Ex Parte Urban

Patent Trial and Appeal Board

May 15, 2017

13417768 (P.T.A.B. May. 15, 2017)

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.
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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
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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
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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.
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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.
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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
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