Ex Parte Fair et al

Patent Trial and Appeal BoardAug 23, 2017

14178635 (P.T.A.B. Aug. 23, 2017)

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. 14/178,635 02/12/2014 Paul Fair 81247-899875 2163 20350 7590 08/25/2017 KTT PATRTrK TOWNSFND fr STOrKTON T T P EXAMINER Mailstop: IP Docketing - 22 1100 Peachtree Street CEGIELNIK, URSZULA M Suite 2800 ART UNIT PAPER NUMBER Atlanta, UA 5U5UV 3711 NOTIFICATION DATE DELIVERY MODE 08/25/2017 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): ipefiling@kilpatricktownsend.com KT S Docketing2 @ kilpatrick. foundationip .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAUL FAIR, KRISTIN A. TIDWELL, CATHERINE P. MCNEIL, and CLARICE BONZER Appeal 2015-007514 Application 14/178,635 Technology Center 3700 Before: CHARLES N. GREENHUT, JILL D. HILL, and GORDON D. KINDER, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1— 22. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2015-007514 Application 14/178,635 CLAIMED SUBJECT MATTER The claims are directed to a shopping cart liner with toy attachment system. Claim 1, reproduced below, is illustrative of the claimed subject 1. A shopping cart liner for a shopping cart seat having a handle, a back support and two sides that extend between the handle and the back support, the shopping cart liner comprising: a body configured to nest in the shopping cart seat, the body having a front with a front edge, a back with a back edge, and two sides which each have a side edge, the body defining one or more openings positioned at the front to enable the feet of a child seated in the shopping cart seat to protrude through the body beneath the handle, wherein, when nested in the shopping cart seat, the front edge is draped over the handle, the back edge is draped over the back support, and the two side edges are draped over the sides of the shopping cart seat; a track comprising a flexible rod-like member, wherein the track is coupled to a portion of the shopping cart liner between the front edge and the one or more openings so that the child faces the track when the shopping cart liner is in use in the shopping cart seat, wherein the track projects away from the liner, and wherein the track is coupled to the liner such that the track is aligned with an elongate axis of the handle when the body is nested in the shopping cart seat; and at least one clip slidingly engaged with the track, wherein the clip is slidable along the track so as to be moveable along the handle in the direction of the elongate axis. The prior art relied upon by the Examiner in rejecting the claims on matter: REFERENCES appeal is: Jones Wright Gibson Ingram US 4,654,991 US 4,723,323 US 5,238,293 US 5,419,432 Apr. 7, 1987 Feb. 9, 1988 Aug. 24, 1993 May 30, 1995 2 Appeal 2015-007514 Application 14/178,635 Endicott McClintock Fair Kanahele US 6,702,3 81 B2 Mar. 9, 2004 US 8,042,869 B2 Oct. 25,2011 US 8,696,400 B2 Apr. 15, 2014 US 2006/0183397 A1 Aug. 17, 2006 REJECTIONS1 Claims 1, 2, 4, and 7—9 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Gibson and Ingram. Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Gibson, Ingram, and Jones. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Gibson, Ingram, and Wright. Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Gibson, Ingram, and McClintock. Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Gibson, Ingram, Jones, and Kanahele. In combining Gibson with Ingram, the Examiner concluded it would have been obvious to modify the toy attachment straps 68, 70, 72 of Gibson (Fig. 5) to include a rod-like member, like that of the hem clasp mechanisms in Ingram’s garment bag, and reorient the rod-like member so as to “align with the elongate axis of the [shopping cart] handle.” The Examiner indicated that the proposed combination would have been obvious because “such a modification would provide an alternate attachment [mjechanism.” Final Act. 10. 1 The double-patenting rejections appear to have been overcome by the accepted terminal disclaimer of Dec. 10, 2014. OPINION 3 Appeal 2015-007514 Application 14/178,635 Appellants argue that, because Ingram’s clips are for a completely different purpose in a nonanalogous art, the Examiner has failed to articulate sufficient reasoning in support of the proposed combination. App. Br. 7—8. In response, the Examiner focuses on the fact that “[t]he track and clips of Ingram are structurally fully capable of attaching a toy and the toy being moveable in response via clips.” Ans. 20. Although, if true, this might demonstrate that the proposed combination yields the subject matter claimed, orientation aside, the Examiner’s assertion does not serve to elucidate the articulated reasons for the proposed combination2 or establish that one skilled in the art would have reasonably looked to garment bags3 or 2 The obviousness analysis is more than simply showing that each limitation is found in the prior art. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (“a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art”). One must also consider “whether there was an apparent reason to combine the known elements in the fashion claimed.” Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); accord Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F. 3d 1296, 1303 (Fed. Cir. 2010) (citing KSR, 550 U.S. at 401)(“[I]t is not enough to simply show that the references disclose the claim limitations; in addition, ‘it can be important to identify a reason that would have prompted a person of ordinary skill in the art to combine the elements as the new invention does.’”). 3 The determination of the scope and content of the prior art includes determining whether prior art references are “analogous.” Whether a reference in the prior art is “analogous” is a fact question. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. Id. (citing In re Deminski, 796 F.2d436, 442 (Fed. Cir. 1986)). 4 Appeal 2015-007514 Application 14/178,635 considered Ingram’s hem clasps an obvious alternative to Gibson’s toy holding straps. See MPEP § 2141, 2143(I)(B). Accordingly, on the record presently before us, Appellants persuasively argue that the Examiner has failed to demonstrate sufficient reasons why, without the benefit of hindsight,4 it would have been obvious to incorporate the hem clasp mechanisms of Ingram’s garment bag into Gibson’s shopping cart seat cover in the manner claimed. No other reference is relied upon by the Examiner to cure this deficiency. DECISION The Examiner’s rejections are reversed. REVERSED 4 It is improper to base a conclusion of obviousness upon facts gleaned only through hindsight. To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability. Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing W.L. Gore & Assoc, v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983)). 5