Irit TURBOVICH

Patent Trials and Appeals Board

Jun 2, 2020

2019005832 (P.T.A.B. Jun. 2, 2020)

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.
13/848,303 03/21/2013 Irit TURBOVICH 58419 4976
67801 7590 06/02/2020
MARTIN D. MOYNIHAN d/b/a PRTSI, INC.
c/o Purrfect Patents LLC
11213 Piedmont Drive
Fredericksburg, VA 22407
EXAMINER
HOEY, ALISSA L
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
06/02/2020 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):
usptomail@ipatent.co.il
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IRIT TURBOVICH
Appeal 2019-005832
Application 13/848,303
Technology Center 3700
Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
LISA M. GUIJT, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 9–13, 37, and 39. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Irit
Turbovich. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to “a sensory stimulating artifact in
general and in particular to a garment for stimulating tactile stimulation.”
Spec. 1. Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A method for designing a tactile stimulation garment for
providing tactile stimulation, the tactile stimulation garment
being an item of clothing made primarily for wearing, the
method comprising:

providing a garment, the garment being an item of clothing
designed for wearing in fixed positional arrangement relative to
body regions of a baby, and the garment being one member of
the group consisting of:
a sleeved garment,

a garment having legs,

a garment having a neck opening within shoulders,

a shirt,

pants,

a dress,

a skirt,

an overall,

a coat,

a jacket,

a sweatshirt,

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a sweater, and

a belt,

said garment having a plurality of surfaces;

observing involuntary baby movements-, and finding locations
on said garment when worn which correspond to those of said
body regions which are observed to be more frequently reached
by said involuntary movements;

selecting at least one of said more frequently reached locations
as a selected location on said garment to serve as a tactile
stimulating surface of said garment; and applying a texture to a
surface at said selected location to provide a textured
surface, said texture being applied differing from a surrounding
texture of a remainder of said garment, said textured surface
providing said tactile stimulating surface on said garment to
form said tactile stimulation garment.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Sugimoto US 4,419,396 Dec. 6, 1983
Rocher FR 2 824 707 A1 Nov. 22, 2002
Vincent WO 2010/045499 A1 Apr. 22, 2010
REJECTIONS
Claims 1, 9–13, 37, and 39 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.2

2 The Examiner issues a new ground of rejection in the Answer clarifying
that the dependent claims are also rejected. Ans. 3. The Examiner also
withdraws several of the rejections under 35 U.S.C. § 112, second
paragraph, set forth in the Non-Final Action. See id. at 8–10.
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Claims 1, 12, 13, 37, and 39 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Vincent.3
Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Vincent and Rocher.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Vincent and Sugimoto.
OPINION
Indefiniteness
The Examiner determines that claims 1 and 39, and their dependent
claims, are indefinite because “[i]t is unclear how an observer can
distinguish voluntary movements from involuntary movements of a baby.”
Ans. 3. The Examiner states that “[a]n involuntary movement is a jerk, tick,
muscle spasm, tremor or seizure,” and queries whether this is “what the
observer is observing.” Id.
Appellant agrees with the Examiner’s interpretation of “involuntary
movements” and, thus, submits that “the rejection is not justified as clearly
the Examiner . . . recognizes involuntary movements and these are clearly
observable and distinguished from voluntary movements of a baby.” Reply
Br. 2; see also Appeal Br. 12 (asserting that “[a] person of ordinary skill in
the art would easily know how to observe involuntary movements of a baby,
a concept which is well-represented in the scientific literature”). Appellant
also contends that “[i]t is very clear to the observer whether a particular
motion is intended or is merely random. For example, by observing whether

3 This is a new ground of rejection set forth in the Answer. See Ans. 4
(explaining that the new ground includes “the proper motivational
statement”).
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the movement has a clear end point or whether there is a clear intention to
the motion or does it appear to the observer to be random.” Appeal Br. 12.
There does not appear to be any dispute between Appellant and the
Examiner as to the meaning of “involuntary movements” or “involuntary
baby movements,” and, thus, the metes and bounds of the claims are clear in
this regard. Accordingly, we do not sustain the rejection of claims 1 and 39,
or of their dependent claims, under 35 U.S.C. § 112, second paragraph, as
indefinite on this basis.
The Examiner also rejects dependent claim 37 as indefinite because
“[i]t is unclear how the location is selected in accordance with [statistics], if
the statistics are based on involuntary movements.” Advisory Act. 2. This
rejection is predicated on the Examiner’s determination that the scope of
“involuntary movements” is unclear. For the reasons discussed above, the
Examiner does not persuade us that this is the case. Accordingly, we do not
sustain the rejection of claim 37 under 35 U.S.C. § 112, second paragraph,
as indefinite.
Obviousness—Vincent
In contesting the rejection of claims 1, 12, 13, 37, and 39 under
35 U.S.C. § 103(a), Appellant argues independent claims 1 and 39 together
and relies on the arguments presented for claims 1 and 39 in contesting the
rejection of dependent claims 12 and 13. See Reply Br. 3–4. Appellant
argues dependent claim 37 separately. Id. at 4–5. We decide the appeal of
this rejection of claims 1, 12, 13, and 39 on the basis of claim 1, and claims
12, 13, and 39 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv)
(permitting the Board to select a single claim to decide the appeal as to a
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single ground of rejection of a group of claims argued together). We address
the rejection of claim 37 separately.
Claims 1, 12, 13, and 39
The Examiner finds that Vincent teaches a method for designing a
tactile simulation garment for providing tactile simulation including, in
pertinent part, “designing based upon developmental stage and
developmental level of the intended baby, and determining locations of
tactile stimulation based upon the developmental stage of the baby,”
“selecting at least one of said more frequently reached locations as a selected
location on said garment to serve as a tactile stimulating surface of said
garment,” and applying to a surface at said location a texture that differs
from a surrounding texture of a remainder of the garment to provide a
“textured surface providing said tactile stimulating surface on said garment
to form said tactile stimulation garment.” Ans. 4–5 (citing Vincent 1:23–26,
3:13–26, 4:1–5, claim 1). The Examiner finds that “Vincent fails to
specifically teach observing involuntary baby movements and finding
locations on said garment when worn which correspond to body locations
observed to be more frequently reached by said involuntary movements.”
Id. at 5. The Examiner determines:
It would have been obvious to one having ordinary skill
in the art, at the time the invention was made, that determining
a baby’s developmental stage as taught by Vincent to identity
the proper locations on the garment to provide stimulation
would include observing a baby and their movements, both
voluntary and involuntary. These observations would ensure
that the garment design would provide properly positioned
enhancements for further development and stimulation of the
intended baby.
Id. at 5.
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Appellant argues that “Vincent has a different goal than the claimed
inventions” in that, according to Appellant, “Vincent is interested in
encouraging physical movements of the baby and uses textured surfaces for
such encouragement.” Reply Br. 3 (italics omitted). Appellant contends
that Vincent’s “only criteria . . . on where to attach textured attachments is
what the baby is capable of doing and how to encourage the baby to make
these movements.” Id. at 3–4. Appellant submits that, by contrast,
Appellant “has found that providing tactile stimulus by itself is important in
development of the sense of touch of the baby” and contends that “[t]actile
stimulation by itself or development of sense of touch is not a target of
Vincent, rather, Vincent uses tactile stimulation only as a means to achieve
his target, which is enhancing motor skills and physical movements.” Id.
at 4 (italics omitted). In summary, Appellant argues that “Vincent is not
interested in involuntary movements and would have no motivation to
observe them or to provide tactile stimulus on locations reached by such
involuntary movements.” Id. (italics omitted). Thus, Appellant concludes
that the Examiner’s rationale for modifying Vincent “constitutes
impermissible hindsight.” Id.
Vincent discloses “a method for stimulating babies with clothing that
has a design that is adjusted to the baby’s intellectual and physical
development phase.” Vincent 1:5–7. More particularly, Vincent’s “method
is for stimulating a child with carefully selected attachments that are placed
on the clothing based on the development stage of the child.” Id. at 1:23–26.
Vincent emphasizes that both the selection of the attachments and the
physical position of the selected attachments on the clothing are based on the
development stage of the child to provide the optimal stimuli. Id. at 2:7–12.
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By way of example, Vincent discloses three different attachments
100, 110, 130, illustrated in Figures 1–3, appropriate for three illustrative
development phases of babies, the first of which (typically age 2–4 months)
is the phase in which “babies start to recognize shapes and like to look at
their own fingers and distinct color contrasts such as black and white.”
Vincent 2:26–5:15. However, Vincent emphasizes that “the various
attachments and development phases are only used as illustrative of the
method.” Id. at 3:3–5. Further, Vincent teaches that “[i]t is . . . possible to
provide tactile stimuli in each developmental stage.” Id. at 3:25–26. For
example, the attachment may have texture created by print or surfaces at
different levels, thereby stimulating the tactile senses of the baby. Id. at 4:1–
5.
As admitted in Appellant’s Specification, in an early developmental
stage, a young baby whose motor skills are not yet developed will reach
surfaces of a garment by involuntary movements. See Spec. 9. In light of
Vincent’s teaching that it is possible to provide tactile stimuli in each
developmental stage, with the three specifically disclosed phases being
“only used as illustrative of the method” (Vincent 3:3–5, 25–26), one of
ordinary skill in the art would have readily appreciated that Vincent’s
method could also be used to provide tactile stimuli for an earlier
developmental stage in which the baby has not yet developed motor skills
but can reach surfaces of the garment by involuntary movements, as well as
for a developmental stage in which the baby has developed some motor
skills but also reaches some surfaces of the garment by involuntary
movements. Thus, in order to determine the developmental stage of the
baby, it would have been obvious to observe both voluntary and involuntary
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baby movements. Further, in applying Vincent’s teachings to the
aforementioned early stage of development, in which the baby has not yet
developed motor skills, a person having ordinary skill in the art would have
been prompted to place the tactile stimulation attachments at locations on the
garment corresponding to body regions observed to be more frequently
reached by such involuntary baby movements.
For the above reasons, the Examiner’s articulated reason for the
proposed modification of Vincent has rational underpinnings. Appellant
does not identify any flaw in the Examiner’s reasoning or point to any
knowledge relied on by the Examiner that was gleaned only from
Appellant’s disclosure and that was not otherwise within the level of
ordinary skill in the art at the time of the invention, thereby failing to support
Appellant’s hindsight assertion. See In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971) (“Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from applicant’s disclosure, such a reconstruction is proper.”).
Accordingly, we sustain the rejection of claim 1 and claims 12, 13,
and 39, which fall with claim 1, as unpatentable over Vincent.
Claim 37
Appellant’s arguments in contesting the rejection of claim 37 under
35 U.S.C. § 103(a) are predicated on Appellant’s position that “the
observation and use of involuntary movements or statistics thereof are of no
interest to Vincent.” Reply Br. 5 (italics omitted). Appellant contends that
“Vincent does not relate to a method as claimed since Vincent is not
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observing involuntary movements” and that a person having ordinary skill in
the art “reading Vincent would have no motivation in observing involuntary
movements or using statistics of involuntary movements when deciding on
locations for tactile stimulating attachments.” Id. at 6 (italics omitted).
This line of argument does not apprise us of error in the rejection of
claim 1, for the reasons discussed above, and, likewise, fails to apprise us of
error in the rejection of claim 37. Accordingly, we sustain the rejection of
claim 37 as unpatentable over Vincent.
Obviousness—Vincent and Rocher
Appellant groups claims 9 and 10 together in contesting the rejection
based on Vincent and Rocher. Appeal Br. 17. We decide the appeal of this
rejection on the basis of claim 9, and claim 10 stands or falls with claim 9.
See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that “Rocher teaches a garment that has selected
location surfaces that are repeatedly detachable and attachable to said
garment” and determines it would have been obvious to provide Vincent’s
garment “with removable and interchangeable stimulating surfaces as taught
by Rocher” in order to “provide a garment that could adapt the surface
properties based on the baby’s developmental stage as to progresses.”
Non-Final Act. 10–11. The Examiner adds that making Vincent’s
stimulating surfaces removable and interchangeable would “allow for
removal of the surfaces for cleaning as needed.” Ans. 12.
Appellant argues that “Rocher relates to learning aids for children and
is irrelevant to observation of involuntary movements or baby stimulation,”
and that the Examiner fails “to provide a proper reason for adding features to
Vincent.” Appeal Br. 17 (boldface and italics omitted). In particular,
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Appellant contends that “Vincent provides the stimulating surfaces on
locations based upon developmental stage and that, “[a]s babies grow fast[,]
their clothing size is expected to change upon change of developmental stage
and therefore there would be no need to adapt the surface on the same
clothing based on developmental stage.” Reply Br. 7. Appellant also argues
that it would not be necessary to clean the tactile stimulating surface without
cleaning the garment because babies’ clothes are cleaned regularly. Id.
Appellant’s argument that Rocher is not relevant to involuntary
movements is unavailing because the Examiner does not rely on Rocher for
this feature. Appellant’s argument that Rocher is not relevant to baby
stimulation is incorrect. Rocher teaches a child’s garment provided with one
or more elements, designed to give a “tactile reaction,” attached to the
garment by, for example, “Velcro (contact bonding strips).” Rocher,
Abstract.4
Appellant’s argument that there would be no need to adapt the surface
on the same garment because the baby’s clothing size is expected to change
upon change of developmental stage presumes that a baby would not
advance from one developmental stage to another developmental stage
without also growing in physical size so as to transition to a larger garment
size. However, Appellant does not direct our attention to any evidence in
the record before us that this is the case, or that persons of ordinary skill in
the art would expect this to be the case. Thus, Appellant’s argument does
not apprise us of error in the Examiner’s articulated reason for the
combination.

4 Appellant submitted an English language Abstract of Rocher with the
Information Disclosure Statement of May 28, 2013.
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The Examiner’s additional rationale that attaching Vincent’s
stimulating surfaces to the garment in a removable and interchangeable
manner would “allow for removal of the surfaces for cleaning as needed”
(Ans. 12) is not necessary to support the conclusion of obviousness.
Nevertheless, we note that Appellant’s observation about frequent washing
of baby’s clothing does not identify error in the cleaning rationale. The fact
that baby’s garments are washed frequently does not mean that there would
be no reason to wash either the garment or a detachable attachment
separately from the other if, for example, one became soiled and the other
did not.
For the above reasons, Appellant does not apprise us of error in the
rejection of claim 9 as unpatentable over Vincent and Rocher. Accordingly,
we sustain the rejection of claim 9 and claim 10, which falls with claim 9, as
unpatentable over Vincent and Rocher.
Obviousness—Vincent and Sugimoto
The Examiner finds that Vincent fails to teach, but Sugimoto teaches,
“a smell for integrating thereof with said tactile stimulating surface,” as
recited in claim 11. Non-Final Act. 11 (citing Sugimoto 3:42–65). The
Examiner determines it would have been obvious to provide Vincent’s
tactile stimulating surfaces “with an integrated smell as taught by Sugimoto,
since the tactile stimulating surfaces of Vincent having an integrated smell
would provide a surface on a garment that provides the baby with a
comforting scent.” Id.
Appellant argues that “Sugimoto relates to three-dimensional
perfumed seals and is irrelevant to observation of involuntary movements or
baby stimulation.” Appeal Br. 17 (boldface and italics omitted).
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Appellant’s argument regarding observation of involuntary
movements appears to attack Sugimoto individually and, thus, is unavailing.
The Examiner does not rely on Sugimoto for observing involuntary
movements. As for baby stimulation, although Sugimoto does not
specifically mention “stimulation,” Sugimoto teaches adapting a device for
use by an infant to emit a scent by rubbing or scratching a capsulated
perfume layer with a human finger nail or tip. See Sugimoto 3:43–65
(teaching that “a human finger or nail tip can closely contact the capsulated
perfume layer 7 and thus, even an infant can use the seal without
difficulties”). Thus, a person having ordinary skill in the art would have
appreciated the applicability of Sugimoto’s teachings to sensory stimulating
devices for baby garments, such as those of Vincent.
For the above reasons, Appellant does not apprise us of error in the
rejection of claim 11 as unpatentable over Vincent and Sugimoto, which we,
thus, sustain.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 9–13, 37,
39
112, 2nd
paragraph
Indefiniteness 1, 9–13, 37,
39
1, 12, 13,
37, 39
103(a) Vincent 1, 12, 13,
37, 39

9, 10 103(a) Vincent, Rocher 9, 10
11 103(a) Vincent, Sugimoto 11
Overall
Outcome
1, 9–13, 37,
39

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED