Ex Parte Burnstein

Patent Trial and Appeal Board

Dec 19, 2012

11858121 (P.T.A.B. Dec. 19, 2012)

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.
11/858,121 09/20/2007 Tracey E. Burnstein 36363-5 2178
59582 7590 12/19/2012
DICKINSON WRIGHT PLLC
2600 WEST BIG BEAVER ROAD
SUITE 300
TROY, MI 48084-3312
EXAMINER
JUNGE, KRISTINA N S
ART UNIT PAPER NUMBER
3611
MAIL DATE DELIVERY MODE
12/19/2012 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TRACEY E. BURNSTEIN
____________________

Appeal 2010-012480
Application 11/858,121
Technology Center 3600
____________________

Before: WILLIAM V. SAINDON, BRETT C. MARTIN, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/858,121

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STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 10-16. Claims 1-9 have been withdrawn from
consideration by the Examiner. We have jurisdiction under 35 U.S.C. §
6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claims 10 and 11 are independent. Claim 10, reproduced below, is
illustrative of the claimed subject matter:
10. A non-wearable device including a body member having
a plurality of openings formed in a soft elastomeric material,
said plurality of openings sized to releasably secure pin
members thereon, and at least two pin members releasably
positioned in said openings, said non-wearable device selected
from the group comprising a toothbrush, a hairbrush, a ruler, a
picture frame, a bag, a notebook, a comb, a suitcase strap, a
lamp, a pillow, a handkerchief, a cigarette case, a box, and a
wall hanging.

REJECTIONS
1. Claim 16 is rejected under 35 U.S.C. § 112, second paragraph, as
indefinite;
2. Claims 10-13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Graham (US 2,067,526; iss. Jan. 12, 1937) and Snoke (US
5,581,925; iss. Dec. 10, 1996);
3. Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Graham, Snoke, and Tran (US 6,478,336 B2; iss. Nov. 12, 2002);
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4. Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Graham, Snoke, and Gwinn (US 3,077,684; iss. Feb. 19, 1963); and
5. Claim 16 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Graham, Snoke, and Nurre (US 5,598,652; iss. Feb. 4, 1997).

OPINION
Indefiniteness - Claim 16
As Appellant does not address the indefiniteness rejection, Appellant
has waived any argument of error and we summarily sustain the rejection of
claim 16 under 35 U.S.C. § 112, second paragraph, as indefinite. See 37
C.F.R. § 41.37(c)(1)(vii).

Obviousness - Claims 10-13
The Examiner determined that the combined teachings of Graham and
Snoke render the subject matter of claims 10 and 11 obvious. Ans. 4-5.
Appellant initially argues that Graham “fails to suggest the claimed usage of
a soft elastomeric material.” App. Br. 6 and 9. However, these arguments
do not inform us of Examiner error because the Examiner does not rely on
Graham as teaching the soft elastomeric material. The Examiner finds that
“Snoke teaches a customizable picture frame which utilizes a soft
elastomeric material” and cites the combination of Graham and Snoke as
rendering the subject matter of claims 10 and 11 obvious. Ans. 5.
When addressing the Examiner’s proposed modifications based on
Snoke, Appellant argues that Snoke “does not teach or suggest the use of
custom pins in combination with a plurality of holes formed in [a] soft
elastomeric material of a product body.” App. Br. 7 and 10. Appellant
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argues that the teachings of Snoke would not motivate one skilled in the art
to modify Graham and are not suggestive of customization. App. Br. 7-10.
However, as explained by the Examiner, “[t]he Snoke reference is only
being used to teach a different material which can be used in the invention of
Graham, not to teach any of the specifics of the customization of the
invention.” Ans. 8. Further, Appellant’s argument directed to a lack of
suggestion or motivation in Snoke for the proposed modification to Graham
is foreclosed by KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), in
which the Court rejected the rigid requirement of a teaching, suggestion or
motivation to combine known elements in order to show obviousness. KSR,
550 U.S. at 415. While a conclusion of obviousness must be supported by
explicit findings and analysis establishing an apparent reason to combine the
known elements in the manner required in the claim at issue, “the analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” Id. at
418.
The Examiner determines that it would have been obvious “to
incorporate the teachings of Snoke into the invention of Graham, as Graham
teaches that the invention is applicable to articles made of materials having
the property of elasticity or resilience” and “since it has been held to be
within the general skill of a worker in the art to select a known material on
the basis of its suitability for the intended use as a matter of obvious design
choice.” Ans. 5. Graham states that “a very tight bind and juncture of the
parts is obtained which . . . holds them firmly united so that they will not
become separated in ordinary use of the article or be accidentally dislodged”
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(page 1, col. 1, ll. 33-38) and explains that “[t]he elasticity or resilience of
the material allows the two parts to be easily pressed together . . . and effects
a very secure bond” (Page 1, col. 2, ll. 37-41).
Appellant has not explained why a soft elastomeric material would be
unsuitable for use in Graham. We find nothing in the disclosure of Graham
that precludes the use of a soft elastomeric material to secure the pin,
particularly in view of Graham’s discussion of the elasticity of the material
providing a good bond. In view of the above, we sustain the rejection of
claims 10 and 11.
Claim 12 depends from claim 11 and further recites that “said body
member may be repeatedly customized.” Appellant argues that “[t]he
Figures in the Graham reference provide no suggestion on whether the
system is capable of repeated customization as claimed” and “[t]he cited
portion of the specification merely states that the initials or symbols may be
applied but fails to suggest the claimed repeated customization.” App. Br.
11. The limitation “may be repeatedly customized” in claim 12 is a
functional limitation only requiring that the prior art be capable of
performing the recited function. See In re Schreiber, 128 F.3d 1473, 1478
(Fed. Cir. 1997). Appellant’s argument that Graham does not disclose a
device that is capable of repeated customization is not persuasive without
some evidence or explanation as to why the Examiner’s determination is
erroneous. Appellant contends that in Graham “the attached items are
intended to be semi-permanent and not readily swapped by the customer”
(App. Br. 11) but fails to persuasively explain why Graham, including the
proposed modifications, is not capable of being repeatedly customized. For
these reasons, we sustain the rejection of claim 12.
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Appellant does not provide any separate arguments for claim 13,
which depends from claim 11. Therefore, claim 13 falls with claim 11.

Obviousness - Claims 14-16
Claim 14 depends from claim 11 and further defines the non-wearable
device as a notebook. Appellant argues that Tran would not motivate one
skilled in the art to modify Graham as suggested by the Examiner. App. Br.
13. However, as noted above, arguments directed to a lack of motivation in
a prior art reference do not apprise us of Examiner error.
In response to the rejection of claim 15, Appellant contends that “[t]he
Gwinn reference clearly teaches . . . [a] permanent marking [that] teaches
away from the claimed ‘repeated customization.’” App. Br. 13-14. The
Examiner has cited Gwinn as an example of a customizable article that could
be used with the teachings of Graham. Ans. 8. The mere existence of
differences between Gwinn and Graham is not sufficient to establish that
Gwinn teaches away from their combination. Appellant’s arguments are not
persuasive because Appellant has not pointed to anything in the disclosure of
Gwinn that disparages the claimed arrangement.
Appellant’s sole argument regarding the rejection of claim 16 is that
Nurre fails to remedy perceived deficiencies in the disclosures of Graham
and Snoke. As discussed earlier, the Examiner correctly found that there
were no such deficiencies. Therefore, Appellant’s arguments do not apprise
us of Examiner error.
For these reasons, we sustain the rejection of claims 14-16.

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DECISION
We AFFIRM the Examiner’s decision to reject claims 10-16.
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

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