Ex Parte Siegel et alDownload PDFPatent Trial and Appeal BoardMay 9, 201813491515 (P.T.A.B. May. 9, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/491,515 06/07/2012 Rick Siegel 7590 05/09/2018 Rick Siegel and Jennifer Nigrosh 3379 Tareco Drive Los Angeles, CA 90068 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. RS12051 l 4926 EXAMINER MAI, TRIM ART UNIT PAPER NUMBER 3781 MAILDATE DELIVERY MODE 05/09/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICK SIEGEL, JENNIFER NIGROSH, and GUISEPPE LAMANNA Appeal2018-001214 1 Application 13/491,515 Technology Center 3700 Before KENNETH G. SCHOPPER, BRADLEY B. BAY AT, and AMEE A. SHAH, Administrative Patent Judges. BAY AT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Rick Siegel et al. (Appellants)2 appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-9, 11-13, 15-17, 19, and 20. 3 We have jurisdiction under 35 U.S.C. § 6(b). A hearing was held on March 19, 2018, a transcript of which has been entered into the record ("Tr."). We AFFIRM. 1 Our Decision references Appellants' Appeal Brief ("Br.," filed July 27, 2016), the Examiner's Answer ("Ans.," mailed Nov. 3, 2016), and the Final Office Action ("Final Act.," mailed Dec. 28, 2015). 2 "Inventors Rick Siegel and Jennifer Nigrosh are the real parties in interest of the present application." Br. 4. 3 Claims 10, 14, and 18 have been canceled. Br. 32-34, Claims App. Appeal2018-001214 Application 13/491,515 CLAIMED INVENTION Appellants' "invention relates to garment bags, and more particularly to an environmentally friendly reusable combination garment bag, hamper, and duffle bag." Spec. 2:15-16. Claims 1, 15, and 19 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A reusable bag for laundry and laundry hangers, compnsmg: an enclosure made from a flexible web material and having an open end and a closed end, the open end having a closure means, the closure means includes a hem around the open end of the enclosure through which a selectively cinchable drawstring is slidably enclosed, the closed end including an aperture adapted to receive a portion of each laundry hanger therethrough, the enclosure including an inside surface and an outside surface; at least one shoulder strap configured and arranged to facilitate the carrying of the bag, the at least one shoulder strap coupled at one end of the strap to the outside surface of the bag, proximate one end of the enclosure, and extending away from the one end of the strap and at least partially across the outside surface of the bag towards the other end of the enclosure and coupled at another end of the strap to the outside surface of the bag;and wherein the at least one shoulder strap is configured and arranged to enable a user to carry soiled clothes to a drycleaner while in a duffle bag configuration, and while in a garment bag configuration, substantially maintain the press and crispness of the drycleaned clothes while carrying the bag hands-free from the drycleaner; and wherein the enclosure comprises a front sheet of the flexible material, a back sheet of the flexible material, and a gusset sheet of the flexible material, a peripheral edge of the gusset sheet sewn at least partially to each of the front and back 2 Appeal2018-001214 Application 13/491,515 sheets to form the enclosure and allow for multiple garments to be placed and stored inside; and a zipper positioned down the center of the bag or coupled to the gusset proximate the hem and extending at least a partial length of the gusset, the zipper configured and arranged to selectively form a second aperture when at least partially unzipped. Br. 31, Claims App. THE REJECTIONS Claims 1-7, 11, 13, 15-17, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gendreau (US 5,090,559, iss. Feb. 25, 1992), Pendergast (US 3,831,740, iss. Aug. 27, 1974), and Wachtel (US 5,050,998, iss. Sept. 24, 1991). Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gendreau, Pendergast, Wachtel, and Gross (US 4,802,773, iss. Feb. 7, 1989). Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Gendreau, Pendergast, Wachtel, and Haley, Sr. (US 4,549,748, iss. Oct. 29, 1985). Claims 1-7, 15-17, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Foley (US 2010/0006459 Al, pub. Jan. 14, 2010), Pendergast, and Wachtel. Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Foley, Pendergast, Wachtel, and Gross. Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Foley, Pendergast, Wachtel, and Haley, Sr. Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Foley, Pendergast, and Wachtel, and Gendreau. 3 Appeal2018-001214 Application 13/491,515 Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Pendergast and Wachtel. DISCUSSION As an initial matter, we note that Appellants argue independent claims 1, 15, and 19 as a group. Br. 12. We select claim 1 as representative for this group. Appellants do not separately argue the dependent claims, and "submit that, once the patentability of independent claims 1, 15, and 19 is established, the rejections of the dependent claims ... become moot." Id. Thus, claims 2-9, 11-13, 15-17, 19, and 20 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). "'On appeal to the Board, [Appellants] can overcome a rejection by showing insufficient evidence of prima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of nonobviousness."' In re Kahn, 441F.3d977, 985-86 (Fed. Cir. 2006) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). Here, Appellants do not dispute that a primafacie case of obviousness has been made by the Examiner. Br. 12-13. Instead, Appellants submit that secondary considerations related to ( 1) commercial success, (2) long-felt need, (3) failure of others, and (4) copying by others provide evidence of nonobviousness. Id. at 13-14. Secondary Considerations We recognize that evidence of secondary considerations, such as that presented by Appellants, must be considered in route to a determination of obviousness/nonobviousness under 35 U.S.C. § 103. Accordingly, we consider anew the issue of obviousness under 35 U.S.C. § 103, carefully evaluating and weighing both the evidence relied upon by the Examiner and the objective evidence of nonobviousness provided by Appellants. 4 Appeal2018-001214 Application 13/491,515 "For objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention." In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (quoting Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010)). "Evidence of secondary considerations must be reasonably commensurate with the scope of the claims." Id. (citations omitted). Commercial Success Appellants submit that they have had considerable commercial success in selling their product. Appellants have currently sold hundreds of thousands of products covered by one or more claim of the current application. One outlet for the sales of product is the Appellants' website, http://thegreengarmento.com/. This web site shows the current commercial embodiments and provides a nexus between the product and the claimed invention. Br. 14. Appellants contend the declaration made by Otis M. Butler III ("Butler Deel.," filed June 10 2015) "provides a first evidence of such a nexus." Id. at 15. Appellants rely on Mr. Butler's statement that: "The Nigrosh/Siegel innovations, in particular: (1) creating a gusset allowing users to place a dozen or more garments into a single bag ... thereby making the use of reusable bags economically feasible to the drycleaner, and (2) adding the shoulder strap making the bag user-friendly for consumers ... the reusable bag begin to gain in market share, industry acceptance and most important, begin to lower the hundreds of millions of single use packaging that annually puts stress on our landfills and eco-system." (id.; see also Butler Deel. i-f 7), and conclude that the gussets and shoulder strap on Appellants' bag are clearly linked to its commercial success. Id. 5 Appeal2018-001214 Application 13/491,515 To demonstrate nonobviousness based on commercial success, Appellants must provide evidence that establishes the existence of commercial success, and a nexus between that success and the merits of the claimed invention. Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2005). The evidence is required to show that "the successful product is the invention disclosed and claimed." J. T. Eaton & Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997). To establish a proper nexus between the claimed invention and the commercial success of a product, Appellants must offer "proof that the sales [of the product] were a direct result of the unique characteristics of the claimed invention--as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter." In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (citation omitted). We do not find Appellants' evidence convincing because it is not linked sufficiently to the claimed subject matter. Mr. Butler's opinion statement above, regarding economic feasibility to dry cleaners, user- friendliness to customers, and environmental benefits, fails to show a connection between the purported commercial success of the reusable bag and the limitations recited in claim 1. See In re DBC, 545 F.3d 1373, 1384 (Fed. Cir. 2008) (finding no nexus, absent evidence that "the driving force behind [the allegedly successful product's sales] ... was the claimed combination"); Ormco Corp. v. Align Techn. Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006) (requiring a "nexus between the claimed invention and the commercial success"); Huang, 100 F.3d at 140 (requiring proof that sales were a "direct result of the unique characteristics of the claimed invention"). Mr. Butler, in his capacity as National Sales Manager of HMC Solutions, a 6 Appeal2018-001214 Application 13/491,515 leading manufacturer and distributor of assembly and storage conveyors specifically made for dry cleaning, explains the significance of the structural space and weight threshold of dry cleaning conveyors in relation to using conventionally-sized garment bags onto a drycleaner conveyor, wherein "[t]he structure and weight of even a single such bag could disable the conveyor; the bulkiness of any such item would limit their intended capacity and the integrity of the processed clothes." Butler Deel. i-fi-13--4. As the Examiner observes, the objective evidence of nonobviousness is directed to the use of bags within a dry cleaning environment for use with dry cleaning conveyor belt systems, but the Specification is silent as to the use of Appellants' bag with such systems, and the apparently critical characteristics, such as weight, are not recited in claim 1. See Ans. 9--10. Similarly, the declaration by the President of Spector Textile Products Incorporated ("Spector Deel.," filed June 10, 2015), upon which Appellants rely (see Br. 15-16), describes Appellants' reusable bag innovations as being "most significantly, a design that includes a hanger strap and gusset that is still light and thin enough for use on a drycleaner conveyor (without compromising the capacity or usability of the conveyor)." Spector Deel. i17. Again, those significant structural features of Appellants' reusable bag are not recited in claim 1. Claim 1 merely requires a "shoulder strap configured and arranged to facilitate carrying of the bag" and "to enable a user to carry soiled clothes to a drycleaner while in a duffle bag configuration;" and "a gusset sheet of the flexible material, a peripheral edge of the gusset sheet sewn at least partially to each of the front and back sheets to form the enclosure and allow for multiple garments to be placed and stored inside." Br. 31 (Claims App.). 7 Appeal2018-001214 Application 13/491,515 Moreover, we recognize that commercial success can be established by showing significant sales of the product in a relevant market. J. T. Eaton, 106 F.3d 1563. Nonetheless, Appellants' naked assertion that "hundreds of thousands of products" have been sold (Br. 14) is not by itself convincing because the number of sales without relevant market share data does not establish commercial success. See, e.g., Huang, 100 F .3d at 140. Although Appellants acknowledge this shortcoming, they nevertheless contend: "[ w ]hile absolute market share cannot be reported, as the other companies are private and sales figures are not available, the provided affidavits show that market share improved for the bag of the present invention while the competition's market share declined." Br. 27. Having considered all the submitted affidavit testimony alongside the prior art of record and rejection, we do not find Appellants' objective evidence of nonobviousness sufficiently demonstrates that the alleged sales of reusable bags were a direct result of the unique characteristics of the claimed invention, and not a result of economic and commercial factors unrelated to the subject matter of claim 1. Consequently, Appellants have not produced sufficient evidence, including persuasive fact, data or analysis that links the asserted commercial success to the limitations recited in claim 1. Long-Felt Need and Failure of Others Appellants submit that there has been a long felt need for the current product. There is no better evidence than the introduction of the Gendreau-construction bag, which led to that patent application some 25+ years ago, and the several marketers who tried to make a go of a commercial embodiment of that invention. The Appellants' invention solves several problems, including the ones that led to the commercial failures 8 Appeal2018-001214 Application 13/491,515 of the previous marketers of a reusable drycleaning garment bag. Br. 16-1 7. Appellants contend that at the time of Appellants' invention, there was no product on the market that solved the problem of having: (1) "a way to carry clothes to drycleaners easily and without worry of loss," (2) "a specific place to put drycleaned clothes once they have been worn - while almost all households have laundry hampers, few have a hamper for their drycleaning," (3) "having to use the twist-ties, rubber bands, paper and plastic associated with carrying the cleaned clothes home from the cleaners, both an organizational and environmental issue," and ( 4) difficulty of "put[ ting] the clothes in and out of the bag." Id. at 17. Appellants further contend that Mr. Butler's statement that: "The Gendreau bag, though available through distributors, proved for the most part to be unmarketable. They neither made a material impact in the marketplace nor did they lower America's use of plastic and paper waste. Only with the user- friendly innovations of the Nigrosh/Siegel bag, marketed under The Green Garmento label, did there begin to be market penetration of the reusable drycleaning garment bag" clearly "show how others have tried to solve the problem but failed." Br. 18. Establishing a long-felt need requires objective evidence showing existence of a persistent problem recognized by those of ordinary skill in the art for which a solution was not known. In re Gershon, 372 F.2d 535, 539- 39 (CCP A 1967). There must be evidence of "a failure of others to provide a feasible solution to [a] long-standing problem" and evidence "that experts did not foresee" the solution claimed. See In re Piasecki, 745 F.2d 1468, 1475 (Fed. Cir. 1984). Satisfaction of a long-felt but unresolved need is not 9 Appeal2018-001214 Application 13/491,515 evidence of nonobviousness unless it is shown that widespread efforts of skilled workers having knowledge of the prior art had failed to find a solution to the problem. In re Allen, 324 F.2d 993, 997 (CCPA 1963); see also Toledo Pressed Steel Co. v. Standard Parts, Inc., 307 U.S. 350, 356 (1939). Appellants' contentions are not substantiated by persuasive and objective evidence to establish a long-felt need. The mere fact that Gendreau, which is one reference cited in combination with Pendergast and Wachtel by the Examiner in reaching a conclusion of obviousness, was patented over twenty-five years ago is inconsequential in and of itself to serve as evidence of long-felt need. "[P]recedent requires that the applicant submit actual evidence of long-felt need, as opposed to argument. This is because ' [a ]bsent a showing of long-felt need or the failure of others, the mere passage of time without the claimed invention is not evidence of nonobviousness."' Iron Grip Barbell Co., 392 F.3d at 1325. The assertion that "[l]ong felt need is established and satisfied by Appellants' invention" (Br. 26 (emphasis omitted)) because "Appellants' bag combines the shoulder strap, gusset and zipper in a single bag ... [and n Jo art has been cited that has solved the issues that the present invention solves with all these features" (id. at 27), fails to provide support of long-felt need and disregards the basis of the Examiner's obviousness rejection over Gendreau, Pendergast, and Wachtel. The Examiner states that many of the problems cited by Appellants were recognized and solved by the other cited references; "Mr. Butler seems to focus on the Gendreau bag, and there is no mention of other garment bags that teach the gussets and the shoulder straps in Foley '459, Pendergast et al. '740, and Wachtel '998." Ans. 10. The mere fact that 10 Appeal2018-001214 Application 13/491,515 Appellants' invention provides benefits over the prior art, in and of itself, does not establish that a long-felt need existed, that the attained benefits address persistent problems recognized by those in the art, or that others in the art tried but failed to provide feasible solutions. Failure of others to satisfy a long-felt need can provide evidence of non-obviousness. Dow Chemical Co. v. American Cyanamid Co., 816 F.2d 617, 623 (Fed. Cir. 1987). However, Appellants' reliance on the unsuccessful market penetration of Gendreau's bag, as declared by Mr. Butler, cannot by itself serve as objective evidence of nonobviousness of the combination of teachings, absent evidence that, notwithstanding knowledge of the references, the art tried and failed to solve the problem(s) allegedly solved by the claimed invention. The evidence must establish that others skilled in the art tried and failed to find a solution for the problem(s) solved by the Appellants to show a failure of others. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540 (Fed. Cir. 1983). As such, Appellants' assertion of failure by others is accorded little weight. Copying by Cleaner's Supply Appellants allege that Cleaner's Supply "has developed a 'new' bag with a shoulder strap, side zipper and gusset" (Br. 18) by copying and marketing duplicated features of Appellants' invention through a new line of products under Eco2Go (Br. 19; see also id at 20 (Appellants provide a side- by-side image comparison of the claimed invention with the competitor's bag)). Appellants point to similarities in color, logo placement, and marketing campaigns. Id. at 20; see also Tr. 13. Appellants assert that "[t]he situation is best summarized by Otis Butler's declaration, stating how, 'For twenty years the Gendreau bag was available without straps, handles or 11 Appeal2018-001214 Application 13/491,515 gussets .... Just a few years after the "The Green Garmento®" bag entered the marketplace, the distributors of the Gendreau bag changed the construction of their bags; which now include a gusset and shoulder strap."' Id. at 21. "[C]opying the claimed invention, rather than one within the public domain, is indicative of non-obviousness." Windswfzng Int'!, Inc. v. AMF, Inc., 782 F.2d 995, 1000 (Fed. Cir. 1986) (citation omitted). However, "[ n Jot every competing product that arguably [falls] within the scope of a patent is evidence of copying. Otherwise every infringement suit would automatically confirm the nonobviousness of the patent. Rather, copying requires the replication of a specific product." Iron Grip Barbell Co., 392 F.3d at 1325. Evidence of "copying" may be demonstrated either through internal documents, see Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1196-97 (Fed. Cir. 2003); direct evidence such as disassembling a patented prototype, photographing its features, and using the photograph as a blueprint to build a virtually identical replica, see Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1285 (Fed. Cir. 2000); or access to, and substantial similarity to, the patented product (as opposed to the patent), Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1027 (Fed. Cir. 1985), overruled on other grounds by, Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1359 (Fed. Cir. 1999) (en bane). Id. The mere fact of copying is not necessarily dispositive of nonobviousness; more than the mere fact of copying is needed to make that action significant to a determination of obviousness. Cable Electric Products Inc. v. Genmark, Inc., 770 F.2d 1015, 1028 (Fed. Cir. 1985); see also In re GPAC, Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). 12 Appeal2018-001214 Application 13/491,515 There is little persuasive objective evidence in the record that Cleaner's Supply copied Appellants' product. Similarity in certain features, the use of the color green to convey an environmentally friendly product, placement of a logo on the product or in advertising, and the nature of marketing campaigns are not persuasive evidence of copying. And, Appellants' general allegations and reliance on Mr. Butler's statement fail to serve as persuasive evidence of copying by Cleaner's Supply. In other words, the proffered evidence in support of copying is not objective, direct evidence that would have more probative value in demonstrating actual copying by Cleaner's Supply. Conclusion Having fully considered the secondary considerations evidence proffered by Appellants in support of nonobviousness, we conclude that on balance, the evidence is not persuasive to establish nonobviousness of claim 1. For example, much of the evidence submitted by Appellants, in the form of declarations by third parties (filed June 10, 2015), emphasize features of the Appellants' reusable bag that are not claimed, e.g., "features that can go onto a drycleaning conveyor without compromising the conveyor's weight of volume capacity." David Meyer Declaration i-f 4; see also David Suber Declaration i-f 4, Robert Smelling Declaration i-f 4, Michael Bleier Declaration i-f 4, Karen Maxwell Declaration i-f 4, Randolph Lambert Declaration i-f 4, Michael Nesbit Declaration i-f 4, Mark Callaghan Declaration i-f 4. As discussed above, Mr. Butler's declaration also points to those unclaimed features as being significant innovations in Appellants' product. Although Appellants have provided some objective evidence of nonobviousness, the overall weight of this evidence does not outweigh the 13 Appeal2018-001214 Application 13/491,515 evidence of obviousness relied upon by the Examiner. See Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) ("evidence of unexpected results and other secondary considerations will not necessarily overcome a strong prima facie showing of obviousness"); Leapfrog Enters. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (holding that objective evidence of non-obviousness presented, including substantial evidence of commercial success, praise, and long-felt need, was inadequate to overcome the strength of the prima facie obviousness showing). In view of the foregoing, we sustain the Examiner's rejection of independent claim 1 as obvious over Gendreau, Pendergast, and Wachtel, and the rejections of claims 2-9, 11-13, 15-17, 19, and 20, which fall with claim 1. Appellants rely on the same evidence of nonobviousness in contesting the additional rejections of claims 1-9, 12, 13, 15-17, 19, and 20 under 35 U.S.C. § 103(a). See Br. 28-29. As noted above, the evidence of secondary considerations in the form of declarations almost exclusively focus on the Gendreau reference, which is not solely relied upon as part of these rejections. We do not find the proffered evidence outweighs the evidence of obviousness under these rejections. Accordingly, we sustain the additional obviousness rejections of claims 1-9, 12, 13, 15-17, 19, and 20. DECISION The Examiner's decision to reject claims 1-9, 11-13, 15-17, 19, and 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). AFFIRMED 14 Copy with citationCopy as parenthetical citation