 3 Appeal 2016-001274 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). 4 Appeal 2016-001274 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’). 5 Appeal 2016-001274 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. 6 Appeal 2016-001274 Application 13/285,075 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 7 Appeal 2016-001274 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. 8 Appeal 2016-001274 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. 9 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 10 Copy with citationCopy as parenthetical citation