Ex Parte Markfield

Patent Trial and Appeal Board

Oct 3, 2016

13280071 (P.T.A.B. Oct. 3, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/280,071 10/24/2011 Linda Markfield MARKFIELD-P004 9997
45812 7590 10/05/2016
Law Office of Michael D. Eisenberg
Intellectual Property Law
1991 Village Park Way
Suite 100
Encinitas, CA 92024
EXAMINER
NGUYEN, SON T
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
10/05/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
meisenberg @ mdepatents .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LINDA MARKFIELD
Appeal 2015-0000581’2
Application 13/280,071
Technology Center 3600
Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
MATTHEW S. METERS, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1—12. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant’s Specification (“Spec.,” filed Oct. 24,
2011) and Appeal Brief (“Br.,” filed May 5, 2014), as well as the Final
Office Action (“Final Action,” mailed July 26, 2013) and the Examiner’s
Answer (“Answer,” mailed July 16, 2014).
2 According to Appellant, Imagine That International, Inc., is the real party
in interest. Br. 3.
Appeal 2015-000058
Application 13/280,071
According to Appellant, the invention “relates to protective collars,
also known as veterinary restraints, for small animals and commonly called
‘Elizabethan collars’ or ‘e-collars’. The collar is useful for preventing the
animal from licking or biting wounds, or disrupting surgical stitches. The
collar . . . prevents disruption of medications applied topically.” Spec. 12.
Claims 1, 9, and 12 are the only independent claims. See Br., Claims App.
We reproduce claims 1 and 12, below, as representative of the appealed
claims.
1. A protective collar effective as a veterinary restraint
when fitted on an animal, the protective collar comprising:
a layered assembly comprising;
a first sheet comprising a flexible substantially non-
resilient material having inner and outer arcuate edges extending
between a first end and a second end of the first sheet, the inner
and outer arcuate edges comprising single circular arcs, wherein
the outer arcuate edge has a substantially greater radius than the
inner edge;
a second sheet comprising a flexible substantially non-
resilient material and having a substantially similar shape to that
of the first sheet;
wherein when assembled, the first and second sheets form
the layered assembly having an outer arcuate edge and an inner
arcuate edge and a first end and a second end;
the first sheet and the second sheet being formed into the
assembly by securing together the outer arcuate edges and the
inner arcuate edges and the first and second ends of the first and
second sheets;
a closure, effective to secure the first and second ends of
the protective collar, such that when the first and second ends of
the protective collar are secured, a closed configuration is formed
having an inner opening and an outer opening, the inner opening
being substantially smaller than the outer opening, wherein the
outer opening, when worn is located forward of the wearer’s
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Appeal 2015-000058
Application 13/280,071
neck and is configured to encompass the wearer’s head and the
inner opening is configured to encompass a wearer’s neck but
not the head, to form a generally cone shaped restraint;
wherein the protective collar is sized and shaped to
encompass both the wearer’s head and neck on different parts of
the restraint.
12. A protective E-collar, comprising:
a layered assembly comprising;
a first sheet comprising a flexible substantially non-
resilient material having inner and outer arcuate edges extending
between a first end and a second end of the first sheet;
a second sheet comprising a flexible substantially non-
resilient material and having a substantially similar shape to that
of the first sheet;
wherein when assembled, the first and second sheets form
the layered assembly having an outer arcuate edge and an inner
arcuate edge and a first end and a second end;
the first sheet and the second sheet being formed into the
assembly by securing together the outer arcuate edges and the
inner arcuate edges and the first and second ends of the first and
second sheets;
a closure, effective to secure the first and second ends of
the protective collar, such that when the first and second ends of
the protective collar are secured, a closed configuration is formed
having an inner opening and an outer opening, the inner opening
being substantially smaller than the outer opening;
wherein only the inner opening of the two openings is
adapted to fit securely around the neck of the wearer.
Br., Claims App.
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Appeal 2015-000058
Application 13/280,071
REJECTIONS AND PRIOR ART
The Examiner rejects claims 1—5 and 7—12 under 35 U.S.C. § 103(a)
as unpatentable over Lippincott (US 5,133,295, iss. July 28, 1992) and
Schmid (US 6,659,046 B2, iss. Dec. 9, 2003).
The Examiner rejects claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Lippincott, Schmid, and Moenning
(US 2007/0073203 Al, pub. Mar. 29, 2007).
The Examiner rejects claims 1—12 on the grounds of nonstatutory
obviousness-type double patenting as unpatentable over claims 1—13 of U.S.
Patent No. 8,042,494.
See Final Action 2—11; see also Answer 2.
ANALYSIS
Double patenting rejection
Inasmuch as there is no indication in the record that the Examiner
withdraws the double patenting rejection, and Appellant does not argue
against the rejection, we summarily sustain this rejection.
Obviousness rejections
With respect to independent claim 1, the claim requires
a closure, effective to secure the first and second ends of
the protective collar, such that when the first and second ends of
the protective collar are secured, a closed configuration is formed
having an inner opening and an outer opening, the inner opening
being substantially smaller than the outer opening, wherein the
outer opening, when worn is located forward of the wearer’s
neck and is configured to encompass the wearer’s head and the
inner opening is configured to encompass a wearer’s neck but
not the head, to form a generally cone shaped restraint;
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Appeal 2015-000058
Application 13/280,071
wherein the protective collar is sized and shaped to
encompass both the wearer’s head and neck on different parts of
the restraint.
Br., Claims App. Appellant argues that neither reference discloses a cone-
shaped restraint as claimed. See Br. 9. We agree with Appellant. The
Examiner finds that Lippincott discloses such a restraint. See Final Action 2
(citing Lippincott col. 3,11. 30-44); see also Answer 2 (citing Lippincott col.
3,11. 35—40). We note, however, that the referenced portion describes how
Lippincott’s invention differs from prior art devices that are conical. More
specifically, the cited portion of Lippincott states that
[t]he collar rings 15 and 17 of the collar 10 of the present
invention are composed of soft, flexible and non-resilient
material that has sufficient body to form a floppy collar that
stands out to some extent from the neck opening but insufficient
rigidity to give the animal the feeling of having its head confined,
in a frustro-conical funnel, as in many of the prior art devices,
or otherwise. In this way, the invention significantly reduces the
discomfort of the animal, and produces a minimal interference
with its comfort and ability to move around. In effect, the
invention provides a soft, flexible barrier between the head and
the rest of the body, rather than an annoying, frightening rigid
or semi-rigid “container” around the head.
Lippincott col. 3,11. 30-44 (bold original, italics added).
Thus, based on the foregoing, we do not sustain the rejection of
independent claim 1, or the rejections of claims 2—7 depending from claim 1.
Further, inasmuch as independent claim 8, from which claims 9—11 depend,
recites a similar limitation and is rejected for similar reasons, we also do not
sustain the rejection of claims 8—11.
Independent claim 12 differs in scope from claim 1, and does not
require such a cone-shaped restraint. Appellant argues that the rejection of
this claim is in error because neither reference discloses the claim feature of
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Appeal 2015-000058
Application 13/280,071
“only the inner opening of the two openings is adapted to fit securely around
the neck of the wearer.” Br. 9—10. Lippincott shows an inner opening (e.g.,
neck hole 18) fitting securely around the neck of the wearer, and an outer
opening (e.g., the outer edge of collar 10) that is not secured around the
wearer’s neck. See Lippincott Figs. 1,2. Thus, we sustain the rejection of
claim 12.
DECISION
We summarily AFFIRM the Examiner’s nonstatutory obviousness-
type double patenting rejection of claims 1—12.
We REVERSE the Examiner’s obviousness rejections of claims 1—11.
We AFFIRM the Examiner’s obviousness rejection of claim 12.
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)(l)(iv).
AFFIRMED
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