Scott EvansDownload PDFPatent Trials and Appeals BoardFeb 10, 20222021004757 (P.T.A.B. Feb. 10, 2022) 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. 15/196,201 06/29/2016 Scott Evans EvansNPASG 1025 126294 7590 02/10/2022 Intellectual Property Consulting 400 Poydras Street, Ste. 1400 New Orleans, LA 70130 EXAMINER BATTISTI, DEREK J ART UNIT PAPER NUMBER 3734 NOTIFICATION DATE DELIVERY MODE 02/10/2022 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): creid@iplawconsulting.com glatham@iplawconsulting.com ibarras@iplawconsulting.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SCOTT EVANS Appeal 2021-004757 Application 15/196,201 Technology Center 3700 Before BENJAMIN D. M. WOOD, WILLIAM A. CAPP, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, 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 1-20. 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(a). Appellant identifies the real party in interest as the inventor, Scott Evans. Appeal Br. 4. Appeal 2021-004757 Application 15/196,201 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to “mounting . . . weapons and accessories,” and more specifically, “mounting accessories for use with a tactical belt system.” Spec. ¶ 4. Claims 1 and 11 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A belt adaptor comprising: a. an elongated body having an upper surface, a lower surface, a first side wall, and a second side wall integrally formed as a unitary piece and defining a belt-receiving area; b. at least one mounting plate extending laterally from at least one side wall with a plurality of mounting apertures extending through the mounting plate; c. a hook-fastening material; and d. loop fastening material wherein both the hook and loop fastening materials line a portion of the upper surface of the elongated body. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Terzuola US 6,145,169 Nov. 14, 2000 Dieterich US 2003/0150087 A1 Aug. 14, 2003 Stevens, IV (“Stevens”) US 8,931,673 B2 Jan. 13, 2015 Appeal 2021-004757 Application 15/196,201 3 THE REJECTIONS I. Claims 1-6 and 8-20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Stevens and Dieterich. II. Claim 7 stands rejected under 35 U.S.C. § 103 as being unpatentable over Stevens, Dieterich, and Terzuola. OPINION Rejection I Regarding independent claim 1, the Examiner finds that Stevens discloses a belt adaptor, as claimed, except that Stevens does not disclose that both the hook and loop fastening materials line a portion of an upper surface of an elongated body, as required by claim 1. Non-Final Act. 3 (citing Stevens, Figs. 18, 19). The Examiner relies on Dieterich for disclosing a belt adapter having both hook and loop fastening material lining a single same surface, and the Examiner reasons that it would have been obvious “to have hook and loop fastening material on the upper surface of Stevens, as disclosed by Dieterich, in order to attach the adapter to various belts/surfaces that may have corresponding hooks or loops.” Id. at 3-4 (citing, e.g., Dieterich ¶ 148, Figs. 13A, 13B). The Examiner also finds that Stevens discloses: One will appreciate that many alternative embodiments of a reversible attachment device may be made . . . by changing the size and location of the loop material 202 or the hook material 204 . . . . Such alternative embodiments may be made to adapt a reversible attachment device to different load-carrying structures or accessory holders. Id. at 4 (quoting Stevens 7:7-15). Appeal 2021-004757 Application 15/196,201 4 Appellant acknowledges that “[a]lthough Deiterich does teach having hook and loop fastening material on the same planar surface, the obviousness rejection is improper because there is no teaching, suggestion, or motivation to apply that limitation to Stevens.” Appeal Br. 11; see also id. at 14 (“there is no reasonable motivation to apply [Dieterich’s] teaching to Stevens”); Reply Br. 4 (arguing that the Examiner “fails to provide any teaching, suggestion, or motivation sufficient to support modification of Stevens with the structure of Dieterich”). First, to the extent Appellant is requiring the Examiner to rely on an express teaching, suggestion, or motivation from Stevens or Dieterich, such a finding is not required for the Examiner to state a prima facie case of obviousness. Indeed, in KSR, the Supreme Court rejected the rigid application of the teaching, suggestion, or motivation (or “TSM”) test in favor of a more expansive and flexible approach to the determination of obviousness. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). Specifically, the Court stated that “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. Here, as discussed by the Examiner, Stevens suggests alternative arrangements may be available, albeit with a reversible configuration (i.e., wherein opposing sides each have either a hook or a loop fastener). However, Dieterich further discloses, with reference to Figures 13A and 13B as relied on by the Examiner, that the tie, which has same-side segments of hook and loop fastener patches, “may also be attached to an ordinary gendered cable wrap having either exposed gender,” hooks or loops, Appeal 2021-004757 Application 15/196,201 5 “thereby providing . . . gender bridging, spatial bridging, anchoring, labeling, and other useful benefits”-benefits of having same-side segments, with or without folding. Dieterich ¶ 151; see also, e.g., id. ¶¶ 134, 136, 137 (explaining, with reference to Figure 10, that “spatial bridging” involves “the ability of the tie to bridge the space between two gendered fasteners” while “[i]n its unfolded form” and that “gender bridging” involves “using the folding tie, in its unfolded form, as a bridge” between similar gendered surfaces (i.e., hooks or loops)). In sum, we find that the Examiner’s rationale for modifying Stevens’s attachment device to include same-side hook and loop fastener patches, namely, to attach the adapter to various belts and surfaces with hooks or loops, has sufficient factual basis from Dieterich, which teaches that an advantage of such same-side hook and loop fastener patches is the availability of the matching patch for articles having either patch. 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, 550 U.S. at 418. Appellant also argues that [f]or every embodiment disclosed in Deiterich; a “fold zone” (see Figs. 2A, 13A and 13B: 24) separates the hook from the loop material, such that the planar surface must be folded along the “fold zone” to create the necessary bond around the items to be secured. Unlike Stevens and Dieterich, the present invention is tailored to improve on belt adaptors known in the art by allowing it to attach to any belt, whether it be lined with hook or loop fastening material, without any manipulation or folding of the device itself. Appeal 2021-004757 Application 15/196,201 6 Appeal Br. 11-12; see also id. at 14-15 (arguing that “[t]he only teaching that can be gleaned from Dieterich is that opposing male/female fasteners can be joined together if separated by a foldable axis” and that the Examiner’s proposed modification destroys the reversibility of Steven’s attachment device). We are not persuaded by Appellant’s argument because the Examiner does not propose bodily incorporating Deiterich’s folding tie into the attachment device of Stevens; rather, the Examiner proposes modifying Steven’s attachment device to have same-side hook and loop fastener patches as taught in Deiterich, rather than either a hook or a loop fastener patch as disclosed in Stevens. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . .” In re Keller, 642 F.2d 413, 425 (CCPA 1981); In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). Moreover, as discussed supra, Deiterich also discloses that the same-side hook and loop fastener patches on a tie may be used to attach to an ordinary wrap having either a hook or a loop fastener patch, without the necessity of folding. See, e.g., Deiterich ¶ 152. Appellant further argues that “adding hook and loop fastening material to a single plane in Stevens would defeat the entire purpose of it being reversible.” Appeal Br. 12; see also id. at 15; Reply Br. 5 (“the entire purpose of Stevens is the connection of independent items or elements,” which “would be lost in the context of the folding methodology of Deiterich”). Again, we are not persuaded by Appellant’s argument, because “a given course of action often has simultaneous advantages and disadvantages, Appeal 2021-004757 Application 15/196,201 7 and this does not necessarily obviate motivation to combine.” Medichem, S. A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006); see also Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another.”). In other words, the Examiner’s proposed modification of Stevens’ attachment device to have same-side hook and loop fastener patches, as taught in Deiterich, results in an advantage that obviates the need for Steven’s reversibility; or put another way, provides the same flexibility to attach to opposing surfaces having either hook or loop fastener patches as provided by reversibility by another or alternative way. Lastly, Appellant argues that the Examiner improperly relies on hindsight. Appeal Br. 12. We find that the Examiner provided a sufficient, non-hindsight reason to combine the references, based on the combined teachings of Stevens and Deiterich, as discussed supra. See In re Cree, 818 F.3d 694, 702, n.3 (Fed. Cir. 2016). Accordingly, we sustain the Examiner’s rejection of independent claim 1. Appellant relies on the arguments presented relative to independent claim 1 for the patentability of independent claim 11 and dependent claims 2-6, 8-10, and 12-20. Appeal Br. 11-15. Therefore, for essentially the same reasons as stated supra, we also sustain the Examiner’s rejection of claims 2-6 and 8-20. Appeal 2021-004757 Application 15/196,201 8 Rejection II Appellant relies on the arguments presented relative to independent claim 1 for the patentability of dependent claim 7. Appeal Br. 11-15. Therefore, for essentially the same reasons as stated supra, we also sustain the Examiner’s rejection of claim 7. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-6, 8-20 103 Stevens, Dieterich 1-6, 8-20 7 103 Stevens, Dieterich, Terzuola 7 Overall Outcome 1-20 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 Copy with citationCopy as parenthetical citation