Ex Parte SherryDownload PDFPatent Trial and Appeal BoardMay 11, 201813952246 (P.T.A.B. May. 11, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/952,246 07/26/2013 62008 7590 05/15/2018 MAIER & MAIER, PLLC 345 South Patrick Street ALEXANDRIA, VA 22314 FIRST NAMED INVENTOR Rose Anne SHERRY 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. 03550001US 4454 EXAMINER PIER ORAZIO, JILLIAN KUTCH ART UNIT PAPER NUMBER 3765 NOTIFICATION DATE DELIVERY MODE 05/15/2018 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): patent@maierandmaier.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROSE ANNE SHERRY Appeal2017-009263 1 Application 13/952,2462 Technology Center 3700 Before MEREDITH C. PETRA VICK, PHILIP J. HOFFMANN, and KENNETH G. SCHOPPER, Administrative Patent Judges. SCHOPPER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the rejection of claims 1, 3, 6, 7, 9, 11, 14, and 15. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our decision references the Appeal Brief ("Br.," filed Feb. 17, 2017), the Examiner's Answer ("Ans.," mailed Apr. 7, 2017), and the Final Office Action ("Final Act.," mailed Aug. 17, 2016). 2 According to Appellant, the real party in interest is Rose Anne Sherry. Br. 2. Appeal2017-009263 Application 13/952,246 BACKGROUND According to Appellant, the Specification discloses "a hosiery article to be worn on a foot." Spec. ,r 3. CLAIMS Claims 1 and 9 are the independent claims on appeal. Claim 1 is illustrative of the appealed claims and recites: 1. A hosiery article to be worn on a foot, comprising: a plurality of flexible pockets, each pocket having a cylindrical upper portion and a substantially straight lower portion coupled together to form a cylindrical shape pocket with a closed distal end, an open proximate end, and a top cylindrical interior surface between the closed distal end and the open proximate end forming an open interior, the open interior of each of the pockets being sized to receive at least one toe of the foot and to enclose the distal end of the toe; a retaining structure completely circumscribing the cylindrical interior surface of at least one pocket and adhesively coupled to the at least one pocket, the retaining structure made of a flexibly resilient material; a plurality of tabs, each tab being coupled to the lower surface of a pocket; wherein at least one of the upper portions has a length configured to expose a portion of toe cleavage when the article is worn on the foot, wherein the article is impregnated with an anti-bacterial substance. Br. 14. 2 Appeal2017-009263 Application 13/952,246 REJECTIONS 1. The Examiner rejects claim 1 under 35 U.S.C. § I03(a) as unpatentable over Rose-Lydon3 in view ofNeu,4 Malpee, 5 and Gill. 6 2. The Examiner rejects claims 3, 6, and 7 under 35 U.S.C. § I03(a) as unpatentable over Rose-Lydon in view of Neu, Malpee, Gill, and Scholl. 7 3. The Examiner rejects claim 9 under 35 U.S.C. § I03(a) as unpatentable over Bucks8 in view ofMalpee, Neu, and Throneburg. 9 4. The Examiner rejects claims 11, 14, and 15 under 35 U.S.C. § I03(a) as unpatentable over Bucks in view ofMalpee, Neu, Throneburg, and Scholl. DISCUSSION Claim 1 As discussed below, we are persuaded by Appellant's argument that the rejection of claim 1 fails to provide an adequate reason for the proposed combination of art. With respect to claim 1, the Examiner finds that Rose-Lydon teaches a hosiery article as claimed except that [Rose-]Lydon fails to teach, a substantially straight lower portion, a plurality of tabs, each tab being coupled to the lower surface of a pocket, a retaining structure completely circumscribing the cylindrical interior surface of at least one pocket, the retaining structure made of a resilient material; 3 Rose-Lydon, US 2007/0180597 Al, pub. Aug. 9, 2007. 4 Neu, US 3,211,142, iss. Oct. 12, 1965. 5 Malpee, US 5,774,898, iss. July 7, 1998. 6 Gill, US 2014/0196306 Al, pub. July 17, 2014. 7 Scholl, US 1,741,340, iss. Dec. 31, 1929. 8 Bucks, US 2,154,662, iss. Apr. 18, 1939. 9 Throneburg et al., US 6,308,438 Bl, iss. Oct. 30, 2001. 3 Appeal2017-009263 Application 13/952,246 wherein the article 1s impregnated with an antibacterial substance. Final Act. 4. With respect to the limitation requiring "a plurality of tabs, each tab being coupled to the lower surface of a pocket," the Examiner relies on Neu. The Examiner finds and concludes: Neu, a toe covering device, teaches, a substantially straight lower portion (1 /2/3, [F]igure 4) and a tab, being coupled to the lower surface of a pocket (3 are tabs that are coupled to the lower surface of 9, [F]igure 4). While Neu teaches one tab, Neu fails to explicitly teach a plurality of tabs. It has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. MPEP [§] 2144.04 (VI)(B). Therefore, in light of Neu's teaching of a tab it would have been obvious to duplicate each tab to [sic] the lower surface of Lydon, in order to give the user a bottom rest for the hosiery article. Therefore, it would be obvious to one of ordinary skill in the art at the time the invention was filed to have added a substantially straight lower portion and tabs as taught by Neu; because Neu teaches that this configuration is known in the art and it would be obvious to one of ordinary skill that the added substantially straight bottom and tabs would give the user a bottom rest for the hosiery article. Final Act. 5. We agree with Appellant that it "is unclear from the record [] why a person of ordinary skill in the art would be motivated to combine" the references cited. See Br. 6-9. The Examiner can satisfy the burden of establishing that every limitation of a claim would have been obvious by showing "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,418 (2007). Here, we find that the Examiner's conclusion that one of ordinary skill in the art would have found it obvious to combine 4 Appeal2017-009263 Application 13/952,246 Rose-Lydon and Neu in order to provide a bottom rest for Rose-Lydon's hosiery article is not supported on the record before us. Rose-Lydon discloses a "flexible and comfortable separating padded cushion for toe protection." Rose-Lydon Abstract. In contrast, Neu discloses a device for the treatment and correction of hammer toe, which includes a base portion having an extended "relatively thin rearward edge 3," which the Examiner identifies as a tab. See Neu col. 1, 11. 11-16; col. 2, 11. 17-20. Neu does not appear to otherwise discuss element 3. Neu also does not appear to disclose or suggest the use of multiple hammer toe correction devices at the same time, and therefore, Neu does not address using multiple tabs. Without further explanation or evidence, we find that the Examiner's reasoning merely shows that the combination of Rose-Lydon and Neu would results in a device with multiple tabs as claimed, but the Examiner has not provided a sufficient reason why one of ordinary skill in the art would have found it obvious to provide such tabs in Rose-Lydon's device. To the extent the Examiner indicates that this would simply be a duplication of parts, we find that insufficient to support the conclusion that providing tabs as claimed would have been obvious. Although that may show that providing multiple tabs as claimed was within the skill set of an ordinary artisan, it does not provide a reason to include multiple tab portions in Rose-Lydon's device. Further, to the extent the Examiner also finds that the tabs would create "a bottom rest for the hosiery article," the Examiner does not otherwise explain why one of ordinary skill would have had a reason to provide such a bottom rest. The mere fact that the combination would result in a bottom rest is insufficient to show that one of ordinary skill in the art would have had any reason to combine the art to create such a bottom rest, 5 Appeal2017-009263 Application 13/952,246 and the Examiner does not provide any other explanation why one of ordinary skill in the art would have sought to create bottom rest. For example, the Examiner does not provide any evidence showing that the inclusion of a bottom rest in Rose-Lydon's device would have been desirable, beyond the reasons found only in the present Specification. Based on the foregoing, we are persuaded that the rejection lacks sufficient reasoning with rational underpinnings to support the Examiner's conclusion. Accordingly, we do not sustain the rejection of claim 1. Claims 3, 6, and 7 Claims 3, 6, and 7 depend, directly or indirectly, from claim 1. With respect to the rejection of claims 3, 6, and 7, the Examiner does not rely upon Scholl to cure the deficiency found above with respect to the rejection of claim 1. Accordingly, we do not sustain the rejection of claims 3, 6, and 7 for the reasons discussed above. Claim 9 As discussed below, we are persuaded by Appellant's argument that the rejection of claim 9 fails to provide an adequate reason for the proposed combination of art. With respect to claim 9, the Examiner finds that Bucks teaches a hosiery article as claimed except that Bucks fails to teach a retammg structure completely circumscribing the cylindrical interior surface of the least one pocket and at least one ring, the retaining structure adhesively coupled to the at least one pocket, and made of a flexibly resilient material; a plurality of tabs, each tab being coupled to the lower surface of an individual pocket or ring, wherein the article is impregnated with an anti-bacterial substance 6 Appeal2017-009263 Application 13/952,246 Final Act. 9--11. With respect to the limitation requiring "a plurality of tabs, each tab being coupled to the lower surface of an individual pocket or ring," the Examiner relies on Neu. Specifically, the Examiner finds and concludes: Neu, a toe covering device, teaches wherein the article ([F]igure 4) comprises a tab (3), tab being coupled to the lower surface (3 is coupled to the lower surface of 9, [F]igures 1 and 4). While Neu teaches one tab, Neu fails to explicitly teach a plurality of tabs. It has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. MPEP [ §] 2144. 04 (VI)(B). Therefore, in light of Neu's teaching of a tab it would have been obvious to duplicate each tab to the lower surface of Bucks 1 or 2, in order to give the user a bottom rest for the hosiery article. Therefore, it would be obvious to one of ordinary skill in the art at the time the invention was filed to have added teaching of the tab as taught by [Neu]; because [Neu] teaches that this configuration is known in the art and it would be obvious to one of ordinary skill that the added tab would give the user a bottom rest for the hosiery article. Final Act. 13. We are persuaded of reversible error here for reasons substantially the same as those discussed above with respect to claim 1. Here, Bucks discloses "a shield to be worn by the larger toes of the foot ... which serves to protect the hosiery worn thereover." Bucks col. 1, 11. 1-9. As discussed above, Neu discloses a device for the treatment and correction of hammer toe, which includes a base portion having an extended "relatively thin rearward edge 3," which the Examiner identifies as a tab. See Neu col. 1, 11. 11-16; col. 2, 11. 17-20. The Examiner relies on the same reasoning for the combination here as for the combination with Neu discussed above, and we find that the Examiner's reasoning here lacks support for the same reasons discussed above. 7 Appeal2017-009263 Application 13/952,246 Based on the foregoing, we are persuaded that the rejection of claim 9 lacks the requisite reasoning with rational underpinnings to support the Examiner's conclusion. Accordingly, we do not sustain the rejection of claim 9. Claims 11, 14, and 15 Claims 11, 14, and 15 depend directly or indirectly from claim 9. With respect to the rejection of claims 11, 14, and 15, the Examiner does not rely upon Scholl to cure the deficiency found above with respect to the rejection of claim 9. Accordingly, we do not sustain the rejection of claims 11, 14, and 15 for the reasons discussed above. CONCLUSION We REVERSE the rejections of claims 1, 3, 6, 7, 9, 11, 14, 15. REVERSED 8 Copy with citationCopy as parenthetical citation