Ex Parte Daniels

Patent Trial and Appeal Board

May 30, 2014

11243115 (P.T.A.B. May. 30, 2014)

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.
11/243,115 10/03/2005 Charles Thomas Daniels 41660.001 6268
21907 7590 06/02/2014
ROZSA LAW GROUP LC
18757 BURBANK BOULEVARD
SUITE 220
TARZANA, CA 91356-3346
EXAMINER
NEWHOUSE, NATHAN JEFFREY
ART UNIT PAPER NUMBER
3782
MAIL DATE DELIVERY MODE
06/02/2014 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 CHARLES THOMAS DANIELS
____________

Appeal 2012-004210
Application 11/243,115
Technology Center 3700
____________

Before JOHN C. KERINS, STEFAN STAICOVICI and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/243,115

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STATEMENT OF THE CASE
Charles Thomas Daniels (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision to reject under 35 U.S.C. § 112, second
paragraph, claims 1 and 2 for indefiniteness and under 35 U.S.C. § 103(a)
claims 1 and 2 as unpatentable over Lollis (US D404,908; iss. Feb. 2, 1999),
Kravchenko (US D258,246; iss. Feb. 17, 1981), Christiansen (US 4,332,338;
iss. Jun. 1, 1982) and Kelley (US 5,020,711; iss. Jun. 4, 1991). Claims 3-14
have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter “relates to the field of wallets and related
items to be used to carry personal accessories.” Spec. 1, ll. 14-15; figs. 1-2.
Claim 1, the sole independent claim, is representative of the claimed
subject matter and recites:
1. A wraparound wallet to be retained around a part
of a human body, consisting of:
a. a body made of thin flexible lightweight
material, the body having a front surface, a rear surface, a
lengthwise top edge, a lengthwise bottom edge, a rear
wall and a parallel oppositely disposed front wall;
b. an elongated flexible strap attached to the front
wall of the body and having a front side aligned with the
front surface of the body and a rear side aligned with the
rear surface of the body and further having an elastic
section and a mating section attached to the elastic
section, a first fastening member located on the front
surface of the body and located adjacent the rear wall and
a second mating fastening member located on the rear
side of the mating section of the elongated flexible strap,
so that when the two mating fastening members are
joined, an enclosed area is formed by the rear surface of
the body and a portion of the rear side of the strap to
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enable the body and strap to be retained around a body
part of a human in the formed area;
c. said body having a first widthwise section
located adjacent the rear wall and extending to a first
interior wall within the body, the first widthwise section
having an opening at the top lengthwise edge of the body
which opening extends into an interior pocket formed by
a first interior surface opposite the front surface, a second
interior surface opposite the rear surface, a portion of the
lower widthwise edge, the end wall and the interior wall,
a first pair of mating fastening members comprising a
first fastening member located on said first interior
surface adjacent to the opening and a second mating
fastening member located on the interior second surface
adjacent to the opening wherein for the first pair of
mating fastening members, one of the fastening members
is a hook fastening member and the other fastening
member is a loop fastening member, so that when the
fastening members are joined together, the interior
pocket is closed1 so that flat objects such as credit cards,
driver’s license and paper money can be retained within
the interior pocket;

1 In the Claims Appendix section, the wording for the interior pocket appears
as follows, “the interior pocket is fully closed.” Br. 21. The Examiner made
a 35 U.S.C. § 112, 1st paragraph, rejection in the Non-Final Rejection,
mailed Dec. 22, 2009. The Examiner found that “[r]egarding Claim 1, there
is no support in the originally filed specification for the first and second
widthwise sections being ‘fully closed’ by the respective pairs of mating
fastening members, as newly claimed in lines 28 and 43. There is no view
of the device in the figures that clearly shows this feature, and there is no
statement of such in the specification.” Non-Final Rej. 2. In the
Amendment after Non-Final Rejection, filed Jun. 10, 2010, Appellant
responded by stating that Appellant “has removed the word ‘fully’
everywhere it appears in Claim 1 in compliance with the Examiner’s
statement that this would be adding new matter.” Amendment after Non-
Final Rej. 6.
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d. said body having a second widthwise section
located adjacent the first interior wall and extending to a
second interior wall within the body, the second
widthwise section having an opening at the top
lengthwise edge of the body which opening extends into
an interior pocket formed by a first interior surface
opposite the front surface, a second interior surface
opposite the rear surface, a portion of the lower
widthwise edge, the first interior wall and the second
interior wall, a second pair of mating fastening members
comprising a first fastening member located on said first
interior surface adjacent to the opening and a second
mating fastening member located on the second interior
surface adjacent to the opening wherein for the second
pair of mating fastening members, one fastening member
is a hook fastening member and the other fastening
member is a loop fastening member so that when the
fastening members are joined together, the interior
pocket is closed so that flat objects such as credit cards,
driver’s license and paper money can be retained within
the interior pocket; and
e. an exterior pleated pocket located on said front
surface between a first interior wall and the front end
wall, the pocket having a first transverse sidewall, a
parallel oppositely disposed second transverse sidewall, a
bottom wall and a front wall having a front surface and a
rear surface, the pocket formed by the first and second
transverse sidewalls, the bottom wall and the front wall
with an opening adjacent the lengthwise top edge, a flap
positioned adjacent the lengthwise top edge and having a
front surface and a rear surface member, a third pair of
mating fastening members comprising a first fastening
member located on the front surface and a spaced apart
second fastening member located on the front surface,
and a third fastening mating fastening member located on
the rear surface of the flap, wherein for the third pair of
mating fastening members, one of the pairs consisting of
the first fastening member and the second fastening
member is a loop fastening member and the third mating
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fastening member is a hook fastening member so that the
flap is closed by joining the first and third fastening
members when the exterior pocket is empty or thin
objects are retained within the exterior pocket and the
exterior pocket is closed by joining the second and third
fastening members when bulky objects which include
keys, a mobile digital device, MP3 players and coins are
retained within the exterior pocket so that the third pair
of mating fastening members enable the pleated pocket to
be closed regardless of what is contained within the
exterior pleated pocket.

ANALYSIS
Indefiniteness
The Examiner found that (1) “the phrase ‘such as’ (lines 28 and 44)
[in claim 1] renders the claim indefinite because it is unclear whether the
limitations following the phrase are part of the claimed invention” (Ans. 4);
and (2) “it is unclear if the listed items are the only flat objects that the
pocket is required to be capable of holding. In this way, the term ‘such as’
renders the claim indefinite” (Ans. 13).
Appellant contends that “the words ‘such as’ . . . do not make the
claim indefinite.” Br. 7. According to Appellant, “[t]his . . . simply
[represents] examples of what can be retained within” the wallet of the
subject invention. Id; see also id. at 18.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
Although we understand that the words following “such as” in claim 1
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are examples of what can be retained within the wallet of the subject
invention, nonetheless, the claim as written includes a broad limitation of
“flat objects” and narrower limitations of “credit cards, driver’s license and
paper money.” As such, we agree with the Examiner that it is unclear what
is being claimed, that is, the broad limitation or the narrow limitations.
Thus, the metes and bounds of the claim cannot be determined.
If a claim is amenable to two or more plausible claim constructions,
then the Examiner is justified in requiring Appellants to more precisely
define the metes and bounds of the invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite. See Ex
parte Miyazaki, 89 USPQ 2d 1207, 1211-12 (BPAI 2008) (precedential).
For these reasons, we sustain the Examiner’s rejection of claims 1 and
2 for indefiniteness.
Obviousness over Lollis, Kravchenko, Christiansen and Kelley
Appellant does not present arguments for dependent claim 2 separate
from those presented for independent claim 1. Br. 8-17. Accordingly,
Appellant has argued claims 1 and 2 as a group for purposes of the rejection
of those claims under § 103(a). Claim 1 is representative of the group and is
selected for review, with claim 2 standing or falling with claim 1. See 37
C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner found that Lollis discloses the limitations of claim 1
except “Lollis fails to disclose the material of the device, and elastic section
of the elongated strap, additional widthwise section pockets, multiple
fasteners on the front of the exterior pocket, or each of the pairs of mating
fasteners being opposing hook and loop fastening members as claimed.”
Ans. 5. The Examiner cited Kravchenko for disclosure of (1) “widthwise
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section pocket (Figs. 1-3) [that] have mating fasteners located on the
opposite interior surfaces (Fig. 1)”; and (2) “pleated exterior pockets (Figs.
7-9) that include a closure flap and multiple fasteners located on the front of
each pocket for selective attachment to the fastener on the flap.” Id. The
Examiner concluded that
it would have been obvious to a person having
ordinary skill in the art to combine the disclosed
wraparound wallets by adding the two widthwise
section pockets of Kravchenko (Figs. 1-3) to the
body of Lollis, next to the exterior pocket (Fig. 1).
One of ordinary skill in the art would have found it
obvious to have a wraparound wallet that includes
both of the pocket arrangements, as it would be
advantageous to have multiple pocket types to
choose from, as well as enable a user to carry more
items as desired. It would require only ordinary
skill to combine both pocket arrangements onto
one body portion, and one would have a
reasonable expectation of success when doing so.
It would have been further obvious to include
pleated sides walls and multiple fasteners to the
exterior pocket of Lollis, as taught by Kravchenko
(Figs 7-9) in order to make the pocket more
adaptable to carrying different items.
Ans. 6. The Examiner cited Christiansen for disclosure of a wraparound
wallet “being made of a flexible lightweight material such as nylon (Col. 2;
ll. 34-37), and including an elongated flexible strap (Fig. 1; 16) attached to
the front wall (Fig. 1; 14), having an elastic section (Col 2; ll. 37-39) and a
mating section (Fig. 1 ; 22).” Id. The Examiner concluded that it
would have been obvious to provide an elastic section, as taught by
Christiansen, to the elongated strap of the modified Lollis device, “in order
to allow the wallet to fit around different sized limbs and, as taught by
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Christiansen, to allow the user ‘to engage in very vigorous, physical activity,
and the wallet will remain safely in position.’” Id. (citing Christiansen, col.
4, ll. 16-18). The Examiner further found and concluded that
since neither Lollis nor Kravchenko disclose the
type of material the wallets are made of, it would
have been further obvious to make the modified
wallet out of nylon (a flexible, lightweight
material), as taught by Christiansen, in order to
allow the wallet to conform to the shape of the
body part it is wrapped around, thereby making it
easier to carry.
Ans. 6-7. The Examiner cited Kelley for disclosure of a wraparound device
including “multiple mating fastener pairs (12, 14, 18, 32, 34).” Id. at 7. The
Examiner found that Kelley “discloses that each pair of mating fasteners
may consist of hook and loop type fasteners or other suitable means such as
snaps (Col. 3; ll. 59-65), thereby teaching the two types of fasteners as
equivalent for this use in the art.” Id. The Examiner concluded that
it would have been further obvious to one of
ordinary skill in the art to make all pairs of mating
fasteners of the modified Lollis device to consist of
hook and loop fastening members, as these are
taught by Kelley to be interchangeable with snaps,
as both are suitable for the intended use within the
wraparound wallet. Furthermore, it would be
advantageous to use one type of mating fasteners
throughout the device.
Id.
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Appellant contends that Lollis and Kravchenko are directed to design
patents that do not describe the function of how the device works and the
Examiner is intuiting his interpretation of Lollis and Kravchenko. Br. 6, 11.2
Appellant’s argument is not persuasive for the following reasons.
First, the Examiner found that the wrist pouch of Lollis includes “mating
sections on the strap and body (Figs. 2-3) that are capable of joining to form
an enclosed area to enable the device to be worn around a body part (‘wrist
pouch’).” Ans. 5 (emphasis added). Second, the Examiner relied on
Kravchenko merely for the disclosure of widthwise pockets and pleated
pockets. See Ans. 5. Appellant does not contest this finding of the
Examiner. Br. 11, 16-17. To the contrary, Appellant acknowledges that
Kravchenko discloses pleated pockets. Br. 16-17. Third, in response to
Appellant’s argument, the Examiner found that
drawings in a design patent can anticipate or make
obvious the claimed invention, as can drawings in
utility patents. When the reference is a utility
patent, it does not matter that the feature shown is
unintended or unexplained in the specification.
The drawings must be evaluated for what they
reasonably disclose and suggest to one of ordinary
skill in the art. In re Aslanian, 590 F.2d 911, 200
USPQ 500 (CCPA 1979). MPEP § 2125.
Ans. 9. The Examiner’s findings are consistent with what a person of
ordinary skill in the art would glean from the drawing figures in the
references. Appellant has not presented evidence or arguments to apprise us
of error regarding the Examiner’s findings or conclusions.

2 We note that Appellant acknowledges that Lollis discloses a wallet. See
Br. 6.

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Appellant contends that that “there is no room for adding the two
types of pockets that Kravchenko has to the Lollis Patent. The Lollis Patent
has room for only the one pocket.” Br. 16.
In response to Appellant’s argument, the Examiner found that
there would appear to be ample room to include
additional pockets on the Lollis base, as nearly half
of the base is left without pockets. Further, . . . it
would require only ordinary skill to combine both
pocket arrangements onto one body portion, and
one would have a reasonable expectation of
success when doing so.
Ans. 11-12. Appellant has not presented evidence or arguments to apprise
us of error regarding the Examiner’s findings or conclusions.
Appellant contends that “the Kelley Patent discloses a pouch for
reusable hot and cold packs for medical use and has nothing whatsoever to
do with being a wallet.” Br. 12; see also id. at 7. In other words, Appellant
appears to contend that Kelley is non-analogous art.
Appellant’s argument is not persuasive. The USPTO and its
reviewing courts have developed and applied a two-step “test” to determine
whether a prior art reference is “analogous” art and therefore may be used as
evidence with respect to a question of obviousness under § 103. In re Wood,
599 F.2d 1032 (CCPA 1979). The second part of this two-step test is
directed to whether a reference is reasonably pertinent to the particular
problem the inventor was trying to solve, and, if so, then the reference is
analogous and therefore may be used as evidence of obviousness. Id.
“A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor’s endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
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an inventor’s attention in considering his problem.” In re Clay, 966 F.2d
656, 659 (Fed. Cir. 1992) (citations omitted). “In other words, ‘familiar
items may have obvious uses beyond their primary purposes.’” In re ICON
Health & Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (quoting
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007)).
Appellant’s invention is directed to “the field of wallets and related
items to be used to carry personal accessories.” Spec. 1, ll. 14-15. The
Specification describes that “[t]here is a significant need for an improved
device which enables a person to carry personal objects in a safe and
convenient way.” Spec. 2, ll. 4-5. The Specification further describes that
“[t]he present invention is a wraparound wallet . . . which is wrapped and
retained around a person’s arm, leg or ankle.” Spec. 3, ll. 4-5. The
Specification also describes that
[a] first mating fastening member 74 is attached to
surface 68 and a second mating fastening member
76 is attached to surface 70 with both mating
fasting members positioned adjacent the opening
66. The mating fastening members are hook and
loop fasteners commonly known as velcro. Flat
objects such as credit cards, driver’s license, paper
money, etc. can be retained within the cavity or
pocket 66.
Spec. 9, ll. 7-13, figs. 5-6.
Kelley discloses (1) “[i]t is . . . an object of this invention to provide a
holder for a thermo pack such that the thermo pack could be secured to a
plurality of treatment areas on the user’s body” (Kelley, col. 2, ll. 53-56); (2)
“[an] important use of the pouch [holder] is to protect the user’s skin from
injury due to the extremes of hot or cold temperature which the [thermo]
pack may exhibit” (Kelley, col. 1, ll. 48-51); (3) “[t]he thermo pack is slid
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into the holder and retained there by sealing with closing means [14]”
(Kelley, col. 2, ll. 2-4; see also id. at col. 3, ll. 59-65, figs. 1, 4; Ans. 7); and
(4) “[c]losing means 14 is sealed in order to hold the thermo pack 50 in
place” (Kelley, col. 4, ll. 50-52, fig. 4). Kelley discloses a safe and
convenient way to securely carry/retain a thermo pack (object) within a
pouch/holder that is to be retained around a part of the human body. Thus,
Kelley speaks to a problem addressed by Appellant, namely, the ability of a
person to carry an object in a safe and convenient way and, thus, would have
commended itself to an inventor’s attention in considering this problem.
Consequently, Kelley is analogous art to Appellant’s invention and provides
a reason with rational underpinning for the combination proposed by the
Examiner.
Appellant contends that “[t]he unique features of the present invention
enable the pockets as described in great detail in the claim to securely hold
objects therein so that they will not fall out and so that the pockets are tightly
against the body of the wallet as it is wrapped around a body part.” Br. 16.
Appellant’s argument is not persuasive because claim 1 does not
require (1) “the pockets to securely hold objects therein so that they will not
fall out” or (2) “that the pockets are tightly against the body of the wallet as
it is wrapped around a body part.” See Ans. 12.
Appellant contends that (1) “because of the thickness of the pouch [of
Lollis], if there are small objects, they can easily rattle around within the
pocket and the pocket is not capable of expanding to accommodate larger
objects” (Br. 11); (2) “the pockets [of] Kravchenko . . . in Figure 8 clearly
stick out from the wallet and do not and cannot lie flat against a body part”
(Br. 6); (3) “[f]igure 9 [of Kravchenko] clearly shows a major gap between
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the top and the cover so that objects can easily fall out of the pockets” (Br.
6); (4) Christiansen “is simply a bifold wallet which can be wrapped around
an ankle but there is nothing to show that it is closed in a manner to prevent
objects from falling out” (Br. 14); and (5) Kelley “is to retain a hot and cold
pack and has nothing whatsoever to do with a wallet retaining objects” (Br.
12).
Appellant’s arguments are not persuasive. Appellant’s arguments are
individual attacks on the references rather than a challenge to the Examiner’s
combination of the teachings of the references. In re Merck & Co., 800 F.2d
1091 (Fed. Cir. 1986); In re Keller, 642 F.2d 413 (CCPA 1981) (one cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references). In addition, Appellant’s
contention that if there are small objects, they can easily rattle around within
the pocket amounts to unsupported attorney argument, and thus is entitled to
little, if any, weight. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984) (Arguments and conclusions unsupported by factual evidence carry no
evidentiary weight.). Moreover, we agree with the Examiner that “any
discussion regarding items falling out of open space between the pocket and
flap is out of scope with regard to the claimed invention.” Ans. 9.
The Examiner relied on Lollis for disclosure of (1) “an elongated strap
attached to a front wall (Fig. 1); and mating sections on the strap and body
(Figs. 2-3) that are capable of joining to form an enclosed area to enable the
device to be worn around a body part (‘wrist pouch’); and (2) “an exterior
pocket located on the body (Fig. 1) having sidewalls (Figs. 6-7), a bottom
wall (Fig. 5), and a front wall (Fig. 1), and also having a flap positioned
adjacent the lengthwise top edge (Fig. 1) with hook and loop fastening
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members.” Ans. 5. The Examiner relied on Kravchenko merely for
disclosure of widthwise pockets and pleated pockets. Ans. 5. The Examiner
relied on Christiansen merely “to teach the use of an elastic section for a
wraparound wallet and a suitable wallet material.” Ans. 9-10. The
Examiner relied on Kelley merely “to teach the equivalency of mating snaps
and hook and loop fasteners.” Ans. 10.
The Examiner concluded that it would have been obvious to modify
Lollis to include the widthwise pockets of Kravchenko “to have multiple
pocket types to choose from, as well as enable a user to carry more items as
desired.” Ans. 6. The Examiner concluded it would have been obvious to
further modify the exterior pocket (pouch) of Lollis to include pleated side
walls and multiple fasteners, as taught by Kravchenko, “in order to make the
pocket more adaptable to carrying different items.” Id. The Examiner
concluded that it would have been obvious to provide the elastic strap of
Christiansen to the elongated strap of the modified Lollis device, “to allow
the user ‘to engage in very vigorous, physical activity, and the wallet will
remain safely in position.’” Ans. 6. The Examiner concluded that it would
have been obvious “to make the modified wallet [of Lollis] out of nylon (a
flexible, lightweight material), as taught by Christiansen, in order to allow
the wallet to conform to the shape of the body part it is wrapped around,
thereby making it easier to carry.” Ans. 7. The Examiner concluded that it
would have been obvious “to make all pairs of mating fasteners of the
modified Lollis device to consist of hook and loop fastening members, as
these are taught by Kelley to be interchangeable with snaps, as both are
suitable for the intended use within the wraparound wallet.” Br. 7. The
Examiner’s findings and conclusions of obviousness are based on rational
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underpinnings. We agree with the Examiner that “Appellant has not
specifically pointed to any errors in the combination or where the resulting
modified device would be lacking.” Ans. 11.
Appellant contends that the Examiner has failed to provide reasons
with rational underpinnings to support the conclusions of obviousness. Br.
16-17.
Appellant’s arguments are not persuasive. As discussed above, we
find the Examiner’s findings and stated reasoning to be based on rational
underpinnings.
Appellant contends that (1) “[t]he . . . unique features of having the
hook and loop fasteners within the interior of the two side-by-side pockets to
fully close the pocket . . . clearly distinguish the present application
over the cited Kravchenko reference”; (2) the wallet of Christiansen “is
totally different from the present invention and does not have the unique
feature of the present invention of the side by side pockets which are fully
closed by internal hook and loop fasteners and does not have the extensive
foldout pleated pocket which is closed by multiple features”; and (3) “the
exterior pleated pocket [of the subject invention] has multiple mating
fastener members on there so that the mating fasteners cause the pocket to be
fully closed regardless of the nature of the contents of the object. This is
clearly not possible [with Kravchenko and Christiansen].” Br. 12 (emphasis
added).
Appellant’s arguments are not persuasive because Appellant’s
arguments are individual attacks on the references rather than a challenge to
the Examiner’s combination of the teachings of the references. At the
outset, as correctly pointed out by the Examiner, “[t]he word ‘fully’ was
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deleted from the claims because it was not supported by the original
disclosure.” Ans. 9; see also Final Rej. 5, mailed Aug. 26, 2010; footnote 1
above. The Examiner found that Kelley discloses “multiple mating fastener
pairs (12,14,18,32,34), and further discloses that each pair of mating
fasteners may consist of hook and loop type fasteners or other suitable
means such as snaps (Col. 3; ll. 59-65), thereby teaching the two types of
fasteners as equivalent for this use in the art.” Ans. 7. We agree with the
Examiner that “[o]ne of ordinary skill would have recognized a similar
pocket for holding an item in a substantially similar manner as a valid
teaching of fasteners known in the art.” Ans. 13. In addition, the Examiner
proposed “to make all pairs of mating fasteners of the modified Lollis device
to consist of hook and loop fastening members as these are taught by Kelley
to be interchangeable with snaps, as both are suitable for the intended use
within the wraparound wallet” Id. (emphasis added).
Kelley discloses (1) “[t]he thermo pack is slid into the holder and
retained there by sealing with closing means [14]” (Kelley, col. 2, ll. 2-4; see
also id. at col. 3, ll. 59-65, figs. 1, 4; Ans. 7); and (2) “[c]losing means 14 is
sealed in order to hold the thermo pack 50 in place” (Kelley, col. 4, ll. 50-52,
fig. 4). Similar to the mating hook and loop fasteners 74, 76 of the subject
invention (see Spec. 9, ll. 7-13, figs. 5-6), the mating hook and loop
fasteners 14a and 14b of Kelley (see Kelley, col. 3, ll. 59-65, figs. 1, 4; Ans.
7) retain objects within a cavity or pocket. As such, the modified Lollis
device having the hook and loop fasteners of Kelley, as proposed by the
Examiner (see Ans. 7), would include pockets that are closed by internal
hook and loop fasteners.
From the bottom of page 12 to the top of page 16 of the Brief,
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Appellant merely reiterates the claim limitations and makes general
allegations that the cited prior art references do not disclose these
limitations. Merely reciting the language of the claims and asserting that the
cited prior art references do not disclose each claim limitation is
insufficient. See 37 C.F.R. § 41.37(c)(vii) (“A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim.”); see also In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (“we hold that the Board reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art.”); cf. In re Baxter Travenol Labs.,
952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to
examine the claims in greater detail than argued by an appellant, looking for
[patentable] distinctions over the prior art.”)). Consequently, Appellant’s
arguments are not persuasive.
Appellant contends that the subject invention has experienced
“commercial success.”3 Br. 9-11; Exhibit 1. Appellant contends that (1)
“[t]he unique features of the wallet as set forth in the very detailed Claim 1
allows the wallet to lie flat against the body” (Br. 9); and (2) “[t]he
SNAPENDWRAP PORTAL PACK which is a combat tested military
wraparound wallet shows that this clearly differentiates the present invention
from all of the cited references” (Br. 11).

3 Appellant presents additional evidence in the form of honors and awards
received by Appellant. Br. 10, Exhibits 2-4. This additional evidence is not
germane to the patentability of the subject invention.
Appeal 2012-004210
Application 11/243,115

18
Appellant’s arguments are not persuasive. First, claim 1 does not
require “the wallet to lie flat against the body.” Second, Appellant has not
apprised us of how the wallet of the subject invention is “clearly
differentiated” from the Examiner’s proposed combination of the cited prior
art references. Third, in response to Appellant’s arguments, the Examiner
found, and we agree, that
an applicant (Appellant in this instance) who is
asserting commercial success to support its
contention of nonobviousness bears the burden of
proof of establishing a nexus between the claimed
invention and the evidence of commercial success.
See MPEP 716.03. In this case, Appellant has
merely alleged the invention has experienced
commercial success and provided an
advertisement, various credentials, and the product
itself as support. Appellant has not explained how
the provided evidence indicates proof of
commercial success, as there are no sales figures
or the like to substantiate the claim. The argument
relies on the use of the device by current troops
and Appellant’s credentials. The Examiner does
not doubt that the device may be useful or that its
inventor is knowledgeable, but simply maintains
that Appellant has not established a nexus between
any novel features of the invention and the
evidence of commercial success, as required for
such an argument to be persuasive. Therefore, the
argument by Appellant does not establish
nonobviousness [over] the applied rejection.
Ans. 8. Appellant has not presented any evidence or arguments to apprise us
of error in the Examiner’s findings or conclusions.
Appellant further contends that “this patent has been allowed in China
. . . It is clear that the Chinese have seen the benefit of this invention and
why it is totally unique over the cited prior art references.” Br. 8-9; Exhibit.
Appeal 2012-004210
Application 11/243,115

19
Appellant’s argument is not persuasive. The fact that Appellant holds
a patent to the invention in another country is not germane to the
patentability of the subject invention in the United States. In addition,
different countries have different laws/rules regarding what is considered
patentable subject matter.
Appellant contends that “it would not be obvious to one of ordinary
skill in the art to take four separate totally unrelated patents and then
combine them to create the unique features that are contained in the present
invention.” Br. 8.
Appellant’s argument is not persuasive. Appellant has not apprised us
of how the four patents cited by the Examiner are “unrelated” or how the
Examiner’s proposed combination of the teachings of Lollis, Kravchenko,
Christiansen and Kelley is in error. See Ans. 7-8.
Accordingly, for the foregoing reasons, the Examiner’s rejection of
independent claim 1 and of claim 2, which falls with claim 1, as
unpatentable over Lollis, Kravchenko, Christiansen and Kelley is sustained.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1 and 2 for
indefiniteness.
We AFFIRM the decision of the Examiner to reject claims 1 and 2 as
unpatentable over Lollis, Kravchenko, Christiansen and Kelley.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
mls