Ex Parte Parsons

Patent Trial and Appeal Board

Mar 23, 2017

13494117 (P.T.A.B. Mar. 23, 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.
8342/115477 5906
EXAMINER
QUINN, RICHALE LEE
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
13/494,117 06/12/2012 Kevin L. Parsons
24628 7590 03/23/2017
Husch Blackwell LLP
Husch Blackwell Sanders LLP Welsh & Katz
120 S RIVERSIDE PLAZA
22ND FLOOR
CHICAGO, IL 60606
03/23/2017 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 KEVIN L. PARSONS
Appeal 2015-003546
Application 13/494,117
Technology Center 3700
Before JENNIFER D. BAHR, JAMES P. CALVE, and
SEAN P. O’HANLON, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kevin L. Parsons (Appellant)1 appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1—20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellant, the real party in interest is Armament Systems and
Procedures, Inc. Appeal Br. 2.
Appeal 2015-003546
Application 13/494,117
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An apparatus comprising:
a belt having a longitudinal axis configured to encompass
the waist of a person;
a patch disposed on the belt, the patch extending across a
width of the belt on a side of the belt facing the person, the patch
forming a substantially longitudinal pocket for a key between
the patch and belt where an opening of the pocket receives the
actuator end of the key, the longitudinal pocket oriented to
receive the key substantially parallel to the longitudinal axis
of the belt; and
a cutout in the patch extending outwards from the opening
and from the pocket along the longitudinal axis, the cutout traces
the outline of the handle of the key and remains open against the
waist of the person during use and wherein a curvature of the belt
during normal use by the person causes the portion of the patch
surrounding the opening to pull the handle of the key into the
cutout against the belt thereby preventing the key from being
accidentally dislodged from the pocket.
REJECTIONS
I. Claims 12—14, 16, 17, 19, and 20 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Foster (US 2,048,498, iss. July 21,
1936).
II. Claims 5—7, 10, and 11 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Bates (US 6,067,661, iss. May 30, 2000).
III. Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bates and Welch (US 1,486,470, iss. Mar. 11,
1924).
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Application 13/494,117
IV. Claims 15 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Foster and Welch.
V. Claims 1—4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Foster and Kojoori (US 7,480,967 B2, iss. Jan.
27, 2009).
DISCUSSION
Rejection I—Anticipation by Foster
Independent claim 12 requires the cutout to be “open against the waist
of the person during use” such that “the curvature of the belt around the
person [during use causes] the material around the opening to the pocket to
pull the head of [a key inserted into the pocket] into the cutout thereby
preventing the key from being accidentally dislodged from the pocket.”
Appeal Br. 18—19 (Claims App.). Foster’s cutout (aperture 15)2 is on the
outside of the belt, facing and opening away from the wearer’s waist during
use. See Foster, Figs. 1, 3. Further, Foster’s belt has only a single
orientation for use, namely, the orientation illustrated in Figures 1—3 of
Foster. Foster’s belt is not a reversible belt, and persons having ordinary
skill in the art would understand from the construction of the belt buckle that
the face of the belt in which aperture 15 is disposed is the outward face, and
not the inward face, during use. See Appeal Br. 7 (observing that reversing
Foster’s belt, such that aperture 15 opens against the wearer’s waist, would
place the free end or tongue of the belt against the wearer’s waist, rendering
2 The Examiner identifies element 16 as the cutout. Final Act. 2—3 (“Foster
discloses ... a cutout (16)”). We understand this to have been an
inadvertent error, as Foster uses reference numeral “16” to denote a comb
placed into the pocket. Foster, p. 1, col. 1,1. 53.
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Application 13/494,117
it effectively inoperative). Consequently, within the context of a belt having
a buckle construction such as that of Foster, the belt surface “against the
waist of the person during use” has an art-recognized meaning: the belt
surface opposite the side of the buckle frame against which the buckle
tongue rests. The Examiner’s finding that Foster’s belt is “capable of
performing the intended use of [aperture 15] remaining open against the
waist as claimed” (Ans. 2) fails to take into account the one-sided nature of
Foster’s belt buckle construction. The Examiner does not show by a
preponderance of the evidence that Foster’s belt is capable of such use.
Thus, the Examiner fails to establish by a preponderance of the
evidence that Foster has a cutout that opens “against the waist of the person
during use” as called for in claim 12. Accordingly, we do not sustain the
rejection of claim 12, or its dependent claims 13, 14, 16, 17, 19, and 20,
under 35 U.S.C. § 102(b) as anticipated by Foster.
Rejection II—Anticipation by Bates
The rejection of claims 5—7, 10, and 11 as anticipated by Bates suffers
from substantially the same deficiency as the rejection of claims 12—14, 16,
17, 19, and 20 as anticipated by Foster. Independent claim 5 requires a
“second panel having a cutout that remains open against the waist of the
person during use” such that “the curvature of the belt around the person
[during use causes] the material of the second panel around the opening to
the pocket to pull the head of [a key inserted into the pocket] into the cutout
thereby preventing the key from being accidentally dislodged from the
pocket.” Appeal Br. 17 (Claims App.).
Like the belt of Foster, Bates’s belt is provided with a belt buckle,
comprising frame 17 and tongue 19 having a free end abutting the face of
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frame 17 illustrated in Figure 1, affording only a single orientation for use,
with the belt surface opposite the surface on which pouch 30 is attached
lying against the wearer’s waist during use, and the cutout3 for the
pocket/pouch does not open against the wearer’s waist in this orientation.
The Examiner’s finding that Bates’s cutout satisfies the “remains open
against the waist of the person during use” limitation of claim 5 appears to
be predicated on the Examiner’s position that this limitation does not require
the cutout to be on the interior surface of the belt facing the waist of the
person in use and directly in contact with the skin of the user. Ans. 3. The
Examiner construes this limitation as requiring a cutout that “remains open
in a location ‘against the waist’” and as being satisfied by a belt placed
against the waist when worn. Id. (emphasis added). This construction is not
reasonable, especially when considered in light of Appellant’s Specification
and drawings. See Spec. 2—3 (disclosing that “inner layer 36 of the belt 10 is
placed against the waist 32 of the person during use”); id. at 3 (disclosing
that force 3 8 exerted by the curvature of the belt urges the key into cutout
22); Fig. 2 (showing cutout 22 in inner layer 36). Moreover, such a
construction is not reasonable when considered in the context of the further
limitation in claim 5 that the curvature of the belt around the person during
use causes the material of the second panel around the opening to the pocket
to pull the head of a key inserted into the pocket into the cutout thereby
preventing the key from being accidentally dislodged from the pocket.
For these reasons, and the reasons set forth above in connection with
the anticipation rejection based on Foster, we do not sustain the rejection of
3 The Examiner reads the claimed “cutout” on the area between flap 33 and
body portion 10 shown in Figure 3. Final Act. 4.
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claim 5 or its dependent claims 6, 7, 10, and 11, under 35 U.S.C. § 102(b) as
anticipated by Bates.
Rejections III and IV-—Obviousness based on Bates/Foster
in combination with Welch
The Examiner’s application of Welch in combination with Bates in
rejecting claims 8 and 9, which depend from claim 5, and in combination
with Foster in rejecting claims 15 and 18, which depend from claim 12, does
not make up for the deficiencies of Bates and Foster discussed above in
connection with the anticipation rejections. Final Act. 5. Accordingly, for
the same reasons, we do not sustain the rejection of claims 8 and 9 under 35
U.S.C. § 103(a) as unpatentable over Bates and Welch or the rejection of
claims 15 and 18 under 35 U.S.C. § 103(a) as unpatentable over Foster and
Welch.
Rejection V—Obviousness based on Foster and Kojoori
Appellant argues for patentability of claims 1—4 subject to this ground
of rejection as a group. Appeal Br. 10-15. We select claim 1 as
representative of this group, and claims 2-4 stand or fall with claim 1. See
37 C.F.R. §41.37(c)(l)(iv).
The Examiner finds that “Foster substantially discloses the claimed
invention but is lacking the patch being located on a side facing the person.”
Final Act. 6. The Examiner determines, however, that it would have been
obvious to provide Foster’s belt with a reversible buckle assembly “in order
to provide a reversible belt which allows an alternative aesthetic and
functionality for the user,” as taught by Kojoori. Id.', see Kojoori 1:20—21,
34—38 (discussing the market trend to “provide accessories that are
reversible and/or have exchangeable buckles, straps and/or other
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components” to increase their versatility “when assembling an outfit”). The
Examiner adds that, in this combination, “the patch would be located on the
side facing the user as claimed.” Final Act. 6. We note, further, that the
proposed modification of Foster to provide a removable/reversible belt
buckle, as taught by Kojoori, has two orientations for use, namely, one
orientation in which the cutout (aperture 15 or incision in body portion 10)
opens outward away from the waist of the wearer, as shown in Figures 1—3
of Foster, and a second orientation, reversed from that shown in Figures 1—3
of Foster, in which the cutout/incision opens against the waist of the wearer.
Appellant argues that the modification proposed by the Examiner
would not have been obvious because “Foster explicitly discloses that the
aperture 15 should be placed on the outside of the belt” and, thus, “[pjlacing
the aperture 15 on the inside would change a principle of operation of Foster
because such placement would reduce the accessibility of the aperture.”
Appeal Br. 11. Appellant contends that “it is no accident that” Foster shows
aperture 15 on the outside of the belt, as such placement provides “easy
access” to the contents placed in the pocket. Reply Br. 4. Appellant adds
that,
[mjoreover, “it is impermissible within the framework of section
103 to pick and choose from any one reference only so much of
it as will support a given position, to the exclusion of other parts
necessary to the full appreciation of what such reference fairly
suggests to one of ordinary skill in the art.”
Id. (citing In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) (cited with
approval in Bausch & Lomb, Inc. v. Barnes Hind/Hydrocurve, Inc., 796 F.2d
443, 448 (Fed. Cir. 1986))).
We do not agree with Appellant that modifying Foster’s belt to
provide it with a removable/reversible belt buckle as taught by Kojoori
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would change a principle of operation of the belt. Foster discloses aperture
15 facing outward away from the wearer’s body, and teaches that “when the
tongue of the belt is drawn outward away from the body of the user, as in
Figs. 1 and 6, the end of the comb will project outward so as to be readily
grasped and withdrawn from its pocket.” Foster, p. 1, col. 2,11. 1—5; Figs. 1—
3, 6. However, Foster does not teach or suggest that the pocket/aperture
would be inoperative if disposed against the user’s body, with the aperture
opening against the waist of the user, rather than outward away from the
user’s body. Moreover, even assuming that reversing the belt so that
aperture 15 opens inwardly against the body of the user affects the
accessibility of articles held in Foster’s pocket in this reversed orientation,
providing a reversible buckle, as taught by Kojoori, to permit the belt to be
worn in the reverse orientation, to provide an alternative aesthetic
appearance, would not affect the accessibility of the aperture and the pocket
contents in the orientation illustrated in Foster. Rather, modification to
provide this reversibility feature merely makes the belt more versatile, by
affording it with the capability to present two different aesthetic
appearances, regardless of whether functionality of the pocket is retained in
both orientations. See also Winner Int7 Royalty Corp. v. Wang, 202 F.3d
1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes
at the expense of another benefit . . . should not nullity its use as a basis to
modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.”).
Appellant also contends that the rejection is improper because neither
Foster nor Kojoori is “directed to the problem solved by the claimed
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Application 13/494,117
invention,” namely, “providing a key holder on an inner surface of a belt that
cannot be dislodged during normal use.” Appeal Br. 14; see also Reply Br.
4 (urging that the rejection “should be overturned” because neither Foster
nor Kojoori is “directed to the problem solved by the claimed invention”).
According to Appellant, “[sjince the problem is not recognized, there would
be no reason to modify Foster and Kojoori.” Appeal Br. 14. This argument
is unavailing, as it does not reflect accurately the law on obviousness. In
making a determination with regard to obviousness, we should not limit
ourselves to looking only at the problem the applicant was trying to solve.
KSR Inti Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007). The problem
motivating an applicant may be only one of many addressed by the subject
matter of the application. Id. The question is not whether the combination
was obvious to the applicant but whether it was obvious to a person with
ordinary skill in the art. Id. Thus, “[ujnder the correct analysis, any need or
problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.” Id. As indicated above, the Examiner identifies such
a need or problem in determining that it would have been obvious to provide
Foster’s belt with a reversible buckle assembly “in order to provide a
reversible belt which allows an alternative aesthetic and functionality for the
user,” as taught by Kojoori. Final Act. 6.
Lastly, Appellant contends that “the Office Action has failed to
establish any credible basis why one skilled in the art would have been led
by the relevant teachings of the applied references to make the claimed
invention.” Appeal Br. 14—15; Reply Br. 4. This contention is incorrect. As
already noted, the Examiner articulates a reason for making the combination,
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namely, “in order to provide a reversible belt which allows an alternative
aesthetic and functionality for the user.” Final Act. 6. Further, this reason
has rational underpinnings, as evidenced by Kojoori’s discussion of the
market trend to “provide accessories that are reversible and/or have
exchangeable buckles, straps and/or other components” to increase their
versatility “when assembling an outfit.” Kojoori 1:20—21, 34—38.
For the above reasons, Appellant fails to apprise us of error in the
rejection of claim 1. Accordingly, we sustain the rejection of claim 1 and
claims 2—4, which fall with claim 1, under 35 U.S.C. § 103(a) as
unpatentable over Foster and Kojoori.
DECISION
The Examiner’s decision rejecting claims 12—14, 16, 17, 19, and 20
under 35 U.S.C. § 102(b) as anticipated by Foster is REVERSED.
The Examiner’s decision rejecting claims 5—7, 10, and 11 under 35
U.S.C. § 102(b) as anticipated by Bates is REVERSED.
The Examiner’s decision rejecting claims 8 and 9 under 35 U.S.C.
§ 103(a) as unpatentable over Bates and Welch is REVERSED.
The Examiner’s decision rejecting claims 15 and 18 under 35 U.S.C.
§ 103(a) as unpatentable over Foster and Welch is REVERSED.
The Examiner’s decision rejecting claims 1—4 under 35 U.S.C.
§ 103(a) as unpatentable over Foster and Kojoori is AFFIRMED.
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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)(l)(iv).
AFFIRMED-IN-PART
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