Ex Parte RashmanDownload PDFPatent Trial and Appeal BoardOct 23, 201713206296 (P.T.A.B. Oct. 23, 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. 13/206,296 08/09/2011 Daphna Rashman BPMDL0041DR (10331U) 3549 27939 7590 10/24/2017 Philip H. Burrus, IV Burrus Intellectual Property Law Group LLC 222 12th Street NE Suite 1803 Atlanta, GA 30309 EXAMINER HUYNH, KHOA D ART UNIT PAPER NUMBER 3765 MAIL DATE DELIVERY MODE 10/24/2017 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 DAPHNA RASHMAN Appeal 2015-007704 Application 13/206,2961 Technology Center 3700 Before STEFAN STAICOVICI, WILLIAM A. CAPP, and BRANDON J. WARNER, Administrative Patent Judges. Opinion for the Board filed by STAICOVICI, Administrative Patent Judge Opinion Concurring filed by CAPP, Administrative Patent Judge STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Daphna Rashman (“Appellant”) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Non-Final Action (dated Aug. 14, 2014, 1 According to Appellant’s Appeal Brief (hereafter “Br.”), filed Mar. 23, 2015, Medline Industries, Inc. is the real party in interest. Br. 2. Appeal 2015-007704 Application 13/206,296 hereafter “Non-Final Act.”) rejecting claims 1, 2, 4—8, and 12—22.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. INVENTION Appellant’s invention relates to “an adjustable gown having an adjustable closing component and an adjustable cinching component.” Spec, para. 19. Claims 1, 15, and 19 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. An adjustable gown, comprising: a body covering portion having front portion, a first back portion, and a second back portion, the first back portion and the second back portion defining an opening therebetween; and a closing component comprising at least three closing elements, at least a first closing element coupled to one of the first back portion or the second back portion, and at least some remaining closing elements are disposed distally from each other on another of the first back portion or the second back portion; the first closing element having a first color; one closing element of the at least some remaining closing elements having the first color, another closing element of the at least some remaining closing elements having a second color different from the first color; coupling the first closing element to one of the remaining closing elements configures the adjustable gown in a first size 2 Claims 3, 9-11, and 23 are canceled. Br. 20, 21, and 23 (Claims App.). 2 Appeal 2015-007704 Application 13/206,296 indicated by the first closing element and the one of the at least some remaining closing elements each have the first color; coupling the first closing element to another of the remaining closing elements configures the adjustable gown in a second size different from the first size indicated by the first closing element and the another closing element of the at least some remaining closing elements having different colors. REJECTIONS I. The Examiner rejected claims 1, 2, 4, and 12—22 under 35 U.S.C. § 103(a) as being unpatentable over Freeman (US 4,570,268, iss. Feb. 18, 1986) and Richards (US 7,305,716 Bl, iss. Dec. 11, 2007). II. The Examiner rejected claims 5—8 under 35 U.S.C. § 103(a) as being unpatentable over Freeman, Richards, and Kaye (US 5,797,787, iss. Aug. 25, 1998). ANALYSIS Rejection I Claims 1, 2, 4, 12—14, 21, and 22 Appellant has not presented arguments for the patentability of claims 2, 4, 12—14, 21, and 22 apart from claim 1. See Br. 11. Therefore, in accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 1 as the representative claim to decide the appeal of the rejection of these claims, with claims 2, 4, 12—14, 21, and 22 standing or falling with claim l.3 3 We appreciate that Appellant has grouped claims 21 and 22 with independent claim 19. See Br. 11. However, as claims 21 and 22 3 Appeal 2015-007704 Application 13/206,296 Freeman discloses an adjustable gown including most of the limitations of independent claim 1, but fails to disclose colored closing elements (fasteners) having the claimed color-coded scheme. See Non-Final Act. 5—6. Nonetheless, the Examiner finds that Richards discloses color- coded fasteners for an adjustable gown. Id. at 6 (citing Richards, col. 2, 11. 23—26). The Examiner notes that, even though Richards “may not specifically state that one of the mating fasteners is the same color and the other mating fasteners are different colors than the original fasteners, it is certainly implied.” Id. (emphasis added). Hence, according to the Examiner, such implied teaching results from Richards because “[cjolor- coding is merely a system for displaying information by using different colors, whether they be the same and/or different, just as long as information is provided to the viewer/user.” Id. Thus, the Examiner concludes that it would have been obvious for a person of ordinary skill in the art “to have used a color-coded scheme for closing elements as taught by Richards for the closing elements of Freeman in order to facilitate varying the size of the secured garment through color-coded visual indicia.” Id. at 6—7. Moreover, the Examiner states that “[t]he first and at least some remaining closing components of Freeman are capable of being color-coded with regards to varied sizing as is taught by Richards.” Id. at 6. Appellant argues that, in contrast to independent claim 1, where some of the complementary buttons are colored differently, the “complementary buttons or snaps in Richards must be identically colored.” Br. 15 (emphasis depend from independent claim 1, for the purpose of this appeal we shall group them with claim 1. 4 Appeal 2015-007704 Application 13/206,296 omitted). According to Appellant, in order to eliminate the trial and error of mating numerous snaps in Richards, “snap 25 and the three mating snaps 26 would all have the same color.'” Id. at 16—17 (underlining omitted). In response, the Examiner notes that “Richards expressly teaches a garment that uses color[-]coded snaps to match up mating portions of the garment,” such as a first set of red snaps, a second set of blue snaps and a third set of green snaps. Examiner’s Answer 4—5 (dated June 17, 2015, hereafter “Ans.”). The Examiner further reiterates the view that “the term ‘color-coded’ . . . [is] a system for displaying information to a viewer/user through the use of the same and/or different colors in combination.” Id. at 5. Hence, according to the Examiner, a person of ordinary skill in the art would readily understand using a blue snap 25 and three varying shades of blue snaps 26 to achieve a color-coded system for varying the size of an adjustable garment and to eliminate the trial and error mating of Richards’ snaps. Id. The Examiner concludes that, by using “the express teachings of Richards with regards to one view of ‘color-coding’ ([c]ol. 2, lines 10-17)” and “the traditional meaning of ‘color-coding’ to further elaborate on what is being taught with regards to snaps 25—26 ([c]ol 2, lines 23—26),” the color coding of Richards can “be applied to different colors as well as colors from the same family, while continuing to eliminate the need for ‘trial and error’ when attaching a garment to a patient.” Id. Richards discloses a gown member 1 having a pair of sleeve sections 3 separable and re-attachable along seam 5 “using a series of color- coded snaps 6,” wherein “a male snap on one side of the seam has a discrete color that is identical to that of the matching female snap on the opposing 5 Appeal 2015-007704 Application 13/206,296 side of the seam.” Richards, col. 2,11. 4—17, Fig. 1 (emphasis omitted). Richards further discloses attaching back flaps 7, 30 using a snap 25 that “is color-coded to correspond with any of the three mating snaps 26 . . . [thereby] allowing the size of the secured garment to be varied.” Id., col. 2, 11. 18—28, Fig. 1 (emphasis omitted). As such, in light of Richards’ disclosure, we appreciate Appellant’s position that the color-coded snaps of Richards do not employ the same color-coded scheme, as called for by claim 1. See Br. 11—14. However, the claimed color-coded scheme represents nonfunctional descriptive material that is not afforded patentable weight, and thus, cannot render nonobvious an invention that is otherwise obvious over the prior art. We agree with the Examiner that “[c]olor-coding is merely a system for displaying information by using different colors, whether they be the same and/or different, just as long as information is provided to the viewer/user.” Non-Final Act. 6. Whether the colors of fabric ties 48, 50, 52, and 54 of Freeman’s gown, as modified by Richards, constitute the recited color-coded scheme or not does not impart any structural difference to the resulting gown claimed. Specifically, the claimed color-coded scheme has no bearing on the structure or ultimate function of fabric ties 48, 50, 52, and 54 of Freeman’s gown, as modified by Richards, namely, to vary the size of the gown for patients of different girths. See Freeman, col. 5,11. 49—63. In other words, the particular color combinations of fabric ties 48, 50, 52, and 54 of Freeman’s gown, as modified by Richards, does not functionally relate to the fabric ties, which perform their intended function of varying the size of the gown for patients of different girths regardless of the color-coded scheme employed. 6 Appeal 2015-007704 Application 13/206,296 Whether fabric ties 48, 50, 52, and 54 have colors that correspond to the claimed color-coded scheme or, for example, have the color-coded scheme of Richards, , the resulting gown of Freeman, as modified by Richards, is usable in the same way and for the same purposes. Lastly, although Appellant argues that the claimed color-coded scheme is functionally related to the claimed closing elements because it informs a user about the size of the gown (see Br. 12—14), i.e., medium or large, this argument is unpersuasive because the color code cannot impart patentability, as it is “useful and intelligible only to the human mind.” See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969); see also In re Xiao, 462 Fed. Appx. 947 (Fed. Cir. 2011) (non-precedential) (non-functional descriptive material, being useful and intelligible only to the human mind, is given no patentable weight). In conclusion, for the foregoing reasons, we sustain the rejection under 35 U.S.C. § 103(a) of claim 1 as unpatentable over Freeman and Richards. Claims 2, 4, 12—14, 21, and 22 fall with claim 1. Claims 15—20 Appellant has not presented arguments for the patentability of claims 16—18 apart from claim 15, and of claim 20 apart from claim 19. See Br. 11, 19. We select claims 15 and 19 as representative claims, with claims 16—18 standing or falling with claim 15, and claim 20 standing or falling with claim 19. 7 Appeal 2015-007704 Application 13/206,296 With respect to the rejection of independent claims 15 and 19, Appellant relies on the arguments presented supra in the rejection of claim 1. See Br. 18. Therefore, for the same reasons as discussed above, we likewise sustain the rejection of claims 15—20 over the combined teachings of Freeman and Richards. Rejection II As to the rejection of dependent claims 5—8, Appellant does not present any substantive arguments. Br. 11 (“For efficiency during appeal Appellant only argues against the rejections for the independent claims.”). Therefore, we summarily sustain the rejection under 35 U.S.C. § 103(a) of claims 5—8 as unpatentable over Freeman, Richards, and Kaye. SUMMARY The Examiner’s decision to reject claims 1, 2, 4—8, and 12—22 under 35 U.S.C. § 103(a) is affirmed. 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 8 Appeal 2015-007704 Application 13/206,296 OPINION CONCURRING CAPP, Administrative Patent Judge I concur in the result reached by the majority as I am of the opinion that the claims are unpatentable as obvious over the cited art. Richards discloses that color may be used to identify and distinguish fasteners on a gown. Richards, col.. 2,11. 19-28. In my opinion, Appellant’s use of a color coding scheme to size a garment is merely a predictable variation of Richard’s use of color coded garment fasteners. See KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (if a person of ordinary skill in the art can implement a predictable variation of the prior art, section 103 likely bars its patentability). I write separately because I do not agree that Appellant’s color coding is nonfunctional descriptive matter as being “useful and intelligible only to the human mind.” Here, there is a functional relationship between the size of the garment and the size or shape of the person that will wear the garment. The user functionally interacts with the fasters in donning the garment and fastening it around them. Here, color coding is an integral aspect of the user interface between the garment and the user, functionally identifying components of the fastening system so that the user can select the appropriate fastener to correctly size the garment. Much of the subject matter within the field of ergonomics relates to man-machine interfaces and conveying information that is useful and intelligible to the human mind. For example, it is well known in the field of ergonomics and aviation cockpit design that landing gear control handles are shaped liked wheels and that flap 9 Appeal 2015-007704 Application 13/206,296 control handles are shaped like airfoils to facilitate a pilot’s recognition and selection of the correct control device when flying an airplane. Similarly, colors such as red and yellow on indicator displays are frequently used to communicate cautions and warnings to a pilot. The fact that shapes or colors are used to convey information to the human mind does not, in my opinion, always require such matter to be disregarded as of no patentable weight. In order for descriptive matter to have no patentable weight, there must be a lack of functionality relative to the substrate that bears the descriptive matter. In re Milller, 418 F.2d 1392 (CCPA 1969). In Miller, the court reversed a decision of the Board upholding the rejection of certain claims as unpatentable. Id. The Miller court found that gradation indicia disposed on a measuring cup bore a functional relationship to the cup. no attempt is here being made to patent printed matter as such. The fact that printed matter by itself is not patentable subject matter, because non-statutory, is no reason for ignoring it when the claim is directed to a combination. Here there is a new and unobvious functional relationship between a measuring receptacle, volumetric indicia thereon indicating volume in a certain ratio to actual volume, and a legend indicating the ratio, and in our judgment the appealed claims properly define this relationship .... The solicitor seems to urge that we ignore the claim limitations to the indicia and legends because they are printed and because printed matter is not patentable subject matter by itself... we reject that argument. Id. at 813. In a manner similar to the printed indicia in Miller, the color coding on Appellant’s fasteners bears a functional relationship 10 Appeal 2015-007704 Application 13/206,296 to the garment as it facilitates the sizing of the garment in the same way that Miller’s indicia facilitates a cook measuring the ingredients of a recipe. Nevertheless, I agree with the Examiner’s conclusion that, in light of the teachings of Freeman and Richards, it would have been obvious to use color coding on fasteners in the manner claimed by Appellant. Thus, I CONCUR in the result. 11 Copy with citationCopy as parenthetical citation