Ex Parte Lovett

Board of Patent Appeals and Interferences

Jan 25, 2012

11934205 (B.P.A.I. Jan. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AMY LEE LOVETT
____________

Appeal 2009-014847
Application 11/934,205
Technology Center 3700
____________

Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Amy Lee Lovett (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting under 35 U.S.C. § 103(a) claims 1-4, 6-11, 14,
and 15 as unpatentable over Oakley (US 174,637, issued Mar. 14, 1876);
claims 12 and 13 as unpatentable over Oakley and Green (US 4,106,124,
issued Aug. 15, 1978); and claim 16 as unpatentable over Oakley and
Bjelland (US 2005/0125878 A1, published Jun. 16, 2005). Claim 5 has been
canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to a scarf 10. Spec., para. [0001] and
fig. 1.
Claim 1, the sole independent claim, is representative of the subject
matter on appeal and reads as follows:
1. A scarf for providing warmth when wrapped around the neck of
a wearer and for use as a cheering device when not worn by the
wearer, the scarf comprising:
a plurality of stacked layers of rectangularly shaped material,
wherein each layer of material has two short sides of a first equal
dimension and two long sides of a second equal dimension, said
second dimension being greater than said first dimension, and a
longitudinal axis parallel to and equidistantly spaced from said two
long sides;
each layer of said plurality of stacked layers having in each of
said long sides thereof a series of cuts extending from an outer edge
toward said longitudinal axis but not reaching said longitudinal axis;
each of said cuts extending completely through the thickness of
said layer of material so as to form a plurality of supple, individually
protruding, pieces of material along the entire length of both long
sides of each layer of said plurality of stacked layers of material;
said plurality of stacked layers of rectangularly shaped material
being securely sewn together along said longitudinal axis;
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each layer of said plurality of stacked layers of rectangularly
shaped material being colored in accordance with a predetermined
color scheme, and wherein said first dimension is between three and
six inches, and wherein said second dimension is about five feet.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

ANALYSIS
The obviousness rejection over Oakley
Appellant has not presented arguments for the patentability of claims
2-4, 6-11, 14, and 15 apart from claim 1. Therefore, in accordance with 37
C.F.R. § 41.37(c)(1)(vii), we select claim 1 as the representative claim to
decide the appeal of the rejection of these claims, with claims 2-4, 6-11, 14,
and 15 standing or falling with claim 1.
Appellant argues that: (1) Oakley’s trimmings do not constitute a
“scarf” for providing warmth and for use as a cheering device (Br. 4-5); (2)
Oakley does not disclose coloring or printing its articles (Br. 5-6); and (3)
Oakley does not disclose that its articles have a first dimension (width) of
three to six inches and a second dimension (length) of about five feet (Br. 6-
7).

Appellant’s First Argument
We are not persuaded by Appellant’s first argument because, like the
Examiner, we find that Oakley discloses trimmings such as ladies’ neck-ties
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similar to a boa1 or a chenille2. Oakley, col. 1, para. 1 and col. 2, para. 2.
See also, Ans. 7. We agree with the Examiner that, “[i]t is well known that
a boa is worn in the same way as a scarf.” See Ans. 7. Furthermore, it is
well established that if the body of a claim fully and intrinsically sets forth
all of the limitations of the claimed invention, and the preamble merely
states, for example, the purpose or intended use of the invention, rather than
any distinct definition of any of the claimed invention’s limitations, then the
preamble is not considered a limitation and is of no significance to claim
construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
1305 (Fed. Cir. 1999). The recitation of an intended use for an old product
does not make a claim to that old product patentable. In re Schreiber, 128
F.3d 1473, 1477 (Fed. Cir. 1997). In this case, we agree with the Examiner
that Oakley’s ladies’ neck-ties appear reasonably capable of providing
warmth and use as a cheering device at a sporting event. See Ans. 8.
Moreover, Appellant has not provided any evidence to show that the ladies’
neck-ties of Oakley are not capable of providing warmth and use as a
cheering device at a sporting event.
Hence, we find that the claimed purpose of Appellant’s invention, “for
providing warmth when wrapped around the neck of a wearer and for use as
a cheering device when not worn by the wearer” does not result in any
structural differences of the claimed elements of Appellant’s scarf.

1 An ordinary and customary meaning of the term “boa” is “a long,
fluffy scarf of fur, feathers, or delicate fabric.” MERRIAM WEBSTER’S
COLLEGIATE DICTIONARY (10th Ed. 1997).
2 An ordinary and customary meaning of the term “chenille” is “1: a
wool, cotton, silk, or rayon yarn with protruding pile; also: a pile-fabric with
a filling of this yarn.” Id.
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Appellant’s Second Argument
The Examiner found that “[i]t is well known in the art to color scarves
or any other type of apparel” and as such, “[i]t would be obvious that the
material [of Oakley] can be colored or printed with designs.” Ans. 5 and 8.
We agree. Although Oakley does not explicitly disclose that its trimmings
are colored, as Appellant argues, nonetheless, we agree with the Examiner
that apparel is known to be colored in a variety of designs. Hence, we do
not agree with Appellant that, “the Examiner has improperly set forth
conclusory statements with no rational underpinning.” Br. 6. As noted by
the Examiner, “[i]t is well known in the art to manufacture scarves in a
variety of colors and designs.” Ans. 8. Moreover, Appellant has not
provided any evidence to show that apparel, such as the trimmings of
Oakley, are not colored. Lastly, we note that matters relating to
ornamentation only (color or printing pattern) which have no mechanical
function ordinarily cannot be relied upon to patentably distinguish the
claimed invention from the prior art. In re Said, 161 F.2d 229, 231 (CCPA
1947).

Appellant’s Third Argument
Independent claim 1 requires a scarf that has a first dimension (width)
of three to six inches and a second dimension (length) of about five feet.
Br., Claims Appendix. The Examiner reasonably found that “[i]t is also well
known in the art that scarves have a dimension that are similar to the claims
requirements.” Ans. 8. The Appellant does not appear to deny in the Brief
that these dimensions were well known.
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Hence, since Oakley discloses trimmings such as ladies’ neck-ties
similar to a boa or a chenille, that are wrapped around a wearer’s neck, we
agree with the Examiner that it would have been obvious to a person of
ordinary skill in the art to provide the articles of Oakley with a first
dimension (width) of three to six inches and a second dimension (length) of
about five feet “so that one may wrap it around the neck to provide warmth.”
Id. An artisan must be presumed to know something about the art apart from
what the references disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA
1962). Moreover, “[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007).
In conclusion, for the foregoing reasons, the rejection of claim 1, and
claims 2-4, 6-11, 14, and 15 standing or falling with claim 1, under 35
U.S.C. § 103(a) as unpatentable over Oakley, is sustained.

The obviousness rejection over Oakley and Green
With respect to the rejection of claims 12 and 13 as unpatentable over
Oakley and Green, Appellant argues that Green fails to disclose: (1) a
“scarf” for providing warmth and for use as a cheering device; (2) a “scarf”
having a predetermined color scheme; and (3) a “scarf” having a first
dimension (width) of three to six inches and a second dimension (length) of
about five feet. Br. 8. We are not persuaded by Appellant’s argument,
because as shown above, the Examiner used the disclosure of Oakley to
show the above-recited limitations. Accordingly, we shall also sustain the
rejection of claims 12 and 13 over the combined teachings of Oakley and
Green.
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The obviousness rejection over Oakley and Bjelland
Claim 16 requires “a pennant attached to at least one of said two short
sides.” Br., Claims Appendix. The Examiner found that Oakley does not
disclose a scarf with a pennant. Ans. 6. However, the Examiner found that
Bjelland discloses a scarf including a body 11 having “one or more insignia
20, which will include but not limited to numbers, photos, buttons, badges,
or any other suitable decorations or the like.” Ans. 7. The Examiner then
concluded that “[t]his would also include pennants.” Id. Hence, according
to the Examiner, “[i]t would have been obvious to one of ordinary skill in
the art at the time the invention was made to use the insignia of Bjelland to
modify the scarf of Oakley in order to provide an aesthetically pleasing scarf
to the wearer.” Id.
At the outset, we note that although a “pennant” is a type of
decoration, as the Examiner opines, Bjelland does not disclose a pennant.
Although we appreciate that a person of ordinary skill would know that a
pennant constitutes a “decoration,” nonetheless, the Examiner’s reasoning to
specifically select a pennant as opposed to the other types of decorations
specifically taught by Bjelland, i.e., numbers, photos, buttons, and badges,
amounts to a per se rule that all forms of decoration are functionally
interchangeable for use in decorating scarves. Reliance on per se rules of
obviousness is legally incorrect and is inconsistent with section 103, which,
according to Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966) and its
progeny, entitles an applicant to issuance of an otherwise proper patent
unless the PTO establishes that the invention as claimed in the application is
obvious over cited prior art, based on the specific comparison of that prior
art with claim limitations. In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir.
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1995). See also In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). In this
case, the Examiner has not provided factual evidence to show why a person
of ordinary skill in the art would have specifically chosen, from a plurality
of possible types of decorations, a pennant to modify the scarf of Oakley.
Accordingly, for the foregoing reasons, the rejection of claim 16 as
unpatentable over Oakley and Bjelland cannot be sustained.

SUMMARY
The decision of the Examiner is affirmed as to claims 1-4 and 6-15,
and reversed as to claim 16.
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-IN-PART

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