Ex Parte QuinnDownload PDFPatent Trial and Appeal BoardJun 26, 201713418195 (P.T.A.B. Jun. 26, 2017) Copy Citation 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. 13/418,195 03/12/2012 DONALD R. QUINN 30060.02 3918 37833 7590 Richard C. Litman 112 S. West Street Alexandria, VA 22314 06/28/2017 EXAMINER HARRIS, RAYMOND EUGENE ART UNIT PAPER NUMBER 3772 NOTIFICATION DATE DELIVERY MODE 06/28/2017 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): uspto@4patent.com uspto@nathlaw.com mbashah@nathlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DONALD R. QUINN Appeal 2015-006325 Application 13/418,195 Technology Center 3700 Before: CHARLES N. GREENHUT, LISA M. GUIJT, and PAUL J. KORNICZKY, Administrative Patent Judges. KORNICZKY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2015-006325 Application 13/418,195 STATEMENT OF THE CASE Appellant Donald R. Quinn appeals under 35 U.S.C. § 134(a) from the Examiner’s decision, as set forth in the Examiner’s Final Office Action, dated July 16, 2014 (“Final Act.”), rejecting claims 1—16 and 18—20.1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE CLAIMED SUBJECT MATTER The claims are directed to a scrotal support garment. Claims 1,15, and 18 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A scrotal support garment, comprising: a flexible, resilient cup adapted for supporting a scrotum, the cup having a wide upper end, the cup tapering to form a narrow lower end, the cup having at least one opening defined therein, the opening being dimensioned and configured for passage of a catheter/drainage tube through the opening; a single, elongated thong extending from the lower end of the cup, the thong adapted to extend between the legs of a wearer and between the buttocks, the thong having an extended portion adapted for extending partially up the wearer's back, the extended portion terminating at a junction; and left and right shoulder straps extending from the thong, the straps configured to apply sufficient tension to the cup to comfortably support an edematous, diseased, or otherwise swollen scrotal sack of the wearer of the garment, thereby providing support of the scrotum. Claim 17 is cancelled. Final Act. 2. 2 Appeal 2015-006325 Application 13/418,195 REFERENCES In rejecting the claims on appeal, the Examiner relied upon the following prior art: Rawson US 204,088 May 21, 1878 King US 792,424 June 13, 1905 Lesavoy US 2,353,342 July 11, 1944 DeWolf US 2,712,821 July 12, 1955 Wimmer US 5,054,128 Oct. 8, 1991 Hermann US 5,319,806 June 14, 1994 Plunkett US 5,524,298 June 11, 1996 Takai US 6,530,091 B2 Mar. 11,2003 Dahlquist US 2009/0178182 A1 July 16, 2009 Landi US 2012/0272440 A1 Nov. 1,2012 REJECTIONS2’3 The Examiner made the following rejections: 1. Claims 1—4, 7, and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rawson, Lesavoy, and DeWolf. 2 The Examiner determined that Appellant is not entitled to the claim for the benefit of a prior-filed application 12/071,878 under 35 U.S.C. §§ 119(e), 120, 121, or 365(c). Final Act. 2—3. The Examiner finds that application 12/071,878 fails to provide adequate support or enablement in the manner provided by 35 U.S.C. § 112, first paragraph, for certain claims in the pending application, and claims 1—16 and 18—20 contain subject matter not disclosed in the originally filed Specification of the priority application. Id. at 3. Because Appellant does not substantively address the Examiner’s findings (Appeal Br. 5), the Examiner’s findings are sustained. 3 The Examiner objected to drawings for failing to comply with 37 CFR 1.84(p)(5). Final Act. 3^4. The Examiner’s objection to the drawings of the Specification is not an appealable matter, but rather is a petitionable matter, and, thus, is not within the jurisdiction of the Board. See 37 CFR 1.181; see also In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002); In re Mindick, 371 F.2d 892, 894 (CCPA 1967). 3 Appeal 2015-006325 Application 13/418,195 2. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Rawson, Lesavoy, DeWolf, and King. 3. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Rawson, Lesavoy, DeWolf, and Dahlquist. 4. Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rawson, Lesavoy, DeWolf, and Landi. 5. Claims 10-12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rawson, Lesavoy, DeWolf, and Hermann. 6. Claims 13 andl6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rawson, Lesavoy, DeWolf, and Plunkett. 7. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Rawson, Lesavoy, DeWolf, and Wimmer. 8. Claims 18 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rawson, Lesavoy, DeWolf, Plunkett, and Takai. 9. Claim 19 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Rawson, Lesavoy, DeWolf, Plunkett, Takai, and Wimmer. Appellant seeks our review of these rejections. DISCUSSION The Rejection of Claims 1—4, 7, and 15 as Unpatentable Over Rawson, Lesavoy, and DeWolf Appellant argues claims 1—4 and 7 as a group. Appeal Br. 4—6. We select claim 1 as the representative claim, and claims 2—4 and 7 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Claim 15 is addressed separately below. 4 Appeal 2015-006325 Application 13/418,195 Appellant contends that the Examiner’s rejection is erroneous for several reasons. First, Appellant argues that the rejection is improper because Rawson and Lesavoy are non-analogous art. Appeal Brief 8, dated December 12, 2015 (“Appeal Br.”). To quality as prior art for an obviousness analysis, a reference must qualify as “analogous art,” i.e., it must satisfy one of the following conditions: (1) the reference must be from the same field of [the inventor’s] endeavor; or (2) the reference must be reasonably pertinent to the particular problem with which the inventor is involved. K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) (quotingInnovention Toys, LLCv. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011)). According to Appellant, Rawson and Fesavoy are non-analogous art because “Rawson is a medical support and Fesavoy is an undergarment.” Appeal Br. 8. The Examiner responds, inter alia, that Rawson discloses a garment related to the covering and support of a user’s genitals i.e. scrotum and penis and Fesavoy also discloses a garment seeking to cover and support a user’s genitals i.e. scrotum and penis (gentle and effective athletic support for a male wearer etc., Page 1, lines 26-42) and are therefore in the same field of endeavor as well as being reasonably pertinent to the particular problem with which the appellant is concerned (supporting a male user’s genitals). Examiner’s Answer 4, dated April 8, 2015 (“Ans.”). The Specification identifies the “Field of the Invention” as “medical appliances and support devices for the male scrotum for patients having ailments or medical conditions causing the scrotum to become swollen and painful.” Spec. 12; see also Appeal Br. (Claims App.) (claim 1: “A scrotal support garment. . . .”). We determine that the field of endeavor of 5 Appeal 2015-006325 Application 13/418,195 Appellant’s invention is a support device for the male scrotum, and that a problem addressed by Appellant’s claimed invention is “to relieve pain and discomfort,” for example, when used for patients having ailments or medical conditions as described supra. Id. Rawson discloses a “suspensory bandage” for the male scrotum (see Rawson, Title, Fig. 1), and, therefore, we are not apprised of error in the Examiner’s determination that Rawson is in the same field of endeavor as Appellant’s claimed invention, i.e., a support device for the mail scrotum. Moreover, Rawson is a medical device (or bandage) and addresses “pressure around the waist” (Rawson, col. 2, para. 4) and “[Jhealth of the user” (id., col. 2, para. 8). Thus, we are not apprised of error in the Examiner’s determination that Rawson is reasonably pertinent to a particular problem with which Appellant is involved. Similarly, Lesavoy discloses an undergarment that provides “secure support[] . . . without any discomfiture” (Lesavoy, col. 1, para. 5; see also id. Fig. 1), and, therefore, we are likewise not apprised of error in the Examiner’s finding that Lesavoy is within the field of endeavor of a support device for the male scrotum and also reasonably pertinent to a particular problem with which Appellant is involved, namely, uncomfortable support garments for the male scrotum. Thus, Rawson and Lesavoy are properly relied on as analogous art by the Examiner. Second, Appellant argues that the Examiner is combining Rawson and Lesavoy due to “impermissible hindsight.” Appeal Br. 8. The Examiner’s findings and reasoning for combining Rawson and Lesavoy are supported by explicit teachings in the cited prior art. See, e.g., Final Act. 5—7 (citing Rawson 1:1—82, Figs. 1—5; Lesavoy 2:20-32, 3:14—18, 3:36—39, Figs. 1). 6 Appeal 2015-006325 Application 13/418,195 Appellant does not identify any knowledge relied upon by the Examiner that was gleaned only from Appellant’s disclosure and that was not otherwise within the teachings in the references or the level of ordinary skill at the time of the invention, thereby obviating Appellant’s assertion of hindsight. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Thus, we are not informed by Appellant’s argument how the Examiner impermissibly relied on hindsight. Third, Appellant argues that “there is no teaching, suggestion, or motivation to modify Rawson so as to utilize a single thong in place of the pair of straps C without destroying the teachings of Rawson” and “[modification of Rawson would destroy its use, in which the buttocks are supported.” Appeal Br. 8—9. Although the “teaching, suggestion, motivation” test may be a “helpful insight,” it cannot be used as a rigid and mandatory formula. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418— 19 (2007). The key to supporting any rejection under 35 U.S.C. § 103 is a clear “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418. The Examiner determined that it would have been obvious to modify the scrotal support garment of Rawson to include a single thong adapted to extend between the legs of a wearer and between the buttocks, the thong having an extended portion adapted for extending partially up the wearer's back, the extended portion terminating in a junction in order to provide a support garment that is comfortable to use to a user, as taught by De Wolf. Final Act. 7. The Examiner also finds that DeWolf s extended portion “would keep the junction of the thong and shoulder straps D above the wearer’s hips.” Ans. 5—6. Appellant’s argument does not explain why 7 Appeal 2015-006325 Application 13/418,195 Rawson’s suspensory bandage, when modified as proposed by the Examiner, would fail to function as intended, namely, as a suspensory bandage. Fourth, Appellant argues that Rawson does not possess the different elasticities recited in claim 15. Appeal Br. 9—10. Specifically, claim 15 recites “the shoulder straps are made from elastic material having an elasticity greater than the elasticity of the thong or the cup.” Id. at 4 (Claims App.). Appellant argues that the Examiner’s statement that “the shoulder straps and the thong have an elasticity greater than that of the cup . . . leads Applicant to believe that that the Examiner has the understanding that the thong and the straps are of equal elasticity, which is not the case in the present claims.” Id. at 10. As the Examiner correctly explains, the claim refers to the thong and the cup in the alternative only, only one of the features of the claim is required, and as recited in the [Ejxaminer’s rejection of claim 15 on pages 9 and 10 of the Final Rejection of Record mailed on July 16, 2014, “the shoulder straps are made from an elastic material having an elasticity greater than the elasticity of the cup (the straps C and shoulder straps D are made of elastic material and the bag A is made of knitwork as modified, therefore the straps C and shoulder straps D have a greater elasticity than that of the cup[]”, thereby meeting the [Ajppellanf s claim limitations. Ans. 6. Thus, Appellant’s argument is not commensurate with the scope of the claims, and does identity error by the Examiner. For the reasons above, the rejection of claims 1 and 15 is sustained. Claims 2—A and 7 fall with claim 1. 8 Appeal 2015-006325 Application 13/418,195 The Rejection of Claim 5 as Unpatentable Over Raws on, Lesavoy, DeWolf and King Appellant asserts that claim 5 includes all the limitations of claim 1 and, therefore, overcomes the cited references for at least the same reasons as discussed above in the arguments regarding claim 1. Appeal Br. 10. As the rejection of claim 1 is sustained, Appellant’s argument is not persuasive. Appellant also asserts that claim 5 “is patentable in view of its recitation of a reinforcement hem around the circular opening.” Appeal Br. 10. Appellant’s argument that claim 5 recites additional elements that support patentability is not persuasive. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (37 C.F.R. § 41.37 requires “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.”). Finally, Appellant argues that Rawson teaches away from a combination with King. Appeal Br. 10. Contrary to Appellant’s argument, Rawson does not disclose any problems with modifying its scrotal support garment (or suspensory bandage) to include King’s reinforcement hem around the garment’s opening, as recited in the Examiner’s rejection. Final Act. 11; see also Ans. 7. Because Rawson does not criticize, discredit, or otherwise discourage the use of a reinforcement hem, Rawson does not teach away from the Examiner’s combination of Rawson and King, or Rawson’s intended purpose. See In re Fulton, 391 F.3d 1195, 1199-1201 (Fed. Cir. 2004) (To teach away, a reference’s disclosure must “criticize, discredit or otherwise discourage the solution claimed.”). Appellant’s argument is not persuasive. 9 Appeal 2015-006325 Application 13/418,195 Appellant does not identify any patentable distinctions for claim 5, and fails to apprise us of error in the Examiner’s findings or reasoning. The rejection of claim 5 is sustained. The Rejection of Claim 6 as Unpatentable Over Raws on, Lesavoy, DeWolf and Dahlquist Appellant asserts that claim 6 includes all the limitations of claim 1 and, therefore, overcomes the cited references for at least the same reasons as discussed above in the arguments regarding claim 1. Appeal Br. 11. As the rejection of claim 1 is sustained, Appellant’s argument is not persuasive. Appellant also asserts that claim 6 “is patentable in view of its recitation of a flap covering the circular opening.” Appeal Br. 11. Appellant’s argument that claim 6 recites additional elements that support patentability is not persuasive. See In re Lovin, 652 F.3d at 1357 (37 C.F.R. §41.37 requires “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.”). Appellant argues that Rawson teaches away from a combination with Dahlquist. Contrary to Appellant’s argument, Rawson does not disclose any problems with modifying its scrotal support garment (or suspensory bandage) to include Dahlquist’s flap covering, as recited in the Examiner’s rejection. Final Act. 12; see also Ans. 7—8. Because Rawson does not criticize, discredit, or otherwise discourage the use of a flap covering, Rawson does not teach away from the Examiner’s combination of Rawson and Dahlquist, or Rawson’s intended purpose. See In re Fulton, 391 F.3d at 1199—1201. Appellant’s argument is not persuasive. 10 Appeal 2015-006325 Application 13/418,195 Finally, Appellant argues that the Examiner is combining Rawson and Dahlqusit due to “impermissible hindsight.” Appeal Br. 11. Contrary to Appellant’s argument, the Examiner’s findings and articulated reasoning for combining Rawson and Dahlqusit are supported by explicit teachings in the cited prior art. See, e.g., Final Act. 11—12 (e.g., citing Dahlqusit || 17, 51, 54—56, Figs. 1 and 7); see also Ans. 8—9. Appellant does not identify any knowledge relied upon by the Examiner that was gleaned only from Appellant’s disclosure and that was not otherwise within the teachings in the references or the level of ordinary skill at the time of the invention, thereby obviating Appellant’s assertion of hindsight. See In re McLaughlin, 443 F.2d at 1395. Thus, Appellant does not apprise us of error. Appellant does not identify any patentable distinctions for claim 6, and fails to apprise us of error in the Examiner’s findings or reasoning. The rejection of claim 6 is sustained. The Rejection of Claims 8 and 9 as Unpatentable Over Rawson, Lesavoy, DeWolf, andLandi Appellant asserts that claim 8 includes all the limitations of claim 1 and, therefore, overcomes the cited references for at least the same reasons as discussed above in the arguments regarding the rejection of claim l.4 Appeal Br. 12—13. As the rejection of claim 1 is sustained, Appellant’s argument is not persuasive. Appellant also asserts that claim 8 “is patentable in view of its recitation of the material of the cup.” Appeal Br. 12. Appellant’s argument 4 Because Appellant does not address the rejection of claim 9, the rejection of claim 9 is summarily affirmed. See Appeal Br. 12—13. 11 Appeal 2015-006325 Application 13/418,195 that claim 8 recites additional elements that support patentability is not persuasive. See In reLovin, 652 F.3d at 1357 (37 C.F.R. § 41.37 requires “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.”). Appellant argues that Rawson teaches away from a combination with Landi. Contrary to Appellant’s argument, Rawson does not disclose any problems with modifying its scrotal support garment (or suspensory bandage) to include Landi’s cup material, as recited in the Examiner’s rejection. Final Act. 12—13, see also Ans. 9-10. Because Rawson does not criticize, discredit, or otherwise discourage the use of Landi’s cup material, Rawson does not teach away from the Examiner’s combination of Rawson and Landi, or Rawson’s intended purpose. See In re Fulton, 391 F.3d at 1199-1201. Appellant’s argument is not persuasive. We understand that Appellant further argues that the Examiner is combining Rawson and Landi due to impermissible hindsight. Appeal Br. 12. Contrary to Appellant’s argument, the Examiner’s findings and articulated reasoning for combining Rawson and Landi are supported by explicit teachings in the cited prior art. See, e.g., Final Act. 12—13 (e.g., citing Landi 1, 29, 33, and 43). Appellant does not identify any knowledge relied upon by the Examiner that was gleaned only from Appellant’s disclosure and that was not otherwise within the teachings in the references or the level of ordinary skill at the time of the invention, thereby obviating Appellant’s assertion of hindsight. See In re McLaughlin, 443 F.2d atl395. Thus, Appellant does not apprise us of error. 12 Appeal 2015-006325 Application 13/418,195 Finally, Appellant argues that Rawson and Landi are non-analogous art because “Rawson is a medical support and [Landi] teaches an undergarment.” Appeal Br. 12. The Examiner responds that Rawson discloses a garment related to the covering and support of a user’s genitals i.e. scrotum and penis and Landi et al. also discloses a garment seeking to cover and support a user’s genitals i.e. scrotum and penis, including a cup/pocket (gentle and effective athletic support for a male wearer etc., see Abstract) and are[,] therefore[,] in the same field of endeavor as well as being reasonably pertinent to the particular problem with which the appellant is concerned (supporting a male user’s genitals). Ans. 11. Appellant does not address the Examiner’s findings and, thus, does not identify any error by the Examiner. Appellant’s argument is not persuasive. Appellant does not identify any patentable distinctions for claims 8 and 9, and fails to apprise us of error in the Examiner’s findings or reasoning. The rejection of claims 8 and 9 is sustained. The Rejection of Claims 10—12 as Unpatentable Over Rawson, Lesavoy, DeWolf and Hermann Appellant asserts that claims 10 include all the limitations of claim 1 and, therefore, overcomes the cited references for at least the same reasons as discussed above in the arguments regarding the rejection of claim l.5 Appeal Br. 12—13. As the rejection of claim 1 is sustained, Appellant’s argument is not persuasive. 5 Because Appellant does not address the rejection of claims 11 and 12, the rejection of claims 10 and 12 is summarily affirmed. See Appeal Br. 12— 13. 13 Appeal 2015-006325 Application 13/418,195 Appellant also asserts that claim 10 “is patentable in view of its recitation of should pad members attached to the shoulder straps.” Appeal Br. 12. Appellant’s argument that claim 10 recites additional elements that support patentability is not persuasive. See In re Lovin, 652 F.3d at 1357 (37 C.F.R. § 41.37 requires “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.”). Appellant argues that the prior art does not disclose certain features of claims 10-12. Specifically, Appellant asserts that Herman’s pads are to protect the user from external sources and are located on the outer portion of the harness, whereas Appellant’s pads are located on the interior of the shoulder straps and are used to distribute the forces of the strap over a wider area. Appeal Br. 12—13. Because these features are not recited in the claims, Appellant’s argument is not commensurate with the scope of claims 10-12. Ans. 12. We understand that Appellant further argues that the Examiner is combining the prior art using “impermissible hindsight.” Appeal Br. 13. Contrary to Appellant’s argument, the Examiner’s findings and articulated reasoning for combining the prior art are supported by explicit teachings in the cited prior art. See, e.g., Final Act. 13—14 (e.g., citing Hermann 4:19-47, 5:26-42, Abstract, and Fig. 6); see also Ans. 13. Appellant does not identify any knowledge relied upon by the Examiner that was gleaned only from Appellant’s disclosure and that was not otherwise within the level of ordinary skill at the time of the invention, thereby obviating Appellant’s assertion of hindsight. See In re McLaughlin, 443 F.2d atl395. Thus, Appellant does not apprise us of error. 14 Appeal 2015-006325 Application 13/418,195 Finally, Appellant argues that Hermann is non-analogous art, but does not give any reason for the argument. Appeal Br. 13. The Examiner responds that Rawson ... and Hermann et al. also disclose[] a garment seeking to cover and support a user further including straps to be placed around a user’s shoulders to support said garment (protection garment with shoulder straps and pads, see Abstract) and are[,] therefore[,] in the same field of endeavor as well as being reasonably pertinent to the particular problem with which the appellant is concerned (supporting a garment via shoulder straps). Ans. 13. Appellant does not address the Examiner’s findings and, thus, does not identify any error by the Examiner. Appellant’s argument is not persuasive. Appellant does not identify any patentable distinctions for claims 10— 12, and fails to apprise us of error in the Examiner’s findings or reasoning. The rejection of claims 10—12 is sustained. The Rejection of Claims 13 and 16 as Unpatentable Over Rawson, Lesavoy, DeWolf and Plunkett Appellant asserts that claims 13 and 16 include all the limitations of claims 1 and 15, and, therefore, overcome the cited references for at least the same reasons as discussed above in the arguments regarding the rejection of claim 1 and 15. Appeal Br. 13—14. As the rejection of claims 1 and 15 is sustained, Appellant’s argument is not persuasive. Appellant also asserts that claims 13 and 16 “are patentable in view of their recitation of a hemmed elastic ban around the periphery of the cup.” Appeal Br. 13. Appellant’s argument that claims 13 and 16 recite additional elements that support patentability is not persuasive. See In re Lovin, 652 15 Appeal 2015-006325 Application 13/418,195 F.3d at 1357 (37 C.F.R. § 41.37 requires “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.”). Appellant further argues that the Examiner is combining the prior art using “impermissible hindsight.” Appeal Br. 13—14. Contrary to Appellant’s argument, the Examiner’s findings and articulated reasoning for combining the prior art are supported by explicit teachings in the cited prior art. See, e.g., Final Act. 15—16 (e.g., citing Plunkett 2:58—67, 3:1—3, 4:48— 52, Fig. 1); see also Ans. 15. Appellant does not identify any knowledge relied upon by the Examiner that was gleaned only from Appellant’s disclosure and that was not otherwise within the level of ordinary skill at the time of the invention, thereby obviating Appellant’s assertion of hindsight. See In re McLaughlin, 443 F.2d at 1395. Thus, Appellant does not apprise us of error. Appellant argues that Plunkett is non-analogous art because it “has nothing to do with support, rather hygiene [sic].” Appeal Br. 13. The Examiner responds, inter alia, that Plunkett also discloses a garment seeking to cover and support a user’s genitalia i.e. penis and scrotum (male genitals garment for surround and securing the genitals of a male user, see Abstract and Figures) and [is] therefore in the same field of endeavor as well as being reasonably pertinent to the particular problem with which the Appellant is concerned (supporting a user’s genitals). Ans. 14. Plunkett is “a support pouch for the scrotum” (Plunkett 2:65) that addresses discomfort {id. at 2:43), and thus, we are not apprised of error in the Examiner’s determination that Plunkett is in the same field of endeavor of Appellant’s claimed invention and is also reasonably pertinent 16 Appeal 2015-006325 Application 13/418,195 to a particular problem with which Appellant is involved. Thus, Plunkett is properly relied on as analogous art by the Examiner. Finally, Appellant argues that Plunkett teaches away from a combination with Rawson. Appeal Br. 14. Contrary to Appellant’s argument, Plunkett does not disclose any problems with modifying Rawson’s scrotal support garment to include Plunkett’s hemmed elastic band, as recited in the Examiner’s rejection. Final Act. 14—16. Because Plunkett does not criticize, discredit, or otherwise discourage the use of a hemmed elastic band in a scrotal support garment, Plunkett does not teach away from the Examiner’s combination of Rawson and Plunkett. See In re Fulton, 391 F.3d at 1199-1201. Appellant’s argument is not persuasive. Appellant does not identify any patentable distinctions for claims 13 and 16, and fails to apprise us of error in the Examiner’s findings or reasoning. The rejection of claims 13 and 16 is sustained. The Rejection of Claim 14 as Unpatentable Over Rawson, Lesavoy, DeWolf and Wimmer Appellant asserts that claim 14 includes all the limitations of claim 1, and, therefore, overcomes the cited references for at least the same reasons as discussed above in the arguments regarding the rejection of claim 1. Appeal Br. 14. As the rejection of claim 1 is sustained, Appellant’s argument is not persuasive. Appellant also asserts that claim 14 “is patentable in view of its recitation of a hemmed reinforcement patch.” Appeal Br. 14. Appellant’s argument that claim 14 recites additional elements that support patentability is not persuasive. See In re Lovin, 652 F.3d at 1357 (37 C.F.R. § 41.37 17 Appeal 2015-006325 Application 13/418,195 requires “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.”). Appellant argues that Wimmer is non-analogous art, but offers no reason for the argument. Appeal Br. 14. Claim 14 recites “a reinforcement patch sewn to the junction, said shoulder straps being attached to the reinforcement patch.” A problem addressed by Appellant’s claimed invention is securing and supporting a garment worn about the pelvis. Ans. 16. Similarly, a problem addressed by Wimmer is to provide a reinforcing element to strengthen and join two shoulder straps to a back strap for a garment-supporting structure. See Wimmer 3:10—14 (“elongated [shoulder] straps 12 and 14 [are] joined to each other at one end by means such as reinforcing element 16 secured to straps by stitching and the like. Reinforcing element 16 also secures rear strap 18 to [shoulder] straps 12 and 14.” Thus, Wimmer is reasonably pertinent to a particular problem with which Appellant is involved. Appellant’s argument does not apprise us of any errors in the Examiner’s analysis in this regard as the Examiner’s specific findings are uncontroverted. Appellant further argues that the Examiner is combining the prior art using “impermissible hindsight.” Appeal Br. 14. Contrary to Appellant’s argument, the Examiner’s findings and articulated reasoning for combining the prior art are supported by explicit teachings in the cited prior art. See, e.g., Final Act. 14 (e.g., citing Wimmer 3:10-14, Fig. 1); see also Ans. 16. Appellant does not identify any knowledge relied upon by the Examiner that was gleaned only from Appellant’s disclosure and that was not otherwise within the teachings of the references or the level of ordinary skill at the 18 Appeal 2015-006325 Application 13/418,195 time of the invention, thereby obviating Appellant’s assertion of hindsight. See In re McLaughlin, 443 F.2d atl395. Thus, Appellant does not apprise us of error. Appellant does not identify any patentable distinctions for claim 14, and fails to apprise us of error in the Examiner’s findings or reasoning. The rejection of claim 14 is sustained. The Rejection of Claims 18 and 20 as Unpatentable Over Raws on, Lesavoy, DeWolf Plunkett, and Takai Appellant asserts that “[n]one of the applied prior art teaches or suggests, alone or in combination, [the] claimed features” in independent claim 18.6 Appeal Br. 15. Appellant asserts that claim 18 overcomes Rawson, Lesavoy, and DeWolf for at least the same reasons as discussed above in the arguments regarding the rejection of independent claims 1 and 15. As the rejection of claims 1 and 15 is sustained, Appellant’s arguments are not persuasive. With respect to Plunkett, Appellant argues that Plunkett is non- analogous art for the same reasons presented above in response to the rejection of claims 13 and 16. Appellant also argues that the rejection based on Plunkett “defies the common sense requirement of KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398 (2007),” as well as In re Oetiker, 977 F.3d 1443 (Fed. Cir. 1992). Appeal Br. 17. For the same reasons presented above regarding claims 13 and 16, Plunkett is analogous prior art, and Appellant’s argument that the Examiner’s rejection defies common sense is attorney 6 Because Appellant does not address the rejection of claim 20, the rejection of claim 20 is summarily affirmed. See Appeal Br. 15—18. 19 Appeal 2015-006325 Application 13/418,195 argument without any support. See In re Lovin, 652 F.3d at 1357 (37 C.F.R. §41.37 requires “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.”). Appellant also argues that Plunkett teaches away from Rawson for the same reasons presented above in response to the rejection of claims 13 and 16. For the same reasons presented above regarding claims 13 and 16, Appellant’s arguments are not persuasive. For the reasons above, the rejection of claims 13 and 16 is sustained. The Rejection of Claim 19 as Unpatentable Over Rawson, Lesavoy, Plunkett, Takai, and Wimmer Appellant asserts that claim 19 includes all the limitations of claim 18, and, therefore, overcomes the cited references for at least the same reasons as discussed above in the arguments regarding the rejection of claim 18. Appeal Br. 18. As the rejection of claim 18 is sustained, Appellant’s argument is not persuasive. Appellant also asserts that claim 19 “is patentable in view of its recitation of a reinforcement patch.” Appeal Br. 18. Appellant’s argument that claim 18 recites additional elements that support patentability is not persuasive. See In re Lovin, 652 F.3d at 1357 (37 C.F.R. § 41.37 requires “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.”). 20 Appeal 2015-006325 Application 13/418,195 Appellant also repeats the argument that Wimmer is non-analogous art. Appeal Br. 18—19. For the reasons discussed above, we determine that Wimmer is analogous art, and Appellant’s argument is not persuasive. Appellant further argues that the Examiner is combining the prior art using “impermissible hindsight.” Appeal Br. 18. Contrary to Appellant’s argument, the Examiner’s findings and articulated reasoning for combining the prior art are supported by explicit teachings in the cited prior art. See, e.g., Final Act. 20-21 (e.g., citing Wimmer 3:10—14, Fig. 1); see also Ans. 23. Appellant does not identify any knowledge relied upon by the Examiner that was gleaned only from Appellant’s disclosure and that was not otherwise within the teachings of the references or the level of ordinary skill at the time of the invention, thereby obviating Appellant’s assertion of hindsight. See In re McLaughlin, 443 F.2d atl395. Thus, Appellant does not apprise us of error. Appellant does not identify any patentable distinctions for claim 19, and fails to apprise us of error in the Examiner’s findings or reasoning. The rejection of claim 19 is sustained. DECISION For the above reasons, the Examiner’s rejections of claims 1—16 and 18-20 are AFFIRMED. 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 21 Copy with citationCopy as parenthetical citation