Ex Parte Sherry

Patent Trial and Appeal Board

May 11, 2018

13952246 (P.T.A.B. May. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/952,246 07/26/2013
62008 7590 05/15/2018
MAIER & MAIER, PLLC
345 South Patrick Street
ALEXANDRIA, VA 22314
FIRST NAMED INVENTOR
Rose Anne SHERRY
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.
03550001US 4454
EXAMINER
PIER ORAZIO, JILLIAN KUTCH
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
05/15/2018 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):
patent@maierandmaier.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROSE ANNE SHERRY
Appeal2017-009263 1
Application 13/952,2462
Technology Center 3700
Before MEREDITH C. PETRA VICK, PHILIP J. HOFFMANN, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 1, 3, 6, 7, 9, 11, 14, and 15. We have jurisdiction under 35 U.S.C. §
6(b).
We REVERSE.
1 Our decision references the Appeal Brief ("Br.," filed Feb. 17, 2017), the
Examiner's Answer ("Ans.," mailed Apr. 7, 2017), and the Final Office
Action ("Final Act.," mailed Aug. 17, 2016).
2 According to Appellant, the real party in interest is Rose Anne Sherry.
Br. 2.
Appeal2017-009263
Application 13/952,246
BACKGROUND
According to Appellant, the Specification discloses "a hosiery article
to be worn on a foot." Spec. ,r 3.
CLAIMS
Claims 1 and 9 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A hosiery article to be worn on a foot, comprising:
a plurality of flexible pockets, each pocket having a
cylindrical upper portion and a substantially straight lower
portion coupled together to form a cylindrical shape pocket with
a closed distal end, an open proximate end, and a top cylindrical
interior surface between the closed distal end and the open
proximate end forming an open interior, the open interior of each
of the pockets being sized to receive at least one toe of the foot
and to enclose the distal end of the toe;
a retaining structure completely circumscribing the
cylindrical interior surface of at least one pocket and adhesively
coupled to the at least one pocket, the retaining structure made
of a flexibly resilient material;
a plurality of tabs, each tab being coupled to the lower
surface of a pocket;
wherein at least one of the upper portions has a length
configured to expose a portion of toe cleavage when the article
is worn on the foot, wherein the article is impregnated with an
anti-bacterial substance.
Br. 14.
2
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Application 13/952,246
REJECTIONS
1. The Examiner rejects claim 1 under 35 U.S.C. § I03(a) as unpatentable
over Rose-Lydon3 in view ofNeu,4 Malpee, 5 and Gill. 6
2. The Examiner rejects claims 3, 6, and 7 under 35 U.S.C. § I03(a) as
unpatentable over Rose-Lydon in view of Neu, Malpee, Gill, and Scholl. 7
3. The Examiner rejects claim 9 under 35 U.S.C. § I03(a) as unpatentable
over Bucks8 in view ofMalpee, Neu, and Throneburg. 9
4. The Examiner rejects claims 11, 14, and 15 under 35 U.S.C. § I03(a) as
unpatentable over Bucks in view ofMalpee, Neu, Throneburg, and
Scholl.
DISCUSSION
Claim 1
As discussed below, we are persuaded by Appellant's argument that
the rejection of claim 1 fails to provide an adequate reason for the proposed
combination of art.
With respect to claim 1, the Examiner finds that Rose-Lydon teaches a
hosiery article as claimed except that
[Rose-]Lydon fails to teach, a substantially straight lower
portion, a plurality of tabs, each tab being coupled to the lower
surface of a pocket, a retaining structure completely
circumscribing the cylindrical interior surface of at least one
pocket, the retaining structure made of a resilient material;
3 Rose-Lydon, US 2007/0180597 Al, pub. Aug. 9, 2007.
4 Neu, US 3,211,142, iss. Oct. 12, 1965.
5 Malpee, US 5,774,898, iss. July 7, 1998.
6 Gill, US 2014/0196306 Al, pub. July 17, 2014.
7 Scholl, US 1,741,340, iss. Dec. 31, 1929.
8 Bucks, US 2,154,662, iss. Apr. 18, 1939.
9 Throneburg et al., US 6,308,438 Bl, iss. Oct. 30, 2001.
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Application 13/952,246
wherein the article 1s impregnated with an antibacterial
substance.
Final Act. 4. With respect to the limitation requiring "a plurality of tabs,
each tab being coupled to the lower surface of a pocket," the Examiner relies
on Neu. The Examiner finds and concludes:
Neu, a toe covering device, teaches, a substantially straight
lower portion (1 /2/3, [F]igure 4) and a tab, being coupled to the
lower surface of a pocket (3 are tabs that are coupled to the lower
surface of 9, [F]igure 4).
While Neu teaches one tab, Neu fails to explicitly teach a
plurality of tabs. It has been held that mere duplication of parts
has no patentable significance unless a new and unexpected
result is produced. MPEP [§] 2144.04 (VI)(B). Therefore, in
light of Neu's teaching of a tab it would have been obvious to
duplicate each tab to [sic] the lower surface of Lydon, in order to
give the user a bottom rest for the hosiery article.
Therefore, it would be obvious to one of ordinary skill in
the art at the time the invention was filed to have added a
substantially straight lower portion and tabs as taught by Neu;
because Neu teaches that this configuration is known in the art
and it would be obvious to one of ordinary skill that the added
substantially straight bottom and tabs would give the user a
bottom rest for the hosiery article.
Final Act. 5.
We agree with Appellant that it "is unclear from the record [] why a
person of ordinary skill in the art would be motivated to combine" the
references cited. See Br. 6-9. The Examiner can satisfy the burden of
establishing that every limitation of a claim would have been obvious by
showing "some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness." KSR Int'! Co. v. Teleflex, Inc.,
550 U.S. 398,418 (2007). Here, we find that the Examiner's conclusion that
one of ordinary skill in the art would have found it obvious to combine
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Application 13/952,246
Rose-Lydon and Neu in order to provide a bottom rest for Rose-Lydon's
hosiery article is not supported on the record before us. Rose-Lydon
discloses a "flexible and comfortable separating padded cushion for toe
protection." Rose-Lydon Abstract. In contrast, Neu discloses a device for
the treatment and correction of hammer toe, which includes a base portion
having an extended "relatively thin rearward edge 3," which the Examiner
identifies as a tab. See Neu col. 1, 11. 11-16; col. 2, 11. 17-20. Neu does not
appear to otherwise discuss element 3. Neu also does not appear to disclose
or suggest the use of multiple hammer toe correction devices at the same
time, and therefore, Neu does not address using multiple tabs.
Without further explanation or evidence, we find that the Examiner's
reasoning merely shows that the combination of Rose-Lydon and Neu would
results in a device with multiple tabs as claimed, but the Examiner has not
provided a sufficient reason why one of ordinary skill in the art would have
found it obvious to provide such tabs in Rose-Lydon's device. To the extent
the Examiner indicates that this would simply be a duplication of parts, we
find that insufficient to support the conclusion that providing tabs as claimed
would have been obvious. Although that may show that providing multiple
tabs as claimed was within the skill set of an ordinary artisan, it does not
provide a reason to include multiple tab portions in Rose-Lydon's device.
Further, to the extent the Examiner also finds that the tabs would
create "a bottom rest for the hosiery article," the Examiner does not
otherwise explain why one of ordinary skill would have had a reason to
provide such a bottom rest. The mere fact that the combination would result
in a bottom rest is insufficient to show that one of ordinary skill in the art
would have had any reason to combine the art to create such a bottom rest,
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Application 13/952,246
and the Examiner does not provide any other explanation why one of
ordinary skill in the art would have sought to create bottom rest. For
example, the Examiner does not provide any evidence showing that the
inclusion of a bottom rest in Rose-Lydon's device would have been
desirable, beyond the reasons found only in the present Specification.
Based on the foregoing, we are persuaded that the rejection lacks
sufficient reasoning with rational underpinnings to support the Examiner's
conclusion. Accordingly, we do not sustain the rejection of claim 1.
Claims 3, 6, and 7
Claims 3, 6, and 7 depend, directly or indirectly, from claim 1. With
respect to the rejection of claims 3, 6, and 7, the Examiner does not rely
upon Scholl to cure the deficiency found above with respect to the rejection
of claim 1. Accordingly, we do not sustain the rejection of claims 3, 6, and
7 for the reasons discussed above.
Claim 9
As discussed below, we are persuaded by Appellant's argument that
the rejection of claim 9 fails to provide an adequate reason for the proposed
combination of art.
With respect to claim 9, the Examiner finds that Bucks teaches a
hosiery article as claimed except that
Bucks fails to teach a retammg structure completely
circumscribing the cylindrical interior surface of the least one
pocket and at least one ring, the retaining structure adhesively
coupled to the at least one pocket, and made of a flexibly resilient
material; a plurality of tabs, each tab being coupled to the lower
surface of an individual pocket or ring, wherein the article is
impregnated with an anti-bacterial substance
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Application 13/952,246
Final Act. 9--11. With respect to the limitation requiring "a plurality of tabs,
each tab being coupled to the lower surface of an individual pocket or ring,"
the Examiner relies on Neu. Specifically, the Examiner finds and concludes:
Neu, a toe covering device, teaches wherein the article
([F]igure 4) comprises a tab (3), tab being coupled to the lower
surface (3 is coupled to the lower surface of 9, [F]igures 1 and 4).
While Neu teaches one tab, Neu fails to explicitly teach a
plurality of tabs. It has been held that mere duplication of parts
has no patentable significance unless a new and unexpected
result is produced. MPEP [ §] 2144. 04 (VI)(B). Therefore, in light
of Neu's teaching of a tab it would have been obvious to
duplicate each tab to the lower surface of Bucks 1 or 2, in order
to give the user a bottom rest for the hosiery article.
Therefore, it would be obvious to one of ordinary skill in
the art at the time the invention was filed to have added teaching
of the tab as taught by [Neu]; because [Neu] teaches that this
configuration is known in the art and it would be obvious to one
of ordinary skill that the added tab would give the user a bottom
rest for the hosiery article.
Final Act. 13.
We are persuaded of reversible error here for reasons substantially the
same as those discussed above with respect to claim 1. Here, Bucks
discloses "a shield to be worn by the larger toes of the foot ... which serves
to protect the hosiery worn thereover." Bucks col. 1, 11. 1-9. As discussed
above, Neu discloses a device for the treatment and correction of hammer
toe, which includes a base portion having an extended "relatively thin
rearward edge 3," which the Examiner identifies as a tab. See Neu col. 1,
11. 11-16; col. 2, 11. 17-20. The Examiner relies on the same reasoning for
the combination here as for the combination with Neu discussed above, and
we find that the Examiner's reasoning here lacks support for the same
reasons discussed above.
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Application 13/952,246
Based on the foregoing, we are persuaded that the rejection of claim 9
lacks the requisite reasoning with rational underpinnings to support the
Examiner's conclusion. Accordingly, we do not sustain the rejection of
claim 9.
Claims 11, 14, and 15
Claims 11, 14, and 15 depend directly or indirectly from claim 9.
With respect to the rejection of claims 11, 14, and 15, the Examiner does not
rely upon Scholl to cure the deficiency found above with respect to the
rejection of claim 9. Accordingly, we do not sustain the rejection of claims
11, 14, and 15 for the reasons discussed above.
CONCLUSION
We REVERSE the rejections of claims 1, 3, 6, 7, 9, 11, 14, 15.
REVERSED
8