2021001089 (P.T.A.B. Aug. 24, 2021)

Arlene Gomez-Morillo

Patent Trials and Appeals BoardAug 24, 2021

2021001089 (P.T.A.B. Aug. 24, 2021)

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. 15/963,855 04/26/2018 Arlene Gomez-Morillo 3056.2 - Arlene (RRM) 5367 69656 7590 08/24/2021 EUGENIO J. TORRES 221 PLAZA BUILDING PONCE DE LEON, SUITE 403 SAN JUAN, PR 00917 EXAMINER MAI, TRI M ART UNIT PAPER NUMBER 3733 NOTIFICATION DATE DELIVERY MODE 08/24/2021 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): ETORRES@ferraiuoli.com Patent@ferraiuoli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ARLENE GOMEZ-MORILLO ____________ Appeal 2021-001089 Application 15/963,855 Technology Center 3700 ____________ Before BIBHU R. MOHANTY, BRADLEY W. BAUMEISTER, and ROBERT J. SILVERMAN, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge MOHANTY. Opinion Dissenting filed by Administrative Patent Judge BAUMEISTER. 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 1–11. We have jurisdiction under 35 U.S.C. § 6(b). 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 the inventor, Arlene Gomez-Morillo. (Appeal Br. 4). Appeal 2021-001089 Application 15/963,855 2 SUMMARY OF THE DECISION We REVERSE. CLAIMED SUBJECT MATTER The Appellant’s claimed invention relates to a reversible, expandable, and reusable handbag (Spec., page 2, lines 12, 13). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A reversible and expandable handbag, comprising: a front panel, a back panel, a bottom panel, a first lateral panel, and a second lateral panel interconnected with each other to define an interior of the handbag, wherein each panel comprises first and second vertical sides and first and second horizontal sides; wherein the first horizontal side of the front panel is perpendicularly attached to the first horizontal side of the bottom panel, and the first horizontal side of the back panel is perpendicularly attached to the second horizontal side of the bottom panel; wherein the first horizontal side of the first lateral panel is perpendicularly attached to first vertical side of the bottom panel, and the first horizontal side of the second lateral panel is perpendicularly attached to the second vertical side of the bottom panel; wherein the first vertical side of the front panel is attached to the first vertical side of the first lateral panel, and the second vertical side of the front panel is attached to the first vertical side of the second lateral panel; wherein first vertical side of the back panel is attached to the second vertical side of the first lateral panel, and the second vertical side of the back panel is attached to the second vertical side of the second lateral panel; wherein a first comer on the second horizontal side of the front panel is attached to a first comer on the second horizontal side of the first vertical panel, and a second comer on the second horizontal side of the front panel is attached to a first comer on the second horizontal side of the second lateral panel; wherein a first corner on the second horizontal side of the back panel is attached to a second comer of the second horizontal side of the first lateral panel, and a second comer of the second horizontal Appeal 2021-001089 Application 15/963,855 3 side of the back panel is attached to a second comer on the second horizontal side of the second lateral panel; wherein the interior of the handbag further comprises a first inner pocket and second inner pocket, wherein the first inner pocket is attached to the first and second vertical sides of the first lateral panel and the second inner pocket is attached to the first and second vertical sides of the second lateral panel; wherein the first inner pocket includes a first bottom end and the second inner pocket includes a second bottom end, each bottom end independent of the bottom panel; and wherein the handbag is configured to expand laterally by flipping of the handbag inside out, which causes the first and second inner pockets to be located outside the interior of the handbag, thus increasing the size of the handbag. Appeal Br. 22–23 (Claims Appendix). THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Josephson US 1,418,717 June 6, 1922 Belenson US 4,210, 186 July 1, 1980 Litwack US 4,301,849 Nov. 24, 1981 Mainville US 4,364,425 Dec. 21, 1982 Brennan US 5,046,860 Sept. 10, 1991 Cirigliano US 5,653,337 Aug. 5, 1997 Christman US 5,813,445 Sept. 29, 1998 Burnett US 6,405,909 B1 June 18, 2002 Gordon US 6,810,933 B2 Nov. 2, 2004 Redzisz US 7,950,509 B2 May 31, 2011 Godshaw US 2005/0011904 A1 Jan. 20, 2005 Hodgson US 2017/0202325 A1 July 20, 2017 McClain US D520,747 S May 16, 2006 Wang US D630,844 S Jan. 18, 2011 Currier US D700,780 S Mar. 11, 2014 Hanna US D711,096 S Aug. 19, 2014 Carter US D824,666 S Aug. 7, 2018 Appeal 2021-001089 Application 15/963,855 4 The following rejections are before us for review2: 1. Claims 1 and 2 are rejected under 35 U.S.C. § 103 as unpatentable over Brennan and Litwack or in the alternative Brennan, Litwack, Christman and Godshaw. 2. Claims 3–5 are rejected under 35 U.S.C. § 103 as unpatentable over Brennan, Litwack, Christman, and Josephson. 3. Claims 3–5 are rejected under 35 U.S.C. § 103 as unpatentable over Brennan, Litwack, Christman, and Hanna. 4. Claims 10 is rejected under 35 U.S.C. § 103 as unpatentable over Brennan, Litwack, Mainville, and Burnett. 5. Claims 11 is rejected under 35 U.S.C. § 103 as unpatentable over Brennan, Litwack and Christman. 6. Claims 1, 2, 6, and 7 are rejected under 35 U.S.C. § 103 as unpatentable over Litwack and Cirigliano or Belenson. 7. Claims 3 and 4 are rejected under 35 U.S.C. § 103 as unpatentable over Litwack and Cirigliano or Belenson, and Josephson. 8. Claims 5 is rejected under 35 U.S.C. § 103 as unpatentable over Litwack and Cirigliano or Belenson, and Josephson, and Redzisz. 9. Claims 8 and 9 are rejected under 35 U.S.C. § 103 as unpatentable over Litwack and Cirigliano or Belenson, and Gordon. 10. Claims 10 is rejected under 35 U.S.C. § 103 as unpatentable over Litwack and Cirigliano or Belenson, and Mainville or Burnett. 2 The rejections before us are considered to be the rejections listed in the Answer at pages 5–15. These rejections are listed under the “Grounds of Rejection Applicable to the Appealed Claims” section of the Answer which begins at page 4. Further, the Answer at page 3 expressly indicates that the rejections not listed in that section the Answer are withdrawn. Appeal 2021-001089 Application 15/963,855 5 11. Claim 11 is rejected under 35 U.S.C. § 103 as unpatentable over Litwack and Cirigliano or Belenson, and Christman. 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 evidence.3 ANALYSIS Rejections under 35 U.S.C. § 103 with Brennan as the Base Reference The Appellant argues that the rejection of 1 rejected under 35 U.S.C. § 103 as unpatentable over Brennan and Litwack is improper because the prior art fails to disclose or suggest the claim limitations that the first and second pockets have bottom ends “independent of the bottom panel” that the handbag is “configured to expand laterally by flipping the handbag inside out” (Appeal Br. 13–19; Reply Br. 2–5). The Appellant also argues that the combination would not have been obvious and uses improper hindsight (Appeal Br. 13). In contrast, the Examiner has determined that the cited rejection of record is proper (Final Act. 2, 3; Ans. 5–8). We agree with the Appellant. In combination with the other claimed elements, claim 1 requires: wherein the first inner pocket includes a first bottom end and the second inner pocket includes a second bottom end, each bottom end independent of the bottom panel; and 3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2021-001089 Application 15/963,855 6 wherein the handbag is configured to expand laterally by flipping of the handbag inside out, which causes the first and second inner pockets to be located outside the interior of the handbag, thus increasing the size of the handbag. (Claim 1, emphasis added). The Examiner cites to Brennan at Fig. 9 as disclosing first and second pockets independent from the bottom panel, but the reference fails to disclose this. Brennan in discussing Fig. 9, at col. 4, line 60 to col. 5, line 9, discloses that the bag 198 in Figure 9 has compartments 200 having a closed end 202. Brennan however does not specifically disclose that the compartments closed end 202 is independent from the bottom panel 32. Thus, the argued claim limitation has not been shown in the prior art. Also, Brennan at Fig. 9 fails to disclose the limitation for “a first inner pocket and second inner pocket, wherein the first inner pocket is attached to the first and second vertical sides of the first lateral panel and the second inner pocket is attached to the first and second vertical sides of the second lateral panel” in Fig. 9, as three pockets are shown and none of these is attached at both sides to the lateral panel in the manner claimed. The bag is also not disclosed as being reversible. The Examiner cites to Litwack at Figures 1–8 to disclose a bag with pockets that can be inverted. Litwack at Fig. 7 for example does disclose a bag that is reversible, and has an exterior side pocket 70 and interior side pocket 72. However, in Litwack the bag fails to expand laterally when the handbag is flipped insider out. Here, the rejection of record lacks articulated reasoning with rational underpinnings to modify the reference of Brennan with Litwack to have the first and second pockets have bottom ends “independent of the bottom Appeal 2021-001089 Application 15/963,855 7 panel” without impermissible hindsight. Accordingly this rejection of claim 1 and dependent claim 2 is not sustained. The Examiner in the Answer at pages 8 and 9 has also presented an alternative rejection of claim 1 under 35 U.S.C. § 103 by Brennan, Litwack, Christman and Godshaw. The Answer at page 9 cites to Christman as disclosing a bag with pockets 46, but the bag is not reversible. The Answer at page 9 cites to Godshaw as disclosing pocket with a separate bottom panel the bag, but the pocket is not shown attached to a bag or reversible. Here, the rejection of record lacks articulated reasoning with rational underpinnings to modify the reference of Brennan with Litwack to have the first and second pockets have bottom ends “independent of the bottom panel” by Christman or Godshaw in the manner claimed without impermissible hindsight. Accordingly this alternative rejection of claim 1 and dependent claim 2 is not sustained. The remaining rejections under 35 U.S.C. § 103 with Brennan as the base reference add additional references to meet the limitations of dependent claims which fail to cure the deficiency of the base rejection and the rejection of these claims are not sustained. Rejections under 35 U.S.C. § 103 with Litwack as the Base Reference The Appellant argues that the rejection of claim 1 as unpatentable over Litwack and Cirigliano or Belenson is improper because Litwack discloses a reversible bag with a reversible zipper, but does not disclose the bag is expanded by flipping the bag inside out (Appeal Br. 19). The Appellant argues that Cirigliano also fails to disclose a bag that expands laterally by flipping a bag inside out (Appeal Br. 19). The Appeal 2021-001089 Application 15/963,855 8 Appellant argues that Belenson fails to disclose a bag that expands laterally or has side pockets whose bottom panel is independent from the bottom panel of the main bag (Appeal Br. 20). The Appellant argues that the combination of Litwack and Cirigliano or Belenson to meet the claimed limitations would not have been obvious (Appeal Br. 20). In contrast, the Examiner has determined that the cited rejection of record is proper (Final Act. 4, 5; Ans. 12, 13). We agree with the Appellant. Here, there is no articulated reasoning with rational underpinnings to modify the base reference to Litwack to have the side pockets be altered as shown by Cirigliano or Belenson to meet the required limitations without impermissible hindsight. In Litwack, the bag of Fig. 5 and 7 has the pockets on end chambers of the bag, and the bag reverses by simply being pushed through but the bag does not expand laterally when reversed. Cirigliano discloses a tote bag that can be altered to take the form of a bag, open display, knapsack, or tool roll (Figs. 1–9). In Cirigliano, the first inner pocket is not attached to the first and second vertical sides of the first lateral panel. In Belenson, a camera bag has end compartments 11, 12, but it is not reversible or shown to expand laterally. Further, in Belenson, the first and second pockets bottom ends are not independent of the bottom panel of the bag. Here, there is no articulated reasoning with rational underpinnings for the modifying Litwack by Cirigliano or Belenson in the manner asserted in the rejection to meet the cited claim limitations without impermissible hindsight. Accordingly, the rejection of claim 1 and its dependent claim 2 under these rejections is not sustained. Appeal 2021-001089 Application 15/963,855 9 The remaining rejections under 35 U.S.C. § 103 with Litwack as the base reference add additional references to meet the limitations of dependent claims which fail to cure the deficiency of the base rejection and the rejection of these claims is not sustained. Rejections Not Considered As noted in the Rejections section above, the rejections not listed in the Grounds of Rejection section of the Answer are considered withdrawn (see footnote 2 above). The “WITHDRAWN REJECTIONS” of the Answer expressly states that the except for the rejections listed, all other rejections are withdrawn by the Examiner. Thus, we consider the rejection made under 35 U.S.C. § 103 under Brennan, Litman, Christman or Currier, and further in view of Godshaw withdrawn as it was not listed in that section of the Answer. The Dissent views the reliance of the Currier reference as an omission in not being listed as it is mentioned in the remarks section at page 19 of the Answer. We disagree with this contention as it was not expressly listed in the Grounds of Rejection section of the Answer as noted above. Regardless, the inadvertent listing of the Currier reference in the Answer at page 19 of the Answer has been made in reference to the rejection listed at page 12 of the Answer which is made under 35 U.S.C. § 103 by Litwack, Cirigliano, or Belenson. This rejection does not use the Brennan reference as the Dissent uses in its analysis. In contrast, for the reasons given above, we do not consider the rejection alluded to in the Dissent presented before us. Regardless, to the extent considered we do not consider the rationale of the Dissent in the analysis to any extent presented by the Examiner to support a Appeal 2021-001089 Application 15/963,855 10 conclusion of obviousness as it lacks articulated reasoning with rational underpinnings to support a conclusion of obviousness. CONCLUSIONS OF LAW We conclude that Appellant has shown that the Examiner erred in rejecting the claims as listed in the Rejection above. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2 103 Brennan and Litwack or in the alternative Brennan, Litwack, Christman and Godshaw 1, 2 3–5 103 Brennan, Litwack, Christman, and Josephson 3–5 3–5 103 Brennan, Litwack, Christman, and Hanna 3–5 10 103 Brennan, Litwack, Mainville, and Burnett 10 11 103 Brennan, Litwack and Christman 11 1, 2, 6, 7 103 Litwack and Cirigliano or Belenson 1, 2, 6, 7 3, 4 103 Litwack and Cirigliano or Belenson, and Josephson 3, 4 Appeal 2021-001089 Application 15/963,855 11 5 103 Litwack and Cirigliano or Belenson, and Josephson, and Redzisz 5 8, 9 103 Litwack and Cirigliano or Belenson, and Gordon 8, 9 10 103 Litwack and Cirigliano or Belenson, and Mainville or Burnett 10 11 103 Litwack and Cirigliano or Belenson, and Christman 11 Overall Outcome 1–11 REVERSED Appeal 2021-001089 Application 15/963,855 12 BAUMEISTER, Administrative Patent Judge, dissenting. Brennan discloses various embodiments of a shopping bag assembly that is made of a flexible woven fabric and that defines a base and sidewalls. Brennan col. 2, ll. 12–14. Brennan’s shopping bag assembly includes “a plurality of elongated storage compartments mounted thereon.” Id. at col. 1, l. 65–col. 2, l. 2. Brennan discloses that the additional storage compartments may be provided either on the interior of the shopping bag assembly (e.g., Figs. 1, 4, 5) or on the exterior (e.g., Figs. 6–10). A given side or “lateral” panel of the shopping bag assembly may possess either one single additional storage compartments (e.g., Figs. 1, 4, 7) or plural additional storage compartments (e.g., Figs. 1, 4, 6–10). In the embodiments in which the additional storage compartments are on the exterior of the shopping bag assembly, the storage compartments may include a bottom end that is independent of the bottom panel of the shopping bag assembly’s main compartment. E.g., Brennan Fig. 8.4 However, Brennan does not depict a single embodiment in which a lateral panel includes only one single external storage compartment having a bottom end that is independent of the bottom panel in combination with the storage 4 I understand the claim requirement that the bottom end of the pocket being independent of the bottom panel to mean that the side of the inner pocket is not sewn or attached directly to the portion of the bottom panel that is bound by the front, back, and two lateral panels. In contrast, a bottom panel that includes an additional portion extending beyond a handbag’s lateral panel, and to which an exterior pocket is sewn or attached does not constitute the exterior pocket being attached directly to the bottom panel. This is because the resultant pocket will be separate from the main portion of the bottom panel, such that the pocket is free to be reoriented into either an internal- pocket or external-pocket orientation. Appeal 2021-001089 Application 15/963,855 13 compartment being attached to the first and second vertical sides of the lateral panel. Brennan’s Figure 8 embodiment, for example, instead depicts a lateral panel having three external storage compartments with independent bottom ends, but not one single external compartment that has sides adjacent to the opposing vertical edges of the lateral panel. Brennan’s Figure 1 embodiment depicts the shopping bag having a single additional compartment on each of the narrower lateral panels such that the additional compartments have vertical side edges that are adjacent to the vertical side edges of the shopping bag assembly’s lateral panels, but it is unclear from the drawing whether the bottom ends of the additional compartments are separate from the shopping bag assembly’s bottom panel. Currier teaches a doggie organizer that has two outer pockets, wherein the first outer pocket is attached to the first and second vertical sides of Currier’s first end panel or “lateral panel,” and wherein the second outer pocket is attached to the first and second vertical sides of Currier’s opposing lateral end panel. See Currier Figs. 1–8; see also Examiner’s Answer 19, mailed Nov. 10, 2020 (citing Currier for teaching that it was known to have end and side pockets).5 5 The Majority understands that the Examiner has dropped the reliance on Currier from the rejections because that reference is not listed in the heading of the rejection in the Examiner’s Answer. See Ans. 5. I view this omission as a clerical oversight because the Examiner never affirmatively states that reliance on Currier is being withdrawn. See, e.g., Ans. 3 (wherein the WITHDRAWN REJECTIONS section of the Answer does not list any withdrawn rejections or references). Furthermore, the Examiner continues to expressly reference Currier in the Examiner’s Answer. Ans. 19. Appeal 2021-001089 Application 15/963,855 14 As such, I agree with the Examiner that it would have been obvious to provide a flexible bag, such as a shopping bag, with two pockets respectively attached at the first and second sides of both of the opposing lateral panels, and further having bottom ends that are independent of the shopping bag’s bottom panel. Such a modification would have constituted combining prior-art elements of Brennan’s various embodiments—or at least prior-art elements of Brennan’s and Currier’s various embodiments— according to known methods to yield predictable results. KSR Int’l Co. v Teleflex Inc., 550 U.S. 398, 416 (2007); see also MPEP § 2143(A). Furthermore, because Brennan discloses that the shopping bag is composed of a flexible woven material, a shopping bag constructed with exterior compartments or pockets according to the modifications noted above is inherently capable of being turned inside out. As such, a shopping bag according to the cited combination possesses every structural limitation, as recited in claim 1, with the exception of the specified orientation. That is, the teachings of Brennan, either alone or in combination with Currier, render obvious a shopping bag with exterior pockets that, if turned inside-out, corresponds to the reversible and expandable handbag, as recited by Appellant’s claim 1. To be sure, claim 1 recites the flexible shopping bag is oriented with the pockets on the inside (with “interior-oriented pockets”), with the capability of being inverted so that the pockets are on the outside (“with exterior-oriented pockets”). Whereas the combination of Brennan and Currier teaches or suggests a flexible woven shopping bag with exterior- oriented pockets that is capable of being inverted into a bag with interior- oriented pockets. As such, the only remaining question is whether a Appeal 2021-001089 Application 15/963,855 15 sufficient motivation or suggestion existed to actually invert the exterior- oriented-pocket handbag of Brennan-Currier so as to be in the interior- pocket orientation, as claimed. The Examiner relies on Litwack for teaching that it would have been obvious to invert a flexible fabric shopping bag according to the teachings of Brennan, alone or in combination with Currier. Final Act. 2; Ans. 8. Appellant does not dispute that Litwack teaches that it would have been obvious to invert a flexible fabric shopping bag. Appellant instead argues, “neither Brennan nor Litwack disclose[s] that inverting the handbag will result in the handbag expanding laterally.” Reply Br. 5. This argument is unpersuasive because the Examiner did not rely on Litwack for teaching that the handbag would expand laterally when inverted. The Examiner relied on Litwack only for teaching that it was known to invert a flexible bag. The Examiner relied on the combination of Brennan and Currier for teaching a flexible bag with additional pockets, as claimed. And for the reasons set forth above, I agree with the Examiner that when a flexible bag with interior pockets according to Brennan and Currier is inverted, it necessarily will expand laterally. That is, the additional pockets will take up more lateral space when disposed in the exterior orientation because the pockets will not be constrained by the lateral walls of the handbag’s main compartment. The Examiner also effectively takes Official Notice that “in this art of container[s] or any art that use[s] flexible fabric material, [e.g.,] clothing, it [was] known to invert the product inside out at the end of the construction [or manufacturing] process to hide the seams of the material.” Ans. 8. The Examiner further also takes Official Notice that “it [was] known to invert Appeal 2021-001089 Application 15/963,855 16 [fabrics] inside out for cleaning purposes i.e., to have access to inside surface readily.” Id. Appellant does not provide persuasive evidence that either of these noticed facts were inaccurate. See Reply Br. 3–5. I agree that it was indisputably known, not only by those of ordinary skill in the fabric arts, but also by common laypersons, to sew fabrics in an inside-out orientation to hide the seams of the final product. I also agree that it also was well known to turn fabrics inside-out when washing for various purposes, such as expose the soiled fabric to increased washing-machine agitation or to help prevent fading of the exterior surface. “Rigid preventative rules that deny factfinders recourse to common sense . . . are neither necessary under [Supreme Court] case law nor consistent with it.” KSR, 550 U.S. at 421. “Our suggestion test is in actuality quite flexible and not only permits, but requires, consideration of common knowledge and common sense.” Id. (citation omitted). Furthermore, Brennan even states that the reusable bags may be washed when they become soiled. Brennan col. 5, ll. 43–45. For these reasons, I would affirm the obviousness rejection of claim 1.6 I, likewise, would affirm the obviousness rejections of claims 2– 11, which Appellant does not argue separately. Appeal Br. 21. 6 Even if one were to assume, solely for the sake of argument, that it were true that no motivation existed to invert a flexible handbag according to Brennan-Currier, that determination would mean that a manufacturer potentially could avoid liability for infringing claim 1 merely by manufacturing a flexible handbag according to Brennan-Currier solely in the exterior-pocket orientation. Applicant, qua Patent Owner, potentially would only be able to sue an end-user for infringement—not the manufacturer— once the end-user turns the manufactured exterior-pocket shopping bag inside-out so as to be in the interior-pocket orientation.