2019006768 (P.T.A.B. Jul. 2, 2020)

Michael Kimmet

Patent Trials and Appeals BoardJul 2, 2020

2019006768 (P.T.A.B. Jul. 2, 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. 15/057,149 03/01/2016 Michael G. Kimmet MGK-1 1068 31027 7590 07/02/2020 STEPHEN G. KIMMET 118 GROSS STREET TIFFIN, OH 44883 EXAMINER SUTTON, ANDREW W ART UNIT PAPER NUMBER 3732 MAIL DATE DELIVERY MODE 07/02/2020 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 MICHAEL G. KIMMET ____________ Appeal 2019-006768 Application 15/057,149 Technology Center 3700 ____________ Before EDWARD A. BROWN, MICHAEL L. HOELTER, and WILLIAM A. CAPP, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the non-final rejection of claims 1–12, and 19.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). 2 Claims 13–18 have been cancelled by Appellant. Claims App. Appeal 2019-006768 Application 15/057,149 2 THE INVENTION Appellant’s invention is a golf jersey. Spec. 1. Claim 19, reproduced below, is illustrative of the subject matter on appeal. 19. A golf jersey, comprising a shirt having a collar with at least one digit on a back of the shirt, wherein the shirt is configured to be provided to an individual professional golfer. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: NAME REFERENCE DATE Vinson US 4,296,498 Oct. 27, 1981 Anderson US D648,925 S Nov. 22, 2011 Goldberg US 2012/0185996 A1 July 26, 2012 DuChene US 2013/0276206 A1 Oct. 24, 2013 The following rejections are before us for review: 1. Claim 1, 2, and 19 are rejected under 35 U.S.C. § 103 as being unpatentable over Anderson and Vinson. 2. Claims 3–10, and 12 are rejected under 35 U.S.C. § 103 as being unpatentable over Anderson, Vinson, and Goldberg. 3. Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over Anderson, Vinson, and DuChene. 4. Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable over Anderson, Vinson, Goldberg, and DuChene. Appeal 2019-006768 Application 15/057,149 3 OPINION Unpatentability of Claims 1, 2, and 19 over Anderson and Vinson Appellant argues claims 1, 2, and 19 as a group. Appeal Br. 4–8. We select claim 19 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds that Anderson discloses the invention except for indicia on the jersey being a digit for which the Examiner relies on Vinson. Final Act. 2. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to place a digit on the golf jersey of Anderson, as a matter of common knowledge. Id. at 3. Appellant first argues that Anderson is not prior art, because it is a design patent that disclaims alphabetic characters as part of the design. Appeal Br. 5. This argument is without merit as a drawing teaches all that it reasonably suggests to a person of ordinary skill in the art. See In re Aslanian, 590 F.2d 911, 914 (CCPA 1979). The fact that Anderson disclaims alphabetic characters goes to the subject matter of what is claimed in the design patent. MPEP § 1503.02. Such disclaimer is immaterial to what the drawing suggests to a person of ordinary skill in the art. Appellant next argues that Vinson’s digits are displayed on “flaps.” Appeal Br. 6. Appellant further argues that Vinson does not disclose that it is associated with the game of golf. Id. at 7. Further still, Appellant argues that Vinson’s garment is reversible and a person of ordinary skill in the art would not make a golf jersey reversible because the collar would then rest on the front of the golfer’s neck. Id. Vinson discloses an athletic jersey where the front and back are different colors. Vincent, Abstract; col. 1, ll. 63–67. A flap that features different colors on opposing sides is attached along the shoulder seams. Id. Appeal 2019-006768 Application 15/057,149 4 col. 1, l. 67 – col. 2, l. 1. The flap is swung over the wearer’s head to change the jersey from one color to the other. Id. col. 2, ll. 5–8. The same technique is employed using different numbers. Id. col. 2, ll. 8–10. Vinson’s configuration allows an athletic participant to quickly change uniforms during an athletic contest. See Id. col. 1, l. 5 – col. 2, l. 10. Appellant’s argument that Vinson only places digits on “flaps” distorts the record before us. As shown in Figures 1–4, Vinson features numerals on the front and back of the torso portion of the jersey in addition to the front and back of the flap. Id. Figs. 1–4. Furthermore, Vinson is not “reversible” in the manner alleged by Appellant. Vinson’s jersey has a front and a back. Id. A person of ordinary skill in the art would also understand that it has an interior side that faces toward the body and an exterior side that faces away from the body. Id. No reasonable practitioner would think that Vinson’s garment is worn backwards or inside out. The Examiner relies on Vinson to show that it was known in the prior art to place digits on athletic jerseys. Final Act. 2. Vinson’s “flap” feature is extraneous to the issues before us. Even if the flap were eliminated, Vinson discloses an athletic jersey that displays digits. It is well settled that omitting an element and its function in a combination where the remaining elements perform the same functions as before involves only routine skill in the art. See In re Karlson, 311 F.2d 581, 584 (CCPA 1963). As any lay person who has ever watched an organized sporting event can readily attest, it is commonplace for participants in an athletic contest to wear numbered jerseys. Appellant presents neither evidence nor persuasive technical reasoning that shows that placing digits on a golf jersey, in a manner that reasonably resembles placing numbers on football jerseys, Appeal 2019-006768 Application 15/057,149 5 baseball uniforms, basketball uniforms, soccer uniforms, and rugby uniforms, etc. requires more than ordinary skill or produces unexpected results. Furthermore, Appellant offers no persuasive argument or explanation as to why, if it is already known to places letters on a golf jersey (Anderson), it is somehow patentably non-obvious to place a digit on a golf jersey. We sustain the Examiner’s unpatentability rejection of claims 1, 2, and 19 over Anderson and Vinson. Unpatentability of Claims 3–11, and 12 over Combinations Based on Anderson and Vinson These claim depend, directly or indirectly, from claim 19 and are not separately argued apart from arguments that we have previously considered and found unpersuasive as to claim 19. Appeal Br. 8–9. We sustain the Examiner’s rejection of claims 3–11, and 12. See 37 C.F.R. § 41.37(c)(1)(iv) (waiver of arguments for separate patentability). CONCLUSION Claims Rejected § References Aff’d Rev’d 1, 2, 19 103 Anderson, Vinson 1, 2, 19 3-10, 12 103 Anderson, Vinson, Goldberg 3-10, 12 6 103 Anderson, Vinson, DuChene 6 11 103 Anderson, Vinson, Goldberg, DuChene 11 Overall Outcome 1-12, 19 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