Ex Parte Jensen et al

Patent Trial and Appeal Board

Dec 21, 2012

11446899 (P.T.A.B. Dec. 21, 2012)

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.
11/446,899 06/05/2006 Bradford Brian Jensen 518320-725065 2590
24325 7590 12/24/2012
PATENT GROUP 2N
JONES DAY
NORTH POINT
901 LAKESIDE AVENUE
CLEVELAND, OH 44114
EXAMINER
MCMANMON, MARY ELIZABETH
ART UNIT PAPER NUMBER
2875
MAIL DATE DELIVERY MODE
12/24/2012 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 BRADFORD BRIAN JENSEN, ROGER DONN BENTLEY, and
KIM IRWIN McCAVIT
_____________

Appeal 2010-007565
Application 11/446,899
Technology Center 2800
______________

Before DAVID M. KOHUT, JOHNNY A. KUMAR, and
BRYAN F. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-007565
Application 11/446,899

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This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 5-11 and 18-25. App. Br. 2. Claims 1-4 and 12-17 are
canceled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

INVENTION
The invention is directed to an artificial candle that has a tube
simulating a candle and an electric lamp simulating a candle flame. See
Spec. 1:13-14.
Claims 5 and 10 are exemplary of the invention and reproduced
below:
5. An artificial candle comprising:
a tube simulating a candle and having top and bottom
ends;
a post extending upward from the top end;
a nub mounted on the post and diametrically larger than
the post; and
a flame piece simulating a candle flame and having a
bore configured to receive the nub, and in its condition before
receiving the nub the bore having a lower section diametrically
smaller than the nub and an upper section diametrically larger
than the lower section, with a first surface circumferentially
surrounding and bounding the lower section;
the flame piece being configured to be manually pushed
down onto the nub by a user, with the first surface being
elastically stretched by the nub as the nub passes through the
lower section toward the upper section, and for the stretching of
the first surface to be relieved by the nub arriving at a detent
position in which the nub is totally within the upper section,
and for the flame piece to remain in the detent position if not
subjected to further manual force, but able to be manually
pushed further downward beyond the detent position.

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Application 11/446,899

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10. An artificial candle apparatus comprising:
a tube simulating a candle and having top and bottom
ends;
a post extending upward from the top end;
a lamp mounted on the post; and
flame pieces simulating a candle flame, configured to be
interchangeably mounted over the lamp by a user, and differing
from each other in size, shape and/or color.

REFERENCES
Gerlat US 3,233,093 Feb. 1, 1966
Bordner US 5,046,632 Sep. 10, 1991
Rong US 2003/0043579 A1 Mar. 6, 2003

REJECTIONS AT ISSUE
Claims 5-9, and 18-21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Gerlat and Bordner. Ans. 3-7.
Claim 10, 11 and 22-25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Gerlat and Rong. Ans. 7-12.

ISSUES
1. Did the Examiner err in combining Gerlat and Bordner and
finding that the combination teaches or suggests “the stretching
of the first surface to be relieved by the nub arriving at a detent
position in which the nub is totally within the upper section,
and for the flame piece to remain in the detent position if not
subjected to further manual force, but able to be manually
Appeal 2010-007565
Application 11/446,899

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pushed further downward beyond the detent position,” as
recited in claim 5?
2. Did the Examiner err in combining Gerlat and Rong and
finding that the combination discloses “flame pieces simulating
a candle flame, configured to be interchangeably mounted over
the lamp by a user, and differing from each other in size, shape
and/or color,” as recited in claim 10?
ANALYSIS
35 U.S.C. § 103(a) - Gerlat and Bordner
Claims 5-9, and 18-21
Appellants argue “Bordner's bucket lid is so different from Gerlat’s
flame piece in terms of field of endeavor, functional purpose, structure and
desirable traits, that the skilled person in Gerlat's field would not have
considered its features relevant, beneficial or applicable to Gerlat’s candle
flame piece.” This argument is not persuasive. Prior art references are
considered analogous if they are “from the same field of endeavor,
regardless of the problem addressed,” or if they are “reasonably pertinent to
the particular problem with which the inventor is involved.” In re Clay, 966
F.2d 656, 658-59 (Fed. Cir. 1992). Here, both Gerlat and Bordner are
concerned with the problem of providing a cover over another component.
We agree with the Examiner (Ans. 12) that the references are not so
different as to be considered nonanalogous.
Claim 5 recites a flame piece is “manually pushed further downward
beyond the detent position.” Appellants argue that Bordner does not
disclose this limitation. App. Br. 8. Specifically, Appellants argue that
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“Bordner’s lid cannot be pushed downward beyond that detent position as
claimed; it is prevented from doing so by abutment of the lid's gasket 86
(Fig. 6) against the bucket rim 18.” Id. We are not persuaded by this
argument.
Bordner teaches that container has a lid with a latching detent 76 and
a lid stacking surface 72. Bordner, Fig. 6. Bordner teaches that the
container has a secondary detent 56. Id.
Bordner’s figures 1 and 6 are represented below:

Figures 1 and 6 show two views of the container and lid assemblage.
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According to figure 6 above, it is apparent that the lid of Bordner is
capable of being pressed onto the container such that lid stacking surface 78
expands and comes to rest just below secondary detent 56. Bordner, Fig. 6;
see also Ans. 4, 13. . Secondary detent 56 is the claimed nub. See Ans. 4,
13. Thus, Bordner teaches “being configured to be manually pushed down
onto the nub by a user, with the first surface being elastically stretched by
the nub as the nub passes through the lower section toward the upper
section, and for the stretching of the first surface to be relieved by the nub
arriving at a detent position in which the nub is totally within the upper
section.” Additionally, since secondary detent holds lid stacking surface 78
in place, Bordner teaches “remaining in the detent position if not subjected
to further manual force.” See Id.
Claim 5 also recites that the flame piece is “able to be manually
pushed further downward beyond the detent position.” Appellants argue that
“Bordner discloses no part that can, as claimed, be pushed lower beyond its
detent position.” App. Br. 8. However, the Examiner relies on the
combination of Bordner and Gerlat to teach this limitation. Therefore,
Appellants’ argument does not respond to the Examiner’s specific findings.
Nonetheless, we agree with the Examiner that one of ordinary skill in the art
would recognize that to accommodate the combination of Bordner and
Gerlat, plastic hood 30 would be made of an elastic material, such as
disclosed in Bordner (Bordner 2:22-29), such that plastic hood 30, as shown
in Gerlat Fig. 2, can be pressed further down. Ans. 4. Thus, the
combination of Bordner and Gerlat teaches the limitation the flame piece is
“able to be manually pushed further downward beyond the detent position.”
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Claims 6-9 and 18-21 are not separately argued and depend from
claim 5 and thus fall with claim 5. Thus, for the reasons stated above we
affirm the Examiner’s decision to reject claims 5-9, and 18-21.
35 U.S.C. § 103(e) - Gerlat and Rong
Claims 10, 11 and 22-25
Claim 10 recites “flame pieces simulating a candle flame, configured
to be interchangeably mounted over the lamp by a user, and differing from
each other in size, shape and/or color.” Appellants argue that:
“in contrast to the claim limitation of the differing cover pieces
simulating the same thing - specifically a flame - each of Rong's cover
pieces simulates a different thing: one simulates a heart, another
simulates a flower, another a star, etc. No two cover pieces of Rong
simulate the same thing as claimed, much less the claimed "flame".
Therefore, the references, even combined, lack the limitation of
differing "flame pieces simulating a candle flame”
App. Br. 10. (Emphasis in original.) However, it has long been held that
features that relate to “ornamentation only and have no mechanical function
whatsoever” cannot be relied upon for patentability of a claim in a utility
patent application. In re Seid, 161 F.2d 229, 231 (CCPA 1947). We agree
with the Examiner (Ans. 13-14) that the simulation of a candle flame is
purely ornamental, and as the ornamentation is the only argued claim
element, we sustain the rejection of claim 10.
Claims 11 and 22-25 are not separately argued and depend from claim
10 and thus fall with claim 10. Thus, for the reasons stated above we affirm
the Examiner’s decision to reject claims 5-9, and 18-21.
DECISION
The Examiner’s decision to reject claims 5-11 and 18-25 is affirmed.
Appeal 2010-007565
Application 11/446,899

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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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