Ex Parte Mather

Patent Trial and Appeal BoardMar 28, 2019

14491569 (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/491,569 09/19/2014 Sophie Louise Mather 115726 7590 04/01/2019 BANNER & WITCOFF, LTD & attorneys for client 005127 1100 13th STREET NW SUITE 1200 WASHINGTON, DC 20005 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. 005127.01575/07-0127US91 7188 EXAMINER HOEY, ALISSA L ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 04/01/2019 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): PT0-115726@bannerwitcoff.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 SOPHIE LOUISE MATHER Appeal2018-004865 Application 14/491,569 Technology Center 3700 Before JEREMY M. PLENZLER, NATHAN A. ENGELS, and BRENT M. DOUGAL, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. Â§ 134(a) of the Examiner's Decision rejecting claims 1, 2, 6, 13, 20, 22, 24--26, and 28. 1 We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM-IN-PART. 1 Claims 3, 4, 7-12, 14--19, 21, 23, and 27 are withdrawn. See Appeal Br. 24--28. Appeal2018-004865 Application 14/491,569 CLAIMED SUBJECT MATTER Claim 1 is independent. Claims 2, 6, 13, 20, 22, 24--26, and 28 depend from claim 1. Claim 1 is reproduced below: 1. An outerwear garment for covering at least a portion of an upper human torso, comprising: a first garment region including a first thermal fabric material extending along a central back portion of the outerwear garment from proximate to a waist area of the outerwear garment to proximate to a neck area of the outerwear garment; a second garment region including a second thermal fabric material extending along a first side of the outerwear garment from the waist area to a first underarm area of the outerwear garment; a third garment region including a third thermal fabric material extending along a second side of the outerwear garment from the waist area to a second underarm area of the outerwear garment; and a fourth garment region located at: (a) a back of the outerwear garment between the first garment region and the second garment region, (b) the back of the outerwear garment between the first garment region and the third garment region, and ( c) a front of the outerwear garment between the second garment region and the third garment region, wherein the fourth garment region makes up at least 50% of an overall exterior surface of the outerwear garment, wherein the fourth garment region includes one or more pieces of a first thermal material having a first thermal resistive value, wherein the first thermal fabric material, the second thermal fabric material, and the third thermal fabric material are provided as part of one or more pieces of fabric material, wherein each of the first thermal fabric material, the second thermal fabric material, and the third thermal fabric material has a thermal resistive value higher than the first thermal resistive value, 2 Appeal2018-004865 Application 14/491,569 wherein the first thermal resistive value is at least 10% lower than the thermal resistive values of each of the first thermal fabric material, the second thermal fabric material, and the third thermal fabric material, and wherein the first thermal resistive value of the fourth garment region, the thermal resistive value of the first thermal fabric material, the thermal resistive value of the second thermal fabric material, and the thermal resistive value of the third thermal fabric material are measured according to International Organization for Standardization Test ISO 11092 under constant measuring parameter conditions. REJECTIONS 1. Claims 1, 2, 6, 13, 20, 24, and 26 are rejected under 35 U.S.C. Â§ I02(b) as anticipated by Wacoal (JP 2001-192901, published July 17, 2001). 2 2. Claims 22 and 28 are rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Wacoal. 3. Claim 25 is rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Wacoal and Walsh (US 2006/0048263 Al, published Mar. 9, 2006). OPINION With respect to claim 1, Appellant disputes only whether Wacoal' s "second garment region" and "third garment region" extend from a "waist area" to an "underarm area," and whether Wacoal discloses the "thermal resistive value[s]" recited in the claim. Appeal Br. 7-14. 2 This decision references the English translation of W acoal when referencing the text of the document. 3 Appeal2018-004865 Application 14/491,569 As for the extent of the "second garment region" and "third garment region," the Examiner finds that Wacoal discloses "a second garment region (see one side of x portion of 16 in figure 8B) ... extending ... from the waist area to proximate to a first underarm area of the outerwear garment (see figure 8B: paragraph 0032-0040 of translation)" and "a third garment region (see other side of x portion of 16 in figure 8B) ... extending ... from the waist area to a second underarm area of the outerwear garment ( see figure 8B: paragraph 0032-0040 of translation)." Non-Final Act. 3. Wacoal's Figures 8A-C are reproduced below for reference. 4 Appeal2018-004865 Application 14/491,569 Figures 8A-C illustrate the back side of a garment and illustrate the "x portion" identified by the Examiner as corresponding to the recited "second garment region" and "third garment region." Appellant contends that "[t]he hatched area 16 ofWacoal's garment structure terminates far short of the waist area of that garment structure," but Appellant offers no meaningful explanation beyond that general allegation. Appeal Br. 8. Based on Wacoal's illustration in Figure 8, and without further explanation from Appellant, we are not persuaded that the Examiner erred in finding that W acoal' s hatched area 16 terminates at the waist area. As seen in Wacoal's Figures 8A-C, hatched region 16 terminates near the inward curving region, which reasonably appears to be a "waist area." The Examiner finds that Wacoal discloses the recited thermal resistivity values because "Wacoal teaches the incubation/insulation rate of material portion 16 being 2.2 times or 3 times higher than that of material portion 15 (paragraphs 0051 and 0064)." Ans. 3. The Examiner explains that "Wacoal uses the term 'high incubation' to detail a material that prevents the transfer of heat and therefore heat loss." Id. at 4. Appellant does not dispute the Examiner's finding regarding the incubation/insulation rate taught by Wacoal. Rather, Appellant responds that the Wacoal does not use the ISO standard recited in the claim and "[t]he Primary Examiner has produced no evidence to establish that Wacoal' s disclosed 'incubation rates' correspond to, correlate to, and/or are proportional to the claimed thermal resistive value differentials as measured by ISO 11092." Appeal Br. 10-11. Appellant contends that the evidence of record demonstrates that results from one type of "breathability" test standard are not properly correlated to or compared to results from testing using another standard. 5 Appeal2018-004865 Application 14/491,569 The "Test Methods Measuring Breathability" document describes various breathability standardized tests, including ISO 11092. This document cautions that "[ s ]ince the environmental conditions, setup, and protocol of each method differ, results from one standard are NOT comparable to that of another." Id. at 13. Although the thermal resistivity is the result of the structure of the garment, Appellant chose to claim those features functionally. A patent applicant is free to recite features of an apparatus either structurally or functionally. See In re Swinehart, 439 F.2d 210,212 (CCPA 1971) (there is nothing intrinsically wrong with drafting claims that define something by what it does rather than what it is). Yet, choosing to define an element functionally, i.e., by what it does, carries with it a risk: where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. Swinehart, 439 F.2d at 213. Here, the Examiner has a reasonable basis to believe that the recited thermal resistivity recited in claim 1 is present in Wacoal, and the Examiner's findings are sufficient to shift the burden to Appellant to show the garment of Wacoal does not possess the functional limitations of claim 1. As noted above, the Examiner finds, and Appellant does not dispute, that "Wacoal teaches the incubation/insulation rate of material portion 16 being 2.2 times or 3 times higher than that of material portion 15." Ans. 3. Accordingly, regardless of the particular standard used to determine thermal resistance, the Examiner has a reasonable basis to determine that Wacoal 6 Appeal2018-004865 Application 14/491,569 meets the claim requirement that "the first thermal resistive value is at least 10% lower than the thermal resistive values of each of the first thermal fabric material, the second thermal fabric material, and the third thermal fabric material." Appellant has not persuaded us that Wacoal fails to include the recited thermal resistivity. For at least these reasons, we are not apprised of error in the rejection of claim 1, nor in the rejection of claims 2, 6, and 13, which depend from claim 1 and are not argued separately by Appellant. Claim 20 depends from claim 1 and further recites that "the outerwear garment constitutes a coat, a jacket, or a vest." The Examiner finds that Wacoal discloses this limitation. See, e.g., Ans. 7 (citing Wacoal ,r 37). Paragraph 37 of Wacoal is silent as to whether its garment would include coats, jackets, vests, etc. The Final Rejection offers no explanation as to why Wacoal teaches these limitations (Final Act. 5), and the Answer simply concludes that "[t]he garment of Wacoal teaches all of the garment structure as claimed and therefore is capable of being worn as a jacket as desired" (Ans. 7). The general disclosure of "outers" in Wacoal's paragraph 37, alone, is insufficient to disclose the limitations of claim 20. Accordingly, we reverse the Examiner's decision to reject claim 20. Claim 22 depends from claim 1 and recites that "the thermal resistive value of each of the first thermal fabric material, the second thermal fabric material, and the third thermal fabric material is at least 0.21 m2 x K/W." The Examiner acknowledges that "Wacoal fails to teach the thermal value of at least 0.21 m2 x K/W," but the Examiner reasons that "[i]t would have been obvious ... to determine the proper thermal value of each region based upon desired end use, since as long as, the first, second and third garment 7 Appeal2018-004865 Application 14/491,569 regions have a higher thermal value than the fourth garment regions, the thermal value can be any as desired." Non-Final 6. Appellant responds that "W acoal' s teachings of creating a lightweight underwear garment that will not overheat a wearer, one skilled in the art would not be led to make the modifications to Wacoal to arrive at the claimed outerwear garment." Appeal Br. 20. Those contentions are unpersuasive because Wacoal suggests that it is applicable to outerwear also. See Wacoal ,r 37 ("[t]he clothing of this invention is applicable not only to an underwear but outers"). Accordingly, we are not apprised of error in the rejection of claim 22. Claim 24 depends from claim 1 and recites that "the second garment region" and "the third garment region" each "extends to the waist opening" of the garment. The dispute with respect to this claim focuses on the construction of "waist opening." The Examiner's finding requires that a "waist opening is the opening within the tubular torso portion where a user's waist would extend [ while wearing the garment], it is located above the distal edge opening at the bottom of the garment." Ans. 8. Appellant contends that the waist opening is located at the distal end of the garment through which the waist would extend when placing the garment on the user. Non-Final Act. 15-17. Neither the Examiner nor Appellant provides argument or evidence supporting the particular constructions advanced. Based on the record before us, however, Appellant's position is more persuasive, as it appears more consistent with the plain meaning of "waist opening" and is consistent with the Specification. For example, each of the drawings in the pending application illustrates second and third garment regions 106, 108 extending 8 Appeal2018-004865 Application 14/491,569 to the distal end of the garment. We reverse the Examiner's decision to reject claim 24. Claim 25 depends from claim 24 and the stated basis for the rejection of claim 25 does not cure the deficiencies in the rejection of claim 24. Accordingly, we also reverse the Examiner's decision to reject claim 25. Claim 26 depends from claim 1 and further defines the difference in thermal resistance as "at least 20% lower." Appellant's arguments are similar to those discussed above in connection with claim 1 (see Appeal Br. 17-19) and are unpersuasive for similar reasons. Accordingly, we are not apprised of error in the rejection of claim 26. Claim 28 depends from claim 26 and additionally recites the features found in claims 20 and 22. Appellant reiterates the contentions presented for those claims. See Appeal Br. 20-22. As explained above, Appellant's contentions in connection with claim 20 are persuasive. Accordingly, we reverse the Examiner's decision to reject claim 28. DECISION We AFFIRM the Examiner's decision to reject claims 1, 2, 6, 13, 22, and 26. We REVERSE the Examiner's decision to reject claims 20, 24, 25, and 28. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED-IN-PART 9