addidas AG

Patent Trials and Appeals Board

Mar 10, 2022

2021004777 (P.T.A.B. Mar. 10, 2022)

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. 15/094,056 04/08/2016 Chiara HERBENER 2483.2720000 4352 63504 7590 03/10/2022 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER SPATZ, ABBY M ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 03/10/2022 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): e-office@sternekessler.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHIARA HERBENER and IVAN MEJIA-DEVORA ____________ Appeal 2021-004777 Application 15/094,056 Technology Center 3700 ____________ Before JOHN C. KERINS, JILL D. HILL, and CYNTHIA L. MURPHY, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3, 4, 6, 8-12, 14, and 16-20, the only claims currently pending. We have jurisdiction under 35 U.S.C. § 6(b). A 1 The term “Appellant” is used herein to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies adidas AG as the real party in interest. Appeal Br. 1. Appeal 2021-004777 Application 15/094,056 2 video hearing was conducted on January 31, 2022, with Tyler Tassone, Esq., appearing on behalf of Appellant. We REVERSE and enter a NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b). THE CLAIMED SUBJECT MATTER Appellant’s invention is directed to a sports garment. Independent claim 1 is illustrative: 1. A sports garment, comprising: a pocket configured to be positioned over a side leg of a wearer of the sports garment, wherein the pocket comprises an upper end and a lower end opposite the upper end, wherein the lower end is arranged closer to a leg opening of the sports garment than the upper end, and wherein the lower end comprises an opening for bottom loading of the pocket, wherein a first border of the pocket is incorporated into a seam along a first cut line of the sports garment disposed on a side leg of the sports garment, and wherein a second border of the pocket is incorporated into a seam along a second cut line of the sports garment disposed on the side leg of the sports garment. THE REJECTIONS The Examiner has rejected: (i) claims 1, 3, 4, 6, 8-11, 14, and 16-20 under 35 U.S.C. § 103(a) as being unpatentable over Flanagan (US 2014/0143936 A1, published May 29, Appeal 2021-004777 Application 15/094,056 3 2014) in view of Kinsley (US 2015/0216345 A1, published Aug. 6, 2015); and (ii) claim 12 under 35 U.S.C. § 103(a) as being unpatentable over Flanagan in view of Kinsley and Amburgey (US 8,973,168 B2, issued Mar. 10, 2015). ANALYSIS Claims 1, 3, 4, 6, 8-11, 14, 16-20--35 U.S.C. § 103--Flanagan/Kinsley Claim 12--35 U.S.C. § 103--Flanagan/Kinsley/Amburgey These grounds of rejection are reversed, pro forma, in favor of the new ground of rejection set forth below. NEW GROUNDS OF REJECTION--§ 41.50(B) Claims 1 and 16--35 U.S.C. § 103--Kinsley/Flanagan Claims 1 and 16 are rejected under 35 U.S.C. § 103 as being unpatentable over Kinsley in view of Flanagan. This is a New Ground of Rejection pursuant to 37 C.F.R. § 41.50(b). This ground of rejection relies on the same two references as were cited in rejecting claims 1 and 16 in the Final Action, but employs Kinsley instead of Flanagan as the principal reference. In many, if not most, cases, the order in which prior art is applied in a rejection is not considered to be significant. See, e.g., In re Bush, 296 F.2d 491, 496 (CCPA 1961) (When a rejection is based on a combination of references, the order in which prior art references are cited to the Applicant is of no significance, but merely a matter of exposition). In our analysis below, however, the teachings of Kinsley are more clearly explained and applied to Appellant’s claim Appeal 2021-004777 Application 15/094,056 4 language, and the reasons for modifying Kinsley in view of Flanagan differs from those advanced in the Final Action. For those reasons, the below rejection is denominated as a new ground of rejection. Relative to claim 1, Kinsley discloses: a sports garment having a pocket (12, Fig. 1) configured to be positioned over a side leg of a wearer of the sports garment; wherein the pocket comprises an upper end (at waistband 14) and a lower end (16) opposite the upper end; wherein the lower end (16) is arranged closer to a leg opening of the sports garment than the upper end (at 14); wherein a first border (18) of the pocket (12) is incorporated into a seam along a first cut line of the sports garment disposed on a side leg of the sports garment (first cut line extending along vertical length of garment from top to bottom, co-linearly with first border 18, Fig. 1; see also Claim 10), and wherein a second border (20) of the pocket (12)is incorporated into a seam along a second cut line of the sports garment disposed on the side leg of the sports garment (second cut line extending along vertical length of garment from top to bottom, co-linearly with second border 20, Fig. 1; see also Claim 10). In view of the recitations in claim 10 of Kinsley, the vertical lines illustrated in Figure 1 and other figures are “cut lines” as defined in Appellant’s Specification.2 Claim 10 recites and discloses a pair of athletic pants having “a first panel of material having a front, back, and top and located at one of the hips,” “a pocket sewn into the first panel of material 2 “A cut line as understood in the present application is not necessarily a seam but more broadly any line or plane of contact between two parts of the sports garment, wherein the parts are connected by suitable connecting means. . . . Suitable connecting means . . . are those means known in the art for connecting fabric, for example, sewing, gluing or welding.” Spec. ¶ 23. Appeal 2021-004777 Application 15/094,056 5 and accessible through [an] aperture,” “a second panel of material having a top and sewn onto the front of the first panel of material and configured to form a front of a first leg,” and “a third panel of material having a top and sewn onto the back of the first panel of material and configured to form a back of a first leg.” Kinsley, claim 10. This recited construction comports with the side view of Figure 1, reproduced below with our annotations identifying the pocket and the three panels joined at the cut lines represented by the vertical lines in the figure. Depicted above is an annotated version of Figure 1 of Kinsley, which illustrates a side of a pair of athletic shorts. Regarding the limitations in claim 1 requiring the first and second borders of the pocket being incorporated into seams along first and second Appeal 2021-004777 Application 15/094,056 6 cut lines, respectively, Figure 1 above shows that the first and second borders (18, 20) of the Kinsley pocket are coextensive with the width of main (first) panel 22, and the sewing of the second panel and third panel to the first panel along vertical seams, also would incorporate the side borders of the pocket into those seams. See also, Kinsley ¶ 13 (“[t]he carrying panel (12) . . . is stitched or seamed along its left outer periphery (18) and right outer periphery (20).”)3 To the extent that it might be argued that a person of ordinary skill in the art would not consider Kinsley as disclosing or suggesting incorporating the side borders of the pocket into seams extending along the cut lines, Flanagan discloses several embodiments of sports garments, and discloses, with respect to at least several of these embodiments, that a compartment (pocket) may be coupled to the garment at secured edges that are fixedly connected to the garment by “being sewn onto [or] sewn into” the garment. See, e.g., Flanagan ¶ 90. It would therefore have been obvious to have modified Kinsley (if even necessary) to sew the outer peripheries or borders (18, 20) of the pocket into the disclosed seams at the cut lines given that the borders are coextensive with the cut lines, as a use of a known technique to improve a similar article in the same way, and/or as being one of a finite 3 Although not relied on in any way in this rejection, we note that the record (Image File Wrapper) in the Kinsley application (S.N. 14/506,603, filed Oct. 4, 2014), as well as in a related provisional application (S.N. 61/887,392, filed Oct. 6, 2013), includes appendices containing photographs of an actual pair of athletic shorts depicting a side pocket of the type shown in Figure 1 of Kinsley whose sides are incorporated into a seam joining cut lines in the same manner as seen in Figure 1. These are not relied on in the rejection, in that the possible status of these appendices as prior art citable against Appellant’s claims has yet to be determined. Appeal 2021-004777 Application 15/094,056 7 number of obvious choices as to how to secure the pocket to the garment that has a reasonable expectation of success. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Kinsley does not disclose the limitation in claim 1 requiring that the lower end of the pocket comprises an opening for bottom loading of the pocket. Instead, it appears that Kinsley discloses only an opening for top loading of the pocket. Among Flanagan’s several sports garment embodiments, Flanagan discloses pockets having openings allowing for only bottom loading (see, e.g., Fig. 6A and ¶ 77 “unsecured edge 526”), and both top and bottom loading (Fig. 7 and ¶¶ 85-90, “compartment 622 may be coupled to article 640 . . . leaving both the top edge 624 and bottom edge 626 of compartment 622 unsecured, allowing for clearance to insert one or more balls and/or other items from either the top edge 624 and the bottom edge 626”). It therefore would have been obvious to have modified Kinsley so as to have an opening for bottom loading, either in addition to, or in place of, its disclosed opening for top loading, which is seen as a use of a known technique to improve a similar article in the same way, and/or as being one of a finite number of obvious choices as to how to secure the pocket to the garment that has a reasonable expectation of success, and/or an obvious design choice, in view of Flanagan’s implicit disclosure that it may be desired to have a bottom opening in certain applications, or both top and bottom openings as an alternative. Claim 16 recites essentially the same limitations set forth in claim 1 in all material respects, and is also rejected as being unpatentable over Kinsley and Flanagan for the reasons set forth above. Appeal 2021-004777 Application 15/094,056 8 We note that the Board enters any new ground of rejection at its discretion, and no inference should be drawn from a failure to exercise that discretion with respect to claims 3, 4, 6, 8-12, 14, and 17-20 in the present appeal. See 37 C.F.R. § 41.50(b); see also Manual of Patent Examining Procedure (MPEP) § 1213.02 (8th ed., rev. 9, August 2012). We leave it to the Examiner, upon further prosecution, to determine whether it is appropriate to reject other claims as unpatentable over Kinsley and Flanagan, by themselves or in combination with other references. CONCLUSION The rejections of claims 1, 3, 4, 6, 8-12, 14, and 16-20 under 35 U.S.C. § 103 are REVERSED, pro forma. Claims 1 and 16 are rejected under 35 U.S.C. § 103 as being unpatentable over Kinsley in view of Flanagan. This rejection is a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of 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 Appeal 2021-004777 Application 15/094,056 9 remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § References/Basis Affirmed Reversed New Ground 1, 3, 4, 6, 8-11, 14, 16-20 103 Flanagan, Kinsley 1, 3, 4, 6, 8-11, 14, 16-20 12 103 Flanagan, Kinsley, Amburgey 12 1, 16 103 Kinsley, Flanagan 1, 16 Overall Outcome 1, 3, 4, 6, 8-12, 14, 16-20. 1, 16 Appeal 2021-004777 Application 15/094,056 10 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REVERSED; 37 C.F.R. § 41.50(b)