Ex Parte Johnson

Patent Trial and Appeal Board

May 25, 2017

13155391 (P.T.A.B. May. 25, 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.
13/155,391 06/08/2011 Tarrus Johnson TJOHNSON.OOIUS 2921
86671 7590
NWAMU, P.C.
Patent & Trademark Law
360 Grand Ave, Mailbox 109
Oakland, CA 94610
05/30/2017 EXAMINER
BALDORI, JOSEPH B
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
05/30/2017 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):
eofficeaction @ appcoll.com
fidel@nwamu.com
sblair @ nwamu .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TARRUS JOHNSON
Appeal 2015-007857
Application 13/155,391
Technology Center 3700
Before JAMES P. CALVE, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35U.S.C. § 134 from the final rejection of
claims 4, 5, 10, 11, 13—15, 20, and 21. Br. 3.1 Claims 1—3, 6—9, 12, and 16
are cancelled. Id. Claims 17—19 are withdrawn. Id. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant also appeals the Examiner’s decision to withdraw new claim 19.
Id. at 3, 14. The Examiner determined that newly-submitted claim 19 was
directed to a non-elected method that is distinct from the apparatus claims
that Appellant originally elected to prosecute. See Final Act. 3. This issue is
reviewable by petition to the Director under 37 C.F.R. § 1.181. 37 C.F.R.
§ 1.144. Such petitionable matters are not subject to review by the Board.
See In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002); Ex Parte Frye, 94
USPQ 2d 1072 (BPAI 2010) (precedential).
Appeal 2015-007857
Application 13/155,391
CLAIMED SUBJECT MATTER
Claims 4, 13, and 20 are independent. Claim 4 is reproduced below.
4. A system for learning to tie a shoelace having a
right end and a left end, the system comprising:
a first set of a plurality of slide-able hollow tubes
positioned on the right end shoelace, said first set of a plurality
of slide-able hollow tubes including:
a first slide-able hollow tube positioned on the right end
shoelace proximate to a right eyelet on a shoe;
a second slide-able hollow tube positioned on the right
end shoelace proximate to a right aglet of the shoelace, the first
and the second slide-able hollow tubes being positioned on said
right end shoelace;
wherein each of said first and second slide-able hollow
tubes is structured to include an interior groove extending
between a first open end and a second open end;
a first set of matching identifiers integrated with the
slide-able hollow tubes, the first set of matching identifiers
including a first identifier integrated with the first slideable
hollow tube and a second identifier integrated with the second
slide-able hollow tube;
wherein the first identifier integrated with the first slide-
able hollow tube and said second identifier integrated with the
second slide-able hollow tube are matching;
wherein the first slide-able hollow tube is slide-able over
said right end shoelace via said interior groove extending
between the first open end and the second open end, said
interior groove being structured to slide the first slide-able
hollow tube when a force is applied and to retain the first slide-
able hollow tube in a fixed position when the force is removed;
said first slide-able hollow tube being positioned
proximate to said right eyelet, forming a base for a first loop;
wherein the second slide-able hollow tube is slide-able
over said right end shoelace via said interior groove extending
between the first open end and the second open end of said
second slide-able hollow tube; said interior groove of said
second slide-able hollow tube being structured to slide the
second slide-able hollow tube when a force is applied and to
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Appeal 2015-007857
Application 13/155,391
retain the second slide-able hollow tube in a fixed position
when the force is removed;
wherein said second slide-able hollow tube is positioned
proximate to said right aglet, forming another base for the first
loop;
wherein the first loop is configured to be formed when
the first slide-able hollow tube positioned proximate to the right
eyelet and its matching second slide-able hollow tube
positioned proximate to the right aglet are brought together; a
second set of a plurality of slide-able hollow tubes each
positioned on the left end shoelace, said second set of a
plurality of slide-able hollow tubes including:
a third slide-able hollow tube positioned on the left end
shoelace proximate to a left eyelet on the shoe;
a fourth slide-able hollow tube positioned on said left end
shoelace proximate to a left aglet;
wherein each of said third and fourth slide-able hollow
tubes is structured to include an interior groove extending
between a first open end and a second open end;
a second set of matching identifiers integrated with the
slide-able hollow tubes, the second set of matching identifiers
including a third identifier integrated with the third slide-able
hollow tube and a fourth identifier integrated with the fourth
slide-able hollow tube;
wherein the third identifier integrated with the third slide-
able hollow tube and said fourth identifier integrated with the
fourth slide-able hollow tube are matching but different from
the first set of identifiers, distinguishing the first loop formed
by the first set of slide-able hollow tubes and a second loop
formed by the second set of slide-able hollow tubes;
wherein the third slide-able hollow tube is slide-able over
said left end shoelace via said interior groove extending
between the first open end and the second open end, said
interior groove being structured to slide the third slide-able
hollow tube when a force is applied and to retain the third slide-
able hollow tube in a fixed position when the force is removed;
said third slide-able hollow tube being positioned
proximate to said left eyelet, forming a base for the second
loop;
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Appeal 2015-007857
Application 13/155,391
wherein the fourth slide-able hollow tube is slide-able
over said left end shoelace via said interior groove extending
between the first open end and the second open end, said
interior groove being structured to slide the fourth slide-able
hollow tube when a force is applied and to retain the fourth
slide-able hollow tube in a fixed position when the force is
removed;
said fourth slide-able hollow tube being positioned
proximate to said left aglet, forming another base for the second
loop;
wherein the second loop is configured to be formed when
the third slide-able hollow tube positioned proximate to the left
eyelet and its matching fourth slide-able hollow tube positioned
proximate to the left aglet are brought together;
wherein the first loop identified by the presence of the
first set of slide-able hollow tubes and identifiers is recognized
to be different from the second loop identified by the presence
of the second set of slide-able hollow tubes and corresponding
identifiers so that the first loop and the second loop are knotted
together in order to tie the shoelace.
REJECTION
Claims 4, 5, 10, 11, 13—15, 20, and 21 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Alexander (US 4,842,522, iss. June 27, 1989)
and Curet (US 7,251,868 B2, iss. Aug. 7, 2007).
ANALYSIS
The Examiner found that Alexander teaches the system, as recited in
independent claim 4, with two sets of hollow tubes and matching identifiers,
and Curet teaches the use of slidable hollow tubes. Final Act. 3—5. The
Examiner determined it would have been obvious to provide Alexander with
slidable tubes to make the device adjustable, versatile, and more attractive as
taught by Curet. Id. at 5. The Examiner determined that different identifier
colors would have been an obvious design choice. Id. at 5—6.
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Application 13/155,391
Appellant argues claims 4, 5, 10, 11, 13—15, 20, and 21 as a group.
Br. 7—13. We select claim 4, so claims 5, 10, 11, 13—15, 20, and 21 stand or
fall with claim 4. 37 C.F.R. § 41.37(c)(l)(iv).
Appellant argues that Alexander does not teach first and second sets
of hollow tubes as items 21, 60, and 22, 34, as the Examiner found. Br. 8.
This argument is not persuasive because Alexander teaches that Velcro loop
pads 35 and hook pads 37 of a dark color may be sewn or adhered to a
shoelace to form cooperating markings. Alexander, 2:65—3:3; Final Act. 3;
Ans. 12. Alexander illustrates these pads as tubes in Figure 7. Appellant’s
conclusory argument does not persuade us of error in the Examiner’s finding
that Alexander does teach hollow tubes, albeit non-slidable tubes.
Appellant argues that slidable, hollow tubes with matching identifiers
solve the problem of different length shoelaces in shoes with one end longer
than the other where permanent markings on the laces do not align properly.
Br. 8—9. Appellant argues that slidable hollow tubes can be moved to any
location that forms suitable loops. Id. at 9-10. Appellant further argues that
Alexander does not teach slidable hollow tubes or recognize this problem
with conventional permanent markings so a skilled artisan would not have
been motivated to modify Alexander with Curet’s teachings. Id. at 10.
This argument is not persuasive because Appellant does not disclose
this problem in the Specification. Appellant discloses only a need to help
children tie shoelaces after the “crisscross applesauce step.” Spec. 3—8.
Appellant discloses that “[i]n one embodiment, the identifiers are slidable
such that identifier positions can be adjusted until a suitable position is
reached.” Spec. 148. Appellant also discloses that “the identifiers may be
fixed and not slidable” and may be colored onto shoelaces. Id. 151.
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Application 13/155,391
The Examiner’s reason for modifying Alexander to make the tubes
slidable, as taught by Curet, is supported by a rational underpinning. Curet
teaches that adjustable tubes (aglets) permit easy adjustment of the length of
shoelaces. Curet, 1:60—62. The Examiner determined that a skilled artisan
would have been motivated by this teaching to make the Alexander’s tubes
slidable and thus adjustable so the device is more versatile and attractive to
users, as Curet teaches. Final Act. 5 (citing Curet, 1:60-65). Curet teaches
that adjustable aglets are desirable because shoes come in so many different
sizes and styles, and users lace their shoes so many different ways, that no
single shoelace length can satisfy all preferences. Curet, 1:11—49. Curet
teaches that users must replace shoelaces with prior art fixed aglets if the
shoelace length is not to their preference. Id. at 1:50—55. Curet allows users
to adjust shoelace length to their preference without replacing the shoelaces.
Curet thus addresses the problem Appellant identifies in the Appeal
Brief of how to handle different shoelace lengths. Adjustable aglets allow
users to adjust shoelace lengths to suit personal preferences. Id. at 1:55—65;
see Br. 8—10. Curet teaches slidable aglets as an improvement over prior art
fixed aglets. Curet, 1:55—65. Moreover, the Examiner’s reason to modify
Alexander’s fixed tubes to be slidable may differ from Appellant’s reason
for using slidable identifiers or the problem to be solved. See KSR Int 7 Co.
v. Teleflex Inc., 550 U.S. 398, 418—19, 420 (2007) (it is error to look “only
to the problem the patentee was trying to solve”); In re Kahn, 441 F.3d 977,
990 (Fed. Cir. 2006) (a skilled artisan need not be motivated to combine the
prior art for the same reason as an inventor). In use with Alexander’s
system, Curet’s slidable aglets can be set to positions that facilitate users
tying their shoelaces, even if the shoelaces are different lengths.
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Secondary Evidence
Appellant presents evidence of non-obviousness through a declaration
of the inventor, Mr. Johnson. Declaration under Rule 1.132 — Commercial
Success and Nonobviousness, filed April 1, 2014 (“Johnson Declaration”).
Thus, we weigh all of the evidence anew with this additional evidence.
Appellant argues that the declaration provides evidence of commercial
success from total sales of 2000 items with a nexus to the invention. Br. 13.
Mr. Johnson states that a product sold under the name SliderTies is covered
by the present application, and it uses hollow tubes that slide on shoelaces.
Johnson Declaration H 3, 5. Mr. Johnson declares that all sales occurred
from referrals and word of mouth without marketing. Id. | 6. Mr. Johnson
also declares that SliderTies represents an advance because it can be used
with regular shoelaces, whereas existing products require helping aids and
modified or specialized shoelaces. Id. ^ 7. Mr. Johnson cites testimonials of
the effectiveness of the SliderTies product, and Mr. Johnson attributes that
success to the use of two matching sets of slidable hollow tubes where one
matching set is different from the other matching set. Id. ]Hf 8—11, 15.
We find that sales of over 2000 SliderTies products in less than the
three years before Mr. Johnson’s Declaration on April 1, 2014, does not
provide evidence of recent sales or of the market share held by SliderTies at
any point. Thus, we cannot ascertain whether the SliderTies product has
enjoyed significant commercial success to evidence the nonobviousness of
the claimed system. See In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)
(units sold without any market share is a very weak showing of commercial
success).
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Application 13/155,391
It also is unclear what portion of the sales or testimonials result from
the slidable tubes compared to the use of fixed markings on shoelaces, as
Alexander teaches. Alexander uses pairs of fixed markings in the same way
to help a child tie their shoelaces by bringing the fixed markings together to
form bunny ears or loops that can be tied into a final, tied shoelace.2 It is not
clear that slidable tubes allow users to tie their shoelaces any easier or better
than fixed tubes of Alexander or fixed markings of the prior art. In addition,
the slidable tubes have to be positioned properly to perform their function.
Appellant discloses a fifth slidable tube 105 that is placed between a
pair of hollow tubes 103 A, 103B on one shoelace. Figure 1; Appeal Br. 19,
23 (claims 5, 21). Fifth tube 105 is formed at the top of loop 401, and then
is inserted through knot hole 501 at the base of loops 401, 403, as shown in
Appellant’s Figure 4—6. Alexander also teaches middle markings 36, 43,
which differ from markings 21, 34, 22, 60, and which are used to tie bows
62, 64 into a final shoelace. Alexander, 2:24-40, 3:29-42, Figs. 2—5, 9.
Alexander teaches the claimed system, as modified by Curef s slidable
tubes, to facilitate the tying of different lengths of shoelaces.
In view of the strong case of obviousness, we are not persuaded by
Appellant’s evidence of sales and testimonials that the claimed invention is
non-obvious over the prior art. Thus, we sustain the rejection of claims 4, 5,
10, 11, 13-15,20, and 21.
2 Figure 8 shows how one pair of markings 22, 34 on the right shoelace is
used to form bow 62 and another pair of markings 21, 60 on the left shoelace
is used to form bow 64. Alexander thus teaches a shoe tying system like the
claimed system that places pairs of markings, including tubes 35, 37 (Fig. 7),
on left and right shoelaces to help a user form bows 62, 64 by matching the
pairs of markings.
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Application 13/155,391
DECISION
We affirm the rejection of claims 4, 5, 10, 11, 13—15, 20, and 21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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