Sun, Amy

Patent Trials and Appeals Board

Mar 10, 2022

2021004452 (P.T.A.B. Mar. 10, 2022)

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. 15/836,710 12/08/2017 Amy Sun AS.0003 1042 110253 7590 03/10/2022 HelixIP LLP 1935 Belmont Avenue San Carlos, CA 94070 EXAMINER HALL, FORREST G ART UNIT PAPER NUMBER 3732 MAIL DATE DELIVERY MODE 03/10/2022 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 AMY SUN Appeal 2021-004452 Application 15/836,710 Technology Center 3700 Before BENJAMIN D. M. WOOD, BRETT C. MARTIN, and LISA M. GUIJT, Administrative Patent Judges. WOOD, 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 21-40. Claims 1-20 have been canceled. Appeal Br. 3.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as the named inventor, Amy Sun. Appeal Br. 3. 2 Although the Appeal Brief is not paginated, the intended pagination, on which we rely, is evident from the Brief’s Table of Contents. See Appeal Br. 2. Appeal 2021-004452 Application 15/836,710 2 CLAIMED SUBJECT MATTER Independent claims 21 and 31, reproduced below, is illustrative of the claimed subject matter: 21. A leash comprising a wetsuit attachment assembly. 31. A kit comprising a leash and a wetsuit attachment assembly. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Corwin US 5,194,026 Mar. 16, 1993 Starck US 2011/0312233 A1 Dec. 22, 2011 O’Hara US 8,191,171 B2 June 5, 2012 Ventura US 2019/0144085 A1 May 16, 20193 REJECTIONS Claims Rejected 35 U.S.C. § References/Basis 28, 38 112(a) Written Description 25-28, 35-38 112(b) Indefiniteness 21-28 103 Corwin, O’Hara 29, 30 103 Corwin, O’Hara, Starck 31-38 103 Corwin, O’Hara, Ventura 39, 40 103 Corwin, O’Hara, Ventura, Starck 3 Ventura is the published version of U.S. Pat. Appl. No. 15/836,710, filed Nov. 10, 2017. Ventura, codes (21), (22). Therefore, under 35 U.S.C. § 102(a)(2), Ventura is prior art with respect to the application at issue, which was filed on December 8, 2017. Appeal 2021-004452 Application 15/836,710 3 OPINION Claims 28 and 38-§ 112(a)-Written Description Claims 28 and 38 ultimately depend from claims 21 and 31, respectively, and additionally recite “wherein the means for hook and loop closure is discontinuous.” Appeal Br., Claims App., first page. The Examiner fines that this additional limitation is new matter “because it was not present in the disclosure as originally filed on December 8, 2017.” Final Act. 13. The Examiner further finds: The disclosure as originally filed depicts and recites multiple times that the hook and loop closure attached to the wetsuit can be discontinuous (emphasis added; see at least para. 31 and Figs. 1A-1C). The disclosure as originally filed does not depict or recite that the hook and loop closure attached to the leash can be discontinuous (emphasis added). Id. Appellant responds that the Specification defines “VELCRO” as meaning “VELCRO and other generic hook and loop tapes and closure systems,” and states that it can be either “continuous (e.g., a single strip) or discontinuous (e.g., scored or having two or more sections).” Appeal Br., 22nd page (quoting Spec. ¶ 24). Appellant contends that one of ordinary skill in the art would understand that this definition “would include hook and loop closure strips on a leash that can be discontinuous so as to be complementary with discontinuous hook and loop closure strips on a wetsuit.” Id. at 23. The Examiner responds, inter alia, that “paragraph 24 is defining ‘VELCRO’ rather than ‘hook and loop.’” Ans. 12. The Specification states that “[t]he leash can have a Velcro strap with a complementary mating surface of Velcro hooks or loops.” Spec. ¶ 31. Appeal 2021-004452 Application 15/836,710 4 The Specification defines “Velcro” to include Velcro® branded as well as “generic hook and loop tapes and closure systems.” Id. ¶ 24. Such systems can be “continuous (e.g., a single strip) or discontinuous (e.g., scored or having two or more sections).” Id. Based on this definition, the Specification’s teaching that the leash can have “a Velcro strap” encompasses a discontinuous hook and loop closure. We appreciate, as the Examiner notes, that only the wetsuit is depicted and described as having a continuous hook-and-loop closure. Spec. ¶ 52, Figs. 1B, 1C. As a result, the disclosure with respect to using a discontinuous hook-and-loop closure strip with a wetsuit may be clearer in some respects than for a leash, but that does not mean that the disclosure with respect to the leash is inadequate. Therefore, we are not persuaded that the additional limitation of claims 28 and 38 is inadequately described, and we do not sustain this rejection. Claims 25-28 and 35-38-§ 112(b)-Indefiniteness Dependent claims 25-28 and 35-38 each recite the limitation “means for hook and loop closure.” Appeal Br., Claims App., first and second pages. The Examiner determines that: The meaning of this limitation is not understood. It appears Applicant may be attempting to invoke 35 USC 112(f). However, . . . this limitation does not properly invoke 35 USC 112(f) at least because the claim limitation recites sufficient structure, materials, or acts to entirely perform the recited function. Final Act. 14. We agree with the Examiner that the use of the word “means” gives rise to a rebuttable presumption that the limitation should be read as a means-plus-function limitation under 35 U.S.C. § 112(f). TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008). Nonetheless, it is Appeal 2021-004452 Application 15/836,710 5 evident that § 112(f) does not apply to this limitation. First, the limitation does not clearly recite a function. A “means for hook and loop closure” is not the same as a means for closing. Second, even if the limitation did recite a function, we agree with the Examiner (and Appellant does not appear to dispute this) that it recites adequate structure for performing such function. Accordingly, as it is clear that § 112(f) does not apply to this limitation, we do not sustain the Examiner’s rejection of claims 25-28 and 35-38 as indefinite. Claims 21-28-§ 103-Corwin and O’Hara Appellant argues the patentability of claims 21, 22, and 23. Appeal Br., 25-39. We select claim 21 as representative of claims 21 and 24-28 and address claims 22 and 23 separately. 37 C.F.R. § 41.37(c)(1)(iv) (2020). Claim 21 The Examiner finds that Corwin teaches “a leash (10) comprising an attachment assembly (20) intended to be used to attach leash to a ‘surfer’s bathing or surfing suit.’” Final Act. 15 (citing Corwin 2:5-25). The Examiner acknowledges that Corwin “does not explicitly disclose an attachment assembly that is a ‘wetsuit attachment assembly,” but finds that “O’Hara teaches that wetsuits are known in the art to be worn by surfers when water temperature is below comfortable or safe levels.” Id. (citing O’Hara 1:17-19). The Examiner determines that it would have been obvious to one of ordinary skill in the art “to configure the surfing leash invention as disclosed by Corwin to be used for surfers wearing a wetsuit because O’Hara teaches that it is known in the art for surfers to wear wetsuits when water temperatures are below comfortable or safe levels.” Id.; see also id. at 6 (“O’Hara is cited to support the notion that when Appeal 2021-004452 Application 15/836,710 6 Corwin recites the phrase ‘surfer’s bathing or surfing suit’ one of ordinary skill in the art would recognize this phrase to encompass ‘wetsuits’ because those of ordinary skill in the art recognize that in cold conditions it is customary for surfers to wear wetsuits.”). The Examiner further states that “‘wetsuit’ attachment assembly” may be considered “a recitation of the intended use of the claimed invention,” which “must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art.” Id. at 15- 16. We have considered Appellant’s arguments in opposition to the Examiner’s rejection of claim 21 and are not persuaded of Examiner error. Therefore, we sustain the rejection for essentially those reasons expressed in the Final Action and Answer, and add the following primarily for emphasis. Appellant first argues that “[t]he fact that surfers know to wear wetsuits in cold water simply means that surfers know how to attire themselves properly based on water temperature, and is not a reason why a person skilled in the art would be motivated to integrate the leash device of Corwin with a wetsuit.” Appeal Br. 25. This argument appears to be based on a misunderstanding of the Examiner’s reason to combine references. The Examiner is not relying on O’Hara for the “integrat[ion]” aspect of the combination, because Corwin already teaches “integrat[ing]” a leash with a garment worn by a surfer; e.g., a “surfing suit.” Corwin 2:5-12. Rather, the Examiner relies on O’Hara to teach that surfers are known to wear wetsuits as their “surfing suit,” particularly when the weather is cold. See Final Act. 6 (stating that recitation of surfer’s “surfing suit” in Corwin would be understood by one of ordinary skill in the art to encompass “wetsuits”); Appeal 2021-004452 Application 15/836,710 7 Ans. 15 (one of ordinary skill in the art would recognize “surfer’s bathing or surfing suit” to encompass “wetsuits”). Appellant also argues that in the course of examining a related patent application (U.S. Pat. Appl. No. 16/058,175 (“the ’175 application”)), “the Examiner referred to element 20 of Corwin as the leash attachment assembly on a wetsuit,” rather than “the wetsuit attachment assembly on a leash.” Appeal Br. 26. Appellant reasons that “[b]ecause the Examiner has deemed element 20 of Corwin to be a leash attachment assembly on a wetsuit, it cannot also simultaneously be a wetsuit attachment assembly on a leash.” Id. The ’175 application is not before us, so we will not comment either on the examination of that application or on Appellant’s characterization of that examination. In the present case, it is clear that the Examiner finds that Corwin’s clip 20 corresponds to “an attachment assembly,” which one of ordinary skill in the art would have been motivated to use to attach the leash to a wetsuit in light of O’Hara. Final Act. 15. Therefore, this argument is not persuasive of Examiner error. Appellant further argues that “the leash device of Corwin would not be ‘equally capable of use with a ‘wetsuit’ as it is with ‘a surfer’s bathing or surfing,’ as alleged by the Examiner.” Appeal Br. 26. In support of this argument, Appellant asserts that “[m]ost wetsuits cover the entire torso and thus lack a waistband on which to sling the belt clip of Corwin.” Id. at 26- 27 (citing Declaration of Amy Sun (“Sun Decl.”) ¶ 74). Appellant also contends that “[e]ven if slung at a different location, such as the wrist or ankle, it would not integrate with a complementary attachment and thus Appeal 2021-004452 Application 15/836,710 8 could easily fall off,” or “hinder paddling and maneuvering on a surfboard and thus be undesirable in such locations.” Id. at 27 (citing Sun Decl. ¶ 74). The Examiner responds: As Appellant tacitly acknowledges when noting that “most wetsuits” lack a waistband, wetsuits are known in the art and commercially available in a wide array of configurations based on factors such as cost, brand, the type of aquatic activity for which the wetsuit is intended to be used, and the particulars of the aquatic environments in which the wetsuit is intended to be worn. As such, any assertion that there are absolutely no wetsuits known in the art and/or commercially available which include any configuration and/or structure(s) that element 20 of Corwin could attach to is baseless and illogical. Ans. 16. We are not persuaded of Examiner error. We agree with the Examiner that the Appellant’s statement that “most” wetsuits lack a waistband constitutes an acknowledgement that some wetsuits do have a waistband, on which Corwin’s clip may be attached. Appellant counters in the Reply Brief that Corwin’s clip “cannot attach to and integrate with any wetsuit, whether including or lacking an edge at the waist, and whether slung at the waist or elsewhere, because no wetsuits prior to the claimed invention had a complementary leash attachment assembly to mate with [Corwin’s] clip.” Reply Br. 16. Appellant does not specify, however, what sort of “complementary leash attachment assembly” would be required for Corwin’s clip, or explain why Corwin’s clip could not be attached to a waistband. Further, whether or not a wetsuit may have a waistband, this argument would not be persuasive of Examiner error, as it is based on the bodily incorporation of specific features rather than the combination of teachings as Appeal 2021-004452 Application 15/836,710 9 proposed by the Examiner in the articulation of the rejection. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . [r]ather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted); see Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983) (“There is a distinction between trying to physically combine the two separate apparatus disclosed in two prior art references on the one hand, and on the other hand trying to learn enough from the disclosures of the two references to render obvious the claims in suit. . . . Claims may be obvious in view of a combination of references, even if the features of one reference cannot be substituted physically into the structure of the other reference.”). Appellant also takes issue with the Examiner’s statement that the recitation “wetsuit attachment assembly” is “merely intended use language.” Appeal Br. 27. Appellant asserts, in this regard, that “[w]etsuits differ vastly from bathing garments in both purpose and structure.” Id. (citing Sun Decl. ¶ 75). This argument is unpersuasive of Examiner error because although the Examiner deemed the “wetsuit” aspect of “wetsuit attachment assembly” to be a statement of intended use, the Examiner nonetheless gave patentable weight to that term. See Final Act. 15. This effectively renders the issue moot. Appellant further argues that it has provided evidence of secondary considerations of nonobviousness in the form of “a long-felt unsolved need.” Appeal Br. 31. (citing Sun Decl. ¶ 80). According to Appellant, “the problem of leash tangle, overcome by the present invention, is one that Appeal 2021-004452 Application 15/836,710 10 represents a long-felt unsolved need.” Id. Appellant asserts that “[d]ue to free rotation of a leash around a surfer’s leg, the leash cord tends to tangle around the surfer’s leg, causing the surfer to lose their balance and fall off their surfboard or to step on the leash and lose secure contact with their surfboard while riding a wave.” Id. Appellant submits that “an entire surfing community has attempted without success to solve” the leash-tangle problem, and “[t]his long felt and unsolved need strongly suggests that the present invention is non-obvious.” Id. at 37. “For objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.” In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (quotation omitted) (emphasis in original). “Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention.” Id. (citation omitted) (emphasis in original). In the present case, Appellant has not attempted to establish a nexus between its evidence of long-felt but unsolved need and what is actually recited in claim 21. Nor is any such nexus self-evident. Claim 21 broadly recites a leash with a “wetsuit attachment assembly,” without limiting the wetsuit attachment assembly to any particular structure, much less structure that prevents “free rotation” of the leash. Further, Appellant has not explained why Corwin’s clip, which appears to prevent free rotation of the leash, would not have solved the leash-tangle problem. Therefore, we cannot accord substantial weight to Appellant’s secondary consideration evidence. Appeal 2021-004452 Application 15/836,710 11 For the above reasons, and for those reasons set out in the Examiner’s Final Action and Answer, we are not persuaded that the Examiner erred in rejecting claim 21. Accordingly, we sustain the Examiner’s rejection of claims 21 and 24-28 as unpatentable over Corwin and O’Hara. Claim 22 Claim 22 depends from claim 21 and additionally recites “wherein the wetsuit attachment assembly is a bar assembly.” Appeal Br. 43 (Claims App.). The Examiner finds that Corwin teaches the additional limitation. Final Act. 16. According to the Examiner, “inasmuch as ‘bar assembly’ is defined in para. 21 of Applicant’s specification, the attachment device 20 as described and depicted by Corwin is a ‘bar around which a cord Velcro strip, clip, carabiner, other material, or other apparatus can be attached to secure an item.” Final Act. 16 (citing Corwin 2:68-4:11, Figs. 1-5). Appellant responds that “[a] clip is simply not a bar.” Appeal Br. 38. Appellant also argues that “Corwin does not teach a cord, VELCRO strip, clip, carabiner, other material, or other apparatus as being attached around the clip of Corwin.” Id. (citing Sun Decl. ¶ 88). We are not persuaded of Examiner error. The Specification defines “bar assembly” as follows: As used herein, “leash plug” and “bar assembly” are used interchangeably and both mean an assembly with a bar around which a cord, Velcro strip, clip, carabiner, other material, or other apparatus can be attached to secure an item (e.g., a water sports accessory). The bar can be rigid (e.g., metal) or flexible (e.g., a cord). The bar can also be straight or curved (e.g., a D- ring). Leash plugs and bar assemblies can be on, above, below, within, or at the surface of a water sports apparatus, a water sports apparel, or a water sports accessory with which the leash plug or bar assembly is integrated. Appeal 2021-004452 Application 15/836,710 12 Spec. ¶ 21. This definition is quite broad and open-ended, including rigid or flexible structures, straight or curved structures, even a flexible cord, within the meaning of “bar assembly.” Given the breadth of this definition, Appellant’s statement that “[a] clip is simply not a bar,” without further explanation or evidentiary support, is insufficient to show error in the Examiner’s finding that Corwin’s clip 20 falls within that definition. Appellant’s contention that Corwin does not teach “a cord, VELCRO strip, [etc.] as being attached around the clip of Corwin” is likewise unpersuasive of Examiner error. The Specification does not define “bar assembly” as including a cord or any of the other listed structures as being attached to the “bar”; rather it defines a bar assembly as a “bar” around which a cord, VELCRO strip, etc. “can be attached.” Spec. ¶ 21 (emphasis added). Appellant does not argue that it would not be possible to attach a cord, etc. around Corwin’s clip 20. Claim 23 Claim 23 depends from claim 21 and additionally recites “wherein the wetsuit attachment assembly is a quick release assembly or a part of a quick release assembly.” Appeal Br. 43 (Claims App.). The Examiner finds that Corwin’s clip 20 corresponds to the claimed quick-release assembly. Final Act. 16. Appellant responds that “a quick release assembly as defined in the specification is ‘an attachment assembly that can be quickly separated during use so that a user can be separated from an item.” Appeal Br. 38 (quoting Spec. ¶ 22). According to Appellant, Corwin’s clip cannot be a quick-release assembly because although “Corwin teaches the release of element 20 away from a user’s bathing garment,” the user “is never Appeal 2021-004452 Application 15/836,710 13 separated from their leash or surfboard,” but “merely remain attached at one connection point (ankle) instead of two (ankle and waistband).” Id. at 39. This argument is not persuasive of Examiner error. Appellant is correct that the Specification defines a quick release assembly as “an attachment assembly that can be quickly separated during use so that a user can be separated from an item.” Spec. ¶ 22. Corwin’s clip 20 falls readily within this definition. Corwin teaches that its clip attaches the leash to a surfer’s waist “using a break away material like ‘VELCRO’ that is part of the clip attachment.” Corwin 2:8-12. This allows the leash to “break[] away from attachment to the surfer’s waist when the surfer falls off the surf board thereby providing greater control of the location and portion of the leash (which is attached to the surfer’s waist and, therefore, can not become entangled between the surfer’s feet) until the force of the surfer’s fall off the surf board that causes break away of the leash from the control position at the surfer’s waist.” Id. at 2:12-22. Although Appellant is correct that the surfer would still be attached to the lease at the surfer’s ankle (id. at 2:22- 24), the definition of “quick release assembly” only requires separation of the user from “an item”-in Corwin’s case, separation of the leash from the user’s waist-and not complete separation of the user from the leash. Claims 29 and 30-§ 103-Corwin, O’Hara, and Starck Appellant does not present arguments for the patentability of claims 29 and 30 apart from their dependency from claim 21 and arguments for the patentability of claim 21 presented above. Appeal Br. 39. Therefore, for the reasons set forth above, we sustain the Examiner’s rejection of claims 29 and 30 as unpatentable over Corwin, O’Hara, and Starck. Appeal 2021-004452 Application 15/836,710 14 Claims 31-38-§ 103-Corwin, O’Hara, and Ventura Appellant argues claims 31-38 as a group. Appeal Br. 39-41. We select claim 31 as representative of the group, and decide the appeal of this rejection on the basis of claim 31 alone. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner relies on Corwin and O’Hara to teach the claimed leash and wetsuit attachment assembly, but acknowledges that these references “do not explicitly disclose a leash and wetsuit attachment assembly provided together in a kit.” Final Act. 18 (citing Corwin 2:5-25, O’Hara 1:17-19). The Examiner finds, however, that “Ventura teaches a kit comprising a leash and bathing garment attachment assembly.” Id. (citing Ventura ¶¶ 30, 41). The Examiner determines that it would have been obvious to one of ordinary skill in the art to provide the leash and wetsuit attachment assembly as a kit as taught by Ventura because “Ventura teaches that this configuration is known in the art and beneficial for allowing existing leashes and bathing garments to be retrofitted with the attachment assembly of the invention.” Id. Appellant responds that “Ventura does not disclose a kit comprising a leash and a wetsuit attachment assembly” because “[n]owhere in Ventura is the word ‘wetsuit’ ever used.” Final Act. 40. This argument is not persuasive because the Examiner is not relying on Ventura alone to teach the kit of claim 31, but on the combination of Corwin, O’Hara, and Ventura. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non- obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”). Therefore, we sustain the Examiner’s rejection of claims 31- 38 as unpatentable over Corwin, O’Hara, and Ventura. Appeal 2021-004452 Application 15/836,710 15 Claims 39 and 40-§ 103-Corwin, O’Hara, Ventura, and Starck Appellant does not present arguments for the patentability of claims 39 and 40 apart from their dependency from claim 31 and arguments for the patentability of claim 31 presented above. Appeal Br. 41. Therefore, for the reasons set forth above, we sustain the Examiner’s rejection of claims 39 and 40 as unpatentable over Corwin, O’Hara, Ventura, and Starck. Objections to Drawings The Final Office Action includes objections to the drawings. Final Act. 9-10. Although Appellant responded to this objection (Appeal Br. 9- 18), objections to drawings are not appealable matters, but are reviewable by way of petition to the Technology Center Director. See MPEP § 1002.02(c) (Item 4: Petitions under 37 C.F.R. § 1.113 relating to objections or requirements made by the examiners). Accordingly, that issue is not addressed here. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 28, 38 112(a) Written Description 28, 38 25-28, 35- 38 112(b) Indefiniteness 25-28, 35- 38 21-28 103 Corwin, O’Hara 21-28 29, 30 103 Corwin, O’Hara, Starck 29, 30 31-38 103 Corwin, O’Hara, Ventura 31-38 39, 40 103 Corwin, O’Hara, Ventura, Starck 39, 40 Appeal 2021-004452 Application 15/836,710 16 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed Overall Outcome 21-40 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