Ex Parte Trigg et al

Patent Trial and Appeal Board

Feb 13, 2013

11796905 (P.T.A.B. Feb. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LARRY TRIGG, PAMELA CHEW, and
PETER GYSLING
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Appeal 2011-000046
Application 11/796,905
Technology Center 3600
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Before: WILLIAM V. SAINDON, SCOTT A. DANIELS, and
JILL D. HILL, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Larry Trigg, Pamela Chew, and Peter Gysling, (Appellants) appeal
under 35 U.S.C. § 134 from a rejection of claims 1-20. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to connecting devices displaying indicia such
as “a logo system having a first logo and a second logo that removably
attaches to the first logo.” Spec. 3, para. [008]. Claims 1 and 8, reproduced
below, are illustrative of the claimed subject matter:
1. An apparatus, comprising:
a first device displaying an indicia and a
flexible periphery for receiving stitches to affix to
a surface;
a second device displaying the indicia, the
second device removably connecting over the first
device and being removed from the first device in
order to change between displaying the indicia on
the surface with the second device to displaying
the indicia on the surface with the first device.

8. A method, comprising:
affixing a first logo to an object;
providing plural different second logos that are
connectable to and removable from the first logo in
order to change which of the second logos is
visible on the object;
passing a portion of one of the second logos
through the first logo to cover the first logo with
the one of the second logos.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Devine
Wishnia
Kidd
US 2,028,740
US 3,295,236
US 6,568,044 B1
Jan. 28, 1936
Jan. 3, 1967
May 27, 2003

REJECTIONS
The Examiner made the following rejections:
Claims 1-6, 8-14, 16, 17, 19 and 20 stand rejected under 35 U.S.C
§103(a) as being unpatentable over Wishnia and Kidd. Ans. 4.
Claims 7, 15 and 18 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Wishnia, Kidd and Devine. Ans. 8.

ANALYSIS
Appellants initially argue claims 1, 3, 5, 6, 14, 16, 17, 19 and 20 as a
group1, where claims 1 and 14 are the independent claims, and present
separate arguments as to dependent claims 2, 4 and also to independent
claim 8 and respective dependent claims 9-13. See App. Br. 9-11. We
select claim 1 as representative of the group where claims 3, 5, 6, 14, 16, 17,
19 and 20 stand or fall with claim 1, and address in turn Appellants’
separately argued claims. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Claims 1, 3, 5, 6, 14, 16, 17, 19 and 20
The Examiner found that Wishnia’s golf club cover 10, specifically
inner layer 24, teaches Appellants’ recited “first device” having a flexible

1 Although Appellants assert that the claims do not stand or fall together
(App. Br. 9), they do not separately address claims 3, 5, 6, 14, 16, 17, 19 and
20 except within the context of claim 1. App. Br. 11-12.
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periphery for receiving stitches to affix the first device to the golf club head
cover 10. Ans. 4. The Examiner also determined that like the claimed
“second device,” Wishnia’s panel 40 displayed indicia and was removably
connected by a snap fastener over the first device. Ans. 4, Wishnia col. 1, ll.
61-70 and see figs. 1-4. The Examiner further found that “Kidd teaches an
apparatus comprising a first device displaying indicia (Figure 4, #12 and
claim 10) and a second device with indicia (Figure 4, #60 and claim 11)”
and explained that it would be obvious to one of ordinary skill in the art to
provide Wishnia with the first and second devices both displaying indicia “to
provide more information on each device and allow for display of either as
needed by the user.” Ans. 4. The Examiner further indicated that
patentability could not be principally supported by reliance on the indicia
itself, as the indicia provided no patentable novelty to the physical structure.
Ans. 4-5 and 10.2
Appellants argue that the inner layer 24 in Wishnia does not have
indicia. App. Br. 11. According to Appellants, contrary to the Examiner’s
finding, Kidd also fails to disclose indicia displayed on two devices where
only the ornamental member 60 as shown in Fig. 4 is provided with indicia.
App. Br. 12. Appellants contend that neither reference discloses, teaches or
suggests the limitation of claim 1 where both the first and second devices
display indicia “in order to change between displaying the indicia on the
surface with the second device to displaying the indicia on the surface with
the first device.” Id.

2 Appellants do not contest the Examiner’s findings or conclusions with
respect to this alternative rationale.
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We agree with Appellants that Wishnia does not disclose any indicia
on the inner panel 24. See Wishnia, fig. 3. What we cannot agree with is
Appellants’ conclusion that “[i]n Fig. 4 of Kidd, an ornamental member 60
with indicia fits over a head carrier 14. The head 14 does not include
indicia.” App. Br. 12. Despite the fact that indicia is not shown in Kidd’s
Figure 4, Kidd does indeed disclose indicia on the carrier head 14. Kidd’s
Specification describes that both the ornamental member 60 and the carrier
head 14 may include indicia:
Preferably, an ornamental member is attached to the
carrier head with an ornamental member being formed to
resemble a button. Alternatively, the carrier head may be
formed to resemble a button. In another alternate embodiment,
the carrier head includes an indicia carrying surface.
Alternately, the ornamental member attached to the carrier head
may include an indicia carrying surface.

Kidd col. 3, ll. 4-10, (emphasis added). Moreover, as the Examiner points
out, Kidd’s dependent claim 10 also recites that “said carrier head includes
an indicia carrying surface.” The Examiner explains that where Kidd
discloses the indicia on both the carrier head and on the ornamental member
“[i]t would have been obvious to one of ordinary skill in the art at the time
of the invention to incorporate the teachings of Kidd into the invention of
Wishnia in order to provide more information on each device and allow for
display of either as needed by the user.” Ans. 5.
Appellants argue that Examiner’s reasoning is flawed and there is no
motivation in the references to place indicia on the inner panel 24 which is
covered up by the panel 40 because “[w]hen the panel 40 is placed on the
golf club head cover 10, the inner layer #24 cannot be seen. One would not
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be motivated to spend time and money to place indicia on a location that is
covered and cannot be seen.” Rep. Br. 2. We are not however apprised of
error in the Examiner’s reasoning because the Examiner is merely using
Kidd to show that it is known in the art to provide indicia on both a first
device (the carrier head 14), and on a second device (the ornamental member
60) which can be attached/detached from one another. Ans. 10. Whether or
not there is a motivation in Wishnia to apply indicia to the inner layer 24 is
immaterial; the Examiner finds ample reason to do so in Kidd.
Appellants further argue that because Wishnia only places the indicia
on the outer panel 40 “[t]here is no motivation whatsoever to place indicia
on the inner layer #24 in Wishnia because this layer is designed with a
connector that receives the panel,” and further that the indicia would be
“unsightly” because of the connector. Rep. Br. 2. We are not persuaded by
Appellants’ argument here because the Examiner has provided an articulated
reasoning with rational underpinnings based on the combination of Wishnia
and Kidd, and in determining whether the subject matter of a claim is
obvious, “if a technique has been used to improve one device, and a person
of ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007) and see, e.g., In re Kahn, 441 F.3d 977, 987 (Fed. Cir.
2006). (pointing out that “the teaching, motivation, or suggestion may be
implicit from the prior art as a whole, rather than expressly stated in the
references.”). Here we agree with the Examiner that Kidd discloses indicia
on both a first device (carrier head 14) as well as a second device (the
ornamental member 14) and that such “indicia could be placed on the
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surface of #14 if desired, and then covered by the display panel #40 of
Wishnia when needed, as taught by Wishnia.” Ans. 10. For these reasons
we sustain the Examiner’s rejection of claims 1 and 3, 5, 6, 14, 16, 17, 19
and 20 as obvious in view of Wishnia and Kidd.

Claim 2
Appellants argue separately with regard to claim 2 that Wishnia and
Kidd do not teach or suggest “a cavity that receives the first device so the
indicia of the second device covers the indicia of the first device,” and that
the Examiner’s finding “is flawed because the device 40 in Wishnia does not
include indicia.” App. Br. 12-13. Giving claim 2 its broadest reasonable
interpretation, as we must, we also agree with the Examiner that Wishnia’s
snap fastener elements 42, 44 disclose a cavity included with the second
device, and for the reasons discussed supra in regards to Kidd, such a snap
fastener would permit the covering of indicia on the first device with the
indicia of the second device as recited in claim 2. Ans. 5. Therefore, we
also sustain the rejection of dependent claim 2 as obvious in view of
Wishnia and Kidd.

Claim 4
Appellants point out the Examiner’s acknowledgement that Wishnia
does not teach using an adhesive for affixing the first device to a product.
App. Br. 13. Appellants do not, however, contradict the Examiner’s
explanation, with any evidence or technical reasoning, that adhesive is not a
simple substitute or known to those of ordinary skill in the art as a
predictable alternative for stitches. See KSR Int'l Co. v. Teleflex Inc., 550
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U.S. 398, 416 (noting that “[i]f a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.”) Thus, we also
sustain the Examiner’s rejection of claim 4 in view of Wishnia and Kidd.

Claims 8-11 and 13
Appellants argue that claims 8-13, which also depend from claim 1,
are allowable because in Kidd’s Figure 4 “[t]he head 14 does not include
indicia.” App. Br. 13. For the reasons discussed supra in regards to Kidd’s
written description and claims, this argument is again not persuasive. With
respect to Appellants argument that the first and second indicia could be
different logos, and that the second indicia could be a plurality of different
logos in order to change which logo is visible on the object, we see no error
in the Examiner’s reasoning that these recitations of claim 8, given their
broadest reasonable interpretation, are disclosed by Wishnia. App. Br. 13,
and see Ans. 6. Wishnia explains that changing out of different panel(s) 40
to provide the appropriate number to identify the requisite golf club used
with the cover 10 “is a simple matter to remove the panel in place and to
replace it with another panel bearing the proper number or indicia.” Wishnia
col. 2., ll. 33-35. Accordingly, we sustain the obviousness rejection of
claims 8-11 and 13.

Claim 12
Appellants argue again that “[n]owhere does Wishnia in view of Kidd
teach or even suggest covering a first logo with a second logo.” App. Br. 14.
For the reasons discussed above in regards to claim 1 we similarly sustain
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the Examiner’s obviousness rejection of claim 12 in view of Wishnia and
Kidd.
Claims 7, 15 and 18
Claim 7 depends from claim 1, and claims 15 and 18 both depend
directly from independent claim 14. Regarding the structure and material
recited in claims 7, 15 and 18, the Examiner relies on the teachings of
Devine at Figure 7 and pg. 2, col. 1, ll. 4-22, to use a bendable metal such as
aluminum to fasten the second device to the object and also to use a
translucent first logo to enhance the appearance of the device. Ans. 9.
Appellants do not offer separate arguments regarding the Examiner’s
rejection of claims 7, 15 and 18 aside from the reasons given with respect to
the respective independent claims, and therefore for the reasons discussed
supra we also sustain the rejection of claims 7, 15 and 18 as unpatentable
over Wishnia, Kidd and Devine.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-20 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)(1)(iv) (2009).

AFFIRMED

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