Ex Parte Williams

Patent Trial and Appeal Board

Nov 13, 2012

10679088 (P.T.A.B. Nov. 13, 2012)

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.
10/679,088 10/03/2003 Marcus K. Williams MARCUS#1 3534
7590 03/26/2013
W. Edward Johansen
11661 San Vicente Boulevard
Los Angeles, CA 90049
EXAMINER
HALE, GLORIA M
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
03/26/2013 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 MARCUS K. WILLIAMS
____________________

Appeal 2010-010258
Application 10/679,088
Technology Center 3700
____________________

Before STEFAN STAICOVICI, MICHELLE R. OSINSKI, and
BART A. GERSTENBLITH, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2010-010258
Application 10/679,088

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STATEMENT OF THE CASE
Marcus K. Williams (Appellant) filed a request for rehearing under 37
C.F.R. § 41.52 (hereinafter “Request”), dated January 11, 2013, of our
decision mailed November 13, 2012 (hereinafter “Decision”). In that
Decision, we affirmed the Examiner’s rejection of claim 3 under 35 U.S.C.
§ 103(a) as unpatentable over Sessoms (US 5,388,271, iss. Feb. 14, 1995),
Ross (US 5,134,726, iss. Aug. 4, 1992), and McGee (US 4,089,065, iss. May
16, 1978). Rehearing is limited to matters overlooked or misapprehended by
the Board in rendering the initial decision.

OPINION
In the Request, Appellant contends, for the first time, “that either a
different standard of non-obviousness was applied to [Appellant’s]
application [as compared to Cohen (US 8,281,418 B2, iss. October 9, 2012)]
or that the Examiner in the later-filed [application] failed to declare an
interference.” Request 9. Appellant has not pointed out where such
arguments were made in the Appeal Brief or the Reply Brief, and we have
not found the arguments in our review of the record. The Board could not
have overlooked or misapprehended arguments which were not before it.
“Arguments not raised in the briefs before the Board and evidence not
previously relied upon in the brief and any reply brief(s) are not permitted in
the request for rehearing except as permitted by paragraphs (a)(2) and (a)(3)
of this section.” 37 C.F.R. § 41.52(a)(1)(2007); see also Ex parte
Hindersinn, 177 USPQ 78, 80 (BPAI 1971) (An argument advanced in a
petition for reconsideration but not advanced in the principal brief or the
reply brief was not properly before the Board); cf. Pentax Corp. v. Robison,
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Application 10/679,088

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135 F.3d 760, 762 (Fed. Cir. 1998) (citing cases supporting the proposition
that issues not raised before the court are not addressed on rehearing).
Appellant has not shown good cause as to why these new arguments are
entitled to consideration under 37 C.F.R. § 41.52(a)(2)(2007). Additionally,
37 C.F.R. § 41.52(a)(3)(2007) is directed to new grounds of rejection and
does not apply. As such, the arguments relating to the purported application
of a different standard of obviousness and the failure to declare an
interference are improper and untimely when made for the first time in a
request for reconsideration. See Hyatt v. Dudas, 551 F.3d 1307, 1313-14
(Fed. Cir. 2008); see also Cooper v. Goldfarb, 154 F.3d 1321, 1331 (Fed.
Cir. 1998) (citing Moller v. Harding, 214 USPQ 730, 731 (BPAI 1982),
aff’d, 714 F.2d 160 (Fed. Cir. 1983) (table)) (“A party cannot wait until after
the Board has rendered an adverse decision and then present new arguments
in a request for reconsideration.”).
Appellant also contends the Board misapprehended or overlooked the
Examiner’s purportedly improper finding that Sessoms teaches the upper
portion of the protective undergarment of Appellant’s claim. Request 10.1
Appellant initially contends that Sessoms discloses “an article of insulated
apparel, the integral continuous parts of which include a body and
appendages formed of an insulated, resilient fabric material and is not
formed of an elastically stretchable material.” Id. (emphasis added). As set
forth in the Decision, “[t]he Examiner’s finding that Sessoms discloses an

1 Appellant does not appear to contend that the Examiner erred in finding
that Ross teaches the lower portion of the protective undergarment of
Appellant’s claim. Request 12 (“the pair of pants of Ross are similar to the
lower portion of the protective undergarment of claim 3”).
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Application 10/679,088

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undergarment formed out of a stretchable fabric is supported by the
reference.” Decision 5 (citing Sessoms, col. 3, ll. 49-51 (“[t]he material 16
[forming the sleeves 12 and body 14 of the undergarment] may be . . .
synthetic, such as nylon or polyester . . . .”)). Moreover, Appellant
acknowledges that the material of the first ply of fabric material may be
“synthetic, such as nylon or polyester, or a combination thereof.” Request
11. An ordinary and customary meaning of “nylon” is “any of numerous
strong tough elastic synthetic polyamide materials that are fashioned into
fibers, filaments, bristles, or sheets and used especially in textiles and
plastics.” MERRIAM WEBSTER ONLINE DICTIONARY, available at
http://www.merriam-webster.com/dictionary/nylon (last visited on Mar. 4,
2013) (emphasis added). The ordinary and customary meaning of “nylon”
supports that Sessoms’ undergarment material is stretchable as recited in
Appellant’s claim.
Appellant next contends that “the article of Sessoms does not have
pockets with protective pads inserted therein” and instead “includes
segmentally arranged supplemental insulation for insulating less mobile
regions of a user’s body.” Request 10. As set forth in the Decision, “[t]he
Examiner’s finding that Sessoms discloses a plurality of pockets with
protective pads is also supported by the reference.” Decision 5 (citing
Sessoms, col. 4, ll. 14-25, 44-47 (“[a]reas or regions of each of the articles of
apparel . . . include segmentally arranged supplemental insulation I, such as
a pile, a batting, a down fill, a polyester fill, a fiberfill, or some other known
material . . . . [T]he first ply of fabric material 16 and a second ply of fabric
material 26 may be stitched so as to form a pocket 38 having a closure 40, as
is shown more particularly in FIGS. 2 and 3.”). Appellant has not provided
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persuasive evidence or reasoning as to why the supplemental insulation and
pockets of Sessoms can not constitute the protective pads and pockets
recited in Appellant’s claim. Accordingly, we are not persuaded that the
Examiner’s finding that Sessoms teaches the upper portion of the protective
undergarment of Appellant’s claims is in error.
For the above reasons, the arguments in Appellant’s Request do not
convince us that we overlooked or misapprehended any matter or that we
erred in affirming the Examiner’s rejection of claim 3 under 35 U.S.C.
§ 103(a) as unpatentable over Sessoms, Ross, and McGee.

DECISION
Appellant’s Request has been granted to the extent that we have
reconsidered our Decision in light of the arguments in Appellant’s Request,
but is denied with respect to our making any modification to the Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

DENIED

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