14250020 (P.T.A.B. Sep. 13, 2017)

Ex Parte Banowit

Patent Trial and Appeal BoardSep 13, 2017

14250020 (P.T.A.B. Sep. 13, 2017)

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. 14/250,020 04/10/2014 Steven W. BANOWIT 3498.0010000 1094 26111 7590 09/14/2017 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER FIGG, TRAVIS M ART UNIT PAPER NUMBER 1783 MAIL DATE DELIVERY MODE 09/14/2017 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 CHANNEL GEAR, LLC1 ____________ Appeal 2016-007668 Application 14/250,020 Technology Center 1700 ____________ Before ROMULO H. DELMENDO, WESLEY B. DERRICK, and JEFFREY R. SNAY, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL2 Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–14 and 16–26. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part and enter a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). 1 Steven W. Banowit is identified as sole inventor. Application Data Sheet, filed April 10, 2014. 2 We cite to the Specification (“Spec.”) filed April 10, 2014; Final Office Action (“Final Act.”) dated November 19, 2014; Appellant’s Appeal Brief (“Br.”) dated December 18, 2015; and Examiner’s Answer (“Ans.”) dated June 8, 2016. Appeal 2016-007668 Application 14/250,020 2 BACKGROUND The subject matter on appeal relates to a variable insulation system for outdoor equipment. Spec. ¶ 1. Independent claims 1, 19, 20, and 22 are reproduced from the Claims Appendix of the Appeal Brief as follows: 1. An article of outdoor equipment comprising: an interior layer; an exterior layer; a plurality of resealable channels disposed between the interior layer and the exterior layer, the plurality of resealable channels each having a height, a width, and a length; and a plurality of insulation pouches, the plurality of insulation pouches each having a height, a width, and a length; wherein each of the resealable channels is configured to receive one or more of the plurality of insulation pouches; wherein the plurality of insulation pouches have substantially the same length; and wherein the length of at least one of the resealable channels is at least twice the length of one insulation pouch. 19. A coat comprising: an interior layer; an exterior layer; a plurality of resealable channels disposed between the interior layer and the exterior layer; wherein the plurality of resealable channels are disposed in a body of the coat and one or more sleeves of the coat; and wherein the plurality of resealable channels are configured to receive at least one insulation pouch. 20. A sleeping bag comprising: an interior layer; an exterior layer; a first set of resealable channels disposed along the top of the sleeping bag between the interior layer and the exterior layer, each resealable channel in the first set of resealable channels comprising a closed end and a resealable end; Appeal 2016-007668 Application 14/250,020 3 a second set of resealable channels disposed along the bottom of the sleeping bag between the interior layer and the exterior layer, each resealable channel in the second set of resealable channels comprising a closed end and a resealable end; wherein the closed ends of the first set of resealable channels abut the closed ends of the second set of resealable channels; wherein each of the first set of resealable channels extends across the entire width of the top of the sleeping bag and each of the second set of resealable channels extends across the entire width of the bottom of the sleeping bag; and wherein each resealable channel is configured to receive at least one insulation pouch. 22. An article of outdoor equipment comprising: an interior layer; an exterior layer; a plurality of resealable channels disposed between the interior layer and the exterior layer; and a plurality of insulation pouches; wherein each of the resealable channels is configured to receive one or more of the plurality of insulation pouches; wherein each insulation pouch includes a first connection area including a first attachment member and a second connection area including a second attachment member; and wherein the first attachment member and the second attachment member are configured to releasably connect two or more insulation pouches to one another. Appeal 2016-007668 Application 14/250,020 4 REJECTIONS The Examiner maintains the following grounds of rejection:3 I. Claims 1, 2, 9–11, 13, 14, and 16–19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Osuna4 and Takashima.5 II. Claims 3–8, 12, and 22–26 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Osuna, Takashima, and Marquette.6 III. Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Osuna and Howe.7 IV. Claim 20 stands alternatively rejected under 35 U.S.C. § 103(a) as unpatentable over Osuna, Rojas,8 and Howe. V. Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Osuna, Howe, and Takashima. DISCUSSION Rejection I With regard to Rejection I, Appellant argues claims 1, 2, 9–11, 13, 14, and 16–18 as a group, and separately argues claim 19. Br. 12–18, 25–28. In accordance with 37 C.F.R. § 41.37(c)(1)(iv), we select claim 1 as representative of the group. Each of claims 2, 9–11, 13, 14, and 16–18 stands or falls with claim 1. Claim 19 is separately addressed. 3 Final Act. 5–24; Ans. 3–21. 4 US 6,243,896 B1, issued June 12, 2001 (“Osuna”). 5 US 5,706,535, issued January 13, 1998 (“Takashima”). 6 US 3,508,285, issued April 28, 1970 (“Marquette”). 7 US 5,657,497, issued August 19, 1997 (“Howe”). 8 US 4,839,934, issued June 20, 1989 (“Rojas”). Appeal 2016-007668 Application 14/250,020 5 Claim 1 The Examiner finds that Osuna discloses an adjustable-warmth bed covering that includes all of the elements recited in claim 1, except that Osuna does not provide at least one resealable channel that is at least twice the length of an insulation pouch. Final Act. 5–6. Osuna provides plural rows of contiguous pockets 50, each pocket having a width and height configured to receive an insulator pad 50 or a stack of insulator pads. Final Act. 5–6; Osuna Figs. 1, 2. The Examiner finds that Takashima teaches providing a bedding element with elongated channels, each configured to receive plural, interconnected deodorizers, such that the deodorizers may be inserted and removed efficiently. Final Act. 6–7; Takashima 3:44–46 (“Since the several pieces of deodorizer are linked together in this mat, the deodorizer element 23 can be efficiently removed and inserted in a short time.”). In light of the foregoing disclosures, the Examiner finds that one of ordinary skill would have a reason to replace Osuna’s row of pockets with an elongated channel, so as to facilitate insertion and removal of plural insulator pads, and concludes that one of ordinary skill in the art, at the time of the invention, would have found it obvious to do so. Final Act. 7. Appellant argues that Takashima fails to provide plural deodorizer elements in a single channel. Br. 14–15. Particularly, Appellant contends that Takashima provides a single deodorizer element composed of plural interconnected sections arranged in a row. Id. This argument is not persuasive. Whether Takashima’s deodorizer is characterized as plural deodorizer elements or as one element having plural deodorizer sections does not negate Takashima’s teaching that interconnecting components in a Appeal 2016-007668 Application 14/250,020 6 row facilitates insertion and removal of those components into and from an elongated channel in bedding. Appellant also argues that “[s]ubstituting or modifying the single- piece pads 50 in Osuna with the multi-section deodorizer elements 23 in Takashima, as suggested by the Examiner, would increase the occurrence of cold spots . . .” due to the addition of connection points between adjacent insulator pads. Br. 17. We disagree. First, we do not read the Examiner’s reasoning to involve modifying Osuna’s insulator pads, other than to connect two or more such pads together. See Final Act. 7 (“[I]t would have been obvious to . . . connect a plurality of insulation pouches in at least one of the resealable channels resulting in a channel which is at least twice the length of one insulation pouch . . .”). Moreover, Osuna’s insulator pads already are separated by side pocket seams. Osuna Fig. 2, seam 43. We are not persuaded that removal of those pocket seams to form a channel, or connecting individual insulator pads within such a channel, would lead to an increase in cold spots, or that it would render Osuna’s article unsatisfactory for its purpose. For the foregoing reasons, Appellant does not persuade us of reversible error in the Examiner’s rejection of claim 1. Accordingly, we sustain Rejection I as applied to claims 1, 2, 9–11, 13, 14, and 16–18. Claim 19 Claim 19 is directed to a coat, with recitations particularly directed to “a body of the coat” and “one or more sleeves of the coat.” The Examiner interprets the term “coat” in claim 19 to be “an intended use of the claimed article[s],” which the Examiner states is given “no patentable weight.” Final Appeal 2016-007668 Application 14/250,020 7 Act. 10. The Examiner further finds that Osuna’s blanket would be fully capable of being implemented as a coat. Id. Appellant argues that the Examiner reversibly erred by interpreting the word “coat” as an intended use rather than a structural recitation. Br. 26–27. We agree. Claim 19 expressly recites “[a] coat comprising . . . .” Claim 19 also expressly recites a plurality of resealable channels disposed in a “body of the coat” and in one or more “sleeves of the coat.” Refusing to consider these recitations as structural elements of the claim constitutes reversible error. For that reason, we do not sustain Rejection I as applied to claim 19. Rejection II With regard to Rejection II, Appellant separately argues claims 3–8 and 12 as a group (Br. 18–22) and claims 22–26 as another group (id. at 22– 25). Br. 18–22. Claim 3 recites that a plurality of insulation pouches are releasably connected to one another. The Examiner articulates a number of reasons why one skilled in the art would releasably connect insulator pads in Osuna’s variable warmth bedding. First, the Examiner finds that Takashima teaches connecting plural parts facilitates ease of their insertion and removal into and from a channel. Final Act. 7. Connecting plural insulator pads would permit their insertion and removal as a unit, rather than inserting or removing each insulator pad individually. The Examiner also finds that Osuna teaches that gaps between insulator pads could result in cold spots. Id. at 16. Connecting insulator pads would reduce relative movement between laterally adjacent pads and the consequent formation of gaps. The Examiner further finds that Marquette teaches using a releasable attachment Appeal 2016-007668 Application 14/250,020 8 of different blanket panels to selectively achieve zones of desired warmth characteristics. Id. at 15–16. Releasably connecting Osuna’s insulator pads would permit selective replacement of individual insulator pads with pads of desired warmth characteristics in different areas of the bed covering. Osuna recognizes that it is desirable to permit a user to “vary the heat retention characteristics of the adjustable-warmth duvet cover insert over different parts of the user’s body, as desired.” Osuna 6:29–35. Appellant argues that “the overlapping configuration of pockets 40 in Osuna already reduces cold spots.” Br. 20. However, the overlapping configuration in Osuna refers to overlap between adjacent rows of insulator pads, not between adjacent pads within a given row. See Osuna 5:56–59; Figs. 4, 5. Appellant’s argument does not address the issue of cold spots arising from relative movement between laterally adjacent insulator pads within a given channel. Appellant does argue that such lateral movement already is prevented in Osuna because each insulator pad is secured within an individual pocket. Br. 21. This argument, however, fails to account for the Examiner’s findings and the conclusion that it would have been obvious to replace Osuna’s row of individual pockets with an elongated channel, as discussed above in connection with Rejection I. Appellant also contends that the “addition of releasable connections to the pads in Osuna . . . would require wholesale changes to Osuna.” Br. 21. Appellant fails, however, to identify what those changes would be or why they would be problematic to one of ordinary skill. The changes to Osuna as contemplated in the Examiner’s reasoning appear to involve little more than omitting side stitching to form elongated channels instead of rows of Appeal 2016-007668 Application 14/250,020 9 pockets, coupled with adding releasable attachment elements to the insulator pads. Appellant does not persuade us that such changes would have been beyond the reach of the ordinary artisan. For the foregoing reasons, Appellant does not persuade us of reversible error in the Examiner’s rejection of claim 3. Appellant does not argue claims 4–8 and 12 apart from their dependence from claim 3. See Br. 22. Appellant argues claims 22–26 under a separate heading, but fails to present any argument concerning those claims other than those already made in connection with claim 3. See id. at 22–25. Accordingly, we sustain Rejection II as applied to each of claims 3–8, 12, and 22–26. Rejections III, IV Claim 20 is directed to a sleeping bag comprising, inter alia, first and second sets of resealable channels wherein “the closed ends of the first set of resealable channels abut the closed ends of the second set of resealable channels.” Each of Rejections III and IV is premised on the Examiner’s finding that Osuna teaches that the sealable pocket opening can be provided either along the edge near the head end or the opposite edge near the foot end of the bed covering, such that the channels could be configured so that the closed end of one set of channels abuts the closed end of another set. Final Act. 11, 22. The Examiner provides an annotated copy of Osuna’s Figure 1 to depict that interpretation of Osuna. Id. at 12. As we understand the Examiner’s reasoning, if an upper row of Osuna’s pockets are closed at their bottom and an adjacent lower row of Osuna’s pockets are closed at the top, then those two rows would present abutting closed ends. One problem with that reasoning is that the Examiner fails to point to any evidence to support Appeal 2016-007668 Application 14/250,020 10 the finding that Osuna’s pockets can be closed at either the top or bottom edge. To the contrary, Osuna states that “the opening 46 of each pocket 40 is toward the head end 12 of the duvet cover insert 10.” Osuna 4:44–46. Nor does the Examiner provide a reason as to why one of ordinary skill would adopt such a configuration in Osuna, which presumably would preclude Osuna’s intended feature of overlapping insulator pads. The Examiner’s further reliance on Rojas in connection with Rejection IV fails to address or cure that deficiency. For the foregoing reasons, we are persuaded that the Examiner has not set forth a factual basis which is sufficient to support a prima facie case of obviousness as to claim 20. Accordingly, we do not sustain either of Rejections III and IV. Rejection V Rejection V incorporates the same deficient finding concerning Osuna as Rejections III and IV. See Final Act. 14. The Examiner’s reliance on Takashima for other aspects of the claim fails to cure that deficiency. Accordingly, we do not sustain Rejection V for the same reasons given with regard to Rejections III and IV. New Ground of Rejection Claim 20 is rejected on a new ground under 35 U.S.C. § 102(b) as anticipated by Rojas. Rojas describes a bed covering which meets all of the features recited in claim 20. Particularly, as shown in Figure 7, Rojas describes a bed covering comprising channels 62 formed between upper and lower sheets (see Rojas 3:3–5), each channel 62 spanning half the length of the cover (id. Appeal 2016-007668 Application 14/250,020 11 4:32–36). Each channel 62 includes an external end opening 12 and an opposite end opening 64 located at a mid-section of the cover along a common lateral line. Id. 4:32-38. Mid-section openings 64 may be “fastened into the closed position . . . by means of a latching tape,” (id. 4:39–43), which constitutes disclosure of these openings both open and closed, such that mid-section openings 64 meet the recitation of closed ends. Each resealable channel 64 is configured to receive a corresponding insulation pad 70. Id. 4:62–5:2. We reproduce Figure 7 of Rojas below: In reaching our finding of anticipation, we view the above-depicted upper row of channels 62 as the claimed “first set of resealable channels” and the lower row of channels 62 as the claimed “second set of resealable channels,” such that the upper and lower channels have abutting closed ends 64. Appeal 2016-007668 Application 14/250,020 12 Because Rojas’ bed cover includes all of the features recited in the body of claim 20, we see no distinction based solely on the characterization of the recited article as a sleeping bag. DECISION The Examiner’s decision rejecting claims 1–14, 16–18, and 22–26 is affirmed. The Examiner’s decision rejecting claims 19–21 is reversed. We enter a new ground of rejection, rejecting claim 20 under 35 U.S.C. § 102(b). TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (2) 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. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Appeal 2016-007668 Application 14/250,020 13 AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)