Ex Parte Price et al

Board of Patent Appeals and Interferences

Jul 20, 2009

10223982 (B.P.A.I. Jul. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHELLE PRICE, DAVID E. BLINDERMAN
and JENNY LAVELLE
____________

Appeal 2008-002938
Application 10/223,982
Technology Center 1700
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Decided:1 July 20, 2009
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Before BRADLEY R. GARRIS, CHUNG K. PAK, and
CHARLES F. WARREN, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-7, 9-13, and 15-40. We have jurisdiction under

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-002938
Application 10/223,982

35 U.S.C. § 6.
We AFFIRM.
Statement of the Case
Appellants claim a decorative bow comprising ribbon strands 12, a die
cut piece 16 comprising a single elongate spine 18 which is generally
aligned with a length of the ribbon strands, and at least one design artifact 20
which extends from the spine (Figs. 1-2; claim 1).
Representative claim 1 reads as follows:
1. A decorative bow comprising:

a plurality of elongate ribbon strands in combination with at
least one die cut piece, the die cut piece comprising a single elongate
spine which is generally aligned with a length of the elongate ribbon
strands, and at least one design artifact which extends from the spine.

The reference set forth below is relied upon by the Examiner as
evidence of unpatentability:
Gruenke 6,450,933 B1 Sep. 17, 2002

The Examiner rejects all appealed claims under 35 U.S.C. § 103(a) as
being unpatentable over Gruenke.

Issue
Have Appellants shown error in the Examiner’s determination that the
decorative foil assemblies shown in Figure 2 of Gruenke include “a single
elongate spine which is generally aligned with a length of the elongate
ribbon strands” as required by claim 1?

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Appeal 2008-002938
Application 10/223,982

Findings of Fact
Figure 2 of Gruenke
illustrates three different decorative foil assemblies 20a, 20b
and 20c wherein the decorative foil assemblies include a
snowflake 22a, 22b, 22c having a plurality of foil-like strips
24a, 24b, 24c extending downwardly from the center of each
snowflake.

(col. 4, ll. 8-12).
This Figure is reproduced below:

Figure 2 illustrates three different decorative foil assemblies.

Principles of Law
Lack of novelty is the ultimate of obviousness. In re Fracalossi, 681
F.2d 792, 794 (CCPA 1982).

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Appeal 2008-002938
Application 10/223,982

Analysis
Appellants present the following argument:
In Gruenke, there is no "spine" as defined by the present
application. The snowflakes 22a-c are simply symmetrical
radial designs with six equal legs extending from a central
point. There is no single spine, and there is no alignment of
the spine with ribbon strands. Even if one of the legs of a
snowflake is randomly designated as a "spine", this does not
meet the claim limitation of "a single spine". Gruenke
therefore does not anticipate claims 1, 4, 6, 10, 13, 15, 16,
22, 23-27, 32, 33, 36 or 39. Withdrawal of the rejection of
these claims is therefore respectfully requested.

(Br. 5).
This argument is unpersuasive.
As Appellants seem to recognize, each of the snowflakes shown in the
decorative foil assemblies of Figure 2 includes six legs. Two of these legs
define a straight line which is parallel to the longitudinal axis generally
defined by foil-like strips 24a, 24b, 24c. This pair of legs is
indistinguishable from the claim 1 feature “a single elongate spin which is
generally aligned with a length of the elongate ribbon strands” (wherein the
claim 1 “ribbon strands” are likewise indistinguishable from the foil-like
strips shown in Gruenke’s Figure 2). In response to Appellants’ belief that
Gruenke’s snowflake legs do not meet the claim limitation “a single spine”,
we emphasize that Gruenke’s aforementioned pair of snowflake legs is the
only leg pair “which is generally aligned with a length of the elongate ribbon
strands [i.e., foil-like strips]” (claim 1). Therefore, we remain convinced
that the spine feature of claim 1 is indistinguishable from the previously
discussed leg pair of Gruenke. Finally, extending from this leg pair are
design artifacts such as the other snowflake legs which satisfy the claim 1
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Appeal 2008-002938
Application 10/223,982

limitation “at least one design artifact which extends from the spine”, and
Appellants do not argue otherwise.
Under these circumstances, we find that the decorative foil assembly
shown in Figure 2 of Gruenke discloses each of the limitations defined by
claim 1. Because claim 1 lacks novelty and since a lack of novelty is the
ultimate of obviousness, the Examiner’s § 103 rejection of this claim is
proper.
In their above discussed argument, Appellants refer to several other
claims in addition to claim 1. However, these other claims have not been
separately argued by Appellants. As a result, we select claim 1 to represent
these other claims pursuant to 37 C.F.R. § 41.37 (c)(1)(vii).
In the paragraph bridging pages 5 and 6 of the Brief, Appellants state
that “the Gruenke patent does not disclose or suggest:”, and this statement is
followed by a series of further statements which respectively point out
features recited in various claims on appeal. However, “[a] statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim”. 37 C.F.R. § 41.37 (c)(1)(vii)(2007).
For this reason, we do not consider the paragraph bridging pages 5 and 6 of
the Brief to constitute argument within the meaning of our afore-quoted
regulation.
Finally, in the penultimate paragraph on page 6 of the Brief,
Appellants assert that Gruenke fails to disclose certain features. For two
reasons, these assertions reveal no error in the Examiner’s rejection of the
appealed claims. First, these assertions do not identify the claim or claims
which Appellants consider to require the features in question. Second, these
assertions do not include any reasonably specific explanation as to why
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Appeal 2008-002938
Application 10/223,982

Gruenke does not teach or would not have suggested the features so as to
render them obvious within the meaning of 35 U.S.C. § 103.
In summary, only representative claim 1 has been separately argued
by Appellants with any reasonable specificity, and these arguments reveal no
error in the Examiner’s rejection.
Conclusions of Law
Appellants have not shown error in the Examiner’s determination that
the decorative foil assemblies shown in Figure 2 of Gruenke include “a
single elongate spine which is generally aligned with a length of the elongate
ribbon strands” as required by claim 1.
As a consequence, we sustain the Examiner’s §103 rejection of claims
1-7, 9-13, and 15-40 as being unpatentable over Gruenke.
Order
The decision of the Examiner is affirmed.

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

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JAMES C. SCOTT, ESQ.
ROETZEL & ANDRESS
1375 E. 9TH STREET
ONE CLEVELAND CENTER, 10TH FLOOR
CLEVELAND, OH 44114

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