Ex Parte Siegel et al

Patent Trial and Appeal Board

May 9, 2018

13491515 (P.T.A.B. May. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/491,515 06/07/2012 Rick Siegel
7590 05/09/2018
Rick Siegel and Jennifer Nigrosh
3379 Tareco Drive
Los Angeles, CA 90068
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.
RS12051 l 4926
EXAMINER
MAI, TRIM
ART UNIT PAPER NUMBER
3781
MAILDATE DELIVERY MODE
05/09/2018 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 RICK SIEGEL, JENNIFER NIGROSH, and
GUISEPPE LAMANNA
Appeal2018-001214 1
Application 13/491,515
Technology Center 3700
Before KENNETH G. SCHOPPER, BRADLEY B. BAY AT, and
AMEE A. SHAH, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Rick Siegel et al. (Appellants)2 appeal under 35 U.S.C. § 134(a) from
the Examiner's final rejection of claims 1-9, 11-13, 15-17, 19, and 20. 3 We
have jurisdiction under 35 U.S.C. § 6(b). A hearing was held on March 19,
2018, a transcript of which has been entered into the record ("Tr.").
We AFFIRM.
1 Our Decision references Appellants' Appeal Brief ("Br.," filed July 27,
2016), the Examiner's Answer ("Ans.," mailed Nov. 3, 2016), and the Final
Office Action ("Final Act.," mailed Dec. 28, 2015).
2 "Inventors Rick Siegel and Jennifer Nigrosh are the real parties in interest
of the present application." Br. 4.
3 Claims 10, 14, and 18 have been canceled. Br. 32-34, Claims App.
Appeal2018-001214
Application 13/491,515
CLAIMED INVENTION
Appellants' "invention relates to garment bags, and more particularly
to an environmentally friendly reusable combination garment bag, hamper,
and duffle bag." Spec. 2:15-16. Claims 1, 15, and 19 are the independent
claims on appeal. Claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A reusable bag for laundry and laundry hangers,
compnsmg:
an enclosure made from a flexible web material and
having an open end and a closed end, the open end having a
closure means, the closure means includes a hem around the open
end of the enclosure through which a selectively cinchable
drawstring is slidably enclosed, the closed end including an
aperture adapted to receive a portion of each laundry hanger
therethrough, the enclosure including an inside surface and an
outside surface;
at least one shoulder strap configured and arranged to
facilitate the carrying of the bag, the at least one shoulder strap
coupled at one end of the strap to the outside surface of the bag,
proximate one end of the enclosure, and extending away from
the one end of the strap and at least partially across the outside
surface of the bag towards the other end of the enclosure and
coupled at another end of the strap to the outside surface of the
bag;and
wherein the at least one shoulder strap is configured and
arranged to enable a user to carry soiled clothes to a drycleaner
while in a duffle bag configuration, and while in a garment bag
configuration, substantially maintain the press and crispness of
the drycleaned clothes while carrying the bag hands-free from
the drycleaner; and
wherein the enclosure comprises a front sheet of the
flexible material, a back sheet of the flexible material, and a
gusset sheet of the flexible material, a peripheral edge of the
gusset sheet sewn at least partially to each of the front and back
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sheets to form the enclosure and allow for multiple garments to
be placed and stored inside; and
a zipper positioned down the center of the bag or coupled
to the gusset proximate the hem and extending at least a partial
length of the gusset, the zipper configured and arranged to
selectively form a second aperture when at least partially
unzipped.
Br. 31, Claims App.
THE REJECTIONS
Claims 1-7, 11, 13, 15-17, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Gendreau (US 5,090,559, iss. Feb. 25, 1992),
Pendergast (US 3,831,740, iss. Aug. 27, 1974), and Wachtel (US 5,050,998,
iss. Sept. 24, 1991).
Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gendreau, Pendergast, Wachtel, and Gross
(US 4,802,773, iss. Feb. 7, 1989).
Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Gendreau, Pendergast, Wachtel, and Haley, Sr. (US 4,549,748, iss. Oct.
29, 1985).
Claims 1-7, 15-17, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Foley (US 2010/0006459 Al, pub. Jan. 14,
2010), Pendergast, and Wachtel.
Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Foley, Pendergast, Wachtel, and Gross.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Foley, Pendergast, Wachtel, and Haley, Sr.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Foley, Pendergast, and Wachtel, and Gendreau.
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Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pendergast and Wachtel.
DISCUSSION
As an initial matter, we note that Appellants argue independent
claims 1, 15, and 19 as a group. Br. 12. We select claim 1 as representative
for this group. Appellants do not separately argue the dependent claims, and
"submit that, once the patentability of independent claims 1, 15, and 19 is
established, the rejections of the dependent claims ... become moot." Id.
Thus, claims 2-9, 11-13, 15-17, 19, and 20 stand or fall with claim 1. See
37 C.F.R. § 41.37(c)(l)(iv).
"'On appeal to the Board, [Appellants] can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness."' In
re Kahn, 441F.3d977, 985-86 (Fed. Cir. 2006) (quoting In re Rouffet, 149
F.3d 1350, 1355 (Fed. Cir. 1998)). Here, Appellants do not dispute that a
primafacie case of obviousness has been made by the Examiner. Br. 12-13.
Instead, Appellants submit that secondary considerations related to ( 1)
commercial success, (2) long-felt need, (3) failure of others, and (4) copying
by others provide evidence of nonobviousness. Id. at 13-14.
Secondary Considerations
We recognize that evidence of secondary considerations, such as that
presented by Appellants, must be considered in route to a determination of
obviousness/nonobviousness under 35 U.S.C. § 103. Accordingly, we
consider anew the issue of obviousness under 35 U.S.C. § 103, carefully
evaluating and weighing both the evidence relied upon by the Examiner and
the objective evidence of nonobviousness provided by Appellants.
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"For objective evidence of secondary considerations to be accorded
substantial weight, its proponent must establish a nexus between the
evidence and the merits of the claimed invention." In re Huai-Hung Kao,
639 F.3d 1057, 1068 (Fed. Cir. 2011) (quoting Wyers v. Master Lock Co.,
616 F.3d 1231, 1246 (Fed. Cir. 2010)). "Evidence of secondary
considerations must be reasonably commensurate with the scope of the
claims." Id. (citations omitted).
Commercial Success
Appellants submit that they have had considerable
commercial success in selling their product. Appellants have
currently sold hundreds of thousands of products covered by
one or more claim of the current application. One outlet for the
sales of product is the Appellants' website,
http://thegreengarmento.com/. This web site shows the current
commercial embodiments and provides a nexus between the
product and the claimed invention.
Br. 14. Appellants contend the declaration made by Otis M. Butler III
("Butler Deel.," filed June 10 2015) "provides a first evidence of such a
nexus." Id. at 15. Appellants rely on Mr. Butler's statement that:
"The Nigrosh/Siegel innovations, in particular: (1) creating a
gusset allowing users to place a dozen or more garments into a
single bag ... thereby making the use of reusable bags
economically feasible to the drycleaner, and (2) adding the
shoulder strap making the bag user-friendly for consumers ...
the reusable bag begin to gain in market share, industry
acceptance and most important, begin to lower the hundreds of
millions of single use packaging that annually puts stress on our
landfills and eco-system."
(id.; see also Butler Deel. i-f 7), and conclude that the gussets and shoulder
strap on Appellants' bag are clearly linked to its commercial success. Id.
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To demonstrate nonobviousness based on commercial success,
Appellants must provide evidence that establishes the existence of
commercial success, and a nexus between that success and the merits of the
claimed invention. Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d
1317, 1324 (Fed. Cir. 2005). The evidence is required to show that "the
successful product is the invention disclosed and claimed." J. T. Eaton &
Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997). To
establish a proper nexus between the claimed invention and the commercial
success of a product, Appellants must offer "proof that the sales [of the
product] were a direct result of the unique characteristics of the claimed
invention--as opposed to other economic and commercial factors unrelated
to the quality of the patented subject matter." In re Huang, 100 F.3d 135,
140 (Fed. Cir. 1996) (citation omitted).
We do not find Appellants' evidence convincing because it is not
linked sufficiently to the claimed subject matter. Mr. Butler's opinion
statement above, regarding economic feasibility to dry cleaners, user-
friendliness to customers, and environmental benefits, fails to show a
connection between the purported commercial success of the reusable bag
and the limitations recited in claim 1. See In re DBC, 545 F.3d 1373, 1384
(Fed. Cir. 2008) (finding no nexus, absent evidence that "the driving force
behind [the allegedly successful product's sales] ... was the claimed
combination"); Ormco Corp. v. Align Techn. Inc., 463 F.3d 1299, 1311-12
(Fed. Cir. 2006) (requiring a "nexus between the claimed invention and the
commercial success"); Huang, 100 F.3d at 140 (requiring proof that sales
were a "direct result of the unique characteristics of the claimed invention").
Mr. Butler, in his capacity as National Sales Manager of HMC Solutions, a
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leading manufacturer and distributor of assembly and storage conveyors
specifically made for dry cleaning, explains the significance of the structural
space and weight threshold of dry cleaning conveyors in relation to using
conventionally-sized garment bags onto a drycleaner conveyor, wherein
"[t]he structure and weight of even a single such bag could disable the
conveyor; the bulkiness of any such item would limit their intended capacity
and the integrity of the processed clothes." Butler Deel. i-fi-13--4. As the
Examiner observes, the objective evidence of nonobviousness is directed to
the use of bags within a dry cleaning environment for use with dry cleaning
conveyor belt systems, but the Specification is silent as to the use of
Appellants' bag with such systems, and the apparently critical
characteristics, such as weight, are not recited in claim 1. See Ans. 9--10.
Similarly, the declaration by the President of Spector Textile Products
Incorporated ("Spector Deel.," filed June 10, 2015), upon which Appellants
rely (see Br. 15-16), describes Appellants' reusable bag innovations as
being "most significantly, a design that includes a hanger strap and gusset
that is still light and thin enough for use on a drycleaner conveyor (without
compromising the capacity or usability of the conveyor)." Spector Deel. i17.
Again, those significant structural features of Appellants' reusable bag are
not recited in claim 1. Claim 1 merely requires a "shoulder strap configured
and arranged to facilitate carrying of the bag" and "to enable a user to carry
soiled clothes to a drycleaner while in a duffle bag configuration;" and "a
gusset sheet of the flexible material, a peripheral edge of the gusset sheet
sewn at least partially to each of the front and back sheets to form the
enclosure and allow for multiple garments to be placed and stored inside."
Br. 31 (Claims App.).
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Moreover, we recognize that commercial success can be established
by showing significant sales of the product in a relevant market. J. T. Eaton,
106 F.3d 1563. Nonetheless, Appellants' naked assertion that "hundreds of
thousands of products" have been sold (Br. 14) is not by itself convincing
because the number of sales without relevant market share data does not
establish commercial success. See, e.g., Huang, 100 F .3d at 140. Although
Appellants acknowledge this shortcoming, they nevertheless contend:
"[ w ]hile absolute market share cannot be reported, as the other companies
are private and sales figures are not available, the provided affidavits show
that market share improved for the bag of the present invention while the
competition's market share declined." Br. 27. Having considered all the
submitted affidavit testimony alongside the prior art of record and rejection,
we do not find Appellants' objective evidence of nonobviousness
sufficiently demonstrates that the alleged sales of reusable bags were a direct
result of the unique characteristics of the claimed invention, and not a result
of economic and commercial factors unrelated to the subject matter of
claim 1.
Consequently, Appellants have not produced sufficient evidence,
including persuasive fact, data or analysis that links the asserted commercial
success to the limitations recited in claim 1.
Long-Felt Need and Failure of Others
Appellants submit that there has been a long felt need for
the current product. There is no better evidence than the
introduction of the Gendreau-construction bag, which led to
that patent application some 25+ years ago, and the several
marketers who tried to make a go of a commercial embodiment
of that invention. The Appellants' invention solves several
problems, including the ones that led to the commercial failures
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of the previous marketers of a reusable drycleaning garment
bag.
Br. 16-1 7. Appellants contend that at the time of Appellants'
invention, there was no product on the market that solved the problem
of having: (1) "a way to carry clothes to drycleaners easily and
without worry of loss," (2) "a specific place to put drycleaned clothes
once they have been worn - while almost all households have laundry
hampers, few have a hamper for their drycleaning," (3) "having to use
the twist-ties, rubber bands, paper and plastic associated with carrying
the cleaned clothes home from the cleaners, both an organizational
and environmental issue," and ( 4) difficulty of "put[ ting] the clothes
in and out of the bag." Id. at 17. Appellants further contend that Mr.
Butler's statement that:
"The Gendreau bag, though available through distributors,
proved for the most part to be unmarketable. They neither
made a material impact in the marketplace nor did they lower
America's use of plastic and paper waste. Only with the user-
friendly innovations of the Nigrosh/Siegel bag, marketed under
The Green Garmento label, did there begin to be market
penetration of the reusable drycleaning garment bag"
clearly "show how others have tried to solve the problem but failed." Br. 18.
Establishing a long-felt need requires objective evidence showing
existence of a persistent problem recognized by those of ordinary skill in the
art for which a solution was not known. In re Gershon, 372 F.2d 535, 539-
39 (CCP A 1967). There must be evidence of "a failure of others to provide
a feasible solution to [a] long-standing problem" and evidence "that experts
did not foresee" the solution claimed. See In re Piasecki, 745 F.2d 1468,
1475 (Fed. Cir. 1984). Satisfaction of a long-felt but unresolved need is not
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evidence of nonobviousness unless it is shown that widespread efforts of
skilled workers having knowledge of the prior art had failed to find a
solution to the problem. In re Allen, 324 F.2d 993, 997 (CCPA 1963); see
also Toledo Pressed Steel Co. v. Standard Parts, Inc., 307 U.S. 350, 356
(1939).
Appellants' contentions are not substantiated by persuasive and
objective evidence to establish a long-felt need. The mere fact that
Gendreau, which is one reference cited in combination with Pendergast and
Wachtel by the Examiner in reaching a conclusion of obviousness, was
patented over twenty-five years ago is inconsequential in and of itself to
serve as evidence of long-felt need. "[P]recedent requires that the applicant
submit actual evidence of long-felt need, as opposed to argument. This is
because ' [a ]bsent a showing of long-felt need or the failure of others, the
mere passage of time without the claimed invention is not evidence of
nonobviousness."' Iron Grip Barbell Co., 392 F.3d at 1325. The assertion
that "[l]ong felt need is established and satisfied by Appellants' invention"
(Br. 26 (emphasis omitted)) because "Appellants' bag combines the shoulder
strap, gusset and zipper in a single bag ... [and n Jo art has been cited that has
solved the issues that the present invention solves with all these features"
(id. at 27), fails to provide support of long-felt need and disregards the basis
of the Examiner's obviousness rejection over Gendreau, Pendergast, and
Wachtel. The Examiner states that many of the problems cited by
Appellants were recognized and solved by the other cited references; "Mr.
Butler seems to focus on the Gendreau bag, and there is no mention of other
garment bags that teach the gussets and the shoulder straps in Foley '459,
Pendergast et al. '740, and Wachtel '998." Ans. 10. The mere fact that
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Appellants' invention provides benefits over the prior art, in and of itself,
does not establish that a long-felt need existed, that the attained benefits
address persistent problems recognized by those in the art, or that others in
the art tried but failed to provide feasible solutions.
Failure of others to satisfy a long-felt need can provide evidence of
non-obviousness. Dow Chemical Co. v. American Cyanamid Co., 816 F.2d
617, 623 (Fed. Cir. 1987). However, Appellants' reliance on the
unsuccessful market penetration of Gendreau's bag, as declared by Mr.
Butler, cannot by itself serve as objective evidence of nonobviousness of the
combination of teachings, absent evidence that, notwithstanding knowledge
of the references, the art tried and failed to solve the problem(s) allegedly
solved by the claimed invention. The evidence must establish that others
skilled in the art tried and failed to find a solution for the problem(s) solved
by the Appellants to show a failure of others. Stratoflex, Inc. v. Aeroquip
Corp., 713 F.2d 1530, 1540 (Fed. Cir. 1983). As such, Appellants' assertion
of failure by others is accorded little weight.
Copying by Cleaner's Supply
Appellants allege that Cleaner's Supply "has developed a 'new' bag
with a shoulder strap, side zipper and gusset" (Br. 18) by copying and
marketing duplicated features of Appellants' invention through a new line of
products under Eco2Go (Br. 19; see also id at 20 (Appellants provide a side-
by-side image comparison of the claimed invention with the competitor's
bag)). Appellants point to similarities in color, logo placement, and
marketing campaigns. Id. at 20; see also Tr. 13. Appellants assert that
"[t]he situation is best summarized by Otis Butler's declaration, stating how,
'For twenty years the Gendreau bag was available without straps, handles or
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gussets .... Just a few years after the "The Green Garmento®" bag entered the
marketplace, the distributors of the Gendreau bag changed the construction
of their bags; which now include a gusset and shoulder strap."' Id. at 21.
"[C]opying the claimed invention, rather than one within the public
domain, is indicative of non-obviousness." Windswfzng Int'!, Inc. v. AMF,
Inc., 782 F.2d 995, 1000 (Fed. Cir. 1986) (citation omitted). However,
"[ n Jot every competing product that arguably [falls] within the scope of a
patent is evidence of copying. Otherwise every infringement suit would
automatically confirm the nonobviousness of the patent. Rather, copying
requires the replication of a specific product." Iron Grip Barbell Co., 392
F.3d at 1325. Evidence of "copying"
may be demonstrated either through internal documents, see
Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc.,
344 F.3d 1186, 1196-97 (Fed. Cir. 2003); direct evidence such
as disassembling a patented prototype, photographing its
features, and using the photograph as a blueprint to build a
virtually identical replica, see Advanced Display Sys., Inc. v.
Kent State Univ., 212 F.3d 1272, 1285 (Fed. Cir. 2000); or
access to, and substantial similarity to, the patented product (as
opposed to the patent), Cable Elec. Prods., Inc. v. Genmark,
Inc., 770 F.2d 1015, 1027 (Fed. Cir. 1985), overruled on other
grounds by, Midwest Indus., Inc. v. Karavan Trailers, Inc., 175
F.3d 1356, 1359 (Fed. Cir. 1999) (en bane).
Id. The mere fact of copying is not necessarily dispositive of
nonobviousness; more than the mere fact of copying is needed to make that
action significant to a determination of obviousness. Cable Electric
Products Inc. v. Genmark, Inc., 770 F.2d 1015, 1028 (Fed. Cir. 1985); see
also In re GPAC, Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995).
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There is little persuasive objective evidence in the record that
Cleaner's Supply copied Appellants' product. Similarity in certain features,
the use of the color green to convey an environmentally friendly product,
placement of a logo on the product or in advertising, and the nature of
marketing campaigns are not persuasive evidence of copying. And,
Appellants' general allegations and reliance on Mr. Butler's statement fail to
serve as persuasive evidence of copying by Cleaner's Supply. In other
words, the proffered evidence in support of copying is not objective, direct
evidence that would have more probative value in demonstrating actual
copying by Cleaner's Supply.
Conclusion
Having fully considered the secondary considerations evidence
proffered by Appellants in support of nonobviousness, we conclude that on
balance, the evidence is not persuasive to establish nonobviousness of
claim 1. For example, much of the evidence submitted by Appellants, in the
form of declarations by third parties (filed June 10, 2015), emphasize
features of the Appellants' reusable bag that are not claimed, e.g., "features
that can go onto a drycleaning conveyor without compromising the
conveyor's weight of volume capacity." David Meyer Declaration i-f 4; see
also David Suber Declaration i-f 4, Robert Smelling Declaration i-f 4, Michael
Bleier Declaration i-f 4, Karen Maxwell Declaration i-f 4, Randolph Lambert
Declaration i-f 4, Michael Nesbit Declaration i-f 4, Mark Callaghan
Declaration i-f 4. As discussed above, Mr. Butler's declaration also points to
those unclaimed features as being significant innovations in Appellants'
product. Although Appellants have provided some objective evidence of
nonobviousness, the overall weight of this evidence does not outweigh the
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evidence of obviousness relied upon by the Examiner. See Sud-Chemie, Inc.
v. Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) ("evidence
of unexpected results and other secondary considerations will not necessarily
overcome a strong prima facie showing of obviousness"); Leapfrog Enters.
v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (holding that
objective evidence of non-obviousness presented, including substantial
evidence of commercial success, praise, and long-felt need, was inadequate
to overcome the strength of the prima facie obviousness showing).
In view of the foregoing, we sustain the Examiner's rejection of
independent claim 1 as obvious over Gendreau, Pendergast, and Wachtel,
and the rejections of claims 2-9, 11-13, 15-17, 19, and 20, which fall with
claim 1.
Appellants rely on the same evidence of nonobviousness in contesting
the additional rejections of claims 1-9, 12, 13, 15-17, 19, and 20 under 35
U.S.C. § 103(a). See Br. 28-29. As noted above, the evidence of secondary
considerations in the form of declarations almost exclusively focus on the
Gendreau reference, which is not solely relied upon as part of these
rejections. We do not find the proffered evidence outweighs the evidence of
obviousness under these rejections. Accordingly, we sustain the additional
obviousness rejections of claims 1-9, 12, 13, 15-17, 19, and 20.
DECISION
The Examiner's decision to reject claims 1-9, 11-13, 15-17, 19, and
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).
AFFIRMED
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