Ex Parte Cohen

Patent Trial and Appeal Board

Mar 28, 2016

12412642 (P.T.A.B. Mar. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/412,642 0312712009
50446 7590 03/30/2016
HOXIE & ASSOCIATES LLC
75 MAIN STREET, SUITE 203
MILLBURN, NJ 07041
FIRST NAMED INVENTOR
Saul Cohen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SC-01-US 7457
EXAMINER
BATSON, VICTORD
ART UNIT PAPER NUMBER
3677
NOTIFICATION DATE DELIVERY MODE
03/30/2016 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):
HoxiePatentMail@hoxpat.com
HoxiePatentMail@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAUL COHEN
Appeal2013-001362
Application 12/412,642
Technology Center 3600
Before JOSIAH C. COCKS, CARL M. DeFRANCO, and
GEORGE R. HOSKINS, Administrative Patent Judges.
COCKS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2013-001362
Application 12/412,642
I. STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from a final rejection
of claims 1-26 of Application No. 12/412,642 ("the '642 Application"). 1
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm but designate our affirmance as a new ground of rejection.
A. References Relied on by the Examiner
McRae US 1,346,039 July 6, 1920
Mirharooni US 2003/0154576 Al Aug. 21, 2003
Ausman US 2006/0236509 Al Oct. 26, 2006
B. The Rejection on Appeal
The Examiner rejected claims 1-26 as unpatentable under 35 U.S.C.
§ 103(a) over McRae, Mirharooni, and Ausman. Final Rej. 2-10.
C. The Invention
The invention disclosed in the '642 Application is a clothing
fastener, such as a cuff link. Spec. 1, i-f 1. Figure 1 of the '642
Application is reproduced below:
1 In this opinion, we make reference to: (1) the Final Rejection mailed
January 27, 2012 ("Final Rej."); (2) the Appeal Brief filed July 27, 2012
("App. Br."); (3) the Examiner's Answer mailed August 27, 2012 ("Ans.");
and (4) the Reply Brief filed October 29, 2012 ("Reply Br.").
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Application 12/412,642
FIGURE 1 ............ ~too
3
" """ ·1 $
4
l '"""'14
Figure 1 above depicts an embodiment of a clothing fastener. As
shown in Figure 1, the cuff link includes socket 10 and stud 20. Spec. 4,
if 30. Socket 10 includes female member 3 coupled to outer socket member
5 by socket portion 1 7. Id. Female member 3 includes two female flange
members 13 and 15 separated by slot 100. Id. Magnetic element 1 is
disnosed on female flarn.?:e member 13 and/ or female flarn.?:e member 15. Id.
~ ~ ~
at 4, if 31. Stud 20 includes male member 4 extending from male flange
member 14 and coupled to outer stud member 6 by stud portion 16. Id. at 4,
if 32. Magnetic element 2 is disposed on male flange member 14. Id.
Magnetic element 1 of socket 10 attracts magnetic element 2 of stud 20. Id.
at 4, if 31. Alternatively, socket 10 may include a magnetic element and stud
20 can be made of a metallic material or the stud may include a magnetic
element and socket 10 may be made of a metallic material. Id. at 6, iii! 45-
46. An initial magnetic attraction draws male member 4 and female member
3 together to aid in snap-fitting male member 4 and female member 3. Id. at
3, if 11. This initial magnetic attraction draws male member 4 and female
3
Appeal2013-001362
Application 12/412,642
member 3 in close proximity, and then an applied force allows for the snap
fit. Id. at 7, i-f 46.
Claims 1 and 18 are independent and are reproduced below:
1. A clothing fastener comprising: a socket comprising: a
female member having at least one female flange member and a
slot; and an outer socket member coupled to the :female member,
wherein the at least one :female flange member has a socket
magnetic element and the outer socket mernber includes an outer
socket base portion; and a stud comprising: a male member
having a male fiange member disposed on the male member; the
male flange member having at least one stud magnetic element;
and an outer stud rnember coupled to the male rnember, the outer
stud member including an outer stud base portion, vvherein an
initial magnetic attraction between the socket magnetic element
and the stud magnetic element draws the at least one :female
flange mernber and the rnale member in close proximity such that
an applied force on either the outer socket member or the outer
stud member and a corresponding outer base portion allows for
a snap fit between the mafo member and the at least one female
flange member of the female member through the slot.
18. /\ clothing fastener comprising: a socket compnsmg: a
fomale member having at least one female flange member and a
slot; and an outer socket member coupled to the at least one
female member~ and the outer socket member includes an outer
socket base portion; and a stud comprising: a male member
having a male flange member disposed on the male member; and
an outer stud mernber coupled to the male member, the outer stud
member including an outer stud base portion, wherein one of the
at least one fomale flange member or the male flange member
includes at least one magnetic element, and the other of the male
flange mernber and the at least one female flang:e member being: I....- ... __ , ... __ ,
of a metallic material, wherein an initial magnetic attraction
between the at least one fomale fiange member and the male
member draws the :female and male members in close proximity
such that an applied force on either the outer socket mernber or
the outer stud member and a corresponding outer base portion
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Appeal2013-001362
Application 12/412,642
allows for a snap fit between the male member and the at least
one :fomak flange member of the female member through the
slot
App. Br. Claims App'x 21-24.
II. ISSUE
We consider whether the Examiner's rejection of claims 1-26 based
on McRae, Mirharooni, and Ausman is supported on the record before us.
III. ANALYSIS
The Examiner rejected claims 1-26 as unpatentable over McRae,
Mirharooni, and Ausman.
A. Overview of McRae
McRae discloses a clothing fastener in the form of a cuff link. McRae
1:8-14. Figure 2 of McRae is reproduced below:
5
~.<:4 ~·
Appeal2013-001362
Application 12/412,642
Figure 2 above depicts a cuff link according to McRae' s invention.
The cuff link includes male member 3 having stud 7 extending from flange
6. McRae 1 :62-75. Female member 2 includes socket-member 16 and
flange 6. Id. at 1:62-97. Female member 2 also includes spring 20 having
legs 22. Id. at 1:94--107. Applying pressure to heads 4 of male member 3
and female member 2 causes stud 7 to separate legs 22 of spring 20 and snap
into socket-member 16. Id. at 2:30-40.
B. Overview of Mirharooni
Mirharooni discloses a clothing fastener in the form of a cuff link.
Mirharooni 1, i-f 2. Figure IA of Mirharooni is reproduced below:
Yi~, IA
i I J
Figure 1 A "shows a side view of the two pieces of a single cuff link."
Mirharooni 1, i-f 6. The cuff link includes two pieces, each of which includes
a magnet located thereon. Id. at 1, i-f 12. Positive magnet 1 on one piece is
magnetically attracted to negative magnet 2 on the other piece to secure the
pieces together. Id. at 1, i-fi-15, 12.
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Appeal2013-001362
Application 12/412,642
C. Overview of Ausman
Ausman discloses a clothing fastener having a magnetic clasp.
Ausman 1, i-f 1. Figure 1 A of Ausman is reproduced below:
Fig. 1
The clothing fastener includes male magnetic clasp member 20 and
female magnetic clasp member 30. Ausman 1-2, i-f 14. Male magnetic clasp
member 20 includes magnet or magnet-binding metal 55 at one end and
female magnetic clasp member 30 includes magnet 65. Id. at 2, i-f 15.
Magnets 55 and 65 attract one another to assist in holding male magnetic
clasp member 20 and female magnetic clasp member 30 together. Id. at 3,
i-f 25. Magnets 55 and 65 bind most optimally when male magnetic clasp
member 20 is fully seated within female magnetic clasp member 30. Id. at
3, ,-r 26.
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Appeal2013-001362
Application 12/412,642
Ausman's Figure 4A is reproduced below:
'Fill: 4 .. IQ . . .
A
20 30 n I 1 ,-.::
I
I n t ·~· ,_ir-· _ _____,i rir--1 u
µ.-~~-----'l -.i' ;;:r l.J . i
I._. o 11 . lJ
Figure 4A above depicts another embodiment of Ausman's invention.
As shown in that embodiment, in addition to the magnetic elements (not
numbered in Figure 4A), male member 20 and female member 30 include an
additional fastener in the form of friction-inducing bulges 70 and 71 that
form a "friction-grip secondaPJ fastening mechanism" providing a "friction
grip between the contacting surfaces of the two magnetic clasp members."
Ausman 2, i-f 19; 4, i-f 34. Ausman explains that the purpose of such
secondary fasteners is to prevent accidental disengagement of male member
20 from female member 30. Id. at 4, i-f 34.
D. The Combination of McRae, Mirharooni and Ausman
1. The Examiner's Position
The Examiner determined that McRae discloses all the features of
claims 1-26 with the exception of the requirements that the female flange
member and the male flange member include magnetic elements as recited
in claim 1, and a magnetic element and a magnetic material as recited in
claim 18. Final Rej. 2-10. To account for those features, the Examiner
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Appeal2013-001362
Application 12/412,642
relied on Mirharooni and Ausman, and reasoned that one of ordinary skill in
the art would have combined the teachings of the prior art to arrive at the
invention of the '642 Application. Id.
2. The Appellant's Position
The Appellant generally challenges the Examiner's rejection on the
theory that the Examiner has not articulated adequate reasoning for
combining the teachings of the prior art. See generally App. Br. 13-20;
Reply Br. 4--7. More particularly, the Appellant argues that "the Examiner's
cited art references fail to teach, suggest, or motivate on[ e] of skill in the art
to use weaker magnetic elements that were not the sole means of connection
for the claimed clothing fastener." App. Br. 13. In that vein, the Appellant
urges that "the strength of the magnetic elements in the claimed invention is
considerably weaker than what is disclosed in the art," and "the Examiner
has also failed to consider the fact that the claimed invention employs the
use of weaker magnetic elements, rather than stronger magnetic elements
utilized by the prior art publication." Id. at 14--15.
The Appellant also submits separate argument particular to claims 3
and 4. App. Br. 18-19. Those claims ultimately depend from claim 1 and
add that "the initial magnetic attraction is not sufficient for the snap fit." Id.
at Claims App 'x 21.
3. Discussion
The rejection before us is one grounded in obviousness. 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 skill in
the art; and (4) objective evidence of nonobviousness, i.e., "secondary
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Appeal2013-001362
Application 12/412,642
considerations."2 See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
The Supreme Court has made clear that we apply "an expansive and flexible
approach" to the question of obviousness. KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 415 (2007). Based on its precedent, the Court reaffirmed the
principle 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. at 416. Indeed, in many cases a person of ordinary skill, who is
also a person of ordinary creativity, "will be able to fit the teachings of
multiple patents together like pieces of a puzzle." KSR, 550 U.S. at 420.
Furthermore, the level ordinary skill in the art usually is evidenced by the
references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).
Here, the references reflect that the level of ordinary skill in the art is
such that a skilled artisan would have known that there are a variety of
connection types and configurations for fastening portions of a cuff link to
each other. Indeed, as is apparent from McRae and Ausman, it was known
that portions of a cuff link may be fastened together by means of a shaft and
a corresponding socket such that they are "snapped" together or facilitate a
"friction" fit. See, e.g., McRae 2:35--40, Fig. 2; Ausman 4, i-f 34. As
evidenced by Mirharooni and Ausman, it also is recognized in the art that
magnetic components may produce magnetic attraction between cuff link
portions. See, e.g., Mirharooni 1, i-f 5; Ausman 3, i-f 25. Those references
also establish that skilled artisans knew that there were specific, available
locations for the magnetic components, such as on cuff link portions
2 The record does not show that the Appellant has offered evidence of
"secondary considerations" for evaluation here by the panel.
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Appeal2013-001362
Application 12/412,642
recognizable as a flange. See Mirharooni, Fig. IA. Finally, Ausman makes
clear that structures providing a friction grip and structures providing
magnetic attraction may be employed together to accomplish attachment of
cuff link segments. Ausman 4, i-f 34, Fig. 4A.
In light of the teachings of the prior art, we conclude that the
Appellant's arguments challenging the obviousness grounds of claims 1-26
are unavailing. At the outset, with the possible exception of claims 3 and 4,
the claims do not require any particular degree of magnetic force, much less
one that must necessarily be considered "weak." Nevertheless, even if the
claims did have such a requirement, it is apparent readily from Ausman's
teachings that one of ordinary skill knew that components providing a
friction grip may operate as a "secondary clasp" so as to prevent accidental
disengagement of the cufflink portions. Ausman 4, i-f 34. Thus, the record
establishes that magnetic attraction alone was understood to be potentially
insufficient to prohibit detachment, and may need to be supplemented with
additional attachment mechanisms.
We also observe that the particular magnetic attraction at issue in the
claims is that characterized as the "initial" magnetic attraction, and that such
attraction need only draw corresponding magnetic components into "close
proximity." Such "initial" attraction and the resulting operation to draw
magnetic components near one another is the very essence of magnetic
attraction in general. It is markedly clear from the prior art of record, e.g.,
Mirharooni and Ausman, that the initial attraction of magnets associated
with cuff link portions, including those with shaft members and flange
members, operates to draw those members into close proximity of one
another.
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Application 12/412,642
With respect to claims 3 and 4, we do not discern that the content of
those claims somehow distinguishes them from the prior art of record. In
that respect, we do not discern that the prior art, such as Ausman, conveys
that the beginning or "initial" magnetic attraction between the magnetic
components of cufflinks must, itself, accomplish the friction or snap fit of
other attachment components. Neither do we discern from the prior art that
the force of magnetic attraction is one that is uniform in all circumstances.
In an obviousness analysis, it is not necessary to find precise teachings in the
prior art directed to the specific subject matter claimed because inferences
and creative steps that a person of ordinary skill in the art would employ can
be taken into account. KSR, 550 U.S. at 418. Here, we conclude that a
skilled artisan would have inferred readily that the magnetic attraction force,
initial or otherwise, between magnets of a cufflink may be such that the
magnetic force is not sufficient to accomplish, for instance, the friction grip
of the secondary fastening mechanisms of Ausman's Figure 4A, or the snap
fit of McRae's male and female members. Accordingly, we do not conclude
that the recitation in claims 3 and 4 that "the initial magnetic attraction is not
sufficient for the snap fit" renders those claims free of the prior art.
We have considered fully the record before us, including the
Appellant's arguments challenging the Examiner's determination of
unpatentability. We are not persuaded that those arguments are correct.
In that respect, we are satisfied that a person of ordinary skill in the art,
guided by the teachings of the prior art, would have had adequate reason to
combine the familiar elements in the field of cufflinks, each operating as
would be expected and predicted, to arrive at the invention of the claims of
the '642 Application.
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Application 12/412,642
IV. CONCLUSION
For the foregoing reasons, we sustain the Examiner's rejection of
claims 1-26 of the '642 Application as unpatentable in view of the teachings
of McRae, Mirharooni, and Ausman. We are cognizant that in so sustaining
that rejection, we have relied on reasoning that extends beyond that which
was relied upon by the Examiner. Accordingly, we designate our
determination in that respect as a new ground of rejection under 37 C.F.R.
§ 41.50(b).
V. ORDER
The Examiner's decision to reject claims 1-26 over the prior art is
affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 )(iv).
This decision contains a new ground of rejection pursuant to 37
C.F .R. § 41.50(b ). That section provides that 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 proceeding will be remanded to the
exammer ....
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same
record ....
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Application 12/412,642
AFFIRMED
New Ground of Rejection; 37 CPR§ 41.50(b)
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