Ex Parte Bolla

Patent Trial and Appeal Board

Mar 29, 2016

13025494 (P.T.A.B. Mar. 29, 2016)

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).
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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.
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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.
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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
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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
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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
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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
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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
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