Ex Parte Randall

Patent Trial and Appeal Board

Jun 26, 2014

12239731 (P.T.A.B. Jun. 26, 2014)

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.
12/239,731 09/26/2008 Cathy RANDALL SIS.P1100 4012
23575 7590 06/27/2014
CURATOLO SIDOTI CO., LPA
24500 CENTER RIDGE ROAD, SUITE 280
CLEVELAND, OH 44145
EXAMINER
JUNGE, KRISTINA N S
ART UNIT PAPER NUMBER
3638
MAIL DATE DELIVERY MODE
06/27/2014 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 CATHY RANDALL
____________________

Appeal 2012-004935
Application 12/239,731
Technology Center 3600
____________________

Before: STEFAN STAICOVICI, EDWARD A. BROWN,
and JAMES P. CALVE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the final rejection of
claims 1–32. App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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CLAIMED SUBJECT MATTER
Claims 1, 18–20, and 27–29 are independent. Claim 1 is reproduced
below.
1. A garment tag comprising:
a body of sheet material having a first side and a second
side;
an opening in said body for associating said garment
tag with a garment or garment hanger;
a pocket for holding at least one item associated with
said garment; and
an area on the pocket for recording information
regarding said garment.

REJECTIONS
Claims 1, 4–7, and 15–19 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Meyers (US 1,597,533; iss. Aug. 24, 1926).
Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Meyers and Maglio (US 6,035,570; iss. Mar. 14, 2000).
Claims 8–14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Meyers.
Claims 20–26 and 28 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sears (US 2,126,980; iss. Aug. 16, 1938) and Meyers.
Claims 27 and 29–32 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Maglio and Meyers.
ANALYSIS
Claims 1, 4–7, and 15–19 as anticipated by Meyers
Appellant argues claims 1, 4–7, and 15 as a group. App. Br. 10–12.
We select claim 1 as representative of the group and address Appellant’s
arguments for claims 16–19 separately. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
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Claims 1, 4–7, and 15
The Examiner found that Meyers discloses a garment tag, as recited in
claim 1, including a body of sheet material and a pocket 11 for holding an
item associated with the garment. Ans. 4. The Examiner reasoned that
Meyers discloses an area 10 in Figure 2 for recording information relating to
a garment and this area is formed integrally with a pocket 11 and provides
the closure for the pocket as shown in Figure 3. Ans. 8–9. The Examiner
found that Meyers discloses that the back side of tag area 10 can be used to
note the amount of time spent on a job and other information regarding the
garment as claimed. Ans. 9.
Appellant argues that the area of alteration tag 10 that is designated
for recording certain information is different from the area of the alteration
tag 10 that forms a pocket 11. App. Br. 10. Appellant also argues that the
area on tab 10 is not designated for recording information about the garment
because the amount of time that a worker spends on a particular alteration or
whether a worker is to receive a bonus is not information about the garment.
Reply Br. 5–6; App. Br. 10. These arguments are not persuasive as the
amount of time that a worker spends on a garment can be considered to be
information regarding a garment under a broadest reasonable interpretation.
Appellants have not argued persuasively as to how the claimed area differs
in structure from area 10 of Meyers or how such an intended use of the
claimed area distinguishes the claimed garment tag over Meyers. We
sustain the rejection of claims 1, 4–7, and 15.
Claims 16 and 17
The Examiner also found that Meyers discloses a tag comprising a
detachable portion (claim 16) that comprises a coupon for a discount on the
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cost of garment cleaning services (claim 17). Ans. 5. In particular, the
Examiner found that Meyers discloses that the tag comprises a voucher that
is handed to the customer at the time of purchase and the voucher can be
used to obtain the article in the same way as a coupon. Ans. 9.
Regarding claim 16, Appellant argues that Meyers does not disclose a
detachable portion or an area for recording information about the garment
itself. App. Br. 11; Reply Br. 6. These arguments are not persuasive of
error in the Examiner’s findings that Meyers does disclose a detachable
portion and an area 10 for recording information about the garment, as
discussed supra for claim 1. Meyers discloses that the various tags 8, 9, 10
may be affixed to respective garments. Meyers, p. 1, ll. 57–62; Fig. 1.
Regarding claim 17, Appellant argues that Meyers does not disclose a
detachable portion that may be a coupon for a discount on the cost of
garment cleaning services. App. Br. 11. Appellant argues that detachable
portion 6 is given to the customer at the time of purchase of the garment and
detachable portions 8, 9, and 10 are to identify pants, vest, and coat,
respectively that are to be altered. Reply Br. 6. These arguments are not
persuasive of error in the Examiner’s finding that the voucher of Meyers is a
“coupon” under a broadest reasonable interpretation. Nor has Appellant
established how the claimed “coupon” distinguishes the tag of claim 17 over
that of Meyers or how the claimed coupon establishes a new or non-obvious
functional relationship between the printed matter and the substrate of the
garment tag as compared to the voucher of Meyers. See In re Gulack, 703
F.2d 1381, 1386 (Fed. Cir. 1983) (“the critical question is whether there
exists any new and unobvious functional relationship between the printed
matter and the substrate”). We sustain the rejection of claims 16 and 17.
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Claim 18
Claim 18 recites a packaged garment in combination with a garment
tag that comprises an opening formed in the body, a pocket for holding an
item associated with the garment, and an area on the pocket for recording
information regarding the garment. The Examiner found that Meyers
discloses a packaged garment where the tag is associated with the sale of a
men’s suit and with a packaged garment. Ans. 9.
Appellant argues that Meyers discloses associating a data recording
ticket with a purchased garment such as a men’s suit that requires alterations
but does not disclose a garment contained in a package and in combination
with a garment tag. App. Br. 11. Appellant also argues that an illustrative
embodiment of claim 18 is shown in Figure 7 of the present application and
depicts a package containing the claimed garment tag attached to a men’s
shirt or women’s blouse and wrapping a garment for shipping, as in Meyers,
is not the same as providing a garment in an enclosed package. Reply Br. 6.
These arguments are not persuasive as claim 18 recites “[i]n combination
with a packaged garment, a garment tag comprising . . . .” We decline to
read any particular embodiment from Appellant’s Specification into claim
18 where the language of claim 18 is broader than that embodiment. Meyers
discloses a tag “in combination” with a packaged garment because the tag is
provided when a suit is purchased (Meyers, p. 1, ll. 7–24). The Examiner
reasonably interpreted such sale to include a packaged garment. In addition,
when the pieces of an altered garment are reassembled by a receiving clerk
after completion of alterations, the clerk assembles the garments with their
tags and wraps the garments for shipment (Meyers, p. 1, ll. 74–84), which
the Examiner also reasonably considered to be a packaged garment.
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Appellant has not identified any structure of the claimed packaged garment
that distinguishes over garments that are wrapped for shipping in Meyers.
We sustain the rejection of claim 18.
Claim 19
Claim 19 recites a method of selling a garment comprising associating
a garment tag with the garment. The Examiner found that Meyers associates
a tag with a garment that is purchased as discussed supra. Ans. 9.
Appellant argues that claim 19 requires a garment tag to be attached to
a garment to be sold and the garment and tag are enclosed in a package to
create a packaged garment for sale. App. Br. 11–12. Appellant asserts that
Meyers does not disclose a method for selling a garment with a garment tag
attached to the garment. App. Br. 12. These arguments are not persuasive
because they are not commensurate with the scope of claim 19, which recites
the step of “associating a garment tag with said garment.” Claim 19 does
not require a tag to be attached to the garment or associated with the garment
before a sale. We decline to limit claim 19 to particular embodiments when
the language of claim 19 is broader than those embodiments. We sustain the
rejection of claim 19.
Claims 2 and 3 as unpatentable over Meyers and Maglio
Claims 2 and 3 depend from claim 1 and recite that the body of the tag
is made from paper sheet material (claim 2) and plastic sheet material (claim
3). The Examiner relied on Maglio to disclose these features. Ans. 5.
Appellant’s argument that Maglio does not teach an area on a pocket
for recording information regarding the garment (App. Br. 13–14; Reply Br.
8) is not persuasive because Meyer discloses this feature as discussed supra
for claim 1. We sustain the rejection of claims 2 and 3.
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Claims 8–14 as unpatentable over Meyers
Claims 8–14 depend from claim 1 and recite that the area for
recording information includes a designated space for recording where the
garment was purchased (claim 8), where the garment was last worn (claims
9, 10), the identity of garment accessories (claim 11), how to clean the
garment (claim 12), when the garment was last cleaned (claim 13), and
where the garment was last cleaned (claim 14). The Examiner found that
Meyers does not disclose the specifics of this information but that it would
have been obvious to include any pertinent information on the tag that would
be of use to a user and that patentability cannot be predicated on mere
printed matter and arrangements thereof. Ans. 6.
Appellant argues that Meyers does not include an area for information
on the pocket and provides an alteration tag for tracking a garment as it is
being altered, whereas claims 8–14 relate to recording information about the
garment itself. App. Br. 15–16. Appellant asserts that the proposed change
would render the tags of Meyers pointless. Id. These arguments are not
persuasive as they recite intended uses of a structure that is disclosed in
Meyers. Appellant has not explained why the structure of the tag of Meyers
is not capable of being used for this purpose or how the intended uses recited
in claims 8–14 result in a new or non-obvious structural relationship
between any such printed matter and the substrate of the tag. We sustain the
rejection of claims 8–14.
Claims 20–26 and 28 as unpatentable over Sears and Meyers
Appellant argues claims 20–26 and 28 as a group. See App. Br. 17–
21. We select claim 20 as representative. 37 C.F.R. § 41.37(c)(1)(vii)
(2011). Claims 21–26 and 28 stand or fall with claim 20.
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The Examiner found that Sears teaches a method of cleaning and
repairing a garment as recited in independent claims 20 and 28 but does not
teach the structure of the claimed garment tag. Ans. 6. The Examiner found
that Meyers teaches a garment tag as claimed including an opening, a pocket
for holding an item associated with the garment, and an area on the pocket
for recording information regarding the garment. Ans. 6–7. The Examiner
explained that Sears was relied on to teach the steps of receiving a garment
to be cleaned, cleaning the garment, and associating a garment tag with the
garment and Meyers was relied on to teach the claimed structure of the tag.
Ans. 10–11. The Examiner proposed to incorporate the pocket and areas for
indicia of Meyers into the tag of Sears. Ans. 11.
Appellant argues that Sears discloses a novel tag and cabinet for the
tags and shipping container and holders for the improved tags, and this
principle of operation of Sears would be totally changed by using the tag of
Meyers. App. Br. 18. Appellant also argues that Sears provides separate
tags containing separate instructions such as Repair, Special, and Press Only
and these tags are designed to be used in a particular type of cabinet. App.
Br. 19–20; Reply Br. 8–9. These arguments are not persuasive of error in
the Examiner’s rejection that relies on Sears for the broad teaching of a
method of cleaning and repairing a garment and associating a tag with the
garment, and on Meyers for the particular claimed structure of the tag. The
test for obviousness is what the combined teachings of the references would
have suggested to a skilled artisan rather than whether the features of one
reference can be incorporated physically into the other reference. Nor do
these arguments persuade us of error in the Examiner’s determination that it
would have been obvious to modify Sears with the teachings of Meyers to
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provide an effective tag that conveys information to a user, and that such a
modification would have been a simple substitution of one known garment
tag for another to obtain predictable results. Ans. 7. We sustain the
rejection of claims 20–26 and 28.
Claims 27 and 29–32 as unpatentable over Maglio and Meyers
Claims 27 and 29–32 recite methods of storing and organizing
garments including associating a garment tag with the garment. Appellant
argues claims 27 and 29–32 as a group. App. Br. 21–23. We select claim
27 as representative. 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 29–32
stand or fall with claim 27.
The Examiner found that Maglio teaches the methods of storing and
organizing garments and associating a tag with those garments while Meyers
teaches the claimed structure of the tag. Ans. 8. The Examiner determined
that it would have been obvious to modify Maglio with teachings of Meyers
to provide an effective tag for conveying information to a user as a simple
substitution of one known garment tag for another to obtain predictable
results. Id.
Appellant argues that Maglio fails to teach the structure of the claimed
garment tag. App. Br. 21. This argument is not persuasive as the Examiner
relied on Meyers to teach the structure of the garment tag.
Appellant asserts that the combined teachings of Maglio and Meyers
would not provide motivation to create a garment tag with a pocket and area
for recording information regarding the garment because Meyers’ pocket
does not include an area for making notations and no suggestion for doing
so. App. Br. 22. This argument is not persuasive because, as discussed
supra for claim 1, Meyers discloses the claimed pocket with an area for
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recording information. Nor does Appellant’s argument that there is no
motivation to substitute Meyers tag for the simple tag of Maglio persuade us
of error in the Examiner’s stated reason for combining those teachings as a
simple substitution.

DECISION
We AFFIRM the rejections of claims 1–32.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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