Ex Parte Fletcher et al

Board of Patent Appeals and Interferences

Mar 13, 2008

09907706 (B.P.A.I. Mar. 13, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LYNN FLETCHER and LINDA ROHRBACH
____________

Appeal 2008-0894
Application 09/907,706
Technology Center 3700
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Decided: March 13, 2008
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Before TONI R. SCHEINER, LORA M. GREEN, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 9-12, 16-19, 21, and 22. We have
jurisdiction under 35 U.S.C. § 6(b). Claims 9, 21, and 22 are representative
of the claims on appeal, and read as follows:
Appeal 2008-0894
Application 09/907,706

9. A scarf made of a wearable material to provide warmth and
shelter from the elements, comprising:
at least one weighted object attached externally to one distal end of
the scarf; and
at least one weighted object attached externally to another distal end
of the scarf,
wherein the weighted objects have a higher density than the wearable
material of the scarf, and
wherein the weighted objects are of a result-effective weight sufficient
to hold the scarf on a wearer's body without a fastening device when the
scarf is worn on the body.

21. The scarf according to claim 9, wherein the weighted objects are toys.

22. The scarf according to claim 21, wherein the toys are selected
from a group including whistle, action figure, electronic gaming device,
organizer, communication device, plush figure, storybook, number and
letter.

The Examiner relies on the following references:
Douglas US 5,513,392 May 7, 1996
Clutton US 5,720,049 Feb. 24, 1998

We affirm-in-part.1

DISCUSSION
Claims 9-12, 16-19, 21, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over the combination of Douglas and Clutton.

1 This is the second time this Application has been before a merits panel of
the Board. The prior Appeal, Appeal No. 2005-0959, was decided on May
18, 2005 (hereafter “Decision”). We note that in Appeal No. 2005-0959, the
prior merits panel deferred the effective date of the affirmance until
conclusion of the proceedings before the Examiner. Thus, the effective date
of all affirmed rejections is the mailing date of this decision.
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Application 09/907,706

The Examiner cites Douglas for teaching all of the elements of the
scarf of claim 9 except for the limitation that weighted objects at each distal
end of the scarf are externally attached to the scarf (Ans. 3).
Clutton is cited for teaching a scarf having weighted objects that are
attached externally to the ends of the scarf article (id. at 4).
Thus, according to the Examiner:
It would have been obvious to have provided the objects
being permanently or removably attached to the scarf ends,
because as long as the objects are attached to the scarf and
provide a weighted means to hold the scarf in place on the
user’s body they can be attached permanently or removably as
desired.

(Id.)
The burden is on the Examiner to set forth a prima facie case of
obviousness. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). The
question of obviousness is resolved on the basis of underlying factual
determinations including: (1) the scope and content of the prior art; (2) the
level of ordinary skill in the art; (3) the differences between the claimed
invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has recently emphasized that “the [obviousness] 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.” KSR
Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 1739. Moreover, an
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Application 09/907,706

“[e]xpress suggestion to substitute one equivalent for another need not be
present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301
(CCPA 1982).
Appellants argue that the there is no suggestion or motivation for the
weight of Douglas to be externally attached to the distal ends of the shoulder
pad accessory (App. Br. 6). Clutton adds nothing, Appellants assert, as it is
directed to a clothing article very different from Douglas (id.).
Appellants’ argument is not convincing. Both Douglas and Cluttton
describe weighted accessories to be worn over other garments in the neck
and shoulder region, where the weights are attached at the distal ends of the
accessories. Clutton teaches that distal “drawing-in members” 1, 2 (Clutton,
coll. 2, ll. 45-50) and/or fastenings 7, 8 may be used for a scarf-like
accessory, and are preferably weighted to ensure that the accessory can be
suitably draped and positioned (Clutton, col. 3, ll. 8-11 and 22). One of
ordinary skill in the art would have recognized that such weighted members
and/or fastenings could be used externally in the accessory taught by
Douglas which is of the same type as described in Clutton. As noted by the
Court in KSR, “[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton.” 127 S.Ct. at 1742.
Appellants also argue that further examination in the instant
application was governed by the prior Decision on Appeal, and in that
Decision, the prior merits panel found that Douglas and Hoerlein were
directed to different types of apparel with different objectives (App. Br. 6).
According to Appellants, “Clutton is directed to a scarf with fastening
members attached thereto,” asserting that the “fastening members are not
designed to be weighted members, and such teaching is not sufficient to
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Application 09/907,706

overcome the tremendous shortcomings of the primary reference to Douglas
which is related only to a shoulder pad accessory.” (Id. at 7.) Thus,
Appellants conclude, in “parallel with the Board’s direction regarding the
improper combination of Douglas and Hoerlein . . . one of ordinary skill in
the art would have found no suggestion or motivation to combine scarf and
barrel fastening members . . . with hooks taught by Clutton with the shoulder
pad accessory of Douglas having hidden or embedded internal weights.”
(Id.)
Appellants’ argument is again not convincing. The prior merits panel
remanded the instant application to specifically explore a rejection of claim
9 over Douglas. Claim 9 is essentially the same as it was in the prior appeal;
it has been amended only to specify that the weighted objects are attached
externally to the distal ends of the scarf. Clutton makes up that difference by
teaching the use of a weighted drawing-in member and/or fastening, such as
a barrel arrangement or a hook and loop, in a scarf-like accessory. Thus, as
noted above, it would have been obvious to the ordinary artisan to modify
the scarf-like accessory of Douglas to include a fastening as taught by
Clutton.
Such a fastening would act as a weighted object, as Clutton teaches
that it may be an “appealingly plated metallic member.” (Clutton, col. 2, ll.
47-50.) Claim 9 merely requires that the weighted objects have a higher
density than the wearable material of the scarf, and such a metallic fastening
would have a higher density than the wearable material of the scarf.
Thus, we conclude that the Examiner has set forth a prima facie case
of obviousness as to claim 9, and as claims 10-12 and 16-19 stand or fall
with claim 9 (Br. 8), the rejection is affirmed as to those claims as well.
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As to claims 21 and 22, the Examiner asserts that “barrel members . . .
of Clutton are capable of being used as an ornamental and interactive toy,
since they can be removed from the scarf, rolled on the ground, hooked
together by hooks . . . , or screwed together.” (Ans. 4.) Clutton, however,
teaches that the weighted members may be a barrel arrangement (Clutton,
col. 1, ll. 64-5), a hook and loop (id. at col. 2, ll. 57-62), and may be
fashioned in accordance with items of modern jewelry (id. at col. 1, ll. 45-
49). Thus, we agree with Appellants that the Examiner’s interpretation of
toy is strained, and that the ordinary artisan would not consider such objects
as toys for children (App. Br. 8). Thus, as the Examiner has not met the
burden of establishing a prima facie case of obviousness as to claims 21 and
22, we are compelled to reverse the rejection as to those claims.

CONCLUSION
In summary, we affirm the rejection of claims 9-12, 16-19 under 35
U.S.C. § 103(a) as being obvious over the combination of Douglas and
Clutton is affirmed. As the Examiner has failed to set forth a prima facie
case as to claims 21 and 22, the rejection is reversed as to those claims.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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