Ex parte Lawler

Board of Patent Appeals and Interferences

Mar 9, 1999

08497634 (B.P.A.I. Mar. 9, 1999)

Application for patent filed June 30, 1995. According1
to Appellant this application is a continuation of Application
No. 08/205,658, now abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN J. LAWLER
____________
Appeal No. 98-2136
Application No. 08/497,6341
____________
ON BRIEF
____________
Before CALVERT, ABRAMS, and STAAB, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 98-2136
Application No. 08/497,634
2
This is an appeal from the final rejection of claims 2 to
6 and 25, all the claims remaining in the application.
Appellant’s invention concerns a garment having a pocket,
and a toy animal insertable into the pocket. A pictorial
representation of a habitat on the garment is so related to
the pocket that the opening in the pocket coincides with a
representation of an opening into a habitat element (e.g., a
hollow stump) into which the toy animal (e.g., a squirrel) may
be placed. The claims on appeal are reproduced in the
appendix to appellant’s brief.
The reference applied in the final rejection is:
Stocker et al. (Stocker) 5,210,881 May
18, 1993
Claims 2 to 6 and 25 stand finally rejected under 35
U.S.C. § 103 as unpatentable over Stocker.
The basis of the rejection of claim 25, the only
independent claim on appeal, is stated on page 3 of the
examiner’s answer as:
Stocker, Jr. et al. discloses, in
combination, at least one toy animal (12) and a
garment (10) having a pocket (11) with an
opening into the pocket (11) and a pictorial
presentation (30) applied to the garment (10)
Appeal No. 98-2136
Application No. 08/497,634
3
with the representation being of a habitat (i.e.
- a tree; see Stocker, Jr. et al., col. 2, line
63-col. 3, line 29) for the animal wherein the
opening for the pocket is within the pictorial
representation. However, Stocker, Jr. et al.
does not specifically disclose the pictorial
representation as being over at least a portion
of the pocket or the opening of the pocket as
being coincident with the opening of the
interior space. The specific orientation of the
pictorial representation and the content of the
pictorial representation itself is a matter of
design choice for aesthetic purposes.
Accordingly, it would have been obvious to one
having ordinary skill in the art at the time the
invention was made to modify the garment of
Stocker, Jr. et al. to place the pictorial
representation on the pocket for aesthetic
purposes to achieve a desired aesthetic effect.
After fully considering the record in light of the
arguments presented in the appellant’s brief and the
examiner’s answer, we conclude that the claims on appeal are
patentable over Stocker.
In the portion of Stocker referred to by the examiner,
supra, it is disclosed that the garment (shirt) 10 may have a
tree branch printed on it, and the toy 12 "positioned in the
pocket 11 to make it appear that the toy, which may be a koala
bear, is nested on the tree branch" (col. 3, lines 2 to 4).
The examiner further refers to col. 1, lines 39 to 48, wherein
Appeal No. 98-2136
Application No. 08/497,634
4
Stocker discloses an example of "a jungle scene which shows a
tree branch printed on the garment and a teddy bear nested in
the tree branch," and to Stocker’s disclosure at col. 3, lines
16 to 29, that there is "a ‘hide and seek’ aspect to the
arrangement of such a garment pocket and toy, which captivates
the child."
We do not consider that Stocker, and particularly the
disclosure thereof referred to by the examiner, would have
suggested appellant’s claimed structure to one of ordinary
skill in the art. The content of the pictorial representation
is not merely "a matter of design choice for aesthetic
purposes," as the examiner argues, supra, but rather is
related to the structure of the garment in that the opening
into the pocket of the garment is coincident with the opening
into the interior space of the habitat element depicted on the
pocket. Thus, there is a functional relationship between the
pictorial representation on the garment and the structure of
the garment itself. Cf. In re Gulack, 703 F.2d 1381, 1385,
217 USPQ 401, 404 (Fed. Cir. 1983). This relationship is not
taught by Stocker. The fact that Stocker states that the
garment may be printed with a tree branch so that it appears
Appeal No. 98-2136
Application No. 08/497,634
This assumes that koala bears have nests, which we2
doubt.
5
that a toy koala bear in the pocket "is nested on the tree
branch" (col. 3, line 4), does not suggest the claimed
invention because a tree branch is not "a habitat element
which has an interior space," as claimed, and there is no
indication that a nest be printed on the pocket. Further2
militating against any suggestion that a nest, hollow stump,
or other such habitat element with an interior space be
depicted on the pocket 12 of Stocker is the fact that the
pocket is constructed so that the appendages of the toy
protrude from slits in the sides of the pocket, which would
tend to destroy the appearance of the pocket as being a nest
or the like.
We do not regard Stocker’s disclosure concerning the
"hide and seek" aspect of his pocket and toy as being of
significance, as that would be true of any toy which is
insertable into and removable from a pocket.
Accordingly, the rejection will not be sustained.
Appeal No. 98-2136
Application No. 08/497,634
6
Conclusion
The examiner’s decision to reject claims 2 to 6 and 25 is
reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 98-2136
Application No. 08/497,634
7
Boris Haskell
2316 South Eads Street
Arlington, VA 22202
Shereece
Appeal No. 98-2136
Application No. 08/497,634
APJ CALVERT
APJ ABRAMS
APJ STAAB
REVERSED
Prepared: April 12, 2000