Ex Parte Moreshead

Patent Trial and Appeal Board

Apr 4, 2016

11972577 (P.T.A.B. Apr. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111972,577 01/10/2008 Wylie Moreshead
32042 7590 04/06/2016
SQUIRE PB (DC Office)
8000 Towers Crescent Drive
14th Floor
Vienna, VA 22182-6212
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.
028377.0lOlClUS 6925
EXAMINER
ANDERSON, AMBER R
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
04/06/2016 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):
ipgeneraltyc@squirepb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WYLIE MORESHEAD 1
Appeal2014-004702
Application 11/972,577
Technology Center 3700
Before TERRY J. OWENS, ROMULO H. DELMENDO, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 11-14, 17-19, and 33. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to a flexible fabric having
electrical energy storage and release capabilities integrally formed therewith.
1 According to the Appellant, the real party in interest is the Appellant,
Wylie Moreshead. App. Br. 3.
Appeal2014-004702
Application 11/972,577
Spec. 1: 10-11; Claim 11. Claim 11 is reproduced below from page 14
(Claims Appendix) of the Appeal Brief:
11. A flexible wearable garment, comprising:
a fabric formed into a wearable garment;
at least one panel comprising:
a first flexible section adapted to store electrical energy,
a second section coupled to the first section and configured to
release the electrical energy stored in the first section for use
in at least one of: heat dissipation, heat generation, and light
emission, absent connection to an external source of power
while a person is wearing the garment,
wherein the second section is laminated with the first section
to form a flexible integral sheet; and
wherein said at least one panel is integrated into said first fabric
to provide a person who wears the garment with at least one of:
heat dissipation, heat generation, and light emission.
REJECTIONS ON APPEAL
1. Claims 11-14, 17, and 33 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Lew et al. (US 6,608,464 Bl, issued Aug. 19, 2003) in
view of Puentes (US 2003/0213045 Al, published Nov. 20, 2003).
2. Claims 18 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lew in view of Fuentes, further in view of Branom (US
4,709,307, issued Nov. 24, 1987).
ANALYSIS
The Appellant argues the claims subject to Rejection 1 as an
undifferentiated group. We select claim 11 as representative of the rejected
claims. The remaining claims subject to Rejection 1 will stand or fall with
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Application 11/972,577
claim 11. See 37 C.F.R. § 41.37(c)(l)(iv). Although the Appellant includes
a separate section in the Appeal Brief devoted to claims 18 and 19, see App.
Br. 11-13, which are subject to Rejection 2, the arguments are essentially
the same as those presented for Rejection 1 and do not focus on any
particular claim limitations found in claims 18 or 19. Therefore, those
claims will likewise stand or fall with claim 11.
After review of the cited evidence in the appeal briefs and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner's rejections.
Accordingly, we sustain the rejections for reasons set forth by the Examiner
in the Final Action and the Answer. See generally Final Act. 2---6; Ans. 2-8.
We add the following for emphasis and completeness.
The Examiner finds that Lew teaches a panel comprising the first and
second sections recited by claim 11 that are coupled together and laminated
to form a flexible integral sheet. Final Act. 3--4. The Examiner finds that
Lew does not teach the use of the panel in a wearable garment as recited by
claim 11. Id. The Examiner finds that Fuentes teaches a fabric garment that
incorporates a panel for the purpose of light emission so as to provide high
visibility to the wearer in situations such as riding a motorcycle. Id. at 4.
The Examiner concludes that "it would have been obvious ... to have
integrated the panel of Lew et al. into a wearable fabric garment, as taught
by Fuentes, so as to provide high visibility of a wearer to other viewers in
situation such as riding a motorcycle." Id.
The Appellant argues that Lew "is devoid of any suggestion to
integrate the power source into a wearable garment." App. Br. 9. That
argument is not persuasive because the Examiner relies on a combination of
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Application 11/972,577
Fuentes and Lew for motivation to achieve the wearable garment of claim
11. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) ("[O]ne cannot show
non-obviousness by attacking references individually where, as here, the
rejections are based on combinations of references.").
The Appellant repeatedly argues that Fuentes "teaches away" from the
claimed invention because it teaches "the use of a separate wire-connected
power source, which is remote from and not laminated with the discrete light
emitting elements that are attached to the jacket to form a flexible integral
sheet." E.g., App. Br. 8, 9, 11, 13; Reply Br. 5. We are not persuaded by
that argument. For a reference to "teach away," it must criticize, discredit,
or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004). "The prior art's mere disclosure of more than
one alternative does not constitute a teaching away from any of the[]
[disclosed] alternatives .... " Id. Even assuming that Fuentes does not
disclose a first flexible section to store electrical energy coupled to a second
section that can release energy "absent connection to an external source of
power," as recited by claim 11, the Appellant has identified no teaching in
Fuentes that criticizes, discredits, or otherwise discourages the claimed
arrangement. The Appellant's arguments do not persuade us that Fuentes
teaches away from claim 11.
The Appellant appears to argue that a person of ordinary skill in the
art would not have been motivated to combine Lew with Fuentes because
they are not sufficiently related to each other. See App. Br. 11. We
disagree. As the Examiner finds, both Lew and Fuentes "disclose a need to
notify other motorists of information regarding the occupants of a vehicle."
Ans. 6. Lew teaches an embodiment in which its flexible polymer battery is
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Application 11/972,577
coupled to LEDs to "provide emergency communication wireless calls for
assistance and also a lighted display of messages." Lew at 6: 16-25. Fuentes
teaches an embodiment in which LEDs are "mounted in a flexible substrate .
. . and overlaid by a cosmetically appealing layer or pattern" to form a high
visibility safety garment. Fuentes i-f 45.
While Lew's flexible polymer battery coupled to LEDs is not formed
into a wearable garment, the Appellant's unembellished argument does not
refute the Examiner's finding that a person of ordinary skill in the art would
have been motivated by the combination of references to design a wearable
garment such as that of Fuentes that includes the light source of Lew with a
flexible, integrated polymer battery. The modification proposed by the
Examiner is effectively a simple substitution of the flexible LED panel with
integrated power source of Lew for the light source of Fuentes with the
benefit of eliminating wires and a separate battery pack. See Final Act. 4
(combination of Lew and Fuentes "would not require any external source of
power"). Such substitutions typically do not result in nonobvious subject
matter. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
In the Reply Brief, the Appellant appears to argue that Lew does not
teach the limitation "wherein the second section is laminated with the first
section to form a flexible integral sheet." Reply Br. 3-5. The Appellant
does not present that argument in the opening Appeal Brief and has not
established good cause for reserving it for the Reply Brief; accordingly, we
deem that argument to be waived. See 37 C.F.R. § 41.41(b)(2). In any
event, merely quoting the claim language and emphasizing certain portions
is insufficient to establish reversible error in the Examiner's rejection. See
37 C.F.R. § 41.37(c)(l)(iv) ("A statement which merely points out what a
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claim recites will not be considered an argument for separate patentability of
the claim."); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(holding that "the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art"). The Examiner made specific findings of fact
concerning Lew's laminated layers, and the Appellant's arguments do not
address them. E.g., Final Act. 3--4; Ans. 3.
On this record, the Appellant's arguments do not persuade us of
reversible error in the Examiner's rejection.
CONCLUSION
We AFFIRM the Examiner's rejection of claims 11-14, 17-19, and
33.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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