Anthony Fernandez

Patent Trials and Appeals Board

Nov 27, 2020

2020003351 (P.T.A.B. Nov. 27, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/860,752 01/03/2018 Anthony M. Fernandez 5623
23617 7590 11/27/2020
JOHN V STEWART
9844 SW 100th Terrace Rd
OCALA, FL 34481
EXAMINER
VANTERPOOL, LESTER L
ART UNIT PAPER NUMBER
3734
NOTIFICATION DATE DELIVERY MODE
11/27/2020 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):
jvsmail@aol.com
patents@jvsinventions.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANTHONY M. FERNANDEZ
____________

Appeal 2020-003351
Application 15/860,752
Technology Center 3700
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5 and 8–10. We have jurisdiction
under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Sole Premise LLC,
910 Belle Ave, #1150, Winter Springs FL 32708 USA. (Appeal Br. 2).
Appeal 2020-003351
Application 15/860,752

2

CLAIMED SUBJECT MATTER
The Appellants’ claimed invention relates to shoe carry bags (Spec.
page 1, line 8). Claim 1, reproduced below, is representative of the subject
matter on appeal.

1. A shoe carrying bag comprising:
front and back shoe holding sections releasibly attached to
respective front and back sides of a vertical center section;
wherein the front and back sections open away from the center
section in opposite directions into a horizontally opposed
configuration while the center section remains vertical;
wherein each of the front and back sections comprises at least
two shoe compartments, the shoe compartments being separated from
each other by rigid or semi-rigid horizontal partitions within each of
the front and back sections;
wherein each of the shoe compartments is sized to hold two
shoes;
wherein a top side of the center section has a separable closure
for inserting a laptop computer into a compartment in the center
section.

THE REJECTIONS
The following rejections are before us for review:
1. Claims 1–3 are rejected under 35 U.S.C. § 103 as unpatentable
over Greiner (US 2007/0267114 A1, published Nov. 22, 2007) and
Kameoka (US 2007/0000796 A1, published Jan. 4, 2007).
2. Claim 4 is rejected under 35 U.S.C. § 103 as unpatentable over
Greiner, Kameoka, and Cooper (US 5,577,652, issued Nov. 26, 1996).
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3. Claims 52, 8, and 9 are rejected under 35 U.S.C. § 103 as
unpatentable over Greiner, Lanzisera (US 2017/0055665 A1, published Mar.
2, 2017) and Kameoka.
4. Claim 10 is rejected under 35 U.S.C. § 103 as unpatentable
over Greiner, Lanzisera, Kameoka3, and Cooper.

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence4.

ANALYSIS
Claims 1–4
The Appellant argues that the rejection of independent claim 1 under
35 U.S.C. § 103 as being unpatentable over Greiner and Kameoka is
improper because one of ordinary skill in the art would not have made the
modifications as put forth in the rejection of record (Appeal. Br. 4, 5, Reply
Br. 2, 3).
In contrast, the Examiner has determined that the rejection of record is
proper (Ans. 4–8).

2 The Amendment filed Aug. 13, 2019 incorporated the limitations of
claim 6 into claim 5, and cancelled claim 6. Thus the rejection of claims 5,
8, and 9 is now considered to be under the references used in the Final
Action for claim 6. The Appellant also lists claims 5 as being rejected under
these same references in the Appeal Brief at page 5.
3 Claim 10 depends from claim 5 and the omission of Kameoka in the
rejection is considered a typographical error.
4 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 15/860,752

4

We agree with the Appellant. In KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007), the Supreme Court noted that in an obviousness
analysis that “rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”.
Greiner has disclosed a vanity bag that has front and back sections
(11, 13), and a top section (14) with a separable closure (102) providing
another storage compartment. Kameoka teaches a bag for storing shoes in
compartments (8, 9) with a partition (12) between the compartments.
Here, claim 1 requires that “each of shoe compartments is sized to
hold two shoes”; the “center section has a separable closure for inserting a
laptop computer”; and each of the shoe compartments “being separated from
each other by rigid or semi-rigid horizontal partitions within each of the
front and back sections”. Greiner at paragraph 3 has disclosed the vanity bag
is for the storage of jewelry or cosmetics but here the claim requires “shoe
compartments [is] sized to hold two shoes”. In response, the Examiner states
in the Answer at page 6 that the bag of Greiner is capable of storing toy,
infant, or toddler shoes, as well as summer slippers and flexible sandals and
that Kameoka teaches compartments sized to hold shoes. However, even
taking this into consideration, the claims still also require shoe
compartments “being separated from each other by rigid or semi-rigid
horizontal partitions within each of the front and back sections”. In Greiner
at Figure 3A for example the compartment 33 is separated by a stitched
seam 330, not a “rigid or semi-rigid partitions”. In Kameoka, the material for
the partition material is described as being the same as compartment 9 which
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is “relatively rigid but lightweight and resistant material”. Here, the
modification of Greiner to be modified by Kameoka to meet the limitations
of claim 1 lacks articulated reasoning with rational underpinning to support
the legal conclusion of obviousness. In particular, the rejection requires
Greiner to be modified to by Kameoka to include the rigid or semi-rigid
partitions in a manner that requires impermissible hindsight in relation to the
other combination of elements in the claim. For this reason the rejection of
independent claim 1 and dependent claims 2 and 3 is not sustained.
Additionally, the rejection of claim 4, which adds Cooper, fails to cure the
deficiency in the base claim.

Claims 5 and 8–10
The Appellant argues that the rejection of claim 5 is improper because
the combination of Greiner, Lanzisera, and Kameoka would not have been
an obvious modification (App. Br. 5, 6).
In contrast, the Examiner has determined that the cited rejection is
proper (Ans. 9-13).
We agree with the Appellants. Claim 5 is similar to claim 1 addressed
above, but has some differences. Claim 5 requires “multiple shoe
compartments”, the center section zippered compartment “sized for a laptop
computer”, and “wherein each of the front and back shoe holding sections
comprise at least two shoe carrying compartments separated by a rigid or
semi-rigid horizontal partition”. In Greiner, it is unclear that the center
section (14) is “sized for a laptop computer” as specifically claimed, and it is
unclear how the other cited references specifically disclose this limitation as
well. Regardless, the claim also requires “wherein each of the front and
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back shoe holding sections comprise at least two shoe carrying
compartments separated by a rigid or semi-rigid horizontal partition” in
combination with the other elements. In Greiner at Figure 3A for example
compartment 33 is separated by stitched seam 330, not a “rigid or semi-rigid
partitions”. In Kameoka, the material for the partition material is described
as being the same as compartment 9 which is “relatively rigid but
lightweight and resistant material”. Here, the modification of Greiner,
Lanzisera, and Kameoka to meet the limitations of claim 5 lacks articulated
reasoning with rational underpinning to support the legal conclusion of
obviousness. In particular, the rejection requires Greiner to be modified to
by Kameoka to include the rigid or semi-rigid partitions in a manner that
requires impermissible hindsight in relation to the other combination of
elements in the claim. For this reason the rejection of claim 5 and its
dependent claims is not sustained. Additionally, the rejection of claim 10,
which adds Cooper, fails to cure the deficiency in the base claim.

CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting the claims 1–5 and 8–10 as listed in the Rejections section above.

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Application 15/860,752

7

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3 103 Greiner, Kameoka 1–3
4 103 Greiner, Kameoka,
Cooper
4
5, 8, 9 103 Greiner, Lanzisera,
Kameoka
5, 8, 9
10 103 Greiner, Lanzisera,
Kameoka, Cooper
10
Overall
Outcome
1–5, 8–10

REVERSED