Ex Parte Mather

Patent Trials and Appeals Board

Mar 28, 2019

14491569 - (D) (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. § 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. § 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1 Claims 3, 4, 7-12, 14--19, 21, 23, and 27 are withdrawn.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,
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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.
§ 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. § I03(a) as being
unpatentable over Wacoal.
3. Claim 25 is rejected under 35 U.S.C. § 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.
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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.
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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.
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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
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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
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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
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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. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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