Inzer, John W.

Patent Trials and Appeals Board

Jan 31, 2020

14657293 - (D) (P.T.A.B. Jan. 31, 2020)

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.
14/657,293 03/13/2015 John W. Inzer INZ 0021 PA/40392.26 2263
25006 7590 01/31/2020
DINSMORE & SHOHL LLP
900 WILSHIRE DRIVE
SUITE 300
TROY, MI 48084
EXAMINER
KOZAK, ANNE M
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
01/31/2020 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):
MichiganPatTM@dinsmore.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN W. INZER
Appeal 2019-003747
Application 14/657,293
Technology Center 3700
Before JENNIFER D. BAHR, MICHAEL J. FITZPATRICK, and
PAUL J. KORNICZKY, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4 and 6–12.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42.
2 Claim 5, which is the only other pending claim, has been withdrawn from
consideration. Final Act. 1 (Office Action Summary); see also Appeal Br. 2
n.1.
Appeal 2019-003747
Application 14/657,293
2
CLAIMED SUBJECT MATTER
Appellant’s invention is directed to “a shirt or garment which covers
the upper torso of a wearer” and, more specifically, “to a support shirt
providing support along the chest and shoulder regions of the wearer.”
Spec. ¶ 1. Claims 1 and 10–12 are independent. Appeal Br. 12–13 (Claims
App.). Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A support shirt comprising a shirt body and a pair of shirt
body sleeves positioned adjacent to an upper portion of said
support shirt body, said sleeves attached to said shirt body at
round sleeve body holes located on the front of said shirt body,
each of said sleeves having a first end adapted to be attached to
a respective sleeve body hole, an opposite end, a first side edge
and a second side edge, said first end of each of said sleeves
including a notch portion located between opposing edges of
said first end of each of said sleeves, and said first and second
edges of each of said sleeves being joined together by a
coupling seam.
EVIDENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Terry US 3,066,418 Dec. 4, 1962
Knecht US 4,473,908 Oct. 2, 1984
Peters US 5,383,235 Jan. 24, 1995
Alaniz US 2007/0000015 A1 Jan. 4, 2007
REJECTIONS
Claims 1–4, 8, and 10–12 stand rejected under 35 U.S.C. § 103 as
unpatentable over Terry and Alaniz.
Claims 6 and 7 stand rejected under 35 U.S.C. § 103 as unpatentable
over Terry, Alaniz, and Peters.
Appeal 2019-003747
Application 14/657,293
3
Claim 9 stands rejected under 35 U.S.C. § 103 as unpatentable over
Terry, Alaniz, and Knecht.
OPINION
Each of Appellant’s independent claims 1 and 10–12 recites a support
shirt comprising, in pertinent part, sleeves attached at first ends to a shirt
body at round sleeve holes located on the front of the shirt body, and the first
end of each sleeve includes a notch portion located between opposing edges
of the first end. Appeal Br. 12–13 (Claims App.). The Examiner finds that
Terry discloses a shirt substantially as recited in claims 1 and 10–12, except
that Terry’s round sleeve holes are located partially on the front and partially
on the back of the shirt body, rather than on the front of the shirt body. Final
Act. 2–3, 5–8. Each of the Examiner’s rejections rests, in relevant part, on
the Examiner’s determination that it would have been obvious to modify
Terry’s shirt by locating the round sleeve holes “on a front side,” as taught
by Alaniz, because “doing so would allow for storing energy in the shirt,
thus making it a more efficient garment configuration.” Id. at 3, 6, 7, 8.
In rejecting claims under 35 U.S.C. § 103, examiners must establish a
factual basis and must also provide “some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l.
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Appellant argues, persuasively, that the Examiner’s articulated reason
for modifying Terry is flawed. See Appeal Br. 10–11. In particular,
Appellant contents that “while Alaniz is directed to an athletic shirt for
lifting weights, Terry is not.” Id. at 10. Thus, according to Appellant, “[a]
skilled person looking at Terry would not be motivated to modify the shirt as
Appeal 2019-003747
Application 14/657,293
4
proposed because Terry is not interested in making an athletic shirt that
‘stores energy.’” Id.
Terry’s invention is directed to “outer shirts or blouses, and
particularly to men’s outer shirts.” Terry 1:9–10. More specifically, Terry’s
“invention relates to the type of outer shirt known as a sport shirt which is
usually constructed of material provided with design figures which reoccur
symmetrically throughout the material. Such figures may be plaid figures or
figures of other design.” Id. 1:13–17. The types of shirts or blouses
described by Terry are collared and have sleeve openings located so that the
sleeves extend from the sides of the shirt body. See id., Fig. 1; 2:36–37.
Terry’s shirt or blouse is a casual garment (i.e., sport shirt) and is not
designed with weight lifting in mind.
Alaniz, on the other hand, “relates to an athletic garment . . . designed
for weight lifters to store energy in the garment so the stored energy may be
applied to lifting weights.” Alaniz ¶ 1. In order to improve the energy
storage capability of the weight lifter’s garment, Alaniz teaches providing
seams curved to promote twisting of the fabric by running “in a corkscrew
fashion down the sleeves” and providing arm holes 54 in the torso front of
the garment for attachment of sleeves. Id. ¶¶ 5, 30, 33, 36. According to
Alaniz, because of the orientation of the sleeves, when the lifter lowers the
weight, the fabric of the shirt front is stretched, thereby absorbing energy,
which is expended when the lifter raises the weight. Id. ¶ 36.
A person having ordinary skill in the art would not have been
prompted to orient the sleeves of Terry’s shirt in a manner to absorb or store
energy, as taught by Alaniz, because Terry’s shirt is not designed or
intended to be worn by weight lifters while lifting weights, and allowing for
storing energy would not make Terry’s garment more efficient, as the
Appeal 2019-003747
Application 14/657,293
5
Examiner states. Thus, we agree with Appellant that the Examiner’s stated
reason for the proposed modification (i.e., “for storing energy in the shirt,
thus making it a more efficient garment configuration”) lacks rational
underpinnings and fails to support the conclusion of obviousness of the
subject matter of independent claims 1 and 10–12, or claims 2–4 and 8,
which depend from claim 1. Further, the Examiner’s application of Peters
and Knecht in rejecting claims 6, 7, and 9 does not remedy the deficiency in
the combination of Terry and Alaniz. See Final Act. 9–10.
Accordingly, we do not sustain the Examiner’s rejections of claims 1–
4 and 6–12 under 35 U.S.C. § 103.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–4, 8, 10–12 103 Terry, Alaniz  1–4, 8, 10–12
6, 7 103 Terry, Alaniz, Peters  6, 7
9 103 Terry, Alaniz, Knecht 9
Overall
Outcome
1–4, 6–12
REVERSED