Ex Parte Artemi

Board of Patent Appeals and Interferences

Aug 10, 2010

11397053 (B.P.A.I. Aug. 10, 2010)

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.
90/006,286 05/10/2002 5584455 P 280879 8771
909 7590 08/10/2010
PILLSBURY WINTHROP SHAW PITTMAN, LLP
P.O. BOX 10500
MCLEAN, VA 22102
EXAMINER
WOOD, KIMBERLY T
ART UNIT PAPER NUMBER
3632
MAIL DATE DELIVERY MODE
08/10/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
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.
11/397,053 04/04/2006 Paul Artemi 023003-0325064 5962
909 7590 08/10/2010
PILLSBURY WINTHROP SHAW PITTMAN, LLP
P.O. BOX 10500
MCLEAN, VA 22102
EXAMINER
WOOD, KIMBERLY T
ART UNIT PAPER NUMBER
3632
MAIL DATE DELIVERY MODE
08/10/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PAUL ARTEMI
Appellant
____________________

Appeal 2010-007831
Reexamination Control 90/006,286
Application 11/397,053
Patent 5,584,4551
Technology Center 3600
____________________

Before ROMULO H. DELMENDO, SALLY C. MEDLEY and
DANIEL S. SONG, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL2

1 Issued December 17, 1996 to Paul Artemi (hereinafter "'455 patent").
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-007831
Reexamination Control 90/006,286
Application 11/397,053

2
The present appeal is from a merged reexamination and reissue
proceeding. The Patent Owner (hereinafter "Appellant") appeals under 35
U.S.C. §§ 134 and 306 (2002) from a rejection of claims 2 and 8-16. Claims
1 and 3-7 have been previously canceled. In addition to the Appeal Brief,
the Appellant relies on the Declaration of inventor Mr. Artemi dated October
4, 2007 in support of patentability (App. Br. 19-25). We have jurisdiction
under 35 U.S.C. §§ 6(b), 134 and 306 (2002).
The invention is directed to a device and a method for holding or
hanging garment hangers. Representative independent claim 8 reads as
follows (App. Br. Claims App'x; underlining relative to the original patent
omitted):
8. A device for holding garment hangers, the device
comprising:
a first part formed of substantially rigid plastics
material and being in the form of a hook having an arcuate
lower surface shaped and adapted to be carried directly on a
rail, the arcuate lower surface being smooth so as to slide on
the rail adjacent to garment hangers hung directly on the rail,
the first part further having a ring spaced from the hook, the
ring having a curved upper surface located on an exterior of
the ring and facing internally with respect to the hook to
facilitate carrying a plurality of garments by hand, wherein
the ring and the hook are formed continuously together as
one piece from the plastics material; and
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a second part comprising a loop in the form of a strap
of flexible webbing attached to the first part through the
ring, the loop having two parallel side walls extending
generally in the same plane as the hook, the side walls
having a width that is substantially greater than the thickness
so as to provide lateral support for garment hangers in the
loop to keep them in an orientation substantially parallel to
the garment hangers hung directly on the rail, so as to
increase the number of hangers which can be carried by the
rail.

Independent claims 2 and 12 are similar to claim 8 but require the
second part to include an "adjustable means for altering the distance between
the second part and the first part." Independent claim 13 recites that the first
part includes "a latch element." Independent claim 14 recites a method of
hanging garments from a rail using the claimed device, while claim 15
recites a method in which a second rail is suspended by the loops of two
spaced devices.
The prior art relied upon by the Examiner in rejecting the claims is:
Lathrop 2,941,672 Jun. 21, 1960
Pelavin 3,907,118 Sep. 23, 1975
Collins 3,972,455 Aug. 3, 1976
King 4,858,867 Aug. 22, 1989
Wolf, Jr. 4,957,259 Sep. 18, 1990

The Examiner rejects various claims under 35 U.S.C. § 103(a) as
unpatentable over combinations of references as follows:
1. Claims 2, 8-10, 12 and 15 over King and Lathrop;
2. Claims 11 and 13 over King, Lathrop and Collins;
3. Claims 14 and 16 over King, Lathrop and Wolf;
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4. Claims 2, 8-10, 12 and 15 over Pelavin and King;
5. Claims 11 and 13 over Pelavin, King and Collins; and
6. Claims 14 and 16 over Pelavin, King and Wolf.

We REVERSE.

ISSUES
1. Whether the Examiner's articulated reason for combining King
and Lathrop is sufficient, and whether the articulated combination results in
the invention claimed.
2. Whether the Examiner's articulated reason for combining
Pelavin and King is based on some rational underpinning sufficient to
support a conclusion of obviousness of the claimed invention.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. King describes a support hook 12 with an aperture 14 through
which a strap 16 is attached for supporting a garment bag 10 (col. 3, ll. 25-
29; Figs. 1 and 4).
2. King illustrates that the orientation of the garment bag 10 is
perpendicular relative to the plane of the support hook 12 (Fig. 1).
3. The preamble of claim 3 of King states "[a] hook means for
hanging a garment bag and the like . . .." (Col. 6, ll. 57-58).
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4. Lathrop describes a clothes hanger support member 32
including a bracket 26 and a vertical portion 33 having a plurality of loops
36 for supporting clothes hangers (col. 1, ll. 56-60; col. 2, ll. 21-35; Fig. 4).
5. In Lathrop, the orientation of the clothes hangers supported by
the support member is perpendicular relative to the plane of the bracket (see,
e.g., Fig. 1).
6. Pelavin describes a hanger 10 including a mounting bracket 11
with a cantilevered arm 28 and a suspension means 14 (link chain) attached
at slot 29 for suspending garment hangers 15 (col. 2, ll. 57-64; col. 3, ll. 19-
24; Figs. 1, 4 and 5).
7. Pelavin states that "[a]ny suitable suspension means may be
carried thereby through slot 29 and the operation of the device is not
restricted to a link chain type suspension means as illustrated in the
drawings." (Col. 4, ll. 49-52).
8. Pelavin further states that the "cantilevered arm 28 is arranged
downwardly and outwardly for providing a sufficient head space between
suspension means 14 and an item to be suspended, for instance, garment bag
16, so that the item may be conveniently hung therefrom." (Col. 4, ll. 7-12).
9. In Pelavin, the orientation of the garment hangers supported by
the suspension means 14 is perpendicular relative to the plane of the
mounting bracket of the hanger 10 (Figs. 2, 4 and 5).

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
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Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). In determining obviousness, the Supreme
Court stated that "[o]ften, it will be necessary for a court to look to
interrelated teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the art, all in order
to determine whether there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue." KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). The Court also noted that "[t]o
facilitate review, this analysis should be made explicit." Id. (citing In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[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")).

ANALYSIS
Rejections based on the combination of King and Lathrop
The Examiner rejected claims 2, 8-10, 12 and 15 stating that "[i]t
would have been obvious to one having ordinary skill in the art to have
modified King to have included the second part being a loop in the form of a
strap of flexible webbing with a plurality of loops having two parallel side
walls" as described in Lathrop "for the purpose of providing a better means
of supporting a plurality of garments." (Ans. 6-7 and 18; see also FF 1 and
4). Hence, the Examiner's suggested modification grafts the strap 32 of
Lathrop (with its loops 18) onto the strap 16 of King so that the side walls of
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the loops extend in the same plane as the hook 12 of King (see Ans. 18 and
the illustration therein). The Examiner further contends that the teachings to
combine King and Lathrop is provided by claim 3 of King which recites "[a]
hook means for hanging a garment bag and the like" in the preamble (FF 3),
the recitation "and the like" supposedly suggesting support of items such as
hangers (Ans. 20). The Examiner also asserts that the suggested
combination inherently teaches the method of claim 15 (Ans. 7).
The Appellant argues inter alia, that the Examiner has not set forth a
proper rationale for combining King and Lathrop together and that the
Examiner is using impermissible hindsight (App. Br. 15). We agree with the
Appellant. The Examiner's proffered reason for the combination, that is,
"for the purpose of providing a better means of supporting a plurality of
garments[,]"(Ans. 6-7) is vague and is not based on any rational
underpinning that establishes why Lathrop’s loops would have been "better,"
or in what way, one of ordinary skill in the art would have "combine[d] the
elements in the way the claimed new invention does." See KSR, 550 U.S. at
418. The articulated combination appears to be based merely on
impermissible hindsight and is insufficient to support a conclusion of
obviousness. Whereas the Examiner also relies on the preamble statement
"[a] hook means for hanging a garment bag and the like" of claim 3 in King
(FF 3) as suggesting support of other items such as hangers (Ans. 20), we
understand this preamble statement to refer to other items "like" a garment
bag, not non-bag like devices such as the hanger support of Lathrop.
Specifically, we find merit in the Appellant's argument that the
Examiner’s articulated reasoning fails to properly account for loops attached
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to the first part through the ring (App. Br. 16). As we read the claims on
appeal, the loop is a strap of flexible webbing and is required to be attached
to the first part through the ring. The Examiner's rejection relies on Lathrop
for the recited loop, but the loop structure resulting from the suggested
combination would not be attached through the ring, but rather, be attached
to the strap 16 of King, which in turn, is attached through the ring. Hence, it
appears that the articulated combination does not even result in the invention
claimed. See In re Oetiker, 977 F.2d at 1445.
In view of the above, we do not sustain the Examiner's rejections
based on the combination of King and Lathrop. The Appellant's arguments
based on the Declaration (App. Br. 18-25) are moot. In particular, we
reverse the Examiner's rejections of claims 2, 8-10, 12 and 15 based on the
combination of King and Lathrop. In addition, we also reverse the
Examiner's rejection of claims 11 and 13 based on the combination of King,
Lathrop and Collins, the Examiner's application of Collins (for the recited
"latched element") failing to cure the deficiencies of the Examiner's rejection
based on King and Lathrop. Likewise, we also reverse the Examiner's
rejection of claims 14 and 16 based on the combination of King, Lathrop and
Wolf, the Examiner's application of Wolf (for the recited suspension of a
second rail or hanging the hook of a second device in the loop of a first
device) failing to cure the deficiencies of the Examiner's rejection based on
King and Lathrop.

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Rejections based on the combination of Pelavin and King
The Examiner rejected these claims stating that "[i]t would have been
obvious to one having ordinary skill in the art to have modified Pelavin to
have included the first part having a hook and a ring as taught by King for
the purpose of providing a better support hook which an (sic, can) be used to
support garment hangers from either a horizontal rod or the top of a door in
an improved manner so that when used with a door[,] the garment hangers
will remain in a stable position and not mar the surface of the door." (Ans.
12; see also Ans. 35; FF 1, 6 and 7).
The Appellant argues inter alia, that one of ordinary skill in the art
would not combine these references in the manner suggested by the
Examiner in view of the functional advantages of the cantilevered arm 28
(App. Br. 28). Indeed, we find the Examiner's articulated reason for
combining Pelavin and King lacks rational underpinnings. In particular, the
Examiner states that the proposed combination would be desirable to
provide a better support hook which supports garment hangers "in an
improved manner so that when used with a door[,] the garment hangers will
remain in a stable position and not mar the surface of the door." (Ans. 12).
As pointed out by the Appellant (App. Br. 36), the bracket of Pelavin
appears to already provide this functionality articulated by the Examiner to
establish motivation. It is unclear as to why a person skilled in the art, in
desiring to not mar the surface of the door, would replace the bracket of
Pelavin with the cantilevered arm 28 which would support the garment
hangers away from the surface of the door (FF 8), with the hook of King.
See KSR, 550 U.S. at 418. Hence, the articulated reason appears to be based
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merely on impermissible hindsight, and we find merit in the Appellant's
contention that a proper rationale for combining King with Pelavin has not
been presented (App. Br. 38-39).
In view of the above, we do not sustain the Examiner's rejections
based on the combination of Pelavin and King. In particular, we reverse the
Examiner's rejections of claims 2, 8-10, 12 and 15 based on the combination
of Pelavin and King. In addition, we also reverse the Examiner's rejection of
claims 11 and 13 based on the combination of Pelavin, King and Collins, the
Examiner's application of Collins failing to cure the deficiencies of the
Examiner's rejection based on Pelavin and King. Likewise, we also reverse
the Examiner's rejection of claims 14 and 16 based on the combination of
Pelavin, King and Wolf, the Examiner's application of Wolf failing to cure
the deficiencies of the Examiner's rejection based on Pelavin and King.

CONCLUSIONS
1. The Examiner's articulated reason for combining King and
Lathrop is insufficient, and the articulated combination does not result in the
invention claimed.
2. The Examiner's articulated reason for combining Pelavin and
King is not based on some rational underpinning sufficient to support a
conclusion of obviousness of the claimed invention.

ORDER
The Examiner's rejections of claims 2 and 8-16 are REVERSED.

Appeal 2010-007831
Reexamination Control 90/006,286
Application 11/397,053

11
REVERSED

ack

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