Ex Parte BollaDownload PDFPatent Trial and Appeal BoardMar 29, 201613025494 (P.T.A.B. Mar. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/025,494 02/11/2011 24335 7590 03/31/2016 WARNER NORCROSS & JUDD LLP INTELLECTUAL PROPERTY GROUP 900 FIFTH THIRD CENTER 111 LYON STREET, N.W. GRAND RAPIDS, MI 49503-2487 FIRST NAMED INVENTOR Leela R. Bolla 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. 122934.141964-US 2792 EXAMINER COLLINS, ANDREW WARREN ART UNIT PAPER NUMBER 3765 NOTIFICATION DATE DELIVERY MODE 03/31/2016 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): patents@wnj.com ckleinheksel@wnj.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LEELA R. BOLLA Appeal2014-000888 Application 13/025,494 Technology Center 3700 Before JOHN C. KERINS, LEE L. STEPINA, and FREDERICK C. LANEY, Administrative Patent Judges. LANEY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Leela R. Bolla (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner's Final decision rejecting claims 1-15, and 17-20. 1 We have jurisdiction over this appeal under 35 U.S.C. § 6(b ). SUMMARY OF DECISION We AFFIRM. Claim 16 has been canceled. Appeal Br. 4. Appeal2014-000888 Application 13/025,494 INVENTION Appellant's invention relates "to garments worn by medical patients, and more particularly to garments worn by medical patients in hospitals, clinics and other treatment facilities." Spec. i-f 1. Claims 1, 8 and 1 7 are independent claims. Claim 8 is representative of the claimed invention and reads as follows: 8. A hospital gown comprising: a back panel including a back top edge, a back bottom edge, a back left edge and a back right edge; a front panel including a front top edge, a front bottom edge, a front left edge and a front right edge, the front panel defining a generally vertical opening between the left front edge and the right front edge to define a left front panel and a right front panel, the left front panel being detachably joined to the back panel along the front left edge and the right front panel being detachably joined to the back panel along the front right edge;and left and right shoulder panels each including a front edge detachably joined to the front panel and including a back edge joined to the back panel, wherein the left and right shoulder panels, the front panel and the back panel cooperatively define left and right arm openings and wherein the left and right shoulder panels and the back panel cooperatively define a neck openmg, wherein the left and right front panels are individually removable from the left and right shoulder panels and the back panel to permit access to the patient's body. REJECTIONS I. The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as unpatentable over Shah (US 5,440,763, issued Aug. 15, 1995). 2 Appeal2014-000888 Application 13/025,494 IL The Examiner rejected claims 1--4, 6, 7, 9-13, 15, and 17-19 under 35 U.S.C. § 103(a) as unpatentable over Shah, and Blackshear (US 5,956,763, issued Sep. 28, 1999). III. The Examiner rejected claims 5, 14, and 20 under 35 U.S.C. § 103(a) as unpatentable over Shah, Blackshear, and Shamam (US 6,484,321 Bl, issued Nov. 26, 2002). ANALYSIS Rejection I Appellant argues that the rejection of claim 8 "should be reversed because Shah does not disclose, teach or suggest a left front panel detachably joined to a back panel along a left front edge and a right front panel detachably joined to a back panel along a right edge, wherein the left and right front panels are individually removable from the back panel to permit access to the patient's body." Appeal Br. 10. Appellant points to the seams in Shah's gown connecting the left and right front panels along the respective edges to the back panels, and argue the Examiner has failed to articulate a reason with a rational underpinning as to why one of skill in the art would modify the seamed connection to a snapped connection, or some other detachably joined connection. Appeal Br. 10-11. According to Appellant, because the lower portions 32, 36 of the gown in Shah can be maneuvered to the side, there can be no motivation, other than hindsight reasoning, to modify the seam 19 to have a detachably joined connection and, thus, allowing the front and left panels to be individually removable. Appeal Br. 11. 3 Appeal2014-000888 Application 13/025,494 We are not persuaded the Examiner erred. The Examiner finds "the structure described by the current application with regards to left and right front and back edges that are removably attachable to one another is well- known in the art of medical gowns." Final Act. 4. As evidence of this fact, the Examiner cites to U.S. Patent No. 5,991,923 disclosing snaps, and other mechanical fasteners, being used to detachably connect the same respective edges of the left and right front panels to the back of a medical gown. Id. at 5. The Examiner concludes it would have been obvious to substitute the seam connection of Shah with a snap connection because those connections were recognized equivalents for mechanically connecting parts of a medical gown together. Id. at 4--5.2 We find the above reasoning by the Examiner is sufficient to establish a prima facie case of obviousness. Because the Examiner has shown it was known to form a gown using a front left and right panel connected to a back panel using both a seamed connection and releasable connection, it would have been prima facie obvious to substitute one method for the other. In re Fout, 675 F.2d 297, 301 (Fed. Cir. 1982) ("Because both Pagliaro and Waterman teach a method for separating caffeine from oil, it would have 2 The Examiner also finds the broadest reasonable interpretation of "detachably joined" includes a seamed connection. Final Act. 4. We do not agree. The Specification makes a distinction between "fixedly joined" and "removably joined." Spec. i-f 21. "Fixedly joined" is described as a connection that is sewn together; whereas, "removably joined" is described as a connection using ties, snaps, hooks and loop connectors. Id. Consistent with Appellant's Specification, Shah likewise distinguishes between releasable connections and sewn connections. See 3:35---60. Therefore, we do not agree it is reasonable to interpret "detachably joined" to include a seamed connection. We, however, find the Examiner's alternative analysis is not corrupted by this error. 4 Appeal2014-000888 Application 13/025,494 been prima facie obvious to substitute one method for the other."). "Express suggestion to substitute one equivalent for another need not be present to render such substitution obvious." Id. Appellant notably has not presented any persuasive arguments relying on evidence in the record, nor has Appellant offered any evidentiary affidavits or declarations, challenging the Examiner's finding that using snaps are a known alternative to using seams to connect the left and right edges of front panels to the back of a medical gown. Therefore, we are not apprised of an error in the Examiner's obviousness reasoning and we sustain the rejection. Rejection II Appellant groups claims 1--4, 6, 7, 9-13, 15, and 17-19. Appeal Br. 12-15. Therefore, we select claim 1 to decide the appeal of the obviousness rejection of these claims, with claims 2--4, 6, 7, 9-13, 15, and 17-19 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). Appellant incorporates the arguments presented and discussed above (see supra, Rejection I), with respect to claim 8. Appeal Br. 13. We remain unpersuaded. Appellant also challenge the Examiner's reliance on the combination of Shah and Blackshear to demonstrate the claimed gown with an apron adapted to extend over at least a portion of the left and right front panels. Appeal Br. 13-14. Appellant does not challenge whether the combination discloses all of the claimed elements. Acknowledging the Examiner concludes that incorporating the apron on Blackshear with the modified gown of Shah would have been obvious "to protect the wearer's hospital gown from soiling or other damage while wearing the apron," Appellant 5 Appeal2014-000888 Application 13/025,494 asserts the motivation the Examiner articulates is improper. Id. (quoting Final Act. 6). Specifically, Appellant argues Blackshear is non-analogous art and "the asserted motivation presupposes a problem in need of a solution." Appellant's contentions are unpersuasive. Blackshear is analogous art. At a minimum, Blackshear is reasonably pertinent to a problem facing the Appellant because "it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem." Innovention Toys, LLC v. MGA Entm 't, Inc., 637 F.3d 1314, 1321 (Fed.Cir.2011) (citation omitted). As the Examiner finds, "[a]prons are commonly known to provide protection to a wearer against spillage of items and it would be reasonable ... to assume this usage as the purpose of [A]ppellant's apron absent any disclosure to the contrary." Ans. 12. Appellant does not dispute this common sense fact or offer any evidence to undermine the rationale. "If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection." Innovention Toys, 637 F.3d at 1321. Appellant contends Blackshear's purpose is limited to protecting against spills occurring while traveling in an automobile. Appeal Br. 14. That characterization is too limiting. Blackshear expressly teaches more broadly the purpose of the apron as protecting a garment from being soiled "in many different situations," thereby indicating it would be improper to limit its purpose as Appellant attempts to do. Blackshear 2:43- 44. Properly described, the purpose described in Blackshear is to protect a garment from being soiled or damaged accidentally. Given that both 6 Appeal2014-000888 Application 13/025,494 Blackshear and the claimed invention are directed to the same purpose of using an apron to protect a garment from being soiled accidently, we do not find the Examiner erred by relying on Blackshear. Likewise, we do not find the articulated reason for combining Shah with Blackshear is inadequate. A person of ordinary skill is not an automaton, but a person of ordinary creativity. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). As such, a proper obviousness analysis does not require the Examiner to "seek out precise teachings directed to the specific subject matter of the challenged claim, for [an Examiner] can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418. Common sense and knowledge also cannot be dismissed because it teaches "that familiar items may have obvious uses beyond their primary purposes." Id. at 420. Thus, Appellant's reliance on Blackshear' s statement of a preferred use (i.e., protecting a garment from accidentally getting soiled while driving) does not persuasively demonstrate a skilled artisan would not recognize its application in a hospital environment to serve the same purpose of protecting a hospital gown from being accidently soiled. Moreover, we do not find fault with the fact that the Examiner did not point to anything within Shah that specifically stated there was a need to protect a hospital gown from being soiled. When an Examiner relies on what the prior art suggests to a skilled artisan, "the 'evidence' of motive will likely consist of an explanation of the well-known principle or problem- solving strategy to be applied." DyStar Textilfarben GmbH & Co. v. C.H. Patrick Co., 464 F.3d 1356, 1366 (Fed. Cir. 2006). So long as the explanation has a rational underpinning, the Examiner has made a prima 7 Appeal2014-000888 Application 13/025,494 facie case of obviousness. An Applicant, of course, is able to offer evidence and/or argument in rebuttal to demonstrate the Examiner's explanation is flawed or outweighed by other indicators of non-obviousness. In this case, the Examiner identifies that the reason a skilled artisan would be motivated to utilize the apron of Blackshear with the gown of Shah is "in order to protect the wearer's hospital gown from soiling or other damage while wearing the apron." Final Act. 6. We find this to be a common sense and/or common knowledge suggestion derived from the fact that a person wearing a garment (including a hospital gown) may accidentally soil their garment while performing tasks, such as eating (especially when the patient is required to stay in hospital for an extended period of time). It is a common everyday life experience, which is neither technical in nature, nor specific to any particular field. As such, a rational underpinning supports the Examiner's explanation. By explaining the well- known principle with a rational underpinning that garments may accidently get soiled by patients, for which Blackshear provides an obvious solution, the Examiner has established a prima facie case. Tellingly, Appellant does not allege to have "discovered" a new problem with hospital gowns getting soiled, nor do they offer any persuasive evidence undermining the Examiner's common sense premise that hospital gowns may accidentally get soiled. Appellant also does not refute the Examiner's finding that Blackshear suggests combing the apron with any garment needing protection, which provides a further reason a skilled artisan would have known to use the Blackshear garment with the Shah gown. Ans. 10. As such, Appellant has not rebutted the Examiner's prima facie case of obviousness. Because Appellant has not persuaded us the Examiner's 8 Appeal2014-000888 Application 13/025,494 obviousness analysis was flawed, we sustain the Examiner's rejection of claim 1. Therefore, for the same reasons, we also sustain the Examiner obviousness rejection of claims 2--4, 6, 7, 9-13, 15, and 17-19. Rejection III Regarding the Examiner's obviousness rejection of claims 5, 14, and 20, Appellant relies on the arguments raised for claims 1 and 8, moreover, Appellant argues that Shamam does not cure the alleged deficiencies with those rejections. Appeal Br. 15-16. Because we remain unpersuaded the Examiner's obviousness rejections suffers from the deficiencies Appellant alleges regarding claims 1 and 8, we also sustain the Examiner's obviousness rejection of claims 5, 14, and 20. SUMMARY The Examiner's decision to reject claims 1-15, and 17-20 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)(l )(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation