Ex Parte Mainetti

Board of Patent Appeals and Interferences

Mar 14, 2010

11168815 (B.P.A.I. Mar. 14, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARIO MAINETTI
____________

Appeal 2010-001970
Application 11/168,815
Technology Center 3700
____________

Decided: March 15, 2010
____________

Before: WILLIAM F. PATE, III, JENNIFER D. BAHR, and LINDA E.
HORNER, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-001970
Application 11/168,815

2
STATEMENT OF THE CASE
Mario Mainetti (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner’s decision rejecting claims 1-3 and 9. The Examiner has
indicated that claims 5-7 and 10-22 are allowable, and has objected to claim
4 as depending from a rejected claim. We have jurisdiction over this appeal
under 35 U.S.C. § 6 (2002).

The Invention
Appellant’s claimed invention is directed to a sizer for mounting on
the metal hook of a hanger, and to a hanger having a crown sizer mounted
thereon, for use, for example, in the retail sales domain. Spec 1.
Claims 1 and 9, reproduced below, are independent.
1. A sizer for a hanger having a body, an
upstanding post on the body and a metal hook
secured in the post, said sizer comprising
a peripheral wall of prismatic form defining
an open base at a bottom end and an open top at an
opposite upper end for passage over the metal
hook and post of the hanger; and
at least one protrusion on an interior of said
wall for engaging with the hanger to secure said
sizer to the hanger.

9. In combination
a hanger having an arched body, an
upstanding post on said body and a metal hook
secured in said post, and
a sizer comprising a peripheral wall of
prismatic form defining an open base at a bottom
end and an open top at an upper end for passage
Appeal 2010-001970
Application 11/168,815

3
over the metal hook and post of the hanger, and at
least one protrusion on an interior of said wall for
engaging with said hanger to secure said sizer to
said hanger.

The Rejection
The Examiner has rejected claims 1-3 and 9 under 35 U.S.C. § 102(b)
as being anticipated by Blanchard (US 4,881,836, issued Nov. 21, 1989).

SUMMARY OF DECISION
We AFFIRM.

ISSUES
In light of the findings and contentions of the Examiner (Ans. 3-5)
and Appellant's arguments (App. Br. 5-7; Reply Br. 4-6), the issues joined in
this appeal are whether Blanchard describes structure satisfying:
(1) the “prismatic form” limitation in claims 1 and 9;
(2) the “pair of said protrusions on each of two opposite sides of said wall
for engaging opposite sides of the hanger” limitation of claim 3;
(3) the “metal hook” limitation of claim 9; and
(4) the “sizer . . . for passage over the metal hook and post of the hanger”
limitation of claim 9.

FACTS PERTINENT TO THE ISSUES
Citing dictionary definitions, Appellant asserts a definition of
“prismatic” as “relating to, resembling, or constituting a prism” and a
definition of “prism” as “a polyhedron with two polygonal faces lying in
Appeal 2010-001970
Application 11/168,815

4
parallel planes and with the other faces parallelograms.” App. Br. 5.
Accordingly, we find that Appellant’s asserted definition of “prismatic” is:
relating to, resembling, or constituting a polyhedron with two polygonal
faces lying in parallel planes and with the other faces parallelograms. The
Examiner does not dispute this definition or offer a different definition.
While we find many dictionary definitions of “prism” additionally
restricting the two faces, frequently referred to as “bases or ends,” lying in
parallel planes to be “congruent” or “equal in size and shape,” we find that
Appellant’s asserted definition is consistent with broader definitions not
containing such a restriction. See, e.g., Webster's New World Dictionary
1131 (David B. Guralnik ed., 2nd Coll. Ed., Simon & Schuster, Inc. 1984);
The American Heritage Science Dictionary (2002),
http://dictionary.reference.com/browse/prism (last visited Mar. 5, 2010).
An ordinary and customary usage of the term “polyhedron” is “[a]
three-dimensional geometric figure whose sides are polygons.” See, e.g.,
The American Heritage Dictionary (2002),
http://dictionary.reference.com/browse/polyhedron (last visited Mar. 5,
2010).
Appellant’s Specification describes a sizer forming an encasing
structure “in a prismatic form” or having a “prismatic configuration.” Spec.
2, 10. A sizer having such a form or configuration is depicted, for example,
in Figure 5.
Appellant’s Figure 5, with annotations added showing our findings of
polygonal faces in parallel planes and parallelogram sides, is reproduced
below:
Appeal 2010-001970
Application 11/168,815

5

Appellant’s Figure 5 is said to be a part perspective view of the sizer
of Figures 2 and 2.1. Spec. 3.
Blanchard depicts a size indicator 40 having a shape satisfying all
aspects of Appellant’s asserted definition of “prismatic,” namely, a
polyhedron having two parallel polygonal faces, with all other sides being
parallelograms. Blanchard, Fig. 17.
Blanchard’s Figure 17, with annotations added showing our findings
of polygonal faces in parallel planes and parallelogram sides, is reproduced
below:
Appeal 2010-001970
Application 11/168,815

6

Blanchard’s Figure 17 is said to be an enlarged, oblique view of a
modified construction for Blanchard’s size indicator element. Blanchard,
col. 2, ll. 47-48.
Blanchard’s size indicator 40 comprises an internal web 44 having a
pair of inwardly directed protrusions, akin to tabs 26 depicted in Figure 6, in
part defining elongated opening 22, extending from each of the two opposite
polygonal faces of the size indicator wall for gripping the hook, by engaging
opposite sides of the hook. Blanchard, col. 3, ll. 24-31, and col. 4, ll. 17-28
(noting that web 44 has the same design and thickness as web 21 depicted in
Fig. 6).
The specially designed web 44 and elongated cross-sectional shape of
Blanchard’s size indicator 40 permit the size indicator to be passed over the
end of a molded plastic hook, while also rendering it suitable for mounting
over “a conventional wire hook,” thereby making the size indicator
substantially uniform in application. Blanchard, col. 1, l. 63 to col. 2, l. 2;
col. 3, ll. 14-22, 36-44, 61-62; col. 4, ll. 17-31 (noting that the “same basic
mounting concept” is used for size indicator 40 as for display element 20).
Appeal 2010-001970
Application 11/168,815

7
When Blanchard’s size indicator 40 is mounted on a hanger having a
conventional wire hook, the center portion of opening 22 of web 44, akin to
center portion 24 of opening 22 of web 21, is sized such that the web seats
firmly against and grips the wire of the hook, and the size indicator is seated
down over the boss 14 of the hanger body so as to press against the boss and
resiliently clamp to the boss. Blanchard, col. 1, ll. 66-68; col. 3, ll. 36-37,
42-44, and 49-56; col. 4, ll. 24-28. Thus, we find that Blanchard teaches use
of the size indicator 40 with a hanger having a conventional wire hook.
Further, we find that when used with a hanger having a conventional wire
hook, Blanchard’s size indicator 40 is capable of passing over the
conventional wire hook and post (boss 14), so as to be seated down over the
boss and resiliently clamp to the boss, and the protrusions of web 44 engage,
and grip, the wire hook.
The term “wire” is ordinarily and customarily understood to be metal.
See, e.g., Webster’s at 1631 (defining wire: “metal that has been drawn into
a very long, thin thread or rod, usually circular in cross section”).

PRINCIPLES OF LAW
It is well settled that the United States Patent and Trademark Office
(PTO) is obligated to give claim terms their broadest reasonable
interpretation, taking into account any enlightenment by way of definitions
or otherwise found in the specification. In re ICON Health and Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007).
Where the specification does not assign or suggest a particular
definition to a claim term, in determining the ordinary and customary
meaning of the claim term as viewed by a person of ordinary skill in the art,
Appeal 2010-001970
Application 11/168,815

8
it is appropriate to consult a general dictionary definition of the word for
guidance. See Phillips v. AWH Corp., 415 F.3d 1303, 1322–23 (Fed. Cir.
2005) (en banc).
To establish anticipation, every element and limitation of the claimed
invention must be found in a single prior art reference, arranged as in the
claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383
(Fed. Cir. 2001).

ANALYSIS
Construction of “prismatic”
Appellant’s asserted definition of “prismatic” is consistent with
ordinary and customary usage of the terminology, as evidenced by cited
dictionary definitions, as noted in our findings above, and is also consistent
with the description and depiction of the Appellant’s sizer, as also noted in
our findings above. To the extent that the Examiner has made a finding that
Appellant’s disclosed sizer does not fall within Appellant’s asserted
definition of “prismatic” (Ans. 4), such finding is not supported by the
record. We thus accept Appellant’s asserted definition of “prismatic,” that
is, relating to, resembling, or constituting a polyhedron with two polygonal
faces lying in parallel planes and with the other faces parallelograms, in
construing that terminology in claims 1 and 9.
Issue (1) – the “prismatic form”limitation
As shown in our findings above, Blanchard’s size indicator 40 has a
peripheral wall of “prismatic” form, as depicted in the annotated Figure 17
of Blanchard reproduced in our findings above. Specifically, Blanchard’s
size indicator 40 comprises a peripheral wall in the form of a polyhedron
Appeal 2010-001970
Application 11/168,815

9
having two polygonal faces in parallel planes, and four parallelogram sides,
the top and bottom of which have openings therein. To the extent that the
Examiner has made a finding that Blanchard does not teach such a shape
(Ans. 4), Blanchard’s Figure 17 belies such finding.
Issue (2) – the pair of protrusions limitation of claim 3
Appellant argues that Blanchard shows only a single web 44, and
asserts that “[t]he single web is but a single protrusion.” App. Br. 6.
Appellant’s assertion is not well founded. While Blanchard may only
describe a single web 44, as shown in our findings above, the web 44
comprises a pair of protrusions, akin to tabs 26 as depicted in Figure 6,
extending from each of the polygonal faces of the size indicator 40.
Issue (3) – the “metal hook” limitation of claim 9
Appellant correctly points out that the hanger depicted in Figure 18 of
Blanchard does not have a metal hook. See App. Br. 6. Rather, Blanchard’s
Figure 18 shows a hanger having a molded plastic hook 30d. Blanchard,
col. 4, ll. 19-20. As shown in our findings above, however, Blanchard also
teaches use of the size indicator 40 with a hanger having a conventional wire
hook, that is, a metal hook. Thus, Blanchard teaches in combination a
hanger having a metal hook and a sizer comprising a peripheral wall of
prismatic form, as called for in claim 9.
Issue (4) – the “sizer . . . for passage over the metal hook and post of the
hanger” limitation of claim 9
Appellant correctly points out that Blanchard’s Figure 18 shows the
size indicator 40 mounted on the plastic molded hook of a hanger, not
passed over a metal hook and post of a hanger, as called for in claim 9. App.
Br. 7. As shown in our findings above, however, Blanchard also teaches use
Appeal 2010-001970
Application 11/168,815

10
of the size indicator 40 with a hanger having a conventional wire hook.
Further, as also shown in our findings above, when used with a hanger
having a conventional wire hook, Blanchard’s size indicator 40 is capable of
passing over the conventional wire hook and post (boss 14), so as to be
seated down over the boss and resiliently clamp to the boss.
Appellant asserts that the web 44 is inclined within the walls 41, 42 of
Blanchard’s size indicator 40. Reply Br. 6. Thus, according to Appellant,
the downmost part of web 44 would prevent size indicator 40 from seating
on the boss 14. Id. Appellant has not cogently explained, and it is not
apparent to us, why the relationship of the web 44 to the inclined top and
bottom faces 41 and 42 would prevent Blanchard’s size indicator 40 from
seating on the boss as described by Blanchard, with at least the bottom
portions of the polygonal faces and the larger panel 45 engaging the
peripheral surface of the boss 14, so as to frictionally clamp the boss.
Appellant additionally argues that Blanchard’s size indicator 40 does
not comprise a protrusion to engage a post. This argument is premised on
Appellant’s assertion that claim 9 requires “‘at least one protrusion on an
interior of said wall for engaging with said post . . .’.” App. Br. 7 (emphasis
added); Reply Br. 6. Claim 9, however, does not include such a limitation;
rather, claim 9 requires “at least one protrusion on an interior of said wall for
engaging with said hanger to secure said sizer to said hanger.” Amendment
filed Dec. 19, 2006 (emphasis added).1 Appellant’s argument, therefore, is

1 Appellant attempted to amend claim 9 to change “hanger” (both
occurrences) to “post” in this portion of the claim subsequent to the Final
Rejection. See Amendment filed May 29, 2007. The Examiner, however,
refused entry of this amendment. See Advisory Action mailed Jun. 27,
2007.
Appeal 2010-001970
Application 11/168,815

11
not convincing. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(limitations not appearing in the claims cannot be relied upon for
patentability). Blanchard satisfies the limitation “at least one protrusion on
an interior of said wall for engaging with said hanger to secure said sizer to
said hanger,” (emphasis added) because, as shown in our findings above,
when Blanchard’s size indicator 40 is used with a hanger having a
conventional wire hook, the protrusions of web 44 engage, and grip, the wire
hook, which is part of the hanger.

CONCLUSIONS
Blanchard describes structure satisfying:
(1) the “prismatic form” limitation in claims 1 and 9;
(2) the “pair of said protrusions on each of two opposite sides of said wall
for engaging opposite sides of the hanger” limitation of claim 3;
(3) the “metal hook” limitation of claim 9; and
(4) the “sizer . . . for passage over the metal hook and post of the hanger”
limitation of claim 9.
Consequently, Appellant has not persuaded us that the Examiner’s
rejection of claims 1, 3, and 9 should be reversed. Claim 2 falls with claim
1, from which it depends. App. Br. 6; 37 C.F.R. § 41.37(c)(1)(vii) (2007).

Appeal 2010-001970
Application 11/168,815

12
DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

hh

CARELLA, BYRNE, CECCHI, OLSTEIN, BRODY & AGNELLO
5 BECKER FARM ROAD
ROSELAND, NJ 07068