Ex Parte Kelly

Board of Patent Appeals and Interferences

Jul 28, 2005

09771782 (B.P.A.I. Jul. 28, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DANIEL P. KELLY
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Appeal No. 2005-1416
Application No. 09/771,782
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ON BRIEF
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Before GARRIS, PAK, and JEFFREY T. SMITH, Administrative Patent Judges.
JEFFREY T. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 37 to
43 and 47 to 49, which are all of the claims pending in this application.
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BACKGROUND
Appellant's invention relates to methods of making necklaces. (Specification, p.
1). Representative claim 37 appears below:
37. A method of making necklaces, comprising the steps of:
providing a mold of sports projectile shaped beads for a necklace;
placing a string or other line or cord in the mold;
supplying plastic to the mold;
removing from the mold a necklace formed of sports projectile shaped
beads direct-molded onto the string or other line or cord.
In addition to the prior art discussed in the specification, the Examiner relies on
the following reference in rejecting the appealed claims are:
Bateholts 1,958,841 May 15, 1934
Claims 37-43 and 47-49 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bateholts in view of the admitted prior art mentioned on page 1 of
the present patent application. (Answer, pp. 5-15). We affirm the rejection.
Rather than reiterate the conflicting viewpoints advanced by the Examiner and
the Appellant regarding the above-noted rejection, we make reference to the Answer
(mailed June 28, 2004) and the non-final office action mailed March 31, 2003 for the
Examiner's reasoning in support of the rejection, and to the Brief (filed April 15, 2004)
for the Appellant’s arguments there against.
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We initially note that Appellant asserts that for purposes of appeal that the
claims do not stand or fall together. (Brief, p. 3). However, we find no separate
arguments as to the separate claims as required by 37 CFR § 1.192(c)(7) (2004).
Accordingly, all of the claims will stand or fall together and we select claim 37 as
representative of the claims on appeal and limit our consideration thereto.
OPINION
We have carefully reviewed the claims, specification and applied prior art,
including all of the arguments advanced by both the Examiner and Appellant in
support of their respective positions. This review has led us to conclude that the
Examiner's § 103 rejections are well founded. See In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468,
1471-1472, 223 USPQ 785, 787-788 (Fed. Cir. 1984).
The Examiner has determined, Office action mailed March 31, 2003, that
Bateholts teaches the claimed method of making a necklace. (Bateholts , p. 1, Il.
1-10; figs 1-4). According to the Examiner, Bateholts discloses providing a mold of
beads for a necklace wherein the beads can be spherical or cylindrical and placing a
string or other line or cord in the mold. (Figs 1-4). The product produced by the
method of Bateholts is a necklace formed of beads directly molded onto the string or
line or cord. The Examiner asserted that Bateholts does not teach the beads as
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Application No. 09/771,782
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having a sport projectile shape. The Examiner determined that the prior art disclosed
in the specification describes necklaces having baseball or football beads, i.e., beads
having a sport projectile shape. The Examiner concluded that it would have been
obvious to a person of ordinary skill in the art to perform the method of making a
necklace, disclosed by Bateholts, employing molds for beads in the shape of a sport
projectile. (Office action mailed March 31, 2003, p. 3).
Appellant argues that the prior art discussed in the specification merely shows
that some elements of the claimed invention are old and there is no suggestion to
combine the references. (Brief, pp. 3-4).
We do not find Appellant’s arguments persuasive. The Examiner finds, and
Appellant does not specifically dispute, that a person of ordinary skill in the art would
have been motivated to “combine or modify the teachings of Bateholts with the
admitted prior of record is to produce diverse product lines of beaded necklaces, i.e.,
beaded necklaces with varying designs [inclusive of a sport projectile shape] which
have appeal to a wide range of customers, and is found in knowledge generally
available to one of ordinary skill in the art.” (Answer, p. 3). The motivation for
combining or modifying the teachings of the prior art to produce the claimed invention
can be derived from either in the references themselves or in the knowledge generally
available to one of ordinary skill in the art. A person of ordinary skill in the art would
have reasonably expected that the method described by Bateholts would be useful for
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forming the shape of a sports projectile. "For obviousness under § 103, all that is
required is a reasonable expectation of success." In re O'Farrell, 853 F.2d 894, 904,
7 USPQ2d 1673, 1681 (Fed. Cir. 1988).
In light of the foregoing and for the reasons expressed by the Examiner, it is
our determination that the Examiner has established a prima facie case of
obviousness with respect to the argued claims on appeal.
"Once a prima facie case of obviousness has been established, the burden
shifts to the applicant to come forward with evidence of nonobviousness to overcome
the prima facie case." In re Huang, 100 F.3d 135, 139, 40 USPQ2d 1685, 1689 (Fed.
Cir. 1996). As indicia of obviousness or nonobviousness, such secondary
considerations as commercial success, long felt but unresolved needs, copying by
others, etc., might be utilized to give light to the circumstances surrounding the origin
of the subject matter sought to be patented and, therefore, may be relevant to the
question of obviousness or nonobviousness. Graham v. John Deere, 383 U.S. 1,
17-18 (1966).
Appellant has presented several declarations as evidence of non-obviousness
of the invention. Appellant states “[s]pecifically, the 31 October 2002 declaration is
evidence of copying by others, the 23 January 2003 declaration is evidence of
licensing by others and copying by others, the 29 January 2003 declaration is
evidence of licensing to others, copying by others, and commercial success, and the
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1 We note that the image of the declaration filed July 31, 2003, contained in the official electronic
file does not have the signature of the declarant.
2All of the presented declarations have been presented by Daniel P. Kelly who is the sole inventor
of the present application.
31 July 2003 declaration1 is evidence of licensing to others, copying by others, and
commercial success; all of these are indications of non-obviousness of the
invention.”2 (Brief, pp. 4-5). Appellant also relies on the declaration filed 12 April
2004 for showing the sale of necklaces. (Brief, p. 5).
The Examiner has provided a discussion of the all of the declarations relied
upon by Appellant in the Brief. (Answer, pp. 3-4).
"Evidence of secondary considerations are but a part of the ‘totality of the
evidence' that is used to reach the ultimate conclusion of obviousness."
Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 1483, 44 USPQ2d 1181, 1187
(Fed. Cir. 1997). The usefulness of this type of evidence lies in the fact that it "serves
as a guard against slipping into hindsight" during the determination of obviousness,
Graham, 383 U.S. at 17-18, in that it may demonstrate that the invention, while it
appears to be obvious upon looking back in time with hindsight, really was not.
Stratoflex Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538-39, 218 USPQ 871, 879 (Fed.
Cir. 1983). To properly consider secondary considerations, we must consider all of
the evidence under the Graham factors together. Id.
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3 Appellant has presented several declaration to discuss the various aspects of the secondary
considerations. We will limit our discussion to a representative declaration for each of the discussed
secondary consideration.
In weighing secondary considerations along with the other evidence, the
secondary considerations must be carefully appraised as to evidentiary value. EWP
Corp. v. Reliance Universal, Inc., 755 F.2d 898, 908, 225 USPQ 20, 26 (Fed. Cir.
1985). In some cases, evidence of secondary considerations is highly probative on
the question of obviousness. Richardson-Vicks, 122 F.3d at 1483, 44 USPQ2d at
1187. However, the existence of such evidence does not control the obviousness
determination, it remains in the realm of secondary considerations. Id. A nexus
between the merits of the claimed invention and the evidence of secondary
considerations is required in order for the evidence to be given substantial weight in
an obviousness decision. Stratoflex, 713 F.2d at 1539, 218 USPQ at 879.
Looking at the totality of the evidence, we conclude that the evidence of
licensing to others, copying by others, and commercial success does not outweigh the
evidence of obviousness. Here, claim 37, the sole independent claim, is directed to a
method of making a necklace employing a mold of sports projectile shaped beads for
a necklace. The declarations do not discuss the subject matter of the independent
claim 37, specifically. The discussion of the copying of the invention by others and
the licensing of the invention to others is not directed to the claimed method of making
a necklace.3
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The declaration of July 31, 2004, discusses the copying of necklaces and
losses resulting therefrom. The declaration does not indicate that the
claimed method was in fact copied. The declaration does not specifically indicate that
the copied necklace was manufactured by the claimed method. More importantly, the
declaration does not indicate that there was widespread acceptance and adoption of
the claimed method, much less the unclaimed necklace. See Cable Electric Prods. v.
Genmark, Inc. 770 F.2d 1015, 1028, 226 U.S.P.Q. 881, 889 (Fed. Cir. 1985). ("more
than the mere fact of copying by an accused infringer is needed to make that action
significant to a determination of the obviousness issue."). Thus, Appellant has not
demonstrated that there was widespread acceptance and adoption of the claimed
invention and a nexus between the merits of the claimed method and the copying
discussed in the declaration.
The declaration of October 31, 2002, discusses the licensing of a product to
one company “Innovative Marketing” which sells necklaces. The declaration does not
indicate that the claimed method was in fact licensed. The declaration does not detail
what aspect(s) of the claimed invention was the subject of the licensing agreements.
Thus, a nexus has not been shown for the claimed method and the licensing
discussed in the declaration.
Regarding commercial success, Appellant has failed to prove that the sales
were a direct result of the unique characteristics of the claimed invention. In other
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words, Appellant has not established a nexus between the claimed method of making
a necklace and the alleged commercial success. Sandt Tech. Ltd. v. Resco
Metal and Plastics Corp., 264 F.3d 1344, 1355, 60 USPQ2d 1091, 1098 (Fed. Cir.
2001). (There was no evidence that the better means of attachment improved the
protective capacity of the phones, thereby spurring sales. In other words, nexus was
not proven between this feature, which embodied the difference between the prior art
and claimed invention, and the substantial sales). The declaration do not provide any
factual basis to conclude that the alleged commercial success is due to the claimed
method of making a necklace. The alleged commercial success could be due to other
considerations, such as increased popularity of a sport or a sport franchise unrelated
to the merits of the claimed method or the unclaimed necklace.
Further, Appellant has not established commercial success of the claimed
method, much less the unclaimed necklace. To establish commercial success, there
must be evidence regarding the market sector for the claimed invention and how
much of the market sector is controlled by the claimed invention. However, the
declaration does not identify the market size for the claimed invention or the
unclaimed necklace and how much of the market was controlled by the claimed
invention or the unclaimed necklace. The declarations presented on this record are
devoid of information necessary to establish commercial success.
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Based on our consideration of the totality of the record before us, having
evaluated the prima facie case of obviousness in view of Appellant’s arguments and
evidence, we conclude that the subject matter of claims 37 to 43 and 47 to 49 would
have been obvious to a person of ordinary skill in the art from the combined teachings
of the cited prior art. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992).
CONCLUSION
For the foregoing reasons and those set forth in the Answer, we determine that
the preponderance of evidence weighs in favor of obviousness, giving due weight to
Appellant’s arguments and evidence. Accordingly, the Examiner's rejection under 35
U.S.C. § 103 is affirmed.
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TIME FOR TAKING ACTION
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a)(iv)(effective Sep. 13, 2004; 69 Fed. Reg.
49960 (Aug. 12, 2004); 1286 Off. Gaz. Pat. Office 21 (Sep. 7, 2004)).
Affirmed
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
JTS/kis
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