Michael GIROUARD et al.

Patent Trials and Appeals Board

May 6, 2020

15073580 - (D) (P.T.A.B. May. 6, 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.
15/073,580 03/17/2016 Michael P. GIROUARD A15073US (98554.16P) 7229
22920 7590 05/06/2020
GARVEY, SMITH & NEHRBASS, PATENT ATTORNEYS, L.L.C.
LAKEWAY 3, SUITE 3290
3838 NORTH CAUSEWAY BLVD.
METAIRIE, LA 70002
EXAMINER
SO, ELIZABETH K
ART UNIT PAPER NUMBER
3792
MAIL DATE DELIVERY MODE
05/06/2020 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 MICHAEL P. GIROUARD and JONIE M. GIROUARD
____________

Appeal 2019-006033
Application 15/073,580
Technology Center 3700
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
LISA M. GUIJT, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection
of claims 1–5 and 9–23. 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 inventors as the real party in interest.
Appeal Br. 3.
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Application 15/073,580
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THE INVENTION
Appellant’s invention relates to “apparatuses, methods, and systems
for simulating low and/or high intensity exercise.” Spec. 1:20–21. Claims
1, 2, and 17 are the independent claims on appeal. Claim 17, reproduced
below, is illustrative of the subject matter on appeal.
17. An apparatus for simulating exercise comprising a
garment worn by a user having an opening in the crotch area of
the user and a neuromuscular electrostimulation (NMES) system
for generating muscle contractions that is removably attached to
the garment.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Yamazaki US 2007/0173906 A1 July 26, 2007
Lundqvist US 2012/0245483 A1 Sept. 27, 2012
Gregory US 2014/0182048 A1 July 3, 2014
The following rejections are before us for review:
I. Claims 1, 2, 5, and 9–18 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Yamazaki and Gregory.
II. Claims 3, 4, and 19–23 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Yamazaki, Gregory,
and Lundqvist.

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OPINION
Rejection I
Appellant argues claims 1, 2, 5, and 9–18 as a group. Appeal Br. 8–
11. We select independent claim 17 as representative, and claims 1, 2, 5, 9–
16, and 18 standing or falling therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
Regarding independent claim 17, the Examiner finds that Yamazaki
discloses a neuromuscular electrostimulation (NMES) system for generating
muscle contractions that is removably attached to a garment, as claimed.
Final Act. 4 (citing, e.g., Yamazaki ¶ 15, Figs. 7, 8). The Examiner relies on
Gregory for teaching an opening 202 in the crotch area “for the purpose of
allowing the convenience of relieving oneself without completely
undressing.” Id. (citing Gregory ¶ 11). The Examiner reasons that it would
have been obvious to modify Yamazki’s garment to have an opening in the
crotch area, as taught by Gregory, to provide NMES “while allowing the
user the convenience of relieving oneself without stripping off the garment.”
Id.
Appellant argues that unlike Appellant’s invented garment, “neither
Yamazaki nor Gregory is designed for long-term, all-day wear by a user.”
Appeal Br. 8. In support, Appellant submits that (i) “Yamazaki does not
teach and is not designed for big muscle stimulation,” such that “the
Yamazaki garment provides . . . less than desirable results [which] could
only be compensated for by increasing . . . parameters [to levels]
uncomfortable to most users”; (ii) “Yamazaki’s electrodes are thick enough
to house a power source (battery) and associated components, making these
electrodes prominent under clothing and uncomfortable to sit on”: (iii)
“[h]ad the Yamazaki device been designed with long-term use in mind, it
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would have included a crotch opening for the user to go to the bathroom”2;
and (iv) the Examiner’s proposed combination “would not be feasible and
still would not allow for long-term, all day wear by a user,” because
“Gregory’s intended design as an undergarment means that its user would
not wear underwear underneath it, and with a zipper as its crotch opening,
long-term wear would be extremely uncomfortable.” Id. at 8–10.
We are not persuaded by Appellant’s arguments that the Examiner’s
rationale for combining Yamazaki and Gregory lacks rational underpinning.
The Examiner relies on “convenience,” which does not necessarily depend
on long-term, all-day wear by the user, but may depend on the availability of
bathroom facilities. See, e.g., Gregory ¶ 6 (“the present invention is
comprised of an undergarment to be worn by anyone at anytime they are
occupying an outdoor environment without bathroom facility ability”).
Notably, although Yamazaki is silent regarding the length of time the
treatment garment is worn, Yamazaki discloses a treatment device causing
“the contraction and relaxation of muscle around [a] body part to be treated
due to the electric stimulation through [a] conducting pad” (Yamazaki ¶ 20)
and Lundquist evidences that it would be within the knowledge of one of
ordinary skill in the art that such relaxation treatment duration may be “one
to two hours daily, or for a longer duration if the system is only used 2 to 4
times a week” (Lundquist ¶¶ 8, 88).

2 This statement by Appellant is an admission that if a known problem is
being able to use the bathroom while wearing an NMES garment, an obvious
solution would be to include a crotch opening. 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).
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Further, Yamazaki describes treatment electrodes 3a, 3b, 4a, 4b, 5a,
5b, with conducting pads 17a, 17b, secured to clothing 51 and also that “[t]o
some areas of the clothing 51 are provided power nets P with excellent
flexibility which is made from synthetic cloth such as nylon and urethane.”
Yamazaki ¶ 71. In other words, clothing 51, as depicted in Figures 7 and 8
as short pants, are designed to be worn comfortably, and Appellant’s
argument regarding the thickness of the electrodes causing discomfort is not
supported by sufficient evidence. See Invitrogen Corp. v. Clontech Labs,
Inc., 429 F.3d 1052, 1068 (Fed. Cir. 2005) (unsubstantiated attorney
argument is no substitute for competent evidence). In addition, contrary to
Appellant’s argument, Gregory discloses that “the nylon, coil zipper”
provides “a ‘comfort of feel’ during any activity.” Gregory ¶ 11. Thus, the
Examiner’s proposed modification is supported by rational underpinning.
See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring an
obviousness conclusion to be based on explicit articulated reasoning with
rational underpinning) cited with approval in KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007).
Appellant also argues that although Gregory discloses an opening in
the crotch area, “a person who has physical limitations would not be able to
easily use the garment of Gregory,” and further, “the present invention does
not add an extra step prior to going to the bathroom that the garment of
Gregory does (navigating a zipper).” Appeal Br. 10. However, the
Examiner’s reasoning has sufficient rational underpinning regardless of the
physical limitations of a user. Notably, Gregory discloses that the garment
is designed for ease of use, in that “[a]s the wearer squats for hygiene use,
the shorts open naturally with [inverted fly 401] having no hindrance,”
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wherein “[t]he zipper, 303 is pulled open with a cord, 501, not unlike a
wetsuit.” Gregory ¶ 11. Claim 17, as written, does not exclude the presence
of a zipper in the crotch opening.
Appellant further argues that
incorporating the crotch opening of Gregory to Yamazaki would
mean that the opening would cross two different materials of
Yamazaki (the power net where it meets the compression fabric),
which would likely present a structural limitation because it
would present different elastic properties of the two different
materials and deform the opening. This, in turn, would affect
how well the Yamazaki device stimulates the upper thighs of a
user, because if the opening were deformed and loose, the
electrodes in Yamazaki would not be in contact with the user’s
thighs.
Appeal Br. 11; see also Reply Br. 2 (“adding the zipper in Gregory to
Yamazaki would compromise the structural integrity of the Yamazaki
garment”). However, Yamazaki discloses that there is flexibility in the
placement of power nets P: “[t]o some areas of the clothing 51 are provided
power nets P” (Yamazaki ¶ 71), and Appellant has not demonstrated that it
would be beyond the knowledge of a person of ordinary skill in the art to
modify Yamazaki’s garment, as depicted in Figures 7 and 8, to include an
opening with a zipper, as disclosed in Gregory, considering the flexibility in
placing power nets P and treatment of areas other than the crotch area
necessitating structural components such as the electrodes and power net.
For the first time in the Reply Brief, Appellant argues that a zippered
opening is not an opening, as claimed: “Gregory does not actually have a
crotch opening,” but rather, “a zipper which allows a user to open the
garment where the zipper is.” Reply Br. 2. This argument is made for the
first time in the Reply Brief without good cause being shown. 37 C.F.R.
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§ 41.41(b)(2); Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) (“[T]he reply brief [is not] an opportunity to make arguments
that could have been made in the principal brief on appeal to rebut the
Examiner's rejections, but were not.”). Notwithstanding, as discussed supra,
we find that claim 17 does not exclude the opening from having a zipper,
which functions to open and close the opening.
Accordingly, we sustain the Examiner’s rejection of independent
claim 17, and claims 1, 2, 5, 9–16, and 18 fall therewith.
Rejection II
Regarding dependent claims 3, 4, and 19–23, the Examiner relies on
Lundqvist for teaching an NMES system having different garment pieces
with NMES pads attached to the different pieces for stimulating different
body parts, wherein the garment pieces can be attached to one another by
zippers, hooks, or hook-and-loop fasteners, as claimed. Final Act. 7 (citing,
e.g., Lundqvist ¶ 93, 95, Figs. 5, 7). The Examiner reasons that it would
have been obvious to have modified Yamazaki’s NMES garment, as
modified to have a zippered opening in the crotch area, according to
Gregory, “to include additional garments, attachable to each other as taught
by Lundqvist, to provide “different combinations of electrostimulation to
different regions of the body as taught by Lundvist.” Id.
Appellant submits that “[t]he purpose of Lundqvist is to elicit muscle
relaxation, not exercise via muscle contraction,” and that “Lundqvist is
designed for patients have injuries to their central nervous system.” Appeal
Br. 11. Appellant argues that “[i]t would be incredibly difficult, if not
impossible, for the users, whose central nervous system has been damaged,
to open the crotch area with the zippered design of Gregory.” Id.
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We are not persuaded by Appellant’s argument, because the Examiner
is not relying on the use of Lundqvist’s garment by users described in
Lundqvist, as rationale for modifying Yamazaki. In other words, the
Examiner proposes modifying Yamazaki’s garment, which is intended for
use for “various treatments” (Yamazaki ¶ 6), such as “muscle training” (id.
¶ 8). Notably, Yamazaki also discloses designing the garment (i.e.,
placement of NMES electrodes) according to the desired treatment: “when a
user puts the clothing on, the conducting pads for exclusive use are
contacted to the body parts to be treated, so that the setting of the conducting
pads before treatment can be simplified.” Id. ¶ 15.
Accordingly, we sustain the Examiner’s rejection of claims 3, 4, and
19–23.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 2, 5, 9–
18
103 Yamazaki and Gregory 1, 2, 5, 9–
18

3, 4, 19–23 103 Yamazaki, Gregory,
and Lundqvist
3, 4, 19–23
Overall
Outcome
1–5, 9–23
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).
AFFIRMED