Ex Parte Murphy

Board of Patent Appeals and Interferences

Jul 7, 2010

10776848 (B.P.A.I. Jul. 7, 2010)

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.
10/776,848 02/11/2004 H. Stetser Murphy JR. 22270-RA2 3039
30184 7590 07/08/2010
Woodcock Washburn LLP
Cira Centre, 12th Floor
2929 Arch Street
Philadelphia, PA 19104-2891
EXAMINER
HURLEY, SHAUN R
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
07/08/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte H. STETSER MURPHY, JR.
____________

Appeal 2009-013336
Application 10/776,8481
Technology Center 3700
____________

Before WILLIAM F. PATE, III, SCOTT R. BOALICK, and
FRED A. SILVERBERG, Administrative Patent Judges.

BOALICK, Administrative Patent Judge.

DECISION ON APPEAL2

1 The real party in interest is the inventor, H. Stetser Murphy, Jr.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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2
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-21, all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm-in-part and enter a new ground of rejection.
STATEMENT OF THE CASE
Appellant’s invention relates to a clothes hanging device in the form
of an arcuate hook with a sphere for draping clothing. (Spec. Abstract.)
Claims 1, 16 and 18 are exemplary:
1. A garment hanger comprising:
at least one generally arcuate member having a first end and at least
one second end; and
at least one generally spherical-shaped member,
wherein said at least one generally spherical-shaped member is carried
proximate to said at least one second end of said at least one generally
arcuate member and said at least one generally spherical-shaped member
receives and supports the garment.

16. A clothes hanging apparatus comprising:
a plurality of hanging arms, each comprising a ball end, an arcuate
shaft and a hanging end; and
means for interconnecting said plurality of hanging arms.

18. A garment hanging device comprising:
support frame;
at least one extension arm, having [a] first end and [a] second end,
wherein said first end is secured to said support frame; and
at least one ball attached to said second end, wherein the garment
hangs on said at least one ball.

Claims 1-4, 6, 9, 10 and 13-15 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Chen (U.S. Patent 5,577,644).
Claims 18-21 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Bury (U.S. Patent 2,946,493).
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3
Claims 5, 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Chen.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Chen (U.S. Patent 5,577,644) and Chen (U.S. Patent 6,170,721 B1)3.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Chen and Bury (U.S. Patent 2,946,493).
Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Chen and Lehmann (U.S. Patent 4,872,568).
ISSUES
§ 102 Rejections
With respect to independent claim 1, Appellant argues that Chen does
not teach “at least one generally spherical-shaped member [that] receives
and supports the garment.” (App. Br. 6-7.)
With respect to dependent claim 4, Appellant argues that Chen does
not teach “wherein said hanger is formed from a moldable material.” (App.
Br. 7.)
With respect to independent claim 13, Appellant argues that Chen
does not teach all the features of this claim. (App. Br. 8.)
With respect to independent claim 15, Appellant argues that Chen
does not teach “positioning a garment over and substantially covering the
surface of said ball-shaped support for retention thereby.” (App. Br. 9.)
With respect to independent claim 18, Appellant argues that Bury
does not teach “at least one extension arm, having [a] first end and [a]
second end, wherein said first end is secured to said support frame . . . at
least one ball attached to said second end.” (App. Br. 10.)

3 All remaining citations to “Chen” refer to U.S. Patent 5,577,644.
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4
With respect to dependent claim 19, Appellant argues that Bury does
not teach “said at least one extension arm comprises at least one upper
extension arm and at least one lower extension arm.” (App. Br. 10.)
Appellant’s responses to the Examiner’s stated positions present the
following issues:
1. Has the Examiner erred in finding that Chen teaches “at least one
generally spherical-shaped member [that] receives and supports the
garment,” as recited in claim 1?
2. Has the Examiner erred in finding that Chen teaches “wherein said
hanger is formed from a moldable material,” as recited in claim 4?
3. Has the Examiner erred in finding that Chen teaches “obtaining an
arcuate hanger having . . . a ball-shaped support” and “hanging an object on
said ball-shaped support of said arcuate hanger,” as recited in claim 13?
4. Has the Examiner erred in finding that Chen teaches “positioning a
garment over and substantially covering the surface of said ball-shaped
support for retention thereby,” as recited in claim 15?
5. Has the Examiner erred in finding that Bury teaches “at least one
extension arm, having [a] first end and [a] second end, wherein said first end
is secured to said support frame . . . at least one ball attached to said second
end,” as recited in claim 18?
6. Has the Examiner erred in finding that Bury teaches “said at least
one extension arm comprises at least one upper extension arm and at least
one lower extension arm,” as recited in claim 19?
§ 103 Rejections
With respect to dependent claim 5, Appellant argues that Chen does
not teach or suggest “wherein said at least one generally arcuate member and
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said at least one generally spherical-shaped member are integrally molded.”
(App. Br. 12.)
With respect to dependent claims 7 and 8, Appellant argues that Chen
does not teach or suggest the features of these claims. (App. Br. 13.)
With respect to dependent claim 12, Appellant argues that the
combination of Chen and Bury does not teach or suggest “wherein said
arcuate hook shape has at least one generally hemispherical indent.” (App.
Br. 14.)
With respect to independent claim 16, Appellant argues that the
combination of Chen and Lehmann does not teach or suggest “a plurality of
hanging arms, each comprising a ball end, arcuate shaft and hanging end.”
(App. Br. 15.)
Appellant’s responses to the Examiner’s stated positions present the
following issues:
7. Has the Examiner erred in finding that Chen teaches or suggests
“wherein said at least one generally arcuate member and said at least one
generally spherical-shaped member are integrally molded,” as recited in
claim 5?
8. Has the Examiner erred in finding that Chen teaches or suggests
“wherein said at least one generally spherical-shaped member comprises a
material selected from the group consisting of plastics and elastomers,” as
recited in claim 7?
9. Has the Examiner erred in finding that Chen teaches or suggests
“wherein said material comprises expanded polystyrene,” as recited in
claim 8?
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10. Has the Examiner erred in finding that the combination of Chen
and Bury teaches or suggests “wherein said arcuate hook shape has at least
one generally hemispherical indent,” as recited in claim 12?
11. Has the Examiner erred in finding that the combination of Chen
and Lehmann teaches or suggests “a plurality of hanging arms, each
comprising a ball end, an arcuate shaft and a hanging end,” as recited in
claim 16?
FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Chen
1. Chen describes a “hanger assembly covered with a toy doll.” (Col. 1,
ll. 7-8; fig. 1.) The hanger assembly includes a rod member 10
attached to a hanger 50 and a swivel hook 60, in which a toy doll 20
covers the rod member 10. (Col. 2, ll. 33-37; fig. 1.) The toy doll 20
is covered with a skin 21 (col. 2, ll. 48-49). Figures 1 and 3 illustrate
that the head of the toy doll 20 has a spherical shape with the
exception of minor deviations in the form of a pair of ears and a nose.
Figures 1 and 3 also illustrate that the toy doll 20 includes a top
hemispherical surface surrounding the swivel hook 60. Figure 7
illustrates that the hanger 50 is used for holding a skirt. (Col. 3, ll. 20-
22.) Chen provides no express disclosure of the material composition
or method of manufacturing the hanger assembly.
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Bury
2. Bury relates to garment hangers (col. 1, l. 15; fig. 1) for horizontal
suspension (col. 1, ll. 67-68). The garment hanger includes a bar 10
(col. 1, ll. 61-63) with end portions 12 and 14 (col. 2, ll. 10-11) and a
center portion 16 (col. 2, ll. 15-16). Projections 22 and 24 are secured
to the ends of the bar 10. (Col. 2, ll. 19-20, 25-26; fig. 4.) A screw
hook 32 is secured to the center portion 16 with a screw 34. (Col. 2,
ll. 28-34.)
Lehmann
3. Lehmann relates to a “device . . . used to suspend coat hangers or the
like in order to expand the storage capacity of a closet.” (Abstract.)
A coat hanger suspending device 1 includes a unitary elongated
member 2 and multiple open hook members 6 to suspend the device 1
from a closet pole 3. (Col. 2, ll. 39-45; fig. 1.) The elongated
member 2 includes a plurality of openings 4 spaced along the length
of the elongated member 2 and sized to receive a hook end of a
conventional wire clothing hanger 8. (Col. 2, ll. 58-63.)
Specification
4. Appellant’s Specification describes an apparatus 10 with a hook
portion 40 including a shaped portion 80 that “causes apparatus 10 to
hang facing forward on the small rod that is integral with modern wire
closet shelving.” (Spec. 8:17-21; figs. 1A, 1B.) Figures 1A and 1B
illustrate that the shaped portion 80 is a partially cylindrical indent,
formed in the swivel hook 60.
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ANALYSIS
§ 102 Rejections
Claims 1-3, 6, 9 and 10
With respect to the first issue, we are not convinced by Appellant’s
arguments (App. Br. 6-7; see also Reply Br. 4-6) that Chen does not teach
“at least one generally spherical-shaped member [that] receives and supports
the garment,” as recited in claim 1.
The Examiner found that Chen teaches all the features of claim 1.
(Ans. 3; FF 1.) In particular, the Examiner found that the toy doll 20 of
Chen corresponds to the limitation “at least one generally spherical-shaped
member” and interpreted the feature “receives and supports the garment” to
be a functional limitation. (Ans. 3.)
Under the broadest reasonable interpretation, we agree with the
Examiner that Chen teaches the limitation “at least one generally spherical-
shaped member.” The claim term “generally” is broad. One relevant plain
meaning of “generally” is “for the most part” or “usually.” Random House
Dictionary of the English Language 795 (2d ed. 1987). Under that
construction, Chen meets the disputed limitation because the toy doll 20 of
Chen is spherical “for the most part” or “usually” spherical. (See FF 1.) In
particular, the toy doll 20 may be characterized as generally spherical
because the doll’s head has a spherical shape with the exception of minor
deviations in the form of a pair of ears and a nose. (See FF 1.) Thus, we
find that the Examiner’s construction of “generally spherical-shaped” to be
reasonable. Appellant has not pointed to any special definition of “generally
spherical-shaped” in the Specification that would require a different
interpretation.
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We also agree with the Examiner that the claim language “receives
and supports the garment” is a functional limitation and defines the
“generally spherical-shaped member” by what it does, rather than by its
structure. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Thus,
the “generally spherical-shaped member” must have the ability to “receive[]
and support[] the garment.” Chen teaches that the toy doll 20 includes a top
hemispherical surface surrounding the swivel hook 60 (FF 1) that is capable
of receiving and supporting a garment (see FF 1). While Appellant argues
that the toy doll 20 of Chen is not “a round body whose surface is ‘at all
points equidistant from the center’” (Reply Br. 4) or “sufficient in diameter
and texture such that clothing draped upon it will remain in place and will
not be deformed in shape” (Reply Br. 5), these features are not claimed.
Therefore, the Examiner has not erred in finding that Chen teaches “at
least one generally spherical-shaped member [that] receives and supports the
garment,” as recited in claim 1.
We conclude that the Examiner has not erred in rejecting claim 1
under 35 U.S.C. § 102(b). Because Appellant has not presented separate
arguments regarding claims 2, 3, 6, 9 and 10, we affirm the rejection of these
claims for the same reasons as for claim 1, from which they depend.
Claim 4
With respect to the second issue, we are convinced by Appellant’s
arguments (App. Br. 7-8; see also Reply Br. 6) that Chen does not teach
“wherein said hanger is formed from a moldable material,” as recited in
dependent claim 4.
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The Examiner found that Chen teaches the limitation “wherein said
hanger is formed from a moldable material” because “all materials including
plastics, metals, etc[.] are moldable.” (Ans. 3.) We do not agree.
Chen simply provides no express or inherent disclosure regarding the
material composition or method of manufacturing the rod member 10, the
hanger 50, the swivel hook 60 and the toy doll 20, which is covered with a
skin 21. (FF 1.) As such, it becomes incumbent upon the Examiner to
provide a basis in fact and/or technical reasoning that would support a
finding that Chen’s hanger is, in fact, “formed from a moldable material,” as
recited in claim 4.
We find that although it is certainly possible that Chen’s hanger could
be formed from a moldable material, it is also possible that Chen’s hanger
could be formed from a non-moldable material. Accordingly, we find that
the Examiner’s finding is merely a conclusory statement. See KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”).
Therefore, the Examiner has erred in finding that Chen teaches
“wherein said hanger is formed from a moldable material,” as recited in
claim 4. We conclude that the Examiner has erred in rejecting claim 4 under
35 U.S.C. § 102(b).
Claims 13 and 14
With respect to the third issue, we are not convinced by Appellant’s
arguments (App. Br. 8; see also Reply Br. 7) that Chen does not teach
“obtaining an arcuate hanger having . . . a ball-shaped support” and “hanging
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an object on said ball-shaped support of said arcuate hanger,” as recited in
independent claim 13.
The Examiner found that Chen teaches all the features of independent
claim 13. (Ans. 3.) In particular, the Examiner found that “Chen . . .
inherently teaches the method of using such a hanger.” (Ans. 3.) We agree
with the Examiner.
Appellant argues that Chen “do[es] NOT involve obtaining a hanger
with a ball-shaped support and do[es] NOT involve hanging an object on
said ball-shaped support.” (App. Br. 8.) As discussed previously with
respect to claim 1, Chen teaches a generally spherical-shaped (i.e., ball-
shaped) member that receives and supports a garment. Chen also teaches
that a swivel hook 60 and a hanger 50 are attached to a rod member 10 that
is covered by a toy doll 20. (FF 1.) In other words, Chen teaches that the
hanger 50 is attached to the toy doll 20, where the toy doll 20 receives and
supports the garment. Thus, Chen teaches “hanging an object on said ball-
shaped support.”
Therefore, the Examiner has not erred in finding that Chen teaches
“obtaining an arcuate hanger having . . . a ball-shaped support” and “hanging
an object on said ball-shaped support of said arcuate hanger,” as recited in
claim 13.
We conclude that the Examiner has not erred in rejecting claim 13
under 35 U.S.C. § 102(b). Because Appellant has not presented separate
arguments regarding claim 14, we affirm the rejection of this claim for the
same reasons as for claim 13, from which it depends.
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Claim 15
With respect to the fourth issue, we are convinced by Appellant’s
arguments (App. Br. 9; see also Reply Br. 7) that Chen does not teach
“positioning a garment over and substantially covering the surface of said
ball-shaped support for retention thereby,” as recited in dependent claim 15.
The Examiner found that Chen inherently teaches the limitation
“positioning a garment over and substantially covering the surface of said
ball-shaped support for retention thereby.” (Ans. 3.) We do not agree.
Chen teaches that the hanger 50 of the hanger assembly is used for
holding garments. (FF 1.) However, Chen provides no express or inherent
disclosure of positioning a garment over and substantially covering the
surface of the toy doll 20. Although it is certainly possible that a garment
could substantially cover the surface of the toy doll 20, the Examiner has not
shown that it necessarily does so.
Therefore, the Examiner has erred in finding that Chen inherently
teaches “positioning a garment over and substantially covering the surface of
said ball-shaped support for retention thereby,” as recited in dependent
claim 15. We conclude that the Examiner has erred in rejecting claim 15
under 35 U.S.C. § 102(b).
Claims 18 and 21
With respect to the fifth issue, we are not convinced by Appellant’s
arguments (App. Br. 9-10; see also Reply Br. 7-8) that Bury does not teach
“at least one extension arm, having [a] first end and [a] second end, wherein
said first end is secured to said support frame . . . and at least one ball
attached to said second end,” as recited in claim 18.
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The Examiner found that Bury teaches all the limitations of
independent claim 18. (Ans. 3-4.) In particular, the Examiner found that the
screw hook 32 of Bury corresponds to the claimed “support frame” (Ans. 6),
the end portion 14 corresponds to the claimed “at least one extension arm”
(Ans. 3) and that the projection 22 corresponds to the claimed “one ball”
(Ans. 4). We agree with the Examiner.
Appellant argues that “Bury . . . has a two-ended extension arm,
CENTRALLY secured to a support hanger, with each of the two extended
ends carrying a ball.” (App. Br. 10.) However, Bury teaches that a central
portion 16 (i.e., “first end”) of a garment hanger bar 10 is secured to a screw
hook 32 (i.e., “support frame”) in which a projection 22 (i.e., “one ball”) is
mounted to an end of the bar 10 (i.e., “second end”). (FF 2.) In other words,
Bury teaches “at least one extension arm, having [a] first end and [a] second
end, wherein said first end is secured to said support frame . . . and at least
one ball attached to said second end.”
Therefore, the Examiner has not erred in finding that Bury teaches “at
least one extension arm, having [a] first end and [a] second end, wherein
said first end is secured to said support frame . . . and at least one ball
attached to said second end,” as recited in claim 18.
We conclude that the Examiner has not erred in rejecting claim 18
under 35 U.S.C. § 102(b). Because Appellant has not presented separate
arguments regarding claim 21, we affirm the rejection of this claim for the
same reasons as for claim 18, from which it depends.
Claims 19 and 20
With respect to the sixth issue, we are convinced by Appellant’s
arguments (App. Br. 10-11; see also Reply Br. 8-9) that Bury does not teach
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“said at least one extension arm comprises at least one upper extension arm
and at least one lower extension arm,” as recited in claim 19.
The Examiner found that the end portions 12 and 14 of Bury
correspond to the “upper extension arm” and the “one lower extension arm,”
respectively. (Ans. 7.) We do not agree.
We construe the claim terms “upper” and “lower” as relating to
relative vertical heights of the two extension arms. Bury teaches a garment
hanger for horizontal suspension, including a bar 10 with end portions 12
and 14. (FF 2.) Because Bury teaches that the end portions 12 and 14 are at
the same relative height (see FF 2), we find it unreasonable to interpret one
end portion of Bury as the “upper extension arm” and the other end portion
as the “one lower extension arm.”
Therefore, the Examiner has erred in finding that Bury teaches “said
at least one extension arm comprises at least one upper extension arm and at
least one lower extension arm,” as recited in claim 19.
We conclude that the Examiner has erred in rejecting claim 19 under
35 U.S.C. § 102(b). Claim 20 depends from claim 19, and we likewise
conclude that the Examiner has erred in rejecting this claim, for the reasons
discussed with respect to claim 19.
§ 103 Rejections
Claim 5
With respect to the seventh issue, we are not convinced by
Appellant’s arguments (App. Br. 12; see also Reply Br. 9) that Chen does
not teach or suggest “wherein said at least one generally arcuate member and
said at least one generally spherical-shaped member are integrally molded,”
as recited in dependent claim 5.
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Chen teaches that a hanger assembly, including a swivel hook 60
attached to a toy doll 20, is a known structure. (See FF 1.) Integrally
molding multiple separate components is also a known manufacturing
method. Thus, modifying Chen to integrally mold the swivel hook 60 and
the toy doll 20 is nothing more than the combination of known elements
according to known methods (i.e., manufacturing the known hanger
assembly of Chen using a known manufacturing method) to yield
predictable results. See KSR, 550 U.S. at 416.
Therefore, the Examiner has not erred in finding that Chen teaches or
suggests “wherein said at least one generally arcuate member and said at
least one generally spherical-shaped member are integrally molded,” as
recited in claim 5. We conclude that the Examiner has not erred in rejecting
claim 5 under 35 U.S.C. § 103(a).
Claims 7 and 8
With respect to the eighth and ninth issues, we are not convinced by
Appellant’s argument (App. Br. 12-13; see also Reply Br. 9) that Chen does
not teach or suggest “wherein said at least one generally spherical-shaped
member comprises a material selected from the group consisting of plastics
and elastomers” and “wherein said material comprises expanded
polystyrene,” as recited in dependent claims 7 and 8, respectively.
Chen teaches that a hanger assembly, including a toy doll 20, is a
known structure. (See FF 1.) Plastics and elastomers, including expanded
polystyrene, are known materials. Thus, modifying Chen to form the toy
doll 20 from plastics, elastomers or expanded polystyrene is nothing more
than the combination of known elements according to known methods (i.e.,
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manufacturing the known hanger assembly of Chen using a known material)
to yield predictable results. See KSR, 550 U.S. at 416.
Therefore, the Examiner has not erred in finding that Chen teaches or
suggests “wherein said at least one generally spherical-shaped member
comprises a material selected from the group consisting of plastics and
elastomers” and “wherein said material comprises expanded polystyrene,” as
recited in claims 7 and 8, respectively. We conclude that the Examiner has
not erred in rejecting claims 7 and 8 under 35 U.S.C. § 103(a).
Claim 11
Although Appellant nominally argues the rejection of dependent
claim 11 separately (App. Br. 13-14), the arguments presented do not point
out with particularity or explain why the limitations of this dependent claim
are separately patentable. Instead, Appellant merely reiterates the arguments
previously presented with respect to claim 1 and summarily alleges that
“dependent Claim 11 [indirectly] . . . depends from Claim 1, [and] contrary
to [the] Examiner’s assertion, Chen . . . does not teach Applicant’s device.”
(App. Br. 13-14.) Therefore, we will sustain the rejection of claim 11, for
the reasons discussed with respect to independent claim 1, from which claim
11 ultimately depends.
Claim 12
With respect to the tenth issue, we do not reach the merits of the
Examiner’s rejection of claim 12 under 35 U.S.C. § 103(a). Rather, we
reverse pro forma the outstanding rejection under 35 U.S.C. § 103(a)
because, as will be discussed in the new ground of rejection, claim 12 fails
to satisfy the requirements of 35 U.S.C. § 112, second paragraph.
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Before a proper review of the prior art rejections can be performed,
the subject matter encompassed by the claims on appeal must be reasonably
understood without resort to speculation. See In re Steele, 305 F.2d 859, 862
(CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical
person of ordinary skill in the art would have to make speculative
assumptions concerning the meaning of claim language.); see also In re
Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably definite
meaning can be ascribed to certain terms in the claim, the subject matter
does not become obvious-the claim becomes indefinite.”). Presently,
speculation and conjecture must be utilized by us and by the artisan
inasmuch as claim 12 on appeal does not adequately reflect what the
disclosed invention is under the second paragraph of 35 U.S.C. § 112.
Claim 16
With respect to the eleventh issue, we are not convinced by
Appellant’s arguments (App. Br. 14-15; see also Reply Br. 10-11) that the
combination of Chen and Lehmann does not teach or suggest “a plurality of
hanging arms, each comprising a ball end, an arcuate shaft and a hanging
end,” as recited in claim 16.
The Examiner acknowledged that Chen does not teach or suggest a
“means for interconnecting said plurality of hanging arms” (Ans. 5) and
cited Lehmann for the disclosure of an elongated member 2 with multiple
openings 4 to receive conventional wire clothing hangers 8 (Ans. 5; FF 3).
The Examiner concluded that claim 16 would have been obvious over the
combination of Bury and Lehmann. (Ans. 5.) We agree with the Examiner.
Chen relates to a toy doll 20 hanger assembly including a swivel
hook 60 and a hanger 50. (FF 1.) Lehmann relates to a hanger suspending
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device 1 including an elongated member 2 with a plurality of openings 4 to
receive conventional wire clothing hangers 8. (FF 3.) Combining Chen and
Lehmann is no more than the simple substitution of the toy doll 20 hanger
assemblies of Chen for the conventional wire clothing hangers 8 of Lehmann
to be placed in the elongated member 2 of Lehmann containing multiple
openings 4, with no unexpected results. See KSR, 550 U.S. at 417.
Appellant has not presented any convincing arguments or evidence that the
Examiner erred in combining Chen with Lehmann.
Appellant argues that the combination of Chen and Lehmann does not
disclose a “plurality of hanging arms, each comprising a ball end, arcuate
shaft and hanging end” because “Chen . . . is a singular hanger with a toy
attached, and is not configured in a manner that could even lend itself to a
means for interconnecting” while “Lehmann . . . is nothing more than a
hanging strip with apertures that are capable of receiving any type of
hanging device.” (App. Br. 15.) This argument is not persuasive because
substituting the toy doll 20 hanger assemblies of Chen for the conventional
wire clothing hangers 8 of Lehmann in the elongated member 2 of Lehmann
would result in the placement of the toy doll 20 hanger assembly of Chen in
each of the multiple openings 4 in the elongated member 2 of Lehmann.
Therefore, the Examiner has not erred in finding the combination of
Chen and Lehmann teaches or suggests “a plurality of hanging arms, each
comprising a ball end, an arcuate shaft and a hanging end,” as recited in
claim 16. We conclude that the Examiner has not erred in rejecting claim 16
under 35 U.S.C. § 103(a).
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Claim 17
Although Appellant nominally argues the rejection of dependent
claim 17 separately (App. Br. 15-16), the arguments presented do not point
out with particularity or explain why the limitations of this dependent claim
are separately patentable. Instead, Appellant merely reiterates the arguments
previously presented with respect to claim 16 and summarily alleges that
“the arguments made above with respect to claim 16 also apply to the
rejection of claim 17.” (App. Br. 15-16.) Therefore, we will sustain the
rejection of claim 17 for the reasons discussed with respect to independent
claim 16, from which claim 17 depends.
NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
We make the following new ground of rejection using our authority
under 37 C.F.R. § 41.50(b).
35 U.S.C. § 112, Second Paragraph
Claim 12 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention.
Claim 12 recites “wherein said arcuate hook shape has at least one
generally hemispherical indent therein” (emphasis added). Appellant’s
Specification describes an apparatus 10 with a hook portion 40 including a
shaped portion 80. (FF 4.) Figures 1A and 1B illustrate the shaped
portion 80 as a partially cylindrical indent (FF 4), rather than a
“hemispherical indent,” as recited in claim 12. This inconsistency between
claim 12 and Figures 1A and 1B renders the claim indefinite. See In re
Cohen, 438 F.2d 989, 993 (CCPA 1971).
Appeal 2009-013336
Application 10/776,848

20
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that a “new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner . . . .
(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record . . . .
CONCLUSION
Based on the findings of fact and analysis above, we conclude that:
(1) The Examiner has erred in rejecting claims 4, 15, 19 and 20 under
35 U.S.C. § 102(b);
(2) The Examiner has not erred in rejecting claims 1-3, 6, 9, 10, 13,
14, 18 and 21 under 35 U.S.C. § 102(b);
(3) The Examiner has not erred in rejecting claims 5, 7, 8, 11, 16 and
17 under 35 U.S.C. § 103(a);
(4) Claim 12 is unpatentable under 35 U.S.C. § 112, second paragraph
because it is indefinite.
DECISION
The rejection of claims 4, 15, 19 and 20 under 35 U.S.C. § 102(b) is
reversed.
Appeal 2009-013336
Application 10/776,848

21
The rejection of claims 1-3, 6, 9, 10, 13, 14, 18 and 21 under 35
U.S.C. § 102(b) is affirmed.
The rejection of claims 5, 7, 8, 11, 16 and 17 under 35 U.S.C. § 103(a)
is affirmed.
The rejection of claim 12 under 35 U.S.C. § 103(a) is reversed.
Claim 12 is rejected under 35 U.S.C. § 112, second paragraph as
being indefinite.
A new ground of rejection has been entered under 37 C.F.R.
§ 41.50(b).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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