Ex Parte Rober et alDownload PDFPatent Trial and Appeal BoardApr 13, 201814058109 (P.T.A.B. Apr. 13, 2018) Copy Citation 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affirmance a NEW GROUND of rejection pursuant to our authority under 37 C.F.R. § 41.50(b ). 1 Claims 1-12 and 25-32 are withdrawn from consideration, and claims 13- 20 have been canceled.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 2 Appeal2016-004027 Application 14/058, 109 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 3 Appeal2016-004027 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 4 Appeal2016-004027 Application 14/058, 109 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 5 Appeal2016-004027 Application 14/058, 109 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) 6 Copy with citationCopy as parenthetical citation