Ex Parte Foght

Patent Trial and Appeal Board

Dec 16, 2013

12426371 (P.T.A.B. Dec. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAMIESON A. FOGHT
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Appeal 2012-003301
Application 12/426,371
Technology Center 3600
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Before EDWARD A. BROWN, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/426,371

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STATEMENT OF THE CASE
Jamieson A. Foght (“Appellant”) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 10-13 and 16-19. We have
jurisdiction under 35 U.S.C. § 6(b).
Claimed Subject Matter
Claims 10 and 16 are the independent claims on appeal. Claim 10 is
illustrative of the claimed subject matter and is reproduced below.
10. A writing instrument dimensioned and configured to
removably display an image, the writing instrument
comprising:
a body element having an outer diameter, a first end, a
second end, and an outside diameter flange protruding radially
from the first end of the body element;
a grip matingly engaged to a first end of the body
element;
a transparent display barrel removably disposable over
the body element and having an inner diameter slightly larger
than the outer diameter of the body element for defining a
chamber to accommodate an image, and further having an
inside diameter flange protruding radially from an end of the
display barrel, wherein when the body element is disposed
inside the display barrel, the outside diameter flange on the
body element engages the inside diameter of the display barrel,
and the inside diameter flange on the display barrel contacts the
outside diameter of the body element; and
a fastener for removably securing the display barrel
around the body element, wherein the fastener includes a
leading edge at a first end of the display barrel and a collar
disposed at a second, opposing end of the display barrel; and
wherein the first end of the body element is configured to
matingly engage the grip and the second end of the body
element is configured to matingly engage the collar.
Br. 5, Claims App’x.
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Application 12/426,371

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References
The Examiner relies upon the following prior art references:
Lonsmin US 4,037,343 July 26, 1977
Burden US 2003/0138284 A1 July 24, 2003
Rejection
Appellant seeks review of the following rejection:
Claims 10-13 and 16-19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lonsmin and Burden.
SUMMARY OF DECISION
We AFFIRM.
OPINION
The Examiner concluded that the combination of Lonsmin and
Burden would have rendered the subject matter of claims 10-13 and 16-19
obvious to one of ordinary skill in the art at the time of invention. Ans. 4-6.
In the rejection, the Examiner indicated that elements 44 and 54 of Lonsmin
disclose a first outside diameter flange and a second outside diameter flange,
and element 40 discloses an inside diameter flange. Id. at 4-5 (citing
Lonsmin, fig. 2).
Appellant asserts that the Examiner relied upon element 53 of
Lonsmin as disclosing a second outside diameter flange and element 33 as
disclosing an inside diameter flange.1 Br. 3. Appellant contends that
“neither of the two ‘flanges’ 53 and 33 extend in a radial fashion.” Id.

1 Appellant does not separately argue claims 10-13 and 16-19. See Br. 3.
We select claim 10 as representative. Accordingly, claims 11-13, and 16-19
stand or fall with claim 10. See 37 C.F.R. § 41.37(c)(1)(vii) (2011); see also
In re Lovin, 652 F.3d 1349, 1351 (Fed. Cir. 2011).
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Application 12/426,371

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Rather, Appellant asserts that “[e]lements 53 and 33 extend axially, along
the long axis of the writing instrument.” Id. In contrast, Appellant contends
that “[c]laims 10 and 16 require radial flanges – flanges that extend from the
center of the body element and the display barrel, respectively.” Id.
In responding to Appellant’s arguments, the Examiner indicated that
“[r]eference[s] #53 and #54 on the body element have flanges that extend
radially inwardly and outwardly respectively on the body element and are
not given a separate reference number, hence the use of #53 and #54.”
Ans. 6. The Examiner explained that:
These flanges can be clearly seen in [Lonsmin’s] Figure 2, as
horizontal shelves forming #53 and #54. On the display barrel,
the radial flanges are given their own reference numbers, #40
and #42, considered shoulders in the reference, and having an
interior flange matching #40 and #42, as depicted in Figure 1
with the same reference numbers.
Id. Further, the Examiner provided an annotated version of Lonsmin’s
Figures 1 and 2 where the Examiner identified the specific structural
elements relied upon as the flanges. See id. at 7.
Based on the argument presented in the Appeal Brief, it appears
Appellant did not fully comprehend which elements were relied upon by the
Examiner as disclosing the first and second outside diameter flanges and
inside diameter flange because Appellant addressed elements 53 and 33,
rather than the structures identified in the Examiner’s response to
Appellant’s argument. Appellant, however, did not reply to the Examiner’s
more fully explained position, including annotated versions of Lonsmin’s
Figures, nor did Appellant assert that the Examiner’s Answer contained a
new ground of rejection. Additionally, we are unable to detect error in the
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Application 12/426,371

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Examiner’s further explanation as to which elements in Lonsmin are in fact
relied upon as disclosing the respective flanges.
Accordingly, we sustain the rejection as applied to claim 10 and
claims 11-13 and 16-19 that were argued therewith.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 10-13 and
16-19.
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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