Ex Parte MainettiDownload PDFBoard of Patent Appeals and InterferencesMar 14, 201011168815 (B.P.A.I. Mar. 14, 2010) Copy Citation 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 Copy with citationCopy as parenthetical citation