Ex Parte Moreshead

Patent Trial and Appeal BoardApr 4, 2016

11972577 (P.T.A.B. Apr. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111972,577 01/10/2008 Wylie Moreshead 32042 7590 04/06/2016 SQUIRE PB (DC Office) 8000 Towers Crescent Drive 14th Floor Vienna, VA 22182-6212 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. 028377.0lOlClUS 6925 EXAMINER ANDERSON, AMBER R ART UNIT PAPER NUMBER 3678 NOTIFICATION DATE DELIVERY MODE 04/06/2016 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): ipgeneraltyc@squirepb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WYLIE MORESHEAD 1 Appeal2014-004702 Application 11/972,577 Technology Center 3700 Before TERRY J. OWENS, ROMULO H. DELMENDO, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) from a final rejection of claims 11-14, 17-19, and 33. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. BACKGROUND The subject matter on appeal relates to a flexible fabric having electrical energy storage and release capabilities integrally formed therewith. 1 According to the Appellant, the real party in interest is the Appellant, Wylie Moreshead. App. Br. 3. Appeal2014-004702 Application 11/972,577 Spec. 1: 10-11; Claim 11. Claim 11 is reproduced below from page 14 (Claims Appendix) of the Appeal Brief: 11. A flexible wearable garment, comprising: a fabric formed into a wearable garment; at least one panel comprising: a first flexible section adapted to store electrical energy, a second section coupled to the first section and configured to release the electrical energy stored in the first section for use in at least one of: heat dissipation, heat generation, and light emission, absent connection to an external source of power while a person is wearing the garment, wherein the second section is laminated with the first section to form a flexible integral sheet; and wherein said at least one panel is integrated into said first fabric to provide a person who wears the garment with at least one of: heat dissipation, heat generation, and light emission. REJECTIONS ON APPEAL 1. Claims 11-14, 17, and 33 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Lew et al. (US 6,608,464 Bl, issued Aug. 19, 2003) in view of Puentes (US 2003/0213045 Al, published Nov. 20, 2003). 2. Claims 18 and 19 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Lew in view of Fuentes, further in view of Branom (US 4,709,307, issued Nov. 24, 1987). ANALYSIS The Appellant argues the claims subject to Rejection 1 as an undifferentiated group. We select claim 11 as representative of the rejected claims. The remaining claims subject to Rejection 1 will stand or fall with 2 Appeal2014-004702 Application 11/972,577 claim 11. See 37 C.F.R. Â§ 41.37(c)(l)(iv). Although the Appellant includes a separate section in the Appeal Brief devoted to claims 18 and 19, see App. Br. 11-13, which are subject to Rejection 2, the arguments are essentially the same as those presented for Rejection 1 and do not focus on any particular claim limitations found in claims 18 or 19. Therefore, those claims will likewise stand or fall with claim 11. After review of the cited evidence in the appeal briefs and the opposing positions of the Appellant and the Examiner, we determine that the Appellant has not identified reversible error in the Examiner's rejections. Accordingly, we sustain the rejections for reasons set forth by the Examiner in the Final Action and the Answer. See generally Final Act. 2---6; Ans. 2-8. We add the following for emphasis and completeness. The Examiner finds that Lew teaches a panel comprising the first and second sections recited by claim 11 that are coupled together and laminated to form a flexible integral sheet. Final Act. 3--4. The Examiner finds that Lew does not teach the use of the panel in a wearable garment as recited by claim 11. Id. The Examiner finds that Fuentes teaches a fabric garment that incorporates a panel for the purpose of light emission so as to provide high visibility to the wearer in situations such as riding a motorcycle. Id. at 4. The Examiner concludes that "it would have been obvious ... to have integrated the panel of Lew et al. into a wearable fabric garment, as taught by Fuentes, so as to provide high visibility of a wearer to other viewers in situation such as riding a motorcycle." Id. The Appellant argues that Lew "is devoid of any suggestion to integrate the power source into a wearable garment." App. Br. 9. That argument is not persuasive because the Examiner relies on a combination of 3 Appeal2014-004702 Application 11/972,577 Fuentes and Lew for motivation to achieve the wearable garment of claim 11. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) ("[O]ne cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references."). The Appellant repeatedly argues that Fuentes "teaches away" from the claimed invention because it teaches "the use of a separate wire-connected power source, which is remote from and not laminated with the discrete light emitting elements that are attached to the jacket to form a flexible integral sheet." E.g., App. Br. 8, 9, 11, 13; Reply Br. 5. We are not persuaded by that argument. For a reference to "teach away," it must criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). "The prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of the[] [disclosed] alternatives .... " Id. Even assuming that Fuentes does not disclose a first flexible section to store electrical energy coupled to a second section that can release energy "absent connection to an external source of power," as recited by claim 11, the Appellant has identified no teaching in Fuentes that criticizes, discredits, or otherwise discourages the claimed arrangement. The Appellant's arguments do not persuade us that Fuentes teaches away from claim 11. The Appellant appears to argue that a person of ordinary skill in the art would not have been motivated to combine Lew with Fuentes because they are not sufficiently related to each other. See App. Br. 11. We disagree. As the Examiner finds, both Lew and Fuentes "disclose a need to notify other motorists of information regarding the occupants of a vehicle." Ans. 6. Lew teaches an embodiment in which its flexible polymer battery is 4 Appeal2014-004702 Application 11/972,577 coupled to LEDs to "provide emergency communication wireless calls for assistance and also a lighted display of messages." Lew at 6: 16-25. Fuentes teaches an embodiment in which LEDs are "mounted in a flexible substrate . . . and overlaid by a cosmetically appealing layer or pattern" to form a high visibility safety garment. Fuentes i-f 45. While Lew's flexible polymer battery coupled to LEDs is not formed into a wearable garment, the Appellant's unembellished argument does not refute the Examiner's finding that a person of ordinary skill in the art would have been motivated by the combination of references to design a wearable garment such as that of Fuentes that includes the light source of Lew with a flexible, integrated polymer battery. The modification proposed by the Examiner is effectively a simple substitution of the flexible LED panel with integrated power source of Lew for the light source of Fuentes with the benefit of eliminating wires and a separate battery pack. See Final Act. 4 (combination of Lew and Fuentes "would not require any external source of power"). Such substitutions typically do not result in nonobvious subject matter. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). In the Reply Brief, the Appellant appears to argue that Lew does not teach the limitation "wherein the second section is laminated with the first section to form a flexible integral sheet." Reply Br. 3-5. The Appellant does not present that argument in the opening Appeal Brief and has not established good cause for reserving it for the Reply Brief; accordingly, we deem that argument to be waived. See 37 C.F.R. Â§ 41.41(b)(2). In any event, merely quoting the claim language and emphasizing certain portions is insufficient to establish reversible error in the Examiner's rejection. See 37 C.F.R. Â§ 41.37(c)(l)(iv) ("A statement which merely points out what a 5 Appeal2014-004702 Application 11/972,577 claim recites will not be considered an argument for separate patentability of the claim."); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that "the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art"). The Examiner made specific findings of fact concerning Lew's laminated layers, and the Appellant's arguments do not address them. E.g., Final Act. 3--4; Ans. 3. On this record, the Appellant's arguments do not persuade us of reversible error in the Examiner's rejection. CONCLUSION We AFFIRM the Examiner's rejection of claims 11-14, 17-19, and 33. 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). AFFIRMED 6