Ex Parte Perthou

Board of Patent Appeals and Interferences

May 7, 2008

09752015 (B.P.A.I. May. 7, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte PETER PERTHOU
___________

Appeal No. 2007-2838
Application No. 09/752,015
Technology Center 3600
___________

Decided: May 7, 2008
___________

Before TERRY J. OWENS, HUBERT C. LORIN and JOHN C. KERINS,
Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant appeals from a rejection of claims 1-11, which are all of the
pending claims.
THE INVENTION
The Appellant claims a key ring and a method for making it. Claims 1 and
11 are illustrative:
1. A key ring comprising,

a key-holding ring,
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a band,

a D-ring coupling said band to said key-holding ring,

said D-ring having a U-shaped portion engaging the key-holding ring
and a bar between the ends of the U-shaped portion and engaging the
band.

11. A method of making a key ring that includes a key-holding ring that is a
spiral ring of material having a cross-sectional span, a band, a D-ring coupling said
band to said key-holding ring and having a U-shaped portion engaging the key-
holding ring and a bar having bar ends between the ends of the U-shaped portion
formed with a gap intermediate said bar ends of width about that of said span to
allow said key-holding ring to pass through said gap into said D-ring during
assembly, comprising,

passing the key-holding ring through the gap into the D-ring, and

passing the band through the D-ring.

THE REFERENCES
Miller US 1,704,137 Mar. 5, 1929
Momemers US 4,523,443 Jun. 18, 1985
Sheldon US 4,601,185 Jul. 22, 1986
Jung US 4,903,514 Feb. 27, 1990
Chen US 5,069,050 Dec. 3, 1991
Perthou US D435,720 S Jan. 2, 2001

THE REJECTIONS
The claims stand rejected as follows: claims 1-11 under the judicially
created doctrine of obviousness-type double patenting over the claim of Perthou;
claims 1, 6 and 11 under 35 U.S.C. § 103 over Chen in view of Jung and either
Momemers or Sheldon; and claims 2-5 and 7-10 under 35 U.S.C. § 103 over Chen
in view of Jung, either Momemers or Sheldon, and Miller.
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OPINION
The obviousness-type double patenting rejection is reversed as to claims 1,
2, 4 and 6-11, and affirmed as to claims 3 and 5. The rejection under
35 U.S.C. § 103 over Chen in view of Jung and Momemers is affirmed. The
rejection under 35 U.S.C. § 103 over Chen in view of Jung, Momemers and Miller
is affirmed as to claims 2, 4, 7 and 9, and reversed as to claims 3, 5, 8 and 10. The
rejections under 35 U.S.C. § 103 over Chen in view of Jung and Sheldon and over
Chen in view of Jung, Sheldon and Miller are reversed. Because the affirmances
are based upon reasoning that differs substantially from that set forth by the
Examiner, we denominate the affirmances as involving new grounds of rejection.

Obviousness-type double patenting rejection
Claims 1, 2, 4 and 6-11
An “obviousness-type double patenting rejection is appropriate only if the
claims of the two patents cross-read, meaning that ‘the test is whether the subject
matter of the claims of the patent sought to be invalidated would have been
obvious from the subject matter of the claims of the other patent, and vice versa’”.
In re Dembiczak, 175 F.3d 994, 1002 (Fed. Cir. 1999), quoting Carmen Indus., Inc.
v. Wahl, 724 F.2d 932, 940 (Fed. Cir. 1983). “In order for a design to be
unpatentable because of obviousness, there must first be a basic design reference in
the prior art, the design characteristics of which are ‘basically the same as the
claimed design’”. Dembiczak at 1002, quoting In re Borden, 90 F.3d 1570, 1574
(Fed. Cir. 1996). Thus, for a utility patent application claim to render obvious a
design patent claim, the utility patent application claim must indicate design
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characteristics that are basically the same as the claimed design. See Dembiczak at
1002.
The Appellant’s claim 1, which is the sole independent claim among claims
1, 2, 4 and 6-10, recites “a key-holding ring”. In view of that recitation, one of
ordinary skill in the art would have envisaged the most basic of key-holding rings,
i.e., the simple spiral round wire key-holding ring shown in Perthou’s figures that
has been ubiquitous for generations.
The Appellant’s claim 1 recites “a band”. In view of that recitation, one of
ordinary skill in the art would have envisaged the simplest of bands, i.e., the
simple, plain, rectangular band shown in Perthou’s figures.
The Appellant’s claim 1 recites “a D-ring coupling said band to said key-
holding ring, said D-ring having a U-shaped portion engaging the key-holding ring
and a bar between the ends of the U-shaped portion and engaging the band”. That
description describes the D-ring in Perthou’s figures. In view of that recitation, the
engagement between the D-ring and the key-holding ring that would have been
envisaged by one of ordinary skill in the art would have been the conventional
engagement, i.e., each ring passing through the opening in the other ring as shown
in Perthou’s figures. In view of that recitation, one of ordinary skill in the art
would have envisaged the simplest engagement between the bar and the band, i.e.,
the band looped around a bar of the same width as the band as shown in Perthou’s
figures.
Moreover, during patent prosecution, claims are to be given their broadest
reasonable interpretation consistent with the Specification, as the claim language
would have been read by one of ordinary skill in the art in view of the
Specification, see In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); In re Sneed, 710
F.2d 1544, 1548 (Fed. Cir. 1983). Therefore, the Appellant’s terms “key-holding
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ring”, “band” and “D-ring” would have been construed by one of ordinary skill in
the art as including those in the Appellant’s figures 1-5, which are the same as
those required by Perthou’s claim.
Perthou’s claim, however, as shown in the figures, requires what appears to
be a clamp at the end of the band opposite the D-ring. The Appellant’s
Specification indicates that what appears to be a clamp in Perthou’s figures is a
clamp (Spec. 3:5-9),1 but the clamp is not recited in claim 1, its dependent claims
2, 4, 6, 7 and 9, or independent method claim 11. Thus, the Examiner has not
established that the recitations in those claims are sufficient to have rendered
Perthou’s design patent claim prima facie obvious to one of ordinary skill in the
art.
Also, the Appellant’s claims 6-11 require a gap in the D-ring’s bar. That
gap is not shown in Perthou’s figures. The Examiner has not explained, and it is
not apparent, how Perthou’s claim which lacks the appearance of a gap would have
rendered the gap required by the Appellant’s claims 6-11 prima facie obvious to
one of one of ordinary skill in the art.
Claims 3 and 5
Claim 2, from which claim 3 depends, recites that the band is a web of
material having ends looped through the D-ring and joined at the ends. That
recitation describes the band and looping engagement between the band and the D-
ring shown in Perthou’s figures. Claim 3 recites that there is a clamp at the ends of
the web. In view of that recitation, one of ordinary skill in the art would have
envisaged the simplest of clamps, i.e., the simple piece of material the same width

1 The Appellant’s Specification states: “Referring to FIG. 6, there is shown a plan
view of another embodiment with clamp 14’ extending slightly beyond the width
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as the band folded over the ends of the band as shown in Perthou’s figures.
Moreover, during patent prosecution, claims are to be given their broadest
reasonable interpretation consistent with the Specification, as the claim language
would have been read by one of ordinary skill in the art in view of the
Specification, see Zletz, 893 F.2d at 321, 13 USPQ2d 1320; Sneed, 710 F.2d at
1548, and the clamp shown in the Appellant’s figures 1-5 is the same as that shown
in Perthou’s figures 1-5. Hence, the Appellant’s term “clamp”, when most broadly
construed by one of ordinary skill in the art in view of the Appellant’s
Specification, would have included Perthou’s clamp.
Therefore, Perthou’s claimed design would have been prima facie obvious to
one of ordinary skill in the art in view of the Appellant’s claim 3.
Conversely, as indicated above, Perthou’s claimed design, as shown in the
figures, includes a component falling within each limitation recited in the
Appellant’s claim 3. The invention claimed in the Appellant’s claim 3, therefore,
at least would have been prima facie obvious to one of ordinary skill in the art over
Perthou’s claim.
The Appellant’s claim 5, which depends from claim 3, recites that the clamp
width is substantially the same as the width of the band. Thus, claim 5 recites,
regarding the relative widths of the clamp and the band, what one of ordinary skill
in the art would have envisaged, as pointed out above, given the recitation in
claim 3. Therefore, for the reasons given above regarding claim 3, the invention
claimed in the Appellant’s claim 5 would have been prima facie obvious to one of
ordinary skill in the art over Perthou’s claim, and vice versa.

of band 13 and having rounded corners” (Spec. 3:5-9) However, there appears to
be no figure 6 of record.
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Because, as discussed above, the inventions claimed in the Appellant’s
claims 3 and 5 would have been prima facie obvious to one of ordinary skill in the
art over Perthou’s claim and vice versa, the inventions claimed in the Appellant’s
claims 3 and 5 would have been prima facie obvious to one of ordinary skill in the
art under the doctrine of obviousness-type double patenting.
The Appellant argues that “[a] device could be constructed that would
infringe the claims of the utility patent [application] but not the very narrow claim
of the design patent” (Br. 4).
The Appellant’s claims 3 and 5 encompass structures other than that in
Perthou’s claim. However, Perthou’s claimed design is the simplest, most
utilitarian of designs, i.e., a simple D-ring having the bar and U-shape recited in
the Appellant’s claim 1, the simplest of bands (a plain rectangular band) engaged
with the D-ring in the simplest of ways, i.e., looped over the D-ring’s bar, a simple
spiral round wire key-holding ring engaged with the D-ring in the simplest of
ways, i.e., looping engagement, and the simplest of ways for attaching together the
sides of the loops, i.e., a simple clamp comprising a piece of material the same
width as the band folded over the end of the band. Because Perthou’s design is the
simplest, most utilitarian of designs, that design would have been envisaged by one
of ordinary skill in the art given the recitations in Appellant’s claims 3 and 5.
Also, as pointed out above, because the Appellant’s claim terms are construed in
view of the Appellant’s Specification, the drawings of which show Perthou’s
design, one of ordinary skill in the art would have construed the Appellant’s claim
3 and 5 as including Perthou’s design.
Accordingly, we affirm the rejection of claims 3 and 5 under the judicially
created doctrine of obviousness-type double patenting over Perthou’s claim.
Because the affirmance is based upon substantially different reasoning than that
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advanced by the Examiner, we denominate the affirmance as involving a new
ground of rejection.
Rejection of claims 1, 6 and 11 under 35 U.S.C. § 103
over Chen in view of Jung and Momemers

Chen discloses a separable key holder comprising a pair of elongated,
preferably flexible and rectangular straps (16, 18), most of one surface of each
strap having thereon a patch of hook and loop fastening material (20 or 22) for
releasable attachment to the comparable hook and loop fastening material of the
other strap (col. 3, ll. 19-25, 35-39). An end of each strap is free of hook and loop
fastening material, passes through a circular key holding element (12 or 14), and is
folded back upon itself and sealed to itself, preferably by heat sealing, so as to hold
the key holding element in looping engagement with the strap (col. 3, ll. 41-54;
figs. 1, 2).
Jung discloses a combined nail clipper and key holder comprising an
elongated nail clipper container (11), a triangular-shaped connecting member (14),
one side of which has a gap in its central portion with a prong on each side of the
gap that extends into nail clipper container 11 for fastening connecting member 14
to nail clipper container 11, and a key ring (15) in looping engagement with
connecting member 14 (col. 2, ll. 18-22, 45-50; figs. 1, 3).
Momemers discloses a key keeper comprising a D-shaped loop (3) having a
U-shaped portion and, between the ends of the U-shaped portion, a bar having a
gap (17) therein for receipt of keys onto loop 3 (abstract; col. 2, ll. 39-41; fig. 1).
On each side of the gap is a leg (15 or 16) that projects into a cavity in a loop
holder (2) (col. 3, ll. 44-47; fig. 1).
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The Appellant questions the desirability of combining the references to
arrive at the claimed invention (Br. 4-7; Reply Br. 2-3).
As stated by the Supreme Court in KSR Int’l. Co. v. Teleflex Inc., 127 S.Ct.
1727, 1740-41:
Often, it will be necessary for a court to look to interrelated teachings of
multiple patents; the effects of demands known to the design community or
present in the marketplace; and the background knowledge possessed by a
person having ordinary skill in the art, all in order to determine whether
there was an apparent reason to combine the known elements in the fashion
claimed by the patent at issue.

Chen’s key holding elements 12 and 14 are attached directly to straps 16 and
18 without an intervening ring (figs. 1, 2). However, Jung’s disclosure of
connecting member 14 (col. 2, ll. 45-47) would have led one of ordinary skill in
the art, through no more than ordinary creativity, to use an intervening ring in
Chen’s key holder to provide the readily apparent benefits of rendering the key
holding element attachment releasable and permitting multiple key holding
elements to be attached to each strap. See KSR, 127 S.Ct. at 1741 (In making the
obviousness determination one “can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ”).
Jung’s connecting member 14 is not D-shaped. However, Jung does not set
forth any significance of the shape of connecting member 14, other than indicating
that it must have a bar comprising inwardly extending prongs with a gap
therebetween for attaching connecting member 14 to clipper container 11 (figs. 1,
3). Hence, one of ordinary skill in the art would have been led, through no more
than ordinary creativity, to use other shapes that provide inwardly extending
prongs, such as Momemers’s D-shaped loop 3 (fig. 1).
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Although Momemers’s loop 3 is a key-retaining loop rather than a
connecting member (abstract), one of ordinary skill in the art would have
appreciated that the gap in Momemers’s loop that is suitable for receiving keys
(col. 3, l. 42) also would be suitable for receiving a key ring. As stated by the
Supreme Court in KSR, 127 S.Ct. at 1740, “if a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.”
Regarding claim 11, Chen’s key-holding elements 12 and 14 are attached to
straps 16 and 18 preferably by heat sealing, and alternatively by stitching (col. 3, ll.
50-53), not by passing the ends of straps 16 and 18 through a gap in key-holding
elements 12 and 14. However, one of ordinary skill in the art would have been led,
through no more than ordinary creativity, by Momemers’s disclosures that key-
retaining loop 3 has a bar with a gap (abstract; fig. 1) and that keys can be inserted
through the gap (abstract; col. 3, l. 42; fig.1), to attach Chen’s straps 16 and 18
through a gap so that straps 16 and 18 can be releasably attached to the D-ring of
the combined disclosures of Chen, Jung and Momemers, and so that the loops at
the ends of the straps can be formed in advance by heat sealing or stitching and
later attached to key-holding elements 12 and 14.
For the above reasons we are not convinced of reversible error in the
rejection of claims 1, 6 and 11 under 35 U.S.C. § 103 over Chen in view of Jung
and Momemers. Accordingly, we affirm that rejection. Because our reasoning
differs significantly from the Examiner’s reasoning, we denominate the affirmance
as involving a new ground of rejection.
Rejection of claims 1, 6 and 11 under 35 U.S.C. § 103
over Chen in view of Jung and Sheldon
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Sheldon discloses a key locator (10) comprising a flexible, rectangular tab
(12) (col. 2, ll. 8-11). At one end of tab 12 is a folded portion (19) that is folded
around a key (11) and has a hole therethrough on each side of a hole in key 11 (col.
2, ll. 20-23). A spring clip (20) having a hole therethrough holds key 11 in place,
and a circular key ring (21) passes through the holes in spring clip 20, folded
portion 19 and key 11 (col. 2, ll. 49-63; figs. 1, 2). At the other end of tab 12 is a
fold (15) which attaches to tab 12 a ring (18) having a unique shape that provides a
tactile clue for selecting the desired tab and key from among other tabs and keys on
key ring 21 (col. 3, ll. 6-15).
The Examiner argues that “Sheldon teaches both ‘V’ and ‘U’-shaped rings in
Figure 2” (Ans. 4).
Those rings (18, 18A) are at the end of tabs 12 opposite the key and are used
for providing a tactile clue for identifying the keys rather than for attaching them to
key ring 21 (col. 3, ll. 6-18). The Examiner has not established that the applied
prior art would have led one of ordinary skill in the art to use those rings to attach
keys to a key ring.
Accordingly, we reverse the rejection of claims 1, 6 and 11 under
35 U.S.C. § 103 over Chen in view of Jung and Sheldon.
Rejection of claims 2, 4, 7 and 9 under 35 U.S.C. § 103
over Chen in view of Jung, Momemers and Miller

Miller discloses a key holder comprising a strip of material, preferably
leather, that is folded over at an end to form a loop through which a key chain
passes, is closed by stitching (16) at the other end, and has one snap fastener (28)
at each of its side edges intermediate the fold and stitching 16 to fasten together the
side edges (p. 1, ll. 32-57; fig. 3).
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The Appellant argues that the applied references do not suggest the
desirability of the limitations in the Appellant’s claims 2, 4, 7 and 9 (Br. 9).
Regarding claim 2, Chen discloses a web (straps 16, 18) looped through key-
holding elements 12 and 14 (col. 3, ll. 19-25; figs. 1, 2). Attaching a D-ring to
straps 16 and 18 would have been obvious to one of ordinary skill in the art for the
reasons given above regarding the rejection of claims 1, 6 and 11. Like the
Appellant’s D-ring, that D-ring would have the ability to rotate through an angle of
nearly 360 degrees and would permit rotation of a key-holding ring looped with it
to ride along the inside of its U-shaped inside portion for substantially 180 degrees
as required by the Appellant’s claim 4.
With respect to the requirement of claims 7 and 9 that the key-holding ring
is a spiral ring, Chen discloses in figure 4 what appears to be a conventional spiral
key ring (12). Also, Jung discloses what appears to be a conventional spiral key
ring (15) (fig. 1), and Chen’s disclosure of a key holding ring (col. 3, ll. 19-20;
figs. 1, 2) would have led one of ordinary skill in the art, through no more than
ordinary creativity, to use as the ring any known key holding ring such as the
apparently-conventional spiral ring disclosed by Jung.
For the above reasons we are not persuaded of reversible error in the
rejection of claims 2, 4, 7, and 9 under 35 U.S.C. § 103 over Chen in view of Jung,
Momemers and Miller. We therefore affirm that rejection. Because our reasoning
differs substantially from that of the Examiner, we denominate the affirmance as
involving a new ground of rejection.
Rejection of claims 3, 5, 8 and 10 under 35 U.S.C. § 103
over Chen in view of Jung, Momemers and Miller

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The Appellant’s claim 3 and claims 5, 8 and 10 that depend directly or
indirectly therefrom require a clamp at the ends of the web of material.
The Examiner considers Miller’s stitches 16 to be a “stitch clamp means”
(Ans. 5).
During patent prosecution, claims are to be given their broadest reasonable
interpretation consistent with the Specification, as the claim language would have
been read by one of ordinary skill in the art in view of the Specification. See
Zletz, 893 F.2d at 321; Sneed, 710 F.2d at 1548. The only clamp disclosed by the
Appellant is a piece of material (14) that is folded over and pressed against the web
to hold the ends of the web together (Spec. 3:5-6; figs. 1-5). That disclosure is
consistent with the dictionary definition of “clamp”, which is:
1: a device designed to bind or constrict or to press two or more parts
together so as to hold them firmly 2: any of various instruments or
appliances having parts brought together for holding or compressing
something[ ]2 [.]

The Examiner has not established that Miller’s stitches 16 reasonably can be
considered a device or an instrument.
The Examiner, therefore, has not established a prima facie case of
obviousness under 35 U.S.C. § 103 of the inventions claimed in the Appellant’s
claims 3, 5, 8 and 10.
Rejection of claims 2-5 and 7-10 under 35 U.S.C. § 103
over Chen in view of Jung, Sheldon and Miller

The Examiner does not rely upon Miller for any disclosure that remedies the
deficiency in Chen, Jung and Sheldon as to claim 1 from which claims 2-5 and 7-
10 directly or indirectly depend (Ans. 4-5). Also, regarding claims 3, 5, 8 and 10,

2 Webster’s New Collegiate Dictionary 205 (G. & C. Merriam 1973).
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as discussed above with respect to the rejection over Chen in view of Jung,
Momemers and Miller, the Examiner has not established that Miller discloses a
clamp, as that term would have been most broadly construed in view of the
Appellant’s Specification.
Hence, the Examiner has not established a prima facie case of obviousness
of the inventions claimed in the Appellant’s claims 2-5 and 7-10 under
35 U.S.C. § 103 over Chen in view of Jung, Sheldon and Miller.
DECISION
The rejection of claims 1-11 under the judicially created doctrine of
obviousness-type double patenting over the claim of Perthou is reversed as to
claims 1, 2, 4 and 6-11, and affirmed as to claims 3 and 5. The rejection of claims
1, 6 and 11 under 35 U.S.C. § 103 over Chen in view of Jung and Momemers is
affirmed. The rejection of claims 1, 6 and 11 under 35 U.S.C. § 103 over Chen in
view of Jung and Sheldon is reversed. The rejection of and claims 2-5 and 7-10
under 35 U.S.C. § 103 over Chen in view of Jung, Momemers and Miller is
affirmed as to claims 2, 4, 7 and 9, and reversed as to claims 3, 5, 8 and 10. The
rejection of claims 2-5 and 7-10 under 35 U.S.C. § 103 over Chen in view of Jung,
Sheldon and Miller is reversed. Because the affirmances are based upon reasoning
which differs substantially from that advanced by the Examiner, we denominate
the affirmances as involving new grounds of rejection.
Regarding the affirmed rejection(s), 37 CFR § 41.52(a)(1) provides
"[a]ppellant may file a single request for rehearing within two months from the
date of the original decision of the Board."
This decision contains a new ground of rejection pursuant to 37 CFR
§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004),
1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 CFR § 41.50(b) provides
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"[a] new ground of rejection pursuant to this paragraph shall not be considered
final for judicial review."
37 CFR § 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 ground 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. . . .

AFFIRMED-IN-PART, 37 C.F.R. § 41.50(b)

JRG

FISH & RICHARDSON PC
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022

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