Ex Parte Grogro

Patent Trials and Appeals Board

Apr 11, 2019

13722335 - (D) (P.T.A.B. Apr. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/722,335 12/20/2012 78342 7590 04/15/2019 SHOOK, HARDY & BACON L.L.P. (NIKE, INC.) INTELLECTUAL PROPERTY DEPARTMENT 2555 GRAND BLVD. KANSAS CITY, MO 64108-2613 FIRST NAMED INVENTOR Daniela Grogro 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. 11-1760/NIKE.213133 4918 EXAMINER SPATZ,ABBYM ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 04/15/2019 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): IPDOCKET@SHB.COM IPRCDKT@SHB.COM nike _ docketing@cardinal-ip. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIELA GROGRO Appeal2018-005416 Application 13/722,335 Technology Center 3700 Before: MICHAEL L. HOELTER, WILLIAM A. CAPP, and JEREMY M. PLENZLER, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final rejection of claims 1, 2, 4--7, 10, 12-15, 17-24, 32, and 33. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Nike, Inc. is the Applicant and real-party-in-interest. Appeal Br. 4. Appeal2018-005416 Application 13/722,335 THE INVENTION Appellant's invention is a padded sports garment. Spec. ,r,r 1-2. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. An article of apparel comprising: a continuous garment layer having an inner surface and an opposite outer surface; a pad component positioned adjacent to the opposite outer surface of the garment layer, the pad component being (a) secured to the garment layer at a first pair of linear stitch regions that are spaced apart from one another and (b) unsecured to the garment layer between the first pair of linear stitch regions, such that the pad component includes an unsecured portion that is not coupled to the garment layer and that extends from one edge of the pad component to an opposing edge of the pad component wherein the first pair of linear stitch regions comprise a stitch that passes both through a portion the pad component and through the garment layer. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Mitchell Hull Holden Hom Dumont Turner us 2,568,083 us 4,561,123 us 5,732,412 US 2006/0253960 Al US 7,380,283 Bl US 2011/0061154 Al Sept. 18, 1951 Dec. 31, 1985 Mar. 31, 1998 Nov. 16, 2006 June 3, 2008 Mar. 17, 2011 The following rejections are before us for review: 1. Claim 10 is rejected under 35 U.S.C. § 112, first paragraph, for failure to comply with the written description requirement. 2 Appeal2018-005416 Application 13/722,335 2. Claims 6, 7, 10, 12-14, 17, 18, 19, 23, and 24 are rejected under 35 U.S.C. § 112, second paragraph, for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. 3. Claims 1, 2, 4, 6, and 7 are rejected under 35 U.S.C. § 102(b) as anticipated by Dumont. 4. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Dumont and Turner. 5. Claims 10, 12-14, 32, and 33 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Mitchell, Dumont, and Hom. 6. Claims 15 and 17-19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hull and Dumont. 7. Claims 20-24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Turner and Holden. OPINION Written Description The written description requirement of 35 U.S.C. § 112 requires that the disclosure of the application relied upon reasonably convey that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) ( en bane). The written description requirement is met when the disclosure "allow[ s] one skilled in the art to visualize or recognize the identity of the subject matter purportedly described." Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 968 (Fed. Cir. 2002). The claimed invention does not have to be described in ipsis verbis in the specification to satisfy the written 3 Appeal2018-005416 Application 13/722,335 description requirement. See Union Oil Co. of Cal. v. Atl. Richfield Co., 208 F.3d 989, 1000 (Fed. Cir. 2000). The Examiner takes the position that there is no written description in the Specification for the pad component and garment layer being "irremovably" coupled. Final Action 3. In traverse, Appellant points out that the Specification recites various means of securing the pad component to the garment layer, including stitching, adhesive, and thermal bonding. Appeal Br. 15. Appellant explains that the term "irremovably coupled" was added by amendment to distinguish over prior art that teach removably coupling by hook and loop fasteners, zippers, etc. Id. In response, the Examiner maintains that the pad component is not irremovable because it can be tom apart. Ans. 2. In reply, Appellant points out that the Examiner fails to distinguish between known and well understood means of attachment and detachment such as hook and loop fasteners and more permanent forms of attachment, such as stitching. Reply Br. 5-7. The dispute between Appellant and the Examiner turns on what it means for a garment component to be "irremovable." During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. A cad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, even under the broadest reasonable 4 Appeal2018-005416 Application 13/722,335 interpretation, the Board's construction "cannot be divorced from the specification and the record evidence," In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011). A construction that is "unreasonably broad" and which does not "reasonably reflect the plain language and disclosure" will not pass muster. Microsoft Corp. v. Proxyconn, Inc. v 789 F.3d 1292, 1298 (Fed. Cir. 2015). Appellant's invention, and the words used to describe and claim it, need to be construed in the context of garments and how they are constructed from textiles and other materials. A shirt may be assembled in such a way that the arm portions or sleeves are attached to a torso portion by stitching. It is also well known to make a garment ( e.g., jacket) for the upper body where the arm portions or sleeves are attached to the torso portion with zippers such that the jacket can optionally be worn as a sleeveless vest. A person of ordinary skill in the art would have no difficulty in understanding that zippers render the sleeves "removable" and that stitching fastens the sleeves in a more-or-less permanent manner, i.e., "irremovable." The prospect that a portion of a garment may be destructively separated from the remainder of the garment by tearing or cutting, etc. does not, in the ordinary and customary meaning of the word as used in garment manufacture in general and in light of the Specification in particular, make it "removable." The Examiner's written description rejection is predicated on an overly broad and, therefore erroneous, construction of "irremovable." There is adequate written description support for claim 10 once the term "irremovably couples" is given its ordinary and customary meaning as used in the garment industry. For this reason, we do not sustain the Examiner's Section 112, first paragraph, rejection of claim 10. 5 Appeal2018-005416 Application 13/722,335 Indefiniteness Claims 6, 12, 17, and 23- "substantially straight" The Examiner rejects these claims because they each contain the term "substantially straight." Final Action 3--4. The Examiner states that it is unclear how straight a line needs to be in order to be considered "substantially" straight. Id. Words of approximation, such as "generally" and "substantially," are descriptive terms commonly used in patent claims to avoid a strict numerical boundary to the specified parameter. See Anchor Wall Sys. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1311 (Fed. Cir. 2003). Indeed, in the context of sewing garment portions together using stitching, it may be more difficult to prove that a straight line is perfectly straight. The Examiner's position departs from an extensively developed body of case law regarding the use of terms of approximation in patent claims that is frequently used and relied on by patent applicants. The section 112, second paragraph, rejection of claims 6, 12, 17, and 23 is not sustained. Claims 7, 13, 18, and 2 4 - "substantially parallel" The Examiner rejects these claims because they each contain the term "substantially parallel." Final Action 4--5. The Examiner states that it is unclear how parallel a line needs to be in order to be considered "substantially" parallel. Id. For essentially the same reasons discussed above with respect to "substantially straight," we do not sustain the Examiner's section 112, second paragraph, rejection of claims 7, 13, 18, and 24. See Anchor Wall Sys., 340 F.3d at 1311 (holding that the phrase "generally parallel" envisions some amount of deviation from exactly parallel). 6 Appeal2018-005416 Application 13/722,335 Claim 19 - "substantially unstretched" The Examiner rejects this claim because it contains the term "substantially unstretched." Final Action 4--5. The Examiner states that it is unclear how unstretched a garment component needs to be in order to be considered "substantially" unstretched. Id. For essentially the same reasons discussed above with respect to claims 6, 7, 12, 13, 17, 18, 23, and 24, we do not sustain the Examiner's section 112, second paragraph, rejection of claim 19. Claim 10 - "irremovable" The Examiner rejects this claim because it contains the term "irremovably coupled." Final Action 4. The Examiner states that the specification does not provide an explanation as to how the pad attachment irremovably couples the pad component to the garment layer. Id. As previously discussed in connection with the Examiner's section 112, first paragraph, rejection of claim 10, the Examiner is operating under an unreasonably broad and erroneous construction of "irremovable." When properly construed and used in accordance with its correct construction, the term is not indefinite. Consequently, we do not sustain the Examiner's section 112, second paragraph, rejection of claim 10. Anticipation of Claims 1, 2, 4, 6, and 7 by Dumont The Examiner finds that Dumont discloses each and every limitation of claim 1. Final Action 5---6. In particular, the Examiner finds that its pad component is secured to the garment layer by linear stitch regions. Id. Appellant argues that Dumont fails to disclose securing via linear stitching as claimed. Appeal Br. 20-23. Instead, according to Appellant, 7 Appeal2018-005416 Application 13/722,335 Dumont attaches its knee pads to a pair of pants using releasable engagement hook fastener strips. Id. at 20. In response, the Examiner takes the position that the stitching claim limitation is satisfied by the fact that Dumont's hook and loop fastening elements are attached to the garment by stitching. Ans. 4. The Examiner's position lacks merit. Dumont's knee pads are removable. They are readily attached to and detached from Dumont's pant garment using hook and loop and fasteners. Dumont, Figs. 1, 2, col. 6, 11. 38-60. The fact that hook and loop fasteners are secured to the garment by stitching does not, by logical extension, mean that the stitching passes through portions of: (1) the pad; and (2) the garment. Claims App. In Dumont, when the pads are detached from the garment, the only structure that Dumont's linear stitching is secured to is the hook and loop fastener strip, not the pad. Consequently, we do not sustain the Examiner's Section 102 rejection of claim 1 or of claims 2, 4, 6, and 7 that depend therefrom. Unpatentability of Claim 5 over Dumont and Turner Claim 5 depends from claim 1. Claims App. The Examiner's rejection of claim 5 relies on the same erroneous findings and reasoning as in, the rejection of claim 1 previously discussed. Final Action 7. Such error is not cured by the Examiner's reliance on Turner, neither is it cured by evidence or technical reasoning as to why it would have been obvious to modify Dumont to attach the knee pads with stitching. Id. Consequently, we do not sustain the Examiner's Section 103 rejection of claim 5. 8 Appeal2018-005416 Application 13/722,335 Unpatentability of Claims 10, 12-14, 32, and 33 over Mitchell, Dumont, and Horn Claim 10 is an independent claim that recites a limitation directed to a pad attachment being "irremovably" coupled to a garment layer. Claims App. The Examiner finds, among other things, that Mitchell has a pad attachment that irremovably couples the pad component to a garment layer. Final Action 7-8. The Examiner's findings are erroneous. Mitchell is entitled "Removable Knee Patches for Pants." Mitchell's knee pads are removably attached to the pants using "slide fasteners." Mitchell, col. 3, 1. 1 - col. 4, 1. 15. The Examiner's position is not supported by a preponderance of the evidence and, accordingly, we do not sustain the Examiner's section 103 rejection of claim 10. In addition, we do not sustain the rejection of claims 12-14, 32, and 33 that depend therefrom. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (explaining that dependent claims are nonobvious if the independent claims from which they depend are nonobvious ). Unpatentability of Claims 15 and 17-19 over Hull and Dumont Appellant argues claims 15 and 17-19 as a group. Appeal Br. 27-29. We select claim 15 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv). Claim 15 is an independent claim with a claim recitation to an attachment mechanism that includes a stich, adhesive, or combination thereof that attaches the pad component to a garment layer. Claims App. The Examiner finds, among other things, that Hull discloses a pad component with an attachment mechanism that attaches the pad component to a garment layer. Final Action 12-13. 9 Appeal2018-005416 Application 13/722,335 Appellant argues that, as with Dumont, Hull discloses a removable knee pad that is attached to a garment by hook and loop fasteners. Appeal Br. 2 7. Appellant's argument that Hull is similar to Dumont is not persuasive. The Examiner applies Dumont to claim 1 and applies Hull to claim 15. Final Action 5, 12. Claim 1 has a limitation directed to stitching that passes through both the garment and the pad. Claims App. There is no corresponding limitation in claim 15. Id. Hull is directed to a knee pad device. Hull, Abstract. The pad is attached to a pair of pants with VELCRO fasteners. The pad can be attached directly to a leg of a pair of pants with suitable fasteners, such as VELCROTM· ... Thus, the pad member of the present invention can either be used with the strap members or can be attached directly to the legs of a pair of pants. Hull, col. 2, 11. 12-24. Dumont teaches that VELCRO fasteners used in a padded garment are sewn to each of the pad and garment. Dumont, col. 6, 11. 38---60. When such teaching is combined with Hull, as in the Examiner's proposed combination, stitching attaches one VELCRO fastener to the pad and the corresponding matching VELCRO fastener to the pants. The VELCRO fasteners then, in tum, provide a removable attachment of the knee pads to the pants. The resulting structure is stitching that attaches the pants to a VELCRO strip and then the VELCRO strip is attached to the pad by stitching. In this regard, the attachment of the pants to the pad is an indirect attachment, via the VELCRO as an intermediate structure. We agree with the Examiner's reasoning that when a first structure is attached to a second, intermediate structure which, in tum, is attached to a third structure, it is appropriate to consider that the first structure is 10 Appeal2018-005416 Application 13/722,335 "attached" to the third structure, albeit through the intermediate second structure. Ans. 6-7, See e.g., Clariant Corp. v. CSP Tech, Inc., IPR2014- 00375, 2015 WL 3637958, *6 (PTAB June 10, 2015) (citing Ullstrand v. Coons, 147 F.2d 698, 700 (CCPA 1945) (explaining that the accepted definition of the term "connected" is restricted to neither a direct nor an indirect connection, and it is therefore applicable to an indirect connection); see also Southco, Inc. v. Fivetech Tech. Inc., Civ. No. 2014-1390, 2015 WL 1609846, at *2 (E.D. Pa. Apr. 10, 2015) (explaining that the ordinary meaning of attached includes both direct and indirect attachment). Our decision is supported by, among other things, the prosecution history and Appellants' Appeal Brief arguments. Claim 10, discussed hereinabove, contains the term "irremovably couples." Claims App. In contrast, claim 15 recites "an attachment mechanism ... that attaches." Id. Appellant explains that, during prosecution, claim 10 was amended to recite the pad component being "irremovably coupled" to the garment layer. Appeal Br. 15. Appellant admits that such amendment was made in order to differentiate claim 10 from prior art references that teach a pad that is removably coupled to a garment by way of hook and loop fasteners, zippers, or "other removable attachment" means. Id. Furthermore, Appellant does not direct us to any word or phrase that is analogous to "irremovably," whether or not added by amendment, that Appellant included in or added to claim 15 to accomplish a similar purpose. 2 Thus, claim 15 does not require that the attachment means is "irremovable." After allowing for attachment that may be indirect and removable, we determine the Examiner's findings of fact are supported by a preponderance 2 Neither do we see any such word or phrase in claim 15. 11 Appeal2018-005416 Application 13/722,335 of the evidence and that the Examiner's legal conclusion ofunpatentability is well-founded. Accordingly, we sustain the Examiner's unpatentability rejection of claims 15 and 17-19. Unpatentability of Claims 20-24 over Turner and Holden Appellant argues claims 20-24 as a group. Appeal Br. 29-31. We select claim 20 as representative. 37 C.F.R. § 4I.37(c)(l)(iv). Appellant argues that Holden fails to disclose stitching or adhesive and likens the traverse of claim 20 to the rejections of claim 1 and claim 15. We find Appellant's arguments unpersuasive for essentially the same reasons explained in more detail in connection with the claim 15 rejection. Clariant, 2015 WL at *6, Ullstrand, 147 F.2d at 700, Southco, 2015 WL at *2. Moreover, Appellant acknowledges that Holden teaches attachment via adhesive, having quoted a passage from Holden containing the word adhesive. Appeal Br. 30. The issues involved in the claim 20 rejection focus on: (1) indirect versus direct attachment; and (2) removable versus permanent attachment. Appeal Br. 29-31. The fact that Holden's VELCRO and adhesive attachment system is an indirect attachment and Holden's VELCRO attachment is removable is not indicative of Examiner error. Accordingly, we sustain the unpatentability rejection of claims 20-24. DECISION The decision of the Examiner to reject claim 10 for failure to comply with the written description requirement is REVERSED. The decision of the Examiner to reject claims 6, 7, 10, 12-14, 17, 18, 19, 23, and 24 indefinite is REVERSED. 12 Appeal2018-005416 Application 13/722,335 The decision of the Examiner to reject claims 1, 2, 4, 6, and 7 as anticipated by Dumont is REVERSED. The decision of the Examiner to reject claim 5 as unpatentable over Dumont and Turner is REVERSED. The decision of the Examiner to reject claims 10, 12-14, 32, and 33 as unpatentable over Mitchell, Dumont, and Hom is REVERSED. The decision of the Examiner to reject claims 15 and 17-19 as unpatentable over Hill and Dumont is AFFIRMED. The decision of the Examiner to reject claims 20-24 as unpatentable over Turner and Holden is AFFIRMED. AFFIRM-IN-PART 13