Ex Parte Smith

Patent Trials and Appeals Board

Jan 28, 2019

14071778 - (D) (P.T.A.B. Jan. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/071,778 11/05/2013
8131 7590 01/29/2019
MCKELLAR IP LAW, PLLC
784 SOUTH POSEYVILLE ROAD
MIDLAND, MI 48640
FIRST NAMED INVENTOR
Danielle Smith
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
MSH-910CIP 1010
EXAMINER
RODRIGUEZ, CRIS LOIREN
ART UNIT PAPER NUMBER
3772
MAIL DATE DELIVERY MODE
01/29/2019 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 DANIELLE SMITH
Appeal2017-008504
Application 14/071,778
Technology Center 3700
Before DEMETRA J. MILLS, RICHARD M. LEBOVITZ, and
ULRIKE W. JENKS, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner's
decision to reject the claims as obvious. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellant identifies the real party in interest as Danielle Smith. Br. 2.
Appeal2017-008504
Application 14/071,778
STATEMENT OF THE CASE
Claims 1 and 3-8 are on appeal, and can be found in the Claims
Appendix of the Appeal Brief. Claim 1, the sole independent claim, is
representative of the claims on appeal, and reads as follows:
1. A cosmetic organizer comprising in combination:
a solid base, said solid base having a surface cover affixed
thereto, wherein a top surface of the surface cover is a one-half
of a hook and loop fastener;
at least one cosmetic package having affixed thereto a
fastener wherein a top surface of the fastener is a complement of
said hook and loop fastener;
a bottom surface of said fastener having an adhesive for
attaching said fastener to [a] cosmetic package.
Br. 6 (Claims Appendix).
The claims stand rejected as follows:
I. Claims 1, 3, 4, and 6 under 35 U.S.C. § I03(a) as unpatentable
over Asser2 in view ofMost. 3 Ans. 2.
II. Claims 5, 7, and 8 under 35 U.S.C. § I03(a) as unpatentable
over Asser in view of Most and further in view ofMerten. 4 Id. at 3.
I. Obviousness over Asser and Most
Examiner finds that Asser teaches a cosmetic organizer using hook
and fasteners, but recognizes that Asser does not teach a surface that is
entirely covered with one half of a hook and loop fastener. Ans. 2. Examiner
looks to the teachings of Most for disclosing a hook and loop fastening
2 Diane Asser, US 6,189,698 Bl, issued February 20, 2001 ("Asser").
3 Ronald W. Most, US 2005/0136214 Al, published June 23, 2005 ("Most").
4 Helmut-Wolfgang Merten, US 2002/0090265 Al, published July 11, 2002
("Merten").
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Application 14/071,778
system that covers the entire mounting surface with one half of a hook and
loop fastening system. Ans. 2.
Appellant contends that there is no reason to combine Asser and Most.
Specifically, arguing that Most utilizes a fastening system using mushroom
shaped hooks and receivers, therefore, there is no reason to combine it with
the hook and loop fasteners taught in Asser. Br. 3.
The issue is: does the preponderance of evidence of record support
Examiner's conclusion that the combination of Asser and Most teaches a
cosmetic organizer as claimed?
Findings of Fact
FF 1. Asser teaches a cosmetic organizer using hook and loop fasteners.
Figure 2 of Asser, reproduced below, shows such an organizer.
Figure 2 shows a cosmetics organizer that "includes a palette 10, hook
and loop fasteners 2 having mating halves 2a and 2b and at least one
cosmetic item ... [ 6a-6i]. Each cosmetic item 6 is removably secured
to the palette 10 by at least one hook and loop fastener 2." Asser
2:24--30; Ans. 2. Asser further explains that "fasteners 2 are self-
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Application 14/071,778
adhesive such that the user of the kit can secure one mating half 2b of
each fastener 2 to the palette 10." Asser 2:39--41; Ans. 2.
FF2. Figure 1 of Most, reproduced below, shows an organizer using hooks.
fl(i, 1
Figure 1 shows a mounting board (i.e., as a bulletin board) that
"includes mounting surface 12 and frame 14." Most ,r 19; Ans. 2.
"Mounting surface 12 includes a plurality of mushroom shaped
projections (or 'hooks') 20 and a substantially continuous backing."
Most ,r 20; Ans. 2.
FF3. Most teaches other suitable alternatives usable for the mounting
surface.
Samples of hooks substantially identical mounting
surface and samples of loop material ( such as, for
example, the loop portion of the SCOTCHMATE® brand
SJ3571 hook and loop fastener, available from 3M
Company, St. Paul, Minn.) attached to the mounting
surface (such as, for example, 3M Brandâ„¢ DUAL
LOCKâ„¢ Low Profile Fastener No. SJ4580, available
from 3M Company, St. Paul, Minn.) may be tested for a
dynamic shear force value, 90° peel force value,
engagement force value and disengagement force value in
accordance with the test method described below.
Most ,r 30; Ans. 4.
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Application 14/071,778
Principle of Law
"[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." KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007), citing United States v.
Adams, 383 U.S. 39, 50-51 (1966).
Analysis
Upon consideration of the evidence on this record (see FF1-FF3) and
Appellant's contentions, we find that the preponderance of evidence on this
record supports Examiner's conclusions that the subject matter of
Appellant's claims 1, 3, 4, and 6 are unpatentable over the combination of
Asser and Most. See Final Act. 5 2-3, 4; see Ans. 2-3, 4. We agree with
Examiner that it would have been obvious "to substitute the hook of Asser in
view of Most for a loop component, since a simple substitut[ion] of one
known element (i.e. hook and loop) for another to obtain predictable results
such as providing a fastening mechanism would have been obvious."
Ans. 2-3; see FF1-FF3. Accordingly, we affirm Examiner's rejection of
claims 1, 3, 4, and 6 for the reasons set forth in the Final Office Action and
Answer which we incorporate herein by reference.
II. Obviousness over Asser, Most, and Merten
Examiner finds that Asser and Most disclose all the elements recited
in claim 1. Examiner acknowledges that neither Asser nor Most teaches a
hook and loop organization system where "the front and back of the solid
5 Final Office Action mailed October 5, 2015 ("Final Act.").
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Application 14/071,778
base being entirely covered with one half of a hook and loop fastener, [and]
wherein the covered solid base form a top of a box." Ans. 3. Examiner looks
to Merten for teaching a box wherein the entire surface of the box is covered
with "one half of a hook and loop fastener." Id. (citing Merten Fig. 17).
Examiner concludes that it would have been obvious to modify the solid
base as disclosed by Asser or Most with a "box like configuration as taught
by Merten in order to releasably attach to other objects in a 360° direction."
Id. "[M]odify[ing] the solid base of Asser in view of Most with the box
configuration as taught by Merten [is obvious] in order to provide greater
attachment surfaces in different planes and to allow different attachment
positions and configurations." Id. at 4--5.
Appellant contends that Merten is not analogous art and thereby not
combinable with Asser and Most. See Br. 4.
Merten describes sandbags for building protective walls. See Merten,
Abstract. "Hook-and-loop sticking elements and hook-and-loop connecting
elements are provided to form the hook-and-loop fastenings." Merten ,r 25.
Merten discloses that the hook and loop pattern can vary, including having
"both sides either hook-and-loop sticking elements or hook-and-loop
connecting elements." Id. ,r 26.
We agree with Appellant that Merten is not analogous art because it is
not in the same field endeavor, and is also not reasonably pertinent to the
particular problem with which the inventor is involved, i.e., organizing small
components such as cosmetics. See In re Clay, 966 F.2d 656, 658-59 (Fed.
Cir. 1992). Examiner explains that
Merten teaches a solid box including an entire outer surface to be
covered with hook and loop fasteners, ... [and that] modify[ing]
the solid base of Asser in view of Most with the box
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Application 14/071,778
configuration as taught by Merten . . . [ would] provide greater
attachment surfaces in different planes and to allow different
attachment positions and configurations.
Ans. 4--5. We do not doubt Examiner's rationale that a box configuration
would allow for a greater overall attachment surface area per base area. The
issue is that Examiner has not articulated why one of ordinary skill would
have looked to the sandbag art in order to find a teaching of a hook and loop
system that envelopes the entire outside surface of a solid rectangular object.
One of ordinary skill in the art would understand a box6 to describe
"[a] container typically constructed with four sides perpendicular to the base
and often having a lid or cover." Here, Merten explains that the engaging
envelope containing hook and loop elements has a cuboidal configuration
only "after having been filled with a medium" such as sand or water. Merten
,r 51. Contrary to Examiner's assertion, Merten does not disclose a box
because the structure does not contain an interior space bounded by the four
perpendicular sides and nowhere to reasonably place a lid on it.
Examiner must have a basis found either in the application or the
claimed invention for limiting or expanding the scope of the field of
endeavor. Our reviewing court has reminded us that "'it is necessary to
consider 'the reality of the circumstances '-in other words, common
sense-in deciding in which fields a person of ordinary skill would
reasonably be expected to look for a solution to the problem facing the
inventor."' In re Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004) (citing In re
Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) (quoting In re Wood, 599
F.2d 1032, 1036 (CCPA 1979)) (emphasis added)). Here, Examiner has not
6 Definition of "box," https://www.thefreedictionary.com/box, last visited
January 17, 2019.
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Application 14/071,778
provided a sufficiently articulated rationale that would explain why one of
ordinary skill in the art would have considered Merten's filled sandbags to
disclose a box having an exterior that is covered with one-half of a hook and
loop fastener or to be reasonably pertinent to the problem addressed by
Asser, Most, and the claims.
We conclude that the preponderance of evidence of record does not
support Examiner's conclusion that the claims are obvious. Accordingly, we
reverse the rejection of claims 5, 7, and 8 based on the combination of Asser,
Most, and Merten.
SUMMARY
We affirm the rejection of claims 1, 3, 4, and 6 under 35 U.S.C.
§ 103(a) over Asser and Most.
We reverse the rejection of claims 5, 7, and 8 under 35 U.S.C.
§ 103(a) over Asser, Most, and Merten.
TIME PERIOD FOR RESPONSE
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-IN-PART
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