Ex Parte Gold et al

Patent Trials and Appeals Board

Apr 25, 2019

11090808 - (D) (P.T.A.B. Apr. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/090,808 03/25/2005 Katherine Gold
46764 7590 04/29/2019
REILLY INTELLECTUAL PROPERTY LAW FIRM
1888 Sherman Street, Suite 200
DENVER, CO 80203
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.
6010-P-7 9633
EXAMINER
VANTERPOOL, LESTER L
ART UNIT PAPER NUMBER
3734
NOTIFICATION DATE DELIVERY MODE
04/29/2019 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):
reilly@iplawdenver.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KATHERINE GOLD and LYNN ROSEN
Appeal2017-002053
Application 11/090,808
Technology Center 3700
Before MICHAEL L. HOELTER, MICHAEL J. FITZPATRICK, and
JEREMY M. PLENZLER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Decision rejecting claims 38-58. An oral hearing was held on
March 14, 2019, and a transcript of that hearing is included in the record
("Transcript"). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2017-002053
Application 11/090,808
CLAIMED SUBJECT MATTER
Claims 38, 44, 50, 56, 57, and 58 are independent. Claims 39--43
depend from claim 38, claims 45--49 depend from claim 44, and claims 51-
55 depend from claim 50. Claim 38 is reproduced below:
38. A harness for a child comprising:
(a) a novelty character containing a body portion forming
the novelty character, said body portion comprising: a plurality
of limbs, a head, a facial feature, and a storage portion allowing
the child to insert an object into the storage portion;
(b) a set of harness straps for securing the harness to the
child; said straps containing at least one attachment mechanism
for mounting the harness to the child;
( c) a tether releasably interconnected to said harness for
controlling the child's movements; and
( d) a tether link and a tether hook; said tether link
interconnected to said harness; said tether hook attachable to
said tether link for securing a proximal portion of the tether to
said harness.
REJECTIONS
1. Claims 38--41, 44, 46, 47, 50, 52, 53, and 57 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Hasas (US Des. 422,404, issued
Apr. 11, 2000) and Niwa (JP 10117897 A).
2. Claims 38, 44, 50, and 57 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over O'Donnell (US 4,662,550, issued May 5, 1987),
Hasas, and Niwa.
3. Claims 42, 43, 45, 48, 49, 51, 54, and 55 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Hasas, Niwa, and Nunn (US
2,212,746, issued Aug. 27, 1940).
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4. Claim 56 and 58 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hasas, Niwa, and Kaufmann (US 5,638,772, issued June
17, 1997).
OPINION
Claims 38~1. 44, 46, 47, 50, 52, 53, and 57
Appellants argue claims 38, 44, 50, and 57 as a group. Appeal Br.
12-18. We select claim 38 as representative. Claims 44, 50, and 57 stand or
fall with claim 38. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner provides two separate "interpretations" of the
combined teachings of Hasas and Niwa, one where the apparatus of Hasas is
modified in view of the teachings from Niwa ("interpretation 1," Appeal Br.
2--4) and another where the apparatus of Niwa is modified in view of the
teachings from Hasas ("interpretation 2," id. at 4--5). We focus our
discussion on interpretation 2.
The Examiner finds, for example, that Niwa teaches the majority of
the features recited in claim 38, but acknowledges that "Niwa fails to
disclose (a) the body portion forming a novelty character ... comprising: a
plurality of limbs, a head, and a facial feature; and (b) the harness straps
having at least one attachment mechanism for mounting the harness to the
child." Final Act. 4--5. The Examiner finds that "Hasas ... teaches that it
was already known in the art for a knapsack body like that of Niwa to form a
novelty character including a plurality of limbs, a head, and a facial feature"
and "teaches that it was already known in the art for a harness like that of
Niwa to include a waist belt with a belt buckle attachment mechanism for
mounting the harness to the child." Id. at 5.
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With respect to the character features, the Examiner reasons that "it
would have been obvious ... to have either added the novelty/animal
character features of Hasas to the body of Niwa, or to have simply replaced
the entire Niwa body with that of Hasas ... to make the Niwa knapsack
more aesthetically pleasing and fun to children." Final Act. 5. As for the
attachment mechanism, the Examiner reasons that "[i]t also would have been
obvious ... to have provided the Niwa harness with a waist belt and belt
buckle attachment mechanism like that of Hasas ... to better secure the
Niwa harness to the child." Id.
Appellants do not dispute the Examiner's findings from interpretation
2 in any meaningful way. 1
Appellants allege, generally, for example, that "Niwa teaches a
backpack and does not disclose a harness for a child as described by
Appellant." Appeal Br. 14. That, however, does not identify error in any
particular finding by the Examiner. Appellants acknowledge that "Niwa
discloses two shoulder straps for mounting a backpack," but further allege
that "it does not show a set of harness straps ( 14) for securing the harness to
the child as the Examiner claims." Id. at 17. Appellants, however, fail to
offer any explanation as to why Niwa' s shoulder straps 14 cannot properly
be considered harness straps, particularly when modified as proposed by the
1 Although made in connection with the Examiner's interpretation 1,
Appellants, for the first time, include additional argument directed to the
Examiner's findings regarding the tether features in Niwa in the Reply Brief.
See, e.g., Reply Br. 3--4 (As the Reply Brief does not include page numbers,
our reference to the page number begins with the cover page of the brief as
page 1.). To the extent that argument applies to interpretation 2, our rules
generally prohibit new argument in the Reply Brief. 37 C.F.R.
§ 41.41 (b )(2). Accordingly, we do not consider that argument.
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Examiner to include a waist belt and buckle attachment based on the
teachings of Hasas. Appellants do not allege error in the Examiner's
findings related to Hasas under the Examiner's interpretation 2.
Appellants also do not dispute the Examiner's rationale for combining
the teachings of Hasas with those of Niwa under interpretation 2 in any
meaningful way.
Appellants simply allege, generally, that "the Hasas and Niwa
references are not relevant to each other, are not combinable, and therefore
there is no motivation to combine these references" and "[ o ]ne of ordinary
skill would not have had a reasonable expectation of success in doing so."
Appeal Br. 15-16. This general assertion, however, fails to address the
Examiner's rationale noted above. Further, although Appellants provide no
explanation on the issue, we disagree that one skilled in the art would not
have had a reasonable expectation of success when applying the proposed
combination. The modification simply involves adding a belt and belt
buckle attachment to Niwa' s straps 14 and including character
ornamentation. Appellants additionally contend that "[t]he location of the
waist belt would allow a child to slip out of the straps once the tether
receives any type of pulling force" (Appeal Br. 19), but provide no
explanation as to why it would not still "better secure the Niwa harness to
the child" as the Examiner explains (Final Act. 5). That is, even if the child
could slip out ofNiwa's straps 14, the inclusion of a waist belt would
prevent ( or at least inhibit) the child from completely escaping the harness
altogether.
Appellants' contention that the Examiner's rationale to include
"novelty/animal character features ... to make the Niwa knapsack more
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aesthetically pleasing and fun to children" (Final Act. 5) is impermissible
hindsight is also unpersuasive (Appeal Br. 17-18). Appellants contend that
"[p ]rior art child harnesses looked like restraining devices and the children
did not want to wear them" and "[t]he present invention solved this problem
by integrating the restraint harness into the novelty character, making it a
child harness that a child will voluntarily wear." Appeal Br. 17-18. We are
not persuaded that, absent resort to Appellants' disclosure, one skilled in the
art would not have appreciated that incorporation of novelty characters ( e.g.,
stuffed animals) make items more pleasing to children.
Moreover, we note that the sole purpose of the novelty character
features is ornamentation. At oral hearing, when asked, Appellants' counsel
was unable to identify any way those features in claim 38 are anything more
than ornamentation. See Tr. 6 :23-7: 15. Features, such as those related to
the "novelty character" in claim 3 8, which "relate to ornamentation only and
have no mechanical function whatsoever," cannot be relied upon for
patentability of a claim in a utility patent application. In re Seid, 161 F .2d
229,231 (CCPA 1947).
Appellants provide evidence of secondary considerations of non-
obviousness and contend that the Examiner has failed to consider adequately
that evidence when rejecting the claims. Appeal Br. 27-37.
Initially, we note that all of Appellants' contentions related to the
evidence supporting secondary considerations of non-obviousness are
directed to the character design features of the harness (i.e., the
ornamentation discussed above). See id. at 32-33 ("[T]the commercial
success of the claimed harness does indeed flow from the functions and
advantages disclosed in the specification," which "describes the combination
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of a novelty character with a harness, harness straps and tether that provides
an item both the child-wearer and the parent will accept, as the novelty
character and the pouch provide a pleasing and fun object for a child."); 33-
34 ( describing the "unexpected results" as "a surprising acceptance by the
child wearing the harness" because "the novelty character with the other
features of the harness surprisingly transformed the harness into a 'cute'
device for both parents and onlookers, increasing acceptance of the
harness"); 34--35 ("[T]here indeed was a [long-felt] need for a harness that is
both desirable for a child and socially acceptable to parents" and "finding a
harness that children enjoy and one that on-looking parents approve was a
persistent problem for parents."); 35-36 ("[E]xtensive copying by others in
the related industry" is established because"[ o]nly after noting the success
and acceptance of the Gold Bug Harness in the marketplace did these
companies produce a safety harness with a novelty character."). 2 For at least
this reason, Appellants' evidence of secondary considerations does not
outweigh the strong case of obviousness established by the Examiner. That
is, because those features that are directed exclusively to ornamentation
cannot be relied upon for patentability, evidence associated with those
features cannot be relied on to outweigh the evidence establishing
obviousness of the claims. See Praxair Distribution, Inc. v. Mallinckrodt
Hosp. Prod. IP Ltd., 890 F.3d 1024, 1035 (Fed. Cir. 2018) ("No patentable
weight means no patentable weight.").
2 Appellants also reference "industry praise," but do not further discuss, in
the Appeal Brief, any particular evidence related to industry praise. Appeal
Br. 36.
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Moreover, even if the features associated with Appellants' evidence of
secondary considerations of non-obviousness are entitled to patentable
weight, the argument and evidence presented is not sufficient to outweigh
the Examiner's case of obviousness.
To be relevant, secondary evidence of non-obviousness must be
commensurate in scope with the claimed invention. In re Kao, 639 F.3d
1057, 1068 (Fed. Cir. 2011). There must be a nexus between the merits of
the claimed invention and the evidence of secondary considerations. In re
GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). "Nexus" is a legally and
factually sufficient connection between the objective evidence and the
claimed invention, such that the objective evidence should be considered in
determining non-obviousness. Demaco Corp. v. F. Von Langsdorff
Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). "[T]here is a
presumption of nexus for objective considerations when the patentee shows
that the asserted objective evidence is tied to a specific product and that
product 'is the invention disclosed and claimed in the patent."' WBIP, LLC
v. Kohler Co., 829 F.3d 1317, 1329 (Fed. Cir. 2016).
The extent of Appellants' discussion of nexus is an acknowledgement
of that requirement (Appeal Br. 30) and a reference to the "Gold Bug
Harness" as "the claimed invention" (id. at 31 ). Appellants fail to even
direct us to images in the Exhibits supporting this assertion. Even if we
were to assume nexus, however, Appellants provide only evidence of sales
revenue, generally, rather than evidence related to an increase in market
share. Appeal Br. 30-31. This information, without market share
information, is only weak evidence, if any, of commercial success. See In re
Applied Materials, 692 F.3d 1289, 1299 (Fed. Cir. 2012). Further, in the
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Appeal Brief, Appellants do not identify or quantify sales exclusively of the
commercial product that allegedly embodies the claimed invention. See
Appeal Br. 30-31 (discussing sales increase for Gold Bug (all products),
rather than separating those attributed to the Gold Bug Harness that
allegedly embodies the claimed invention). The fact that the Gold Bug
Harness was also featured on a television show and that it was sold in retail
stores (id. at 31-32), without more, does not provide further significant
evidence of non-obviousness.
With respect to the alleged unexpected results, Appellants contend
that "the novelty character with the other features of the harness surprisingly
transformed the harness into a 'cute' device," which "clearly meets the
requirements of ... 'unexpected results."' We disagree. "The basic
principle behind [ unexpected results supporting non-obviousness] is
straightforward-that which would have been surprising to a person of
ordinary skill in a particular art would not have been obvious." In re Soni,
54 F.3d 746, 750 (Fed. Cir. 1995). We do not find anything surprising
regarding a novelty character ( e.g., a stuffed animal) transforming an
otherwise plain device into a "cute" device, and even if surprising in some
way, it does not reach the level required for unexpected results in the context
of evidence supporting non-obviousness.
Appellants additionally contend that there was a long-felt need "for a
harness that is both desirable for a child and socially acceptable to parents"
and that "finding a harness that children enjoy and one that on-looking
parents approve was a persistent problem for parents." Appeal Br. 34.
Long-felt need can be shown by evidence that indicates that the prior art had
a recognized need for a solution to the problem and that others had tried and
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failed to find a solution to that problem. Al-Site Corp. v. VS! Int'], Inc., 174
F.3d 1308, 1325 (Fed. Cir. 1999); Stratojlex, Inc. v. Aeroquip Corp., 713
F.2d 1530, 1540 (Fed. Cir. 1983). Here, for example, Appellants do not
even allege, let alone provide evidence to support, that others had tried and
failed to find a solution to the alleged problem of a harness being
aesthetically pleasing. Rather, this factor exemplifies the nature of the
features as simply being ornamental. See Appeal Br. 34 ( describing the
solution as a harness with a more appealing appearance to on-looking
parents).
As for the alleged copying, Appellants do not explain, for example,
which specific claim features are included in the competitor harnesses that
allegedly copied Appellants' design. See Appeal Br. 35-36. "[C]opying
requires evidence of efforts to replicate a specific product, which may be
demonstrated through ... access to the patented product combined with
substantial similarity to the patented product." Wyers v. Master Lock Co.,
616 F .3d 1231, 1246 (Fed. Cir. 2010). After review of the images in Exhibit
E, which are unclear, at best, we can discern only that those allegedly
copying devices are child harnesses of some sort with the appearance of a
novelty character. Again, however, even if there is evidence of copying, it
only establishes that the competitors copied the idea of making the harness
more visually appealing by making their harnesses look like novelty
characters (i.e., a feature that, without more, is not entitled to patentable
weight). Further, "more than the mere fact of copying by an accused
infringer is needed to make that action significant to a determination of the
obviousness issue." Cable Elec. Prods. v. Genmark, Inc., 770 F.2d 1015,
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1028 (Fed. Cir. 1985); see also In re GPAC, 57 F.3d 1573, 1580 (Fed. Cir.
1995).
After weighing all of the evidence before us, the preponderance of
that evidence supports the Examiner's position that claim 3 8 is unpatentable
over the combined teachings of Niwa and Hasas.
Before discussing any of the additional claims argued by Appellants,
we note that the evidence of secondary considerations, at best, is related
solely to the features of claim 38. That is, there is no discussion of that
evidence relative to any of the additional features recited in any of the other
claims. Accordingly, we do not repeat our discussion of secondary
considerations again with respect to the additional claims.
Appellants state: "Claim 39, the tether of modified Hasas and Niwa
'harnesses' would have a configuration associated with the harness in that it
'would be attached to the harness.' This argument is inconsistent with 'a
configuration associated with the harness' and again is hindsight bias."
Appeal Br. 18. This general allegation does not identify, in any meaningful
way, error in the rejection of claim 39.
Claims 40, 46, and 52 depend from claim 38, 44, or 50, and
Appellants do not present separate arguments for the patentability of those
claims under the Examiner's rejection applying interpretation 2.
For at least these reasons, we are not apprised of error in the
Examiner's decision to reject claims 38--41, 44, 46, 47, 50, 52, 53, and 57.
Claims 42, 43, 45, 48, 49, 50, 54, and 55
Appellants argue claims 42, 43, 45, 48, 49, 50, 54, and 55 as a group.
Appeal Br. 22-24. We select claim 42 as representative. Claims 43, 45, 48,
49, 50, 54, and 55 stand or fall with claim 42. Claim 42 depends from claim
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38 via dependence from claim 39 and adds that "one of the set of harness
straps is a waist strap, and the tether attaches to the waist strap so that the
harness and the tether are structured to minimize a child's loss of balance if
an arresting force is applied to the tether."
As discussed above, in the rejection of claim 38, the Examiner's
modifications to Niwa's teachings included the addition of a waist strap. See
Final Act. 5. With respect to the additional features recited in claim 42, the
Examiner finds that "Nunn ... teaches that it was already known in the art
for a tether to be attached to a tether link (24) on a waist belt." Id. at 11
( citing Nunn, Figure 1 ). The Examiner reasons that "it would have been
obvious ... to have attached the tethers of the modified ... Niwa harness[]
to the[] ... waist belt[], where such tether attachment location was already
known in the art, as taught by Nunn" and explains that "[p ]redictably, a
pulling force directed at the child's waist, or closer to the child's center of
gravity, would be less likely to cause the child to lose their balance when
pulling on the tether." Id. The Examiner further explains that "[t]here is no
inventive step in simply choosing between known tether attachment
locations absent a showing of unexpected results." Id.
Appellants do not dispute the Examiner's findings regarding Nunn
and do not address the rationale provided in any meaningful way. See
Appeal Br. 23-24. Rather, Appellants allege that "there is no suggestion or
motivation to combine the safety harness of Nunn with the knapsacks of
Hasas and Niwa" and "the prior art does not suggest the desirability of the
claimed invention." Id. Appellants fail to acknowledge, let alone rebut
persuasively, the rationale provided by the Examiner and noted above.
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For at least these reasons, we are not apprised of error in the
Examiner's decision to reject claims 42, 43, 45, 48, 49, 50, 54, and 55.
Claims 56 and 58
Appellants argue claims 56 and 58 as a group. Appeal Br. 24--26. We
select claim 56 as representative. Claim 58 stands or falls with claim 56.
Claim 56 is independent and recites limitations similar to those found in
claim 38, as well as additionally reciting that "said tether [is] integrated in
appearance with the body portion and harness straps."
With respect to the additional tether features, the Examiner states that
Niwa and Hasas "fail to explicity state that the tether is integrated in
appearance with the body portion and harness straps, though Examiner is of
the position that any elongated strap at least somewhat resembles the
appearance of a tail absent any specifically claimed details." Final Act. 12.
Although a "tail" would meet the claim limitation of the tether being
"integrated in appearance," the claim is not so limiting. As the Examiner
explains, "[n]evertheless, Kaufmann teaches that it was already known for a
tether (24) (i.e. Monkey Tail) to be integrated in appearance with the body
portion and harness straps ... for the purpose of use as an entertaining toy."
Id. at 12-13 (citing Kauffmann, 4: 12-14, 4:24--30). The Examiner reasons
that "it would have been obvious ... to have provided the tether of the
modified Hasas and Niwa harnesses integrated in appearance with the body
portion and harness straps as taught by Kaufmann" so that a "child might
want to play with or would enjoy interacting with" the harness. Id. at 13.
The Examiner explains that "[t]here is no inventive step in simply choosing
between known tether appearances absent a showing of unexpected results."
Id. As the Examiner explains, like the other character features discussed
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above relative to claim 38, this is just another ornamental feature ( e.g., the
tether looks like a tail).
Other than reiterating the unpersuasive arguments advanced relative to
claim 38, Appellants allege hindsight, generally, and allege fault, generally,
in the Examiner's proposed modifications based on Kauffmann. Appeal Br.
25-26. Appellants, however, do not address the Examiner's findings or
rationale. Moreover, as explained above, features related to ornamentation
only cannot be relied upon for patentability.
For at least the reasons set forth above, we are not apprised of error in
the Examiner's decision to reject claims 56 and 58.
Additional Ground for Claims 38. 44. 50. and 57
The Examiner additionally rejects claims 38, 44, 50, and 57 as
unpatentable over the combination of O'Donnell, Hasas, and Niwa. Final
Act. 6-10. Because we sustain the Examiner's decision to reject those
claims as unpatentable over the combination of Hasas and Niwa, without
O'Donnell, we need not reach the additional rejection adding O'Donnell to
the combination.
DECISION
We AFFIRM the Examiner's decision to reject claims 38-58.
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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