Ex Parte Toomey et al

Patent Trial and Appeal Board

Mar 12, 2013

11421178 (P.T.A.B. Mar. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte DANNY L. TOOMEY and ROXANNE L. PROCTOR-TOOMEY
__________

Appeal 2011-004592
Application 11/421,178
Technology Center 4100
__________

Before TONI R. SCHEINER, ERIC GRIMES, and ULRIKE W. JENKS,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to shirts.
The Examiner has rejected the claims as obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
The Specification discloses “a pocketed sweatshirt, in which the
pocket is accessible from outside of the sweatshirt, yet remains on the inside
of the sweatshirt” (Spec. 3:22-23). “It is preferred, but not necessary, that
there be ribbing 32 adjacent to the opening 30 [of the pocket]. The ribbing
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32 adds support to the opening area 30, thereby creating a stronger, more sag
resistant opening 30. In addition, the ribbing 32 adds a decorative design to
the opening 30.” (Id. at 4:12-15.)
Claims 1, 2, 4, 5, 9, 12, and 17-27 are on appeal. Claim 9 is
representative and reads as follows:
9. A pocketed shirt comprising:
a shirt having a front panel with outside and inside surfaces;
an opening in a breast area of the front panel from the outside surface
to the inside surface;
a free-floating pocket attached to the front panel so as to reside inside
the shirt and accessible from outside the shirt through the opening;
the pocket is attached to the shirt only with stitching both above and
below the opening;
the pocket having an open top end without closures; and
first ribbing attached to the front panel adjacent the opening.

Issue
The Examiner has rejected claims 1, 2, 5, 9, 12, and 18-27 under 35
U.S.C. § 103(a) as obvious in view of Krall
1
and Rabinowicz.
2
The
Examiner has also rejected claims 1, 4, 9, 17, and 27 under 35 U.S.C.
§ 103(a) as obvious in view of Krall, Rabinowicz and either Burr
3
or
Grushlaw.
4
Since Appellants have not provided any arguments based on
Burr or Grushlaw, we will consider the rejections together.
The Examiner finds that Krall discloses the pocketed sweatshirt of
claim 9 except for a “pocket opening, having ribbing attached thereto”

1
Krall, US 7,051,373 B1, issued May 30, 2006.
2
Rabinowicz et al., US 6,993,940 B2, issued Feb. 7, 2006.
3
Burr, US 1,714,491, issued May 28, 1929.
4
Grushlaw, US 1,092,144 issued Apr. 7, 1914.
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(Answer 4-5). The Examiner finds that Rabinowicz discloses “a tennis vest
having knit-in ball pockets comprising, as visible in Figures 9 and 10, two
openings 36 on body portion 22 leading to pockets 26, said openings 36
having a plurality of courses on either side of each opening 36 knitted in a
wide rib pattern 38” (id. at 5).
The Examiner concludes that it would have been obvious
to provide the pockets of Krall with the rib knit construction, as
taught by Rabinowicz, because, in addition to reinforcing the
pocket as is known within the apparel arts, said ribbing around
the pocket opening tends to cause opposite edges of each
opening to roll up, thus making the pocket easier to access.
(Id.)
Appellants contend that Rabinowicz requires its pocket to open easily
because they are for holding tennis balls, but “there is no such need in either
Applicant‟s or Krall‟s sweatshirts…. In view of these different functions of
front breast pockets and tennis ball pockets, it is not obvious to use [the]
Rabinowicz ribbing, which tends to open the pocket, on the front breast
pocket of Krall, which normally is closed.” (Appeal Br. 5-6.)
The issue presented is: Does the evidence of record support the
Examiner‟s conclusion that it would have been obvious to modify Krall‟s
shirt to include “ribbing attached to the front panel adjacent the opening,” as
recited in claim 9?
Findings of Fact
1. Krall discloses “a new breast pocket for sweatshirts” (Krall, col. 1,
ll. 8-9).
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2. Krall discloses “a pouch type pocket positioned on an interior of
the garment and minimizing the visual observability of the pocket” (id. at
col. 1, ll. 35-37).
3. Figure 1 of Krall is shown below:

Figure 1 shows a sweatshirt with Krall‟s pocket (id. at col. 2, ll. 8-9).
4. Krall discloses that the “front panel 22 … has a slit 24 therein” (id.
at col. 2, ll. 29-30).
5. Krall discloses that “the opening 42 of the pouch member 40 is
secured to and aligned with the slit 24 in the front panel 22 by stitching a
perimeter edge of the pouch member 40 encompassing the opening 42 to a
perimeter edge of the slit 24” (id. at col. 2, ll. 43-47).
6. Krall discloses that the “pouch member 40 is preferably positioned
to abut an interior portion of the front panel 22” (id. at col. 2, ll. 32-34).
7. Krall discloses that “[i]n at least one embodiment a closure means
50 is provided to selectively close the opening 42 of the pouch member 40”
(id. at col. 2, ll. 37-41).
8. Rabinowicz discloses “a tennis vest having one or more pockets
for holding tennis balls” (Rabinowicz, col. 1, ll. 7-10).
9. Fig. 6 of Rabinowicz is shown below:
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Figure 6 shows a rear view of a tennis garment (id. at col. 2, ll. 20-34).
10. Rabinowicz discloses that “body portion 22 includes two pockets
26 on the rear side of the body portion for holding tennis balls” (id. at col. 3,
ll. 10-12).
11. Figures 9 and 10 of Rabinowicz are shown below:

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Figures 9 and 10 show the rear pocket region of the garment with the
pockets closed and open, respectively (id. at col. 2, ll. 40-44).
12. Rabinowicz discloses that “a plurality of courses on either side of
each opening 36 can be knitted in a wide rib pattern 38…; this tends to cause
the opposite edges of the opening 36 to roll up and open the opening …,
which makes it easier to insert a ball into the pocket 26” (id. at col. 3, ll. 40-
43).
Principles of Law
In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed
purpose of the patentee controls.… [A]ny 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.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419-20 (2007).
Analysis
The Examiner finds, and Appellants do not dispute, that Krall
discloses a shirt meeting the limitations of claim 9 except for the “first
ribbing attached to the front panel adjacent the [pocket] opening.”
Rabinowicz discloses a garment with a pocket having a knitted wide rib
pattern on either side of the opening that causes the edges of the opening to
roll up and makes it easier to insert an object such as a tennis ball. Thus, it
would have been obvious to one of ordinary skill in the art to include
Rabinowicz‟s ribbing on the pocket of Krall‟s sweatshirt in order to make it
easier to insert objects into the pocket.
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Appellants argue that the Specification discloses that the claimed shirt
includes ribbing to make the opening sag-resistant, whereas “Rabinowicz
seeks to roll up and open the opening 36 to make it easier to put a ball into
the pocket. Therefore, the Rabinowicz ribbed opening function is opposite
the function of Applicant‟s ribbed opening.” (Appeal Br. 4.) Appellants
argue that neither Krall nor the claimed shirt have a need for an easily
opened pocket because “there is no need to put a tennis ball or similar object
in the front breast pocket” (id. at 5). Appellants argue that “[i]n view of
these different functions … , it is not obvious to use [the] Rabinowicz
ribbing, which tends to open the pocket, on the front breast pocket of Krall,
which normally is closed” (id. at 5-6).
This argument is not persuasive. Claim 9 does not require the ribbing
to have any particular function or properties, only that the shirt include
“ribbing attached to the front panel adjacent the [pocket] opening.” Thus,
the pocketed shirt suggested by the combination of Krall and Rabinowicz is
within the scope of claim 9, even if the ribbing is suggested for a different
function than is intended by Appellants. As expressly recognized in KSR,
any art recognized need or problem can provide a reason for combining
claim elements. Here, although Krall discloses that its pocket can include a
closure, it would have been obvious to include ribbing in order to obtain the
alternative benefit of a pocket that opens easily.
Appellants also argue that “Krall teaches away from a pocket opening
which rolls up and opens by providing a closure, such as the zipper shown in
Figure 1” (Reply Br. 2). However, Krall does not disclose that a closure is
critical or necessary to its shirt, only that “[i]n at least one embodiment a
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closure means 50 is provided” (FF 7, emphasis added). Krall therefore does
not suggest that its shirt would be nonfunctional with a pocket that opened
easily. Cf. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior
art‟s mere disclosure of more than one alternative does not constitute a
teaching away from . . . alternatives because such disclosure does not
criticize, discredit, or otherwise discourage the solution claimed.”).
Finally, Appellants argue that “the Examiner's statement that
Rabinowicz asserts that ribbing around a pocket opening provides easier
access to the contents of „any pocket‟ is overly broad and not supported by
Rabinowicz. Rabinowicz is directed towards an exterior pocket, contrary to
Applicant‟s pocket or Krall‟s pocket, both of which are internal pockets.”
(Appeal Br. 6.)
This argument is also not persuasive. Appellants have not provided
evidence or any persuasive technical reasoning to show that the location of
the pocket on the inside, rather than the outside, of a garment changes the
effect of ribbing around the opening. We agree with the Examiner that “the
opening structures of the pockets of Rabinowicz and Krall, which is the
pocket structure relevant to the application of ribbing, comprise similar
components including a slit opening and fabric of the garment forming an
upper edge and a lower edge of said opening” (Answer 10) and therefore
ribbing would be expected to have a similar effect on both.
Thus, we affirm the rejection of claim 9 as being obvious in view of
Krall and Rabinowicz. Claims 1, 2, 5, 12, and 18-27 have not been argued
separately and therefore fall with claim 9. 37 C.F.R. § 41.37(c)(1)(vii).
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We also affirm the rejection of claims 1, 4, 9, 17, and 27 under 35
U.S.C. § 103(a) in view of Krall, Rabinowicz and either Burr or Grushlaw,
because Appellants have waived any arguments based on Burr or Grushlaw.
Conclusion of Law
The evidence of record supports the Examiner‟s conclusion that it
would have been obvious to modify Krall‟s shirt to include “ribbing attached
to the front panel adjacent the opening,” as recited in claim 9.
SUMMARY
We affirm the rejection 1, 2, 4, 5, 9, 12, and 17-27 under 35 U.S.C.
§ 103(a).
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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