Ex Parte Webb

Patent Trial and Appeal BoardSep 29, 2014

12096546 (P.T.A.B. Sep. 29, 2014)

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. 12/096,546 06/06/2008 Richard Sebastian Hawksley Webb L2006.0048 2526 24998 7590 09/30/2014 DICKSTEIN SHAPIRO LLP 1825 EYE STREET NW Washington, DC 20006-5403 EXAMINER COLLADO, CYNTHIA FRANCISCA ART UNIT PAPER NUMBER 3781 MAIL DATE DELIVERY MODE 09/30/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RICHARD SEBASTIAN HAWKSLEY WEBB ____________ Appeal 2012-008202 Application 12/096,546 Technology Center 3700 ____________ Before JENNIFER D. BAHR, JOHN C. KERINS, and STEFAN STAICOVICI, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Richard Sebastian Hawksley Webb (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1–3, 8–11, 16, 18–22, and 30–34. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellant’s invention is directed to a garment bag. Independent claim 1 is illustrative: 1. A garment bag for a collared shirt, the bag comprising a receptacle for receiving a first portion of the shirt including the collar, and a cover in the form of a sleeve with opposed Appeal 2012-008202 Application 12/096,546 2 front and rear faces for receiving a remainder of the shirt, the front and rear faces being adjoined to each other at longitudinal sides, wherein, when the cover of the garment bag is in position for receiving the shirt, the front face lies flat on the rear face and is able to be opened to reveal the rear face, the front and rear faces of the cover contacting the remainder of the shirt when the garment bag is in an unrolled position with the shirt inserted therein and the cover closed, and wherein, when the cover is rolled up around the receptacle, the receptacle is disposed within the rolled up cover and the front and rear faces of the cover maintain contact with the remainder of the shirt, the receptacle being of greater rigidity than the cover to provide a crush-resistant region for protecting the collar of the shirt. THE REJECTION The Examiner has rejected: (i) claims 1–3, 8–11, 16, 18–22, and 30–341 under 35 U.S.C. § 103(a) as being unpatentable over Wehrley (US Des. 336,988, issued July 6, 1993); and (ii) claims 8, 11, and 30–33 under 35 U.S.C. § 103(a) as being unpatentable over Wehrley in view of Doud (US 1,641,747, issued Sept. 6, 1927). ANALYSIS Claims 1–3, 8–11, 16, 18–22, and 30–34--Obviousness--Wehrley The Examiner maintains, inter alia, that Wehrley discloses a garment bag having a receptacle for receiving a first portion of a shirt including the 1 The rejection in the Examiner’s Answer includes reference to claim 7 as being subject to this rejection, however claim 7 is canceled. In addition the statement of the ground of rejection does not identify claim 34 as being rejected, however, the body of the rejection addresses claim 34. Appeal 2012-008202 Application 12/096,546 3 collar, and a cover for receiving the remainder of the shirt, and that the receptacle is of greater rigidity than the cover to provide crush resistance for protecting the collar. Ans. 5–6. Appellant disputes these findings, noting that, due to the configuration of the Wehrley garment bag, a shirt could not be simultaneously received in the front pocket said by the Examiner to meet the claimed receptacle, and in the cover portion of the bag. Appeal Br. 6–7. Appellant notes that, in particular, the location of the front flap being interposed between the front pocket and cover portion prevents such operability. Id. Additionally, Appellant maintains that the Examiner has not established that the front pocket of the Wehrley garment bag is of any greater rigidity than the cover, nor that the front pocket would provide crush resistance to protect a collar residing therein. Appeal Br. 10; Reply Br. 8. Appellant points out that the Examiner’s reliance on Figure 5 of Wehrley as evidencing these properties is misplaced, in that the front pocket of the rolled up garment bag shown in that Figure has a briefcase or similar object inserted in the pocket, which itself appears to be the reason that the front pocket retains its shape. Appeal Br. 10. In any event, according to Appellant, Wehrley is a design patent lacking in any textual description of the properties of the front pouch, and Appellant maintains that such properties or features cannot be inferred from the drawings. Reply Br. 8. Appellant further notes that, although the Examiner attempts to defend the position that the front pocket of Wehrley is crush-resistant to some extent, no reasoning is provided as to how it can be determined that the front pocket is of a greater rigidity than the cover portion of the garment bag. Id. Appeal 2012-008202 Application 12/096,546 4 As to the former argument, the Examiner replies that “[w]hen the user places the shirt into the receptacle portion below, the remainder of the shirt will be covered by the cover as shown in the [F]igure [presumably Figure 3 of Wehrley] below.” Ans. 10. Our review of Figure 4 leads us to conclude that Appellant has the correct interpretation, not the Examiner. As to the latter argument, we agree with Appellant that the Examiner has not pointed to evidence or adequately articulated how the front pocket of Wehrley can be regarded as being of a greater rigidity than the cover portion, as required by claim 1. Accordingly, we do not sustain the rejection of claim 1 as being unpatentable over Wehrley. All of claims 2, 3, 8–11, 16, 18, 19–22, and 30– 34 require the same limitations, and the rejection of those claims as being unpatentable over Wehrley is also not sustained. Claims 8, 11, and 30–33 --Obviousness--Wehrley/Doud Claims 8, 11, and 30–33 require the same limitations as are set forth in claim 1 and discussed above. The Examiner does not rely on Doud to remedy the above-noted deficiencies in the Wehrley disclosure. The rejection of claims 8, 11, and 30–33 is thus not sustained for the reasons identified above. DECISION The rejection of claims 1–3, 8–11, 16, 18–22, and 30–34 as being unpatentable over Wehrley is reversed. Appeal 2012-008202 Application 12/096,546 5 The rejection of claims 8, 11, and 30–33 as being unpatentable over Wehrley in view of Doud is reversed. REVERSED hh