Ex Parte Kelly

Patent Trial and Appeal Board

Jul 29, 2016

13196110 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/196,110 08/02/2011 Joan G. Kelly
26259 7590 08/02/2016
LICATA & TYRRELL P.C.
66 E. MAIN STREET
MARLTON, NJ 08053
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.
JGK0003US 3223
EXAMINER
DEERY, ERIN LEAH
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
08/02/2016 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):
PTOactions@licataandtyrrell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOAN G. KELLY
Appeal2014-008263
Application 13/196, 110 1
Technology Center 3700
Before, STEFAN STAICOVICI, EDWARD A. BROWN and
ARTHUR M. PESLAK, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Joan G. Kelly (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner's final decision rejecting claims 1-5 under 35 U.S.C. § 103(a) as
unpatentable over Levy (U.S. 5,351,739, iss. Oct. 4, 1994) in view of Titus
(US D509,089 S, iss. Sept. 6, 2005) and Jerrell (US D441,244 S, iss. May 1,
2001. 2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
According to Appellant, the real party in interest is Joan G. Kelly.
Appeal Br. 1 (filed Jan. 27, 2014).
2 Claim 6 is cancelled. Id. at 13.
Appeal2014-008263
Application 13/196, 110
SUMMARY OF DECISION
We REVERSE.
INVENTION
Appellant's invention relates to "a shower closure for use with a
bathtub or shower." Spec. i-f 3.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A shower closure for use with a bathtub or shower said
closure comprising a plurality of grasping means extending
from the planar surface of the closure, wherein the grasping
means are characterized as weight-bearing elements, each
grasping means is individually attached to or integral with the
closure, and the plurality of grasping means extend from the
inside and outside surface of the closure.
ANALYSIS
The Examiner finds that Levy discloses, inter alia, "a system having a
shower rod (24), a plurality of grasping mechanisms (10) [with grasping
means 16] which extend above a planar surface of the shower curtain (see
figure 3), and carriers (36) which connect the curtain to the rod." Final Act.
3 (transmitted Aug. 9, 2013); see also Levy, Fig. 1. According to the
Examiner, "[t]he grasping mechanisms [10] are weight bearing elements
which are able to slow or stop a fall when a person in the shower grabs
them." Final Act. 3. Nonetheless, the Examiner finds that Levy does not
disclose "grasping means [that] are individually attached to or integral with
the closure and extend from the closure." Id. The Examiner thus, relies
upon Titus to disclose a plurality of loops attached directly to the surface of
a window treatment and concludes that it would have been obvious for a
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Appeal2014-008263
Application 13/196, 110
person of ordinary skill in the art "to have attached the safety net/ grasping
means [ 16] of Levy directly to the curtain in order to manufacture the curtain
with a single process." Id. at 3--4; see also Titus, Figs. 3, 4.
Appellant argues that "the Examiner has not provided an explicit
analysis of how the safety net/grasping means of Levy is to be directly
attached" as taught by Titus. Appeal. Br. 8. According to Appellant, if "the
netting of Levy [is] directly attached to the curtain," as the Examiner
proposes, "it is unclear how one would grab onto the netting in the manner
described and illustrated in Figure 2 of Levy." Id. at 9.
We agree with Appellant because if the proposed modification would
render the prior art invention being modified unsatisfactory for its intended
purpose, then there is no reasoning with rational underpinnings to make the
proposed modification. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
1984).
Levy discloses a two-part shower curtain, including shower curtain 32
and hand netting 10 that forms a lattice structure. Levy, col. 3, 11. 51---68.
The two parts are only attached at the top via grommets 22 and buttons 3 6
that attach the curtain and netting to the curtain rod. Id.; see also Levy, Fig.
2. The netting 10 functions by including spaces (holes) "that are large
enough and [] close enough to enable the user to put at least one finger in
each hole and fingers of the same hand in adjacent holes" to grab the netting
and thus slow or prevent a fall. See Levy, col. 3, 11. 5-8; Fig. 1. As such, if
netting 10 of Levy is directly attached to shower curtain 32, as the Examiner
proposes, a user will not be able to insert "at least one finger in each hole
and fingers of the same hand in adjacent holes" to grab onto the netting
because netting 10 will not be able to move away from curtain 32 to allow
3
Appeal2014-008263
Application 13/196, 110
passage of the fingers. In other words, there will no longer be a means of
grasping onto the netting, and thus, the netting of Levy will be unsatisfactory
for its intended purpose. See DePuy Spine, Inc. v. Medtronic Sofamor
Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) (noting that the
"predictable result" discussed in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398
(2007), also means "that the combination would have worked for its
intended purpose").
In the Answer, the Examiner takes an alternative approach and finds
that the plurality of loops on the curtain of Titus "would be fully capable of
being used to arrest or slow a fall in a shower or other environment." Ans. 4
(transmitted June 4, 2014). In other words, the Examiner appears to modify
Levy's system to include the "plurality of loops" of Titus. However, the
Examiner fails to provide any evidence or technical reasoning to show that
Titus's loops constitute "weight-bearing elements," as called for by
independent claim 1, and thus, are capable of supporting the weight of a user
to arrest or slow a fall. 3 See Reply Br. 2. Accordingly, the Examiner's
finding that Titus's loops "would be fully capable of being used to arrest or
slow a fall in a shower or other environment" is based on speculation.
Therefore, the Examiner has not made the initial factual findings required to
demonstrate a prima facie case of obviousness. See In re Warner, 379 F.2d
1011, 1017 (CCPA 1967) (the examiner has the initial duty of supplying the
requisite factual basis and may not, because of doubts that the invention is
3 "In this respect, the instant grasping means are characterized as
'weight-bearing elements' capable of supporting the weight of a subject of
50 kg (110 pounds), 75 kg (165 pounds), 100 kg (220 pounds), or 150 kg
(330 pounds) so that said subject does not fall or falls at a reduced rate (as
compared to an unsupported fall) thereby reducing injury." Spec. i-f 8.
4
Appeal2014-008263
Application 13/196, 110
patentable, resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in the factual basis).
The Examiner's use of the disclosure of Jerrell does not remedy the
deficiencies of Levy and Titus as described above. See Final Act. 4. Hence,
for the foregoing reasons, we do not sustain the rejection of independent
claim 1, and claims 2-5 depending therefrom, under 35 U.S.C. § 103(a) as
unpatentable over Levy in view of Titus and Jerrell.
SUMMARY
The Examiner's decision to reject claims 1-5 is reversed.
REVERSED
5