Ex Parte Hosey

Board of Patent Appeals and Interferences

Nov 30, 2007

10719537 (B.P.A.I. Nov. 30, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL JACKSON HOSEY
____________

Appeal 2007-4467
Application 10/719,537
Technology Center 2800
____________

Decided: November 30, 2007
____________

Before CHUNG K. PAK, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 through 22, all of the claims pending
in the above-identified application. We have jurisdiction pursuant to 35
U.S.C. § 6.

Appeal 2007-4467
Application 10/719,537

STATEMENT OF THE CASE
The subject matter on appeal is directed to “display devices and, in
particular, but not exclusively, to a timekeeping device attached to a clip,
wherein the clip can pivot and act as a stand for the display device…” (Spec.
1, para. 001). Further details of the appealed subject matter are recited in
representative claims 1 and 16 reproduced below:
1. A timepiece comprising:
a casing;
a display device secured by the casing; and
a clip pivotally attached to the casing; and
wherein the clip is configured to be attachable
to an object of interest and wherein the clip is configured to
pivot in a position to maintain the display device in a
substantially upright position when the attachment section is
place on substantially horizontal surface.

16. An apparatus comprising:
an electronic device having a display;
a casing configured to hold the electronic device; and
a clip pivotally attached to the casing, the clip
configured to be attachable to an object of interest, the clip
configured to be pivoted to form a stand for the apparatus.

As evidence of unpatentability of the claimed subject matter, the
Examiner has relied upon the following references:
Lowdenslager US 4,022,014 May 10, 1977
Kauker US 5,540,367 Jul. 30, 1996
Pantet US 5,781,512 Jul. 14, 1998
Sekiguchi US 6,751,164 B1 Jun. 15, 2004
Gilmour US 6,801,476 B2 Oct. 5, 2004

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Application 10/719,537

The Examiner has rejected the claims on appeal as follows:
1. Claims 1 through 4, 6, 7, 9, 12 through 14, 16, and 17 under 35
U.S.C. § 103(a) as unpatentable over the combined disclosures of Pantet and
Kauker;
2. Claims 5, 8, 10, and 18 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Pantet, Kauker, and
Sekiguchi;
3. Claims 11, 15, and 19 through 21 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Pantet and Kauker, and
Gilmour; and
4. Claim 22 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Pantet, Kauker, and Lowdenslager.
The Appellants appeal from the Examiner’s decision rejecting the
claims on appeal under 35 U.S.C. § 103(a).1

PRINCIPLES OF LAW, FACTS, ISSUES and ANALYSES
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations (e.g.,
unexpected results). Graham v. John Deere Co. of Kansas City, 383 U.S. 1,
17-18 (1966). “[A]nalysis [of whether the subject matter of a claim would
be obvious] need not seek out precise teachings directed to the specific

1 We limit our discussion to claims 1 and 16 consistent with 37 C.F. R.
§ 41.37(c)(1)(vii) (2005).
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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, 1740-41 (2007),
quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), see also DyStar
Textilfarben GmBH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1361 (Fed. Cir. 2006)(“The motivation need not be found in the
references sought to be combined, but may be found in any number of
sources, including common knowledge, the prior art as a whole, or the
nature of the problem itself.”); In re Bozek, 416 F.2d 1385, 1390 (CCPA
1969)(“Having established that this knowledge was in the art, the examiner
could then properly rely, as put forth by the solicitor, on a conclusion of
obviousness ‘from common knowledge and common sense of the person of
ordinary skill in the art without any specific hint or suggestion in a particular
reference.’”). “When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable solutions, a
person of ordinary skill has good reason to pursue the known options within
his or her technical grasp. If this leads to the anticipated success, it is likely
the product . . . of ordinary skill and common sense.” KSR Int’l v. Teleflex,
Inc., 127 S. Ct. at 1742.
As evidence of obviousness of the subject matter defined by claims 1
through 4, 6, 7, 9, 12 through 14, 16, and 17 under 35 U.S.C. § 103(a), the
Examiner has relied on the combined disclosures of Pantet and Kauker. The
Examiner has found, and the Appellants have not disputed, that:
Pantet teaches a timepiece comprising: a casing (11, Fig. 1); a
display device (3, Fig. 1) secured by the casing; and an
attachment section (12, Fig. 1) pivotally attached to the casing;
and wherein the attachment section is configured to be
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Application 10/719,537

attachable to an object of interest ("a buckle or a small chain
snap hook", col. 2, 11. 50-51) wherein the attachment section is
configured to pivot ("pivot the hinge", col. 2, 11. 53-57) in a
position to maintain the display device in a substantially upright
position when the attachment section is placed on a
substantially horizontal surface (Fig. 2).

Compare Ans. 4 with Br. 4-12. Consistent with the above findings, we note
that Pantet teaches at col. 2, ll. 49-57, that:
In the suspension position, the second part [i.e., the attachment
section] may be suspended in a known manner, for example on
a buckle or a small chain snap hook, and the first part [i.e., the
casing] with the watch is suspended therefrom simply by the
hinge which may play freely if necessary. In order to pass to
the table position, it is sufficient to pivot the hinge until the two
parts abut against each other and to place the second part (i.e.,
the attachment section] flat on a horizontal surface. Such
movements do not cause any wear and tear.

As is apparent from the title and drawings of Pantet, its suspension and
support device for a conventional watch is designed to provide a dual
function, i.e., useful as a pocket watch and a table watch. See also Pantet,
col. 1, ll. 4-18. As recognized by the Examiner (Ans. 4), Pantet does not
mention that the attachment section of its suspension and support device is
in the form of a clip.
The dispositive question is, therefore, whether one of ordinary skill in
the art would have been led to modify the attachment section (second part
11) of Pantet’s suspension and support device in the form of a clip within the
meaning of 35 U.S.C. § 103(a). On this record, we answer this question in
the affirmative.
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As recognized by the Appellants (Br. 6), Kauker teaches at col. 1. ll.
10-11, that “[t]he pocket watch passed out [of] vogue in the early 20th
century . . . .” The Examiner has found, and the Appellants have not
disputed, that:

Kauker teaches a loop watch, including a hanger (14, Fig. 1),
comprising a carabiner clip (14c, 14d, Fig. 1). Such a clip is
very functional and allows the watch to be attached to a wide
variety of belongings such as backpacks, golf bags and any
other attachable article (col. 1, 11.40-42), while not obstructing
the hands and making the watch readily visible on various
articles of both men's and women's clothing (col. 1, 11. 18-22).

Compare Ans. 4 with Br. 5-12. We find that Kauker teaches replacing the
attachment section of the pocket watch with a strap connector and a clip so
that it can be used as an attachment to articles of clothing, backpacks, golf
bags, etc. (col. 1. 63-67 and col. 2, ll. 1-3).
Given the advantage of making the pocket watch taught by Pantet
more trendy and marketable, and of retaining its dual functionality (a table
watch and a carrying watch), we determine that one of ordinary skill in the
art would have been led to modify the attachment section of Pantet in the
form of a clip, without replacing a hinge connector arrangement with a strap
connector, with a reasonable of expectation of successfully using it as both
the carrying watch and the table watch. KSR, 127 S. Ct. at 1740 (“[W]hen a
patent ‘simply arranges old elements with each performing the same
function it had been known to perform’ and yields no more than one would
expect from such an arrangement, the combination is obvious.”).
Thus, based on the factual findings set forth in the Answer and above,
we determine that the preponderance of evidence weighs most heavily in
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favor of obviousness of the subject matter defined by claims 1 through 4, 6,
7, 9, 12 through 14, 16, and 17 within the meaning of 35 U.S.C. § 103(a).
As to the remaining § 103(a) rejections, the Appellants have relied on
the same arguments discussed above (Br. 11). Thus, for the same reasons
set forth above and in the Answer, we determine that the preponderance of
evidence weighs most heavily in favor of obviousness of the subject matter
defined by claims 5, 8, 10, 11, 15, and 18 through 22 within the meaning of
35 U.S.C. § 103(a).
Accordingly, we affirm the Examiner’s decision rejecting all of the
claims on appeal under 35 U.S.C. § 103(a).
ORDER
In view of the forgoing, the decision of the Examiner is affirmed.
TIME PERIOD
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

tc

STUART WHITTINGTON, ESQ.
7037 E. MONTE CIRCLE
MESA, AZ 85208

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