Ex Parte KANEDownload PDFPatent Trial and Appeal BoardMay 14, 201812940736 (P.T.A.B. May. 14, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/940,736 11/05/2010 62047 7590 05/16/2018 PA TENTS ON DEMAND, P.A.-General 4581 WESTON ROAD SUITE 345 WESTON, FL 33331 FIRST NAMED INVENTOR RICHARD KANE 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. KANE90001 8140 EXAMINER WORRELL JR, LARRY D ART UNIT PAPER NUMBER 3765 NOTIFICATION DATE DELIVERY MODE 05/16/2018 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): docketing 1@patentsondemand.com docketing2@patentsondemand.com brian.buchheit@patentsondemand.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD KANE Appeal 2016-005068 Application 12/940, 73 61 Technology Center 3700 Before HUBERT C. LORIN, CYNTHIA L. MURPHY, and BRUCE T. WIEDER, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 1--4, 6-12, 14, and 16-20. 2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 According to Appellant, the real party in interest is Richard Kane. (Appeal Br. 3.) 2 The Examiner makes no rejections against dependent claim 15 and indicates that the claim would be allowable if rewritten in independent form. See Answer 10. Therefore, we treat the inclusion of claim 15 in the statement that "[c]laim(s) 1--4, 6-12 and 14--20 is/are rejected," as a typographical error. (See Final Action 1.) Appeal 2016-005068 Application 12/940,736 CLAIMED SUBJECT MATTER Appellant's claimed invention "relates to the field of clothing, and more specifically, to garments having inside printing viewable when a portion of the garment is flipped." (Spec. i-f 2.) Claims 1, 12, and 19 are the independent claims on appeal. Claim 1 is illustrative. It recites: 1. A garment configured to be worn by a wearer that has a hidden message exposed by flipping a portion of the garment, said garment comprising: an outwardly facing surface configured to be visible when the garment is worn in a first state on a body of the wearer, wherein said first state is a standard manner for the wearer to wear said garment in public; and at least one hidden surface comprising a hidden message, wherein the hidden message is not visible when the garment is worn in the first state, wherein the hidden message is visible when the garment is worn is a second state, wherein the second state represents a state where at least a portion of the garment is being flipped, wherein the hidden message is an image of a body part, wherein the image of the body part is approximately on top of the body part it portrays, when the garment is in the second state. REJECTIONS Claims 1, 2, 10, and 11 are rejected under 35 U.S.C. § 103(a) as unpatentable in view ofKuracina (US 5,398,343, iss. Mar. 21, 1995) and The Girls T-Shirt- Boobs, http://archive.org/web/20081008002426/ http://www.tshirtsville.com/acatalog/The_Girls_tshirt.html (Oct. 8, 2008) (hereinafter "The Girls"). Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable in view ofKuracina, The Girls, and Wilmers (US 5,379,461, iss. Jan. 10, 1995). 2 Appeal 2016-005068 Application 12/940,736 Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable in view of Brennan (US 5,617,584, iss. Apr. 8, 1997), Koester (US 5,035,004, iss. July 30, 1991), and The Girls. Claims 6-9, 12, 14, and 16-18 are rejected under 35 U.S.C. § 103(a) as unpatentable in view of Kuracina, The Girls, and Hall (US 4,991,233, iss. Feb. 12, 1991). Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable in view of Hall. Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable in view of Hall and Kuracina. ANALYSIS Claims 1 and 2 The Examiner finds: While Kuracina clearly shows a hidden message (34), the hidden message is not shown as being an image of a body part and wherein the image of the body part is approximately on top of the body part it portrays, when the garment is in the second state. The Girls discloses a t-shirt which includes a message which is an image of a body part (breasts) and further the image is shown as being on top of the body part. It would have been an obvious matter of design choice at the time the invention was made to choose the specific hidden message of Kuracina from numerous different messges [sic] including a body part image of breasts as shown by The Girls in order optimize the aesthetic appeal of the garment and/or to convey a specific meaning to the wearer or viewer of the hidden message (34). Note that the image message of The Girls provided at Kuracina' s hidden location would bring about the image approximately on top of the body part when the garment is in the second state to the extent claimed. 3 Appeal 2016-005068 Application 12/940,736 (Final Action 10-11, image omitted.) Appellant argues that "[t]here is no teaching within the art to have a 'hidden graphic' that is an image of a body part" and that "these references are not combinable to produce something previously lacking in the art." (Appeal Br. 26.) Appellant further argues that "[t]he Action is improper as lacking a motivation that is a proper articulated reasoning of why (in absence of the disclosure) one of ordinary skill would have made severe changes to three [sic, two] different commercial designs, which changes would substantially and materially alter their novel points." (Id. at 29.) "In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103. Id. at 421. Moreover, "when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result." Id. at 416 (citing United States v. Adams, 383 U.S. 39, 50-51 (1966)). Further, "[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one." Id. at 417. 4 Appeal 2016-005068 Application 12/940,736 The Examiner finds, and we agree, that Kuracina discloses a surface comprising a hidden message. (See Final Action 8-9.) The Examiner also finds, and we agree, that "The Girls discloses at-shirt which includes a message which is an image of a body part (breasts) and further the image is shown as being on top of the body part." (Id. at 10.) The Examiner further finds that it would have been an obvious design choice of modify Kuracina by choosing a different message for the t-shirt from that specifically shown in Kuracina, e.g., by choosing the image shown in The Girls. (See id. at 11.) In short, the Examiner's proposed modification of Kuracina is simply one of "substitut[ing] one element for another known in the field" where the combination yields a predictable result. See KSR, 550 U.S. at 416. Appellant does not persuasively argue why substituting the image of The Girls for the image of Kuracina would not yield a predictable result. In view of the above, we are not persuaded that "these references are not combinable to produce something previously lacking in the art," as argued by Appellant (see Appeal Br. 26), nor are we persuaded that the Examiner erred in rejecting claim 1. Appellant does not separately argue the patentability of dependent claim 2. Therefore, claim 2 falls with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). Claim 3 Claim 3 depends from claim 1 and recites, in relevant part, "wherein the garment is a skirt." The Examiner finds that "Wilmers expressly sets forth at column 2, lines 46-51, that hidden messages may be used on any number of different 5 Appeal 2016-005068 Application 12/940,736 garments, for example, 'a dress, jump suit, pajamas, jacket, sweatshirt, romper, raincoat, night gown, shorts, or pants."' (Answer 30.) The Examiner also finds that "one of ordinary skill in the art would have found it obvious to provide the hidden message system of Kuracina on numerous different garments including a skirt in order to increase the design and aesthetic appeal of the skirt." (Id.) Wilmers discloses: An article of interactive clothing is provided including a display panel having a first display section and a second display section, with the first display section having first indicia displayed thereon and the second display section having second indicia displayed thereon. A cover panel is provided for covering the second display section and is movable between a first position wherein a pocket is defined to contain items for ready access and a second position wherein the second indicia is revealed. (Wilmers, Abstract.) Wilmers further discloses that "it is envisioned that other types of pocketed clothing may be provided in accordance with the subject invention. For example, the article of interactive clothing can be in the form of a dress, jump suit, pajamas, jacket, sweatshirt, romper, raincoat, night gown, shorts, or pants." (Id. at col. 2, 11. 46-51.) Appellant argues that "Wilmers teaches it's [sic] pouch can be placed on pants or dresses." (Appeal Br. 31.) Appellant further argues that "[p ]ants cannot be flipped, as claimed" and that "the references to pants and dresses ... is only possible in context of a different principle of operation (that of Wilmers ). " (Id.) We are persuaded of error. Wilmers discloses a cover panel, e.g., a cover panel forming a pocket, covering a hidden message. (Wilmers, Abstract.) Wilmers discloses use of the cover panel on "other types of 6 Appeal 2016-005068 Application 12/940,736 pocketed clothing," and lists examples of such clothing. (Id. at col. 2, 11. 46- 47 .) The Examiner does not sufficiently explain, with rational underpinnings, the reason to combine the clothing with pockets, listed by Wilmers, with Kuracina and The Girls, which "flip" the garment to reveal a hidden message and do not recite a pocket. Claim 4 Claim 4 depends from claim 1 and recites, in relevant part, "wherein the garment is a hat." Appellant argues that "[b ]ecause the independent claim (claim 1) relied upon teachings of Kuracina/Hall, which are not present in Brennan/Koester, the rejection is ambiguous." (Appeal Br. 32.) We disagree. It is clear from the rejection that the Examiner is rejecting claim 4 under only Brennan, Koester, and The Girls. (Final Action 12-14; see also Answer 31.) Appellant also argues that "Brennan teaches a head band (not a hat, with a flap). No images are present in this flap (on either side) of Brennan." (Appeal Br. 32.) Appellant's argument is unpersuasive because the Examiner relies on Brennan in combination with Koester and The Girls as teaching the claim limitations. The test for obviousness is not what any one reference would have suggested, but rather what the combined teachings would have suggested to one of ordinary skill in the art. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). Therefore, we do not find Appellant's arguments persuasive of error. 7 Appeal 2016-005068 Application 12/940,736 Claim 7 Claim 6, which depends from claim 1 recites: "wherein the first surface comprises a visible message, which is viewable when the garment is worn in the first state." Claim 7, which depends from claim 6 recites: "wherein the visible message comprises text, and wherein the hidden message comprises text, wherein the hidden message is semantically related to the visible message and is designed to be read after the text of the visible message is read." Appellant argues that the limitation of claim 7 "is not present in the prior art" and that "[t]he action is unclear on why this is being rejected." (Appeal Br. 32.) We are not persuaded of error. The Examiner finds that Hall teaches both a visible message (19) and a hidden message (20). Additionally the visible message (19) unquestionably comprises text and the hidden message (20) also comprises text. Also the hidden message is semantically related to the visible message and is designed to be read after the text of the visible message is read. (Answer 32-33; see also Final Action 14--15.) Appellant does not persuasively argue what element of claim 7 "is not present in the prior art." Nor does the Appellant persuasively argue why the rejection is ''unclear." Appellant also argues that "the motivation states that the hidden message is clarified by the visible (non-hidden) message, which is the opposite of the claim and is improper." (Appeal Br. 32.) We do not find this argument persuasive of error. The Examiner determines that "[i]t would have been obvious ... to provide an additional visible message on the garment of Kuracina in order [to] clarify or compliment the hidden message 8 Appeal 2016-005068 Application 12/940,736 of Kuracina as shown by Hall." (Final Action 14.) Appellant does not persuasively argue why a visible message that complements the hidden message "is the opposite of the claim and is improper. " 3 Claim 8 Claim 8, which depends from claim 6, recites: "wherein the visible message comprises a text in the form of a question, and wherein the hidden message comprises an answer to the question." Appellant argues that Hall "does not include a message in form [sic] of a question." (Appeal Br. 33.) The Examiner finds that figures 1 and 2 of Hall show a question and answer. (Final Action 15.) In particular, the Examiner finds that "[a]s seen in figure 1, Hall's message (19) undoubtedly asks a question to the viewer. Specifically, the message queries the meaning of 'Sagittarius'." (Answer 33.) Moreover, figure 1 of Hall includes the message "Pull for Answer" to reveal the hidden message, thus, making clear that the visible message is to be construed as a question. In view of the above, we are not persuaded of error. 4 3 We note, but do not include as a new ground of rejection, that the claim limitation includes printed matter, and that the printed matter is being claimed for what it communicates, i.e., that "the hidden message is semantically related to the visible message." Thus, this limitation is entitled to no patentable weight. See, e.g., In re Distefano, 808 F.3d 845, 849-50 (Fed. Cir. 2015). 4 We note, but do not include as a new ground of rejection, that the claim limitation is directed to the specific grammatical form of the matter printed on the garment, i.e., that the printed matter is being claimed for what it communicates. Thus, this limitation is entitled to no patentable weight. See, e.g., Distefano, 808 F.3d at 849-50. 9 Appeal 2016-005068 Application 12/940,736 Claim 9 Claim 9 depends from claim 6 and recites: "wherein a meaning of the visible message changes once the hidden message is revealed." The Examiner finds that "Hall's visible message meaning changes once the hidden message is revealed in that it further defines the visible message." (Answer 34; see also Final Action 15.) Appellant argues that Hall does not teach this limitation. Rather, Appellant argues, "Hall shows a sentence fragment (having a meaning that stays the same when the hidden portion is flipped or not)." (Appeal Br. 33.) We are not persuaded of error. Applying a broadest reasonable interpretation, we agree with the Examiner that because the visible message in Hall is further defined when the hidden message is revealed, this changes at least some aspect of the meaning or meanings of the visible message. 5 Claims 10 and 11 Claim 10 depends from claim 1 and recites: "wherein the garment is an article of clothing specifically designed for being worn by a pet, wherein the pet is the wearer of the garment." Claim 11 depends from claim 1 and recites: "wherein the garment is an article of clothing specifically designed for being worn by a doll, wherein the doll is the wearer of the garment." 5 We note, but do not include as a new ground of rejection, that the claim limitation includes printed matter, and that the printed matter is being claimed for what it communicates, i.e., "a meaning of the visible message." Thus, this limitation is entitled to no patentable weight. See, e.g., Distefano, 808 F.3d at 849--50. 10 Appeal 2016-005068 Application 12/940,736 Appellant argues that"[ o ]ne of ordinary skill knows that [pet/doll] clothing (clothing specifically designed to be worn by a [pet/doll] is different in structure than human clothing." (Appeal Br. 33.) The Examiner finds that "Appellant has not pointed to any specific structure that is required for a shirt to be considered a 'pet shirt"' or "a shirt to be worn by a doll." (Answer 34--35.) "As such the limitation is [met with/requires] only a capability of being placed on so as to be worn by a [pet/doll]. (Id.) Moreover, the Examiner finds that "Kuracina's shirt is capable of being worn by a [pet/doll] if so desired." (Id.) Appellant does not persuasively argue why the Examiner's findings are in error or why a shirt of Kuracina should not be considered a shirt "for being worn by a [pet/doll]." In view of the above, we are not persuaded of error. Claim 12 Claim 12 recites: 12. A shirt comprising: a hidden message printed up-side down on the reverse side of the front of the shirt, wherein said hidden message is revealed when a wearer of the shirt lifts the front of the shirt upwards away from a body of the wearer; and a front-side message presented on the front of the shirt, which is visible when the shirt is worn normally on the body of the wearer, wherein the hidden message is semantically related to the front-side message. Appellant argues that The Girls is not a proper prior art reference. (Appeal Br. 12-13.) We disagree for the reasons stated by the Examiner and we adopt the Examiner's reasoning. (See Answer 11-13.) 11 Appeal 2016-005068 Application 12/940,736 Appellant also argues that "[a] strong level of ambiguity exist [sic] with regard to the rejection of independent claim 12, as the claimed limitations were not mapped to specific elements from the referenced [sic]." (Appeal Br. 12.) Specifically, Appellant argues that "Kuracina lacks a front side message, as claimed. Applicants [sic] assume (the Final Action is unclear) that some portion of Hall or The Girls is being used for the 'front side message' that is claimed." (Reply Br. 7.) Additionally, Appellant argues that the combination of Kuracina, The Girls, and Hall "lacks the material claimed teaching" of "wherein the hidden message ... is semantically related to the front-side message." (Id. at 8, emphasis omitted.) We are not persuaded of error. "Claims 6-9, 12, 14 and 16-18 are rejected ... over Kuracina in view of The Girls and further in view of Hall." (Final Action 14.) The Examiner finds that Kuracina and The Girls "do not teach the first surface also comprising a visible message." (Id.) However, the Examiner further finds that "Hall teaches ... a visible message (19)" which is shown in Hall on the front side of a shirt. (Id.; see also Hall, Fig. 1.) In other words, the Examiner relies on Hall, not Kuracina, for teaching "a front-side message presented on the front of the shirt." With regard to Appellant's argument that the combination of Kuracina, The Girls, and Hall does not teach the hidden message being "semantically related to the front-side message" (Reply Br. 8), we are not persuaded of error for the reasons discussed above with regard to claim 7. Appellant further argues that the Examiner erred because "claim 12 was not properly analyzed by reading the claim as a whole." (Appeal Br. 14, citing Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1537 (Fed. Cir. 1983).) We are not persuaded of error. 12 Appeal 2016-005068 Application 12/940,736 Stratoflex informs us that, in making an obviousness determination, "[ c ]onsideration of differences [from the prior art] ... is but an aid in reaching the ultimate determination of whether the claimed invention as a whole would have been obvious." Stratoflex, 713 F.2d at 1537. Appellant does not argue that claim 1 was not properly analyzed by reading the claim as a whole. (See Appeal Br. 25-29.) And, here, the Examiner finds that "[ t ]he combination of Kuracina and The Girls teaches the invention substantially as claimed as set forth above in the rejection to claim 1." (Final Action 14.) The Examiner then sets out additional findings regarding a front side message and regarding a hidden message printed upside down. The Examiner determines that "[i]t would have been obvious at the time the invention was made to provide an additional visible message on the garment of Kuracina in order clarify or compliment the hidden message of Kuracina as shown by Hall" (id.), and that the "the message of Kuracina, as in figure 11, is self-evidently printed up-side down" (id. at 15). Appellant does not persuasively argue why these differences "tilt the scales toward a conclusion of nonobviousness of the invention as a whole in light of all prior art teachings summarized above." Stratoflex, 713 F.2d at 1538. Moreover, the claimed invention and all of the references relied upon relate, as a whole, to garments with printed messages. In view of the above, we do not find this argument persuasive of error. Appellant next argues that there is no motivation to combine Kuracina, The Girls, and Hall. Specifically, Appellant argues that in the Final Action, "the only motivation for combining Kuracina/TheGirls/Hall is found on page 14. This states []the combination Kuracina/TheGirls does not teach the first surface comprises a visible message, which is viewable when 13 Appeal 2016-005068 Application 12/940,736 worn in a first state. This language comes from claim 1 and is not present in claim 12." (Appeal Br. 14.) Claim 12 recites "a front-side message presented on the front of the shirt." The Examiner determines that a motivation for modifying Kuracina in view of Hall is to "provide an additional visible message on the garment of Kuracina in order clarify or compliment the hidden message of Kuracina as shown by Hall," i.e., as shown by Hall's visible message on the front the shirt. (Final Action 14.) Appellant does not persuasively argue why this finding of a motivation to modify Kuracina in view of Hall's visible message is insufficient. See Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1291 (Fed. Cir. 2006) ("There is flexibility in our obviousness jurisprudence because a motivation may be found implicitly in the prior art."). See also KSR, 550 U.S. at 421. Additionally, the Examiner finds that combining Kuracina with The Girls was a simple design choice, i.e., Kuracina discloses a hidden message and The Girls showed a body part as one of numerous messages that could be chosen. (Answer 14.) In view of the above, we are not persuaded of error. Appellant further argues that "[ t ]he principle of operation for Hall is to add a flap with a lanyard" (Appeal Br. 20), and that "one cannot modify a reference [Hall] if the modification results in the changing of the principle of operation of a reference as detailed by In Re Ratti." (id., citing In re Ratti, 270 F.2d 810, 813 (CCPA 1959).) In Ratti, the claims were rejected as obvious in view of Chinnery and Jepson. Ratti, 270 F.2d at 812. "The Chinnery et al. patent is the reference principally relied upon by the Patent Office." Id. at 811. The court concluded that the "suggested combination of references would require a 14 Appeal 2016-005068 Application 12/940,736 substantial reconstruction and redesign of the elements shown in Chinnery et al. as well as a change in the basic principles under which the Chinnery et al. construction was designed to operate." Id. at 813. In other words, Ratti is concerned with the principles of operation of the reference being modified. See In re Mouttet, 686 F.3d 1322, 1331-32 (Fed. Cir. 2012). Here, we agree with the Examiner that Hall is not being modified. Rather, it is the primary reference, Kuracina, which is being modified in view of Hall. (See Final Action 14 ("It would have been obvious ... to provide an additional visible message on the garment of Kuracina ... as shown by Hall.").) Appellant replies that "[t]his is factually incorrect. When one combines two references, both references are modified and changed." (Reply Br. 10, emphasis omitted.) We disagree for the reasons discussed above. The Examiner does not propose modifying Hall. (See Answer 19.) In view of the above, we also do not find persuasive of error Appellant's argument that the Examiner proposes changing the principle of operation of Hall. Nor does Appellant persuasively argue how the principle of operation of Kuracina is changed. For the reasons discussed above, including our discussion with regard to claims 1 and 7, we do not find Appellant's arguments with regard to claim 12 to be persuasive of error. Claim 14 For the reasons discussed above with regard to claim 8, we do not find Appellant's argument regarding claim 14 to be persuasive of error. 15 Appeal 2016-005068 Application 12/940,736 Claims 17 and 18 For the reasons discussed above with regard to claims 10 and 11, we do not find Appellant's argument regarding claims 17 and 18 to be persuasive of error. Claim 19 Claim 19 recites: 19. A clothing ensemble comprising: a plurality of different garment items designed to be worn on a human body together, wherein at least two of the different garment items comprise: an outwardly facing surface configured to be visible when the garment item is worn in a first state on the human body, wherein said first state is a standard manner for wearing the garment item; and at least one hidden surface comprising a hidden message, wherein the hidden message is not visible when the garment item is worn in the first state, wherein the hidden message is visible when the garment is worn in a second state, wherein the second state represents a state where at least a portion of the garment is being flipped outwardly away from the human body; wherein hidden messages of the at least two different garment items are related to each other and reveal a cohesive expression when exposed in conjunction with each other. The Examiner finds that "Hall teaches a plurality of garments including jackets and pants." (Final Action 16, citing Hall, col. 2, 11. 44--47). Additionally, the Examiner determines that "[i]t would have been obvious to provide the two garments with related messages revealing a cohesive expression in order to clarify[,] compliment or expand upon the message of each individual message for the wearer or viewer of the messages." (Id.) 16 Appeal 2016-005068 Application 12/940,736 Appellant argues that "Hall lacks any teachings for two garments being used together." (Appeal Br. 24.) Appellant further argues that the "action is improper" because "[i]t would not be appropriate for the examiner to take official notice of facts without citing a prior art reference where the facts asserted to be well known are not capable of instant and unquestionable demonstration as being well-known." (Id., quoting6 MPEP § 2144.03(A), emphasis omitted.) Appellant also argues that "no motivation to make the 'modification' has been provided." (Id. at 25.) We do not find these arguments persuasive of error. With regard to Appellant's argument that "Hall lacks any teachings for two garments being used together," we note that the Examiner did not find that Hall discloses two garments being used together. Rather, the Examiner determined that, in view of Hall, "[i]t would have been obvious to provide the two garments with related messages." (Final Action 16.) With regard to Appellant's argument that the Examiner's determination that "[i]t would have been obvious to provide the two garments with related messages" is the taking of official notice of a fact, we are not persuaded of error. Even if we consider the Examiner's determination to be the taking of official notice of a finding of fact, Appellant did not adequately traverse the finding. "To adequately traverse such a finding, an applicant must specifically point out the supposed errors in the examiner's action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art." (MPEP § 2144.03(C), emphasis added.) Appellant has not stated why the alleged 6 Appellant's brief does not properly attribute the source of the quote. (See Appeal Br. 24.) 17 Appeal 2016-005068 Application 12/940,736 noticed fact is not considered to be common knowledge or well-known in the art. With regard to Appellant's argument that "no motivation to make the 'modification' has been provided" (Appeal Br. 25), we are also not persuaded of error. Assuming Appellant's reference to "modification" refers to the Examiner's determination that "[i]t would have been obvious to provide the two garments with related messages revealing a cohesive expression" (Final Action 16), the Examiner finds that the motivation to provide such garments is "in order to clarify[,] compliment or expand upon the message of each individual message for the wearer or viewer of the messages." (Id.) Further, and in view of Appellant's failure to adequately traverse or persuasively rebut the Examiner's determination that "[i]t would have been obvious to provide the two garments with related messages," we do not find Appellant's additional arguments (see Reply Br. 13-14) persuasive of error. 7 Claim 20 Claim 20 depends from claim 19 and recites: "wherein at least one of the two different garment items is a shirt, wherein the hidden message for the shirt is printed upside down on the reverse side of the front of the shirt." 7 We note, but do not include as a new ground of rejection, that the claim limitation includes printed matter, and that the printed matter is being claimed for what it communicates, i.e., "wherein hidden messages ... are related to each other." Thus, this limitation is entitled to no patentable weight. See, e.g., Distefano, 808 F.3d at 849-50. 18 Appeal 2016-005068 Application 12/940,736 The Examiner finds that "Hall teaches the invention substantially as claimed," and that "Kuracina teaches that the hidden message for the shirt is printed upside down on the reverse side of the front of the shirt." (Final Action 16, citing Kuracina Figs. 10, 11.) Additionally, the Examiner determines that (Id.) [i]t would have been obvious at the time the invention was made to provide the hidden message as shown by Hall as printed upside down on the reverse side of the front of the shirt as shown by Kuracina in order to simplify the shirt design by eliminating the flap (36) and handle (34) thus providing a one-piece t-shirt as shown Kuracina. Appellant argues that "[t]he motivation is stated as to eliminate the flap 36, which is the principle of operation of Hall, which is not permitted per In Re Ratti." (Appeal Br. 25.) Appellant also argues that the differences between Hall (where "a non-wearer manipulates the shirt") and Kuracina "are significant[] and outweigh nay [sic] suggestive weight to combine the references (per KSR-rendering the combination non-obvious)." (Appeal Br. 25.) We are not persuaded of error. Ratti relates to "a resilient shaft sealing element." Ratti, 270 F.2d at 812. As discussed above, in Ratti, the claims were rejected as obvious in view of Chinnery and Jepson. Id. "The Chinnery et al. patent is the reference principally relied upon by the Patent Office." Id. at 811. Chinnery disclosed "a housing provided with a bore surrounding a centrally located shaft. A reinforced and 'stiffened' sealing member formed of a material such as rubber, is press fitted into the space between the bore and the shaft." Id. "The Jepson patent relates to a gasket for sealing the space between the upper and lower vessels of a vacuum-type 19 Appeal 2016-005068 Application 12/940,736 coffee maker." Id. at 812. The court found "nothing in the disclosure of Jepson's coffee maker gasket to suggest that any part of it has applicability to shaft seals." Id. at 813. Thus, the court concluded, the "suggested combination of references would require a substantial reconstruction and redesign of the elements shown in Chinnery et al. as well as a change in the basic principles under which the Chinnery et al. construction was designed to operate." Id. Unlike Ratti, here, the disclosures of Hall and Kuracina both clearly have applicability to hidden messages on shirts. (See Hall, Fig. 1; see also Kuracina, Fig. 11 ). Moreover, and as discussed above, "[ w ]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp." KSR, 550 U.S. at 421. In this case, the prior art discloses a finite number of identified, predictable solutions to the problem of locating a hidden message on a garment. In view of the above, we are not persuaded that the Examiner erred in rejecting claim 20. DECISION The Examiner's rejections of claims 1, 2, 4, 6-12, 14, and 16-20 under 35 U.S.C. § 103(a) are affirmed. The Examiner's rejection of claim 3 under 35 U.S.C. § 103(a) is reversed. 20 Appeal 2016-005068 Application 12/940,736 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 21 Copy with citationCopy as parenthetical citation