SAMUEL SMALLS

Patent Trials and Appeals Board

Jul 8, 2021

2021000420 (P.T.A.B. Jul. 8, 2021)

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.
15/400,036 01/06/2017 SAMUEL L. SMALLS 9001-003092 3338
40334 7590 07/08/2021
Jordan IP Law, LLC
12501 Prosperity Drive
Suite 401
Silver Spring, MD 20904
EXAMINER
LYNCH, PATRICK JOHN
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
07/08/2021 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):
admin@jordaniplaw.com
info@jordaniplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMUEL L. SMALLS
Appeal 2021-000420
Application 15/400,036
Technology Center 3700
Before JILL D. HILL, CARL M. DEFRANCO, and LEE L. STEPINA,
Administrative Patent Judges.
DEFRANCO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1, 8–12, and 19–21.1 Claims 2–7 and
13–18 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the inventor, Samuel L. Smalls, as the
real party in interest. Appeal Br. 3 (filed May 26, 2020).
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CLAIMED SUBJECT MATTER
Appellant’s invention relates to an insert holder that is permanently or
removably attached to an article of clothing to hold a scented insert. Spec.
¶ 2. Of the pending claims, claims 1 and 12 are independent. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A device to store items on clothing comprising:

a holder forming a pocket and removably attached to an
article of clothing, wherein the pocket is open on one end, and
wherein the holder comprises:

a first rectangular panel having a first buttonhole formed
in a top area of the first rectangular panel;

a second rectangular panel having a second buttonhole
formed in a bottom area of the second rectangular panel, the
second rectangular panel attached to the first rectangular panel,
wherein the top area of the first rectangular panel extends above
the second rectangular panel and is exposed, the second
rectangular panel extending below a bottom area of the first
rectangular panel and is exposed, side edges and a bottom edge
of the first rectangular panel attached to the second rectangular
panel forming the pocket; and

a scented insert placed within the pocket.
Substitute Claims App. 2 (filed July 9, 2020).
EXAMINER’S REJECTIONS
1. Claims 1, 8–12, and 19–21 stand rejected under 35 U.S.C.
§ 112(b) as being indefinite. Non-Final Act. 7–9.
2. Claims 1, 8–12, 19, and 20 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Kennedy (US 2,389,784, iss. Nov. 27, 1945) and
Shweky (US 2009/0019619 A1, pub. Jan. 22, 2009). Non-Final Act. 9–13.
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Application 15/400,036

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3. Claim 21 stands rejected under 35 U.S.C. § 103 as unpatentable
over Kennedy, Shweky, and Sung (US 4,827,536, iss. May 9, 1989). Non-
Final Act. 13–14.
4. Alternatively, claims 1, 8–12, 19, and 20 stand rejected under
35 U.S.C. § 103 as unpatentable over Kennedy, Furnas (US 7,252,215 B1,
iss. Aug. 7, 2007), and Shweky. Non-Final Act. 14–19.
5. Alternatively, claim 21 stands rejected under 35 U.S.C. § 103
as unpatentable over Kennedy, Furnas, Shweky, and Sung. Non-Final Act.
19–20.
ANALYSIS
A. Rejection 1 (Indefiniteness)
The Examiner finds that claims 1, 8–12, and 19–21 are indefinite
because the limitation “exposed” is unclear. Non-Final Act. 7. According to
the Examiner, there are two different interpretations of the limitation
“exposed”—first, that it means “exposed to the elements, or visible,” and
second, that it means “uncovered.” Id. Appellant responds that the
limitation “exposed” is clear when read in light of the specification and
drawings, and that a person of ordinary skill in the art would understand
“exposed” to mean “that the top area of the first panel is ‘open to view’ or
‘uncovered.’” Appeal Br. 11.
We agree with Appellant. A skilled artisan would understand from
the Specification that the limitation “exposed” further defines the top area of
the first panel that extends above the second panel, or the bottom area of the
second panel that extends below the first panel, so that the extended part is
uncovered. This is depicted in Figure 2 of the drawings and described in
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paragraphs 27 and 28 of the Specification. Thus, we do not sustain the
indefiniteness rejection of claims 1, 8–12, and 19–21.
B. Rejection 2 (Obvious over Kennedy and Shweky)
The Examiner finds that Kennedy discloses each of the limitations of
the device to store items on clothing, as recited by independent claims 1 and
12, except that the insert of Kennedy is not scented. Non-Final Act. 9–10,
12–13. The Examiner finds that Shweky discloses an article of clothing that
uses a scented insert. Id. at 10, 13. The Examiner deems that it would have
been obvious to modify the device of Kennedy to include a scented insert
that would act as a substitute to conventional spraying of cologne or perfume
or to supplement an earlier application of cologne or perfume. Id. (citing
Shweky ¶ 27).
Appellant counters that Kennedy does not disclose first and second
rectangular panels, where the top area of the first rectangular panel extends
above the second rectangular panel and is exposed, and where the second
rectangular panel extends below a bottom area of the first rectangular panel
and is exposed. Appeal Br. 13. According to Appellant, Kennedy discloses
“two superposed rectangular swatch-like plies of cloth 10 and 11 that are
stitched together longitudinally with mated edges.” Id. at 12.
We agree with Appellant. Kennedy discloses two superposed
rectangular plies including outer face ply 10 and lining ply 11, as depicted in
Figures 1 and 3 of Kennedy, reproduced below.
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Figure 1 above is an elevation view of the inner side or face of a tie-
holding attachment, and Figure 3 above is a section view along line 3-3 of
Figure 1. Kennedy, col. 1:16–18, 21. Kennedy discloses that plies 10 and
11 are fastened together by lines of stitches, including lines of stitches 13
and 13' that extend from top to bottom. Id. at col. 1:27–39. The cut-away
view in the lower right-hand corner of Figure 1 and the side view of Figure 3
depict plies 10 and 11 as having complete overlap, which is consistent with
Kennedy’s disclosure of superposed plies that are fastened together with
stiches extending top to bottom. Even if the Examiner’s “exposed to the
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elements, or visible” interpretation were reasonable, the Examiner does not
explain adequately how one ply extends (above or below) the other ply, as
required by independent claims 1 and 12. Non-Final Act. 7. The
Examiner’s annotations of Kennedy’s Figure 3 show that ply 11 underlies
ply 10, but do not depict ply 11 extending below ply 10. See id. at 5, 11. In
particular, the Examiner does not explain how ply 11 extends below ply 10
so as to be “visible from a front” view as set forth in the rejection. Id. Thus,
we do not sustain the rejection of independent claims 1 and 12 (and
dependent claims 8–11, 19, and 20) based on Kennedy and Shweky.
C. Rejection 3 (Obvious over Kennedy, Shweky, and Sung)
Claim 21 depends from claim 12. The Examiner does not rely on the
disclosure of Sung in any manner that would remedy the deficiencies of
claim 12 set forth above in Rejection 2. See Non-Final Act. 13–14. Thus,
we do not sustain the rejection of claim 21 based on Kennedy, Shweky, and
Sung.
D. Rejection 4 (Obvious Over Kennedy, Furnas, and Shweky)
For this alternative rejection, the Examiner relies on Kennedy and
Shweky for substantially the same claim limitations and based on the same
reasoning as in Rejection 2 above, but additionally finds that Furnas
discloses that the top area of the first rectangular panel extends above the
second rectangular panel and is exposed, and the second rectangular panel
extends below a bottom area of the first rectangular panel and is exposed.
See Non-Final Act. 15. The Examiner deems that it would have been
obvious to construct the device of Kennedy to have extending portions in
order to provide an attachment area that does not interfere with the stiffener
and to enable attachment and detachment without affecting the stiffener. Id.
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Appellant, in turn, argues that the Examiner’s reasoning is based on
impermissible hindsight because it lacks rational underpinning. Appeal Br.
15.
Appellant’s argument apprises us of Examiner error. Kennedy
discloses plies 10 and 11, and that each ply has buttonholes 21 and 22 there
through. Kennedy, col. 2:5–13. Kennedy also discloses that inner ply 10
includes button 24 that cooperates with buttonhole 22. Id. at col. 2, 28–32.
Based on Figures 1 and 2 of Kennedy, even if one were to individually
extend plies 10 and 11 and buttonholes 21, as the Examiner proposes, it
appears that buttonholes 22 and buttons 24 would still interfere with the
stiffener when attaching/detaching the tie to a shirt. See Kennedy, Figs. 1–5.
Nowhere does the Examiner explain sufficiently a proposed modification to
Kennedy that would extend only one ply while enabling attachment and
detachment without affecting the stiffener. See Non-Final Act. 15–16.
Thus, we do not sustain the rejection of claims 1, 8–12, 19, and 20 based on
Kennedy, Furnas, and Shweky.
E. Rejection 5 (Obvious Over Kennedy, Furnas, Shweky, and Sung)
Claim 21 depends from claim 12. The Examiner does not rely on the
disclosure of Sung in any manner that would remedy the deficiencies of
claim 12 set forth above in Rejection 4. See Non-Final Act. 19–20. Thus,
we do not sustain the rejection of claim 21 based on Kennedy, Furnas,
Shweky, and Sung.
CONCLUSION
The Examiner’s rejections are reversed.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 8–12, 19–
21
112(b) Indefiniteness 1, 8–12,
19–21
1, 8–12, 19,
20
103 Kennedy, Shweky 1, 8–12,
19, 20
21 103 Kennedy, Shweky,
Sung
21
1, 8–12, 19,
20
103 Kennedy, Furnas,
Shweky
1, 8–12,
19, 20
21 103 Kennedy, Furnas,
Shweky, Sung
21
Overall
Outcome
1, 8–12,
19–21
REVERSED