Ex Parte Myers

Patent Trial and Appeal Board

Feb 25, 2015

11429749 (P.T.A.B. Feb. 25, 2015)

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.
11/429,749 05/09/2006 William Robert Myers 2289 5352
52207 7590 02/25/2015
LAW OFFICES OF LARRY K. ROBERTS, INC.
2603 Main Street
9th Floor
Irvine, CA 92614-6232
EXAMINER
NGUYEN, PHU HOANG
ART UNIT PAPER NUMBER
1747
MAIL DATE DELIVERY MODE
02/25/2015 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM ROBERT MYERS
____________

Appeal 2013-005306
Application 11/429,749
Technology Center 1700
____________

Before TERRY J. OWENS, N. WHITNEY WILSON, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.

ABRAHAM, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
decision of the Primary Examiner rejecting claims 5–20. We have
jurisdiction pursuant to 35 U.S.C. § 6(b). We affirm.

BACKGROUND
Appellant’s claimed invention is directed to a clip for attaching a cigar
to a hat. Spec. 1.
Independent claim 5 is illustrative and reproduced below:
5. A clip for attaching a cigar to a hat or cap, the clip
comprising a unitary one-piece structure including:
a face plate;
a first middle plate;
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a first curved side connecting the face plate and the first
middle plate;
a second middle plate;
a second curved side connecting the first middle plate
and the second middle plate and supporting the first and second
middle plates in a generally parallel facing relationship;
a rear plate;
a third curved side connecting the second middle plate
and a first end of the rear plate such that a gap is defined
between the rear plate and the second middle plate, the gap
narrowing from a wide gap dimension at said first end of the
rear plate and a narrow gap dimension at a distal unattached end
of the rear plate; and
wherein said face plate has a protuberance located on a
rear side of said face plate and extending horizontally across the
rear side of said face plate; and
wherein the clip is configured such that during use, the
clip is attachable to a portion of a hat or cap through the gap
between the rear plate and the second middle plate with an
enclosed portion of the hat or cap occupying a space enclosed
by the rear plate, third curved side, and second middle plate,
and the rear plate flexes toward the second middle plate so that
the rear plate and second middle plate engage the enclosed
portion of the hat or cap in frictional engagement, thereby
securing the clip to the hat or cap, and further configured to
hold a cigar inserted into a region of the clip between facing
sides of the face place [sic] and first middle plate and between
the protuberance and the inside surface of the first curved side,
the face plate configured to flex to accommodate cigars of
varying diameter within said region of the clip, and wherein
said flexing of the face plate and boundaries defined by facing
sides of the face plate, the first middle plate, the inside surface
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of first curved side, and the protuberance cooperate to stow a
cigar within said clip during non-use of said cigar.

The Examiner maintains, and Appellant appeals, the following
grounds of rejection:
1. Claims 5, 6, 8–12, 14, 15, and 17–20 as unpatentable under 35
U.S.C. § 103(a) over Simpson (US 5,867,874, issued Feb. 9,
1999), in view of Reath (US 5,137,242, issued Aug. 11, 1992) and
Nespoli (US 5,082,225, issued Jan. 21, 1992);
2. Claims 7, 13, and 16 as unpatentable under 35 U.S.C. § 103(a)
over Simpson in view of Reath and Nespoli, and further in view of
Lynch (US 2,448,105, issued Aug. 31, 1948).

OPINION

Claim 5

The Examiner finds that Simpson discloses a hat clip having most of
the required features of independent claim 5, but acknowledges that Simpson
does not expressly disclose a second middle plate or a rear plate that flexes
toward a second middle plate such that the rear plate and second middle
plate engage the enclosed portion of a hat in frictional engagement. Ans. 3–
5.
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The Examiner finds that Reath discloses a clip having a first middle
plate and second middle plate connected by a curved side. Ans. 5.
According to the Examiner, it would have been obvious to a person of
ordinary skill in the art to add a second middle plate to Simpson’s clip so
that the first and second middle plates can flex away from and towards each
other to accommodate objects of different sizes and shapes, as taught by
Reath. Id.
The Examiner further finds that Nespoli discloses a clip wherein a
rear plate flexes towards a middle plate so that the rear plate and second
middle plate engage a material in frictional engagement. Id. (citing Nespoli
Figs. 1 and 2). The Examiner determines that it would have been obvious to
a person of ordinary skill in the art to incorporate the feature disclosed by
Nespoli into Simpson’s clip in order to help secure the clip to an object. Id.
Appellant argues that the Examiner failed to establish a prima facie
case of obviousness because the prior art references do not teach or suggest
the claimed invention. App. Br. 11. Appellant contends that the applied
references have nothing to do with cigars, and therefore the concept of
providing a clip for attaching a cigar to a hat is not taught or suggested by
Simpson, Reath, or Nespoli. Id. at 12.
Specifically with regard to Simpson, Appellant contends that in
addition to the structural differences identified by the Examiner, Simpson
does not disclose a clip having the specific features required to make it
“configured to hold a cigar” because Simpson “is concerned with holding
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pencils and pens, not cigars, which have varying sizes and thickness
dimensions.” Id. at 14–15.
Appellant further argues that there is no reason why a person of
ordinary skill in the art would look to Reath, which describes a holder for
eye glasses, to modify the pencil holder of Simpson. Id. at 15. Appellant
also contends that adding a second middle plate to Simpson would be
superfluous, and would not add any useful function to the device. Id.
Similarly, Appellant takes the position that there is no reason why a person
of ordinary skill in the art would look to Nespoli to modify Simpson when
Simpson is directed to a holder for pencils and already has a hat clamping
area. Id. at 16.
We are not persuaded by Appellant’s arguments.
Although Appellant maintains that Simpson is directed to a holder for
pencils or pens, Simpson is not so limited. Simpson more generally
describes a holder for an “elongated implement” (see, e.g., Simpson
Abstract, 2:14–16), which would include a cylindrical object such as a cigar
(Ans. 11). And, as the Examiner points out, pencils and pens, like cigars,
have varying sizes and thickness dimensions. Ans. 8. Because Appellant
has failed to provide any persuasive factual evidence to the contrary, we
find, as did the Examiner, that Simpson’s clip is configured to hold a cigar.
See Ans. 4–5.
As to any remaining structural differences between the claimed
subject matter and Simpson, Appellant does not dispute that Reath discloses
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a clip having a second middle wall or that Nespoli discloses the type of clip
wherein a rear plate flexes towards a middle plate so that the rear plate and
second middle plate engage the enclosed portion in frictional engagement.
Nor does Appellant specifically contest the benefits attributed to these
features in Reath and Nespoli, respectively. In view of this, Appellant’s
argument that a person of ordinary skill in the art would not have looked to
Reath or Nespoli to modify the clip in Simpson because Reath and Nespoli
are generally directed to clips for eye glasses, and not pencils, lacks
persuasive merit. KSR Int’l Co. v. Telefex Inc., 550 US 398, 417 (2007)
(“When a work is available in one field of endeavor, design incentives and
other market forces can prompt variations of it, either in the same field or a
different one.”).
Accordingly, we find that the Examiner established a prima facie case
that the claimed subject matter would have been obvious to a person of
ordinary skill in the art based on the combination of Simpson, Reath, and
Nespoli, and that Appellant has not demonstrated reversible error on the part
of the Examiner. We therefore affirm the Examiner’s rejection of claim 5.
Because Appellant does not provide separate, persuasive arguments
regarding the patentability of claims 6–13 (see App. Br. 16–18), we affirm
the rejection of these claims for the same reasons we affirm the rejection of
claim 5.

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Claim 14
Independent claim 14 includes requirements similar to those present
in claim 5 and also requires that each of the curved sides traverse
approximately 180 degrees when connecting the plates in the clip.
The Examiner finds that the combination of Simpson, Reath, and
Nespoli discloses the curved sides traversing 180 degrees. Ans. 6.
Specifically, the Examiner notes that Reath discloses curved surfaces
connecting a face plate to a first middle plate, the first middle plate to the
second middle plate, and the second middle plate to the rear plate. Id. at 5;
see also Reath Fig. 2 and 3:65–4:3.
In addition to the arguments presented in response to the Examiner’s
rejection of claim 5, Appellant argues that Simpson does not disclose curved
sides that traverse 180 degrees, and
there is no discussion of how or why Simpson could be
modified to include the missing features, particularly
with Simpson using a common base for all legs 9, 10, 13.
Reath’s holder for spectacles is for resting on a flat
horizontal surface, or to be mounted to a vertical surface
(by adhesive 56), and is not designed to attach to a cap or
hat.
App. Br. 19.
In addition to the reasons discussed above with regard to claim 5, we
find that in identifying the benefits of Reath’s design, the Examiner has
explained why it would have been obvious to modify Simpson to include
Reath’s features. Moreover, the Examiner need not demonstrate how
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Simpson would actually be modified to include the features of Simpson. See
In re Keller, 642 F.2d 413 (CCPA 1981). Rather, for purposes of an
obviousness rejection, the relevant inquiry is what the combined teachings
would have suggested to a person of ordinary skill in the art. Id.
In view of the foregoing, we affirm the Examiner’s rejection of claim
14. Appellant does not separately argue the patentability of dependent
claims 15, 16, 18, and 19. Therefore, we affirm the Examiner’s rejection of
these claims as well.

Claim 17
Claim 17 depends from claim 14, and requires that the rear plate is
disposed in an angular relation towards the face plate and first and second
middle plates, such that the rear plate is furthest away from the other plates
at the connection point to the third curved side (i.e., the bottom of the
plates).
The Examiner finds that the subject matter of claim 17 would have
been obvious to a person of skill in the art based on the combined disclosure
of Simpson, Reath, and Nespoli. Ans. 7, 11.
In addressing the rejection of claim 17, Appellant refers only to the
features of Reath’s clip, arguing that the rear plate forms an “open V-shape
configuration,” which is the opposite of that required in the claims. App. Br.
19. Because Appellant has failed to address the combination of references,
including Nespoli, which appears to show a rear plate that is disposed in the
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claimed angular relation with respect to the face plate, we sustain the
Examiner’s rejection of claim 17.

Claim 20
Claim 20 ultimately depends from claim 14, and requires, inter alia,
that “the face plate by means of the first curved side can flex towards or
away from the first middle plate to accommodate cigars of varying
diameter.” App. Br. 28.
Once again, the Examiner finds that the subject matter of claim 20
would have been obvious to a person of skill in the art based on the
combined disclosure of Simpson, Reath, and Nespoli. Ans. 7, 11.
Appellant argues that Reath has a bridge rest, and therefore provides
no ability for the forward face plate to flex. Ans. 20. Appellant, however,
again fails to address the combined disclosure of Simpson, Reath, and
Nespoli, which, according to the Examiner, discloses that the “first plate is
capable of flexing to accommodate objects with varying diameter with a
snug engagement (fig. 2 of Nespoli, fig. 2 of Reath, and fig. 1 of Simpson).”
Ans. 7.
In view of the Appellant’s failure to demonstrate reversible error, we
sustain the Examiner’s rejection of claim 20.

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CONCLUSION
For the reasons set forth above, we affirm the Examiner’s final
rejection of claims 5–20 under 35 U.S.C. § 103.
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
tc