Ex Parte ShadidDownload PDFPatent Trial and Appeal BoardDec 19, 201613595528 (P.T.A.B. Dec. 19, 2016) 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. 13/595,528 08/27/2012 Marg Shadid L81.12-0002 3074 27367 7590 12/19/2016 WESTMAN CHAMPLIN & KOEHLER, P.A. SUITE 1400 900 SECOND AVENUE SOUTH MINNEAPOLIS, MN 55402 EXAMINER KINSAUL, ANNA KATHRYN ART UNIT PAPER NUMBER 3765 MAIL DATE DELIVERY MODE 12/19/2016 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 MARG SHADID Appeal 2015-001343 Application 13/595,528 Technology Center 3700 Before LINDA E. HORNER, MITCHELL G. WEATHERLY, and ERIC C. JESCHKE, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Marg Shadid (Appellant)1 seeks our review under 35 U.S.C. § 134 of the Examiner’s decision, as set forth in the Final Action, dated January 24, 2014 (“Final Act.”), rejecting claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant identifies the real party in interest as Let’s Go Designs Inc. Appeal Br. 1. Appeal 2015-001343 Application 13/595,528 CLAIMED SUBJECT MATTER Appellant’s claimed subject matter relates to “a jacket that is worn by a person walking a dog.” Spec. para. 7. Claims 1 and 12 are independent. Claim 1 is reproduced below. 1. A jacket comprising: a torso covering portion comprising a first front panel and a second front panel and left and right arm holes; a right sleeve attached to the torso covering portion and aligned with the right arm hole; a left sleeve attached to the torso covering portion and aligned with the left arm hole; and a first pocket attached to the first front panel of the torso covering portion, the first pocket adapted to retain a roll of plastic bags, the pocket having an opening for dispensing the bags with manual force while gripping a lead bag; a second pocket attached to the second front panel of the torso covering portion is configured to retain a plastic pouch therein; and a plastic pouch positioned within the second pocket and having an attaching mechanism for removably retaining the plastic pouch in the second pocket, the plastic pouch having a continuous upper edge defining an opening, the continuous upper edge comprising a first portion and a second portion that are separated by opposing side edges, wherein the opposing side edges have an inwardly formed pleat that allows the first and second portions to move relative to each other, wherein the opening is constricted by positioning the first and second portions proximate each other by collapsing the pleats in the opposing side edges and wherein the opening is expanded by expanding the pleats in the opposing side edges and thereby spacing the first and second portions apart from each other. 2 Appeal 2015-001343 Application 13/595,528 EVIDENCE The Examiner relied upon the following evidence: Jennings US 1,869,261 July 26, 1932 Frank US 2,368,654 Feb. 6, 1945 Herbert US 2,873,449 Feb. 17, 1959 Mint/ US 3,332,398 July 25, 1967 Smith US 4,977,626 Dec. 18, 1990 Stewart US 5,394,565 Mar. 7, 1995 Ost US 5,718,000 Feb. 17, 1998 Test US 5,913,409 June 22, 1999 Poston US 6,564,388 B1 May 20, 2003 Fayle US 6,654,963 B2 Dec. 2, 2003 Chabrier AU 2007101121 May 22, 2008 REJECTIONS The Final Action included the following grounds of rejection: I. Claims 1,3, 10, and 11 under 35 U.S.C. § 103(a) as unpatentable over Ost, Jennings, Herbert, and Stewart. II. Claim 2 under 35 U.S.C. § 103(a) as unpatentable over Ost, Jennings, Herbert, Stewart, and Chabrier. III. Claim 2 under 35 U.S.C. § 103(a) as unpatentable over Ost, Jennings, Herbert, Stewart, and Smith. IV. Claim 4 under 35 U.S.C. § 103(a) as unpatentable over Ost, Jennings, Herbert, Stewart, and Test. V. Claim 7 under 35 U.S.C. § 103(a) as unpatentable over Ost, Jennings, Herbert, Stewart, and Poston. VI. Claims 8 and 9 under 35 U.S.C. § 103(a) as unpatentable over Ost, Jennings, Herbert, Stewart, and Fayle. 3 Appeal 2015-001343 Application 13/595,528 VII. Claims 5, 6, 12-14, 17, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable over Ost, Jennings, Herbert, Stewart, Frank, and Mintz. VIII. Claim 15 under 35 U.S.C. § 103(a) as unpatentable over Ost, Jennings, Herbert, Stewart, Frank, Mintz, and Test. IX. Claim 16 under 35 U.S.C. § 103(a) as unpatentable over Ost, Jennings, Herbert, Stewart, Frank, Mintz, and Poston. X. Claim 18 under 35 U.S.C. § 103(a) as unpatentable over Ost, Jennings, Herbert, Stewart, Frank, Mintz, and Fayle. XI. Claims 12, 14, and 17 under 35 U.S.C. § 103(a) as unpatentable over Frank, Jennings, Herbert, and Stewart. XII. Claims 1-20 under the doctrine of obviousness-type double patenting over claims 1-23 of U.S. Patent 8,250,671. ANALYSIS Rejection I Appellant argues claims 1,3, 10, and 11, which are subject to the first ground of rejection, as a group. Appeal Br. 9-12. We select claim 1 as representative of the group, and claims 3,10, and 11 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner found Ost discloses a jacket as called for in claim 1, except for the plastic pleated pouch positioned within the second pocket. Final Act. 4-5. The Examiner relied on Jennings to teach a removable pocket pouch positioned within a pocket having an attaching mechanism, and Herbert to teach that it was known to make a removable pocket pouch of 4 Appeal 2015-001343 Application 13/595,528 plastic. Final Act. 5-6. The Examiner determined that it would have been obvious to modify the jacket of Ost to add a removable pouch to one of the pockets and to make the removable pouch out of plastic, as taught by Jennings and Herbert, respectively, so that the pouch could be easily cleaned when it becomes soiled and to prevent liquids from soaking through to the garment pocket. Id. at 6-7. The Examiner found that Ost, as modified to add a removable pouch to one of the pockets as taught by Jennings and to construct the pouch out of plastic as taught by Herbert, discloses a jacket as called for in claim 1, except for the removable pouch having pleats. Id. at 4- 7. The Examiner found “Stewart teaches a removable pocket pouch having pleats (12).” Id. at 7. The Examiner determined it would have been obvious to modify the removable pocket pouch of the Ost jacket, as modified by Jennings and Herbert, to add pleats as taught by Stewart “because Stewart teaches that this arrangement is known in the art and is beneficial because it allows for expansion of the pocket pouch as well as for creating structures that can be used as entertainment objects.” Id. (citing Stewart, col. 2,11. 2- 16). Appellant does not contest the Examiner’s findings as to the scope and content of Ost. Rather, Appellant contends “Jennings discloses an elongated sack preferably made of one piece as constructed of rubber or rubber compound” and “there is no disclosure of a plastic pouch having inwardly formed pleats that allow for the expansion and contraction of an opening.” Appeal Br. 10. Appellant further argues that “Herbert makes no disclosure of any such pleated plastic pouch.” Id. Appellant further argues 5 Appeal 2015-001343 Application 13/595,528 that “there is no disclosure that the pocket structure 12 [disclosed in Stewart] can be placed within another pocket or that the pocket structure 12 can be made of a plastic material.” Id. at 11. Appellant, by these asserted deficiencies, argues each reference individually as to the claimed plastic pouch, instead of addressing the Examiner’s proposed modification of Jennings’s pouch to make it of plastic, based on Herbert, and having pleats, based on Stewart. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Further, Appellant contends that the claimed plastic pouch was made pleated to allow for repetitive expansions and contractions of the opening without harming the jacket, and that “there would be no need for such repetitive openings and closings of the pouch” of Jennings and Herbert, which are used to carry game. Appeal Br. 11. The Examiner, however, did not rely on the Appellant’s reason to add pleats as the stated reason to modify the plastic pouch to make it pleated. Rather, the Examiner’s reason to modify the plastic pouch to add pleats was to allow for beneficial expansion of the pocket pouch. Final Act. 7. We find no error in the Examiner relying on a reason other than Appellant’s reason for modifying the pocket pouch to add pleats. “Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 420 6 Appeal 2015-001343 Application 13/595,528 (2007) (finding that the court of appeals erred in holding that courts and patent examiners should look only to the problem the patentee was trying to solve). As to the proposed modification with the teaching of Stewart, Appellant argues that “the only reason to attempt to combine Stewart with Ost, Jennings and Herbert, is the claimed invention.” Appeal Br. 10. Appellant contends “[ajbsent the present disclosure, one would not combine a modular jacket with two reference[s] that relate to a game pouch used to store game while hunting with a child’s coat with a removable pleated pocket that can be used as a component of a play environment.” Id. at 11. The Examiner responds that “[pjleated pockets are well known in the art and it would be obvious that a pleated pocket not only provides an expansive capability to the pocket but also may provide an aesthetic/fashion benefit.” Ans. 3. Appellant replies the Examiner’s reason to modify the pouch to add pleats to provide “aesthetic/fashion benefit” is inadequate because “[t]he plastic pouch is placed within the second pocket [and] is not visible unless removed” and “is not intended to be seen during use.” Reply Br. 7. Appellant, however, does not address the Examiner’s reason to modify the plastic pocket to add pleats to provide an expansive capability to the pocket. This reason alone is sufficient reason to modify the prior art pocket pouch because Stewart demonstrates that pleated jacket pockets were well known in the art and that the pleats render the pocket expandable. We find that the Examiner has provided adequate reasoning based on rational 7 Appeal 2015-001343 Application 13/595,528 underpinnings to explain the proposed modification in that it would have been desirable to one having ordinary skill in the art, in adding a plastic pouch inside one of the pockets of the Ost jacket, to make the pouch pleated so that the pouch is able to expand, as necessary, to accommodate items placed in the pouch. To the extent Appellant’s arguments are viewed as an argument that Stewart is not analogous art, we agree with the Examiner that Stewart, similar to Ost, Jennings, and Herbert, is in the same field of endeavor as Appellant’s invention (garments) and also is relevant to the particular problem facing Appellant (pockets on/in garments). Ans. 4. Appellant’s Specification describes the field of invention generally as relating to “a garment worn by a human being.” Spec. para. 2. The Specification further describes “[t]he utility jacket 10 includes numerous features which are useful when walking an animal, such as a dog. However, the jacket is also useful as a garment independent of whether a dog is being walked or not.” Spec. para. 15. Each of the prior art references relied on by the Examiner likewise relates to a garment, specifically a jacket, worn by a human being. The Specification describes the problem facing Appellant at the time of the invention was in fitting accessories into a single pocket of a jacket, which creates clutter, confusion, and delay. Spec. para. 6. Each of the prior art references provides jackets with pockets configured to fit items into the pockets, and would have been relevant to Appellant at the time of the invention. Accordingly, Ost, Jennings, Herbert, and Stewart are analogous art to Appellant’s invention. 8 Appeal 2015-001343 Application 13/595,528 Finally, Appellant contends that the Examiner erred because the Examiner failed to “identif[y] one of ordinary skill in the art.” Reply Br. 6. “[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). In this case, the prior art reflects an appropriate level of skill in the art of garments, and, in particular, in the art of jackets having various pocket designs. We do not see a need for a specific finding as to the level of a person of ordinary skill in the art in this instance to support a determination of obviousness. For these reasons, Appellant has not demonstrated error in the Examiner’s rejection of claim 1. Claims 3, 10, and 11 fall with claim 1. Therefore, we sustain Rejection I of claims 1,3, 10 and 11. Rejections II through VI Appellant relies on the same arguments presented supra for patentability of claim 1 in support of the patentability of dependent claims 2, 4, and 7-9. Appeal Br. 12. For the reasons discussed in the analysis of Rejection I, Appellant likewise has not demonstrated error in Rejections II through VI. Therefore, we sustain Rejections II through VI of claims 2, 4, and 7-9. 9 Appeal 2015-001343 Application 13/595,528 Rejection VII Claims 5 and 6 Claims 5 and 6, which are subject to Rejection VII, depend from claim 1. Appellant relies on the same arguments presented supra for patentability of claim 1 in support of the patentability of dependent claims 5 and 6. Appeal Br. 12. For the reasons discussed in the analysis of Rejection I, Appellant likewise has not demonstrated error in Rejection VII. Therefore, we sustain Rejection VII of claims 5 and 6. Claims 12-14, 17, 19, and 20 Appellant argues claims 12-14, 17, 19, and 20 as a group. Appeal Br. 12-14. We select claim 12 as representative of the group, and claims 13, 14, 17, 19, and 20 stand or fall with claim 12. 37 C.F.R. § 41.37(c)(l)(iv). Appellant relies on the same arguments presented supra for patentability of claim 1 in support of the patentability of independent claim 12. Appeal Br. 12. For the reasons discussed in the analysis of Rejection I, Appellant likewise has not demonstrated error in Rejection VII. Appellant further states that claim 12 recites the second pocket is “substantially even” with the first pocket, and argues that “neither the Herbert patent [nor] the Jennings patent discloses the claimed structure and the recited game carriers of Herbert and Jennings could not be configured to fit within the pockets on the front panels of the Ost patent.” Appeal Br. 12- 13 (arguing that the game carriers of Jennings and Herbert are too large to fit within the claimed pocket). Appellant further argues “there is simply no 10 Appeal 2015-001343 Application 13/595,528 disclosure in Jennings or Herbert of having symmetry” of the first and second pockets. Id. at 13. We address the latter argument first. The Examiner relied on Ost to teach the first and second pockets substantially even with each other as called for in claim 12. Final Act. 14 (citing Ost, Figs. 3 and 5). As such, Appellant’s argument directed to Jennings or Herbert failing to disclose this symmetry does not demonstrate error in the rejection. As to the former argument, the Examiner proposed to modify the jacket of Ost to add a plastic pouch inside one of the pockets so that the pocket could be easily cleaned when it becomes soiled. Final Act. 15. We agree with the Examiner that one having ordinary skill in the art would understand that this concept of providing an inner plastic pouch in a jacket pocket is not limited to the exact size and dimensions and/or pocket location on the garment as shown in Jennings and Herbert. Ans. 4. In other words, one having ordinary skill in the art would appreciate that this technique of using a plastic pouch so as to avoid soiling a jacket pocket as used in a hunting jacket would have obvious uses in jacket pockets for a variety of uses, and using this plastic pouch in other jacket pockets located in other locations on the garment would not be beyond the skill of a person of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions”). 11 Appeal 2015-001343 Application 13/595,528 Thus, Appellant’s additional arguments as to the patentability of claim 12 do not demonstrate error in Rejection VII, and we sustain this rejection. Claims 13, 14, 17, 19, and 20 fall with claim 12. Rejections VIII through X Appellant relies on the same arguments presented supra for patentability of claim 12 in support of the patentability of dependent claims 15, 16, and 18. Appeal Br. 14. For the reasons discussed in the analysis of Rejection VII, Appellant likewise has not demonstrated error in Rejections VIII through X. Therefore, we sustain Rejections VIII through X of claims 15, 16, and 18. Rejection XI Appellant argues claims 12, 14, and 17 as a group. Appeal Br. 13-14. We select claim 12 as representative of the group, and claims 14 and 17 stand or fall with claim 12. 37 C.F.R. § 41.37(c)(l)(iv). Appellant relies on the same arguments presented supra for the patentability of claim 1 over Rejection I and the patentability of claim 12 over Rejection VII in support of the patentability of independent claim 12 over Frank, Jennings, Herbert, and Stewart. Appeal Br. 13-14. For the reasons discussed in the analysis of Rejections I and VII, Appellant likewise has not demonstrated error in Rejection XI of claim 12, and we sustain this rejection. Claims 14 and 17 fall with claim 12. 12 Appeal 2015-001343 Application 13/595,528 Rejection XII Appellant does not contest the obviousness-type double patenting rejection of claims 1-20, and submits that “to the extent necessary[,] a Terminal Disclaimer will be filed to overcome this rejection.” Appeal Br. 14. As such, we summarily sustain Rejection XII of claims 1-20. DECISION The decision of the Examiner to reject claims 1-20 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). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 13 Copy with citationCopy as parenthetical citation