MYLAPS B.V.

Patent Trials and Appeals Board

Dec 10, 2020

2020005839 (P.T.A.B. Dec. 10, 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.
16/179,507 11/02/2018 Bas Jan Emile VAN RENS 161566.01 4364
25944 7590 12/10/2020
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
KIM, TAE W
ART UNIT PAPER NUMBER
2887
NOTIFICATION DATE DELIVERY MODE
12/10/2020 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):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BAS JAN EMILE VAN RENS,
ADRIAAN KLAAS VERWOERD, and
REINERUS MATHIJS WILLIE GERRITSEN
____________________

Appeal 2020-005839
Application 16/179,507
Technology Center 2800
____________________

Before ALLEN R. MacDONALD, CAROLYN D. THOMAS, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

MacDONALD, 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 1–13. Appeal Br. 6. We have
jurisdiction under 35 U.S.C. § 6(b). We REVERSE.

1 Appellant identifies the real party in interest is MYLAPS B.V.
Appeal Br. 1.
Appeal 2020-005839
Application 16/179,507

2
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the claimed subject matter (emphasis,
formatting, and bracketed material added):
1. A tag assembly to be worn by a participant of a sports event
during the sports event, the tag assembly comprising:
[A.] a support sheet;
[B.] a tag disposed on the support sheet, the tag comprising an
antenna structure and the tag being configured to transmit
a signal to a receiver that detects a passage of the
participant; and
[C.] an expandable spacer structure disposed on the support
sheet spaced away from or partly or fully on top of the
antenna structure, the expandable spacer structure
providing a predetermined spacing between the tag and a
body of a participant of the sports event,
[i.] the expandable spacer structure being configured to
expand from a non-expanded state to an expanded
state of a predetermined spacer thickness,
[ii.] wherein the expandable spacer structure
[a.] in the expanded state has a thickness in a range
between 5 and 15 mm and
[b.] in the non-expanded state has a thickness in a
range of greater than 0 to smaller than 5 mm, and
[D.] wherein the expandable spacer structure comprises one
or more pieces of moisture absorbing material
configured to expand at least in one dimension during the
sports event in response to absorbing sweat from the
participant.
Appeal 2020-005839
Application 16/179,507

3
REFERENCES2
The Examiner relies on the following references:
Name Reference Date
Benecke US 2003/0114818 A1 June 19, 2003
Harris US 2006/0250254 A1 Nov. 9, 2006
Stevenson US 2007/0112398 A1 May 17, 2007
Forster US 2009/0309703 A1 Dec. 17, 2009
Lamp US 2009/0309735 A1 Dec. 17, 2009
McAllister US 2011/0018689 A1 Jan. 27, 2011
Phillips US 2011/0024181 A1 Feb. 3, 2011
Hansen US 2011/0234383 A1 Sept. 29, 2011
Baba US 2011/0315776 A1 Dec. 29, 2011
REJECTIONS
A.
The Examiner rejects claims 1–6 and 12, under 35 U.S.C. § 103 as
being unpatentable over the combination of Hansen, McAllister, and
Benecke. Final Act. 2–6.
We select claim 1 as the representative claim for this rejection. The
contentions discussed herein as to claim 1 are dispositive as to this rejection.
Therefore, except for our ultimate decision, we do not address the merit of
the § 103 rejection of claims 1–6 and 12 further herein.
B.
The Examiner rejects claims 7–11 and 13, under 35 U.S.C. § 103 as
being unpatentable over Hansen, McAllister, and Benecke in various

2 All citations herein to patent and pre-grant publication references are by
reference to the first named inventor only.
Appeal 2020-005839
Application 16/179,507

4
combinations with Harris, Stevenson, Forster, Lamp, Phillips, and Baba.
Final Act. 7–14.
The contentions discussed herein as to claim 1 are dispositive as to
this rejection. Therefore, except for our ultimate decision, we do not address
the merits of the § 103 rejections of claims 7–11 and 13 further herein.
OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. Appellant’s contentions we discuss
are dispositive as to the rejections on appeal. Therefore, Appellant’s other
contentions are not discussed in detail herein.
A.1.
As reproduced supra, part D of claim 1 requires (emphasis added):
the expandable spacer structure comprises one or more
pieces of moisture absorbing material configured to
expand at least in one dimension during the sports event in
response to absorbing sweat from the participant.
A.2.
In rejecting claim 1, the Examiner finds that the features of part D are
taught in paragraph 5, 34, and 42 of Benecke. Final Act. 4–5.
A.3.a.
Appellant contends that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103 because:
for the reasons detailed [in the Appeal Brief], Benecke is not
from the same field of endeavor as the claimed inventions, and
is not reasonably pertinent to the problems faced by the inventors
of the present claims. Thus, Benecke is non-analogous art to the
present claims, and the rejections should be reversed.
Appeal Br. 7 (emphasis added).
Appeal 2020-005839
Application 16/179,507

5
A.3.b.
Also, Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103 because:
[T]here is no art recognized equivalence between the allegedly
expandable spacer of McAllister and an allegedly water
swellable perspiration pad of Benecke, such that one of ordinary
skill in the art would have had any motivation, with any
reasonable expectation of success in making the substitution.
Appeal Br. 18 (emphasis added).
A.4.
As articulated by the Federal Circuit, the Examiner’s burden of
proving non-patentability is by a preponderance of the evidence. See In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the
evidence is the standard that must be met by the PTO in making rejections”).
“A rejection based on section 103 clearly must rest on a factual basis[.]” In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not . . .
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.” Id. We conclude the Examiner’s
analysis fails to meet this standard because the rejection does not adequately
explain the Examiner’s findings of fact.
As to Appellant’s non-analogous art argument, (a) we agree that
Benecke is not from the same field of endeavor as the claimed inventions,
and (b) we agree to the extent that the Examiner has not presented sufficient
articulated reasoning to show that Benecke would be reasonably pertinent to
the problems faced by the inventors of the present claims. We conclude,
consistent with Appellant’s argument, that there is currently insufficient
Appeal 2020-005839
Application 16/179,507

6
articulated reasoning to support the Examiner’s finding that Benecke is
analogous art to the present claims.
As to Appellant’s no art recognized equivalence argument, we also
agree that there is currently insufficient articulated reasoning to support a
determination that expandable spacer of McAllister and the water swellable
perspiration pad of Benecke are art recognized equivalents.
Therefore, we conclude that there is insufficient articulated reasoning
to support the Examiner’s final conclusion that claim 1 would have been
obvious to one of ordinary skill in the art at the time of Appellant’s
invention.
CONCLUSION
The Appellant has demonstrated the Examiner erred in rejecting
claims 1–13 as being unpatentable under 35 U.S.C. § 103.
The Examiner’s rejections of claims 1–13 as being unpatentable under
35 U.S.C. § 103 are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–6, 12 103 Hansen, McAllister,
Benecke
1–6, 12
7–11, 13 103 Hansen, McAllister,
Benecke, Harris,
Stevenson, Forster,
Lamp, Phillips, Baba
7–11, 13
Overall
Outcome

1–13

REVERSED