Ex Parte DanielsDownload PDFPatent Trial and Appeal BoardMay 30, 201411243115 (P.T.A.B. May. 30, 2014) 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. 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 Appeal 2012-004210 Application 11/243,115 2 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 Appeal 2012-004210 Application 11/243,115 3 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. Appeal 2012-004210 Application 11/243,115 4 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 Appeal 2012-004210 Application 11/243,115 5 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 Appeal 2012-004210 Application 11/243,115 6 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 Appeal 2012-004210 Application 11/243,115 7 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 Appeal 2012-004210 Application 11/243,115 8 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. Appeal 2012-004210 Application 11/243,115 9 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. Appeal 2012-004210 Application 11/243,115 10 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 Appeal 2012-004210 Application 11/243,115 11 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 Appeal 2012-004210 Application 11/243,115 12 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 Appeal 2012-004210 Application 11/243,115 13 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 Appeal 2012-004210 Application 11/243,115 14 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 Appeal 2012-004210 Application 11/243,115 15 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 Appeal 2012-004210 Application 11/243,115 16 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, Appeal 2012-004210 Application 11/243,115 17 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 Copy with citationCopy as parenthetical citation