Ex Parte Rober et al

Patent Trial and Appeal Board

Apr 13, 2018

14058109 (P.T.A.B. Apr. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/058,109 10/18/2013
32425 7590 04/17/2018
NORTON ROSE FULBRIGHT US LLP
98 SAN JACINTO BOULEVARD
SUITE 1100
AUSTIN, TX 78701-4255
FIRST NAMED INVENTOR
Mark B. Rober
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.
DUDZ.P0002US.C 1 2956
EXAMINER
SUTTON, ANDREW W
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
04/17/2018 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):
aoipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK B. ROBER, CHRIS TIEN TINSLEY, and
DAVID DELGADO
Appeal 2016-004027
Application 14/058,109
Technology Center 3700
Before MICHELLE R. OSINSKI, JILL D. HILL, and JEFFREY A.
STEPHENS, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Mark B. Rober et al. ("Appellants") appeal under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 21-24. 1 We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART, designating our affirmance a NEW
GROUND of rejection pursuant to our authority under 37 C.F.R. § 41.50(b ).
1 Claims 1-12 and 25-32 are withdrawn from consideration, and claims 13-
20 have been canceled. Br. 8-9 (Claims App'x.).
Appeal2016-004027
Application 14/058, 109
BACKGROUND
Independent claim 21, reproduced below, illustrates the claimed
invention.
21. A method of using an apparel system, comprising:
obtaining an apparel system comprising:
a garment comprising at least one aperture;
a pocket configured to be worn underneath the garment;
and
a handheld device configured to be supported, at least in
part, by the pocket and comprising a screen and an
application configured to generate a display on the
screen;
running the application; and
supporting the handheld device, at least in part, using the
pocket such that the display is visible through the at least
one aperture.
REJECTIONS
I. Claims 21, 23, and 24 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Jarboe (US 2010/0175161 Al, pub. July 15, 2010) and
Van Belle (US 2007/0283044 Al, pub. Dec. 6, 2007). Final Act. 2.
II. Claim 22 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Jarboe, Van Belle, and Sapowycz (US 2009/0139013 Al,
pub. June 4, 2009). Id. at 4.
ANALYSIS
Rejection I
The Examiner finds that Jarboe discloses the claimed method
including, inter alia, "a garment 40 comprising at least one aperture (left
pocket opening 30)" and "a pocket (right opening 30) configured to be worn
underneath the garment," and a handheld device 150 supported, in part, by
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the pocket 30 such that the device display "is visible through the at least one
aperture (left pocket 30) when the user is withdrawing the device 150 from
the pocket." Final Act. 3; see Jarboe, Fig. 2.
Appellants argue claims 21 and 24 as a group. We select claim 21 as
representative. Therefore, claim 24 stands or falls with claim 21.
Appellants argue that the right opening 30 of Jarboe's pocket 28, "which is
external to jacket 20, is not a pocket configured to be worn underneath a
garment." Br. 4.
Appellants do not provide a definition of the term "pocket" in their
Specification or arguments. A pocket can be defined as "a small bag that is
sewed or inserted in a garment so that it is open at the top or side."
https://www.merriam-webster.com/dictionary/pocket (last visited April 6,
2018). This definition is consistent with use of the term "pocket" in
Appellants' Specification. Thus, claim 21 recites a "pocket" or small bag
that is sewn/inserted into a garment and configured to be worn underneath
the garment.
Jarboe's Figure 2 discloses that its pocket 48 is sewn exterior to its
jacket 40. While a pocket sewn exterior to a jacket is not underneath the
jacket, we conclude that it would have been obvious to one skilled in the art,
at the time the invention was made, to add Jarboe's pocket 48 underneath its
jacket, because changing pocket location in such a way is within the level of
skill in the art, and locating Jarboe's pocket on the interior of its jacket
would advance its purpose of concealment. See Jarboe i-f 3 ("a student using
a cell phone while attending a class to send a text message to a friend
without the 'texting' becoming known to the instructor."). With Jarboe's
pocket 48 sewn to the inner surface of its jacket 40, one skilled in the art
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Application 14/058, 109
would understand that the plastic window 52 (or aperture) would remain
facing outward on the jacket 40 proper, so that the user could view the
device 150 during use. For sake of clarity, the term "underneath" is defined
as "directly beneath" ((last visited April 6, 2018)) or "[s]o as to be
concealed by (something else)"
(https:// en.oxforddictionaries.com/ definition/us/underneath (last visited
April 6, 2018)), which is consistent with its use in Appellants' Specification.
Jarboe's pocket being sewn to an interior surface of its jacket would meet
the claim limitation of the pocket being "underneath" the jacket, because the
pocket would reside directly beneath the jacket so as to be concealed by the
jacket.
For this reason, we sustain the rejection of claim 21 as unpatentable
over Jarboe and Van Belle. Claim 24 falls with claim 21. Because our
conclusion is based on reasoning that differs from that of the Examiner, we
designate our affirmance a NEW GROUND of rejection under 37 C.F.R.
§ 41. 50(b) to provide Appellants with a full and fair opportunity to respond
to the rejection.
Claim 23
Claim 23 depends from claim 21 and recites the apparel system
comprising "a device support member comprising a prop, the pocket being a
portion of the device support member, and the display is related to the prop."
The Examiner determines that Jarboe's hood 42 meets the claimed "prop"
being supported by the device support member. Ans. 3. Even if Jarboe's
whole garment or the portion of it comprising the hood and pocket are
considered the device support member (id.), we are unable to discern a
construction of the term "prop" that would include a jacket hood. The
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Examiner does not construe the term "prop" or explain how a hood can meet
a reasonable construction thereof (id.). Lacking such an analysis,
obviousness has not been established, and we do not sustain the rejection of
claim 23 as unpatentable over Jarboe and Van Belle.
Re} ection II
Appellants make no argument that claim 22 would be patentable over
Jarboe, Van Belle, and Sapowycz if claim 21 is not patentable over Jarboe
and Van Belle. For the reasons set forth above regarding claim 21, we
sustain the rejection of claim 22, designating our affirmance a NEW
GROUND of rejection under 37 C.F.R. § 41.50(b) to provide Appellants
with a full and fair opportunity to respond to the rejection.
DECISION
We AFFIRM the rejection of claims 21 and 24 unpatentable over
Jarboe and Van Belle, designating the affirmance a NEW GROUND under
37 C.F.R. § 41.50(b).
We REVERSE the rejection of claim 23 as unpatentable over Jarboe
and Van Belle.
We AFFIRM the rejection of claim 22 as unpatentable over Jarboe,
Van Belle, and Sapowycz, designating the affirmance a NEW GROUND
under 37 C.F.R. § 41.50(b).
This Decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b ), which provides that "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record ....
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
37 C.F.R. § 41.50(b)
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