Ex Parte Poliakoff

Board of Patent Appeals and Interferences

Dec 27, 2011

11089501 (B.P.A.I. Dec. 27, 2011)

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.
11/089,501 03/25/2005 Ephraim Poliakoff 333855.00002 5437
27160 7590 12/28/2011
KATTEN MUCHIN ROSENMAN LLP
(C/O PATENT ADMINISTRATOR)
2900 K STREET NW, SUITE 200
WASHINGTON, DC 20007-5118
EXAMINER
SANDY, ROBERT JOHN
ART UNIT PAPER NUMBER
3677
MAIL DATE DELIVERY MODE
12/28/2011 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 EPHRAIM POLIAKOFF
____________

Appeal 2009-014983
Application 11/089,501
Technology Center 3600
____________

Before JOHN C. KERINS, STEFAN STAICOVICI, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-19. Notice of App. Claim 20 has been
allowed and claims 21-23 have been cancelled. Br. 5. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2009-014983
Application 11/089,501

2
THE INVENTION
Claims 1, 7, and 14 are independent claims. Claim 1 is illustrative of
the claims on appeal. Claim 1 recites:
1. A cufflink configured for use with a shirt
cuff having a button, comprising:
a male piece having a male engagement
member on an inner surface thereof, wherein the
male engagement member has a length that is long
enough to pass through both ends of a shirt cuff;
a female piece having a female engagement
member on an inner surface thereof, said female
engagement member configured to releasably
engage said male engagement member; and
a hinge portion configured to movably hinge
said male piece with respect to said female piece;
at least one of said male piece and said
female piece having a recess therein configured to
enclose the shirt cuff button.

THE REJECTIONS
The following Examiner’s rejections are before us for review1:
claims 1, 6, 7, 14, and 18 rejected under 35 U.S.C. § 102(b) as
being anticipated by Gould (US 5,621,951, iss. Apr. 22, 1997); and
claims 2-5, 8-13, 15-17, and 19 under 35 U.S.C. § 103(a) as
being unpatentable over Gould and Roberts (US 704,111, iss. July 8,
1902).

1 The Examiner’s rejections in the Final Office Action, mailed Apr. 3, 2008,
were not withdrawn by the Examiner. Ans. 2-3; see Final Office Action pp.
2-3, 4-6.
Appeal 2009-014983
Application 11/089,501

3
ANALYSIS
The rejection of claims 1, 6, 7, 14, and 18 rejected as being anticipated by
Gould.
Claims 1 and 6
The Examiner finds Gould’s plate 10 having prongs 24 corresponds to
“a male piece having a male engagement member on an inner surface
thereof, wherein the male engagement member has a length that is long
enough to pass through both ends of a shirt cuff” as recited in claim 1. Ans.
4. The Examiner correctly construes “wherein the male engagement
member has a length that is long enough to pass through both ends of a shirt
cuff” as recited in claim 1 is a functional limitation. Ans. 6. The Examiner
determines that the prongs/pins 24 are capable of passing through a shirt cuff
made of a thin silk or paper thin fabric having pre-existing aligned apertures.
Ans. 7. See also Spec. paras. [0004], [0005] (Some shirt designs have holes
at both ends of a cuff).
While features of an apparatus may be recited either structurally or
functionally, claims directed to an apparatus must be distinguished from the
prior art in terms of structure rather than function. See e.g., In re Schreiber,
128 F.3d 1473, 1477-78. Additionally where the Patent Office has reason to
believe that a claimed functional limitation is an inherent characteristic of
the prior art, the burden shifts to Appellant to show that the prior art does not
possess that characteristic. See In re Best, 562 F.2d 1252, 1254-55 (CCPA
1977) (quoting In re Swinehart, 439 F.2d 210, 212-13 (CCPA 1971)).
The Appellant contends that Gould’s cufflink cannot “be used in a
manner in which the pins pass through a shirt cuff” for the following
reasons: first, Gould’s pins are blunt, not sharpened; and second, as depicted
in Gould’s Figure 5, “the pins do not have a length sufficient to pass through
Appeal 2009-014983
Application 11/089,501

4
a shirt cuff . . . [and] barely have sufficient length to couple to the Gould
receptacle.” Br. 11. Concerning the Appellant’s first contention, claim 1
does not call for a pin to be sharpened. See Ans. 8. As for the Appellant’s
second contention, the Appellant’s assertion that Gould’s pins barely have
sufficient length to couple to Gould’s receptacle does not show that Gould’s
prongs/pins 24 are not capable of passing through a shirt cuff made of a thin
silk or paper thin fabric having pre-existing aligned apertures as found by
the Examiner. See Ans. 7. As such the Appellant’s contentions are not
persuasive.
The Appellant also contends that Gould’s “hinge structure would
prevent the cufflink from closing on a shirt cuff” because “the hinge is flush
with the inside surfaces of the pieces 10 and 18, any shirt cuff placed
therebetween would not allow the coupling of these pieces.” Br. 12.
However this contention is not commensurate with the scope of claim 1, as
the hinge structure is not required by claim 1 to close the male piece and the
female piece with a shirt cuff disposed between the pieces.
Claim 1 instead recites only that “at least one of said male piece and
said female piece having a recess therein configured to enclose the shirt cuff
button.” Emphasis added. Gould’s Figures 6-8 depict a detachable
engagement between (male) plate 10 and the (female) end 18. More
specifically, (male) plate’s 10 first and second prongs 24 are received into
recesses 28 of (female) end 18. Gould’s (female) end 18 includes a hollow
cylinder 20 concealing a shirt cuff button, i.e., a recess enclosing a button.
Gould, col. 2, ll. 41-59; see Ans. 3-4. Additionally Gould discloses living
hinge 16 secures plate 10 to end 18. Gould, col. 2, ll. 26-39; see Ans.4 .
App
App

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Claims 7
Claim 7
shirt cuff;
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recites “an
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Appellant
Br. 11-12
claim 6.
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ustain the
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3 the

Appeal 2009-014983
Application 11/089,501

6
The Examiner’s diagram depicts Gould’s (male) plate 10 and (female) end
18 in use with a shirt cuff of a rolled sleeve. Id.
The Appellant contends that Gould’s structure fails to disclose the
structure or function of claims 7 and 14. See Br. 12. Specifically, the
Appellant contends that Gould’s “hinge structure would prevent the cufflink
from closing on a shirt cuff” because “the hinge is flush with the inside
surfaces of the pieces 10 and 18, any shirt cuff placed therebetween would
not allow the coupling of these pieces.” Id. Claims 7 and 14 require that
hinge 16 is capable of coupling plate 10 and end 18 on inner and outer sides
of a shirt cuff. As noted above, Gould specifically teaches that living hinge
16 merely secures plate 10 to end 18. Gould, figs. 5, 8. We could not find
any portion in Gould and the Examiner has not pointed to any portion in
Gould that teaches that hinge 16 of Gould’s device has the capability to
couple plate 10 and end 18 on inner and outer sides of a shirt cuff. Hence,
the Examiner’s finding that hinge 16 of Gould’s device has such a capability
is speculative. Accordingly, the Examiner’s finding that hinge 16 has the
capability to couple plate 10 and end 18 on inner and outer sides of a shirt
cuff does not reach a preponderance of the evidence.
We do not sustain the rejection of claims 7 and 14 as being anticipated
by Gould. For the reasons provided above, we do not sustain dependent
claim 18 as well.
The rejection of claims 2-5, 8-13, 15-17, and 19 as being unpatentable over
Gould and Roberts
The Appellant attempts arguing claims 2-5, 8-13, 15-17, and 19
rejected under § 103(a) together with independent claims 1, 7, and 14
rejected under § 102(b). Br. 11 (“Claims 1-19 may be grouped together for
purposes of this appeal.”); see also Br. 5. However, the Board cannot group
Appeal 2009-014983
Application 11/089,501

7
together different grounds of rejection; the Board may only group “multiple
claims subject to the same ground of rejection.” 37 C.F.R. § 41.37(c)
(1)(vii). As such, we cannot group together dependent claims 2-5, 8-13, 15-
17, and 19 rejected under § 103(a) with claims 1, 6, 7, 14, and 18 rejected
under § 102(b). We summarily sustain the rejection of claims 2-5, 8-13, 15-
17, and 19 because the Appellant does not provide arguments for the
rejection of those claims.

DECISION
We AFFIRM the Examiner’s decision finally rejecting claims 1-6 and
8-13, 15-17, and 19.
We REVERSE the Examiner’s decision finally rejecting claims 7, 14,
and 18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

Klh/nlk