Daniel Opalacz et al.

Patent Trials and Appeals Board

Sep 16, 2020

2020000899 (P.T.A.B. Sep. 16, 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.
15/587,499 05/05/2017 Daniel Opalacz BDRK003 3568
66068 7590 09/16/2020
RICHARD A. BAKER, JR.
New England Intellectual Property, LLC
291 Main Street
WEST NEWBURY, MA 01985
EXAMINER
PRANGE, SHARON M
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
09/16/2020 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):
RICHARD_A_BAKER_JR@YAHOO.COM
USPTO@dockettrak.com
rbaker@newenglandip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DANIEL OPALACZ and NICHOLAS PENCE
____________________

Appeal 2020-000899
Application 15/587,499
Technology Center 3700
____________________

Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection of claims 15–20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, “[t]he real part[ies] in interest . . .
are the inventors Nicholas Pence and Daniel Opalacz. . . . Both inventors
are principals in Bedrock Sandals LLC.” Appeal Br. 4.
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Appellant’s disclosure “relates generally to the field of footwear.”
Spec. ¶ 2. Independent claim 15 is the only independent claim on appeal.
Below, we reproduce claim 15 as representative of the appealed claims.
15. An apparatus for wearing on a foot, comprising
a sole of the apparatus;
a G-hook,
a hook strap made of strapping connected to a plurality of
points on the sole, said strapping including a plurality of
pockets for receiving the G-hook, where moving the G-hook to
a different pocket adjusts the fit of the apparatus on the foot.
REJECTION AND PRIOR ART
The Examiner rejects claims 15–20 under 35 U.S.C. § 103(a) as
unpatentable based on Bathum2 and Pundyk.3
ANALYSIS
We have carefully reviewed the record, including Appellant’s Appeal
and Reply Brief, and the Examiner’s Final Office Action and Answer. Based
on our review, Appellant does not persuade us that the Examiner’s
obviousness rejection of claims 15–20 is in error. Thus, we sustain the
rejection.
Appellant argues that the Examiner “fails to demonstrate a credible
motivation to combine Bathum and Pundyk.” Appeal Br. 11; see also id.
at 11–21. This argument is not persuasive. The Examiner relies on
Bathum’s adjustment strap 18 to disclose the claimed hook strap. Final
Action 2. It is true that Bathum discloses that “[i]n the . . . embodiment
[shown in Appellant’s figures], a hook-and-loop material, such as Velcro™

2 Bathum, US 7,121,020 B1, issued Oct. 17, 2006.
3 Pundyk, US 8,523,629 B2, issued Sept. 3, 2013.
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is used to fasten . . . adjustment strap 18 to itself.” Bathum col. 2, ll. 31–33.
However, although Bathum does not disclose G-hooks, Bathum does
disclose that in place of the hook-and-loop material, “fasteners such as
snaps, hooks, clips, ties, buckles, etc. may be used.” Id. at col. 2, ll. 34–35.
According to the Examiner, because Bathum discloses using fasteners on
strap 18,
[i]t would have been obvious . . . to have provided a strap
fastener including a G-hook and pockets, as taught by Pundyk,
to the strap of Bathum as this would be a simple substitution of
one type of strap fastener for another, with the predictable result
of providing a secure connection of the strap end to the strap.
Final Action 2–3. Despite Appellant’s arguments to the contrary, we agree
with the Examiner that Pundyk’s G-hooks and pockets are a simple
substitution for the fasteners Bathum discloses, and the Examiner provides
an adequate motivation for using Pundyk’s G-hooks on Bathum’s strap 18.
Appeal Br. 11–21.
We are not persuaded by Appellant’s argument that because the
Examiner expressly “fails to define [the level of skill of] a person of
ordinary skill in the art” we are required to reverse the rejection. Id. at 16;
see also id. at 16–20. Instead, we agree with the Examiner that “the level of
ordinary skill in the art is implicitly defined in view of the prior art applied.”
Answer 4. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
(“[T]he absence of specific findings on the level of skill in the art does not
give rise to reversible error ‘where the prior art itself reflects an appropriate
level and a need for testimony is not shown.”’ (Quoting Litton Indus. Prods.,
Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).
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Appellant argues that “the evidence shows that the secondary
indications of non-obviousness weigh heavily in favor of” the non-
obviousness of the claims. Appeal Br. 11; see also id. at 21–23.
Specifically, Appellant relies on commercial success. Based on our review,
Appellant does not provide evidence sufficient to establish that the claims
are nonobvious.
To be relevant, objective indicia (sometimes referred to as “secondary
considerations” or “secondary indications”) of non-obviousness must be
commensurate in scope with the claimed invention. In re Kao, 639 F.3d
1057, 1068 (Fed. Cir. 2011). That is, there must be a “nexus” between 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).
In this case, Appellant submits evidence intended to establish a nexus
between the claimed invention and the commercial product. See Declaration
of Daniel Opalacz, ¶ 5 (“The . . . line of sandals is successful in the market
because it is very adjustable, comfortable, rugged, and can handle long hikes
and difficult terrain. The . . . sandal is adjustable, rugged, and comfortable
because it uses the G-hook design described in the . . . patent application.”),
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¶ 6 (“The combination of adjustability, comfort, and strength, provided by
the G-hook strapping system is why customers buy the . . . [sandal], and why
the . . . [sandal] is a commercial success.”). However, Appellant does not
provide much evidence at all regarding the level or amount of commercial
success. Instead, Appellant makes only general, subjective statements that
we are unable to evaluate. For example, Daniel Opalacz’s Declaration states
that the “sandal[] is successful in the market place” (id. ¶ 5), the sandal “has
enjoyed tremendous commercial success” and is the “leading product line”
(id. ¶ 6), and the sandal “has been sold at REI, Huckberry.com, and
numerous small stores with great success” (id. ¶ 7). None of this tells us
anything that would allow us to quantify, or otherwise evaluate, how
successful Appellant’s product is. The data leading one person to a
subjective conclusion of “commercial success” may lead another person (or
the Board) to an opposite determination. Without providing any such data,
Appellant cannot establish commercial success.
Thus, based on the foregoing, Appellant does not persuade us of error
in the Examiner’s obviousness rejection of independent claim 15, or of
claims 16–20 depending from claim 15. Consequently, we sustain the
obviousness rejection.
CONCLUSION
We AFFIRM the Examiner’s obviousness rejection of claims 15–20.

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In summary:
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)(1)(iv).

AFFIRMED

Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
15–20 103 Bathum, Pundyk 15–20