Ex Parte Grilliot et al

Patent Trial and Appeal Board

Mar 7, 2013

11525619 (P.T.A.B. Mar. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WILLIAM L. GRILLIOT, MARY I. GRILLIOT and
PATRICIA K. WATERS
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Appeal 2011-000164
Application 11/525,619
Technology Center 3700
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Before WILLIAM V. SAINDON, WILLIAM A. CAPP and
JEREMY M. PLENZLER, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 5, 6, 9 and 10 as unpatentable under 35 U.S.C. § 103(a)
over Grilliot (US 6,134,717; iss. Oct. 24, 2000) and Moses (US 5,918,314;
iss. Jul. 6, 1999). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellants’ invention is a protective garment for persons such as
firefighters characterized by a pair of leg portions each with a detachable
sock. Spec. 1. Claim 5, reproduced below, is illustrative of the subject
matter on appeal.
5. For wear with a pair of boots having leg encasing
portions, a protective garment comprising
a pair of leg portions, each leg portion having a lower
end, each leg portion being adapted for fitting into the leg
encasing portion of an associated one of the boots when the
garment and boots are worn together, the protective garment
further comprising a sock attached detachably directly to each
leg portion so that the socks and the protective garment, apart
from the socks, can be separately sized to fit a wearer, and an
outer shell comprising a pair of leg-covering portions, each of
which is adapted for wearing over an associated one of the leg
portions, the leg portions and socks being removable as a unit
from the outer shell with the socks attached to the leg portions.
OPINION
Appellants argue claims 5, 6, 9 and 10 as a group. App. Br. 3-6. We
select claim 5 as representative of the group. See 37 C.F.R. §
41.37(c)(1)(vii) (2011). Claims 6, 9 and 10 stand or fall with claim 5.
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The Examiner finds, and Appellants do not dispute, that Grilliot
discloses all of the elements of claim 5, except that Grilliot fails to teach the
sock detachably attached to the leg portions. Ans. 3-4. The Examiner relies
on Moses as disclosing a protective garment that has leg portions with socks
detachably attached thereto. Id.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention to provide the protective
garment of Grilliot with removable socks. Id. According to the Examiner, a
person of ordinary skill in the art would have been motivated to so modify
Grilliot because it would allow the user to don and doff the garment in
pieces for greater ease and, in addition, the removable leg and sock portions
would allow for more adjustment and adaptability of the garment. Id. In
addition, as a separate and alternative rationale for modifying Grilliot with
Moses, the Examiner concluded that it would have been obvious to provide
detachable socks because constructing a formerly integral structure in
various elements involves only routine skill in the art, citing Nerwin v.
Erlichman, 168 USPQ 177, 179 (BPAI 1969) (hereinafter “Nerwin”).1
Appellants argue that the Examiner failed to establish a prima facie
case of obviousness. App. Br. 3. Appellants argue that Moses discloses
only detachable outer foot covers, which are not “socks” within the meaning
of claim 5. App. Br. 4. Appellants contend that a person of ordinary skill in
the art would associate Moses’s outer foot covers with Grilliot’s boots and
Moses’s foot cover liners with Grilliot’s socks. Id. Appellants further argue
that Moses’s foot cover liners are not directly attached to either Moses’s
body suit liner or the leg portions of Moses’s outer body suit. App. Br. 4-5.

1 The Examiner misspelled “Erlichman” as “Drlichman.”
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Appellants challenge the Examiner’s reason for making the proposed
combination of Grilliot and Moses as a naked, unsupported assertion
unsupported by either reference. App. Br. 5. Furthermore, in their Reply
Brief, Appellants note that the Examiner belatedly introduced a statement
into the record that socks are well known to be made of lightweight,
waterproof material with treads to provide for friction grip against a surface.
Reply 2. Finally, Appellants argue that Nerwin is not competent legal
authority for the proposition that constructing a formerly integral structure in
various elements involves only routine skill in the art. Reply 2-3.
On the latter issue, we agree with Appellants that Nerwin is not good
legal authority for the proposition relied on by the Examiner, i.e., that
constructing a formerly integral structure in various elements involves only
routine skill in the art. See Ex Parte Kawano, 2013 WL 603839, at *4
(PTAB) (Nerwin does not establish that it is per se obvious to separate a
single component into two components). “The examiner’s reliance on and
citation of Nerwin v. Erlichman, 168 USPQ 177, 179 ( BPAI 1969), which
according to the examiner held that ‘constructing a formerly integral
structure in various elements involves only routine skill in the art,’ appears
to us to be misplaced. We find no such ‘holding’ in Nerwin v. Erlichman.”
Ex Parte Gruden, 1997 WL 1883962, at *3 (BPAI).2
Notwithstanding the foregoing, the Examiner’s reliance on Nerwin
does not rise to the level of reversible error. The Examiner provided two

2 We do note however, that the predecessor to our reviewing court has
found, under somewhat analogous circumstances, that merely taking
something that was permanently attached and making it separable is obvious
and could be accomplished by anyone having ordinary skill. In re Dulberg,
289 F.2d 522, 523 (CCPA 1961).
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reasons for combining Grilliot and Moses and, although we disagree with
the reason based on Nerwin, we discern no error in the Examiner’s
alternative rationale that a person of ordinary skill in the art would have been
motivated to modify Grilliot because it would allow the user to don and doff
the garment in pieces for greater ease and, in addition, the removable leg and
sock portions would allow for more adjustment and adaptability of the
garment. Ans. 4.
Appellants’ argument that a firefighter would find it more difficult to
don garments individually is unpersuasive. App. Br. 5; Reply 4. Appellants
do not otherwise dispute the Examiner’s statement that providing detachable
socks would facilitate doffing the garment(s) and allow for adjustment and
adaptability. Ans. 4. Consequently, the Examiner’s reason for making the
combination is largely unchallenged and is otherwise sufficient to support a
prima facie case of unpatentability.
We turn now to Appellants’ argument that Moses’s detachable
footwear is not a “sock.” During examination of a patent application,
pending claims are given their broadest reasonable construction consistent
with the specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). “Therefore, we look to the specification to see if it
provides a definition for claim terms, but otherwise apply a broad
interpretation.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). In the instant case, Appellants did not define “sock” and
we do not agree that the term “sock” must be narrowly construed to exclude
any and all possible uses as an outermost garment layer. Although the plain
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meaning of “sock” includes a foot covering usually worn inside footwear,3
there is nothing preventing a sock from being the outermost foot covering.
Moreover, there is nothing that would prevent the detachable outer foot
cover in Moses from being worn inside a boot, such as a firefighter’s boot.
Thus, we agree with the Examiner that Moses’s outer foot cover may
properly be considered to be a “sock.” Finally, we note that the Examiner’s
proposed combination is not to swap the foot covering in Grilliot for the one
in Moses, but rather to make the foot covering in Grilliot (which is
undeniably a sock) removably attached to its leg portion according to the
teachings of Moses. See In re Nievelt, 482 F.2d 965, 968 (CCPA 1973)
(“Combining the teachings of references does not involve an ability to
combine their specific structures.”).
Appellants allege that the Examiner raised the issue of the Examiner’s
extensive experience in sock garments for the first time in the Answer. See
Ans. 8; Reply 2. However, Appellants waived the right to assert that the
Examiner entered a new ground of rejection by filing a Reply Brief instead
of requesting to re-open prosecution. See 37 C.F.R. § 41.40(a). In any
event, as persons of scientific competence in the fields in which they work,
examiners are responsible for making findings, informed by their scientific
knowledge, as to the meaning of prior art references to persons of ordinary
skill in the art and the motivation those references would provide to such
persons. In re Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003). Absent legal
error or contrary factual evidence, those findings can establish a prima facie
case of obviousness. Id.

3 See, e.g., “sock,” Webster’s Third New International Dictionary
(1993) (available at lionreference.chadwyck.com).
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Appellants have failed to apprise us of any error in the Examiner’s
conclusion of obviousness. Accordingly, we sustain the Examiner’s
rejection of claims 5, 6, 9 and 10.
DECISION
The decision of the Examiner to reject claims 5, 6, 9 and 10 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)(1)(iv).

AFFIRMED

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