Ex Parte Walrich et al

Patent Trial and Appeal Board

Aug 21, 2018

13370179 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/370, 179 02/09/2012
23446 7590 08/23/2018
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
FIRST NAMED INVENTOR
Jennifer A. Walrich
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
24698US01 5299
EXAMINER
FERREIRA, CATHERINE M
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
08/23/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mhmpto@mcandrews-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte JENNIFER A. WALRICH and MYRNA G. CHANG 1
Appeal2017-006848
Application 13/370, 179
Technology Center 3700
Before JOHN C. KERINS, ARTHURM. PESLAK, and
SEAN P. O'HANLON, Administrative Patent Judges.
O'HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jennifer A. Walrich and Myrna G. Chang ("Appellants") appeal under
35 U.S.C. § 134(a) from the Examiner's decision, as set forth in the Non-
Final Office Action dated July 2, 2015 ("Non-Final Act."), rejecting claims
1 The Appeal Brief identifies Medline Industries, Inc. as the real party in
interest. Appeal Br. 3.
Appeal2017-006848
Application 13/370, 179
1, 3-13, and 21-27. 2 We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b). We AFFIRM-IN-PART.
SUMMARY OF THE INVENTION
Appellants' claimed invention is directed to garments worn by
healthcare workers. Spec. ,r 4. Claims 1, 21, and 25 are independent. Each
independent claim is rejected under a unique combination of references and
Appellants argue each independent claim separately, so all three independent
claims are reproduced below from the Claims Appendix of the Appeal Brief:
1. A garment comprising:
a trunk;
a first left sleeve including an unattached distal end and a
proximal end attached to the trunk;
a second left sleeve including an unattached distal end
and a proximal end attached to at least one of the trunk or the
first left sleeve;
a third left sleeve including a segment extending distally
from the distal ends of the first and second left sleeves;
a first right sleeve including an unattached distal end and
a proximal end attached to the trunk;
a second right sleeve including an unattached distal end
and a proximal end attached to at least one of the trunk or the
first right sleeve; and
a third right sleeve including a segment extending
distally from the distal ends of the first and second right
sleeves,
wherein:
each of the first left sleeve, the second left sleeve, the
first right sleeve, and the second right sleeve comprises a short
sleeve;
the third left sleeve is stitched to at least one of the first
left sleeve, the second left sleeve, or the trunk; and
2 Claim 2 is canceled, and claims 14--20 and 28 are withdrawn. Non-Final
Act. 2.
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Application 13/370, 179
the third right sleeve is stitched to at least one of the first
right sleeve, the second right sleeve, or the trunk.
21. A set of garments comprising:
a base-layer garment including a trunk, four short
sleeves, and two long sleeves;
a temperature-adjusting vest arranged to be worn over the
base-layer garment; and
a warm-up jacket arranged to be worn over the base-layer
garment and the temperature-adjusting vest.
25. A garment comprising:
a trunk;
a left short sleeve including an unattached distal end and
a proximal end attached to the trunk;
a left long sleeve including a segment extending distally
from the distal end of the left short sleeve;
a right short sleeve including an unattached distal end
and a proximal end attached to the trunk;
a right long sleeve including a segment extending distally
from the distal end of the right short sleeve;
wherein the left short sleeve and the right short sleeve
each include a material comprising a thread count between
TI30 to TI80 and a weight between 3 to 6 ounces per square
yard; and
wherein the left long sleeve and the right long sleeve
each include a material having at least 11 % spandex.
REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Parfitt us 1,951,437 Mar. 20, 1934
N guyen-Senderowicz us 5,561,860 Oct. 8, 1996
Rothrum us 5,673,433 Oct. 7, 1997
Siegel US 6,460,187 Bl Oct. 8, 2002
Mcfarlane US D476,I37 S June 24, 2003
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Application 13/370, 179
Deadwyler
Sinohui
Baacke
Keavey
Camey
US 2004/0064869 Al
US 2006/0218693 Al
US 7,117,539 Bl
US D627,I37 S
US 8,276,216 B2
REJECTIONS
Apr. 8, 2004
Oct. 5, 2006
Oct. 10, 2006
Nov. 16, 2010
Oct. 2, 2012
I. Claims 1, 3, 7-9, and 11 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Parfitt, Sinohui, and Deadwyler.
II. Claims 4 and 5 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Parfitt, Sinohui, Deadwyler, and Nguyen-Senderowicz.
III. Claim 6 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Parfitt, Sinohui, Deadwyler, Nguyen-Senderowicz,
Rothrum, and Camey.
IV. Claims 10, 12, and 13 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Parfitt, Sinohui, Deadwyler, and Siegel.
V. Claims 21 and 24 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Mcfarlane, Keavey, and Baacke.
VI. Claim 22 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Mcfarlane, Keavey, Baacke, and Deadwyler.
VII. Claim 23 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Mcfarlane, Keavey, Baacke, Deadwyler, Rothrum, and
Camey.
VIII. Claim 25 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Parfitt, Rothrum, and Camey.
IX. Claim 26 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Parfitt, Rothrum, Camey, and Siegel.
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X. Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Parfitt, Rothrum, Camey, and Deadwyler.
ANALYSIS
Rejection I
The Examiner finds that Parfitt discloses a garment comprising a
trunk and left and right first (false sleeve 10), second (coat sleeve 8), and
third ( detachable shirt sleeve 14) sleeves, but does not disclose the first and
second left and right sleeves as being short sleeves or the third left and right
sleeves being attached by stitching. Non-Final Act. 4--6. The Examiner
finds that Sinohui discloses short sleeves, and Deadwyler discloses third left
and right sleeves attached by stitching. Id. at 6. The Examiner determines
that it would have been obvious to one of ordinary skill in the art
to modify the garment of Paifztt by constructing the
multilayered short sleeves as taught by Sinohui and the third
sleeve being stitched to ... either the trunk or the first right and
first left sleeves as taught by Deadwyler to give the appearance
of a multilayered top without the bulk and make it comfortable
to wear.
Id.; see also Ans. 5, 7 (finding that Parfitt's coat sleeve 8 is shorter than
detachable shirt sleeve 14, and clarifying that "the modification would
merely be a further degree of shortening the [ coat sleeve] sleeve [8]"). The
Examiner further determines that "[t]he length of the sleeves would be a
matter of design choice." Ans. 5, 7.
Appellants traverse, arguing that shortening Parfitt's coat sleeve 8 in
the manner set forth by the Examiner would render Parfitt unsuitable for its
intended purpose and Parfitt teaches away from attaching detachable shirt
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sleeve 14 by stitching. Appeal Br. 15-18. For the reasons that follow, we
agree with Appellants.
As correctly noted by Appellants, Parfitt discloses a suit/sports coat
with built-in sleeves "making it possible to have a shirt with short sleeves
which affords convenience and comfort when the coat is off, and to always
have on shirt sleeves and cuffs when the coat is on." Parfitt 1: 1-9; Appeal
Br. 12. Parfitt explains that its coat is beneficial to "doctors, dentists and the
like who find it necessary to have their sleeves and cuffs out of the way
when they are doing certain kinds of work and who must appear correctly
dressed at other times." Parfitt 1 :28-32. Thus, Parfitt's coat allows the
wearer to appear "well dressed and correctly dressed" while wearing a short-
sleeved shirt under the coat, with 'just the desired amount of cuff showing at
the wrist." See id. at 1 :20-23, 2:44--47.
If a proposed modification would render the prior art invention being
modified unsatisfactory for its intended purpose, the proposed modification
would not have been obvious. See In re Gordon, 733 F.2d 900, 902 (Fed.
Cir. 1984); Tee Air Inc. v. Denso Mfg. Michigan Inc., 192 F.3d 1353, 1360
(Fed. Cir. 1999). As explained above, the intended purpose of Parfitt is to
give the user a "well dressed and correctly dressed" appearance of wearing a
long-sleeved shirt while actually wearing a short-sleeved shirt. The
Examiner's modification to make Parfitt's coat sleeve 8 a short sleeve would
not provide such an appearance, and, thus, the modification renders Parfitt
unsatisfactory for its intended purpose. The Examiner does not explain
adequately how changing Parfitt's coat sleeve into a short sleeve, as required
by claim 1, would provide for the appearance required by Parfitt. Nor does
the Examiner explain adequately how Sinohui would lead one of ordinary
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skill in the art to modify Parfitt's coat sleeve-we note that Sinohui
discloses a shirt that can be worn inside-out and backwards and the
Examiner relies on Figures 1--4 (Non-Final Act. 6), which appear to
illustrate an unremarkable short-sleeved tee shirt. Thus, the rejection lacks a
rational underpinning. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418
(2007) ("it can be important to identify a reason that would have prompted a
person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does").
The Examiner's reference to an unidentified intended purpose of "the
garment of the combined references" (Ans. 4 (emphasis added)) is
misplaced; as explained above, the proper focus is on the intended purpose
of the prior art invention being modified. Similarly, the Examiner's
reference to a recitation of intended use in Appellants' claims (id.) is
irrelevant to the rejections or Appellants' arguments.
As also correctly noted by Appellants, Parfitt consistently describes
shirt sleeve 14 as being detachable. See Appeal Br. 13-14. Indeed, Parfitt
explains that such sleeves are "readily detachable" so they "may be changed
when the shirt is changed." Parfitt 2:75-77 (emphasis added). This allows
the user to match the color of shirt sleeves 14 to the user's shirt color. Parfitt
also provides detachable sleeves 14 so the coat can be used without such
sleeves. Id. at 2:42--44 ("The false sleeves 10 in the coat will not interfere
with the coat in any way if it is used without the detachable shirt sleeves
14.") This allows use of the coat when wearing a long-sleeved shirt.
A reference teaches away from a claimed invention or a proposed
modification if "a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
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would be led in a direction divergent from the path that was taken by the
applicant." In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (citing In re
Gurley, 27 F.3d 551,553 (Fed. Cir. 1994)); see also In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004). For the reasons set forth above, one of
ordinary skill in the art would be discouraged from modifying Parfitt to have
permanently attached shirt sleeves as suggested by the Examiner. The
Examiner's finding that Parfitt merely suggests, but does not require,
detachable shirt sleeves (Ans. 4) is not supported by a preponderance of the
evidence. See Reply Br. 2.
Finally, the Examiner's rationale for modifying Parfitt-"to give the
appearance of a multilayered top without the bulk and make it comfortable
to wear"-lacks a rational underpinning. The Examiner does not explain
adequately why one of ordinary skill in the art would desire to have "the
appearance of a multilayered top," especially given Parfitt's stated purpose
of providing a "well dressed and correctly dressed" appearance with "just
the desired amount of cuff showing at the wrist" (Parfitt 1 :20-23, 2:44--47),
or how the proposed modifications would reduce the bulk of Parfitt' s coat or
make it more comfortable to wear. We note that with Parfitt's coat, there
"will be no appreciable extra bulk of material at any location, the cuff will
always hang the proper distance below the end of the coat sleeve and the
necessity for arm bands and sleeve holders will be done away with." Id. at
1:84--88.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claim 1 or its dependent claims 3, 7-9, and 11 as being unpatentable over
Parfitt, Sinohui, and Deadwyler. See In re Fine, 837 F.2d 1071, 1076 (Fed.
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Cir. 1988) ("Dependent claims are nonobvious under section 103 if the
independent claims from which they depend are nonobvious. ").
Re} ections II-IV
Claims 4--6, 10, 12, and 13 depend, directly or indirectly, from claim
1. The Examiner does not rely on Nguyen-Senderowicz, Rothrum, Camey,
or Siegel in any manner that would remedy the deficiencies noted above
with respect to the rejection of claim 1. Therefore, the rejections of claims
4--6, 10, 12, and 13 are not sustained.
Rejection V
The Examiner finds that Mcfarlane discloses a set of garments
substantially as recited in claim 21, and relies on Keavey to teach a base-
layer garment having four short sleeves and Baacke to teach a vest, a warm-
up jacket, and a base-layer garment having two long sleeves. Non-Final
Act. 11.
Appellants traverse by arguing "the Office Action never asserts that
the asserted references, either individually or in combination, disclose 'a
base-layer garment including a trunk, four short sleeves, and two long
sleeves."' Appeal Br. 18-19; see also Reply Br. 3. According to
Appellants, "the hypothetical garment proposed by the Office Action has
only four sleeves, while [ c ]laim 21 recites a garment with six sleeves."
Appeal Br. 18-19.
Appellants' argument fails to apprise us of error because the Examiner
finds that Baacke teaches the inclusion of two long sleeves. Notably,
Appellants fail to address Baacke in their briefs.
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Accordingly, for the foregoing reason, we sustain the rejection of
claim 21 and its dependent claim 24, which is not argued separately, as
being unpatentable over McFarlane, Keavey, and Baacke.
Rejections VI and VII
Appellants do not make any other substantive argument regarding the
rejection of claims 22 and 23, each of which depends, directly or indirectly,
from claim 21. See Appeal Br. 19. Therefore, we likewise sustain the
rejection of dependent claims 22 and 23.
Rejection VIII
The Examiner finds that Parfitt discloses a garment comprising a
trunk and left and right short3 and long (detachable shirt sleeve 14) sleeves,
but does not disclose the sleeves including materials as recited in claim 25.
Non-Final Act. 13-14. The Examiner finds that Rothrum discloses short
sleeves including the recited thread count and weight, and Camey discloses
long sleeves including the recited spandex material. Id. at 14. The
Examiner determines that it would have been obvious to one of ordinary
skill in the art
Id.
to modify the garment of Paifztt by constructing the [ short
sleeves] as taught by Rothrum and the left and right set of
sleeves of a material with a thread count ofT130-T180 and the
set of long sleeves being made of spandex as taught by Carney
in order to provide a garment that is light-weight and
comfortable to wear.
3 It is not clear to us which of Parfitt's false sleeves 10 and coat sleeves 8 the
Examiner considers to correspond to the recited short sleeves.
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Appellants traverse, arguing that modifying Parfitt's detachable sleeve
14 to include a spandex material would render Parfitt unsuitable for its
intended purpose. Appeal Br. 20. For the reasons that follow, we agree with
Appellants.
As explained above, the intended purpose of Parfitt is to give the user
a "well dressed and correctly dressed" appearance of wearing a long-sleeved
shirt while actually wearing a short-sleeved shirt. The Examiner's
modification to make Parfitt's detachable sleeve 14 of a spandex material
would not provide such an appearance, and, thus, the modification renders
Parfitt unsatisfactory for its intended purpose. The Examiner does not
explain adequately how changing Parfitt's detachable sleeve 14 to include a
material having at least 11 % spandex, as required by claim 25, would
provide for the appearance required by Parfitt. Nor does the Examiner
explain adequately how Camey would lead one of ordinary skill in the art to
modify Parfitt' s detachable sleeve. Thus, the rejection lacks a rational
underpinning.
Additionally, it is not clear to us what in Camey the Examiner
considers to correspond to the recited left and right sleeves. We note that
Camey discloses band garment 10 that fits around the midsection of a
pregnant woman, allowing her to wear her pants or skirt unfastened at the
top, to the degree needed, with the band garment over the waist in such a
way as to overlap and retain in place the unfastened top end of the pants or
skirt. See, e.g., Camey 2:57-62. We do not, however, see a disclosure of
sleeves formed of a spandex material. The Examiner's rejection does not set
forth with requisite specificity where each of the claim recitations is
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disclosed or suggested in the prior art, and, thus, is not supported by a
preponderance of the evidence.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claim 25 as being unpatentable over Parfitt, Rothrum, and Camey.
Re} ections IX and X
Claims 26 and 27 depend directly from claim 25. The Examiner does
not rely on Siegel or Deadwyler in any manner that would remedy the
deficiencies noted above with respect to the rejection of claim 25.
Therefore, the rejections of claims 26 and 27 are not sustained.
DECISION
The Examiner's decision to reject claims 21-24 is affirmed.
The Examiner's decision to reject claims 1, 3-13, and 25-27 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)(l )(iv).
AFFIRMED-IN-PART
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