Ex Parte Cummiskey et al

Patent Trial and Appeal Board

Jun 8, 2016

11481329 (P.T.A.B. Jun. 8, 2016)

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.
11/481,329 07/03/2006 Michael R. Cummiskey 172.P001 3445
43831 7590 06/09/2016
BERKELEY LAW & TECHNOLOGY GROUP, LLP
17933 NW Evergreen Parkway, Suite 250
BEAVERTON, OR 97006
EXAMINER
HADEN, SALLY CLINE
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
06/09/2016 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 MICHAEL R. CUMMISKEY and SKIP LEI
____________________

Appeal 2014-006082
Application 11/481,329
Technology Center 3700
____________________

Before JENNIFER D. BAHR, MICHAEL W. KIM, and
ARTHUR M. PESLAK, Administrative Patent Judges.

PESLAK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Michael R. Cummiskey and Skip Lei (“Appellants”) appeal under 35
U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1, 3–6,
8–11, 16, 19, and 22–36.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellants submit the real party in interest is Evergreen Innovations, LLC.
App. Br. 5.
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THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A wearable product, comprising:
an elastic band having at least one recess formed therein
on a display surface, the elastic band having a first thickness in a
portion outside an area in which the recess is disposed, and
having a second thickness, different from the first thickness, in a
portion in the area in which the recess is disposed;
the at least one recess having an opening on the display
surface and a recess width;
the at least one recess further having a rim formed in the
display surface being smaller than the recess width; and
a secondary component having a surface ornamentation
thereon;
wherein the secondary component is detachably secured to
the elastic band by the rim such that the surface ornamentation is
visible.

REJECTIONS
1) Claims 1, 3, 4, 6, 8–11, 16, 19, 23–25, and 28–36 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Alonge (US
2,189,096, iss. Feb. 6, 1940) in view of Wilson (US 6,857,775 B1,
iss. Feb. 22, 2005).
2) Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Alonge in view of Wilson and Ehrgott (US 5,623,731, iss. Apr. 29,
1997).
3) Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Alonge in view of Wilson and Field (US 7,070,322 B1, iss. July 4,
2006).
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4) Claim 26 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Alonge in view of Wilson and Woo (US 5,781,155 iss., July 14,
1998).

DISCUSSION
Rejection 1: Claims 1, 3, 4, 6, 8–11, 16, 19, 23–25, and 28–36
Appellants2 argue these claims as a group. See, e.g., App. Br. 17, 32,
41. Pursuant to 37 C.F.R. § 41.37 (c)(iv), we select claim 1 to decide this
appeal. All claims subject to this rejection stand or fall with claim 1.
The Examiner finds that Alonge discloses all the limitations of claim
1 other than an express teaching that the material of the band is elastic.
Final Act. 3–4. The Examiner finds that Wilson discloses a band made from
elastic material. Id. at 3. The Examiner concludes that it would have been
obvious to modify “the band of Alonge with the known elastic materials
disclosed by Wilson, for the purpose of providing durability and sufficient
rigidity.” Id. at 3–4 (citing Wilson, col. 3, ll. 61–66).
Appellants contend the Examiner’s factual findings are erroneous
because neither Alonge nor Wilson discloses the recited “elastic band with
at least one recess” and “a rim,” the “recess,” or “a secondary component
with mere surface ornamentation.” App. Br. 11–12, 41. Appellants
interpose a plethora of legal arguments all of which are based, in whole or in
part, on Appellants’ contention that the Examiner’s factual findings are
erroneous. Id. at 12–86.

2 We note Appellants’ Appeal Brief is non-compliant with the requirement
of 37 C.F.R. § 41.37 (c)(iv) to argue “each ground of rejection under a
separate heading, and each heading shall reasonably identify the ground of
rejection being contested.”
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Claim Construction
In order to resolve the factual disputes raised by Appellants, we first
construe two claim terms, i.e., “elastic” and “recess.” We give claim terms
their broadest reasonable interpretation consistent with the Specification as it
would be interpreted by one of ordinary skill in the art. See In re Suitco
Surface, Inc., 603 F.3d 1255, 1259–60 (Fed. Cir. 2010); In re Morris, 127
F.3d 1048, 1054–55 (Fed. Cir. 1997). Although the claims are interpreted in
light of the Specification, limitations from the Specification are not read into
the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
The term “elastic” is used as a modifier for the phrase “band having at
least one recess” in claim 1. Appellants’ Specification states that the “elastic
band may be comprised of silicone, thermo-plastic rubber, thermo-plastic
urethane, or similar pliable materials.” Spec. 3–43. A common and ordinary
meaning of the word pliability is “supple enough to bend freely or
repeatedly without breaking.”4 Based on the foregoing, we conclude that
one of ordinary skill in the art would understand the term elastic, as used in
the claims, to refer to a material that is supple enough to bend freely or
repeatedly without breaking and is inclusive of the materials listed in
Appellants’ Specification.
Appellants’ Specification refers to a “recess 104, or cavity” in the
elastic band. Spec. 4. A common and ordinary meaning of cavity is “a hole

3 All references to the Specification refer to the Specification dated July 3,
2006 unless otherwise noted.
4 Pliability Definition, Merriam-Webster.com, http://www.merriam-
webster.com/dictionary/pliability (last accessed June 3, 2016).
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or space inside something.”5 Appellants’ Figure 1, as originally filed, shows
that recess 104 is 1 mm deep while the band has a depth of 2 mm. Id. at Fig.
1. The last filed version of Figure 1, entered by the Examiner, illustrates
recess 104 as a through hole in the band. Spec., Fig. 1; Non-final Act. 1
(dated July 19, 2010). We conclude that one of ordinary skill in the art
would understand the term recess, as used in the claims, to be a hole or space
inside a portion of the recited elastic band which may or may not be a
through hole.
Factual Disputes
Appellants argue Wilson fails to disclose an elastic band because it
“refers to durable and rigid materials and even discusses metals . . . [and]
describes a material resistant to deformation. See col. 5, lines 17–19 of
Wilson.” App. Br. 23–24 (emphasis omitted). Appellants repeat the same
argument for the “elastic rim.” Id. at 32. The Examiner responds that both
Wilson and Appellants are concerned with pliable materials and Appellants
choose two of the same materials disclosed in Wilson, i.e., TPU and TPR6.
Ans. 2. Wilson provides:
The material chosen for case 110 and wristband 130
should be durable and have a pliability that permits the wearer to
separate extensions 132 and place timepiece 100 on the wrist. In
addition, the material should have sufficient rigidity to ensure
that timepiece 100 remains securely positioned on the wrist.
Suitable materials for case 110 and wristband 130 include
polymers such as nylon, TPU, TPR.
Wilson, col. 3, ll. 60–67 (emphasis added and boldface omitted).

5 Cavity Definition, Meriam-Webster.com, http://www.merriam-
webster.com/dictionary/cavity (last accessing June 3, 2016).
6 We understand that “TPU” refers to thermo-plastic urethane and “TPR”
refers to thermo-plastic rubber. Ans. 2.
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Wilson’s extensions 132 separate from the position shown in Figure 2
of Wilson to allow the user’s wrist to be inserted into the band and then the
extensions 132 return to the unseparated state as shown in Figure 3. Id. at
Figs. 2, 3. Wilson, thus, discloses a wristband formed from a material that is
supple enough to bend repeatedly without breaking. In addition, Wilson
discloses the use of TPU and TPR, which are among the materials listed in
Appellants’ Specification as suitable for the recited “elastic” band. Based on
our construction of “elastic,” the Examiner’s finding that Wilson discloses
an “elastic” material is supported by a preponderance of the evidence.
Appellants’ contention that Wilson refers to a “material resistant to
deformation” is of no import. The portion of Wilson cited by Appellants is
not directed to the wristband but to separating elements 140 which are
inserted into the wristband. See Wilson, Fig. 4.7
Appellants contend that the recited recess is “an indentation, a cavity
or a cove.” App. Br. 29. Appellants argue a recess, unlike an aperture, is
not a through hole and Alonge discloses an “aperture extending through the
front face thereof to form a socket to receive a watch 3.” Id. (citing Alonge,
p.1, col. 2, ll. 42–47). We first note that Alonge’s retaining member 10,
made of a resilient material, is mounted at the bottom of Alonge’s aperture
in order to secure the watch in the band. See Alonge, p.2, col. 1 ll. 7–26,

7 Appellants submit a declaration with the Appeal Brief in support of the
argument that Wilson does not disclose an “elastic” material. App. Br. 91.
The declaration was not timely filed nor admitted. 37 C.F.R. § 41.33 (d)(1)
& (d)(2). Even if admitted, we would find the declaration unpersuasive
because it concludes the TPR and TPU materials disclosed in Wilson are not
“sufficiently elastic” to be suitable for the claimed invention. App. Br. 92.
Claim 1, however, does not recite any required degree of elasticity of the
band material.
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Figs. 2, 3. As disclosed in Alonge’s Figures 2 and 3, the socket formed by
the aperture and retaining member 10 is not a through hole due to resilient
retaining member 10. Based on the foregoing and our construction of the
term “recess,” the Examiner’s finding that Alonge discloses a recess in the
band is supported by a preponderance of the evidence.
Appellants contend that Alonge and Wilson disclose watches mounted
in the bands and not the recited “secondary component having a surface
ornamentation thereon.” App. Br. 41–42. In support of this contention,
Appellants request effectively that we read a limitation into claim 1 that
“secondary components” are limited to one embodiment disclosed in the
Specification, i.e., item 106 shown in Figure 1. Id. That is improper. See
CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir.
2005) (while the specification can be examined for proper context of a claim
term, limitations from the specification will not be imported into the claims).
Item 106 is not textually described in the Specification but appears from
Figure 1 to have text, illustrations, or other ornamentation on a front surface,
with no apparent limitations on the nature of that ornamentation. To that
end, Appellants do not offer any persuasive argument or reasons why a
watch does not have surface ornamentation on its front face as recited in
claim 1.
Appellants argue further that item 106 does not require the same
protections from water and dust as do the watches disclosed in Alonge and
Wilson. App. Br. 42. Appellants’ argument is not persuasive, as the
Specification discloses that a secondary component can be “a small power
cell,” “a memory circuit,” “wireless communication circuits,” “cellular
communication circuits,” and “an embedded GPS receiver.” Spec. 2, 6–7.
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Appellants offer no persuasive argument or technical reasoning why a “GPS
receiver”, for example, would not require the same protections from dust and
water as a watch.
The Examiner’s finding that Alonge discloses “[a] secondary
component” that has “surface ornamentation” (Final Act. 4) is supported by
a preponderance of the evidence.
Appellants’ Legal Arguments
Appellants first argue that the combination of Alonge and Wilson is
improper because both teach away from the limitation of “an elastic band
with at least one recess” and “an elastic rim or elastic overhang to secure a
secondary component.” App. Br. 46, 50. Both of these arguments are based
on Appellants’ unpersuasive contention that Wilson does not disclose an
“elastic’ material. Id. Appellants’ teaching away argument is contrary to
Wilson’s disclosure and hence not persuasive.
Appellants next argue that Alonge and Wilson teach away from the
recited secondary component because each relate to watches, not a
component with “mere” surface ornamentation, and “suggest a line of
development unlikely to be productive of the result sought here.” App. Br.
55–56. We first note that the word “mere” does not appear before “surface
ornamentation” in claim 1. Appellants do not provide any persuasive reason
why a watch does not have “surface ornamentation thereon.” Thus, this
argument is unpersuasive.
Appellants next repackage the preceding argument by claiming that
because Alonge and Wilson concern watches, the problem solved by
Appellants of securing a secondary component with “mere surface
ornamentation” to a wristband was “unrecognized.” App. Br. 59–61. For
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the reasons stated with respect to the secondary component teaching away
argument, this argument is unpersuasive.
Appellants next argue that the Examiner’s stated motivation of
providing “durability and sufficient rigidity” for the combination of Alonge
and Wilson is not plausible. App. Br. 62 (citing Final Act. 4). We
understand the Examiner’s conclusion to be an application to the facts of this
case of the Supreme Court’s direction in KSR Intern. Co. v Teleflex Inc., 550
US 398, 416 (2007) that “the combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” Here, the Examiner substitutes the elastic material
taught by Wilson to the structure disclosed in Alonge yielding the
predictable result of an elastic structure. Appellants have not identified error
in the Examiner’s rationale or factual underpinnings for the rejection and,
hence this argument is unpersuasive.
Appellants next argue that the “Examiner has not explained how
Alonge and Wilson would work in combination.” App. Br. 67. This
argument is a repackaging of the argument that the Examiner has not
provided a plausible motivation to combine Alonge and Wilson. Id. For the
same reasons at stated with respect to the implausible motivation argument,
this argument is unpersuasive.
Appellants next argue that the combination of Alonge and Wilson is
improper because the references are directed “to different technical
problems.” App. Br. 73. Appellants contend that Wilson is “directed to
protection from perspiration” while Alonge provides “a simple means for
supporting a watch.” Id. at 73–74. Contrary to Appellants’ contention, both
Alonge and Wilson are directed to the same technical problem, i.e.,
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supporting a watch in a wristband. See, e.g., Alonge, Fig. 1; Wilson, Fig. 1.
This argument is, thus, unpersuasive.
Appellants next argue that the combination of Alonge and Wilson is
improper because the combination would work in a different manner than
the features work separately. App. Br. 75. Appellants’ factual basis for this
argument is
The present application claims and describes an elastic
attachment structure (e.g., overhang, lip, rim, flange etc), as
previously discussed, employed to retain a secondary component
in a recess. Yet, Alonge and/or Wilson are not elastic and do not
employ an elastic attachment mechanism. Likewise, Alonge
does not have a recess.
Id. at 77. The argument is based on purported facts contrary to our
resolution of the Examiner’s factual findings disputed by Appellants and
thus is unpersuasive.
Appellants next argue that one of ordinary skill would not be able to
produce the claimed subject matter from Alonge and Wilson using ordinary
skill. Id. at 82. Appellants assert that the “elastic attachment structure is
unexpected and/or not predictable in light of Alonge and Wilson.” Id. at 86.
We note that Alonge teaches that retaining member 10 allows the watch to
be readily inserted and removed from the socket due to the resiliency of the
metal forming retaining member 10. See Alonge, p.2, col. 1, ll. 17–26. A
common and ordinary definition of “resilient” is “able to return to an
original shape after being pulled, stretched, pressed, bent, etc.”8 Alonge,
thus, teaches the principal that retaining member 10, part of its structure to
mount the watch, can bend and return to its original shape. Therefore,

8 Resilient Definition, Merriam Webster Dictionary, http://www.merriam-
webster.com/dictionary/resilient (last accessed on June 3, 2016).
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combining the elastic materials of Wilson with the structure of Alonge to
create an entirely elastic structure for mounting the watch does not yield
unexpected results. Consequently, this argument is unpersuasive.
For all of the foregoing reasons, we sustain the rejection of claims 1,
3, 4, 6, 8–11, 16, 19, 23–25, and 28–36.
Rejections 2, 3, 4-Claims 5, 22, 26
In contesting these rejections, Appellants rely solely on the arguments
presented against the rejection of claim 1, which, for the reasons discussed
above, fail to apprise us of error. See Appeal Br. 10. Accordingly, for the
same reasons, we sustain the rejections of claims 5, 22, and 26.

DECISION
The Examiner’s decision rejecting claims 1, 3–6, 8–11, 16, 19, and
22–36 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED