WOODS, Krista et al.

Patent Trials and Appeals Board

Jun 19, 2020

15626257 - (D) (P.T.A.B. Jun. 19, 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.
15/626,257 06/19/2017 Krista WOODS A233804 3876
23373 7590 06/19/2020
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
EXAMINER
SPAMER, DONALD R
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
06/19/2020 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):
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
sughrue@sughrue.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KRISTA WOODS and CHRISTOPHER WOODS
____________

Appeal 2019-005121
Application 15/626,257
Technology Center 1700
____________

Before JAMES C. HOUSEL, N. WHITNEY WILSON, and
MONTÉ T. SQUIRE, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge SQUIRE.
Opinion Dissenting filed by Administrative Patent Judge WILSON.
SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–13, which are all of the claims pending in this

1 This Decision refers to the Specification filed June 19, 2017 (“Spec.”);
Final Office Action dated Oct. 11, 2018 (“Final Act.”); Appeal Brief filed
Jan. 11, 2019 (“Appeal Br.”); Examiner’s Answer dated Apr. 17, 2019
(“Ans.”); and Reply Brief filed June 17, 2019 (“Reply Brief”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Krista Woods, Christopher Woods,
and Glovestix, Inc. as the real parties in interest. Appeal Br. 2.
Appeal 2019-005121
Application 15/626,257

2
application. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing
was held on May 21, 2020.3
We AFFIRM, but designate our affirmance as a NEW GROUNDS OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
CLAIMED SUBJECT MATTER
The invention relates to the field of deodorizers for athletic gloves and
other athletic equipment as well as non-athletic gloves and shoes. Spec. ¶ 1.
According to Appellant’s disclosure, the invention comprises an outer
housing, which includes removable and replaceable deodorizers, such as
silica to absorb moisture and ventilation holes, and is infused with silver ions
or other antimicrobial treatments to kill odor causing bacteria. Id. ¶¶ 4, 5;
Abstract.
Claim 1 illustrates the subject matter on appeal and is reproduced
below from the Claims Appendix to the Appeal Brief:
1. A device for insertion within sports equipment
comprising:
an outer housing having ventilation holes, said
outer housing being comprised of plastic that is infused
with antimicrobial ions;
a removable insert displaced within said outer
housing, said insert including a moisture absorbing
deodorizer.
Appeal Br. 17 (key disputed claim language italicized and bolded).

3 A written transcript of the oral hearing will be entered into the record when
the transcript is made available.
Appeal 2019-005121
Application 15/626,257

3
REFERENCES
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Name Reference Date
Brush US 2,446,904 Aug. 10, 1948
Hance US 4,401,770 Aug. 30, 1983
Phillips, Jr. et al. (“Phillips”) US 4,742,580 May 10, 1988
Khoury et al. (“Khoury”) US 5,291,669 Mar. 8, 1994
Qualkinbush et al.
(“Qualkinbush”)
US 6,378,224 B1 Apr. 30, 2002
Green et al. (“Green”) US 2002/0127402 A1 Sept. 12, 2002
Feldhahn et al. (“Feldhahn”) US 2008/0032119 A1 Feb. 7, 2008
Mirowski US 2013/0230431 A1 Sept. 5, 2013
SilicaGelPackets.com, Scented Silica Gel,
https://web.archive.org/web/20111112213328/htlp://silicagelpackets.com/ar
oma-dri-scented-silica-gel-desiccant-fragrance/ (last visited Apr. 14, 2017)
(“Scented Silica Gel”).
Wikipedia, Parachute Cord,
https://en.wikipedia.org/w/index.php?title=Parachute_cord&oldid=5707252
60 (last visited Apr. 14, 2017) (“Parachute Cord”).
Wikipedia, Silica Gel,
https://en.wikipedia.org/w/index.php?title=Silica_gel&oldid=564985732
(last visited Apr. 14, 2017) (“Silica Gel”).
REJECTIONS
I. The Examiner rejects claims 1–11 provisionally on the ground
of nonstatutory double patenting as being unpatentable over claims 1–10 of
co-pending Application No. 14/856,616 (Final Act. 7–8).
II. The Examiner rejects claims 1–13 under 35 U.S.C. § 103 as
follows: claims 1–3, 7, and 11–13 as being unpatentable over Brush in view
Appeal 2019-005121
Application 15/626,257

4
of Hance, Feldhahn, and Qualkinbush; claim 4 as being unpatentable over
Brush, Hance, Feldhahn, Qualkinbush and further in view of Khoury; claim
5 as being unpatentable over Brush, Hance, Feldhahn, Qualkinbush, and
Khoury and further in view of Phillips; claim 6 as being unpatentable over
Brush, Hance, Feldhahn, Qualkinbush, and Khoury and further in view of
Parachute Cord; claims 8 and 9 as being unpatentable over Brush, Hance,
Feldhahn, and Qualkinbush and further in view of Silica Gel and Scented
Silica Gel; and claim 10 as being unpatentable over Brush, Hance, Feldhahn,
and Qualkinbush and further in view of Mirowski and Scented Silica Gel
(Final Act. 13–18).4
III. The Examiner rejects claims 1–11 under 35 U.S.C. § 103 as
follows: claims 1–3, 7, and 11 as being unpatentable over Qualkinbush in
view of Green; claim 4 as being unpatentable over Qualkinbush and Green
and further in view Khoury; claim 5 as being unpatentable over
Qualkinbush, Green, and Khoury and further in view of Phillips; claim 6 as
being unpatentable over Qualkinbush, Green, and Khoury and further in
view of Parachute Cord; claims 8 and 9 as being unpatentable over
Qualkinbush and Green and further in view of Silica Gel and Scented Silica
Gel; claim 10 as being unpatentable over the combination of Qualkinbush
and Green and further in view of Mirowski and Scented Silica Gel (Final
Act. 8–13).5

4 In this Decision, we refer to this group of rejections, collectively, as the
“Examiner’s § 103 rejections of claims 1–13 as obvious over the
combinations based on Brush, Hance, Feldhahn, Qualkinbush, and others.”
5 We refer to this group of rejections, collectively, as the “Examiner’s § 103
rejections of claims 1–11 as obvious over the combinations based on
Qualkinbush, Green, and others.”
Appeal 2019-005121
Application 15/626,257

5
OPINION
Having considered the respective positions the Examiner and
Appellant advance in light of this appeal record, based on the fact-finding
and reasons the Examiner provides in the Answer and Final Office Action,
and for the reasons set forth below, we affirm the Examiner’s provisional
rejection of claims 1–11 for nonstatutory double patenting and the
Examiner’s § 103 rejections of claims 1–13 as unpatentable over the
combinations based on Brush, Hance, Feldhahn, Qualkinbush, and others.
We, however, designate our affirmance of the § 103 rejections of claims
1–13 as obvious over the combinations based on Brush, Hance, Feldhahn,
Qualkinbush, and others as NEW GROUNDS OF REJECTION pursuant to
37 C.F.R. § 41.50(b) because our analysis differs from the Examiner’s with
regard to certain findings of fact and reasoning.
Because we determine claims 1–13, which constitute all of the claims
pending in this Appeal, to be appropriately rejected under § 103 as obvious
over the combinations based on Brush, Hance, Feldhahn, Qualkinbush, and
others, we exercise our discretion and decline to reach the merits of the
Examiner’s remaining § 103 rejections of claims 1–11 as obvious over the
combinations based on Qualkinbush, Green, and others.
I. Provisional Rejection for Nonstatutory Double Patenting
Appellant does not present any substantive argument in response to
the Examiner’s provisional rejection of claims 1–11 on the ground of
nonstatutory double patenting as being unpatentable over claims 1–10 of
co-pending Application No. 14/856,616 (Final Act. 7–8). See Appeal Br. 6
Appeal 2019-005121
Application 15/626,257

6
(admitting the provisional nonstatutory double patenting rejection “is not
addressed in this appeal”).
Accordingly, because the Examiner’s rejection of claims 1–11 for
nonstatutory double patenting has not been withdrawn (see Ans. 3, 5; Final
Act. 7–8) and is not addressed by Appellant, we summarily affirm this
rejection. Cf. Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008); Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an
appellant fails to present arguments on a particular issue — or, more
broadly, on a particular rejection — the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection”) (cited with
approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)).
II. § 103 Rejections of Claims 1–13 as Obvious over the Combinations
Based on Brush, Hance, Feldhahn, Qualkinbush, and Others
In response to the Examiner’s § 103 rejections of claims 1–13 as
obvious over the combinations based on Brush, Hance, Feldhahn,
Qualkinbush, and others (Final Act. 13–18), Appellant presents argument for
the patentability of independent claim 1 and separate arguments for the
patentability of dependent claim 2 and dependent claims 7–10 as a group.
Appeal Br. 14, 15. We select independent claim 1, dependent claim 2, and
dependent claim 10, respectively, as representative and dispositive of the
Examiner’s § 103 rejections over the combinations based on Brush, Hance,
Feldhahn, Qualkinbush, and others. 37 C.F.R. § 41.37(c)(1)(iv). We
address these claims each in turn below.
A. Independent Claim 1
The Examiner determines that the combination of Brush, Hance,
Feldhahn, and Qualkinbush suggests a device satisfying the limitations of
Appeal 2019-005121
Application 15/626,257

7
claim 1 and concludes the combination would have rendered the claim
obvious. Final Act. 13–14. The Examiner finds that Brush teaches the
majority of the limitations of claim 1. Id. at 13–14. The Examiner finds that
Brush teaches a device for insertion into sports equipment (shoes)
comprising: (a) an outer housing (bar member 10) having ventilation holes
and being comprised of plastic; and (b) a removable insert (cartridge 15)
displaced within the outer housing and including a moisture absorbing
material (desiccant). Id. at 13; See Brush, Figs. 1, 2, 4, 1:35–48, 2:4–18,
2:27–35.
Regarding the “plastic that is infused with antimicrobial ions”
recitation of claim 1, the Examiner relies principally on Hance and Feldhahn
for suggesting that limitation. Final Act. 13. In particular, the Examiner
finds Hance teaches the need for shoes having antimicrobial properties and
Feldhahn teaches providing antimicrobial properties to plastic articles,
including, for example, an injection-molded ABS plastic part infused with
antimicrobial ions. Id. at 13 (citing Hance, Abstract; Feldhahn, Abstract,
¶¶ 20, 32). Regarding the “insert including a moisture absorbing
deodorizer” recitation of the claim, the Examiner finds that, although Brush
teaches a removable insert (cartridge 15) including a moisture absorbing
desiccant, Brush does not specify that the desiccant is a “deodorizer,” as
claimed. Id. at 13. The Examiner, however, relies on Qualkinbush for
teaching that element of the claim. Id. at 13–14. In particular, the Examiner
finds Qualkinbush teaches using silica as a moisture absorbing desiccant
material for deodorizing shoes. Id. at 13–14 (citing Qualkinbush, Abstract,
Fig. 4, 4:18–59).
Appeal 2019-005121
Application 15/626,257

8
Based on the above findings, the Examiner determines it would have
been obvious to one of ordinary skill in the art at the time of the invention to
have used an antimicrobial ion infused ABS plastic for Brush’s outer
housing in order to impart antimicrobial properties to a plastic component
intended to be inserted into a shoe. Final Act. 13. The Examiner also
determines it would have been obvious to one of ordinary skill in the art at
the time of the invention to have used silica as the desiccant material
included in Brush’s insert because silica was a known moisture absorbing
material for deodorizing shoes. Id. at 14.
Appellant argues the Examiner’s rejection of claim 1 should be
reversed because the cited art does not teach or suggest the “outer housing
being comprised of plastic that is infused with antimicrobial ions” and
“including a moisture absorbing deodorizer,” as required by the claim.
Appeal Br. 6 (arguing “nothing in this record suggests putting a
deodorizing insert into a plastic outer shell, wherein the plastic outer shell
is also infused with antimicrobial ions, as required by independent claim
1.”). In particular, Appellant contends Feldhahn “contains no suggestion
related to reducing odors in shoes, gloves, or sports equipment” and
“contains no discussion of infusing plastic with antimicrobial ions as recited
in claim 1.” Id. at 14. Appellant further contends Hance does not teach or
suggest any addition of silver or other antimicrobial ions to a plastic
housing. Id. at 14. Rather, Appellant contends
Hance teaches away from the purported combination, by
teaching that adding chemicals to the insoles fixes the
problem by reducing fungus and bacteria. One of skill
would have made a chemically soaked insole if he/she read
Hance, not the claimed invention.
Id. at 14.
Appeal 2019-005121
Application 15/626,257

9
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection in view of the fact-finding and reasons the
Examiner provides at pages 8–9 of the Answer and pages 13–14 of the Final
Office Action, and as further explained below, which a preponderance of the
evidence supports.
Appellant’s contentions that Feldhahn does not suggest reducing
odors in shoes and infusing plastic with antimicrobial ions (Appeal Br. 14)
and Hance does not teach or suggest adding silver or other antimicrobial
ions to a plastic housing (id. at 14) are not persuasive because they are
premised on what Appellant contends the Feldhahn and Hance references
teach individually, and not the combined teachings of the cited prior art
references as a whole, and what the combined teachings of the references
would have suggested to one of ordinary skill in the art. One cannot show
nonobviousness by attacking references individually where the rejection is
based on a combination of references. See In re Keller, 642 F.2d 413, 425
(CCPA 1981). The Examiner does not rely solely upon Feldhahn and Hance
to suggest the “outer housing being comprised of plastic that is infused with
antimicrobial ions” and “including a moisture absorbing deodorizer”
limitations of the claim.
Rather, as the Examiner finds (Final Act. 13–14) and previously
discussed above, it is the combined teachings of the cited art that the
Examiner relies upon for suggesting those limitations of the claim. In
particular, as the Examiner finds (Final Act. 13), Brush teaches a device for
insertion into shoes having an outer housing (bar member 10) comprised of
plastic and including a moisture absorbing desiccant material. Brush,
1:35–48, 2:27–28 (“The desiccant may then absorb the moisture from the
Appeal 2019-005121
Application 15/626,257

10
shoe.”). Brush also teaches that bar member 10 includes body-member 7,
which is in contact with the inner surface of the shoe and attached to bar
member 10 to form Brush’s outer housing. See Brush, Fig. 4, 1:39–40
(disclosing “bar member 10 is pivotally attached to the end 9” of
body-member 7), 1:35–37 (describing “body-member 7 having substantially
its entire surface covered with perforations 8”). As the Examiner further
finds (Final Act. 13–14), Qualkinbush teaches using moisture absorbing
desiccant material 40 for deodorizing shoes. Qualkinbush, Abstract,
3:58–61, 4:51–53 (disclosing “the desiccant material 40 may be selected
from any commercially available odor and moisture absorbing granular
product”).
As the Examiner also finds (Final Act. 13), Hance suggests the need
for shoes having antimicrobial properties comprising a plastic material
(Hance, Abstract (describing “[a]n improved shoe insole having antibacterial
and antifungal properties comprising a flexible polyurethane”)) and
Feldhahn teaches providing antimicrobial properties to plastic articles,
including an injection-molded ABS plastic part infused with antimicrobial
ions (Feldhahn, Abstract, ¶¶ 20, 32, 35–38).
The Examiner also provides a reasonable basis to evince why one of
ordinary skill would have combined the teachings of cited art to arrive at the
claimed invention. Final Act. 13–14 (explaining it would have been obvious
to one of ordinary skill in the art to have used an antimicrobial ion infused
ABS plastic for Brush’s outer housing in order to impart antimicrobial
properties to a plastic component intended to be inserted into a shoe and to
have used silica as the desiccant material included in Brush’s insert because
silica was a known moisture absorbing material for deodorizing shoes). See
Appeal 2019-005121
Application 15/626,257

11
also KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”).
Appellant’s disagreement as to the Examiner’s factual findings and
reasons for combining the references, without more, is insufficient to
establish reversible error. SmithKline Beecham Corp. v. Apotex Corp., 439
F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of disagreement . . . as
to the existence of factual disputes do not amount to a developed
argument.”); see also KSR, 550 U.S. at 420 (explaining that any need or
problem known in the art can provide a reason for combining the elements in
the manner claimed).
Appellant’s argument that Hance teaches away from combining the
prior art to arrive at the claimed invention (Appeal Br. 14) is not persuasive
because it is conclusory and Appellant does not direct us to sufficient
evidence in the record or provide a persuasive technical explanation to
support it. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); see also In
re Fulton, 391 F.3d 1195, 1201 (finding that there is no teaching away
where the prior art’s disclosure “does not criticize, discredit, or otherwise
discourage the solution claimed”). We will not read into the references a
teaching away where no such language exists. Cf. DyStar Textilfarben
GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).
Appellant further argues the Examiner’s rejection should be reversed
because Feldhahn is not directed to and does not address the problem faced
by the applicant. Appeal Br. 14; see also Reply Br. 12 (“Feldhahn is not
directed to odor-reduction in sports equipment, but rather deals with medical
equipment decontamination for hospital and medical facilities.”). Instead,
Appeal 2019-005121
Application 15/626,257

12
Appellant contends the Examiner’s rejection uses hindsight from
Appellant’s disclosure to convert the hazards of medical environment
decontamination to a foot odor or sports equipment odor problem. Reply
Br. 11.
We do not find these arguments persuasive of reversible error in the
Examiner’s rejection because Appellant construes too narrowly the scope of
Feldhahn’s disclosure, especially as it pertains to the particular problem with
which the applicant was involved. Contrary to what Appellant argues,
Feldhahn does address a problem faced by the applicant because, like the
claimed invention, which involves providing antimicrobial properties to
plastic articles, including plastic parts infused with silver ions or other
antimicrobial treatments (see Spec. ¶¶ 5, 29), Feldhahn also involves
providing antimicrobial properties to plastic articles, including, for example,
an injection-molded ABS plastic part infused with antimicrobial ions (see
Feldhahn, Abstract, ¶¶ 20, 36). Cf. In re Clay, 966 F.2d 656, 659 (Fed. Cir.
1992) (“A reference is reasonably pertinent if . . . it is one which, because of
the matter with which it deals, logically would have commended itself to an
inventor’s attention in considering his problem.”).
We do not find Appellant’s contention that the Examiner’s rejection
uses hindsight (Reply Br. 11) persuasive because it is conclusory and
unsupported by persuasive evidence in the record. De Blauwe, 736 F.2d at
705. Moreover, we find the Examiner’s rejection is based on explicit
disclosures in each of the cited references, as further explained above, and
what those disclosures considered as a whole reasonably would have
suggested to one of ordinary skill in the art, rather than based on
impermissible hindsight reconstruction as Appellant argues. See In re
Appeal 2019-005121
Application 15/626,257

13
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (acknowledging that “[a]ny
judgment on obviousness is in a sense necessarily a reconstruction based
upon hindsight reasoning” but such reconstruction is proper “so long as it
takes into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not include
knowledge gleaned only from applicant’s disclosure”).
Appellant also argues the Examiner’s rejection should be reversed
based on evidence of secondary considerations of nonobviousness, which
Appellant contends the Examiner improperly ignores. Appeal Br. 6, 15–16
(arguing “evidence of secondary considerations of nonobviousness further
supports the conclusion that the claimed invention was not obvious based on
the combinations of prior art references cited in the Final Office Action”).
In particular, Appellant cites and relies upon the Declaration Under 37
C.F.R. § 1.132 of Krista Woods (“Woods Declaration”), which Appellant
contends provides evidence of long felt need, failure of others, commercial
success, unexpected results, and industry praise. See Appeal Br. 8–11, 19
(Evidence Appendix).
Any initial obviousness determination is reconsidered anew in view of
the proffered evidence of nonobviousness. See In re Rinehart, 531 F.2d
1048, 1052 (CCPA 1976); In re Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir.
1990). The ultimate determination of whether a claimed invention would
have been obvious or nonobvious is a legal conclusion, which is made based
on considering and weighing all of the facts in evidence. See In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992).
Based on our review of the Woods Declaration and the fact-finding
and reasons the Examiner provides at page 9 of the Answer and pages 2–5 of
Appeal 2019-005121
Application 15/626,257

14
the Final Action, we agree with the Examiner that Appellant’s proffered
evidence of nonobviousness does not outweigh the evidence in favor of
obviousness. See Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1371
(Fed. Cir. 2011) (“A strong case of prima facie obviousness . . . cannot be
overcome by a far weaker showing of objective indicia of
nonobviousness.”). We address Appellant’s proffered evidence of
secondary considerations of nonobviousness below.
1. Long Felt Need and Failure of Others
Appellant cites and relies principally upon paragraphs 7a and 7c of the
Woods Declaration as evidence of long felt need and failure of others.
Appeal Br. 9–10. Appellant contends that the statements relied upon
“recognize[] not only that there was a long felt need, but that the need was
unsolved until the instant invention.” Id. at 10. Appellant further contends
the prior art the Examiner cites in the rejection also evidences a long felt
need and failure by others. Id. at 10 (arguing “attempts to deodorize and dry
out shoes and other sports equipment via an insert, extend as far back as at
least 1948” and the “cited art shows attempt after attempt at improving upon
the basic concept of either inserting a deodorizer, or moisture absorber, or
both, into a shoe”).
We accord Appellant’s evidence of long felt need and failure by
others little weight because, as the Examiner finds (Final Act. 2–3), the
statements do not adequately establish a need recognized by those having
ordinary skill in the art that had existed for a long time and had not been
satisfied by another before Appellant’s claimed invention. The statements at
paragraphs 7a and 7c of the Woods Declaration fail to provide sufficient
information to support a showing of long felt need and failure by others. For
Appeal 2019-005121
Application 15/626,257

15
example, although Mr. Falcone states that the product “fixes a long time
issue” (Woods Decl. ¶ 7a), Mr. Falcone does not specify what exactly that
long time issue is and how long the issued has been recognized, nor identify
any failed attempts to address the issue. Similarly, although Ms. Simpson
states GloveStix is “the BEST invention ever” (Woods Decl. ¶ 7c), there is
no indication that the product satisfies any long felt need and no
identification of any failed attempts by others to address such need.
2. Commercial Success
Appellant cites and relies upon paragraphs 7–11 of the Woods
Declaration as evidence of commercial success. Appeal Br. 9–10. We
accord Appellant’s evidence of commercial success little weight because, as
the Examiner finds (Final Act. 3–4), the evidence does not adequately show
that the alleged commercial success is derived from the claimed invention.
That is, Appellants has not sufficiently demonstrated a nexus between the
alleged commercial success and the claimed invention. Merely showing that
there was commercial success of a product that embodies the invention,
without more, is not sufficient.
Although the Woods Declaration includes some evidence of awards
and press coverage recognizing the inventors for entrepreneurial skill, it is
unclear from the evidence, and Appellant does not adequately explain, how
the claimed features are tied to the alleged commercial success. For
example, Appellant does not quantify what portion of the GloveStix
product’s sales are attributable to the claimed features.
3. Unexpected Results
Appellant cites and relies upon paragraphs 8–11 of the Woods
Declaration as evidence of unexpected results. Appeal Br. 9–10. We accord
Appeal 2019-005121
Application 15/626,257

16
Appellant’s evidence of unexpected results little weight because, as the
Examiner finds (Final Act. 4), Appellant has failed to establish what results
associated with the claimed invention are, in fact, unexpected. See In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (explaining the burden rests with
Appellant to establish, among other things, that the alleged unexpected
results associated with the claimed invention are, in fact, unexpected). For
example, as the Examiner finds and explains (Final Act. 4), because bacteria
is a known source of odor, it would not have been unexpected to one of
ordinary skill in the art that the combination of an antimicrobial and silica
desiccant in modified-Brush’s device would predictably result in increased
deodorizing over silica alone. As the Examiner further finds (Final Act. 4),
Appellant does not provide evidence comparing the claimed invention with
the closest prior art. Klosak, 455 F.2d at 1080.
4. Industry Praise
Appellant cites and relies upon paragraph 7 of the Woods Declaration
as evidence of industry praise. Appeal Br. 9. Although we accord
Appellant’s evidence of industry praise some weight, we agree with the
Examiner (Final Act. 4–5) that it is unclear from at least some of the
evidence what portion of the industry praise is attributable to the features of
Appellant’s claimed invention. As with commercial success, evidence of
industry praise is only relevant when it is directed to the merits of the
invention claimed. See Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299,
1311 (Fed. Cir. 2006).
In sum, having considered the totality of the evidence, including
Appellant’s evidence of secondary considerations of nonobviousness, we
Appeal 2019-005121
Application 15/626,257

17
determine a preponderance of the evidence favors the Examiner’s conclusion
of obviousness as to claim 1.
We, therefore, sustain the Examiner’s rejection of claim 1.
B. Dependent Claim 2
Appellant presents additional argument for the patentability of
dependent claim 2. Appeal Br. 15. Claim 2 depends from claim 1 and
further recites “wherein said ions include silver ions.” Appeal Br. 17
(Claims Appendix.)
Appellant argues the Examiner’s rejection of claim 2 should be
reversed because Hance does not contain any discussion or suggestion of
silver ions. Appeal Br. 15. We do not find this argument persuasive
because the Examiner does not rely solely upon Hance for teaching that
element of the claim. Keller, 642 F.2d at 425. Rather, as the Examiner finds
and explains (Ans. 9), the Examiner relies on Feldhahn for disclosing that
element. See Feldhahn ¶¶ 32, 36, 39.
We, therefore, sustain the Examiner’s rejection of claim 2.
C. Dependent Claims 7–10
Appellant presents additional argument for the patentability of
dependent claims 7–10 as a group. Appeal Br. 15. We select claim 10 as
representative of this group and claims 7–9 stand or fall with claim 10.
37 C.F.R. § 41.37(c)(1)(iv).
Claim 10 depends from claim 7 and further recites “wherein said
removable insert includes approximately 7.5g scented silica gel and
approximately 7.5g activated carbon.” Appeal Br. 18 (Claims Appendix.)
The Examiner determines that the combination of Brush, Hance,
Feldhahn, Qualkinbush, Mirowski, and Scented Silica Gel suggests a device
Appeal 2019-005121
Application 15/626,257

18
satisfying the limitations of claim 10 and concludes the combination would
have rendered the claim obvious. Final Act. 17–18.
Appellant argues the Examiner’s rejection of claim 10 should be
reversed because the Examiner
cites no reference for the specific amounts of either
scented silica gel or activated carbon, but then concludes
that one of ordinary skill would have optimized the
amounts to achieve the claimed requirement.
Appeal Br. 15. Rather, Appellant contends the Examiner improperly relies
“on per se rules instead of the legally-required analysis and evidence.” Id.
at 15; see also Reply Br. 13 (arguing the “Examiner’s reasoning is certainly
a legally impermissible per se obvious approach because it shortcuts the
requisite fact-based analysis with purported per se rules”).
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection in view of the fact-finding and the reasons the
Examiner provides at pages 8–9 of the Answer and pages 17–18 of the Final
Office Action, which a preponderance of the evidence supports. As the
Examiner finds (Final Act. 17), Qualkinbush teaches the use of silica gel as a
moisture absorbing desiccant material for deodorizing shoes. Qualkinbush
4:43–47, 4:51–53. Qualkinbush also teaches activated charcoal being added
to the desiccant material to increase the effectiveness of the device. Id. at
4:55–57.
As the Examiner further finds (Final Act. 17–18), Mirowski teaches a
moisture and malodor control formulation for shoes and gloves that includes
scented material (essential oils) as well as activated carbon. Mirowski,
Abstract, ¶¶ 56–58. Mirowski further teaches “the malodor control
component may comprise 1 g-3 g of activated carbon if light malodor
adsorption is desired, and 6 g-15 g [of] activated carbon for heavy malodor
Appeal 2019-005121
Application 15/626,257

19
adsorption.” Id. ¶ 63. In other words, the amount of activated carbon is a
result-effective variable. See In re Applied Materials, Inc., 692 F.3d 1289,
1297 (Fed. Cir. 2012) (“A recognition in the prior art that a property is
affected by the variable is sufficient to find the variable result-effective.”).
As the Examiner also finds (Final Act. 17), Scented Silica Gel teaches
the use of a scented silica gel desiccant having certain fragrances for
eliminating odors was known (Scented Silica Gel 1), which suggests the
degree of odor (i.e., the level of malodor control) is affected by the amount
of fragrance in the scented silica gel. Scented Silica Gel further teaches the
scented silica gel being available for use in an amount of, for example, 50 g.
Id. at 2.
Thus, we are persuaded the Examiner correctly determines (Final
Act. 18) that it would have been obvious to one of ordinary skill in the art to
have arrived at the claimed amounts of scented silica gel and activated
carbon in modified Brush’s device through routine experimentation by
optimizing the amount of scented silica gel and activated carbon in order to
achieve the desired amounts of moisture control, malodor control, and
fragrance. In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation.”);
see also In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an
optimum value of a result effective variable . . . is ordinarily within the skill
of the art.”).
We, therefore, sustain the Examiner’s rejection of claim 10.
Accordingly, we affirm the Examiner’s rejections of claims 1–13
under 35 U.S.C. § 103 as obvious over the combinations based on Brush,
Appeal 2019-005121
Application 15/626,257

20
Hance, Feldhahn, Qualkinbush, and others. Because our analysis differs
from the Examiner’s with regard to certain findings of fact and reasoning,
we designate our affirmance of the § 103 rejections of claims 1–13 as
obvious over the combinations based on Brush, Hance, Feldhahn,
Qualkinbush, and others as NEW GROUNDS OF REJECTION pursuant to
37 C.F.R. § 41.50(b).
III. § 103 Rejections of Claims 1–11 over the Combinations
Based on Qualkinbush, Green, and Others
The Examiner rejects claims 1–11 under 35 U.S.C. § 103 as obvious
over the combinations based on Qualkinbush, Green, and others. Final
Act. 8–13. Because, as discussed above, we determine claims 1–13, which
constitute all of the claims pending in this Appeal, to be appropriately
rejected under § 103 as obvious over the combinations based on Brush,
Hance, Feldhahn, Qualkinbush, and others cited by the Examiner, we
exercise our discretion and decline to reach the merits of the Examiner’s
remaining § 103 rejections of claims 1–11 as obvious over the combinations
based on Qualkinbush, Green, and others.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–11 nonstatutory double
patenting
1–11
1–3, 7,
11–13
103 Brush, Hance,
Feldhahn,
Qualkinbush
1–3, 7,
11–13

4 103 Brush, Hance,
Feldhahn,
4
Appeal 2019-005121
Application 15/626,257

21
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Qualkinbush,
Khoury
5 103 Brush, Hance,
Feldhahn,
Qualkinbush,
Khoury, Phillips
5
6 103 Brush, Hance,
Feldhahn,
Qualkinbush,
Khoury, Parachute
Cord
6
8, 9 103 Brush, Hance,
Feldhahn,
Qualkinbush, Silica
Gel, Scented Silica
Gel
8, 9
10 103 Brush, Hance,
Feldhahn,
Qualkinbush,
Mirowski, Scented
Silica Gel
10
Overall
Outcome
1–13

The Examiner’s decision to reject claims 1–13 is AFFIRMED, and we
designate our affirmance of the § 103 rejections of claims 1–13 as obvious
over the combinations based on Brush, Hance, Feldhahn, Qualkinbush, and
others as NEW GROUNDS OF REJECTION pursuant to 37 C.F.R. §
41.50(b).
This Decision contains NEW GROUNDS OF REJECTION pursuant
to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
Appeal 2019-005121
Application 15/626,257

22
When the Board enters such a non-final decision, the appellant, within
two months from the date of the decision, must exercise one of the following
two options with respect to the new ground of rejection to avoid termination
of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new Evidence not
previously of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the decision. Should
the examiner reject the claims, appellant may again appeal to the Board
pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record. The request for rehearing must
address any new ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds upon which rehearing is
sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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; 37 C.F.R. § 41.50(b)

Appeal 2019-005121
Application 15/626,257

23
WILSON, Administrative Patent Judge, DISSENTING.

I respectfully dissent from the decision by the majority of this panel to
affirm the rejection of claims 1–13 under 35 U.S.C. § 103 as obvious over
the combinations based on Brush, Hance, Feldhahn, Qualkinbush, and
others. While I agree with the majority that the Examiner has set forth a
prima facie case of obviousness, I believe the preponderance of the evidence
of record, including the evidence submitted in support of the secondary
considerations of nonobviousness, does not support the rejection.
Accordingly, I would reverse the obviousness rejection and dissent from the
majority’s affirmance.
As stated above, I agree with the majority insofar as the evidence of
record without consideration of the secondary considerations would support
affirmance of the rejection.
However, as set forth in the majority opinion, the initial (i.e., prima
facie) obviousness determination is reconsidered in view of the proffered
objective evidence of nonobviousness. Rinehart, 531 F.2d at 1052; Eli Lilly,
902 F.2d at 945. The ultimate conclusion as to whether the claimed
invention would have been obvious is based on all of the facts in evidence,
including the objective indicia of nonobviousness. Oetiker, 977 F.2d at
1445.
The Federal Circuit has described the significance of the so-called
secondary considerations or objective indicia of nonobviousness:
The Supreme Court explained that various factors “may also
serve to ‘guard against slipping into use of hindsight,’ and to
resist the temptation to read into the prior art the teachings of
the invention in issue.” These factors are commonly known as
secondary considerations or objective indicia of
Appeal 2019-005121
Application 15/626,257

24
non-obviousness. These include: commercial success enjoyed
by devices practicing the patented invention, industry praise for
the patented invention, copying by others, and the existence of
a long-felt but unsatisfied need for the invention. As this court
held in Stratoflex:

Indeed, evidence of secondary considerations
may often be the most probative and cogent
evidence in the record. It may often establish that
an invention appearing to have been obvious in
light of the prior art was not. It is to be considered
as part of all the evidence, . . . not just when the
decisionmaker remains in doubt after reviewing
the art.

Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034 (Fed. Cir. 2016) (internal
citations omitted).
The Board recently issued a precedential decision pertaining to the
analytical framework for consideration of objective indicia of
nonobviousness in the obviousness analysis. Lectrosonics, Inc. v. Zaxcom,
Inc., Case IPR2018-01129, Paper 33 (Jan. 24, 2020). For objective indicia
of nonobviousness to be accorded substantial weight, there must be a nexus
–– established in this case by Appellant –– between the evidence and the
merits of the claimed invention. Lectrosonics, p. 32 (citing ClassCo, Inc., v.
Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016)). The evidence must be
reasonably commensurate with the scope of the claims. Id. (citing Rambus
Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013)). There is a presumption
that there is a nexus between the evidence and the merits of the claimed
invention when the patentee shows that the asserted objective evidence is
tied to a specific product and that product embodies and is coextensive with
the claimed features, Id. (citing Fox Factory, Inc. v. SRAM, LLC, 944 F.3d
Appeal 2019-005121
Application 15/626,257

25
1366, 1373 (Fed. Cir. 2019)). “[T]he degree of correspondence between a
product and the patent claim falls along a spectrum. At one end of the
spectrum lies perfect or near perfect correspondence. At the other end lies no
or very little correspondence.” Fox Factory, 944 F.3d at 1374.
In this instance, Appellant has provided evidence, in the form a
Declaration, that its commercial products GloveStix and ShoeStix “contain
every element of claim 1” (Woods Decl. ¶ 4; see also Woods Decl. ¶¶ 5, 6).
The evidence cited by the Declaration supports Appellant’s contention that
the commercial products GloveStix and ShoeStix embody the features of
claim 1. In particular, the image and description of the Glovestix product6,
show the claimed outer housing with ventilation holes, which is made of an
“antimicrobial plastic,” which is further described as “antimicrobial-
protected plastic” which is “infused with Silver Seal™ Technology.”7 The
Glovestix website also indicates that Glovestix includes “replaceable insert
bags [which] absorb moisture and deodorize” which corresponds to the
claimed “removable insert displaced within said outer housing, said insert
including a moisture absorbing deodorizer.”
The only elements of the commercial product as depicted on the
website which are not recited in claim 1 are the handle and the removable

6 Woods Decl., ¶ 6; Glovestix.com website (https://glovestix.com/, last
accessed on 6/15/20).
7 Glovestix.com website (https://glovestix.com/pages/what-is-it (last
accessed on 6/15/20)). The website states: “To further inhibit odor-causing
bacteria growth and destroy odors, SilverSeal™ technology infuses the
plastic used in our StinkStix with silver ions. Silver and certain other metals
have natural antimicrobial properties.”
Appeal 2019-005121
Application 15/626,257

26
clip, which are recited in claims 4 and 5, respectively.8 The Examiner does
not dispute any of the foregoing facts (see Ans. 5–7). Therefore, in my
judgment, Appellant has demonstrated that the commercial product both
embodies and is coextensive with the claims.
I now address the specific evidence cited by Appellant as
demonstrating that secondary considerations of nonobviousness are
sufficient to conclude that the claims would not have been obvious over the
prior art.
Long-felt need and failure of others. As explained in the majority
decision, the evidence relied on by Appellant to demonstrate that the
claimed invention satisfies a long-felt need and the failure of others is found
primarily in paragraph 7 of the Woods Declaration (Appeal Br. 9–10). In
particular, Appellant provides a quote from a product analyst for Lacrosse
Playground, in which the analyst states “After a few weeks of using
[Glovestix], I don’t even smell my gloves. Fantastic product that fixes a
long time issue” (Woods Decl. ¶ 7(a)) and also cites a quote from a
customer: “We LOVE our GloveStix. This is the best invention ever. No
stink equals one happy momma!” (Woods Decl. ¶ 7(c). Appellant also cites
a number of other testimonials describing the effectiveness of the
commercial product embodying the claims (Woods Decl. ¶ 7).
In my judgment, the testimonials, in combination with other patents
cited by the Examiner in the rejections (in particular Brush, Hance, Khoury,
Qualkinbush) show that the issue of controlling odor in shoes and athletic
equipment has been a longstanding one. Brush, for example, is a patent

8 The website also describes the handle as being made of “paracord,” which
is recited in claim 6.
Appeal 2019-005121
Application 15/626,257

27
from 1948 which addresses the issue of “reducing the moisture in [a] shoe
and inhibiting the formation of odors in the shoe” (Brush, 1:3–5), and
Qualkinbush is a 2002 patent relating to an apparatus for removing odor and
moisture from footwear (Qualkinbush, Abstract). Thus, there have been
repeated attempts over decades to address this problem. Nevertheless, the
Woods Declaration shows a professional in the area of lacrosse gear (Mr.
Falcone) describing the commercial embodiment of the claimed invention as
“fix[ing] a long time issue.”
I disagree with my colleagues that Mr. Falcone doesn’t adequately
explain what the “long time issue” resolved by the invention is. His quote
explicitly states that “after a few weeks of using [GloveStix] I don’t even
smell my gloves” (Woods Decl. ¶ 7). Moreover, his statement that the
product “fixes a long time issue” necessarily, in my view, means that
previous attempts to address the smell issue were failures (i.e. not
successful).
Commercial Success and Industry Praise. The majority concludes
that the evidence submitted by Appellant of the commercial success of the
invention should be given little weight because of Appellant’s failure to
show a nexus between the commercial success and the claimed invention. In
my view, as outlined above, Appellant has sufficiently shown that the
GloveStix and ShoeStix products embody and are coextensive with the
claims. Thus, the evidence of the commercial success of these products,
which is set forth in detail in Paragraphs 9 and 10 of the Woods Declaration,
is fairly attributed, in my view, to the claimed invention. Although, as
conceded by the Declarant, some of the evidence is put forth is directed
more towards the business or entrepreneurial aspects of Appellant than the
Appeal 2019-005121
Application 15/626,257

28
invention per se, there is no doubt, in my judgment, that at least some of the
commercial success of the invention is due to the product itself, which
embodies the claimed invention.
The evidence of industry praise is directed to the commercial
embodiments of the claimed invention. For example, professional lacrosse
goalie and US National Team player Chris C. stated “Thank you GloveStix
for your help throughout Worlds. Your product provided 2 dry pair of
goalie gloves each day” (Woods Decl. ¶ 7(f)). Similarly, professional
lacrosse goalie stated that “GloveStix work great in neutralizing the smell.
Makes a huge difference”, and a lacrosse magazine review called the
commercial embodiment a fantastic product that “fixes a long time issue”
(Woods Decl. ¶¶ 7(b) and 7(a)). As discussed above, the commercial
embodiments embody and are coextensive with the claimed invention, so
that praise for the commercial embodiment is praise for the claimed
invention.
In view of the foregoing evidence, in my judgment the preponderance
of the evidence of record, including the evidence of secondary
considerations set forth in the Woods Declaration, does not support the
determination of obviousness in view of the prior art. Although the prima
facie case of obviousness as set forth by the Examiner would be enough, in
the absence of further evidence, to sustain the rejection, when all of the
evidence is considered, the obviousness rejections should be reversed.
Accordingly, I respectfully dissent from decision to affirm the
obviousness rejections of claims 1–13 under § 103, although I concur in the
summary affirmance of the nonstatutory double patenting rejection.