Ex Parte Turner

Patent Trials and Appeals Board

Mar 29, 2013

11295144 - (D) (P.T.A.B. Mar. 29, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/295,144 12/06/2005 David Turner 005127.00554 6361
22909 7590 04/01/2013
BANNER & WITCOFF, LTD.
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
KHAN, AMINA S
ART UNIT PAPER NUMBER
1761
MAIL DATE DELIVERY MODE
04/01/2013 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 DAVID TURNER
____________

Appeal 2012-002586
Application 11/295,144
Technology Center 1700
____________

Before CHUNG K. PAK, CATHERINE Q. TIMM, and
LINDA M. GAUDETTE, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
The named inventor (hereinafter “Appellant”)1 appeals under 35
U.S.C. § 134(a) from the Examiner’s final rejection of claims 5 through 9
and 27 through 36, all of the claims pending in the above-identified
application. We have jurisdiction under 35 U.S.C. § 6(b).

1 Appellant identifies the real party in interest as “NIKE, Inc.” (See Appeal
Brief filed April 28, 2011 (“App. Br.”) at 3.)
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Application 11/295,144

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STATEMENT OF THE CASE
The subject matter on appeal is directed to reversible articles of
apparel made of a single layer of a textile material with a first surface
having a background region having a first color and an indicia region
having a second color and an opposite second surface (reverse side)
having a reverse color arrangement (a background region having the
second color and an indicia region having the first color). (See Spec.
1-2, paragraphs 03-04.) This single layer of a textile material is said
to be different from two-layered reversible articles of apparel
reflective of two sets of apparel having different colors, which were
known to be used by some athletic teams in athletic competitions to
save the costs associated with having two sets of apparel having
different colors. (Id.)
Details of the appealed subject matter are recited in illustrative
independent claims 5 and 27 reproduced below from the “CLAIMS
APPENDIX” in the Appeal Brief:
5. An article of apparel comprising a textile element
formed as a single layer of a textile material, the single layer
textile element having:

a first surface with a first background region and a first
indicia region separate and distinct from the first background
region, the first background region being a first color, and at
least a portion of the first indicia region being a second color;
and
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a second surface with a second background region and a
second indicia region separate and distinct from the second
background region, the second background region being the
second color, and at least a portion of the second indicia region
being the first color,

wherein the first surface and the second surface are opposite
sides of the single layer textile element, the first background
region and the second background region being substantially
aligned with and opposite each other, and the first indicia
region and the second indicia region being substantially aligned
with and opposite each other.

27. An article of apparel comprising a textile element
formed as a single layer of a textile material, the single layer
textile element having:

a first surface with a first background region and a first
indicia region separate and distinct from the first background
region, the first background region being a first color, and at
least a portion of the first indicia region being a second color;
and

a second surface with a second background region and a
second indicia region separate and distinct from the second
background region, the second background region being the
second color, and at least a portion of the second indicia region
being the first color,

wherein the first surface and the second surface are opposite
sides of the single layer textile element, the first background
region and the second background region being substantially
aligned with and opposite each other, and the first indicia
region and the second indicia region being configured opposite
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Application 11/295,144

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each other and at least a first portion of the first indicia region
and the second indicia region being non-symmetrical elements
and at least a second portion of the first indicia region and
second indicia region being symmetrical elements.

(See App. Br. 17-18 (Claims App’x).)
Appellant seeks review of the Examiner’s rejection of claims 5
through 9 and 27 through 36 under 35 U.S.C. § 103(a) as unpatentable over
the disclosure of U.S. Patent 5,029,344 issued to Shannon et al. on July 9,
1991 (“Shannon”) set forth in the Examiner’s Answer mailed July 21,
2011(“Ans.”).2 (See App. Br. 5, Ans. 4, and Reply Brief filed September 21,
2011 (“Reply Br.”) at 1.)
DISCUSSION
As correctly found by the Examiner at page 5 of the Answer, Shannon
teaches reversible garments, such as shirts, made of a single layer of a textile
material for “different patterns or characteristics on its opposite surfaces.”
(See, e.g., Shannon, col. 6, ll. 47-55 and Fig. 6.) Although Shannon
mentions using such reversible garments, including reversible shirts, in the
context of coupling (or uncoupling) them to provide more choices for
different patterns or characteristics (four surface choices as opposed to two
surface choices), the fact remains that Shannon teaches reversible garments,
such as shirts, made of a single layer of a textile material with “different
patterns or characteristic on its opposite surfaces.” (See Shannon, Fig. 6,

2 The Examiner has withdrawn the remaining § 103(a) rejections set forth in
the final Office action dated October 25, 2010. (Ans. 4.)
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together with col. 6, ll. 47-55, col. 5, ll. 27-40, and col. 1, ll. 45-50.) In re
Johnson, 162 F.2d 924, 928 (CCPA 1947)(“In our opinion the fact that
Braunbeck intends his flaky product [i.e., an intermediate product,] to be
reduced to flour and applicants intend the same flaky product not to be
reduced to flour does not entitle applicants to a patent on the flaky product.”)
As argued by Appellant at pages 5 through 8 of the Appeal Brief,
Shannon does not teach the specific content of printed matter, i.e., providing
the particular background and indicia color arrangement and indicia
placements, recited in the claims on appeal on its reversible shirts or
garments made of a single layer of a textile material.
Thus, the dispositive question is: Has the Examiner reversibly erred
in determining that the specific content of printed matter recited in the
claims on appeal would not have rendered the claimed reversible garments
patentably distinguishable over the reversible garments made of a single
layer of a textile material taught by Shannon within the meaning of 35
U.S.C. §103? On this record, we answer this question in the negative.
As correctly found by the Examiner at page 6 of the Answer, Shannon
teaches that reversible garments, such as shirts, made of a single layer of a
textile material can have different patterns or characteristic on their opposite
surfaces, which are inclusive of the background colors and indicia colors and
placements recited in the claims on appeal. Appellant also acknowledge at
page 1, paragraph 03, of the Specification that some sport teams were
already known to use reversible articles of apparel with different colors on
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their opposite surfaces reflective of such sports team colors to avoid the
costs associated with using two sets of apparel having different colors that
identify given sports teams. In fact, Appellant does not challenge the
Examiner’s official notice at page 6 of the Answer that “reversible shirts
with different color sides and printing [(i.e., indicia)] are already known in
the prior art.”
Given that sport team jerseys or shirts, including reversible sport team
shirts, are known to be associated with colors and indicia (team colors,
names, logos, numbers, and player names), we concur with the Examiner
that one of ordinary skill in the art would have been led to employ the
background colors and indicia colors reflective of known sport team colors3,
with the optimum locations for the indicia for visualization or aesthetic
purposes, such as the background color and indicia color and placement
recited in the claims, on the opposite surfaces of the reversible shirts made
of a single layer of a textile material taught by Shannon.
In any event, as correctly determined by the Examiner at pages 6
through 9 of the Answer, the content of this printed matter is not
functionally related to reversible shirts or garments and will not distinguish
the claimed reversible garments from the reversible garment taught by
Shannon. As is apparent from pages 1 and 17, paragraphs 01-03 and 43, of

3 Each team is known to be associated with two known colors from which
one of ordinary skill in the art would be directed to select the background
and indicia colors.
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the Specification, the printed matter in question is used for “the aesthetic
appeal” and/or instructional information relating to sport teams’ identities
and is not functionally related to how the garments are used. See In re
Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (“Where the printed matter is
not functionally related to the substrate, the printed matter will not
distinguish the invention from the prior art in terms of patentability.”)
Theses garments are worn in the same manner regardless of where the
background color and/or indicia colored regions are placed. In re Seid, 161
F.2d 229, 231 (CCPA 1947) (“Those matters, as the board properly held,
relate to ornamentation only and have no mechanical function whatsoever.
They cannot, therefore, properly be relied on here, as the appealed claims are
not directed to a design, but are structural claims.”) To hold such printed
matter to have patentable weight is to allow continued patenting of any
known products, including any known garments, indefinitely upon including
any new color arrangements, any new placement of indicia, any ornamental
or aesthetic appeals, and any instructional related printed matters (instruction
regarding the identity of a team) on such known products. See In re Ngai,
367 F.3d 1336, 1339 (Fed. Cir. 2004) (“If we were to adopt Ngai’s position,
anyone could continue patenting a product indefinitely provided that they
add a new instruction sheet to the product.”)
Accordingly, we find that the Examiner has not reversibly erred in
rejecting claims 5 through 9 and 27 through 36 under 35 U.S.C. § 103(a) as
unpatentable over the disclosure of Shannon.
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ORDER
Upon consideration of the record, and for the reasons given above and
in the Answer, it is
ORDERED that the decision of the Examiner rejecting claims 5
through 9 and 27 through 36 under 35 U.S.C. § 103(a) as unpatentable over
the disclosure of Shannon is AFFIRMED; and
FURTHER ORDERED that 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

kmm