Ex Parte Isserow et al

Patent Trial and Appeal Board

Nov 21, 2014

11974401 (P.T.A.B. Nov. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/974,401 10/12/2007 Jonathan Isserow 1536 IS 05 5327
75207 7590 11/21/2014
Gearhart Law LLC
41 River Road
Suite 1A
Summit, NJ 07901
EXAMINER
ISLAM, SYED A
ART UNIT PAPER NUMBER
3638
MAIL DATE DELIVERY MODE
11/21/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JONATHAN ISSEROW and LAURA ISSEROW
____________________

Appeal 2012-009776
Application 11/974,401
Technology Center 3600
____________________

Before EDWARD A. BROWN, JILL D. HILL, and
MICHAEL L. WOODS, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jonathan Isserow et al. (“Appellants”) seek our review under
35 U.S.C. § 134 of rejected claims 1, 3, 5, 12, 13, and 15–18. Appeal Br. 6.
Claims 2, 4, 6–10, and 20–24 are cancelled. Id. at 5–6. Claims 11, 14, and
19 are not appealed. Id.; see also Reply Br. 2. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM and ENTER NEW GROUNDS OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b).
Appeal 2012-009776
Application 11/974,401

2
CLAIMED SUBJECT MATTER
The claims are directed to a band for beverage containers. See, e.g.,
Appeal Br., Claims App. Claim 1 is the sole independent claim and is
reproduced below with emphasis on the relevant claim limitations.
1. A combination comprising:
a personal beverage container; and
a band disposed on the personal beverage container,
wherein the band distinguishes said beverage container from
another user's personal beverage container, said band having
at least two first portions and at least two second
portions;
the first portions being a stretchable material having first
and second ends, and the second portions being made from
ribbon also having first and second ends;
wherein the first end of each first portion is permanently
attached to the first end of a second portion, and the second end
of each second portion is permanently attached to a second end
of a second portion, to form a continuous loop in the shape of a
rectangular strip; and
wherein the first portions are flush with the second
portions.

THE REJECTIONS
The Examiner has rejected (Answer 4–6):
(i) claim 11 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which applicant regards as the invention; and
(ii) claims 1, 3, 5, and 11–19 under 35 U.S.C. § 103(a) as being
unpatentable over Howard (US 381,879, issued Apr. 24, 1888) in view of
Mariano (US 2,322,461, issued June 22, 1943) and Cohen (US 1,397,079,
issued Nov. 15, 1921).
App
App

see a
In re
Boar
Exam
porti
porti

1 Ho
whic
eal 2012-0
lication 11
Appellan
lso Appea
Berger, 2
d did not e
Rejectio
In reject
iner finds
on A, A’ a
Figures
Figures
ons A, A’

ward refer
h are prefe
09776
/974,401
Rejection
ts indicate
l Br. 6. T
79 F.3d 97
rr in susta
n (ii): Cl
ing claim
that How
nd second
1 and 2 of
1 and 2 de
and second

s to A, A’
rably mad
AN
(i): Clai
that this
herefore, w
5, 984–98
ining a rej
aims 1, 3,
C
1and its de
ard disclo
portions B
Howard a
pict Howa
portions

as elastic p
e of paper
3
ALYSIS
m 11 as B
rejection is
e summar
5 (Fed. Ci
ection not
5, and 11–
laim 1
pendent cl
ses a band
, B’ made
re reprodu
rd’s “band
B, B’.
ieces and
. Howard
eing Inde
not appea
ily sustain
r. 2002) (h
contested
19 as Bei
aims 3, 5,
having a s
from ribb
ced below
” compris
B, B’ as n
, col. 2, ll.
finite
led. Repl
this rejec
olding tha
on appeal
ng Unpat
and 11–19
tretchable
on.1 Answ
:

ing stretch
on-elastic
1–3 and 3
y Br. 2;
tion. See
t the
).
entable
, the
first
er 5.
able first
parts,
4–37.
App
App

beve
cont
in th
a con
porti
but f
porti
teach
easy

eal 2012-0
lication 11
The Exa
rage conta
ainer C an
e invention
tainer.” A
Figure 1
Figure 1
With res
ons,” the E
inds that M
ons, also d
ing of Ma
to manufa
09776
/974,401
miner furt
iner, but d
d that it wo
of Howa
nswer 5–
of Cohen
depicts C
pect to the
xaminer f
ariano di
enoted as
riano in th
cture.” A
her finds t
etermines
uld have
rd as a “sim
6.
is reprodu
ohen’s con
claimed “
inds that H
scloses fir
3, and tha
e inventio
nswer 6; s

4
hat Howar
that Cohe
been obvio
ple and i
ced below
tainer C.
first portio
oward do
st portions
t it would
n of Howa
ee also An
d does not
n teaches a
us to use
nexpensiv
:

ns are flu
es not disc
3 flush wi
have been
rd becaus
swer 8.
disclose a
personal
Cohen’s c
e way of i
sh with the
lose this l
th the seco
obvious “
e it is simp
personal
beverage
ontainer C
dentifying
second
imitation,
nd
to use the
le and

App
App

cons
one a
First
fails
In re
discl
seco
Spec
to pr
havi
flush
How
inclu
relia
1, 3,

eal 2012-0
lication 11
The rele
Figure 2
trues as th
nother.
Portions F
At the ou
to disclose
viewing th
oses, “for
nd portion
. 13, ll. 10
ovide that
ng the sam
In light o
with part
ard, Figs.
Accordin
des each o
nce on Ma
5, and 11–
09776
/974,401
vant portio
depicts M
e claimed
lush with
tset, we d
the first p
e Specific
example, t
or portion
–11 (emph
flush is an
e widths.
f the Spec
s B, B’ in t
1 and 2.
gly, we fi
f the claim
riano is cu
19.
n of Mari
ariano’s b
first portio
Second Po
isagree wi
ortions ar
ation, the
he first po
s, or they
asis added
alogous to

ification,
hat A, A’ a
nd that the
ed limitat
mulative a

5
ano’s Figu
eads or blo
ns and sec
rtions
th the Exa
e flush wit
only refere
rtion or po
can indepe
). Import
first port
we find th
nd B, B’ h
combinat
ions. Con
nd not rel
re 2 is rep

cks 3, wh
ond portio
miner’s fi
h second p
nce to “flu
rtions can
ndently b
antly, the
ions and s
at Howard
ave the sa
ion of How
sequently
ied on by
roduced b
ich the Ex
ns being f
nding that
ortions.”
sh” that w
be flush w
e of differi
Specificat
econd por
’s pieces A
me widths
ard and C
, the Exam
us in rejec
elow:
aminer
lush with
“Howard
Answer 6
e find
ith the
ng widths.
ion appear
tions
, A’ are
. See
ohen
iner’s
ting claim
.
”
s
s
Appeal 2012-009776
Application 11/974,401

6
Appellants’ Arguments
In contesting the rejection, Appellants present several arguments,
which we address separately, below. For clarity, we adopt some of
Appellants’ headings in addressing each argument.
(1) Howard does not teach that the second portions can be made of
ribbon
Appellants first argue that Howard does not teach that B, B’, which
the Examiner construes as the claimed “second portions,” are made of
ribbon. See Appeal Br. 11–14; see also Reply Br. 2–3. In support of their
argument, Appellants provide a dictionary definition of ribbon that defines
ribbon as “[a] narrow strip or band of fine fabric, such as satin or velvet,
finished at the edges and used for trimming, tying, or finishing.” Appeal Br.
14 (citing Free Online Dictionary) (emphasis added). Appellants further
argue that Howard’s parts B, B’, which are preferably made of paper, cannot
reasonably be construed as the claimed “ribbon,” as ribbon material is
stronger and does not absorb liquid, for example. See Appeal Br. 12–14.
In referring to the dictionary, we find that ribbon can also be defined
as a “long thin strip,” and that a person of ordinary skill in the art would
reasonably understand that a ribbon is not necessarily limited to fine fabric,
but may also be made of other materials, so long as it remains a “long thin
strip.” The American Heritage College Dictionary, 3rd Ed. (2000).
Furthermore, we find nothing in Appellants’ Specification that precludes
construing “ribbon” to exclude paper, such as the paper “ribbons” B, B’
disclosed in Howard. See, e.g., Spec., pages 9 and 12–14.
Furthermore, we find that Appellants’ proposed construction of the
claimed term “ribbon” is inconsistent with its own claims. Independent
Appeal 2012-009776
Application 11/974,401

7
claim 1 recites, “the second portions being made from ribbon.” Appeal Br.,
Claims App. Dependent claim 14, on the other hand, recites, “the second
portion is made from elastic, paper, plastic, lycra, spandex, vinyl, elastane,
rubber or cellophane.” Id. (emphasis added). Importantly, dependent claim
14 further limits “ribbon” material to be made of paper. Therefore, a broad
but reasonable construction of the claimed term “ribbon” in claim 1 would
include a ribbon made of paper. Moreover, if we were to adopt Appellants’
proposed narrow construction of “ribbon,” dependent claim 14 would be
indefinite and would fail to meet the requirements of 35 U.S.C. § 112,
second paragraph.
Appellants further argue that “Howard teaches away from the use of
ribbon.” Appeal Br. 14 (citing Howard, col. 1, ll. 21–26) (emphasis added).
As we find that Howard’s paper part B, B’ can reasonably be construed as
the claimed “ribbon,” Appellants’ argument that Howard teaches away from
ribbons does not indicate error in the rejection.
For the foregoing reasons, we are not persuaded by Appellants’
argument and determine that Howard’s non-elastic parts B, B’ can
reasonably be construed as the claimed “second portions being made from
ribbon.”
(2) Cohen does not teach a personal beverage container
Appellants also argue that Cohen’s container C is not a beverage
container and that, although Cohen discloses container C for holding
“goods,” “goods” do not include beverages. See Appeal Br. 14–15; see also
Reply Br. 3.
The claim does not require that the personal beverage container
contain a beverage. In addition, as the Examiner reasonably finds, “Cohen
Appeal 2012-009776
Application 11/974,401

8
clearly discloses the container C is for holding goods[, and that a] beverage
is also considered goods.” Answer 7. As Appellants have not provided
persuasive evidence as to why container C cannot contain a personal
beverage, we are not persuaded by Appellants’ argument that container C
cannot be construed as the claimed “personal beverage container.”
(3) Mariano does not teach that the first portions are flush with the
second portions
For the reasons discussed, supra, we do not rely on Mariano for
teaching the claimed “first portions are flush with the second portions.” As
such, we do not address Appellants’ arguments as they are no longer
relevant to the current rejection.
(4) A person skilled in the art would not be motivated to combined [sic]
the references
Appellants argue that “one of ordinary skill in the art would not be
motivated to combine an invention to hold papers [as disclosed in Howard]
together with an invention of commercial labeling using a band and a
separate tag [as disclosed in Cohen].” Appeal Br. 16–17; see also Reply Br.
3–4 (emphasis added)
As we mention earlier, in combining Howard’s invention with
Cohen’s container C, the Examiner determines that “it would have been
obvious to one of ordinary skill in the art at the time of invention to use the
teaching of Cohen in the invention of Howard since it is simple and
inexpensive way of identifying a container.” Answer 5–6.
Although Cohen discloses labeling commercial packages, as
emphasized by Appellants, Cohen also discloses labeling other articles, as
well. Notably, Cohen discloses that “[t]he object of my invention is to
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Application 11/974,401

9
afford simple, inexpensive, but effective means for detachably labeling
commercial packages and articles.” Cohen, col. 1, ll. 9–12 (emphasis
added).
Similarly, although Howard discloses a band for holding papers, as
also emphasized by Appellants, Howard also discloses a band for holding
articles, as well. Notably, Howard discloses that “[m]y invention relates to
that class of bands, more or less elastic, that are used for holding together
papers or other articles.” Howard, col. 1, ll. 8–10 (emphasis added).
Accordingly, we are not persuaded by Appellants’ arguments and find
that a person of ordinary skill in the art would be motivated to combine
Cohen’s container C to Howard’s invention, for the purpose of providing a
“simple and inexpensive way of identifying a container,” as the Examiner
determines. Answer 5–6.
Furthermore, as our rejection does not rely on Mariano for teaching
the claimed “first portions are flush with the second portions,” we do not
address Appellants’ argument regarding the motivation to combine Mariano
with the other cited art.
For these reasons, we sustain the rejection of claim 1 under
35 U.S.C. § 103(a) as being unpatentable over Howard and Cohen. Because
our analysis relies upon facts and reasoning that the Examiner did not use,
however, we denominate the affirmance of the rejection of this claim as a
new ground of rejection pursuant to 37 C.F.R. § 41.50(b).
Claim 5
Claim 5 depends from claim 1 and further recites, “wherein the first
and second portions are attached using gluing, sewing or a staple.” Appeal
Br., Claims App. The Examiner finds that Howard discloses that parts A, A’
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Application 11/974,401

10
can be “cemented or otherwise fastened to” parts B, B’ and that “[c]emented
is considered gluing.” Answer 8; see also Howard, col. 2, ll. 28–30.
In contesting the rejection, Appellants argue that the Examiner’s
rejection is inadequate and that “Howard does not teach the specific
limitations introduced by claim 5.” Appeal Br. 18.
The Patent Rules require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art. 37 C.F.R.
§ 41.37(c)(1)(iv); see also In re Lovin 652 F.3d 1349, 1357 (Fed. Cir. 2011).
We find that Appellants’ conclusory statement does not point out, with any
specificity, missing findings or inadequate reasoning in the Examiner’s
proposed rejection. We agree with the Examiner that Howard discloses
“first portions” A, A’ and “second portions” B, B’ “attached using gluing,” as
recited in claim 5. See Answer 8.
For these reasons, we sustain the rejection of claim 5 under
35 U.S.C. § 103(a) as being unpatentable over Howard and Cohen. Because
claim 5 depends from claim 1, however, we denominate the affirmance of
the rejection of this claim as new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b).
Claim 18
Claim 18 depends from claim 1 and further recites, “wherein the
unique band is disposable.” Appeal Br., Claims App. In rejecting this
claim, the Examiner finds that Howard discloses a disposable band as it “is
made of similar materials as appellant’s invention.” Answer 9.
In contesting the rejection, Appellants argue that “Howard does not
include a similar limitation.” Appeal Br. 18.
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Application 11/974,401

11
As similarly explained in connection with claim 5, supra, we find that
Appellants’ conclusory statement does not point out, with any specificity,
missing findings or inadequate reasoning in the Examiner’s proposed
rejection. We agree with the Examiner that Howard discloses a disposable
band, as recited in claim 18. See Answer 9.
For these reasons, we sustain the rejection of claim 18 under
35 U.S.C. § 103(a) as being unpatentable over Howard and the other cited
art. Because claim 18 depends from claim 1, however, we denominate the
affirmance of the rejection of this claim as new grounds of rejection
pursuant to 37 C.F.R. § 41.50(b).
Claims 3, 12, 13, and 15–17
Claims 3, 12, 13, and 15–17 each depend directly from claim 1 and
generally further recite wherein the claimed second portion or band receives
printing or writing, is of a different color, has an advertisement, has a photo,
is personalized, or has a logo or a joke. See Appeal Br., Claims App. In
rejecting these claims, the Examiner finds that “Howard clearly discloses
[the] band can be colored, embossed or otherwise ornamented, as the
manufacture [sic] may desire [and that] it would have been obvious . . . to
use the teaching and use any indicia and color on it for the purpose of
reducing cost and increasing sales.” Answer 6; see also Howard, col. 2, ll.
41–43.
In contesting the rejection of these claims, Appellants argue that “the
Examiner’s arguments do not provide enough support.” Appeal Br. 17–18.
As similarly explained in connection with claims 5 and 18, supra, we
find that Appellants’ conclusory statement does not point out, with any
specificity, missing findings or inadequate reasoning in the Examiner’s
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Application 11/974,401

12
proposed rejection. We agree with the Examiner that it would have been
obvious to use the teaching of Howard and “use any indicia and color on it
for the purpose of reducing cost and increasing sales.” See Answer 6.
For these reasons, we sustain the rejection of claims 3, 12, 13, and 15–
17 under 35 U.S.C. § 103(a) as being unpatentable over Howard and the
other cited art. Because claims 3, 12, 13, and 15–17 depend from claim 1,
however, we denominate the affirmance of the rejection of these claims as
new grounds of rejection pursuant to 37 C.F.R. § 41.50(b).
Claims 11, 14, and 19
Appellants indicate that the rejection to claims 11, 14, and 19 is not
appealed. Reply Br. 2; see also Appeal Br. 6. Therefore, we sustain the
rejection to these claims, albeit with the additional facts and reasoning we
used in rejecting independent claim 1 discussed, supra. Accordingly, we
denominate the affirmance of the rejection of claims 11, 14, and 19 as new
grounds of rejection pursuant to 37 C.F.R. § 41.50(b).
NEW GROUND OF REJECTION
Claims 1, 3, 5, and 11–19 as Indefinite Under 35 U.S.C. § 112, ¶ 2
We enter a NEW GROUND OF REJECTION of claims 1, 3, 5, and
11–19 under 35 U.S.C. § 112, second paragraph, for indefiniteness.
Claim 1 recites, in part, “the second end of each second portion is
permanently attached to a second end of a second portion.” Appeal Br.,
Claims App.
It is unclear to us how a second end of each second portion is
permanently attached to a second end of a second portion. Stated
differently, it is unclear to us how a second end of a second portion attaches
to itself. Based on our reading of the Specification, it appears to us that the
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Application 11/974,401

13
Appellants may have instead intended to claim that the “second end of each
second portion is permanently attached to a second end of a first portion.”
Accordingly, claim 1 it does not apprise a person of ordinary skill in the art
of its scope, and it is invalid under 35 U.S.C. § 112, second paragraph.
In view of the foregoing, we find that claim 1, and its dependent
claims 3, 5, and 11–19, are indefinite and reject these claims on that basis.
SUMMARY
The Examiner’s decision to reject claim 11 under 35 U.S.C. § 112,
second paragraph, as being indefinite is affirmed.
The Examiner’s decision to reject claims 1, 3, 5, and 11–19 under
35 U.S.C. § 103(a), as unpatentable over Howard and Cohen is affirmed and
denominated as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b).
Furthermore and as provided, supra, we enter a NEW GROUND OF
REJECTION of claims 1, 3, 5, and 11–19 under 35 U.S.C. § 112, second
paragraph, as being indefinite.
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” 37
C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds 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
prosecution will be remanded to the examiner. . . .
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Application 11/974,401

14
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof
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; 37 C.F.R. § 41.50(b)

Klh