Ex Parte Monahan

Patent Trial and Appeal Board

Oct 20, 2014

12152857 (P.T.A.B. Oct. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte LISA J. MONAHAN
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Appeal 2012-008418
Application 12/152,857
Technology Center 3600
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Before NEAL E. ABRAMS, MICHAEL L. HOELTER,
and LEE L. STEPINA, Administrative Patent Judges.

STEPINA, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Lisa J. Monahan (Appellant) seeks our review under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1–3, 5–9, 11, and 12. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
THE CLAIMED SUBJECT MATTER
The claimed invention is directed to an interchangeable earring and
necklace kits and methods for their storage and use. Claim 1 is illustrative
of the claims on appeal and is reproduced below:
1. An earring kit comprising:
a pair of closed loop earrings, each earring having an
earring loop configured to open and close to receive accessories
and to attach to an ear with the earring loop passing through the
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ear, the earring loop having an opening with a width in the
range of about 5mm to 15mm;
plural pairs of accessories, including drop chains and
varied pairs of decorative loops, interchangeably carried by the
closed loop earrings, individually or in combination, the
decorative loops passing through the openings of and resting on
the earring loops of the closed loop earrings and being
decorative elements that do not support further decorative
elements; and
a container having compartments respectively containing
the pair of closed loop earrings and pairs of accessories.

REFERENCES RELIED ON BY THE EXAMINER
Alden US 169,940 Nov. 16, 1875
Philippe US Des. 161,526 Jan. 2, 1951
Roberts US 2,739,596 Mar. 27, 1956
Goodman US 4,022,318 May 10, 1977
Burchett US Des. 248,380 July 4, 1978
Cilluffo US Des. 542,696 S May 15, 2007

THE REJECTIONS ON APPEAL
Claims 1–3, 6–9, and 12 are rejected under 35 U.S.C. § 103(a) as
obvious over Cilluffo and Goodman.
Claims 5 and 11 are rejected under 35 U.S.C. § 103(a) as obvious over
Cilluffo, Goodman, and Burchett.
Claims 1, 2, 6–8, and 12 are rejected under 35 U.S.C. § 103(a) as
obvious over Roberts, Philippe, and Goodman.
Claims 3 and 9 are rejected under 35 U.S.C. § 103(a) as obvious over
Roberts, Philippe, Goodman, and Alden.
Claims 5 and 11 are rejected under 35 U.S.C. § 103(a) as obvious over
Roberts, Philippe, Goodman, and Burchett.
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ANALYSIS
The rejection of claims 1–3, 6–9, and 12 as obvious over Cilluffo and
Goodman
(I)
Claim 1 recites, in part, with emphasis added:
a pair of closed loop earrings, each earring having an
earring loop configured to open and close to receive accessories
and to attach to an ear with the earring loop passing through
the ear, the earring loop having an opening with a width in
the range of about 5mm to 15mm.
Figure 2 of the Application, reproduced below, is illustrative of one of the
closed loop earrings recited in claim 1.

Figure 2 of Appellant’s device is a plan view of one of the recited earrings
including accessories.
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(II)
The Examiner rejects independent claim 1 as obvious over Cilluffo
and Goodman, asserting that the device described in Cilluffo would pass
through the ear as recited in claim 1 and that there is an open space below
the hinge in Cilluffo that would accommodate an earlobe between a piercing
and the part of the device in Cilluffo that holds decorative hoops. Ans. 14.
The Examiner also notes that the title of Cilluffo is “Earring,” and asserts
this supports the Examiner’s contention that the device in Cilluffo is not
merely an attachment for an earring. Id.
Regarding the recited opening of about 5mm to 15mm in the earring
loop in claim 1, the Examiner asserts “[s]ince the loops hang from the
earring when the earring is closed, the earring loop may open to any space
desired to accommodate insertion of the loops.” Ans. 14–15. The Examiner
also asserts “there is no opening in the ‘loop earrings’ when the earrings are
closed.” Ans. 15.
(III)
Appellant traverses the Examiner’s obviousness rejection over
Cilluffo, asserting that the device disclosed by Cilluffo does not pass
through the ear. Appeal Br. 5. Appellant further asserts that it is instead
likely that the device in Cilluffo hangs from an earring. Id. Appellant also
asserts that Cilluffo does not disclose or suggest an opening in the earing
loop of 5–15 mm as recited in claim 1. Appeal Br. 6.
(IV)
The title of Cilluffo is “Earring,” but Cilluffo contains no textual
detailed description its invention because Cilluffo is a design patent. We
reproduce figure 4 of Cilluffo below.
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Figure 4 depicts a clamp and four separate concentric rings configured to be
held by the clamp. None of the drawings in Cilluffo depicts the device in
Cilluffo attached to an ear.
(V)
We reverse the rejection of claims 1–3, 6–9, and 12 as obvious over
Cilluffo and Goodman for the following reasons. The Examiner relies, in
part, on the title of Cilluffo as evidence that the clamp shown in figure 4
passes through the ear. However, a common dictionary definition of
“earring” is “an ornament for the earlobe.” WEBSTER’S NINTH NEW
COLLEGIATE DICTIONARY 1092 (1998). We find no evidence in Cilluffo or
in the common use of the word “earring” requiring all earrings to pass
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through the ear themselves rather than hang from another device attached to
the ear.
Regarding the recited opening with a width in the range of about 5mm
to 15mm, we do not agree with the Examiner that Cilluffo discloses an
earring loop that may open to any space desired to accommodate insertion of
the loops. Claim 1 recites “a pair of closed loop earrings, each earring
having an earring loop… the earring loop having an opening with a width in
the range of about 5mm to 15mm.” As Appellant notes, there is no
indication of what the dimensions of the spaces provided by Cilluffo would
be when the device in Cilluffo is in the closed state. The fact that the device
in Cilluffo can open to create a larger space is not pertinent to the claimed
opening width because the opening is recited as disposed in a closed loop
earring, not as the size of an opening created when the loop is opened. In
other words, the width of the space between members of the open clamp
disclosed in Cilluffo does not correlate to the width of the opening in the
closed loop recited in claim 1.
In light of the discussion above, we reverse the rejection of claim 1
and claims 2, 3, and 6 depending therefrom as obvious over Cilluffo and
Goodman. As independent claim 7 also recites the above-noted features
relating to the width of the opening in the closed loop and the passage of the
loop through the ear, we reverse the rejection of independent claim 7 and
claims 8, 9, and 12 depending therefrom. We also reverse the rejection of
claims 5 and 11 as obvious over Cilluffo, Goodman, and Burchett for the
same reasons.

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The rejection of claims 1, 2, 6–8, and 12 as obvious over Roberts,
Philippe, and Goodman
Claim 1 recites, in part:
plural pairs of accessories, including drop chains and
varied pairs of decorative loops, interchangeably carried by the
closed loop earrings,
The Examiner rejects claims 1 and 7 as obvious over Roberts,
Philippe, and Goodman and cites Philippe for the recited “plural pairs of
accessories.” Ans. 9.
Appellant asserts that Philippe does not disclose removable
accessories, rather, the loops described in Philippe are “permanently affixed
to a closed hook.” Reply Br. 6. Appellant also asserts there is no suggestion
of interchangeability of the loops disclosed in Philippe. Appeal Br. 9.
We reproduce figures 1 and 2 of Philippe below.

Figure 1 of Philippe depicts a view of the earring disclosed in Philippe
as viewed from a first direction, and figure 2 of Philippe depicts the earring
from a direction perpendicular to the first direction.
As is apparent from figure 2 of Philippe, the loops hanging from the
earring are captured by a hook, and the space between the hook and the
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remainder of the earring does not appear to be (and is not otherwise
disclosed to be) large enough to allow removal of the loops.
In the Response to Argument section of the Answer, the Examiner
states “Examiner notes that the hook shown in figure 2 is not closed, which
examiner contends is like putting a pen in your pocket and using the clip to
secure the pen to the pocket. Examiner contends this is removable.” Ans.
17. However, as Philippe is a design patent, there is no textual support in
Philippe for the Examiner’s assertion. We also find no evidence in the
figures in Philippe to support this assertion. Accordingly, we cannot affirm
the Examiner’s rejection of claims 1, 2, 6–8, and 12 as obvious over Roberts,
Philippe, and Goodman. We reverse the rejection of claims 1, 2, 6–8, and 12
as obvious over Roberts, Philippe, and Goodman. For the same reasons, we
reverse the rejection of claims 3 and 9 as obvious over Roberts, Philippe,
Goodman, and Alden and the rejection of claims 5 and 11 as obvious over
Roberts, Philippe, Goodman, and Burchett.
DECISION
The rejections of claims 1–3, 5–9, 11, and 12 are reversed.
REVERSED

mls