2021003973 (P.T.A.B. Dec. 10, 2021)

Ocean Rodeo Sports Inc.

Patent Trials and Appeals BoardDec 10, 2021

2021003973 (P.T.A.B. Dec. 10, 2021)

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. 15/540,669 06/29/2017 Richard Kerr MYERSCOUGH MUS10-10 3160 43218 7590 12/10/2021 Taft Stettinius & Hollister LLP ONE INDIANA SQUARE, SUITE 3500 INDIANAPOLIS, IN 46204-2023 EXAMINER ZHAO, AIYING ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 12/10/2021 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): Taft-IP-Docket@taftlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RICHARD KERR MYERSCOUGH and ROSS DAVIS HARRINGTON ____________ Appeal 2021-003973 Application 15/540,669 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, KENNETH G. SCHOPFER, and ROBERT J. SILVERMAN, Administrative Patent Judges. MOHANTY, 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 13–17, 19, and 25. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Ocean Rodeo Sports Inc. (Appeal Br. 1). Appeal 2021-003973 Application 15/540,669 2 CLAIMED SUBJECT MATTER The Appellant’s claimed invention relates to an immersion suit for water sports (Spec., para. 2). Claim 13, reproduced below, is representative of the subject matter on appeal. 13. An outdoor activity suit comprising: a body having a front portion, a back portion, opposed sides where the front portion connects to the back portion, a neck receiving portion defining a neck opening, an arms receiving portion and a legs receiving portion; the front portion, the neck receiving portion and the legs receiving portion of the body forming a first component of the body; the back portion and the arms receiving portion forming a second component of the body; and an endless loop fastener connecting the first component and the second component, the endless loop fastener extending across the back portion adjacent to the neck receiving portion, down the front portion of the body adjacent to each of the opposed sides and across the back portion adjacent to the legs receiving portion, such that the second component is selectively removable from the first component allowing the first component to be worn independent from the second component. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Appeal 2021-003973 Application 15/540,669 3 Name Reference Date Oldham US 3,493,972 Feb. 10, 1970 Meistrell US 4,862,517 Sept. 5, 1989 Duplock US 6,415,449 B2 July 9, 2002 O’Brien US 2007/0277278 A1 Dec. 6, 2007 Insulan US 2009/0100557 A1 Apr. 23, 2009 Myerscough WO 2013/001413 A1 Jan. 3, 2013 The following rejections are before us for review: 1. Claims 13, 14, and 25 are rejected under 35 U.S.C. § 103 as unpatentable over Insulan and Duplock. 2. Claim 15 is rejected under 35 U.S.C. § 103 as unpatentable over Insulan, Duplock, and O’Brien. 3. Claim 16 is rejected under 35 U.S.C. § 103 as unpatentable over Insulan, Duplock, and Myerscough. 4. Claim 17 is rejected under 35 U.S.C. § 103 as unpatentable over Insulan, Duplock, and Oldham. 5. Claim 19 is rejected under 35 U.S.C. § 103 as unpatentable over Insulan, Duplock, and Meistrell. FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence2. 2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2021-003973 Application 15/540,669 4 ANALYSIS The Appellant argues that the rejection of claim 13 under 35 U.S.C. § 103 as unpatentable over Insulan, Duplock, and O’Brien is improper because the references have been improperly combined (Appeal Br. 12–20). In contrast, the Examiner has determined that the rejection of record is proper (Final Act. 2–4; Ans. 3–5). The Examiner has determined that Insulan discloses the invention substantially as claimed by disclosing a protective suit that has a front component, back component, and a seal (19) between the two components that extends up to the chest (see Fig. 5). In the embodiment of Insulan at Figure 5, the two parts of the suit can be completely separated, but the seal is not shown to extend to adjacent the neck portion (para. 38, Fig. 5). The Examiner cites to Duplock at Figure 1 which discloses a survival garment with a zipper opening (14, 15) that extends in horseshoe arrangement around the neck portion (11) (see col. 3:64–4:7). The rejection of record has determined that it would have been obvious to modify Insulan by Duplock in order to facilitate getting out of a one piece body suit easily (Final Act. 3, 4). We disagree with the rejection of record. In KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007) the Supreme Court at 418 noted that in an obviousness analysis that “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Here, the claim requires a specific path for the endless loop fastener that requires “extending across the back portion adjacent to the neck receiving portion, down the front portion of the body Appeal 2021-003973 Application 15/540,669 5 adjacent to each of the opposed sides and across the back portion adjacent to the legs receiving portion.” Insulan discloses a “front portion” 15 and a legs receiving portion 9, 10, but not a “neck receiving portion” as part of a first component of the body in the manner claimed. The path of the zipper (14, 15) in Duplock is in a horseshoe shape, but there is no rear view of Figure 1 to disclose that the zipper is “adjacent” the neck portion in the back and one must rely on speculation into probabilities and possibilities of how the zipper may be placed in that region. That is, the zipper portion is not specifically shown adjacent the neck portion in the back component and it could extend to the chest or low back region. Further, the embodiment of Insulan in Figure 5 is a two-piece suit which already has some degree of ease in removal, while the one piece device of Duplock may additionally be more difficult to remove from for a user than a two-piece suit. Also, the claim requires not only a modification for Insulan to have the fastener “extending across the back portion adjacent to the neck receiving portion” but also “down the front portion of the body adjacent to each of the opposed sides and across the back portion adjacent to the legs receiving portion.” Here, the rejection lacks articulated reasoning with rational underpinnings to modify the reference of Insulan to specifically include a fastener “extending across the back portion adjacent to the neck receiving portion, down the front portion of the body adjacent to each of the opposed sides and across the back portion adjacent to the legs receiving portion” in light of Duplock without impermissible hindsight, and the cited combination would not have been obvious as set forth in the rejection. For these above reasons, the rejection of claim 13 and its dependent claim 14 is not sustained. Appeal 2021-003973 Application 15/540,669 6 Independent claim 25 is directed to similar subject matter as claim 13 and the rejection of this claim is not sustained for the same reasons given above. The rejection of dependent claims 15, 16, 17, and 19 which depend from claim 13 are sustained for the same reasons given above as the additional references fail to cure the deficiency in the base rejection. CONCLUSIONS OF LAW We conclude that Appellant has shown that the Examiner erred in rejecting claims 13, 14, and 25 under 35 U.S.C. § 103 as unpatentable over Insulan and Duplock. We conclude that Appellant has shown that the Examiner erred in rejecting claim 15 under 35 U.S.C. § 103 as unpatentable over Insulan, Duplock, and O’Brien. We conclude that Appellant has shown that the Examiner erred in rejecting claim 16 under 35 U.S.C. § 103 as unpatentable over Insulan, Duplock, and Myerscough. We conclude that Appellant has shown that the Examiner erred in rejecting claim 17 under 35 U.S.C. § 103 as unpatentable over Insulan, Duplock, and Oldham We conclude that Appellant has shown that the Examiner erred in rejecting claim 19 under 35 U.S.C. § 103 as unpatentable over Insulan, Duplock, and Meistrell. Appeal 2021-003973 Application 15/540,669 7 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 13, 14, 25 103 Insulan, Duplock 13, 14, 25 15 103 Insulan, Duplock, O’Brien 15 16 103 Insulan, Duplock, Myerscough 16 17 103 Insulan, Duplock, Oldham 17 19 103 Insulan, Duplock, Meistrell 19 Overall Outcome 13–17, 19, 25 REVERSED