Ex parte Cooper

Board of Patent Appeals and Interferences

Mar 8, 1999

08438512 (B.P.A.I. Mar. 8, 1999)

Application for patent filed May 11, 1995. According1
to appellant, the application is a continuation of Application
08/084,356, filed June 28, 1993, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte WILLIAM J. COOPER
__________
Appeal No. 98-1038
Application 08/438,5121
___________
ON BRIEF
___________
Before ABRAMS, McQUADE, and NASE, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 98-1038
Application 08/438,512
2
William J. Cooper appeals from the final rejection
of claims 1, 2 and 7, all of the claims pending in the
application. We reverse.
The invention relates to a plastic fastener of the sort
used in the retail industry to attach tags to articles of
clothing. Claim 1 is illustrative and reads as follows:
1. A fastener adapted for attachment to a sheet of
material, said fastener comprising a unitary plastic member
shaped to include an elongated filament having a cross bar at
one end thereof, said cross bar being insertable through the
sheet of material and engageable with the opposite side
thereof to retain said fastener thereon, said cross bar being
sufficiently short in length so that, once said cross bar has
been inserted through an installation hole in the sheet of
material, said cross bar cannot easily be manipulated in such
a way as to be aligned with and withdrawn through the
installation hole, said cross bar having a length of
approximately 0.1 inch.
The references relied upon by the examiner as evidence of
obviousness are:
Bone (Bone '666) 3,103,666 Sept. 17,
1963
Bone et al. (Bone '854) 4,901,854 Feb.
20, 1990
Claims 1 and 2 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Bone '854, and claim 7 stands rejected
Appeal No. 98-1038
Application 08/438,512
3
under 35 U.S.C. § 103 as being unpatentable over Bone '854 in
view of Bone '666.
Reference is made to the appellant's brief (Paper No. 18)
and to the examiner's final rejection and answer (Paper Nos.
11 and 19) for the respective positions of the appellant and
the examiner with regard to the merits of these rejections.
The dispositive issue in this appeal is whether Bone
'854, the examiner's primary reference, would have suggested a
fastener meeting the limitation in claim 1 requiring the cross
bar to be
sufficiently short in length so that, once said
cross bar has been inserted though an installation
hole in the sheet of material, said cross bar cannot
easily be manipulated in such a way as to be aligned
with and withdrawn through the installation hole,
said cross bar having a length of approximately 0.1
inch.
Bone '854 discloses a plastic fastener capable of a
variety of uses such as securing matching garments together
(see Figure 7) or forming a hanging loop for a single garment
Appeal No. 98-1038
Application 08/438,512
4
(see Figure 6). To this end, the fastener includes a pair of
elongated filaments 16 joined at one end by a seamless
connector 40 and carrying at their other ends penetrating
parts or cross bars 12 and 14. Bone teaches that
[i]n a typical embodiment . . . the filament 16
extends approximately four inches in length while
parts 12, 14 are approximately 13/32 in. in length
and 0.070 inch in diameter. It should be noted
however, that these dimensions may be varied
considerably depending upon the particular
attachment and its specific end use application
[column 4, lines 36 through 43].

The examiner submits that "it would have been obvious to
one of ordinary skill in the ar[t] at the time the invention
was made
to choose 0.1 inches as a considerable variation of 13/32 (0.4
inches), the Bone cross bar dimension" (final rejection, page
3). The examiner goes on to explain that
[t]he crossbar must be of a length long enough to
prevent pulling through the weave of a fabric of the
merchandise, and yet it cannot be too long such that
it cannot be applied with an attachment tool. The
aforementioned variables support the Examiner[']s
conclusion that it would have been obvious to one of
ordinary skill in the art to "considerably vary" the
length of the cross bar of Bone et al such that it
Appeal No. 98-1038
Application 08/438,512
5
were 0.1 inch. That is to say it is well within the
scope of the Bone et al reference to form the cross
bar to be 0.1 inch long [answer, pages 4 and 5].
The appellant, on the other hand, argues that
Bone et al. (854) is directed at a completely
different problem than that solved by Appellant,
namely, tampering. Instead, Bone et al. is directed
at the problems of using an individual attachment to
secure together two or more objects having a
substantial combined thickness . . . and using a
plastic fastener to hang articles of commerce or to
function as thread substitutes . . . . Bone et al.
(854) not only does not appreciate the problem of
tampering solved by Appellant but goes so far as to
state, at col. 1, lines 35-37, that conventional
fasteners "are effective in preventing shoppers from
switching tags by removing a tag from a low-priced
article, and substituting it on a higher priced
article." None of the "specific end use
applications' referred to in Bone et al. (854)
require or even benefit from a cross-bar having the
length limitation recited in claim 1. Consequently,
viewing in its proper context the statement in Bone
et al. (854) that the dimensions may be varied
depending upon the specific end use application of
the fastener, one of ordinary skill in the art would
not have been motivated to reduce the length of the
cross bar to approximately 0.1 inch [brief, pages 5
and 6].
The appellant's position here is persuasive. Bone '854
does teach that the cross bar length of the fastener disclosed
Appeal No. 98-1038
Application 08/438,512
6
therein may be varied considerably from the specified 13/32
inch length depending on the end use application. The
examiner has failed to point out, however, nor is it apparent,
where Bone '854 indicates any end use application suggestive
of the "approximately 0.1 inch" cross bar length required by
claim 1. In this regard, Bone '854 certainly does not
contemplate the fastener withdrawal/tampering problem
addressed by the appellant or the recited cross bar solution
thereto. Thus, Bone '854 does not provide the factual basis
necessary to support the examiner's determination that the
subject matter recited in claim 1, and in claim 2 which
depends therefrom, would have been obvious within the meaning
of § 103. Bone '666, applied in combination with Bone '854 to
reject dependent claim 7, does not overcome this deficiency in
the primary reference.
Appeal No. 98-1038
Application 08/438,512
7
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103 rejections of claims 1, 2 and 7.
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 98-1038
Application 08/438,512
8
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Kriegsman & Kriegsman
838 Edgell Road
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