UGOWEAR, LLC

Patent Trials and Appeals Board

Sep 8, 2021

2021001631 (P.T.A.B. Sep. 8, 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.
15/550,441 08/11/2017 Melanie Cole 1669.010US 3209
25215 7590 09/08/2021
The Dobrusin Law Firm P.C.
29 W. Lawrence Street
Suite 210
Pontiac, MI 48342
EXAMINER
LARSON, JUSTIN MATTHEW
ART UNIT PAPER NUMBER
3734
NOTIFICATION DATE DELIVERY MODE
09/08/2021 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):
dobrusin_PAIR@firsttofile.com
patmail@patentco.com
rmasquelier@patentco.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MELANIE COLE and
VICKY DEROUCHEY

Appeal 2021-001631
Application 15/550,441
Technology Center 3700
____________

Before MICHAEL L. HOELTER, BRETT C. MARTIN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

HOELTER, 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, 3–5, 7–18, 21, and 22, which
constitute all the claims pending in this application.2 See Appeal Br. 4. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM the Examiner’s rejections of these claims.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“UGOWEAR, LLC.” Appeal Br. 2.
2 Claims 2, 6, 19, and 20 have been cancelled. See Appeal Br. 4.
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Application 15/550,441

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CLAIMED SUBJECT MATTER
The disclosed subject matter “relate[s] generally to a carrying case.
More specifically, the teachings herein relate to a carrying case for carrying
and protecting items.” Spec. ¶ 1. Apparatus claims 1, 9, and 10 are
independent. Claim 1 is illustrative of the claims on appeal and is
reproduced below.
1. A carrying case, comprising:
a first portion including a first inner surface, a first outer
surface, and a first pocket located between the first inner
surface and the first outer surface;
a second portion including a second inner surface, a
second outer surface, a portion of the second outer surface
comprising a transparent polymeric material, and a second
pocket located between the second inner surface and the second
outer surface, wherein the second pocket is free of any closing
feature and the second inner surface is arranged in a close and
almost contacting position with the second outer surface so that
a mobile device received in between the second inner surface
and second outer surface is maintained in a secure position by
the closeness of the second inner surface and second outer
surface; and
a waterproof fabric-coated thermoplastic polyurethane
zipper extending between the first portion and the second
portion, wherein the mobile device located in the second pocket
can be viewed and manipulated without movement of the
mobile device from a window formed from the transparent
polymeric material located on the second outer surface,
wherein the window formed from the transparent
polymeric material is thermoplastic polyurethane, and wherein
the first portion and at least a portion of the second portion is
constructed of thermoplastic polyurethane so that the carrying
case is waterproof;
wherein the first pocket includes a second zipper;
wherein when the zipper is in a closed position, the first
inner surface and the second inner surface are kept dry when
the carrying case is exposed to moisture, but when the zipper is
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in an open position, the mobile device will be exposed to the
moisture due to the lack of closing feature on the second
pocket; and
wherein when the zipper is in a closed position, the
zipper forms a water-tight and air-tight seal further adapting the
case to float in water.
EVIDENCE
Name Reference Date
Southwick US 2001/0027834 A1 Oct. 11, 2001
Hung et al. (“Hung”) US 8,380,264 B2 Feb. 19, 2013
Yun US 2013/0270312 A1 Oct. 17, 2013
Morgan et al.
(“Morgan”)
US 8,752,740 B2 June 17, 2014
Lai et al. (“Lai”) US 9,795,044 B2 Oct. 17, 2017
Harstvedt US 9,877,558 B1 Jan. 30, 2018
Appellant’s Admitted
Prior Art (“AAPA”).
Appellant’s
Specification Paragraph
34.

REJECTIONS
Claims 1, 3–5, 7, 8, 10, 12–18, 21, and 22 are rejected under 35
U.S.C. § 103 as unpatentable over Yun, Morgan, AAPA, Lai, Hung, and
Harstvedt.
Claims 9 and 11 are rejected under 35 U.S.C. § 103 as unpatentable
Yun, Morgan, AAPA, Lai, Hung, Harstvedt, and Southwick.
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ANALYSIS
The rejection of claims 1, 3–5, 7, 8, 10, 12–18, 21, and 22
as unpatentable over Yun, Morgan, AAPA, Lai, Hung, and Harstvedt
Appellant argues all these claims together. See Appeal Br. 14–19.
We select claim 1 for review with the remaining claims standing or falling
with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2019).
The Examiner relies primarily on Yun for teaching a carrying case
employing a “waterproof zipper.” See Final Act. 2 (referencing Yun ¶ 27).
Yun is silent as to the type of waterproof zipper employed. See Final Act. 3;
Ans. 3. The Examiner states, “[g]iven Yun’s lack of zipper details,” a
skilled person would “have looked to another known waterproof zipper for
such structure.” Final Act. 3; see also Ans. 3. On this point, the Examiner
states, “Appellant has disclosed that the TIZIP® zipper was one known
waterproof zipper.” Ans. 3; see also Final Act. 3. Appellant acknowledges
that “a TIZIP® waterproof zipper [is] available from Titex GmbH,
Germany.” AAPA (i.e., Spec. ¶ 34). The Examiner thus concludes that it
would have been obvious “to have used that specific zipper in constructing
the Yun device” because “[t]here is no inventive step in simply choosing
between known waterproof zippers.” Final Act. 3; see also Ans. 3.
Appellant contends that “modifying the zipper of Yun to include a
waterproof zipper of the claimed invention does not necessarily ensure that
the modified Yun case can float in water when a mobile device is enclosed
within the case.” Appeal Br. 14 (italics added). Instead, as per Appellant, “a
zipper can qualify as ‘waterproof’ without inherently being both water-tight
and air-tight.” Appeal Br. 14. While this may or may not be true with
respect to other waterproof zippers, Appellant does not explain how the
TIZIP® waterproof zipper identified above, fails to be both “water-tight and
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Application 15/550,441

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air-tight” as claimed. Here, the Examiner states that Appellant “has
provided evidence . . . that all TIZIP® zippers are air-tight as well as water-
proof” and references “the affidavit of Vicky DeRouchey” as support.3 Ans.
3. Thus, Appellant fails to show how the known TIZIP® zipper employed by
the Examiner above fails to meet this claim limitation.
Regarding the ability to float, that property depends on the material of
the case itself, its weight (including that of its contents), and its geometric
shape. See also Ans. 5 (addressing the attributes that allow Appellant’s
carrying case to float, and also where these attributes are taught in the cited
art). Claim 1 recites “that the carrying case is waterproof” and to achieve
this, Appellant’s Specification discusses constructing the case using a TPU
(thermoplastic polyurethane) material. See Spec. ¶¶ 21, 27, 29. Yun is
silent as to the material the case is made of. However, as per the Examiner,
“Hung teaches that it was already known for a case like Yun to be either
partly or entirely made from TPU.” Final Act. 3 (referencing Hung 6:14–
22). This portion of Hung teaches that a “mobile media device case 110 can
be composed of . . . PVC, TPU, plastic” among other materials. Hung 6:14–
16. The Examiner thus reasons that it would have been obvious to construct
Yun’s case of such material as well. See Final Act. 4. This would be
consistent with Yun’s zipper being waterproof. See Yun ¶ 27. In other
words, why employ a waterproof zipper if the case itself is not also
waterproof?

3 Paragraph 11 of the DeRouchey Declaration states, “All TIZIP zippers are
waterproof, airtight, and pressure tested (see, Exhibit C and TIZIP® website
information attached hereto as Exhibit D).”
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Consequently, whether Yun’s modified waterproof case floats or not
depends on its dimensions (i.e., displacement) and weight (including
contents). Paragraph 7 of the DeRouchey Declaration states that Appellant’s
device is able to float provided the contents do not exceed “20.6 ounces.”
Appellant presents no evidence that Yun’s case, i.e., one having similar
dimensions and made of similar TPU material (see Hung), would not float as
well under similar circumstances. Thus, Appellant’s contention above that
modifying Yun’s zipper “does not necessarily ensure that the modified Yun
case can float” (Appeal Br. 14) is not persuasive when addressing a similarly
sized Yun case modified to employ the same zipper and material as
Appellant’s case. See also In re Best, 562 F.2d 1252, 1255 (CCPA 1977)
noting “the PTO’s inability to manufacture products or to obtain and
compare prior art products.”
Appellant further contends that the prior art fails to teach that when
the zipper is open, “the mobile device will be exposed to the moisture due to
the lack of closing feature on the second pocket.”4 Appeal Br. 14.
Appellant contends that Yun’s contents are “not exposed even when the
zipper is in an open position” because, when in this open position, Yun still
“seems to suggest that the case remains rather closed” Appeal Br. 14–15;
see also Yun Fig. 2. The Examiner explains, however, that when Yun’s
zipper is open, Yun’s contents would be exposed to moisture because the
zipper is no longer waterproof. See Ans. 4 (“An open zipper will not stop

4 The Examiner relies on the teachings of Harstvedt for teaching the use of
“a more traditional pocket” and that the selection of Harstvedt’s type pocket
is simply one of “known and suitable designs” for a pocket. Final Act. 4;
see also Ans. 4. Appellant does not dispute Harstvedt or the type of pocket
disclosed therein, nor its combination with modified Yun.
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water from passing therethrough.”). Appellant does not explain how, when
a waterproof zipper is open, the open zipper will still, somehow, restrict
water migration into the case. Accordingly, Appellant is not persuasive that
the Examiner erred when finding that, even if Yun’s case “remains rather
closed” after opening the zipper, Yun’s open zipper will still allow moisture
to pass.
Appellant also argues that a skilled person “would have no incentive
to modify the case of Yun to make it float with or without the electronic
device enclosed.” Appeal Br. 15. However, as noted above, buoyancy is
determined by the weight of the case and the amount of fluid displaced.
Comparing products of like size (which are made of similar material having
waterproof/air tight zippers), Appellant seems to contend that Yun’s
modified case would not float because the references are silent on this point.
See Appeal Br. 15. But, all things being equal, there is no reason to believe
that Yun’s modified case would not float the same as Appellant’s case.
Appellant additionally contends “that the problems to be solved by the
prior art concern very different problems from that addressed by the present
invention.” Appeal Br. 16. Further, “[n]one of the cited prior art references
relate to cases that are deliberately created for use in aquatic environments,
nor cases that explicitly disclose the ability to float while maintaining the
weight of an electronic device therein.” Appeal Br. 16. However, our
reviewing court has previously held that it is not necessary for the prior art
to serve the same purpose as that disclosed in the specification in order to
support the conclusion that the claimed subject matter would have been
obvious. See In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972); see also
Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1003 (Fed. Cir. 2016);
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In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (“[t]he use of patents as
references is not limited to what the patentees describe as their own
inventions or to the problems with which they are concerned. They are part
of the literature of the art, relevant for all they contain”). Consequently,
Appellant’s contention that the prior art does not address the problem
identified in Appellant’s Specification is not persuasive of Examiner error,
nor is Appellant persuasive that the prior art, as a whole, fails to render the
claimed solution obvious.
Addressing the two Declarations submitted by Appellant, the
Examiner characterizes the “DeRouchey affidavit” as pertaining to the
“material tests” performed in an effort to show that Appellant’s case can
float. Ans. 7. This is a correct characterization of this document which
details the various “water immersion, buoyancy, temperature, abrasion, and
pull testing” that was performed on Appellant’s case. DeRouchey
Declaration ¶ 5. The results of such testing are provided in paragraph 6 of
this Declaration. The Declaration concludes with a series of paragraphs
stating, the “Pack is able to float,” the “packs are certified waterproof,” the
“packs utilize TIZIP® MasterSeal 6 waterproof zippers,” the “MasterSeal 6
is made from high-strength fabric,’ and “[a]ll TIZIP zippers are waterproof,
airtight, and pressure tested.” DeRouchey Declaration ¶¶ 7–11. The
Examiner does not dispute such test results. See Ans. 7. Instead, this
Declaration would seem to demonstrate that the use of the TIZIP® zipper in
Yun’s modified case would likewise achieve a similar degree of buoyancy.
Thus, there is no indication that the Examiner disregarded this Declaration.
Regarding the “Cole affidavit,” the Examiner characterizes this
Declaration as pertaining to “commercial success.” Ans. 7. Indeed, this
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Cole Declaration addresses past and anticipated case sales (see ¶¶ 6–8) and
awards received (see ¶ 9). Such sales and awards are promising and indicate
a product that is well-received in the marketplace. However, even
presuming a connection between the claim language, the evidence
submitted, and the product sold, our reviewing court has instructed us that a
nexus may not exist where, for example, the merits of the claimed invention
were “readily available in the prior art.” Richdel, Inc. v. Sunspool Corp.,
714 F.2d 1573, 1580 (Fed. Cir. 1983); see also Tokai Corp. v. Easton
Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011). In fact, we have been
instructed that “secondary considerations of nonobviousness . . . simply
cannot overcome a strong prima facie case of obviousness” and that for
obviousness under § 103, “all that is required is a reasonable expectation of
success.” Wyers v. Master Lock Co., 616 F.3d 1231, 1242, 1246 (Fed. Cir.
2010). On this point, the Examiner states, “Appellant’s objective evidence
of nonobviousness is not sufficient to outweigh the evidence of
obviousness.” Ans. 7. The Examiner’s statement is not wrong.
In view of the above, and because (a) Yun teaches use of a
“waterproof zipper” (Yun ¶ 27), but not any particular one; (b) AAPA
teaches that the TIZIP® zipper is waterproof and presently available (see
Spec. ¶ 34); and (c) Hung teaches a carrying case for an electrical device that
can be constructed of TPU material (see Hung Title, 6:14–15), we conclude
that the Examiner’s reasoning to combine such teachings (see Final Act. 3,
4) presents a strong showing of obviousness. As a consequence, we are not
persuaded that Appellant’s evidence of secondary considerations overcomes
the Examiner’s rejection. We sustain the Examiner’s rejection of claims 1,
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Application 15/550,441

10
3–5, 7, 8, 10, 12–18, 21, and 22 as unpatentable over Yun, Morgan, AAPA,
Lai, Hung, and Harstvedt.
Regarding the Examiner’s rejection of claims 9 and 11, Appellant
repeats the same arguments presented above for claim 1. See Appeal Br. 15,
19. For example, Appellant contends that the Examiner “failed to identify
where the prior art teaches that when the zipper is in an open position, the
mobile device will be exposed to the moisture.” Appeal Br. 15. Appellant’s
contention is not persuasive of Examiner error for the reasons already
discussed. We sustain the Examiner’s rejection of claims 9 and 11 as being
unpatentable over Yun, Morgan, AAPA, Lai, Hung, Harstvedt, and
Southwick.
CONCLUSION
In summary:

Claim(s)
Rejected
35 U.S.C.
§ 
Reference(s)/Basis Affirmed Reversed
1, 3–5, 7,
8, 10, 12–
18, 21, 22
103 Yun, Morgan, AAPA,
Lai, Hung, Harstvedt
1, 3–5, 7,
8, 10, 12–
18, 21, 22

9, 11 103 Yun, Morgan, AAPA,
Lai, Hung, Harstvedt,
Southwick
9, 11
Overall
Outcome
1, 3–5, 7–
18, 21, 22

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED