nullDownload PDFPatent Trials and Appeals BoardNov 29, 201914587492 - (D) (P.T.A.B. Nov. 29, 2019) 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. 14/587,492 12/31/2014 Jason Kuipers HouseKuipers012 7549 93756 7590 11/29/2019 Adam R. Stephenson, LTD. 8350 E Raintree Dr., Ste 245 Scottsdale, AZ 85260 EXAMINER HADEN, SALLY CLINE ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 11/29/2019 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): adam@iptech.law ipdocket@iptech.law PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JASON KUIPERS and KARA KUIPERS Appeal 2019-003939 Application 14/587,492 Technology Center 3700 Before: JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK, Administrative Patent Judges. STEPINA, 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, 2, 4–8, 10–12, 14–17 and 21–24. 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 parties in interest as the inventors, Jason Kuipers and Kara Kuipers. Appeal Br. 3. Appeal 2019-003939 Application 14/587,492 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to a pocket assembly. Claims 1 and 10 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A pocket assembly, comprising: an outer panel coupled with a middle panel, the middle panel coupled between the outer panel and one of a clothing article and a bag, and; a base coupled with the outer panel; wherein one of the outer panel and base comprises an elastic portion; wherein the middle panel does not comprise an elastic material; wherein a first compartment is comprised between the outer panel and the middle panel; wherein a second compartment is comprised between the middle panel and one of the clothing article and the bag and is accessible only through a single opening, and; wherein the elastic portion is configured to stretch to increase a size of the single opening. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Riley US 2,899,684 Aug. 18, 1959 Koike US 4,499,612 Feb. 19, 1985 Davis US 6,363,538 B1 Apr. 02, 2002 REJECTIONS I. Claims 1, 2, 4–8, 10–12, 14–17, and 23 are rejected under 35 U.S.C. § 103 as unpatentable over Riley and Davis. Final Act. 4. Appeal 2019-003939 Application 14/587,492 3 II. Claims 1, 2, 4–8, 10–12, 14–17, and 21–24 are rejected under 35 U.S.C. § 103 as unpatentable over Koike and Davis. Final Act. 13. OPINION Rejection I – Obviousness Based on Riley and Davis The Examiner finds that Riley discloses each of the elements of the claimed pocket including outer and middle panels and a base coupled to the outer panel, but that Riley does not disclose one of the outer panel and base comprises an elastic portion. Final Act. 4–5. The Examiner finds “Davis teaches a similar pocket assembly (stretch pocket, title), including one of the outer panel and base comprises an elastic portion.” Final Act. 5 (citing Davis, 6:20–35). The Examiner considers that using a stretchable material would have been obvious, stating that “it is within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.” Final Act. 6 (citing MPEP 2144.07). The Examiner also determines that it would have been obvious to use a stretchable material “for the purpose of increased strength of the pocket ([Davis] col. 4 line 67), for the purpose of providing a more rigid structure for guiding coins between the flap and inner panel (Riley col. 2 line 20–25).” Id. Appellant argues that, because neither Riley nor Davis discloses different materials, “the Examiner has failed to establish a sufficient basis in fact and/or technical reasoning sufficient to explain why a person of ordinary skill would break both Davis and Riley to form a pocket using the materials and structure in both references.” Appeal Br. 16; see also Reply Br. 3–4. Appeal 2019-003939 Application 14/587,492 4 The Examiner responds that Davis does not disclose that “the entire pocket must be made of a stretchable material, only that the pocket may be made of stretchable material. The reference does not support Appellant’s assertion that the entirety of the pocket is limited to stretchable material, and could include other stretchable or non-stretchable materials.” Ans. 3–4. The Examiner notes that in any event, “one of ordinary skill in the art would recognize that Riley’s panel 22 and 24 are a different material than Riley’s panel/flap 30, and that pockets having portions that are of different materials are known in the art and a matter of obviousness.” Ans. 5. According to the Examiner, Riley specifically recites the middle panel/flap 30 as being a firm, closely woven pocket material preferably using the selvage (col. 2 line 5–6). The ‘firm’ material results in a stiffer panel/flap 30 so that panel/flap 30 might prevent coins from falling out of the pocket opening (col.2 line 20–25). From the explicit recitation of firm/stiff material, one of ordinary skill would reasonably infer that the remaining material of the pocket is not required to be as stiff. Riley’s figure 1 supports this inference as figure 1 shows the remaining material of the pocket is flexible enough to bend when the wearer is seated. Riley’s disclosure of a firm/stiff portion and a more flexible portion is sufficient suggestion that the pocket may comprise more than one material, where each material would be selected based on its properties and its intended function within the pocket structure. For example, a stiff flap 30 would be desirable to prevent items from falling out of the pocket while a flexible panel 22 or 24 would be desirable for wearer comfort when the wearer is seated. Ans. 5 (emphasis added). Appellant has the better position. Riley discloses that “[t]he pocket construction 10 includes the conventional outer panel 22 and inner panel 24 which are formed from a single piece of material reversely bent along one Appeal 2019-003939 Application 14/587,492 5 vertical edge 26 and secured by stitching 28.” Riley, 1:52–55. Riley also discloses that “[d]isposed transversely in the pocket 10 is a retaining flap 30 of a generally elongated rectangular shape which flap is of firm, closely woven pocket material cut lengthwise of the material and preferably using the selvage for the lower edge.” Riley, 2: 3–7. Although we appreciate that Riley describes the material for flap 30 with more particularity, namely, a firm, closely woven pocket material, Riley does make a distinction between “the pocket … formed from a single piece of material” and “pocket material.” The Examiner’s finding of a distinction between these materials is not supported by a preponderance of the evidence because Riley does not define “firm” in terms of the material used or indicate that other portions of the pocket are not firm, much less made of a different material. Indeed, Riley’s Figure 1 shows the entirety of pocket 10 including flap 30 conforming (bending) to the curve of the leg of the seated person. As such, the Examiner’s finding that Riley discloses different materials for pocket panels 22/24 and flap 30 is in error. Similarly, although Davis discloses that “the pocket can comprise a variety of materials” (Davis, 6:27–28), Davis does not suggest using different types of materials for different portions of the pocket. Rather, the relevant disclosure in Davis appears to indicate that any of a variety of materials may be used to form the entire pocket. See id. 6:27–34. Thus, there is no suggestion in either Riley or Davis to keep certain portions of the pocket as one material (non-stretchable) while making other portions a different material (stretchable). The Examiner’s reliance on design choice (Final Act. 5–6) is misplaced because, even if it would have been obvious to use a stretchable Appeal 2019-003939 Application 14/587,492 6 material to provide a durable pocket (see Ans. 5), the design choice rationale does not explain why one of ordinary skill in the art would want a portion of the pocket of Riley to be durable, rather than the entire pocket. Similarly, the Examiner’s reliance on “increased strength of the pocket” (Final Act. 6) is insufficient to support the rejection because the Examiner does not explain adequately why only a portion should have increased strength to the exclusion of other portions of the pocket. Accordingly, we do not sustain the rejection of claim 1 as unpatentable over Riley and Davis. Claims 2, 4–8, and 23 depend directly or indirectly from claim 1 and we do not sustain the rejection of these claims for the same reasons. Independent claim 10 includes the same limitation discussed above. Appeal Br. 24 (Claims App.). We, therefore, do not sustain the rejection of claim 10, and claims 11, 12 and 14–17 depending from claim 10 as unpatentable over Riley and Davis. Rejection II – Obviousness Based on Koike and Davis The Examiner finds that Koike discloses each of the elements of the claimed pocket including outer and middle panels and a base coupled to the outer panel, but that Koike does not disclose one of the outer panel and base comprises an elastic portion. Final Act. 13. The Examiner finds that “Davis teaches a similar pocket assembly (stretch pocket, title), including one of the outer panel and base comprises an elastic portion.” Final Act. 14 (citing Davis, 6:20–35). The Examiner considers that using a stretchable material would have been obvious to a person of ordinary skill in the art, stating that “it is within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious Appeal 2019-003939 Application 14/587,492 7 design choice.” Final Act. 15 (citing MPEP 2144.07). The Examiner also considers that it would have been obvious to use a stretchable material for the purpose of increased strength of one of the outer panel and base. Final Act. 15 (citing Davis, 4:67). Appellant argues: It would not be obvious to take the pocket of Koike and modify it by removing out the slide fastener to arrive at the claimed invention. Doing so flies in the face of the express teachings of Koike that the pocket is closed by a slide fastener and does not remain open on its own. Appeal Br.16 (emphasis added). According to Appellant, “removal of the slide fastener would be required since the Applicant’s pocket does not use a slide fastener to keep it closed-and the structure of the claim does not include or require a slide fastener.” Appeal Br. 17; see also Reply Br. 5–6. Appellant’s arguments relating to the slide fastener (see Appeal Br. 16–17) are not persuasive. As the Examiner correctly notes, these arguments are not commensurate with the rejection because the rejection does not propose to remove the fastener of Koike. Ans. 6. Although we appreciate that the claimed pocket does not use a fastener, because the claims are directed to a “pocket assembly, comprising,” Appellant does not explain adequately why a reference (Koike) with additional structure such as a fastener would be excluded as prior art. See Ans. 7–8. Nor does Appellant explain why Koike’s pocket with a fastener as modified by the Examiner to include an elastic base would be inoperable. As the Examiner correctly notes, “Koike’s closure (fastener) would still function to open and close the pocket even if a portion of the pocket were made from an elastic material.” Ans. 7. Appeal 2019-003939 Application 14/587,492 8 Appellant also argues that the rejection is based on “hindsight reasoning, as the only suggestion or teaching to modify the art cited is coming from Applicant’s specification.” Appeal Br. 18. Appellant’s argument regarding impermissible hindsight is not persuasive because the Examiner has provided reasoning to support the rejection, namely, “that pockets with elastic material have the advantage of being expandable and durable.” Ans. 9. Appellant does not address the Examiner’s finding that the stretchable member would advantageously be expandable and durable.2 This improvement is disclosed in Davis, rather than stemming from impermissible hindsight. See Davis, Abstract; see also Ans. 9. Because the Examiner’s reasoning for the proposed modification is supported by rational underpinnings found in the prior art, we do not agree that the Examiner’s rejection is based on impermissible hindsight. Appellant also argues that “[m]aking only part of the pocket of Davis out of elastic material, changes the principle of operation of Davis.” Appeal Br. 18. Appellant contends that, in any event, “neither Koike nor Davis, alone or in combination, teach or suggest [] at least a pocket ‘... wherein the middle panel does not comprise an elastic material ...’ Claim 1.” Id. The Examiner responds that Davis is not being modified, and is relied upon for an elastic pocket. See Ans. 9. “[P]roviding panels of different materials is known to Koike.” Ans. 10. Appellant’s argument is not persuasive. As the Examiner correctly notes, the Examiner’s rejection proposes to modify Koike to use the elastic pocket of Davis, no modification of Davis is proposed. The Examiner finds 2 The Examiner made a similar finding in Rejection I and Appellant did not address the Examiner’s finding in that rejection either. See Ans. 4–5. Appeal 2019-003939 Application 14/587,492 9 that Koike discloses outer and middle panels and a base coupled to the outer panel, and relies on Davis to disclose a base comprising an elastic material. Final Act. 13–14. Figure 6 of Koike is reproduced below. Figure 6 is a vertical sectional view that shows details of the pocket construction. Koike, 1:66–68; 2:4–5. The Examiner finds that the pocket in Koike’s Figure 6 has an outer panel 8’, a middle panel 9, and a base 10, 10’, 16 coupled to the outer panel. The Examiner proposes to modify the base to be an elastic material. As the Examiner correctly finds, Koike uses a different material for the panels and the base, because Koike teaches that the middle panel is cloth and the base is leather. Koike, 2:15–30; see also Ans. 9–10. Modifying Koike’s base to be an elastic material would still allow Koike’s base to function as a pouch that retains items. See Koike 1:26–28; see also Ans. 10. Making the pouch a durable material is consistent with the disclosure of Koike, because Koike’s pouch is intended to contain small, relatively heavy items such as coins. Koike, 2:58–61. A preponderance of the evidence supports the Examiner’s findings that the combined teachings of Koike and Davis suggest that one of Appeal 2019-003939 Application 14/587,492 10 the outer panel and base comprises an elastic portion, namely, the base portion 10, 10’, 16 of Koike modified to be an elastic material; and that the middle panel of Koike is not modified, but remains as material that does not comprise an elastic material, as required by claim 1. We have considered all of Appellant’s arguments for the patentability of claim 1. However, we sustain the Examiner’s rejection of claim 1 as unpatentable over Koike and Davis. Appellant does not argue separately for the patentability of claims 2 and 4–8, which fall with claim 1. See Appeal Br. 18. Appellant relies on substantially the same arguments for independent claim 10 (see Appeal Br. 20), and we sustain the Examiner’s rejection of claim 10 as unpatentable over Koike and Davis for the same reasons. Appellant does not argue separately for the patentability of claims 11, 12, 14–17, and 21–24, which fall with claims 1 and 10. See Appeal Br. 19–20. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1, 2, 4–8, 10–12, 14–17, 23 103 Riley, Davis 1, 2, 4–8, 10– 12, 14–17, 23 1, 2, 4–8, 10–12, 14–17, 21–24 103 Koike, Davis 1, 2, 4–8, 10–12, 14–17, 21–24 Overall Outcome 1, 2, 4–8, 10–12, 14–17, 21–24 Appeal 2019-003939 Application 14/587,492 11 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). 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