11958382 (B.P.A.I. Jun. 21, 2011)

Ex Parte Smith

Board of Patent Appeals and InterferencesJun 21, 2011

11958382 (B.P.A.I. Jun. 21, 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. 11/958,382 12/18/2007 Elizabeth A. Smith 15356-000002/US 1028 28997 7590 06/22/2011 HARNESS, DICKEY, & PIERCE, P.L.C 7700 Bonhomme, Suite 400 ST. LOUIS, MO 63105 EXAMINER BALDORI, JOSEPH B ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 06/22/2011 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 ELIZABETH A. SMITH ____________ Appeal 2010-010324 Application 11/958,382 Technology Center 3700 ____________ Before: ANTON W. FETTING, JOSEPH A. FISCHETTI, and MICHAEL W. KIM, Administrative Patent Judges. KIM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-010324 Application 11/958,382 2 STATEMENT OF THE CASE This is an appeal from the final rejection of claims 1-15. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6 (2002). The claimed invention is directed to golf ball markers of the type used to mark the position of a golf ball on a golf green (Spec., para. [0001]). Claim 1, reproduced below, is further illustrative of the claimed subject matter. 1. A golf ball marker assembly comprising: a base; a golf ball marker releasably attached to the base, so that a portion of the base and of the golf ball marker are visible when the golf ball marker is attached to the base, the visible portions of the golf ball marker and the base being configured to cooperate to form a representation of an object. Claims 1, 2, and 4-6 stand rejected under 35 U.S.C. § 102(b) as anticipated by Fazekas (US Pat. 6,004,229, iss. Dec. 21, 1999); claims 1 and 3 stand rejected under 35 U.S.C. § 102(b) as anticipated by Stacavich- Notaro (US Pat. 5,282,616, iss. Feb. 1, 1994); claims 1 and 15 stand rejected under 35 U.S.C. § 102(b) as anticipated by Lopez (US Pat. 6,422,955 B1, iss. Jul. 23, 2002); and claims 7-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Fazekas. We AFFIRM. ISSUES Did the Examiner err in asserting that none of the lapel pins in Figure 17 of Fazekas, the golf ball marker in Figure 3A of Stacavich-Notaro, and the golf ball marker in Figure 3 of Lopez anticipates “a representation of an object,” as recited in independent claim 1? Appeal 2010-010324 Application 11/958,382 3 Did the Examiner err in asserting that it would have been an obvious design choice to modify the lapel pin of Figure 17 of Fazekas to form the ornamental features recited in dependent claims 7-14? FINDINGS OF FACT We adopt the Examiner’s findings of fact, as set forth on pages 3-7 of the Examiner’s Answer. ANALYSIS 102(b) Rejections We are not persuaded the Examiner erred in asserting that none of the lapel pins in Figure 17 of Fazekas, the golf ball marker in Figure 3A of Stacavich-Notaro, and the golf ball marker in Figure 3 of Lopez anticipates “a representation of an object, as recited in independent claim 1 (App. Br. 6- 10; Reply Br. 1-2). Appellant asserts that Fazekas, Stacavich-Notaro, and Lopez disclose the objects themselves, and not “a representation of an object,” as recited in independent claim 1. However, the claims do not set forth a line where an object crosses the threshold from an “object” to a “representation.” Absent such guidance, we agree with the Examiner that under a broadest reasonable construction, an object can be both itself, as well as a “representation” of itself (Exam’r’s Ans. 6-7). See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (“[d]uring examination [of a patent application, a pending claim is] given [the] broadest reasonable [construction] consistent with the specification, and . . . claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art”) (internal citation and Appeal 2010-010324 Application 11/958,382 4 quotations omitted). For example, the golf ball marker shaped like a lapel pin in Figure 17 of Fazekas is both a lapel pin and a “representation” of a lapel pin, thereby meeting that aspect of independent claim 1. Furthermore, while Appellant may have intended for the “object” to be something other than a golf ball marker, such an aspect is not set forth in the claims. See CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005) (while the specification can be examined for proper context of a claim term, limitations from the specification will not be imported into the claims). Accordingly, the golf ball markers in Figure 3A of Stacavich- Notaro and Figure 3 of Lopez can correspond to the recited object and representation of an object. 103(a) Rejection We are not persuaded the Examiner erred in asserting that it would have been an obvious design choice to modify the lapel pin of Figure 17 of Fazekas to form the ornamental features recited in dependent claims 7-14 (App. Br. 11-13; Reply Br. 2-3). Fazekas does not disclose the ornamental variations set forth in dependent claims 7-14. However, we agree with the Examiner that such ornamental variations would have been an obvious design choice because they only serve an aesthetic purpose (Exam’r’s Ans. 6-7). Indeed, Appellant agrees that In re Seid stands for the proposition that ornamental details cannot be relied upon for patentability (Reply Br. 3). Accordingly, where Figure 17 of Fazekas discloses the basic golf ball marker structure, ornamental details (such as the plant, creature, etc., recited in dependent claims 7-14) cannot be relied upon for patentability. Appeal 2010-010324 Application 11/958,382 5 Appellant asserts that the lady bug and bee recited in dependent claims 11 and 13 have mechanical functions in addition to ornamentation (App. Br. 12-13). However, such mechanical functions are de minimis, as page 7 of Appellant’s Specification recites that the objects are meant to be aesthetic. Compare Ex parte Hilton, 148 USPQ 356, 356-57 (Bd. App. 1965) (claims were directed to fried potato chips with a specified moisture and fat content, whereas the prior art was directed to french fries having a higher moisture content. While recognizing that in some cases the particular shape of a product is of no patentable significance, the Board held in this case the shape (chips) is important because it results in a product which is distinct from the reference product (french fries)). Additionally, the aspects concerning the relative ruggedness of various parts of the lady bug are not set forth in the claims. See CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d at 1231. The decision of the Examiner to reject claims 1-15 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED hh