Ex Parte McMahon

Board of Patent Appeals and Interferences

Aug 27, 2007

10778963 (B.P.A.I. Aug. 27, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte SHERRE S. MCMAHON
__________

Appeal 2007-2227
Application 10/778,963
Technology Center 3600
__________

Decided: August 27, 2007
__________

Before DEMETRA J. MILLS, LORA M. GREEN, and RICHARD M.
LEBOVITZ, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant appeals the Examiner’s final rejection of claims 1-13 for
obviousness. We have jurisdiction under 35 U.S.C. § 6(b) (2006). Claims 1 and
11 are representative and read as follows:
1. An extension for use with a necklace comprising:
(a) said extension being of an unitary construction and including a body with a
center region with a pair of opposed, side by side and reversed mirrored spiral
regions extending from opposite ends of said center region; each of said spiral
Appeal 2007-2227
Application 10/778,963

regions spiraling inwardly with a continuously decreasing radius for greater than
one full revolution; each of said spiral regions being sufficiently large and being
sized and shaped so as to be adapted to join with either spiral region
of another extension such that both of said extensions lay relatively flat with
respect to each other.

11. A method of extending a necklace comprising the steps
of:
(a) providing a necklace with connectors at opposite ends thereof:
(b) providing first and second discretely interconnectable extensions of generally
equal size and shape with relatively large connecting spirals of generally equal size
on each end thereof ;
(c) joining a first end of said necklace;
(d) joining a second end of said first extension to a first end of said second
extension;
(e) joining a second end of said second extension with said necklace second
connector.

Cited References:
Cayton US 5,669,242 Sept. 23, 1997
Cloud US 5,184,482 Feb. 9, 1993

Grounds of Rejection

Claims 1-13 stand rejected under 35 U.S.C. § 103(a) as obvious over Cayton
in view of Cloud.

DISCUSSION
Claims 1-13 stand rejected under 35 U.S.C. § 103(a) as obvious over Cayton
in view of Cloud. As Appellant did not argue the dependent claims separately,
they stand or fall with the independent claim on which they depend. We thus focus
our analysis on independent claims 1 and 11. 37 CFR § 41.37(c)(1)(vii) (2006).
- 2 -
Appeal 2007-2227
Application 10/778,963

The Examiner finds “that the subject matter as a whole would have been
obvious at the time the invention was made to a designer having ordinary skill in
the art to which said subject matter pertains”. (Answer 3.)
With respect to claim 1, the Examiner finds
Cayton teaches of an extension (22,24) for use with a necklace
(12,20) comprising: said extension (22) being of an unitary
construction and including a body with a center region (26) with a pair
of opposed, side by side spiral regions (30, 38) extending from
opposite ends of said center region (26); each of said spiral regions
(30, 38) spiraling inwardly with a continuously decreasing radius;
each of said spiral regions (30, 38) being sufficiently large and being
sized and shaped so as to [be adapted] to join with either spiral region
(32,40) of another extension (24).

((Id.) (modification in original).)

The Examiner recognizes
[t]he difference between the claim and Cayton is that Cayton does not
expressly disclose that the side by side spiral regions (30, 38) are
reverse mirrored spiral regions; that said spiral regions (30,38) have a
decreasing radius for greater than one full revolution; and that both of
said extensions (22) will lay flat with respect to each other when they
are joined together.

(Id. at 4.)

The Examiner relies on Cloud for its disclosure of

(Figs. 32-34) various spiral regions (162,164,168,170,174,176), the
structures of which allow interlocking between said spiral regions to
help fasten free ends of an ornamental loop. In addition, Cloud
discloses that said spiral regions (162,164) have a decreasing radius
for greater than one full revolution; and that both of said extensions
will lay flat with respect to each other when they are joined together
(Figs. 32-34). At the time of invention, it would have been obvious to
one having ordinary skill in the art, having the disclosures of Cayton
and Cloud before him at the time the invention was made, to modify
- 3 -
Appeal 2007-2227
Application 10/778,963

the shape or pattern of the spiral regions (30,38) of Cayton for the
spiral region (162) as shown by Cloud in Figs. 32-34. One would be
motivated to make such a combination because one would want to
achieve that exact shape or design of spiral region as shown by Cloud
in addition to the ability of said shape of said spiral region being able
to be interconnect with another of said spiral region as shown by
Cloud in Figs. 32-34 creating that exact type of fastening relationship
between said spiral regions.

(Id.)

The Examiner concludes

one only needs to modify the structure of both the spiral regions
(30,38) of Cayton to emulate the spiral region (162) of Cloud to have
a structure that discloses side by side reverse mirrored spiral regions
having a decreasing radius for greater than one full revolution, with
said extension being adapted to join another extension and lay flat
with respect to each other when joined.

(Id.)

Appellant argues neither Cayton nor Cloud teach a pair of reverse image and
side by side spirals that are joined at a center and extend outwardly from opposite
sides of the center. (Br. 9.)

- 4 -
Appeal 2007-2227
Application 10/778,963

Appellant’s Fig. 1, which shows a fragmentary perspective view of a
necklace extension in the shape of the letter “S” which represents an embodiment
of the claimed invention (Specification 6), appears above.

A portion of Fig. 2 of Cayton, which depicts a necklace extension in the
shape of the letter “S” where the top of the “S” is smaller than the bottom of the
“S,” appears above.

Figures 32 to 34 of Cloud, depicting ear ornaments showing mirror image
spirals, appear above.
More specifically, Appellant argues that “[t]he Cayton hooks have a large
spiral on one side and a small tight loop (connectors 30 and 32) on the other side,”
thus "[i]t is clear from the disclosure that the hooks and chain construction of
- 5 -
Appeal 2007-2227
Application 10/778,963

Cayton are designed to be used together as a single extension of a fixed length."
(Br. 8.) Appellant also urges:
The Cloud references teaches ear art in Figs. 32 to 34. In Fig. 32, the
Cloud ear art includes a long wire in a loop 166 joining two hooks 162
and 164 that have large spirals and are joined together to form a loop
50. In Cloud there are spirals, but the spirals are not side by side
joined at a center and extending in opposite directions therefrom. On
the contrary, in Cloud the loops are greatly spaced from one another
along the connecting wire and do not extend in opposite directions,
but rather toward each other. In Cloud the spirals are joined with each
other, . . . and not with any other structure nor is such suggested. It is
especially noted that the Cloud devices are of a fixed length, are not
intended to be used as an extension for anything else and teach spirals
that are joined to each other on a single device rather than being
joined to another device or another structure such as a necklace.
(Br. 8-9).

The ultimate determination of whether an invention would have been
obvious is a legal conclusion based on the totality of the evidence.
Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 1483, 44 USPQ2d 1181,
1187 (Fed. Cir. 1997). The underlying factual inquiries to an obviousness
determination include: (1) the scope and content of the prior art; (2) the level of
ordinary skill in the prior art; (3) the differences between the claimed invention and
the prior art; and (4) objective evidence of nonobviousness. See Graham v. John
Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966); In re Dembiczak, 175
F.3d 994, 998, 50 USPQ2d 1614, 1616 (Fed. Cir. 1999). “[W]hen the question is
whether a patent claiming the combination of elements of prior art is obvious” the
relevant question is “whether the improvement is more than the predictable use of
prior art elements according to their established functions.” KSR Int’l Co. v.
Teleflex Inc., 127 Ct. 1727, 82 USPQ2d 1385 (2007). Moreover, in Gardner v.
TEC Sys., Inc., 725 F.2d 1338, 1345, 220 USPQ 777, 783 (Fed. Cir. 1984), the
- 6 -
Appeal 2007-2227
Application 10/778,963

Federal Circuit held that, where the only difference between the prior art and the
claims was a recitation of relative dimensions of the claimed device and a device
having the claimed relative dimensions would not perform differently than the
prior art device, the claimed device was not patentably distinct from the prior art
device. Upon review of the spiral shaped necklace extension of Cayton, it would
reasonably appear that the claimed spiral shaped necklace extension is merely a
predictable use of a prior art element according to its established function for
extending a necklace length.
In the present case, we find that the necklace extension device of Cayton is
similar to that of the claimed invention except the “top” spiral (as shown in Figure
2, reproduced above) is shorter and of a smaller size than the “bottom” spiral and
thus not a mirror image of the top bottom spiral. In Figure 2 of Cayton, as is clear
from the drawing, the top, smaller spiral is open and can accommodate additional
necklace chains. We further find that it would have been obvious to one of
ordinary skill in the art to extend the length (size) of the top, small spiral of Cayton
to the length and shape of the bottom, large spiral of Cayton to form a mirror
image of the bottom spiral to further accommodate multiple necklace chains, as an
alternative design available and known in the prior art. In addition, Cloud,
although an earring jewelry piece, also reflects that a larger spiral is a known
design available to the ordinary designer in the jewelry art.
At best, we find that Appellant has merely extended the size of the smaller,
top spiral of Cayton and that this change in size does not perform differently than
the opposing larger spiral disclosed in Cayton. Both spirals perform equivalently
in Cayton. The larger spiral at the bottom of the necklace extension of Cayton is a
design known to one of ordinary skill in the necklace extension art. The larger and
smaller spirals function equivalently in Cayton as attaching means to the necklace.
- 7 -
Appeal 2007-2227
Application 10/778,963

Moreover, Cayton specifically states that the “‘hook means,’ as used herein, is to
be construed to include all structures described” and useable as equivalents. Col.
7, line 32-36. Further, Cayton stated that the hook means may be defined by
alternative structures able to releaseably ensnare respective portions of a base
necklace, thus providing an express suggestion that alternative structures could be
used. Col. 7, ll. 20-26.
In view of the above, Appellant's argument that Cayton and Cloud do not
disclose mirror image spirals in claim 1 is not persuasive, and we affirm the
rejection of claim 1.

Claim 11
Claim 11 requires joining multiple extensions essentially of the size and
shape presented in claim 1. See claim 11, supra.
Appellant argues that “[n]either reference teaches the use of multiple
descrete extensions.” (Br. 10-11.)
As pointed out by the Examiner, Cayton “does indeed teach of using
multiple discrete extensions . . . he, however, does not expressly teach that said
extensions . . . can be directly attached to one another” (Answer 12). This is
shown in Fig. 3 of Cayton (see Cayton, col. 7, ll. 1-18). In our opinion, the skilled
worker would have recognized that other arrangements, in addition to that shown
in Fig. 3, could be utilized to achieve the same purpose in extending the length of
the necklace (Cayton, at col. 1, ll. 10-15), including arrangements where the
extensions are directly connected as required by claim 11. Furthermore, “[i]t is
well settled that the mere duplication of parts has no patentable significance unless
a new and unexpected result is produced.” In re Harza, 274 F.2d 669, 671, 124
USPQ 378, 380 (CCPA 1960). In the present case, the duplication of the necklace
- 8 -
Appeal 2007-2227
Application 10/778,963

extension merely provides a further performance of the known original function of
a single necklace extension. Thus, we find that the mere duplication of the
necklace extension part provides no new and unexpected result. Furthermore, the
aesthetic quality conveyed of duplication of the necklace extension is found in
Cloud, disclosing the use of multiple spirals in the jewelry art is well known
aesthetic choice to the ordinary designer. In view of the above, the rejection of
claim 11 over Cayton and Cloud is affirmed.

CONCLUSION
The obviousness rejection of claims 1-13 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).
AFFIRMED

lbg

John C. McMahon
PO Box 30069
Kansas City, MO 64112
- 9 -