Ex Parte UrbanDownload PDFPatent Trial and Appeal BoardMay 15, 201713417768 (P.T.A.B. May. 15, 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. 13/417,768 03/12/2012 Martin Urban 4488-00100 2222 05/15/201730652 7590 CONLEY ROSE, P.C. 5601 GRANITE PARKWAY, SUITE 500 PLANO, TX 75024 EXAMINER MORAN, KATHERINE M ART UNIT PAPER NUMBER 3765 MAIL DATE DELIVERY MODE 05/15/2017 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 MARTIN URBAN Appeal 2015-0057471 Application 13/417,7682 Technology Center 3700 Before HUBERT C. LORIN, PHILIP J. HOFFMANN, and ROBERT J. SILVERMAN, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of claims 1 and 3—20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Our decision references Appellant’s Specification (“Spec.,” filed Mar. 12, 2012), Appeal Brief (“Appeal Br.,” filed Jan. 28, 2015), and Reply Brief (“Reply Br.,” filed May 21, 2015), as well as the Final Office Action (“Final Action,” mailed Jan. 20, 2015) and Examiner’s Answer (“Answer,” mailed Apr. 20, 2015). 2 According to Appellant, Martin Urban is the real party in interest. Appeal Br. 2. Appeal 2015-005747 Application 13/417,768 According to Appellant, the invention “relates to a pair of socks .. . having a pairing and holding feature. Therefore, the pair of socks . . . may be conveniently laundered and stored without one of the socks in the pair becoming temporarily misplaced or lost.” Spec. 17. Claims 1, 8, and 13 are the only independent claims on appeal. Appeal Br., Claims App. We reproduce claim 1, below, as illustrative of the claims on appeal. 1. A pair of socks, comprising: a first sock defining a first toe end and a first upper end, the first sock including an elastically deformable first aperture formed through the first sock proximate the first upper end; and a second sock defining a second toe end and a second upper end, the second sock including an elastically deformable second aperture formed through the second sock proximate the second upper end such that when the first toe end of the first sock is drawn through the second aperture of the second sock and the second toe end of the second sock is drawn through the first aperture of the first sock the first and second socks are secured together; wherein the first and second socks each define an interior surface opposing an exterior surface, the interior surface oriented to contact a wearer’s foot when the socks are worn; wherein the elastically deformable first and second apertures are each formed using elastic material, the elastic material overlying the interior surface and hidden from view by the exterior surface when the first and second socks are worn. Id. REJECTIONS AND PRIOR ART The Examiner rejects claims 1 and 3—20 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2 Appeal 2015-005747 Application 13/417,768 The Examiner rejects claims 1 and 3—20 under 35 U.S.C. § 112, second paragraph, as indefinite. The Examiner rejects claims 1 and 3—20 under 35 U.S.C. § 103(a) as unpatentable over Burstein (US 2006/0096007 Al, pub. May 11, 2006) and Palmer (US 4,150,498, iss. Apr. 24, 1979). ANALYSIS $ 112, First Paragraph Rejection The Examiner rejects each of the claims, claims 1 and 3—20, as failing to comply with the written description requirement. Final Action 3^4. In particular, the Examiner determines [cjlaims 1, 8, and 13 are amended to recite [“]the first and second socks each define an interior surface opposing an exterior surface, the interior surface oriented to contact a wearer’s foot when the socks are worn” and “the elastic material overlying the interior surface and hidden from view by the exterior surface when the first and second socks are worn.” Paragraph 10 of the disclosure states “. . . apertures 22,30 are each formed with an elastic material such as, for example, a strip of elastic 36 that has been stitched or sewn around the apertures 22,30. The elastic material may completely encircle or only partially surround the apertures 22,30 passing through the first and second socks 12,14.” Paragraph 11 recites “. . [. ]the elastically deformable apertures 22,30 are formed by stitching or sewing elastic material inside each of the socks 12,14 proximate the apertures 22,30 such that the elastic material is not readily visible when the socks are wom.”[] The recitation of “inside each of the socks” as in the [Specification is not equivalent in scope to the newly added claim limitations of claims 1,[]8, and 13 in that the interior surface is defined by the claims as the surface oriented to contact a wearer’s foot when the socks are worn. It is noted that the socks may be reversed such that either 3 Appeal 2015-005747 Application 13/417,768 of the sock surfaces may be worn to contact a wearer’s foot when the socks are worn. Id. at 4. Based on our review, we agree with Appellant that the Specification, as originally filed, provides the required support for the claim limitations under discussion. Appeal Br. 5—9. More specifically, we note, for example, that the Specification describes, and, thus, shows Appellant’s possession of, an arrangement in which socks include an elastic material that overlies an interior sock surface that is intended to contact a wearer’s foot when the sock is worn as claimed. Id. at 8, citing Spec. Tflf 10, 11, and Fig. 2a. Therefore, we do not sustain the rejection of claims 1 and 3—20 under 35U.S.C. § 112, first paragraph. $ 112, Second Paragraph Rejection The Examiner rejects each of the claims, claims 1 and 3—20, as indefinite for failing to particularly point out and distinctly claim the subject matter that Appellant regards as the invention. Final Action 4—5. In particular, the Examiner states that the position of the elastic material relative to the sock structure is not clear. The disclosure sets forth the elastic material as inside each of the sides proximate the apertures. Does “inside” mean that the elastic material is overlying a sock surface or is the elastic material positioned between the interior surface and exterior surface of each of the first and second socks? Final Action 5. Inasmuch as this discussion does not relate to any recitation in any claim, however, this is not a proper basis for an indefmiteness rejection. Further, the Examiner determines that [cjlaims 1, 8, and 13 recite the elastic material overlying the interior surface and hidden from view by the exterior surface when the first and second socks are worn and the interior surface 4 Appeal 2015-005747 Application 13/417,768 is defined as that surface which is oriented to contact a wearer’s foot when the socks are worn. It is noted that if a first and second sock are reversed, the interior surface becomes the exterior surface and the exterior surface becomes the interior surface. The position of the elastic material should be set forth relative to the sock structure of each of the first and second socks. Final Action 5. Based on our review, we agree with Appellant that the claim is not indefinite. Appeal Br. 9-12. For example, we agree with Appellant that “whether the socks in the Examiner’s interpretation are turned one way or another, the claim defines the interior surface as the surface oriented to contact the wearer’s foot, which is clear and definite.” Id. at 11. Thus, we conclude that there is no ambiguity in the claims, but, instead the claims particularly point out and distinctly claim the subject matter that Appellant regards as the invention. For these reasons, we do not sustain the rejection of claims 1 and 3—20 under 35 U.S.C. § 112, second paragraph. $ 103 Rejection With respect to the obviousness rejection of claims 1 and 3—20, Appellant argues essentially that the Examiner errs in concluding that it would have been obvious to use Palmer’s “elastic tape or band [that is]. . . attached around a particular type of opening, namely a foot-receiving opening,. . . around a sock holding feature, namely the first and second apertures, so that a pair of the socks may be secured together while the socks are not being worn.” Appeal Br. 13; see also id. at 13—15. Instead, Appellant argues that based on the teaching of Palmer, at most, “one skilled in the art would only be motivated to form an elastic member around the foot-receiving opening of the sock of Burstein so that the sock stays on the foot of the wearer when the sock is worn.” Id. at 14. 5 Appeal 2015-005747 Application 13/417,768 Based on our review, however, we do not find error with the Examiner’s proposed combination. The Examiner provides a rational reason for combining Palmer’s elastic, which Palmer teaches is disposed around an opening into which a wearer’s foot is inserted (see Answer 4), around Burstein’s opening, into which an end of another sock is inserted (see id. at 5)—i.e., so “that the aperture would expand and contract upon receipt and removal of the respective sock end” in a way similar to the way an elastic- lined foot-receiving opening expands and contracts when a wearer’s foot is inserted into the opening, to retain the sock on the wearer’s foot (id.). Thus, the result of the Examiner’s proposed arrangement of Palmer’s elastic around Burstein’s sock-receiving opening is entirely predictable. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Conversely, we do not agree with Appellant that if the knitted configuration of the socks in Burstein provides [an] elastically deformable property to the apertures, then one skilled in the art would not be motivated to add the elastic tape or band of Palmer to the socks of Burstein. Indeed, the apertures formed in the socks of Burstein would already have the desired elastic quality. Based on this observation, [Appellant] respectfully submits that one skilled in the art would not be motivated to combine Burstein and Palmer as suggested by the Examiner. Appeal Br. 14. Using Appellant’s nomenclature, the fact that the apertures formed in Burstein’s socks would already have some elastic quality due to their knitted configuration would not negate the Examiner’s reasoning for using Palmer’s elastic around the sock-receiving openings to provide a greater amount of elasticity. 6 Appeal 2015-005747 Application 13/417,768 Based on the foregoing, we are not persuaded of error in the Examiner’s obviousness rejection. Thus, we sustain the rejection of claims 1 and 3—20 based on Burstein and Palmer. DECISION We REVERSE the Examiner’s written description and indefiniteness rejections of claims 1 and 3—20. We AFFIRM the Examiner’s and obviousness rejection of claims 1 and 3—20. 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 7 Copy with citationCopy as parenthetical citation