Ex Parte Nazginov

Board of Patent Appeals and Interferences

Apr 18, 2012

10964436 (B.P.A.I. Apr. 18, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/964,436 10/13/2004 Arthur Nazginov P/3986-9 3539
2352 7590 04/18/2012
OSTROLENK FABER LLP
1180 AVENUE OF THE AMERICAS
NEW YORK, NY 10036-8403
EXAMINER
BARFIELD, ANTHONY DERRELL
ART UNIT PAPER NUMBER
3636
MAIL DATE DELIVERY MODE
04/18/2012 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 ARTHUR NAZGINOV
________________

Appeal 2010-004030
Application 10/964,436
Technology Center 3600
________________

Before STEVEN D. A. McCARTHY, EDWARD A. BROWN and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/964,436

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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1 and 3-8. Claim 2 has been canceled (App. Br. 1). We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and we designate this affirmance as new grounds of
rejection pursuant to 37 C.F.R. § 41.50(b).

The Claimed Subject Matter
The claimed subject matter pertains to a slipcover having a ruffle
attached to the main body portion along a stitch line and pairs of ties to
gather and tighten the main body portion. Independent claim 1 is illustrative
of the claims on appeal and is reproduced below:
1. A slipcover for a piece of furniture including at least a
base and at least one seat cushion, said slipcover comprising:
a seat cushion covering portion including an endless,
circumference adjusting member constructed substantially
entirely of an elastic band material for varying a peripheral
dimension thereof;
a main body portion for covering the base of the piece of
furniture;
a ruffle attached to the main body portion along a stitch
line;
the stitch line surrounds a major portion of the
circumference adjusting member with the stitch line
approaching the circumference adjusting member at first and
second locations thereof, so that the first and second locations
define therebetween a front portion of the slipcover; and
first and second pairs of ties located adjacent the first and
second locations so as to enable a gathering and tightening of
the main body portion about the base of the piece of furniture.

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Application 10/964,436

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References Relied on by the Examiner
English US 4,676,549 Jun. 30, 1987
White US 5,664,831 Sep. 9, 1997
Stevens US 5,809,595 Sep. 22, 1998
White US 6,116,685 Sep. 12, 2000

The Rejections on Appeal
1. Claims 1 and 5-7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over White ʼ831 and White ʼ685 (Ans. 3).
2. Claims 3 and 8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over White ʼ831, White ʼ685 and English (Ans. 4).
3. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over White ʼ831, White ʼ685 and Stevens (Ans. 5).

ANALYSIS
The rejection of claims 1 and 5-7
over White ʼ831 and White ʼ685
Appellant argues claims 1, 5 and 6 together as a group (App. Br. 4).
We select independent claim 1 for review with dependent claims 5 and 6
standing or falling with claim 1 (37 C.F.R. § 41.37(c)(1)(vii) (2011)).
Appellant also provides separate arguments for independent claim 7 which
will be separately addressed (App. Br. 6).

Claim 1
Claim 1 requires a ruffle attached to the main body portion “along a
stitch line” and also that there be “first and second pairs of ties” to gather
and tighten excess material of the main body portion. The Examiner relies
on White ʼ831 for all the limitations of claim 1 except that “White et al ʼ831
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does not disclose the use of first and second pairs of ties” (Ans. 4). The
Examiner relies on White ʼ685 for teaching “a slipcover comprising the use
of first and second pair of ties (33a, 33d)” (Ans. 4). The Examiner
concludes that it would have been obvious “to modify the slipcover of White
et al. (ʼ831) with the first and second pair of ties as taught by White et al.
(ʼ685) in order to better improve the fit of the slipcover as well as provide a
more aesthetically pleasing appearance” (Ans. 4).
Appellant initially contends that White ʼ831 does not disclose “a stitch
line” between the ruffle and the main body portion but instead White ʼ831
discloses an elastic cinch element 44 therebetween (App. Br. 5, Reply Br. 1).
Appellant’s Specification provides guidance regarding the meaning of this
term by stating “[a] line of stitching connecting pieces of the material of the
slipcover, in and of itself, does not constitute a cinching or an adjusting
member” (Spec. 5:16-18). Appellant contends that a “stitch line” “simply
indicates the junction line between two different pieces of material that are
‘stitched’ together. A stitch line does not adjust the circumference of
anything” (App. Br. 5) 1.
Addressing this matter, the Examiner identifies where White ʼ831
teaches “a ruffle (48) attached to the main body portion along a stitch line
via the cinch element (44) which may be sewn to the main body portion”

1 Appellant’s Specification further distinguishes between the properties of
the stitch line and the material being stitched stating that cinching element
26 “controls the effective peripheral dimension of the seat cushion covering
portion. This cinching element 26 is in the form of an elastic band which is
secured to the periphery of the seat cushion covering portion 22, while the
band is in an extended or stretched condition. In this way, when the band is
allowed to relax and return to an unstretched condition, it cinches the
periphery of the seat cushion covering portion 22 in a manner similar to a
shower cap” (Spec. 8:6-12).
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(Ans. 4 referencing White ʼ831 7:43-45 and 9:6-9). Accordingly, the
Examiner states that “White et al, (ʼ831) clearly establishes that the cinch
element (44) and skirt/ruffle (48) are attached to the main body portion via
sewing which inherently creates a stitch line so far as defined by the claimed
invention” (Ans. 5-6). The Examiner further notes that a non-elastic joining
between the ruffle and the main body portion is not a claim limitation (Ans.
6). Accordingly, we agree with the Examiner’s rationale that White ʼ831
teaches “a ruffle attached to the main body portion along a stitch line” as
claimed and are not persuaded by Appellant’s contention that White ʼ831
fails to disclose a stitch line between the ruffle and the main body portion.
Appellant also contends that there is no suggestion to provide ties
adjacent the junction of members 34 and 44 of White '831, however,
Appellant does acknowledge that the use of ties adjacent seams is well
known in the art (App. Br. 6, Spec. 2:16-19). The Examiner references
Figure 5 of White ʼ831 as teaching where the corresponding components
approach each other as claimed and relies on White ʼ685 for disclosing pairs
of ties to provide an aesthetically pleasing appearance (Ans. 4). Appellant
provides no persuasive reason why one of ordinary skill in the art could not
have implemented such a modification. Neither does Appellant provide any
persuasive reason why the results of the modification would have been
unpredictable. Accordingly, the Examiner is correct in concluding that such
a modification would have been obvious.
Appellant’s further contentions regarding the Examiner’s reliance on
White ʼ685 do not address the reason this reference was cited (i.e. pairs of
ties) and accordingly, these contentions are not persuasive (App. Br. 6).
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Appellant additionally contends that due to the elastic nature of cinch
element 44 disclosed in White ʼ831, it would be redundant to also provide
pairs of ties for gathering and tightening purposes (Reply Br. 1). The
Examiner’s stated rationale is directed to a modification of the slipcover of
White ʼ831 with a the ties of White ʼ685 but the Examiner is silent as to
whether this modification involves adding ties to the existing elastic band or
substituting ties for the existing elastic band to gather the relevant material
(Ans. 4). In view of this silence, we affirm the Examiner’s rejection under
White ʼ831 and White ʼ685 based on a mere substitution of the ties for the
elastic band. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416
(2007)(“[W]hen a patent claims a structure already known in the prior art
that is altered by the mere substitution of one element for another known in
the field, the combination must do more than yield a predictable result.”).
However, since our rationale arguably differs from that of the Examiner,
pursuant to our authority under 37 C.F.R. § 41.50(b), we designate this
affirmance as a new ground of rejection in order to afford Appellant a fair
opportunity to respond.

Claim 7
Independent claim 7 requires a fabric construction having “a high
pouch for the backrest of the chair” along with “first and second pairs of
ties” for folding and holding excess fabric against the chair backrest. The
Examiner finds that “changing the mere size or dimensions of the slipcover
is within the teaching of one of ordinary skill in the art” and that it would
have been obvious to modify “the slipcover of White et al. ('831) with the
first and second pair of ties as taught by White et al. ('685) in order to better
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improve the fit of the slipcover as well as provide a more aesthetically
pleasing appearance” (Ans. 4). Appellant does not dispute the Examiner’s
rationale other than to state that “[n]othing comparable is shown in the cited
prior art” and as such, the rejection “over the combined teachings of White
ʼ831 and White ʼ685 should be reversed” (App. Br. 6). Appellant does not
contend that it is beyond the ability of one skilled in the art to change the
size of a slipcover and accordingly, we do not find Appellant’s contention
persuasive.
As discussed earlier, our rationale for modifying the slipcover of
White ('831) in view of the teachings of White ('685) arguably differs from
the Examiner’s rationale. Accordingly, we sustain the Examiner’s rejection
of claim 7 and designate the affirmance as a new ground of rejection.

The rejection of dependent claims 3 and 8
over White ʼ831, White ʼ685 and English
Appellant argues dependent claims 3 and 8 together as a group and we
select claim 3 for review with claim 8 standing or falling with claim 3 (App.
Br. 7). Claim 3 depends from claim 1 and further requires that “each pair of
ties is constructed as an elongated band or (sic.) material that is folded in
half with the free ends thereof being sewn to the slipcover with each
fastening tie defining a loop.” The Examiner further relies on English for
teaching “a seat cover comprising of ties (22) having a loop shape for
attaching the slipcover to a piece of furniture” (Ans. 4-5).
Appellant contends that English does not disclose a “pair of loops that
are used as two ties that are ‘tied’ with on another” nor is there any
description “of the manner in which the ties extend in parallel with one
another” (App. Br. 7). Claim 3 does not require the ties to be tied together
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or be parallel and as such, these contentions are not persuasive. Regarding
the claim limitation of “each fastening tie defining a loop”, English’s Figure
3 discloses loop ties at adjacent corners (see also English 4:3-5). Appellant
further contends that English’s ties are not “used to support and gather
together loose material behind the chair” but English was not cited for
gathering purposes, but instead to show that ties in slipcovers may be looped
rather than linear as in White ʼ685 (App. Br. 7; Ans. 4-5). In view of the
record presented, Appellant’s contentions are not persuasive.
As discussed earlier, our rationale for modifying the slipcover of
White ('831) in view of the teachings of White ('685) arguably differs from
the Examiner’s rationale. Accordingly, we sustain the Examiner’s rejection
of claims 3 and 8; and designate the affirmance as a new ground of rejection.

The rejection of dependent claim 4
over White ʼ831, White ʼ685 and Stevens
Claim 4 depends from claim 1 and further requires “no-slip pads
attached to the seat cushion covering portion adjacent the circumference
adjusting member.” The Examiner further relies on Stevens for showing
“the conventional use of a seat pad (2) with a non-slip pad (6) to secure the
seat pad to the surface of a seat” (Ans. 5). Appellant contends that Stevens
does not teach a construction where the non-slip pads are secured “around
the perimeter on the underside of the seat cushion” (App. Br. 7).
Appellant’s contention is not persuasive because Stevens specifically
teaches top and bottom seat pads where the bottom “is provided with a non-
slip, rubberized backing” and where the top and bottom members are
secured “to one another by means of stitching located along the perimeter of
both” (Stevens Abstract, Fig. 3 and 3:28-37). Accordingly, Appellant’s
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contention that Stevens does not disclose a non-slip pad secured around the
perimeter of a seat cushion in not persuasive. As discussed earlier, our
rationale for modifying the slipcover of White ('831) in view of the
teachings of White ('685) arguably differs from the Examiner’s rationale.
Accordingly, we sustain the Examiner’s rejection of claim 4 and designate
the affirmance as a new ground of rejection.

DECISION
The Examiner’s decision rejecting claims 1 and 3-8 under 35 U.S.C.
§ 103(a) is affirmed. However, we affirm the Examiner’s decision based on
reasoning which differs from that expressed by the Examiner. Pursuant to
our authority under 37 C.F.R. § 41.50(b), we designate our affirmance as
new grounds of rejection in order to afford Appellant a fair opportunity to
respond.
37 C.F.R. § 41.50(b) provides “[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 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 the appeal 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
§ 41.52 by the Board upon the same record . . .
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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; 37 C.F.R. § 41.50(b)

MP