Ex Parte Quinn

Patent Trial and Appeal Board

Jun 26, 2017

13418195 (P.T.A.B. Jun. 26, 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.
13/418,195 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.
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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).
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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.
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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
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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).
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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
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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.
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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.
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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.
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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.
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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.
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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.
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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.
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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
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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
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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
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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
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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.
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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.”).
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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
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