Ex Parte Bier et al

Board of Patent Appeals and Interferences

Sep 29, 2008

10440592 (B.P.A.I. Sep. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JASON J. BIER and JOSHUA A. GUTSTEIN
____________

Appeal 2008-1530
Application 10/440,592
Technology Center 3700
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Decided: September 29, 2008
____________

Before WILLIAM F. PATE, III, LINDA E. HORNER, and ANTON W.
FETTING, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 13-16 and 21-25.
Claims 1-12, 17, 19-20, and 26-29 have been canceled. Claim 18 has been
withdrawn from consideration. We have jurisdiction under 35 U.S.C.
§§ 134 and 6 (2002).
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The claimed invention is the combination of a device for storing at
least one perforated collar stay and a perforated collar stay stored thereon.
Claim 13, reproduced below, is further illustrative of the claimed subject
matter.
13. A device for storing at least one
perforated collar stay comprising:
first and second arcuate members releasably
engageable to form a closed loop, at least one
arcuate member being pivotable; and
a collar stay having a perforation, and an
arcuate member extending through the
perforation.1

The references of record relied upon by the Examiner as evidence of
lack of novelty and obviousness are:
Pyros US 2,146,227 Feb. 7, 1939
Brunner US 2,783,637 Mar. 5, 1957
McKinney US 3,069,890 Dec. 25, 1962
Rubio US 3,075,202 Jan. 29, 1963
Uliano US Des.225,301 Dec. 5, 1972
Vaage US 3,952,382 Apr. 27, 1976
Wolter US 4,376,383 Mar. 15, 1983
Patterson US 5,867,877 Feb. 9, 1999

Claims 13-16 and 21-23 stand rejected under 35 U.S.C. § 102 as being
unpatentable over Wolter.
Claim 22 stands rejected under 35 U.S.C § 103 as being unpatentable
over Wolter in view of Patterson or Vaage.
Claims 24 and 25 stand rejected under 35 U.S.C. § 103 as
unpatentable over Wolter in view of McKinney.

1 We construe “an arcuate member extending through the perforation” to
refer to one of the previously recited arcuate members.
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Claims 13-16 and 21-23 stand rejected under 35 U.S.C. § 103 as
unpatentable over Wolter in view of Pyros or Rubio.
Claim 22 stands rejected as unpatentable over Wolter in view of Pyros
or Rubio, as applied to claim 21, and in further view of Patterson or Vaage.
Claims 24 and 25 stand rejected under 35 U.S.C. § 103 as
unpatentable over Wolter in view of Pyros or Rubio, as applied to claim 13,
and in further view of McKinney.
ISSUES
The issues for our consideration include whether Appellants have
established that the Examiner erred in rejecting claims 13-16 and 21-23 for
lack of novelty over the Wolter reference. Also for consideration is whether
Appellants have established that the Examiner erred in rejecting: claim 22 as
unpatentable over Wolter in view of Patterson or Vaage, claims 24 and 25 as
unpatentable over Wolter in view of McKinney, claim 13-16 and 21-23 as
unpatentable over Wolter in view of Pyros or Rubio, claim 22 as
unpatentable over Wolter in view of Pyros or Rubio and further in view of
Patterson or Vaage, and claims 24 and 25 as unpatentable over Wolter in
view of Pyros or Rubio and further in view of McKinney. All of these
rejections turn on the issue of whether the Examiner has established that the
prior art discloses or renders obvious the combination of a storage device
and a perforated collar stay.
Appellants have also furnished a Declaration under 37 C.F.R. § 1.132
with respect to lack of novelty and obviousness. One point raised by the
Declaration is that a key is not suitable as a collar stay.

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FINDINGS OF FACT
Wolter discloses a device for storing keys which has first and second
arcuate members, jaws 2, releasably engageable to form a closed loop with
at least one of the arcuate members being pivotable. (See col. 3, ll. 55-60.)
Wolter does not show a collar stay, nor does Wolter teach a collar stay with
a perforation.
Patterson and Vaage have been cited to disclose a spring disposed
between two arcuate members for urging arcuate members to a closed
position. Patterson teaches spring 80 disposed between first and second
arcuate members 42. (See Fig. 1 in Patterson.) Vaage discloses a spring
member 8 disposed between first and second arcuate members 4 and 5. (See
Fig. 1 in Vaage.)
McKinney discloses an attachment component such as a magnet for
storing a ringed object and for attachment of the ringed object to a surface.
(McKinney col. 2, ll. 5-7 and Figs. 1-3.)
Pyros teaches a collar stay 10 having apertures in its intermediate
position and its free end. (See aperture 11 in Fig. 1.) The aperture is not
disclosed as useful in storage.
Rubio discloses a collar stay having apertures 10C for the reception of
rivets which allow the size of the collar stay to be adjusted. (See e.g., Fig. 1
in Rubio.) The apertures are not disclosed as useful in storage.
Uliano and Brunner have not been named in the statement of any
rejections. They have been cited by the Examiner as disclosing long slender
keys that have the general appearance of collar stays.

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PRINCIPLES OF LAW
"A claim preamble has the import that the claim as a whole
suggests for it." Bell Communications Research, Inc. v. Vitalink
Communications Corp., 55 F.3d 615, 620 (Fed. Cir. 1995). Where a
patentee uses the claim preamble to recite structural limitations of his
claimed invention, the PTO and courts give effect to that usage. See id.;
Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251,
1257 (Fed. Cir. 1989). Conversely, where a patentee defines a
structurally complete invention in the claim body and uses the preamble
only to state a purpose or intended use for the invention, the preamble is
not a claim limitation. See Bell Communications, 55 F.3d at 620; Kropa
v. Robie, 187 F.2d 150, 152 (CCPA 1951).
The determination of whether preamble recitations are structural
limitations or mere statements of purpose or use "can be resolved only
on review of the entirety of the patent to gain an understanding of what
the inventors actually invented and intended to encompass by the
claim." Corning Glass Works, 868 F.2d at 1257. The inquiry involves
examination of the entire patent record to determine what invention the
patentee intended to define and protect. See Bell Communications, 55
F.3d at 621 (looking to patent specification to determine whether
claimed invention includes preamble recitations); In re Paulsen, 30 F.3d
1475, 1479 (Fed. Cir. 1994) (examining "patent as a whole"); Vaupel
Textilmaschinen KG v. Meccanica Euro Italia SPA, 944 F.2d 870, 880
(Fed. Cir. 1991) (looking to claims, specification, and drawings);
Gerber Garment Tech., Inc. v. Lectra Sys., Inc., 916 F.2d 683, 689 (Fed.
Cir. 1990) (noting that preamble recitations provided antecedent basis
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for terms used in body of claim); Corning Glass Works, 868 F.2d at
1257 (considering the specification's statement of the problem with the
prior art); Kropa, 187 F.2d at 152 (noting that preamble sets out distinct
relationship among remaining claim elements); Rowe v. Dror, 112 F.3d
473, 478-79 (Fed. Cir. 1997).
The prior art may anticipate a claimed invention, and thereby
render it non-novel, either expressly or inherently. In re Cruciferous
Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). Express
anticipation occurs when the prior art expressly discloses each limitation
(i.e., each element) of a claim. Id. In addition, “[i]t is well settled that a
prior art reference may anticipate when the claim limitations not
expressly found in that reference are nonetheless inherent in it.” Id.
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of ordinary skill in the art, and (4) where in evidence,
so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1,
17-18 (1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of
these questions might be reordered in any particular case, the [Graham]
factors continue to define the inquiry that controls.”)
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In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 1739, and reaffirmed principles based on its precedent that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. The Court
explained:
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at 1740. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
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
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). See also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). Only if this initial burden is met does the
burden of coming forward with evidence or argument shift to the appellant.
Id. at 1445. See also Piasecki, 745 F.2d at 1472. Obviousness is then
determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See Oetiker, 977 F.2d at 1445; Piasecki,
745 F.2d at 1472.
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ANALYSIS
Turning to the rejection of claims 13-16 and 21-23 under 35 U.S.C. §
102 it is our finding that the claims are not anticipated by Wolter.
Appellants argue that the collar stay is an element of the claimed
combination and we agree. Inasmuch as Wolter does not show a collar stay,
it cannot be said to anticipate the claimed subject matter. Furthermore as
indicated above, since the collar stay is positively recited in the claims,
Appellants’ preambular limitation to a collar stay storing device must be
given patentable weight. Therefore, a key ring cannot satisfy an anticipation
rejection for the claimed subject matter of a collar stay storing device. The
cited collar stay in the combination of claim 13 gives life, meaning, and
vitality to the preambular limitation of a device for storing at least one
perforated collar stay, and this claimed preambular limitation cannot be
disregarded.
We acknowledge the Examiner’s argument that a key 9 is considered
a collar stay, since a key is capable of functioning as a collar stay. (Answer
4:3-6.) The first part of the Examiner’s statement is simply erroneous. A
key is not a collar stay. And the Examiner is in error for “considering” it so.
The second premise is that a key is capable of functioning as a collar stay.
This statement is amenable to proof, but the Examiner, who bears the burden
of establishing anticipation by a preponderance of the evidence, has offered
no proof for this assertion. Inasmuch as this assertion has been challenged
on the record by the Appellants, it is incumbent on the part of the Examiner
to offer more than a bare assertion that this is so. Since the Examiner has
merely repeated his argument in more detail at page 11, we must conclude
that this finding is based on speculation.
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With respect to the rejection of claim 22 as unpatentable over Wolter
in view of Patterson or Vaage, while we are in agreement that it would have
been obvious to place a spring in the key ring of Wolter, such a key ring
would not correspond to the claimed subject matter of claim 22. Claim 22 is
directed to a collar stay storage device with a collar stay thereon. Neither
Wolter, Patterson, or Vaage disclose such collar stays. Furthermore the idea
that a long slender key as disclosed by Uliano or Brunner would satisfy the
subject matter of these claims is not persuasive. Keys are not collar stays,
and there is no suggestion in the prior art for using a key as a collar stay.
Turning to claims 24 and 25, while it might have been obvious to
secure a magnet or other attachment device, as taught in McKinney, to the
key ring of Wolter, such structure would not render obvious the claimed
subject matter of claims 24 and 25, for the reasons given above. The key
ring of Wolter modified with an attachment means would not satisfy the
claim limitation of a collar stay storage device, nor would it include the
required collar stay.
Turning to the rejection of claims 13-16 and 21-23 as unpatentable
over Wolter in view of Pyros or Rubio, we do acknowledge that Pyros and
Rubio disclose collar stays. These collar stays also possess apertures
therein, albeit for different purposes than storage. However, the suggestion
of using a device with first and second arcuate members that form a closed
loop that stores collar stays is not found in the references nor is it suggested
thereby. The only disclosure of this subject matter has been by Appellants,
and we regard this rejection as classic hindsight. However, such hindsight
cannot form the basis for a valid rejection under § 103.
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Turning to claim 22, while we acknowledge that Patterson and Vaage
disclose springs for biasing arcuate members, nothing in these references
teaches using arcuate members to store collar stays.
Finally with respect to claims 24 and 25 we find no teaching in the
prior art of using a device with first and second arcuate members to store
collar stays having perforations therein. Accordingly, the claimed subject
matter of claims 24 and 25 is not unpatentable over Wolter, in view of Pyros
or Rubio, and further in view of McKinney.
We need not consider Appellants’ declaration, inasmuch as
Appellants have established that the Examiner’s findings regarding
anticipation and the Examiner’s prima facie case of obviousness were
erroneous. The burden was never shifted to Appellants, and Appellants’
evidence need not be considered.

CONCLSUSION
For the reasons outlined above, the Appellants have satisfied their
burden of showing error in the Examiner’s rejections under 35 U.S.C. §§
102 and 103.
The rejections of all claims on appeal are reversed.

REVERSED

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hh

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