UGOWEAR, LLCDownload PDFPatent Trials and Appeals BoardOct 21, 20212021001723 (P.T.A.B. Oct. 21, 2021) 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. 15/945,827 04/05/2018 Melanie Cole 1669.010USC1 3891 25215 7590 10/21/2021 The Dobrusin Law Firm P.C. 29 W. Lawrence Street Suite 210 Pontiac, MI 48342 EXAMINER LARSON, JUSTIN MATTHEW ART UNIT PAPER NUMBER 3734 NOTIFICATION DATE DELIVERY MODE 10/21/2021 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): dobrusin_PAIR@firsttofile.com patmail@patentco.com rmasquelier@patentco.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MELANIE COLE and VICKY DEROUCHEY Appeal 2021-001723 Application 15/945,827 Technology Center 3700 ____________ Before MICHAEL L. HOELTER, BRETT C. MARTIN, and MICHELLE R. OSINSKI, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1, 3, 4, 7, 9, 13–17, 23, 24, 26, 27, and 30–33.3 See Appeal Br. 4. We have jurisdiction under 35 U.S.C. § 6(b). 1 Parent Application No. 15/550,441 is the subject of Appeal No. 2021- 001631, a Decision of which was mailed September 3, 2021. A “sibling application,” i.e., Application No. 15/945,826, is “also under appeal” but an appeal number has yet to be assigned. Appeal Br. 3. 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “UGOWEAR, LLC.” Appeal Br. 2. 3 Claims 2, 5, 6, 8, 10–12, 18–22, 25, 28, and 29 have been cancelled. See Appeal Br. 4. Appeal 2021-001723 Application 15/945,827 2 We AFFIRM the Examiner’s rejections of these claims. CLAIMED SUBJECT MATTER The disclosed subject matter “relate[s] generally to a carrying case. More specifically, the teachings herein relate to a carrying case for carrying and protecting items.” Spec. ¶ 1. Apparatus claims 1 and 9 are independent. Claim 1 is illustrative of the claims on appeal and is reproduced below. 1. A carrying case, comprising: a first portion including a first inner surface and a first outer surface; a second portion including a second inner surface, a second outer surface, and a pocket located between the second inner surface and the second outer surface, wherein the second portion is formed of a first opaque material forming the inner surface and a portion of the second surface and a second transparent material forming a portion of the outer surface; and a waterproof fabric-coated thermoplastic polyurethane case zipper with an open position and a closed position extending between the first portion and the second portion; wherein an item located in the pocket can be viewed and manipulated from a window formed of the transparent material located on the second outer surface, the window being surrounded by the first opaque material; wherein the window formed from the transparent polymeric material is thermoplastic polyurethane that is engaged in a water-tight seal with the opaque material surrounding the transparent material, and wherein the first portion and at least a portion of the second portion is constructed of thermoplastic polyurethane so that the carrying case is waterproof; wherein when the case zipper is in a closed position, the first inner surface and the second inner surface are kept dry when the carrying case is exposed to moisture; and Appeal 2021-001723 Application 15/945,827 3 wherein when the case zipper is in a closed position, the case zipper forms a water-tight and air-tight seal further adapting the carrying case to float in water. EVIDENCE Name Reference Date Rossetti et al. (“Rossetti”) US 2012/0280008 A1 Nov. 8, 2012 Hung et al. (“Hung”) US 8,380,264 B2 Feb. 19, 2013 Yun US 2013/0270312 A1 Oct. 17, 2013 Morgan et al. (“Morgan”) US 8,752,740 B2 June 17, 2014 Lai et al. (“Lai”) US 9,795,044 B2 Oct. 17, 2017 Appellant’s Admitted Prior Art (“AAPA”). Appellant’s Specification Paragraph 34. REJECTIONS Claims 1, 3, 4, 7, 9, 13–17, 23, 26, 27, and 30–33 are rejected under 35 U.S.C. § 103 as unpatentable over Yun, Morgan, AAPA, Lai, and Hung. Claim 24 is rejected under 35 U.S.C. § 103 as unpatentable over Yun Morgan, AAPA, Lai, Hung, and Rossetti. ANALYSIS The rejection of claims 1, 3, 4, 7, 9, 13–17, 23, 26, 27, and 30–33 as unpatentable over Yun, Morgan, AAPA, Lai, and Hung Appellant argues all these claims together. See Appeal Br. 14–19. We select claim 1 for review with the remaining claims standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). The Examiner relies primarily on Yun for teaching a carrying case employing a “waterproof zipper.” See Final Act. 2 (referencing Yun ¶ 27); Ans. 3. However, Yun “fails to provide any specific details of the zipper,” such as “a specific model/brand of zipper.” Final Act. 3; Ans. 3. The Appeal 2021-001723 Application 15/945,827 4 Examiner states, “[g]iven Yun’s lack of zipper details,” a skilled person would “have looked to another known waterproof zipper for such structure.” Final Act. 3; Ans. 3. On this point, the Examiner states, “Appellant has disclosed that the TIZIP® zipper was one known waterproof zipper.” Ans. 3 (referencing AAPA, i.e., Spec. ¶ 34); see also Final Act. 3. This paragraph 34 in Appellant’s Specification states that “a TIZIP® waterproof zipper [is] available from Titex GmbH, Germany.” AAPA. The Examiner thus concludes that it would have been obvious “to have used that specific zipper in constructing the Yun device” because “[t]here is no inventive step in simply choosing between known waterproof zippers.”4 Final Act. 3; Ans. 3. Appellant contends that “modifying the zipper of Yun to include a waterproof zipper of the claimed invention does not necessarily ensure that the modified Yun case can float in water when a mobile device is enclosed within the case.” Appeal Br. 14 (italics added). Instead, as per Appellant, “the air-tight and water-tight nature of a zipper described as ‘waterproof’ is not inherent” and that “the capability of air and water to flow through a ‘waterproof’ zipper exists across a spectrum.” Appeal Br. 14. While this may be true with respect to other waterproof zippers, the Examiner is not selecting just any waterproof zipper across a spectrum of waterproof zippers, but instead, the Examiner is selecting the TIZIP® waterproof zipper which Appellant acknowledges is readily available. See Final Act. 3; AAPA. Further, upon the Examiner’s selection of this specific zipper, Appellant does not explain how this TIZIP® zipper fails to be both “water-tight and air- 4 It is further noted that undated Exhibit C (a “[d]ata sheet” for the TIZIP® zipper) attached to the DeRouchey Declaration itself teaches use of the zipper for “Smartphone, tablet, radio protection bags.” Appeal 2021-001723 Application 15/945,827 5 tight” as claimed. See Exhibit D attached to the DeRouchey Declaration (“Waterproof, airtight, pressure-resistant and made in Germany, the TIZIP® brand has stood for high-quality closure systems for more than 20 years.”). Further, the Examiner states that Appellant “has provided evidence . . . that all TIZIP® zippers are air-tight as well as water-proof.” Ans. 3 (referencing “the affidavit of Vicky DeRouchey” as support5). Ans. 3. Thus, as per the Examiner, “Appellant’s arguments are geared toward the zipper of Yun itself and not the actual combination of prior art set forth in the rejection.” Ans. 3. In other words, Appellant fails to show how the known TIZIP® zipper employed by the Examiner fails to meet this claim limitation. Regarding the ability to float, that property depends on the material of the case itself, its weight (including that of its contents), and its external shape or configuration. See also Ans. 6 (addressing the attributes that allow Appellant’s carrying case to float, stating that these attributes “were already known in the art” and indicating where these attributes are taught in the cited art). Claim 1 recites “that the carrying case is waterproof” and to achieve this, Appellant’s Specification discusses constructing the case using a TPU (thermoplastic polyurethane) material. See Spec. ¶¶ 21, 27, 29. Yun is silent as to the material the case is made of. However, as per the Examiner, “Hung teaches that it was already known for a case like Yun to be either partly or entirely made from TPU.” Final Act. 3 (referencing Hung 6:14– 22); Ans. 5. This cited portion of Hung teaches that a “mobile media device case 110 can be composed of . . . PVC, TPU, plastic” among other materials. 5 Paragraph 11 of the DeRouchey Declaration states, “All TIZIP zippers are waterproof, airtight, and pressure tested (see, Exhibit C and TIZIP® website information attached hereto as Exhibit D).” Appeal 2021-001723 Application 15/945,827 6 Hung 6:14–16. The Examiner thus reasons that it would have been obvious to construct Yun’s case of such material as well. See Final Act. 3; Ans. 5. The use of such material would also be consistent with Yun’s zipper being waterproof. See Yun ¶ 27. In other words, it is not made clear why Yun would employ a waterproof zipper if the case itself is not also waterproof. Consequently, whether Yun’s modified waterproof case floats or not depends on its dimensions (i.e., displacement) and weight (including contents). Paragraph 7 of the DeRouchey Declaration states that Appellant’s device is able to float provided the contents do not exceed “20.6 ounces.” Appellant presents no evidence that Yun’s modified case (i.e., one having similar dimensions, shape, weight, and material) would fail to float just as well. Thus, Appellant’s contention above that modifying Yun’s zipper “does not necessarily ensure that the modified Yun case can float” (Appeal Br. 14) is not persuasive when addressing a similarly sized and weighted Yun case, which has been modified by the Examiner (based on the cited art) to employ similar material and components as recited in claim 1. See also In re Best, 562 F.2d 1252, 1255 (CCPA 1977) noting “the PTO’s inability to manufacture products or to obtain and compare prior art products.” Appellant also contends that the Examiner “failed to identify where the prior art teaches that the window formed from the transparent polymeric material is thermoplastic polyurethane.” Appeal Br. 15. However, Appellant does not dispute that Lai teaches that it was already known for a “carrying case like that of Yun to include a TPU window (24) sealed with welding or rubber gasket” so as to allow viewing and manipulation of the enclosed device. Final Act. 3 (referencing Lai 12:33–50); Ans. 5. Indeed, this portion of Lai teaches that “screen member 24 may be formed of a PET, Appeal 2021-001723 Application 15/945,827 7 polycarbonate, PC/PMMA blend TPU, PBT material or other suitable material with high optical transparency.” Lai 12:48–51 (italics added). Appellant does not explain how the use of TPU as above would fail to provide the desired “water-tight seal” required. Appeal Br. 15. Appellant further contends that the prior art fails to teach that when the zipper is open, “the mobile device will be exposed to the moisture due to the lack of closing feature on the second pocket.”6 Appeal Br. 14. Appellant contends that Yun’s contents are “not exposed even when the zipper is in an open position” because, when in this open position, Yun still “seems to suggest that the case remains rather closed” Appeal Br. 15; see also Yun Fig. 2. The Examiner explains, however, that when Yun’s zipper is open, Yun’s contents would be exposed to moisture because the zipper is no longer waterproof. See Ans. 4 (“An open zipper will not stop water from passing therethrough.”). Appellant does not explain how, when a waterproof zipper is open, the open zipper will still, somehow, restrict water migration across the zipper and into the case. Accordingly, Appellant is not persuasive that the Examiner erred when finding that, even if Yun’s case “remains rather closed” after opening the zipper, Yun’s open zipper will still allow moisture to pass. Appellant also argues that a skilled person “would have no incentive to modify the case of Yun to make it float with or without the electronic device enclosed.” Appeal Br. 16. However, as noted above, buoyancy is determined by weight and shape, i.e., the amount of fluid displaced. 6 The Examiner relies on Morgan for teaching the “pocket” limitations. See Final Act. 3; Ans. 4. Appellant does not dispute Morgan’s teaching, or Morgan’s combination with Yun. Appeal 2021-001723 Application 15/945,827 8 Comparing products of like size (which are made of similar material having waterproof/air tight zippers), Appellant seems to contend that Yun’s modified case would not float because the references are silent on this point. See Appeal Br. 15. But, all things being equal, there is no reason to believe that Yun’s modified case would fail to float while Appellant’s similar case would float. In other words, Appellant does not explain how the Examiner’s reasoning to combine the various references is faulty or in error. Appellant additionally contends “that the problems to be solved by the prior art concern very different problems from that addressed by the present invention.” Appeal Br. 16. Further, “[n]one of the cited prior art references relate to cases that are deliberately created for use in aquatic environments, nor cases that explicitly disclose the ability to float while maintaining the weight of an electronic device therein.” Appeal Br. 17. However, our reviewing court has previously held that it is not necessary for the prior art to serve the same purpose as that disclosed in the specification in order to support the conclusion that the claimed subject matter would have been obvious. See In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972); see also Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1003 (Fed. Cir. 2016); In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (“[t]he use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain”). Consequently, Appellant’s contention that the prior art does not address the problem identified in Appellant’s Specification is not persuasive of Examiner error, nor is Appellant persuasive that the prior art, as a whole, fails to render the claimed solution obvious. Appeal 2021-001723 Application 15/945,827 9 Addressing the two Declarations submitted by Appellant, the Examiner characterizes the “DeRouchey affidavit” as pertaining to the “material tests” performed in an effort to show that Appellant’s case can float. Ans. 8. That is a proper characterization of this document which details the various “water immersion, buoyancy, temperature, abrasion, and pull testing” that was performed on Appellant’s case. DeRouchey Declaration ¶ 5. The results of such testing are provided in paragraph 6 of this Declaration. The Declaration concludes with a series of paragraphs stating, the “Pack is able to float,” the “packs are certified waterproof,” the “packs utilize TIZIP® MasterSeal 6 waterproof zippers,” the “MasterSeal 6 is made from high-strength fabric coated with thermoplastic polyurethane,” and “[a]ll TIZIP zippers are waterproof, airtight, and pressure tested.” DeRouchey Declaration ¶¶ 7–11. The Examiner does not dispute such test results. See Ans. 7. Instead, this Declaration would seem to demonstrate that the use of the TIZIP® zipper in Yun’s modified case would likewise help achieve a similar degree of buoyancy. Thus, there is no indication that the Examiner disregarded this Declaration. Regarding the “Cole affidavit,” the Examiner characterizes this Declaration as pertaining to “commercial success.” Ans. 8. Indeed, this Cole Declaration addresses past and anticipated case sales (see ¶¶ 6–8) and awards received (see ¶ 9). Such sales and awards are promising and indicate a product that is well-received in the marketplace. However, even presuming a connection between the claim language, the evidence submitted, and the product sold, our reviewing court has instructed us that a nexus may not exist where, for example, the merits of the claimed invention were “readily available in the prior art.” Richdel, Inc. v. Sunspool Corp., Appeal 2021-001723 Application 15/945,827 10 714 F.2d 1573, 1580 (Fed. Cir. 1983); see also Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011). In fact, we have been instructed that “secondary considerations of nonobviousness . . . simply cannot overcome a strong prima facie case of obviousness” and that for obviousness under § 103, “all that is required is a reasonable expectation of success.” Wyers v. Master Lock Co., 616 F.3d 1231, 1242, 1246 (Fed. Cir. 2010). On this point, the Examiner states, “Appellant’s objective evidence of nonobviousness is not sufficient to outweigh the evidence of obviousness.” Ans. 8. The Examiner’s above statement is not wrong. For example, because (a) Yun teaches use of a “waterproof zipper” (Yun ¶ 27), but not any particular one; (b) AAPA teaches that the TIZIP® zipper is waterproof and presently available (see Spec. ¶ 34); and, (c) Hung teaches a carrying case for an electrical device that can be constructed of TPU material (see Hung Title, 6:14–15), it can be concluded that the Examiner’s reasoning (along with the teachings of Morgan and Lai, see Final Act. 3, 4) presents a strong showing of obviousness. As a consequence, we are not persuaded that Appellant’s evidence of secondary considerations overcomes the Examiner’s rejection. We sustain the Examiner’s rejection of claims 1, 3, 4, 7, 9, 13–17, 23, 26, 27, and 30–33 as unpatentable over Yun, Morgan, AAPA, Lai, and Hung. Regarding the Examiner’s rejection of claim 24, Appellant repeats the same arguments presented above for claim 1. See Appeal Br. 15, 19. For example, Appellant contends that the Examiner “failed to identify where the prior art teaches that when the zipper is in an open position, the mobile device will be exposed to the moisture.” Appeal Br. 15. Appellant’s Appeal 2021-001723 Application 15/945,827 11 contention is not persuasive of Examiner error for the reasons already discussed. We sustain the Examiner’s rejection of claim 24 as being unpatentable over Yun, Morgan, AAPA, Lai, Hung, and Rossetti. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 4, 7, 9, 13–17, 23, 26, 27, 30–33 103 Yun, Morgan, AAPA, Lai, Hung 1, 3, 4, 7, 9, 13–17, 23, 26, 27, 30–33 24 103 Yun, Morgan, AAPA, Lai, Hung, Rossetti 24 Overall Outcome 1, 3, 4, 7, 9, 13–17, 23, 24, 26, 27, 30–33 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED Copy with citationCopy as parenthetical citation