Jacqueline G. Popelier et al.

Patent Trials and Appeals BoardAug 29, 2019

14135797 - (D) (P.T.A.B. Aug. 29, 2019)

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. 14/135,797 12/20/2013 Jacqueline G. Popelier 16527-000001 5082 27572 7590 08/29/2019 Harness Dickey (Troy) P.O. BOX 828 BLOOMFIELD HILLS, MI 48303 EXAMINER ALLRED, DAVID E ART UNIT PAPER NUMBER 3636 NOTIFICATION DATE DELIVERY MODE 08/29/2019 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): sto-ptomail@hdp.com troymailroom@hdp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JACQUELINE G. POPELIER and MATTHEW M. WINNINGHAM ____________________ Appeal 2017-008956 Application 14/135,797 Technology Center 3600 ____________________ Before CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and JEREMY M. PLENZLER, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jacqueline G. Popelier and Matthew M. Winningham (“Appellants”)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1, 2, 4, 7–11, 13, and 17–21.2 An oral hearing was held on August 8, 2019. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify the real party in interest as Jacqueline G. Popelier. Appeal Br. 3. 2 Claims 3 and 5 are cancelled, and claims 6, 12, and 14–16 are withdrawn. Appeal Br. 25–28 (Claims App.). Appeal 2017-008956 Application 14/135,797 2 THE CLAIMED SUBJECT MATTER Claims 1 and 17 are independent. Claim 1 is reproduced below. 1. A case for use with a collapsible chair having legs, a seat and a back, the chair being foldable to an unfolded configuration to provide a seat for a user and folded to a collapsed configuration, said case comprising: a shell configured as a poncho to be worn by a user; at least one securing device extending transversely about the poncho for removably securing the poncho to the chair when the chair is in the collapsed configuration; and a carrying strap; wherein the poncho can be removed from the chair and worn by the user while being seated in the chair, with the carrying strap being used to carry the chair when the chair is inside the poncho in the collapsed configuration. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: THE REJECTIONS I. Claims 1, 2, 4, 7–10, 13, and 17–21 stand rejected under 35 U.S.C. § 103 as unpatentable over Eckman and Love. Final Act. 5–11. II. Claim 11 stands rejected under 35 U.S.C. § 103 as unpatentable over Eckman, Love, and Aliff. Id. at 11–12. Aliff Love Eckman US 6,243,873 B1 US 6,353,933 B1 US 2012/0313405 A1 June 12, 2001 Mar. 12, 2002 Dec. 13, 2012 Appeal 2017-008956 Application 14/135,797 3 OPINION Rejection I Claims 1, 2, 4, 8, 18, and 19 With respect to independent claim 1, the Examiner finds that Eckman teaches “a case for stowing a portable and collapsible seat, the case comprising a protective covering used to protect a user from the cold and weather, but lacks the specifics of the shell configured as a poncho.” Final Act. 5. The Examiner finds that Love teaches “a protective covering associated with a portable seat, the protective covering is a poncho configured to protect a user from the cold and weather and including a hood.” Id. The Examiner concludes that it would have been obvious “to make the protective coating of Eckman to be a poncho, as taught by Love, because doing so would provide the benefit of enabling the user to wear the poncho to more completely protect against the cold and/or bad weather.” Id. at 5–6. Appellants assert that “there has been a long felt but unfulfilled need for the present invention.” Appeal Br. 15. Establishing long-felt need requires objective evidence that an art-recognized problem existed in the art for a long period of time without solution. In particular, evidence of three elements is considered in assessing whether long-felt need is relevant to the issue of obviousness. First, the need must have been a persistent one that was recognized by those of ordinary skill in the art. Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1382 (Fed. Cir. 1983); see also In re Gershon, 372 F.2d 535, 539 (CCPA 1967). Second, the long- felt need must not have been satisfied by another before the invention by applicant. See Newell Co. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. Appeal 2017-008956 Application 14/135,797 4 1988) (“[O]nce another supplied the key element, there was no long-felt need or, indeed, a problem to be solved . . . .”). Third, the invention must in fact satisfy the long-felt need. See In re Cavanagh, 436 F.2d 491, 496 (CCPA 1971). “[L]ong-felt need is analyzed as of the date of an articulated identified problem and evidence of efforts to solve that problem.” Texas Instruments, Inc. v. ITC, 988 F.2d 1165, 1178 (Fed. Cir. 1993). Appellants provide anecdotal evidence of a need for ensuring appropriate weather gear at outdoor sporting events (Appeal Br. 15) and point out the availability of “alternative designs for collapsible chairs,” none of which “disclose the use of a dual purpose poncho for covering the chair and for use to protect the user from inclement weather” (id. at 16). Appellants, however, do not point to any objective evidence in the record before us that establishes the existence of a problem which was of concern in the industry and has remained unsolved over a long period of time. See Vandenberg v. Dairy Equip. Co., 740 F.2d 1560, 1567 (Fed. Cir. 1984). This can be accomplished, for example, by the testimony of experts in the industry, or publications and the like, which speak to the duration and extent of the problem, and of the substantial effort and resources which had been expended during that time in attempts to solve the problem. See Railroad Dynamics, Inc. v. Stuki Co., 579 F. Supp. 353, 363 (E.D. Pa. 1983), aff'd 727 F.2d 1506 (Fed. Cir. 1984). Appellants also fail to point to evidence in the record before us that establishes that the contributions of others to the art (such as Eckman’s extendable blanket or Love’s poncho) do not satisfy the asserted needs. Nor do Appellants point to evidence in the record before us that establishes that their claimed invention, in fact, satisfies such needs. Once the long-felt need Appeal 2017-008956 Application 14/135,797 5 has been established, it must further be shown that the invention satisfied that need. See Cavanagh, 436 F.2d at 496. This can be demonstrated, for example, by evidence establishing commercial success and that the industry purchased the claimed invention because it satisfied the long-felt need. See W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1555 (Fed. Cir. 1983). As such, Appellants have failed to provide objective evidence sufficient to establish the existence of a long-felt need. Appellants also argue that “[t]he availability of so many alternative designs for collapsible chairs,” none of which disclose “a dual purpose poncho for covering the chair and for use to protect the user from inclement weather when the poncho is removed from the chair,” “is strong evidence of non-obviousness.” Appeal Br. 16 (citing Insite Vision, Inc. v. Sandoz, Inc., 783 F.3d 853 (Fed. Cir. 2015) (boldface omitted). Similar to when the age of a cited reference is argued, “absent evidence that, notwithstanding the knowledge of the references, the art tried and failed to solve the problem,” we do not view the sheer number of prior art references failing to disclose a poncho to be persuasive of the unobviousness of the Examiner’s modification of the reference. In re Wright, 569 F.2d 1124, 1127 (CCPA 1977). As explained above, Appellants have provided no objective evidence of the duration and extent of the problem, that the problem was not already satisfied by others, or that the invention indeed solves the problem. Appellants also argue that, absent hindsight, “there is simply no motivation to use Love’s structure with Eckman’s collapsible chair.” Appeal Br. 17. The Examiner has provided a reason with rational underpinning to modify Eckman’s protective covering so as to be a poncho—i.e., “to more completely protect against the cold and/or bad Appeal 2017-008956 Application 14/135,797 6 weather.” Final Act. 6; see also Ans. 4 (“[T]he blanket of Eckman is worn by the seat occupant to cover the occupant’s legs (see for example, Figure 10 of Eckman) such that it actually serves as a garment to protect the seat occupant from cold or inclement weather[, and] . . . it would have been obvious to make the garment of Eckman to be a poncho or to include a poncho to cover and protect more of the occupant’s body from the cold and inclement weather.”); and In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). Although Appellants contend that the Examiner has engaged in hindsight reconstruction, Appellants do not persuasively argue that the Examiner’s reasoning lacks rational underpinnings. See In re Cree, Inc., 818 F.3d 694, 702 n.3 (Fed. Cir. 2016) (viewing an “impermissible hindsight” argument as “essentially a repackaging of the argument that there was insufficient evidence of a motivation to combine the references”). Moreover, in support of a hindsight argument, Appellant does not identify any knowledge relied upon by the Examiner that was gleaned only from Appellants’ disclosure and was not otherwise within the level of ordinary skill in the art at the time of the invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (“Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include Appeal 2017-008956 Application 14/135,797 7 knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.”). Appellants also argue that “Love specifically already provides something to sit on.” Appeal Br. 17. Appellants’ argument suggests why one of ordinary skill in the art would not have been motivated to modify Love (e.g., so as to also provide Eckman’s chair). The Examiner’s rejection, however, is based on the modification of Eckman with the teachings of Love, not on the modification of Love with the teachings of Eckman. Accordingly, Appellants’ argument is not persuasive of unobviousness. Appellants also argue that “there is absolutely no need or suggestion for incorporating a ‘securing device’ and ‘carrying strap’ on well-known ponchos since there is no need for them in the prior art.” Appeal Br. 17. The Examiner responds that Eckman’s garment/case has a securing device (element 142) and a carrying strap (element 116) and that “even when the garment/case of Eckman has been modified to be a poncho, it still includes the securing device and the carrying strap, or it would have been obvious to retain these features in the modified version of the garment of Eckman for their respective benefits.” Ans. 6. We do not find Appellants’ argument persuasive because it does not address the Examiner’s rejection as articulated, which does not rely on modifying a poncho to have a securing device or carrying strap, but rather on modifying Eckman’s case/garment (which already has such a securing device and carrying strap) so as to be a poncho. For the foregoing reasons, Appellants do not apprise us of error in the Examiner’s conclusion that the combination of Eckman and Love renders obvious the subject matter of claim 1. We sustain the rejection of claim 1 Appeal 2017-008956 Application 14/135,797 8 under 35 U.S.C. § 103 as unpatentable over Eckman and Love. Appellants rely on the same arguments and reasoning we found unpersuasive in connection with independent claim 1 as the basis for seeking the reversal of claims 2, 4, 8, 18, and 19. Appeal Br. 15–17, 20. Accordingly, we also sustain the rejection of claims 2, 4, 8, 18, and 19 under 35 U.S.C. § 103 as unpatentable over Eckman and Love. Claims 7 and 9 Claim 7 recites that “a front side and a back side of the poncho are configured to be folded around the collapsed chair,” and claim 9 recites that “a front side and a back side of the poncho are configured to be folded twice inwardly to surround the collapsed chair.” Appeal Br. 26 (Claims App.). Appellants argue that “the bag 100 of Eckman (with the blanket inside) is slipped over the top of the chair and not ‘wrapped around’ the chair as claimed.” Id. at 19. The Examiner responds that the poncho of Eckman/Love “is folded such that a front side and a back side of the poncho is around the collapsed chair, as shown in Figures 7–9 of Eckman.” Ans. 8. The Examiner further responds that “Love shows in Figures 2–4 the poncho folded inwardly twice.” Id. Appellants do not address the Examiner’s findings and conclusions with sufficient particularity to identify any error in them. For the foregoing reasons, Appellants do not apprise us of error in the Examiner’s conclusion that the combination of Eckman and Love renders obvious the subject matter of claims 7 and 9. We sustain the rejection of claims 7 and 9 under 35 U.S.C. § 103 as unpatentable over Eckman and Love. Appeal 2017-008956 Application 14/135,797 9 Claim 10 Claim 10 recites that “[t]he case of claim 1 . . . further comprises a flexible basket on an inner wall of a front side or a back side of the poncho for receiving foot portions of a frame for the collapsed chair.” Appeal Br. 26 (Claims App.). The Examiner finds that “Love shows in Figures 1–4 a basket 30 attached to the front side or back side of the poncho” and concludes that it would have been obvious “to include the basket 30 of Love on the combination shell of Eckman and Love because doing so would provide the benefit of an integral storage compartment.” Final Act. 8. The Examiner determines that “the basket defined above is capable of the recited function. Id. The Examiner clarifies in the Answer that the Examiner is not equating the cushion [30] per se, but rather the stowage compartment structure comprising elements 37 [i.e., a cover] and 31 [i.e. a sheet] of element 30 [i.e., the cushion], which, although called a cushion in Love[’]s disclosure, comprises a stowage compartment comprising elements 37 and 31 for the cushioning material and the covering material or shell, as well as any other articles. Ans. 7 (citing Love 3:24–43). Appellants argue that the Examiner has failed to articulate a reason having rational underpinnings to explain why one of ordinary skill in the art would have been led to include Love’s cushion 30 in Eckman’s carrying bag. Reply Br. 6. We do not find this argument persuasive because Appellants do not persuasively argue that the Examiner’s reasoning to add a stowage compartment structure, such as that comprised of Love’s cover 37 and sheet 31—i.e., to provide an integral storage compartment for part of the chair or any other articles (Final Act. 8; Ans. 7)—lacks rational underpinnings. Appeal 2017-008956 Application 14/135,797 10 Appellants also argue that “even if there was such motivation, how would the cushion 30 of Love be situated on Eckman’s carrying bag to receive feet of the frame of the chair?” Reply Br. 6. Appellants assert that the Examiner is not properly considering the functional language of the claim. Id. at 3. We disagree. Although features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477–78 (Fed. Cir. 1997); see also Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (“[A]pparatus claims cover what a device is, not what a device does”). Therefore, the device of the prior art meets the recited functionally defined limitation (i.e., a case comprising a basket “for receiving foot portions of a frame for the collapsed chair”) if it is capable of the recited function. The prior art reference need not envision the device actually being used to perform the claimed function. See Schreiber, 128 F.3d at 1477 (“Although Schreiber is correct that [the prior art] Harz does not address the use of the disclosed structure to dispense popcorn, the absence of a disclosure relating to function does not defeat the Board’s finding of anticipation.”). “[C]hoosing to define an element functionally, i.e., by what it does, carries with it a risk.” Id. at 1478. This risk is that Appellant may bear the burden to prove that the prior art does not possess inherently the functional characteristic. See In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). The Examiner has pointed to Love’s teachings that sheet 31, attached to cover 37, includes fastener strips that “can be engaged together to fasten the sheet 31 when the poncho 20 is in the storage position inside of sheet 31 Appeal 2017-008956 Application 14/135,797 11 as depicted in FIG. 5” of Love. Love 3:31–42 (cited at Ans. 7). We view this as sufficient evidence to support the Examiner’s determination that Eckman’s modified case meets the recited functionally defined limitation. That the Examiner has not specified exactly how elements 31 and 37 of Love would be situated on modified Eckman’s case to receive feet of the frame of the chair (Reply Br. 6) is not factual evidence or persuasive technical reasoning as to why Eckman’s modified case is not capable of receiving foot portions of a frame for the collapsed chair. Thus, we do not find error in the Examiner’s position that Eckman’s modified case includes a stowage compartment that is capable of “receiving the foot portions of a frame for the collapsed chair.” Ans. 7–8; see also Final Act. 8 (“the basket [of Love] . . . is capable of the recited function.”). For the foregoing reasons, Appellants do not apprise us of error in the Examiner’s conclusion that the combination of Eckman and Love renders obvious the subject matter of claim 10. We sustain the rejection of claim 10 under 35 U.S.C. § 103 as unpatentable over Eckman and Love. Claims 13 and 17 Appellants assert that claims 13 and 17 “positively recite the chair as an element of the claims,” thereby further supporting error by the Examiner. Appeal Br. 17. The Examiner responds that “the modifications to provide a cover comprising a poncho in combination with a folding chair are clearly set forth together with the motivations for doing so.” Ans. 7. We agree with the Examiner that the positive recitation of a chair does not compel any different result than that outlined above in the analysis of claim 1. For the foregoing reasons, Appellants do not apprise us of error in the Examiner’s conclusion that the combination of Eckman and Love renders Appeal 2017-008956 Application 14/135,797 12 obvious the subject matter of claims 13 and 17. We sustain the rejection of claims 13 and 17 under 35 U.S.C. § 103 as unpatentable over Eckman and Love. Claim 20 Claim 20 recites the particularities of the poncho. Appeal Br. 29 (Claims App.). Appellants argue that “Eckman’s bag clearly does not meet these limitations and there is no motivation to completely reconstruct Eckman’s bag to make a poncho.” Id. at 20. The Examiner responds that “[t]his feature is considered to be met by the combination since the garment or shell of Eckman modified to cover the torso, shoulders and extend o[ver] the head as a ‘poncho’ taught by Love meets this recitation” and “[t]he combination is obvious for the motivation and benefits set forth in the statement of obviousness.” Ans. 9. Appellants do not address the Examiner’s findings and conclusions with sufficient particularity to identify any error in them. For the foregoing reasons, Appellants do not apprise us of error in the Examiner’s conclusion that the combination of Eckman and Love renders obvious the subject matter of claim 20. We sustain the rejection of claim 20 under 35 U.S.C. § 103 as unpatentable over Eckman and Love. Claim 21 Appellants assert that “[c]laim 21 calls for specific structural relationships between the securing device and the carrying strap on the poncho—limitations not found in the prior art.” Appeal Br. 18. The Examiner responds that “as set forth in the final rejection, the ‘carrying strap 116 runs perpendicular to securing device element 142, as shown in Figure 9 of Eckman, where the protective cover 100 of Eckman is modified to include Appeal 2017-008956 Application 14/135,797 13 a poncho, as taught by Love.” Ans. 7. Appellants do not address the Examiner’s findings with sufficient particularity to identify any error in the Examiner’s findings. For the foregoing reasons, Appellants do not apprise us of error in the Examiner’s conclusion that the combination of Eckman and Love renders obvious the subject matter of claim 21. We sustain the rejection of claim 21 under 35 U.S.C. § 103 as unpatentable over Eckman and Love. Rejection II Claim 11 recites that “the hood and a front side of the poncho have mating releasable fasteners that mate with each other to secure the hood about upper portions of the collapsed chair.” Appeal Br. 26 (Claims App.). According to the Examiner, although “Eckman and Love provide the shell as a poncho comprising a hood, [they] fail to disclose that the hood is attached by mating releasable fasteners.” Final Act. 11. The Examiner finds that Aliff teaches “a poncho similar to that of Love, and further shows the hood and front side of the poncho with mating releasable fasteners at 54 in Figure 5.” Id. The Examiner concludes that it would have been obvious “to provide the hood and front side of the poncho of the combination with releasable fasteners and a pouch for the hood, as taught by Aliff[,] because doing so would provide the benefit of releasably securing the hood in a stowed position within the pouch.” Id. at 11–12. In addition to relying on the same arguments we found unpersuasive in connection with independent claim 1 (Appeal Br. 22–23), Appellants also argue that “Aliff does not disclose or suggest use of releasable fasteners on the ‘hood’ and ‘a front side of the poncho’ to ‘secure the hood about the upper portions of the collapsed chair’ as called for in [c]laim 11” (id. at 21). Appeal 2017-008956 Application 14/135,797 14 The Examiner responds that “Aliff does provide a hood and a front side of the poncho with mating releasable fasteners at 54 in Figure 5” and “[i]t is noted that ‘a front side of the poncho’ is broad and can include an outer surface of a poncho, as taught by Aliff.” Ans. 9. The Examiner further responds that “Aliff teaches securing the hood in a pouch at an upper end or neck end of the poncho such that the combination of Aliff with the chair and poncho of Eckman and Love is capable of this functional phrase when the poncho is wrapped around the chair thusly in its stowed configuration.” Id. Appellants do not address the Examiner’s findings and conclusions with sufficient particularity to identify any error in the Examiner’s findings and conclusions. For the foregoing reasons, Appellants do not apprise us of error in the Examiner’s conclusion that the combination of Eckman, Love, and Aliff renders obvious the subject matter of claim 11. We sustain the rejection of claim 11 under 35 U.S.C. § 103 as unpatentable over Eckman, Love, and Aliff. DECISION The Examiner’s decision to reject claims 1, 2, 4, 7–10, 13, and 17–21 under 35 U.S.C. § 103 as unpatentable over Eckman and Love is affirmed. The Examiner’s decision to reject claim 11 under 35 U.S.C. § 103 as unpatentable over Eckman, Love, and Aliff is 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED