Ex Parte Fitzpatrick

Patent Trial and Appeal Board

Mar 28, 2013

11627792 (P.T.A.B. Mar. 28, 2013)

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.
11/627,792 01/26/2007 Michael J. Fitzpatrick MJF.1.0 2606
7590 03/29/2013
Michael J. Fitzpatrick
9033 S. Hamilton Ave.
Chicago, IL 60620
EXAMINER
ANDERSON, AMBER R
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
03/29/2013 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 J. FITZPATRICK
____________

Appeal 2011-001339
Application 11/627,792
Technology Center 3700
____________

Before JOHN C. KERINS, NEIL T. POWELL and BEVERLY M.
BUNTING, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Michael J. Fitzpatrick (Appellant) seeks our review under 35 U.S.C.
§ 134(a) of the Examiner’s final rejection of claims 1-6 and 9-18. Claims 20
and 21 are canceled and claims 7, 8, 19 and 22 are withdrawn. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
THE INVENTION
Appellant’s invention is directed to a reversible bicycle jacket or
garment. Independent claim 1, reproduced below, is representative of the
claimed subject matter:
1. A jacket, comprising a first surface that is
ordinary in appearance and a said second surface
that is highly visible, said jacket being a reversible
bicycle jacket that is reversible between an
ordinary configuration wherein said first surface is
exposed as an outer surface of said jacket and a
high-visibility configuration wherein said second
surface is exposed as an outer surface of said
jacket, at least a portion of said second surface
being one of reflective and luminescent.

THE REJECTIONS
Appellant appeals the following rejections:
(i) claims 1-4, 6 and 11-16 under 35 U.S.C. § 103(a) as being
unpatentable over Speh (US 1,773,442, issued Aug. 19, 1930) in view of
Nesse (US 4,569,089, issued Feb. 11, 1986); and
(ii) claims 5, 9, 10, 17 and 18 under 35 U.S.C. § 103(a) as being
unpatentable over Speh in view of Nesse and Schweer (US 2004/0163156
A1, published Aug. 26, 2004).

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ANALYSIS
Claims 1-4, 6 and 11-16--Obviousness--Speh/Nesse
Appellant presents separate arguments for the patentability of claims
1, 2, 4, 6, 11-13 and 14-16. Claim 3 depends from claim 1 and will stand or
fall therewith.
Claim 1
The Examiner found that Speh teaches all limitations found in claim
1, with the exception of a portion of the second, highly visible, surface being
either reflective or luminescent. Ans. 4. The Examiner cited to Nesse for a
disclosure of a safety panel employed with a jacket that is brightly colored
and includes reflective material, which allows the wearer to be readily seen
in multiple environments. Id. The Examiner concluded that it would have
been obvious to provide the highly visible side of the reversible jacket of
Speh with reflective material, in order that a wearer of the Speh jacket may
be readily seen in multiple environments. Id.
Appellant criticizes the Examiner’s grounds for this rejection as being
nothing more than conclusory statements. Appeal Br. 10. We disagree. The
Examiner applied the teaching of Nesse that the use of both brightly colored
material and reflective material provides increased visibility in varying
environments, and proposed a modification to the Speh jacket to provide the
same advantage. The Examiner’s reason to combine the teachings is
expressly articulated and is supported by rational underpinnings, which is
what is required in making a rejection based on obviousness. In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int'l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007).

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Appellant further argues that the Speh and Nesse references do not
disclose a portion of a second, high visibility, surface that is either reflective
or luminescent. Appeal Br. 11-12. In support of this, Appellant points out
that Nesse discloses a separate element, namely a safety panel, attached to
the jacket which is brightly colored and has reflective panels, and thus Nesse
does not disclose the claim limitation at issue. Appeal Br. 11. The argument
fails to address the Examiner’s proposed modification to the Speh jacket,
which does not rely on a bodily incorporation of the Nesse safety panel into
the Speh jacket. As such, the argument does not apprise us of error on the
Examiner’s part.
Appellant further maintains that Speh is non-analogous art, because
Speh is in a different field (hunting) than is Appellant’s invention (bicycling)
and addresses a different need than Appellant’s invention. Appeal Br. 13-
14. Initially, we agree with the Examiner (Ans. 13) that both the claimed
invention and Speh are in the field of coats and jackets that allow for high
visibility at times. However, even if we were to accept Appellant’s position
that the two are from different fields, the test for non-analogous art includes
a second prong, namely that even if the reference is from a different field of
endeavor, if a reference is reasonably pertinent to the particular problem
with which the inventor was involved, it qualifies as analogous art. In re
Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986). Appellant’s argument fails to
address this aspect of the test, and thus we are not persuaded that Speh
constitutes non-analogous art.
Appellant also asserts that Nesse “expressly teaches away from using
reversibility to make a garment convertible between light reflective and non-
light reflective.” Appeal Br. 15. Appellant posits that “Nesse rejects the
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reversibility feature of Speh.” Id. Appellant has not pointed to any specific
part of Nesse that expressly rejects the concept of reversibility, and Nesse
appears to simply adopt an alternative approach to converting its jacket from
being highly visible to less highly visible. Appellant has not shown how
Nesse criticizes, discredits or otherwise discourages the application of
reflective material directly to a highly visible surface of a jacket. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994).
The rejection of claim 1 over Speh in view of Nesse is sustained.
Claim 2
Appellant argues, as above, that Nesse does not disclose that a portion
of a second surface is reflective or luminescent. Appeal Br. 16. This
argument is unpersuasive, also as noted above, in that it does not address the
Examiner’s proposed modification of the Speh jacket.
Appellant further argues that Nesse is not convertible between a
reflective and non-reflective condition by pulling the inside out and the
outside in, because Nesse makes this conversion by pulling a retractable
panel out of a storage compartment. Appeal Br. 16. As with the above
argument, this is nothing more than an individual attack on the Nesse
reference, and/or an argument based on a bodily incorporation of the
teachings of Nesse into the jacket of Speh. As to the former, the rejection is
based upon a combination of teachings, and as to the latter, the Examiner’s
proposed modification is not based on a bodily incorporation of the
reflective panel of Nesse into the Speh jacket.
The rejection of claim 2 is sustained.
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Claim 4
The Examiner takes the position that the Speh patent discloses the
limitation calling for the first surface of the jacket to be configured to be
loose-fitting and the second surface of the jacket to be configured to be
close-fitting, in that when the second surface of Speh (31, 32, 33, 34) is
facing to the inside, it is worn close to the body and “would be closer fitting
than the outer most layer.” Ans. 5. Appellant maintains that the Examiner’s
interpretation of the term close-fitting is unreasonably broad when viewed in
the context of what a person of ordinary skill in the art would understand
upon reading Appellant’s Specification. Reply Br. 8-9. We agree.
As pointed out by Appellant, the Specification describes the
characteristic of the second surface being close-fitting as “compress[ing] the
entire bicycle jacket 10 to form a close fit on the bicyclist” and “offer[ing]
the bicyclist reduced wind-resistance and increased comfort during
bicycling.” Spec., p. 6, para. [0025]. While this is not an absolute definition
of the term, it does connote to the person of ordinary skill in the art that
close-fitting is not so broad as to include a second surface that is deemed to
be close-fitting merely because, in one jacket configuration, it happens to be
on the inside, closer to the body of the person than the first surface.
The rejection of claim 4 is not sustained.
Claim 6
Claim 6 calls for the second surface to comprise one of a reflective or
luminescent stripe, symbol, or sign. Appellant maintains that Nesse does not
disclose any of a stripe symbol or sign for its reflective material. Appeal Br.
18. Appellant further objects to the Examiner’s reliance on a common and
ordinary meaning of the term “sign” as connoting “‘any object that conveys
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a meaning,’” and the position that Nesse discloses a reflector which is an
object that conveys a meaning of caution. Reply Br. 10; Ans. 14.
Appellant does not specifically contest that the meaning accorded to
the term “sign” is not a common and ordinary meaning of the term. Rather,
Appellant points to the example of a sign, i.e., a slow-moving sign, given in
the Specification, and further argues that the Examiner’s position renders the
claim term “reflective” as superfluous, as well as runs afoul of the doctrine
of claim differentiation. Reply Br. 10-11.
The citation to an example provided in the Specification is not
probative that Appellant has provided a particular definition of, or has
ascribed a particular meaning to, the term “sign” that is contrary to, or more
specific than, the common and ordinary meaning as stated by the Examiner.
As such, we are not apprised of error on this front.
The Examiner’s position that the Nesse use of reflective material
operates as a sign (caution sign) further does not render the term “reflective”
as superfluous, nor does it violate the doctrine of claim differentiation.
Assuming that the term “reflective sign” in claim 6 is further limiting of the
term “reflective” in claim 1, the Examiner’s position is that the manner in
which Nesse uses the reflective material in connection with the jacket
therein is in the form of a sign conveying a meaning of caution.
The rejection of claim 6 is sustained.
Claims 11-13
Claims 11-13 each depend from claim 1, and include limitations
requiring that the second surface of the jacket meet Class 1, 2 and 3
standards of ANSI 107, respectively. Appellant argues that the Examiner
summarily concluded, without any analysis, that the subject matter of these
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claims would have been obvious, and that the Examiner’s conclusion relies
improperly on hindsight in view of Appellant’s disclosure. Appeal Br. 18-
19. Appellant maintains that “[t]he Examiner does not explain why
someone setting out to build a hunting coat would want to make the coat
useful for construction, utility, police, emergency medical services, fire
fighters and airport ramp workers.” Reply Br. 13.
The Examiner notes that the jacket with safety panels disclosed in
Nesse is noted as being suitable for use in emergency situations as well as
for hunting, and that it thus would have been obvious, in view of the ANSI
standards, which are directed to attire for emergency personnel and the like,
to make the highly visible side of the Speh jacket in compliance with the
claimed standards, in order to be able to use the jacket in situations other
than hunting, as suggested by Nesse. Ans. 14.1 We find this to be an
articulated reason to combine the teachings that is supported by rational
underpinnings.
Appellant further argues that the ANSI standards are non-analogous
art. Appeal Br. 20; Reply Br. 12-13. Appellant contends that a person of
ordinary skill in the art of designing bicycle jackets “would not look to either
the hunting coat of Speh or the ANSI 107 standards for hazardous
occupation workers, and would certainly not look to both.” Appeal Br. 20.
In attempting to rebut the Examiner’s citation to Nesse as disclosing a jacket
that is useful for both emergency situations and hunting, Appellant maintains

1 We additionally note that the Schweer patent, cited in rejecting other
claims on appeal, evidences that that many aspects of clothing, including the
high visibility aspects, which are suitable for hunting are also applicable to
other safety garments in, for example, industrial settings. Schweer, p. 5,
para. [0090], p. 6, para. [0101].
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that “the Nesse safety panel that is used for emergency situations or hunting
is the panel that is colored international orange; it is not the panel that is
reflective.” Reply Br. 12.
The latter contention, to the extent that it is even germane to the issue
of non-analogous art, fails to take into account that Nesse discloses that, in
lieu of employing separate brightly colored and reflective panels, reflectors
could be attached to the brightly colored panel. Nesse, col. 4, ll. 61-63. We
are also not persuaded that persons of ordinary skill in the art seeking to
design a bicycle jacket with a highly visible surface including a reflective
aspect would not look to other garments, such as those disclosed in Speh and
Nesse, nor to various industry standards for worker safety attire, to inform
the design of the bicycle jacket. In other words, Appellant has not
persuasively shown that the ANSI 107 standards are not reasonably pertinent
to the particular problem with which Appellant was concerned. Deminski,
796 F.2d at 442.
The rejection of claims 11-13 is sustained.
Claims 14-16
Appellant’s arguments for the patentability of claims 14-16 parallel
those presented for claims 11-13. Appeal Br. 21-22; Reply Br. 13-14.
Appellant principally contends that the ANSI 107 standards would not have
been well known in the art, as they relate to a different field (workers in
various hazardous occupations), as compared to hunters, to which the Speh
jacket is directed. Appeal Br. 21; Reply Br. 14. As discussed above,
Appellant has not persuasively shown that the ANSI 107 standards are not
reasonably pertinent to the particular problem with which Appellant was
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concerned, and to which Speh and Nesse are directed. Deminski, 796 F.2d at
442.
The rejection of claims 14-16 is sustained.

Claims 5, 9, 10, 17 and 18--Obviousness--Speh/Nesse/Schweer
Claim 5
Claim 5 depends from claim 1, and requires that at least a part of the
second, highly visible, surface is configured to be elastic. The Examiner
found that, which the combination of Speh and Nesse does not disclose this
limitation, the Schweer patent discloses a hunting jacket with an outer shell
that may be brightly colored, and that may employ draw cords and elastic to
provide a more snug fit. Ans. 9, citing Schweer, p. 5, paras. [0092], [0094],
and p. 6, para. [0101]. The Examiner concluded that it would have therefore
been obvious to have provided the second, highly visible, surface of Speh, as
modified by Nesse, with elastic as taught by Schweer, so as to provide a
snug fit of the garment on the wearer. Ans. 9.
Appellant first argues that the grounds for rejection are merely
conclusory statements that fail to articulate the Examiner’s analysis and
reasoning. Appeal Br. 22-23. The Examiner’s position in rejecting claim 5
sets forth a factual basis having rational underpinnings, and articulates a
reason why a person of ordinary skill in the art would have found it obvious
to modify the Speh jacket in view of the teachings of Nesse and Schweer.
Ans. 9. We are not apprised of error in the Examiner’s position.
Appellant next seizes on the Examiner’s statement that Schweer
discloses a “reversible hunting jacket,” and argues that the entire jacket of
Schweer is not reversible, but rather only an inner liner of the jacket is
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reversible. Appeal Br. 23. Appellant argues that the inner liner is not a
jacket, and that wearing the liner by itself would defeat the purpose of
wearing a jacket, and thus it could not have been obvious to combine
Schweer with Speh and Nesse as was done in rejecting the claims. Id.
Regardless of whether the inner liner of the Schweer garment could
properly be regarded as being a jacket, and assuming that Appellant is
correct and the Examiner is incorrect on the issue as to whether the entire
Schweer jacket is reversible, the Examiner’s findings and conclusions as to
the obviousness of the subject matter of claim 5 do not depend on these
factors. The Examiner found that the element in Schweer regarded as
corresponding to the second surface of the claimed jacket, i.e., outer layer
26, is disclosed as optionally being brightly colored and including elastic to
provide for a snug fit. Schweer, p. 5, paras. [0092], [0094], and p. 6, para.
[0101]. The Examiner concluded, in light of that disclosure, that it would
have been obvious to further modify the jacket resulting from the
combination of the teachings of Speh and Nesse, to include elastic in the
second, highly visible, surface of Speh, in order to provide a snug fit for the
wearer. Appellant has not apprised us of error in the Examiner’s position.
The rejection of claim 5 is sustained.
Claims 10 and 18
Appellant argues only that the grounds for rejection of these claims
are nothing more than conclusory statements which fail to clearly articulate
an analysis and reasoning for the rejection. Appeal Br. 22-23. For the
reasons noted above directed to the same argument raised with respect to
claim 5, we find that the Examiner has adequately articulated a reason to
combine the teachings that is supported by rational underpinnings.
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The rejection of claims 10 and 18 is sustained.
Claim 9 and 17
Claims 9 and 17 depend from claims 1 and 14, respectively, and
further recite that the first surface of the jacket is substantially comprised of
a natural material, and the second surface is substantially comprised of a
synthetic material.
As above, Appellant first argues that the grounds for rejection are
merely conclusory statements that fail to articulate the Examiner’s analysis
and reasoning. Appeal Br. 22-23. The Examiner’s position in rejecting the
claims sets forth a factual basis having rational underpinnings, and
articulates a reason why a person of ordinary skill in the art would have
found it obvious to modify the Speh jacket in view of the teachings of Nesse
and Schweer. Ans. 9-10. We are not apprised of error in the Examiner’s
position.
Appellant argues that the Schweer jacket is not reversible, and that
only the inner liner of the jacket is reversible. Appeal Br. 24. As such,
according to Appellant, Schweer does not disclose that the reversible inner
liner of Schweer could be made of two different materials. Id. In response,
the Examiner points out that the outer jacket of Schweer (corresponding to
the claimed second surface) is made of a synthetic material, while the inner
liner (corresponding to the claimed first surface) is made of a natural
material. Ans. 16, citing to Schweer, p. 5, paras. [0093], [0094]. Appellant
counters that “the Examiner cannot combine these two separate components
from Schweer . . . to disclose the limitations of claims 9 and 17 without
rendering the prior art invention being modified unsatisfactory for its
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intended purpose.” Reply Br. 17. Appellant goes on to discuss particular
aspects of the Schweer jacket and the lack of reversibility thereof. Id.
Appellant’s arguments are in the nature of arguing the Schweer
reference individually, rather than addressing the proposed modification to
the Speh jacket as a result of the combination of the teachings of Speh,
Nesse and Schweer. Accordingly, we are not apprised of Examiner error in
the rejection of claims 9 and 17, and the rejection is therefore sustained.

DECISION
The decision of the Examiner to reject claims 1-3, 5, 6 and 9-18 is
affirmed. The decision of the Examiner to reject claim 4 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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