Ex Parte Gallup et alDownload PDFPatent Trial and Appeal BoardAug 29, 201814675013 (P.T.A.B. Aug. 29, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/675,013 03/31/2015 26096 7590 08/31/2018 CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 FIRST NAMED INVENTOR Eric Gallup 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 67736-006PUS 1 6924 EXAMINER GARFT, CHRISTOPHER ART UNIT PAPER NUMBER 3632 NOTIFICATION DATE DELIVERY MODE 08/31/2018 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): ptodocket@cgolaw.com cgolaw@yahoo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERIC GALLUP and JONATHAN MARKS Appeal2017-010804 Application 14/675,013 Technology Center 3600 Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and BRANDON J. WARNER, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Eric Gallup and Jonathan Marks ("Appellants") appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1--4, 7-15, and 17-20. 1 See Appeal Br. 1-8. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. We note that claim 16 has been withdrawn, and claims 5 and 6 stand objected to by the Examiner as being dependent upon a rejected base claim, but were indicated as being otherwise allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. See Final Act. 1 (Office Action Summary), 11 ( discussing claims containing allowable subject matter). Appeal2017-010804 Application 14/675,013 CLAIMED SUBJECT MATTER Appellants' disclosed invention "relates generally to an apparatus for holding items." Spec. ,r 1. Claims 1, 11, and 13 are independent. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. An apparatus for holding an accessory with improved accessibility comprising: a bendable strap having a deformable support member disposed within a flexible body, and a first coupling element extending from an end of the flexible body and secured to an end of the deformable support member; and an accessory having a second coupling element formed therein, the second coupling element configured to releasably engage the first coupling element such that the accessory is detachably secured to the bendable strap. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Nelson Gunaratnam Rothbaum Olsson us 4,940,204 US 7,600,513 B2 US 2011/0252607 Al US 8,979,060 Bl REJECTIONS The following rejections are before us for review: July 10, 1990 Oct. 13, 2009 Oct. 20, 2011 Mar. 17, 2015 I. Claims 1, 2, 10, 13-15, and 17 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Rothbaum and Nelson. Final Act. 2-5. 2 Appeal2017-010804 Application 14/675,013 II. Claims 3, 4, and 11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rothbaum, Nelson, and Olsson. Id. at 5---6, 8-10. III. Claims 7-9 and 18-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rothbaum, Nelson, and Gunaratnam. Id. at 6-8. IV. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Rothbaum, Nelson, Olsson, and Gunaratnam. Id. at 10-11. ANALYSIS Rejection I - Claims 1, 2, 10, 13-15, and 17 as unpatentable over Rothbaum and Nelson In rejecting independent claims 1 and 13, the Examiner found that Rothbaum discloses, in relevant part, "[ a ]n apparatus (Fig. 31 G) for holding an accessory (Paragraph 0004, Lines 1-3) with improved accessibility comprising: a bendable strap (3104, Fig. 31 G) having a deformable support member (member 3104 is bendable as shown schematically in Fig. 29I)." Final Act. 2 (boldface omitted); see id. at 3 (relying on the same finding with respect to claim 13). The Examiner acknowledged that "Rothbaum does not disclose the deformable support member disposed within a flexible body (Cl. 1 ), the deformable support member having at least two legs; a flexible body substantially covering the support member to provide a relatively thin, generally rectangular structure (Cl. 13)." Id. at 3. However, the Examiner found that Nelson discloses a flexible or deformable strap (Fig. 7) attached to an accessory (10, Fig. 1) that includes a deformable member 3 Appeal2017-010804 Application 14/675,013 (32, Fig. 6) disposed within a flexible body (36 and 38, Fig. 7), and a first coupling element (18, Fig. 6) extending from an end of the flexible body and secured to an end of the deformable support member (see Fig. 6-7). Re. Cl. 13, Nelson discloses the deformable support member having at least two legs (32, Fig. 6); a flexible body (38, Fig. 7) substantially covering the support member to provide a relatively thin, generally rectangular structure (see Fig. 7-8). Id. at 4 (boldface omitted). The Examiner concluded that, given the teachings of the prior art, it would have been obvious "to replace the bendable structure of the strap of Rothbaum with the flexible structure of Nelson since Nelson states that such a modification provides desired characteristics of being flexible, non-brittle and have substantially no mechanical memory (Col. 4, Lines 13-16)." Id. at 4--5 (emphasis added; boldface omitted). The Examiner clarifies in the Answer that replacing Rothbaum's strap structure with Nelson's strap structure "would enable the strap to remain in a folded or flexed configuration as shown in Fig. 2b (for example) without the need of magnets, snaps or other securing means." Ans. 6; see also id. at 13 ( explaining that "the combined strap would be able to retain its shape in a desired configuration, as shown in Fig. 2b ofRothbaum (for example) without the need of magnets, snaps or other securing means to hold the strap in that particular configuration"). According to the Examiner, the proposed combination of teachings would improve Rothbaum's device because "it would no longer require the strap to include attachment members such as magnetic materials, snaps, hook and loop fasteners, buttons and button holes, and the like (see Paragraph 0024 of Rothbaum), thus making the device easier to use and require less working parts." Id. at 13-14. 4 Appeal2017-010804 Application 14/675,013 Claims 1. 2. and 10 In contesting the rejection of independent claim 1, Appellants argue that the Examiner's conclusion of obviousness is in error because "a bent brass wire is not shown to be a satisfactory replacement for a fastener when trying to create a closed loop to retain an earbud wire on a phone case." Reply Br. 2. In particular, Appellants assert that "Nelson does not disclose the use of the brass wire to create a closed loop or that the wire can be bent sharply enough back against itself to replace a fastener such as a magnet, snap, etc[.] in Rothbaum." Id. (citing Nelson, Fig. 9C). According to Appellants, elastic deformation "would prevent the wire from being bent tightly against itself, which would permit the earbud wire to slide off the phone case, which is what Rothbaum is trying to prevent." Id. We are not persuaded by Appellants' argument because it does not identify error in the Examiner's reasoning articulated in support of the conclusion of obviousness. Here, the Examiner articulated adequate reasoning based on rational underpinnings for modifying Rothbaum' s cord management system by replacing its strap with the strap of Nelson. As discussed above, the Examiner determined that the proposed modification of Rothbaum would improve its cord management system by eliminating the need for attachment mechanisms. See Ans. 6, 13-14. In this regard, Appellants do not persuasively refute the Examiner's reasoning. Appellants' contention that Nelson's strap would be incapable of bending sufficiently to retain an earbud wire (see Reply Br. 2) is based upon a speculative assumption regarding the bending ability of Nelson's strap as depicted in Figure 9C. Such an assertion amounts to no more than attorney argument unsupported by 5 Appeal2017-010804 Application 14/675,013 objective evidence, and, thus, is entitled to little, if any, weight. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument in a brief cannot take the place of evidence in the record). Moreover, we note that, "if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Here, Appellants have not provided factual evidence or sufficiently persuasive technical reasoning to explain why replacing Rothbaum's strap with the strap of Nelson would yield anything other than a predictable result, or that doing so ( and maintaining the ability to retain an earbud wire) would be somehow beyond the level of ordinary skill in the art. In other words, we are not persuaded that replacing Rothbaum's strap with Nelson's strap, as proposed by the Examiner in the rejection, would amount to "more than the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for the improvement." Id. After careful consideration of all the evidence, Appellants' arguments do not apprise us of error in the Examiner's findings or reasoning articulated in support of the conclusion of obviousness with respect to independent claim 1. Accordingly, we sustain the rejection of claim 1, and of its dependent claims 2 and 10, for which Appellants do not present any separate arguments, under 35 U.S.C. § 103(a) as being unpatentable over Rothbaum and Nelson. 6 Appeal2017-010804 Application 14/675,013 Claims 13-15 and 17 In contesting the rejection of independent claim 13, Appellants argue that, "there is no reason to modify the strap 2904 of Rothbaum to include two legs." Appeal Br. 7 (citing Rothbaum, Fig. 29I). Appellants assert that "[ t ]he Examiner has not offered any rationale for modifying the strap of Rothbaum to have at least two legs, nor would it make sense to do so." Id. According to Appellants, "two legs does not offer any benefit to the strap in Rothbaum." Reply Br. 3. This argument is unpersuasive. As discussed above, the Examiner found that Nelson discloses a deformable support member covered with a flexible body and having at least two legs (see Final Act. 4 (citing Nelson, Figs. 6-8)), and concluded that it would have been obvious to replace Rothbaum's strap with Nelson's strap (see id. at 4--5; Ans. 6, 13-14). Given the Examiner's finding that Nelson's strap has two legs, which Appellants do not contest, replacing the strap of Rothbaum's cord management system with Nelson's strap, as proposed by the Examiner, would result in a cord management system having a strap with two legs. In this regard, for the same reasons discussed supra with respect to the rejection of claim 1, Appellants' arguments do not apprise us of error in the Examiner's reasoning articulated in support of the conclusion of obviousness for claim 13. Namely, we are not convinced that the proposed modification of Rothbaum to replace its strap with Nelson's strap amounts to anything more than the substitution of one known element for another to yield predictable results. See KSR, 550 U.S. at 417. Accordingly, we sustain the rejection of claim 13, and of its dependent claims 14, 15, and 17, for which Appellants do not present any separate arguments, as being unpatentable over Rothbaum and Nelson. 7 Appeal2017-010804 Application 14/675,013 Rejection II- Claims 3, 4, and 11 as unpatentable over Rothbaum, Nelson, and Olsson Claims 3 and 4 In rejecting dependent claims 3 and 4, the Examiner acknowledged that Rothbaum does not disclose an insert disposed within the interior cavity and defining an accessible storage space within the insert (Cl. 3) or the insert is disposed within the outer shell such that a concealed storage space is defined between the insert and the outer shell below the accessible storage space (Cl. 4). Final Act. 5. However, the Examiner found that "Olsson discloses a storage pouch or device holder ( 14 and 16, Fig. 1 )" having the insert features recited in claims 3 and 4. Id. (boldface omitted). The Examiner concluded that, given the teachings of the prior art, it would have been obvious to apply the teachings of Olsson to the teachings ofRothbaum and Nelson in order to "enable[] various different mobile phones or electronic device to be retained within the holder (Col. 5, Lines 11-16)." Id. at 6 (boldface omitted). Appellants argue that Rothbaum discloses a phone case, Olsson discloses a phone holder, and "[ t ]he Examiner is ignoring the significant differences between phone cases and device 'pouches' or holders." Appeal Br. 7. According to Appellants, "[ c ]hanging the Rothbaum phone case into a storage pouch would make the Rothbaum invention unsatisfactory for its intended purpose, which is a phone case." Reply Br. 4. We are not persuaded by this argument. Rothbaum discloses that an intended purpose of its device is to provide a cord management system for headphones used with a portable electronic device, such as a mobile phone. See Rothbaum ,r,r 4--7; id. ,r 18 ( disclosing that "[ s Jome embodiments provide a cord management system 8 Appeal2017-010804 Application 14/675,013 having a case for an object and a strap permanently attached to the case"). Rothbamn also discloses "that the term 'case' refers to any type of material that covers or partially covers the object." Id. ,r 365 (emphasis added). Olsson "is directed to a device holder for retaining electronic devices, such as mobile phones and/or tablet computers." Olsson, col. 2, 11. 60-62. Olsson discloses that "an electronic device is inserted into the holder, with the amount of deformation of the inner member varying based on the dimensions of the electronic device [and,] [a]s such, the device holder may be configured to accommodate electronic devices of varying sizes and shapes." Id., col. 3, 11. 5---6. In other words, Olsson's "holder" can retain inserted mobile phones of different sizes and shapes. Given that an electronic device inserted into Olsson's holder would be at least partially covered by material of the holder (see e.g., Olsson, Fig. 1), we are not persuaded of a distinction between a "case," as disclosed by Rothbaum, and Olsson's "holder." Moreover, Appellants offer no factual evidence or persuasive technical reasoning to explain why applying Olsson's teachings to Rothbaum's cord management case would render Rothbaum's case unsatisfactory for managing a cord. Thus, we do not agree with Appellants that modifying Rothbaum based on the teachings of Olsson, as proposed by the Examiner, would render Rothbaum's case unsatisfactory for its intended purpose. After careful consideration of all the evidence, Appellants' arguments do not apprise us of error in the Examiner's findings or reasoning articulated in support of the conclusion of obviousness with respect to claims 3 and 4. Accordingly, we sustain the rejection of claims 3 and 4 under 35 U.S.C. § 103(a) as being unpatentable over Rothbaum, Nelson, and Olsson. 9 Appeal2017-010804 Application 14/675,013 Claim 11 In contesting the rejection of independent claim 11, Appellants rely on the same arguments presented for patentability of claims 1 and 13 subject to Rejection I, and claims 3 and 4 subject to Rejection II. See Appeal Br. 8. For the same reasons that Appellants' arguments do not apprise us of error in the rejections of claims 1, 3, 4, and 13, these arguments likewise do not apprise us of error in the rejection of claim 11. Accordingly, we sustain the rejection of claim 11 as being unpatentable over Rothbaum, Nelson, and Olsson. Rejections III and IV- Claims 7-9 and 18-20 as unpatentable over Rothbaum, Nelson, and Gunaratnam, and claim 12 as unpatentable over Rothbaum, Nelson, Olsson, and Gunaratnam With respect to the rejections of claims 7-9, 12, and 18-20, Appellants do not set forth any additional substantive arguments separate from the arguments discussed supra. See Appeal Br. 5-8; Reply Br. 1-5. Accordingly, for the same reasons that Appellants' arguments do not apprise us of error in Rejections I and II, Appellants also do not apprise us of error in Rejections III and IV. We likewise sustain the rejections of claims 7-9 and 18-20 as unpatentable over Rothbaum, Nelson, and Gunaratnam, and claim 12 as being unpatentable over Rothbaum, Nelson, Olsson, and Gunaratnam. 10 Appeal2017-010804 Application 14/675,013 DECISION We AFFIRM the Examiner's decision rejecting claims 1, 2, 10, 13-15, and 17 under 35 U.S.C. § 103(a) as being unpatentable over Rothbaum and Nelson. We AFFIRM the Examiner's decision rejecting claims 3, 4, and 11 under 35 U.S.C. § 103(a) as being unpatentable over Rothbaum, Nelson, and Olsson. We AFFIRM the Examiner's decision rejecting claims 7-9 and 18-20 under 35 U.S.C. § 103(a) as being unpatentable over Rothbaum, Nelson, and Gunaratnam. We AFFIRM the Examiner's decision rejecting claim 12 under 35 U.S.C. § 103(a) as being unpatentable over Rothbaum, Nelson, Olsson, and Gunaratnam. 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)(l )(iv). AFFIRMED 11 Copy with citationCopy as parenthetical citation