Ex Parte NassanianDownload PDFPatent Trial and Appeal BoardSep 18, 201813486361 (P.T.A.B. Sep. 18, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/486,361 06/01/2012 78342 7590 09/20/2018 SHOOK, HARDY & BACON L.L.P. (NIKE, INC.) INTELLECTUAL PROPERTY DEPARTMENT 2555 GRAND BLVD. KANSAS CITY, MO 64108-2613 FIRST NAMED INVENTOR Hrag Nassanian 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. NIKE.164327/11-1475 3571 EXAMINER BATTISTI, DEREK J ART UNIT PAPER NUMBER 3782 NOTIFICATION DATE DELIVERY MODE 09/20/2018 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): IPDOCKET@SHB.COM IPRCDKT@SHB.COM nike _ docketing@cardinal-ip. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HRAG NASSANIAN Appeal 2018-001818 Application 13/486,361 1 Technology Center 3700 Before LINDAE. HORNER, JEFFREY A. STEPHENS, and SEAN P. O'HANLON, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner's rejections of claims 1-5, 7-10, and 12-21, which are all of the pending claims. Final Office Action (July 29, 2016) (hereinafter "Final Act."). We have jurisdiction under 35 U.S.C. § 6(b ). The claimed subject matter relates to "sturdy sports bags with good ventilation to provide good airflow inside the bags and thereby prevent odors from developing." Specification (June 1, 2012) (hereinafter "Spec.") ,r 3. 1 Appellant identifies Nike Inc. as the real party in interest. Appeal Brief (February 8, 2017) (hereinafter "Appeal Br."), at 4. Appeal 2018-001818 Application 13/486,361 Appellant contests the Examiner's rejections of the claims as obvious over the prior art. For the reasons explained below, we agree that the prior art disclosures support the Examiner's determination of obviousness, but our reasoning differs from the rejections as articulated by the Examiner. Accordingly, we AFFIRM and designate our affirmance as containing NEW GROUNDS OF REJECTION. CLAIMED SUBJECT MATTER Claims 1, 9, 13, and 19 are the independent claims. Claim 1 is illustrative of the subject matter on appeal and is reproduced below with the disputed claim language shown in italics for emphasis. 1. A vented portable sports bag for carrying goods, the sports bag comprising: a bag body comprising: ( 1) a base section comprising a water repellent coated material; (2) a middle portion comprising a rear wall, a front wall and two side walls, the middle portion made of the water repellent coated material; (3) a first plurality of peiforations, each perforation in the first plurality of perforations having a first perimeter, wherein the first plurality of peiforations extend through the bag body itself in the middle portion,; ( 4) a reinforcement layer affixed to at least a section of the middle portion, wherein the reinforcement layer comprises a second plurality of perforations arranged to correspond with the first plurality of perforations, each perforation in the second plurality of perforations having a second perimeter, and wherein each first perimeter of each peiforation in the first plurality of perforations is affixed to a corresponding second perimeter of the second plurality of perforations to form a plurality of vent openings, wherein the plurality of vent openings permit a two- way aiiflow between an interior and an exterior of the bag body; 2 Appeal 2018-001818 Application 13/486,361 ( 5) a top section made of the water repellent coated material, the top section further comprising a closable opening to allow access to the interior of the bag body; and (6) at least two carrying handles attached to the bag body. Appeal Br. 35-36 (Claims Appendix). EVIDENCE Reis Jackson et al. ("Jackson") Gunsberg US 2006/0169729 Al US 7,153,025 Bl US 2010/0264048 Al US 2010/0284631 Al US 8,413,776 Bl Aug.3,2006 Dec. 26, 2006 Oct. 21, 2010 Nov. 11, 2010 Apr. 9, 2013 Lee Huff REJECTIONS The Final Office Action includes the following rejections under pre-AIA 35 U.S.C. § I03(a): 1. Claims 1, 2, 4, and 5 stand rejected as unpatentable over Huff and Guns berg. 2. Claim 3 stands rejected as unpatentable over Huff, Gunsberg, and Reis. 3. Claims 7-10 and 12-19 stand rejected as unpatentable over Huff, Gunsberg, and Lee. 4. Claims 20 and 21 stand rejected as unpatentable over Huff, Gunsberg, Lee, and Jackson. ANALYSIS First Ground of Rejection The Examiner found that Huff discloses a vented portable bag comprising, inter alia, a base section, a middle portion, a top section, and a plurality of perforations (140) through the bag body itself, as recited in claim 1. Final Act. 2. The Examiner found that Huff does not disclose a 3 Appeal 2018-001818 Application 13/486,361 reinforcement layer or a second plurality of perforations. Id. The Examiner found that Gunsberg discloses such a reinforcement layer affixed to at least a section of a middle portion, wherein the reinforcement layer comprises a second plurality of perforations arranged to correspond with a first plurality of perforations to form vent openings that "permit a two-way airflow between an interior and an exterior of the body." Id. at 2-3 (citing Gunsberg, Fig. 2, ,r 42). The Examiner determined it would have been obvious to use a reinforcement layer, as disclosed by Gunsberg, on the bag of Huff in order to strengthen the bag, particularly around the perforations, and allow airflow to contents within the bag. Id. Appellant argues that the Examiner erred in rejecting claim 1 because Huff's vents 140 "are not perforated and do not extend through the bag body itself, as claimed." Appeal Br. 14 (emphasis omitted). Appellant further argues that the Examiner's proposed modification to add an additional layer to the vent material of Huff "would render the vents of Huff unsuitable for their intended purpose because the additional layer of material would compromise the air circulation" and thus the vents would no longer be able to hinder or prevent the growth of mold and other odor-causing bacteria. Id. at 17. We understand the Examiner's proposed modification to Huff to entail adding a reinforcement layer with perforations to the existing vent 140 of Huff. Ans. 2. Huff discloses that its vent is made of breathable Gore-Tex fabric. The Examiner fails to explain adequately how the openings in Huffs vent 140 would be aligned with openings in the proposed additional reinforcement layer to allow for adequate ventilation. That said, in light of additional teachings in Gunsberg as to the construction of a vented 4 Appeal 2018-001818 Application 13/486,361 cover 102, we agree with the Examiner's ultimate determination that the combined teachings of Huff and Guns berg would have led one having ordinary skill in the art to the claimed subject matter. Our reasoning follows. Huff discloses a bag for carrying articles, such as garments, which allows clean garments to be separated from soiled garments. Huff, col. 1, 11. 6-9. 2 Huff teaches, "Preferably, the bag permits outside fresh air to circulate through the inner cavity of the bag and allows moisture within the inner cavity to evaporate out." Id. at col. 1, 11. 59-61. To effect this air circulation, the bag of Huff employs a breathable vent. Id. at col. 1, 11. 66- 67. Huff discloses that the outer wall and end walls of the bag "are formed from water impregnable and breathable material" and that the walls may be provided with vents 140 "formed from water impregnable and breathable fabric." Id. at col. 4, 11. 6-8, 45--46. Huff describes that the vent allows fresh air to circulate around dirty articles in the bag to reduce or hinder the growth of odor-causing bacteria and mold, and to allow moisture contained in the dirty articles to evaporate out through the vents. Id. at col. 4, 11. 52- 5 8. The material used to form vents 140 is different from the material used to form the walls of the bag. Compare id. at col. 4, 11. 8-11 ( describing the bag as formed from "canvas, plastic, vinyl coated polyester, treated fabric, or other suitable material that is resistant to mildew, such as materials suitable 2 We incorporate the Examiner's findings that Huff discloses or renders obvious a vented portable bag comprising a base section, a middle portion, and a top section having a closable opening and two carrying handles. Final Act. 2. We modify the Examiner's rejection, as noted above, by proposing to replace Huffs vents 140 with Gunsberg's vents 104. 5 Appeal 2018-001818 Application 13/486,361 for making duffle bags), with id. at col. 4, 11. 45--46 ( describing the vent as formed from fabric such as polytetrafluoroethylene (PTFE)). Gunsberg discloses a "temperature-controlled musical instrument carrying case." Gunsberg ,r 2. Gunsberg's case 10 includes interior storage compartment 12, insulated outer housing 32, inner housing 66 disposed between outer housing 32 and storage compartment 12, and cover 102 enclosing outer housing 32. Id. ,r,r 20, 25, 42, 64, Fig. 3. Gunsberg describes that cover 102 "may be flexible" and "may be made of nylon, plastic, rubber, or other durable, weather-resistant materials."3 Id. ,r 64. Gunsberg also states that cover 102 may include handles and shoulder straps. Id. As to the construction of cover 102, Gunsberg teaches, "The cover 102 may be constructed from a soft or semi-rigid material, rigid material, or combination of materials to protect against thermal shock and abuse." Id. ,r 65. For example, Gunsberg describes that cover 102 may be made of polyurethane or other material with good insulating and shock absorption properties and may also include a fibrous silica-based aerogel blanket. Id. ,r,r 65-66. Thus, Gunsberg describes a bag (cover) for carrying an article (musical instrument case). Gunsberg teaches that its cover can be formed of a combination of soft and rigid materials, such that the bag body includes a reinforcement layer (rigid material) affixed to the bag layer (soft material). Guns berg further teaches forming other layers of the case 10 using multiple 3 The Examiner relied on Guns berg's inner housing 66 to teach the claimed reinforcement layer and second plurality of perforations. Final Act. 2-3. We modify these findings to rely on Gunsberg's cover 102 and vents 104 to teach the claimed reinforcement layer and second plurality of perforations, as discussed above. 6 Appeal 2018-001818 Application 13/486,361 sheets of material, which may include vent holes. Id. ,r 42 ("inner housing 66 may be formed from multiple sheets"), ,r 46 ("The inner housing 66 ... defines a plurality of vent holes 70."). This additional teaching in Gunsberg would have suggested to one having ordinary skill in the art that cover 102 could be made from a combination of multiple sheets of rigid and soft or semi-rigid material. Guns berg describes that cover 102 includes vent 104 that channels the air that surrounds outer surface 34 of outer housing 32 to outside cover 102 to provide ventilation for case 10. Id. ,r 64. Gunsberg describes that vent 104 "may be an opening through which the heat-transfer device 42 protrudes," "may also be a hole, or a series of holes, lines, or other shapes that allow air to pass from the outer surface of the cover 102 to the heat- transfer device 42," and "may be a mesh made out of rubber, plastic, nylon, or other suitable materials." Id. ,r 65. Gunsberg further describes that "[i]n addition to providing ventilation, the vent 104 in the cover 102 may prevent water or other moisture from flowing from outside the cover 102 to inside the cover 102. Id. Thus, Gunsberg describes that its cover 102, which can be comprised of a combination of a soft bag layer and a rigid reinforcement layer, includes a series of ventilation holes for allowing two-way airflow between the interior and exterior of the cover and for preventing moisture from entering the interior of the cover. Because the cover can be formed of a combination of soft and rigid materials, and Gunsberg describes that the series of holes extend through the cover, we understand Guns berg to teach, or at least render obvious, aligning each hole in the series of holes so that they extend through both the soft bag material and the rigid reinforcement material to form the vent openings. Gunsberg further teaches that the use of 7 Appeal 2018-001818 Application 13/486,361 a series of ventilation holes that extend through the cover material itself is a known alternative to using a separate mesh material as a vent. Based on these findings, modifying Huffs vents 140 to be formed as a series of holes in the bag material itself, in place of Huff's disclosed separate vent material, would have been an obvious substitution of one known ventilation structure with another known ventilation structure to achieve predictable results. In particular, Gunsberg teaches that its series of holes used to form vents 104 allow two-way airflow between the interior and exterior of the cover and prevent moisture from entering the interior of the cover. One having ordinary skill in the art would understand that this series of vent holes would be suitable for use as vents in Huffs bag because they would allow fresh air to circulate around dirty articles in the bag to reduce or hinder the growth of odor-causing bacteria and mold, and would allow moisture contained in the dirty articles to evaporate out through the vents. "[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result." KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,416 (2007) (citing United States v. Adams, 383 U.S. 39, 51-52 (1966)). Furthermore, modifying Huff's bag material to be formed as a combination of a soft bag material and a rigid reinforcement material would have been an obvious improvement to Huffs bag to protect against abuse (i.e., wear) of the bag. As noted above, Gunsberg teaches constructing its cover from a combination of soft or semi-rigid material and rigid material "to protect against thermal shock and abuse." Gunsberg ,r 65. A person having ordinary skill in the art would appreciate that Huff's travel bag would 8 Appeal 2018-001818 Application 13/486,361 similarly benefit from being formed of a combination of materials to protect against abuse, in that bags used for travel are often subjected to abuse during use. Id. (recognizing that additional protection for cover 102 "may be needed in the event that the case 10 is checked as luggage or cargo on an airplane, or stored in a car or bus with other objects that could jostle or fall on the case 1 O"). "[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill." KSR, 550 U.S. at 417. In addition, one of skill in the art would have recognized that using multiple layers of materials, as in Guns berg, would have been particularly advantageous at a vented portion of the bag due to potential weakening of the material near the vent holes. Thus, contrary to Appellant's arguments, we find that Gunsberg cures the deficiencies in Huff. As such, we agree with the Examiner's determination that the combined teachings of Huff and Gunsberg would have led one having ordinary skill in the art at the time of Appellant's invention to modify the bag of Huff with the teachings of Gunsberg in the manner recited in claim 1. Appellant does not present separate arguments for the patentability of dependent claims 2, 4, and 5. We adopt the Examiner's findings as to the disclosure in Huff of the subject matter of claim 2. As to dependent claims 4 and 5, we find that Guns berg discloses that vent 104 may be "a hole, or a series of holes, lines, or other shapes." Id. ,r 65. Thus, the bag of Huff, modified to include Guns berg's vents 104 for the reasons discussed above, would contain holes of circular or non-circular shape. 9 Appeal 2018-001818 Application 13/486,361 Second Ground of Rejection Appellant does not present any additional arguments in support of patentability of claim 3, which depends from claim 1. We adopt the Examiner's findings as to Reis and the proposed further modification of Huff with the teachings of Reis. Final Act. 4. Third Ground of Rejection Appellant does not present additional arguments in support of the patentability of claims 7 and 8, which depend from claim 1. We adopt the Examiner's findings as to Lee. Final Act. 4-5. We further find that it would have been obvious to use an elastomer or TPU as a reinforcement material on the bag of Huff, as modified by Gunsberg, because such materials were known in the art as suitable reinforcement materials, as taught in Lee. We further adopt the Examiner's uncontested claim interpretation as to the screen printing process recited in claim 7. Final Act. 5. Regarding independent claims 9, 13, and 19, we modify the grounds of rejection the same manner as discussed above with regard to the bag of Huff, as modified by the cover and vents of Guns berg, and further modified to use the reinforcement material of Lee. As to claim 13, we further find that Huff teaches vents on the front wall and end walls of the middle section of bag 100, and merely duplicating the vent to add an additional vent on the top section of the bag is not a patentable distinction over the art. Huff, Figs. 3, 5, 6. Appellant does not present additional arguments in support of the patentability of claims 10 and 12, which depend from claim 9. As to claim 10, we modify the rejection to find that Gunsberg discloses vents 104 can be formed by a series of holes, and that such a series of holes, as applied in 10 Appeal 2018-001818 Application 13/486,361 place of the vent of Huff, inherently would create a pattern. Gunsberg ,r 65. As to dependent claim 12, we adopt the Examiner's findings as to the disclosure in Lee. Final Act. 5. Appellant does not present additional arguments in support of the patentability of claims 14-18, which depend from claim 13. As to dependent claims 14 and 15, we find that Gunsberg discloses that vent 104 may be "a hole, or a series of holes, lines, or other shapes." Guns berg ,r 65. Thus, the bag of Huff, modified to include Gunsberg's vents 104 for the reasons discussed above, would contain holes of circular or non-circular shape. As to claim 16, we modify the rejection to find that Gunsberg discloses vents 104 can be formed by a series ofholes, and that such a series of holes, as applied in place of the vent of Huff, inherently would create a pattern. Id. As to claims 17 and 18, we adopt the Examiner's findings as to the disclosure in Lee. Final Act. 6-7. Fourth Ground of Rejection Appellant does not present any additional arguments in support of patentability of claims 20 and 21, which depend from claim 19. We adopt the Examiner's findings as to Jackson and the proposed further modification of Huff with the teachings of Jackson. Id. at 7. Conclusion The newly articulated proposed modification of Huff with the teachings of Guns berg, alone or in further combination with one or more of Reis, Lee, and Jackson, differs from the rejections articulated by the Examiner. As such, we designate our affirmance of each ground as a new ground of rejection to provide Appellant with an opportunity to respond. 11 Appeal 2018-001818 Application 13/486,361 DECISION The decision of the Examiner rejecting claims 1-5, 7-10, and 12-21, and 22 is affirmed. As explained above, because our affirmance of each ground of rejection relies on findings of fact and proposed modifications to Huff that differ from the rejections articulated by the Examiner, we designate our affirmance of each rejection as a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 4I.50(b). Section 4I.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 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. 12 Appeal 2018-001818 Application 13/486,361 Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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)(l )(iv). AFFIRMED; 37 C.F.R. § 4I.50(b) 13 Copy with citationCopy as parenthetical citation