Tuesday, March 12, 2013

PTAB in Toomey: "any art recognized need can provide reason to combine"

DANNY L. TOOMEY and ROXANNE L. PROCTOR-TOOMEY had an idea for a shirt defined by the claim:

A pocketed shirt comprising: a shirt having a front panel with outside and inside surfaces; an opening in a breast area of the front panel from the outside surface
to the inside surface; a free-floating pocket attached to the front panel so as to reside inside
the shirt and accessible from outside the shirt through the opening; the pocket is attached to the shirt only with stitching both above and
below the opening; the pocket having an open top end without closures; and first ribbing attached to the front panel adjacent the opening.

The decision by the Patent Trial and Appeal Board [PTAB], affirming obviousness, gives a rather basic introduction to an obviousness analysis for subject matter [a pocketed shirt] that is easily understandable.

KSR is cited, although not for the typical reason:

In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls.... [A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419-20 (2007).

As to combining references:

The Examiner finds, and Appellants do not dispute, that Krall discloses a shirt meeting the limitations of claim 9 except for the “first ribbing attached to the front panel adjacent the [pocket] opening.” Rabinowicz discloses a garment with a pocket having a knitted wide rib pattern on either side of the opening that causes the edges of the opening to roll up and makes it easier to insert an object such as a tennis ball. Thus, it would have been obvious to one of ordinary skill in the art to include Rabinowicz‟s ribbing on the pocket of Krall‟s sweatshirt in order to make it easier to insert objects into the pocket.(...)

Appellants argue that neither Krall nor the claimed shirt have a need for an easily opened pocket because “there is no need to put a tennis ball or similar object in the front breast pocket” (id. at 5). Appellants argue that “[i]n view of these different functions ... , it is not obvious to use [the] Rabinowicz ribbing, which tends to open the pocket, on the front breast pocket of Krall, which normally is closed” (id. at 5-6).
This argument is not persuasive. Claim 9 does not require the ribbing to have any particular function or properties, only that the shirt include “ribbing attached to the front panel adjacent the [pocket] opening.” Thus, the pocketed shirt suggested by the combination of Krall and Rabinowicz is within the scope of claim 9, even if the ribbing is suggested for a different function than is intended by Appellants. As expressly recognized in KSR, any art recognized need or problem can provide a reason for combining claim elements.


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