Ex Parte Krull

Patent Trial and Appeal Board

Apr 24, 2018

14176043 (P.T.A.B. Apr. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/176,043 02/07/2014
28997 7590 04/26/2018
HARNESS, DICKEY, & PIERCE, P.L.C
7700 Bonhomme, Suite 400
ST. LOUIS, MO 63105
FIRST NAMED INVENTOR
Donald R. Krull
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.
16790-000002-US 7341
EXAMINER
PICHLER, MARIN
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
04/26/2018 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):
stldocket@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONALD R. KRULL
Appeal2017-009345
Application 14/176,043
Technology Center 2800
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
Opinion of the Board filed by Administrative Patent Judge DELMENDO.
Opinion Dissenting filed by Administrative Patent Judge HASTINGS.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant 1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner's decision to reject claims 1-14.2 We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 Donald R. Krull, the Appellant, is identified as the real party in interest.
Appeal Brief filed on February 21, 2017, hereinafter "Appeal Br.," 2.
2 Appeal Br. 6-16; Reply Brief filed on June 21, 2017, hereinafter "Reply
Br.," 2-8; Final Office Action (notice emailed on June 30, 2016) hereinafter
"Final Act.," 2-17; Examiner's Answer (notice emailed on April 21, 2017),
hereinafter "Ans.," 2-10.
Appeal2017-009345
Application 14/176,043
I. BACKGROUND
The subject matter on appeal relates to "a lens cover for an optical
instrument." Specification filed on February 7, 2014, hereinafter "Spec.,"
i-f 1. Figure 1 is reproduced from the application as follows:
Figure 1 above depicts a lens cover 20 in accordance with the invention,
wherein the lens cover 20 includes, inter alia, first flexible cover panel 22
having a sleeve 24 thereon forming a substantially closed loop, a second
flexible cover panel 26 having a sleeve 28 forming a substantially closed
loop, and a drawstring 30 having first and second ends 32 and 34,
respectively. Id. i-fi-1 8, 20-21.
The Appellant states that optical devices have expensive lenses that
require protection from dirt and scratches when not in use but rigid plastic
lens caps are easily lost after removal and tend to rattle or clink when
tethered, which is annoying or may scare away animals during hunting or
nature watching. Id. i-f 2. The cover panels are described as being made of a
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Application 14/176,043
fiber material that protects lenses but is not prone to rustling or crackling.
Id. ifif 22-24.
Representative claim 1 is reproduced from page 19 of the Appeal
Brief, as follows (emphasis added):
1. A lens cover for an optical instrument, the lens cover
compnsmg:
a first flexible cover panel having a sleeve forming a
substantially closed loop thereon;
a second flexible cover panel having a sleeve forming a
substantially closed loop thereon;
a drawstring having first and second ends, the first end of
the drawstring secured to the first flexible cover panel, with the
portion of the drawstring adjacent the first end extending
through the sleeve on the first flexible cover so that pulling the
drawstring pulls the first flexible cover panel into a concave
configuration that can be secured over an end of an optical
instrument; and the second end of the drawstring secured to the
second flexible cover panel, with the portion of the drawstring
adjacent the second end extending through the sleeve on the
second flexible cover so that pulling the drawstring pulls the
second flexible cover panel into a concave configuration that can
be secured over an end of an optical instrument.
II. REJECTION ON APPEAL
On appeal, the Examiner maintains the following rejection (Ans. 2;
Final Act. 3-11 ):
Claims 1-14 under post-AIA 35 U.S.C. § 103 as being
unpatentable over Carley3 in view of Wisecup et al. (hereinafter
"Wisecup")4 and Aranyi. 5
3 US 2010/0037506 Al, published on Feb. 18, 2010.
4 US 2006/0191184 Al, published on Aug. 31, 2006.
5 US 2006/0200170 Al, published on Sept. 7, 2006.
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Application 14/176,043
III. DISCUSSION
The Examiner finds Carley discloses a lens cover for an optical
instrument including first and second flexible cover panels and a drawstring
having first and second ends secured to the cover panels. Final Act. 3--4.
The Examiner finds Carley does not disclose that the first and second cover
panels have a sleeve forming a substantially closed loop through which
respective ends of the drawstring extend such that pulling the drawstring
pulls each cover panel into a concave configuration that can be secured over
an end of an optical instrument, as recited in claim 1. Id. at 4.
The Examiner finds Wisecup discloses a lens cover for an optical
scope having a flexible cover panel with a sleeve forming a substantially
closed loop with a portion of a drawstring adjacent the ends of the
drawstring extending through the sleeve so that when the drawstring is
pulled the flexible cover panel is drawn into a concave configuration. Id. at
4--5. The Examiner concludes it would have been obvious to modify the
lens cover of Carley to include the sleeve and drawstring of Wisecup to form
the first and second cover panels of Carley into pouches so the lens cover of
Carley is water-proof, breathable, lightweight, easy to put on and take off,
easy to store, and universal in size, as taught by Wisecup. Id. at 5.
The Examiner finds Carley, as modified by Wisecup, does not
disclose that the first and second ends of the drawstring are secured to the
first and second cover panels, as recited in claim 1. Id. The Examiner finds
Aranyi discloses a specimen removal apparatus including a pouch assembly
made from a flexible membrane in which an end of a drawstring that forms a
loop inside a sleeve of the pouch assembly is secured to a panel of the pouch
assembly. Id. The Examiner concludes it would have been obvious to
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Application 14/176,043
modify Carley, as modified by Wisecup, in view of Aranyi so ends of a
drawstring are retained to the cover panels, which enables closing a pouch
by simply actuating the drawstring. Id. at 5---6.
The Appellant contends the combination of the applied references
does not teach a cover panel on each end of a drawstring. Appeal Br. 10, 14.
Specifically, the Appellant argues that "Carley and Wisecup are inadequate
because they do not teach securing the first and second end of the drawstring
to the cover panels." Id. at 9. According to the Appellant, the proposed
modification is contrary to Wisecup' s teachings, which would have
suggested enclosing the scope completely. Id. at 10, 11. Furthermore, the
Appellant asserts Carley does not disclose two flexible panels on opposite
ends of a drawstring, or even a drawstring, and Wisecup does not disclose
that the ends of its drawstring are attached to its scope pouch. Reply Br. 6-
7. The Appellant further contends that Aranyi does not disclose securing
each end of a drawstring to cover panels and thus the applied references,
singly or in combination, do not teach a drawstring having its ends secured
to first and second cover panels, as recited in claim 1. Id. at 7-8. Because
there would have been no reason to combine Carley, Wisecup, and Aranyi,
the Appellant submits that the Examiner's rejection relies upon
impermissible hindsight. Appeal Br. 10-13; Reply Br. 6.
The Appellant's arguments are persuasive. Carley discloses a cover
for a telescopic sight. Carley i-fi-f l. An embodiment of the cover is
illustrated in Figure 6, which is reproduced below.
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Application 14/176,043
FIG. 6'
10
f ---~~----
;
Figure 6 of Carley depicts a perspective view of a scope covering device.
Carley discloses its covering device 10 includes two pockets 112, 118
coupled via cords 110, 120. Id. i-f 56.
Wisecup discloses a gun scope and action cover, an embodiment of
which is shown in Figure 1, which is reproduced below.
1bB
80 J
f 0
Figure 1 of Wisecup illustrates a side view of a gun scope and action cover.
Wisecup discloses that the cover 10 includes an elastic cord 24 with a
cord lock 26 and a skirt portion 70 that drapes over the action mechanism 72
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Appeal2017-009345
Application 14/176,043
of a gun. Wisecup i-f 60. Wisecup discloses that the elastic cord is disposed
between two sheets of fabric or within a strip of fabric folded over to form a
sleeve and that "[ t ]he elastic cord, upon being cinched and retained by the
cord lock, forms an adjustably-sized pouch for engagement around the scope
of a gun, with the skirt covering the gun action." Id. i-fi-18, 11, 12. Wisecup
further discloses that the cover "is universal in size, quiet in use, easy to put
on and take off, and easy to store." Id. i-f 8.
The Examiner explains that Carley discloses two separate cover
panels, Wisecup discloses a configuration the permits a scope cover to be
cinched by the drawstring extending through a sleeve of the cover, and that
Wisecup' s disclosure would have provided reasons for modifying Carley's
cover to include Wisecup' s sleeve and drawstring. Ans. 3-6.
Wisecup, however, does not disclose or suggest securing the ends of
one drawstring to separate pouches or cover panels, as recited in claim 1,
and therefore does not cure the deficiencies of Carley. As shown in Figure 1
above, Wisecup discloses a drawstring 24 is used to cinch a single pouch 11
to cover the entirety of an optical device 44. Thus, if anything, Wisecup
would have prompted a person having ordinary skill in the art to modify
Carley by providing a single pouch that encloses the scope completely-not
two separate pouches on each lens to be cinched by a single drawstring,
absent impermissible hindsight.
Even assuming that it would have been obvious for one of ordinary
skill in the art to apply the teachings of Wisecup to each pocket 112, 118 of
Carley (e.g., to make each pocket 112, 118 a pouch that can be cinched by a
drawstring), Wisecup' s disclosure would have suggested a separate
drawstring for each pouch, not a single drawstring having ends secured to
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Application 14/176,043
each pouch, as recited in claim 1. Here, the Examiner does not direct us to
sufficient evidence or articulated reasoning to demonstrate that a person of
ordinary skill in the art would have implemented the concept of using a
coupler or tether for two cinchable items as a common drawstring for both
items.
In response to the Appellant's argument that the prior art references
would not have suggested a panel on each end of a drawstring, the Examiner
finds Carley's cords 110, 120 function as a drawstring. Final Act. 3; Ans. 8.
Although Carley suggests the cords 110, 120 coupling the pockets 112, 118
may be "composed of a stretchy and flexible material, such as a rubber,
elastomeric polymer, leather, or soft fabric" (Carley i-f 34), Carley does not
disclose or suggest that the cords 110, 120 function as a drawstring having
ends coupled to the pockets 112, 118 so that when the drawstring is pulled
the pockets 112, 118 are pulled into a concave configuration, as recited in
claim 1. Final Act. 4.
Aranyi has not been shown to cure the above deficiencies in the
Examiner's reliance on Carley and Wisecup. Aranyi discloses a specimen
removal pouch for minimally invasive surgical procedures. Aranyi i-f 2. An
embodiment of the pouch is depicted in Figure 3, which is reproduced
below.
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Application 14/176,043
~ ___ ...... _________ _
\. --- - - - - - -- - - -
---"Di ____ ....,.
.::11'1 ...
FIG.3
Z(,,O
Figure 3 of Aranyi is side partially cut away view of
a specimen removal pouch.
Aranyi discloses that the pouch 290 includes a sleeve 266 that
receives a drawstring 250 so that an end of the drawstring 250 is looped
through the pouch and tied to the drawstring 250 via a knot that slips along
the drawstring 250 so that when the drawstring 250 is pulled the loop
tightens and the mouth 262 of the pouch is closed. Id. i-fi-f 10-12, 42-46, 60.
However, Aranyi is also silent with regard to ends of a drawstring
being secured to first and second cover panels, so, when the drawstring is
pulled, the cover panels are pulled into a concave configuration, as recited in
claim 1. Thus, Aranyi' s disclosure does not cure the deficiencies in the
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Application 14/176,043
Examiner's reliance on Carley and Wisecup, and the applied references do
not support a conclusion that the lens cover of claim 1 would have been
obvious to one of ordinary skill in the art.
In view of the above, the Examiner's conclusion that the combination
of the applied references would have resulted in the claimed invention
appears to be based on impermissible hindsight. KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398, 421 (2007) (citing Graham v. John Deere Co., 383 U.S.
1, 3 6 ( 1966) (warning against a "temptation to read into the prior art the
teachings of the invention in issue")).
For these reasons, the Appellant's arguments identify a reversible
error in the Examiner's rejection of claim 1. Because the Examiner has not
established that all of the limitations of claim 1 are disclosed or would have
been obvious based on Carley, Wisecup, and Aranyi, we also reverse the
obviousness rejection of dependent claims 2-7 for the same reasons.
Independent claim 8 is rejected as obvious over Carley, Wisecup, and
Aranyi for similar reasons as claim 1. Final Act. 6-9. Claim 8 includes
similar limitations regarding a drawstring having ends secured to first and
second flexible cover panels. Claims 9-14 depend from claim 8. Therefore,
we also reverse the rejection of claims 8-14.
As a result, we cannot uphold the Examiner's§ 103 rejection of
claims 1-14 over Carley, Wisecup, and Aranyi.
V. SUMMARY
The Examiner's decision to reject claims 1-14 is reversed.
REVERSED
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Appeal2017-009345
Application 14/176,043
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONALD R. KRULL
Appeal2017-009345
Application 14/176,043
Technology Center 2800
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge, dissenting.
I respectfully dissent. Specifically, I disagree with my colleagues
reasoning that
Even assuming that it would have been obvious for one
of ordinary skill in the art to apply the teachings of Wisecup to
each pocket 112, 118 of Carley (e.g., to make each pocket 112,
118 a pouch that can be cinched by a drawstring), Wisecup' s
disclosure would have suggested a separate drawstring for each
pouch, not a single drawstring having ends secured to each
pouch, as recited in claim 1.
Decision 7
I believe that one of ordinary skill in the art, using no more than
ordinary creativity, would have used a single drawstring to cinch each
pocket as suggested by Careley's use of a single tether to hold both
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Application 14/176,043
protective covers together. A person of ordinary skill in the art would have
readily appreciated and implemented the concept of using a coupler or tether
for two cinchable items as a common drawstring for both items.
The Appellant's arguments regarding advantageous features
disclosed by Wisecup (e.g., covering an entire scope with one pouch, using a
skirt to protect a gun's action, and including a heat source) focus on a bodily
incorporation of Wisecup's embodiment into the cover disclosed by Carley.
However, "[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference .... Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art." In re
Keller, 642 F.2d 413, 425 (CCPA 1981). As discussed above, Wisecup
discloses advantages for its configuration in which a pouch is cinched (e.g.,
making the pouch adjustable in size) that would have provided a reason to
modify Carley's covering device in view of Wisecup's disclosure.
Furthermore, to the extent the modification of Carley in view of Wisecup
would have omitted advantageous features disclosed by Wisecup, something
that is known or obvious does not become patentable simply because it has
been described as somewhat inferior to some other product for the same use.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Moreover, using Wisecup's
drawstring configuration in the pockets of Carley's covering device would
have been the improvement of a similar device using a known technique
(i.e., using Wisecup's drawstring configuration to make Carley's pockets
adjustable in size, easy to put on and take off, and easy to store). KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("[I]f a technique has been
used to improve one device, and a person of ordinary skill in the art would
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Application 14/176,043
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her
skill.").
In my view one does not even need Aranyi for the rejection of claim
1. It would have been readily appreciated by the artisan that each end of the
single drawstring would need to be secured to each of Carley's pockets in a
manner to permit the drawstring to function to close the pockets.
But to be complete, I will address Appellants' arguments concerning
Aranyi. The Appellant further asserts that Aranyi is non-analogous art
because Aranyi is directed to the field of tissue capture during laparoscopic
surgery and is not directed to the problem with which the inventor is
involved, which is "securing a cover for the end of an optical instrument."
Appeal Br. 12; Reply Br. 5. The Appellant also argues there would have
been no reason to modify Carley and Wisecup in view of Aranyi and the
Examiner's rejection relies upon impermissible hindsight. Appeal Br. 13;
Reply Br. 6.
Under the conventional non-analogous art test,
[t]wo criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of
endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor's endeavor,
whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.
In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992).
Regarding the latter criterion, "[a] reference is reasonably pertinent if,
even though it may be in a different field of endeavor, it is one which,
because of the matter with which it deals, logically would have commended
itself to an inventor's attention in considering his problem." In re Clay, 966
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Application 14/176,043
F.2d 656, 659 (Fed. Cir. 1992). If a reference disclosure relates to the same
problem as that addressed by the claimed invention, "that fact supports use
of that reference in an obviousness rejection. An inventor may well have
been motivated to consider the reference when making his invention." Id.
Here, the Examiner finds Aranyi would have been reasonably
pertinent to the particular problem with which the inventor is involved
because Aranyi solves issues regarding the closing of a pouch via a
drawstring and thus would have been considered by one of ordinary skill in
the art. Ans. 6-7.
Aranyi discloses that the pouch 290 includes a sleeve 266 that
receives a drawstring 250 so that an end of the drawstring 250 is looped
through the pouch and tied to the drawstring 250 via a knot that slips along
the drawstring 250 so that when the drawstring 250 is pulled the loop
tightens and the mouth 262 of the pouch is closed. Id. i-fi-f 10-12, 42--46, 60.
Thus, Aranyi' s disclosure supports the Examiner's findings and would have
commended itself to a person's attention who was considering the problem
of how to cinch a pouch closed (i.e., the function Carley, when modified in
view of Wisecup, uses to close a pouch to cover a scope). Furthermore,
Aranyi' s disclosure would have been reasonably pertinent to the particular
problem (i.e., securing a cover to the end of an optical instrument) with
which the inventor was involved, such as when considering how to modify
the closing features of Carley and Wisecup. Moreover, Aranyi' s disclosure
supports the Examiner's conclusion it would have been obvious to modify
Carley, as modified by Wisecup, in view of Aranyi' s disclosure that its
drawstring configuration permits a pouch to be cinched closed by actuating
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Application 14/176,043
only a single part or filament of the drawstring. Final Act. 5---6; Ans. 8;
Aranyi i-f 60.
In addition, the Appellant asserts the applied references do not teach
cover panels on each end of a drawstring because Carley does not disclose
two flexible panels on opposite ends of a drawstring, Carley does not
disclose that ends of the drawstring are secured to the cover panels, and
Wisecup does not disclose that the ends of its drawstring are attached to its
scope pouch. Appeal Br. 14; Reply Br. 6-7. The Appellant further contends
that Aranyi does not disclose securing each end of a drawstring to cover
panels so that tensioning the drawstring draws the panels into a concave
configuration, as recited in claim 1, because Aranyi uses slip knots, which
Appellant purports as operating in a different way than the claimed structure,
and Aranyi does not attach the drawstring to its bag. Appeal Br. 12-13;
Reply Br. 7-8.
These arguments do not address the Examiner's rejection and what the
applied references would have suggested to one of ordinary skill in the art.
As discussed above, the disclosures of Carley and Wisecup, when
considered as a whole, would have suggested first and flexible cover panels
joined by a drawstring extending through sleeves of the cover panels. The
Examiner finds pulling the drawstring of this combination would pull the
panels into a concave configuration. Final Act. 4. This is supported by
Wisecup' s disclosure, which teaches cinching a layer of fabric into a
protective pouch that fits over the ends of a scope. Wisecup i-fi-18-11.
If even necessary, the Examiner also finds that Aranyi discloses its
drawstring is retained (i.e., secured) to a pouch (which is also in a concave
configuration) via a knot tied with the drawstring. Ans. 6, 9. Aranyi
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Application 14/176,043
supports this finding by disclosing an end of the drawstring passes through a
tubular chamber 266 of a pouch assembly and tied to the drawstring via a
knot, which "is retained in position while drawstring 250 is pulled
proximally, thereby closing loop 252." Aranyi i-f 60. Claim 1 recites that the
first and second ends of the drawstring are "secured" to the respective first
and second cover panels, not that the ends are attached to the cover panels or
otherwise secured in a specific manner that does not encompass the knot
arrangement of Aranyi, which retains the drawstring end in place with the
pouch.
For these reasons and those set forth in the Examiner's Answer, I
believe that the Appellant's arguments do not identify a reversible error in
the Examiner's rejection of claim 1. The Appellant does not provide any
argument in support of the separate patentability of claims 2-14. Appeal Br.
16.
As a result, I would have upheld the Examiner's§ 103 rejection of
claims 1-14 over Carley, Wisecup, and Aranyi.
16