Ex Parte Wolf

Board of Patent Appeals and Interferences

Mar 10, 2009

10868514 (B.P.A.I. Mar. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TIMOTHY WOLF
____________

Appeal 2008-6095
Application 10/868,514
Technology Center 3600
____________

Decided:1 March 10, 2009
____________

Before LINDA E. HORNER, STEVEN D.A. McCARTHY and,
STEFAN STAICOVICI Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

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 2008-6095
Application 10/868,514

2
STATEMENT OF THE CASE
Timothy Wolf (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s decision rejecting claims 1-12. Claims 13-20 have been
withdrawn from consideration and are not the subject of this appeal. We
have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.

THE INVENTION
The Appellant’s claimed invention is an apparatus and a method for
labeling a beverage container. Spec. 1:6-9. Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. An apparatus comprising:
a first arm having a length defined between
a first end and a second end wherein the second
end is opposite to the first end and further wherein
the first arm has a height defined between a top
edge and a bottom edge wherein the bottom edge
is opposite to the top edge wherein the height of
the first arm is uniform along the length of the first
arm;
a first handle integrally formed with the first
arm wherein the first handle has a length defined
between a first end and a second end wherein the
second end is opposite to the first end wherein the
first handle has a height defined between a top
edge and a bottom edge wherein the bottom edge
is opposite to the top edge wherein the height of
the first arm is greater than the height of the first
handle wherein the first handle extends outward
with respect to the top edge of the first arm and
Appeal 2008-6095
Application 10/868,514

3
further wherein the first handle is adjacent to the
first end of the first arm;
a second arm having a length defined
between a first end and a second end wherein the
second end is opposite to the first end wherein the
second arm has a height defined between a top
edge and a bottom edge wherein the bottom edge
is opposite to the top edge and further wherein the
bottom edge of the second arm is adjacent to the
bottom edge of the first arm wherein the first arm
extends in cross-section from the bottom edge of
the first arm parabolically toward the bottom edge
of the second arm to a point located between the
bottom edge of the first arm and the top edge of
the first arm and further wherein the first arm
extends in cross-section parabolically away from
the bottom edge of the second arm from the point
to the top edge of the first arm wherein the second
arm is connected to the first arm; and
a second handle integrally formed with the
second arm wherein the second handle has a length
defined between a first end and a second end
wherein the second end is opposite to the first end
wherein the second handle has a height defined
between a top edge and a bottom edge wherein the
bottom edge is opposite to the top edge wherein
the second handle extends outward with respect to
the top edge of the second arm and further wherein
the second handle is adjacent to the first end of the
second arm.

Appeal 2008-6095
Application 10/868,514

4
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Hummel US 2,457,898 Jan. 4, 1949
Parker GB 2,228,038 A Aug. 15, 1990
Wolff Des. 352,314 Nov. 8, 1994
White Des. 386,215 Nov. 11, 1997
Appellant seeks our review of the following rejections:
1. The Examiner rejected claims 1-5 and 7 under 35 U.S.C.
§ 103(a) as unpatentable over Parker and Hummel.
2. The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Parker, Hummel, and White.
3. The Examiner rejected claims 8-10 and 12 under 35 U.S.C.
§ 103(a) as unpatentable over Parker and Wolff.2
4. The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Parker, Wolff, and Hummel.

ISSUES
The Examiner found that Parker discloses two arms with parabolic
cross sections, and that Hummel teaches handles. Ans. 3. The Examiner
concluded it would have been obvious to a person of ordinary skill in the art

2 The final rejection of these claims is based on the combination of only
Parker and Wolff. Final Office Action 4-5, March 5, 2007. The Examiner’s
Answer, however, relies on Hummel in the rejection of claims 9 and 10.
This rejection will be addressed in the analysis infra.
Appeal 2008-6095
Application 10/868,514

5
to replace the live hinge of Parker with Hummel’s spring-biased hinge and
handles, in order to make it easier to open the clip. Id.
Appellant contends that the combination of Parker and Hummel
would not result in the first arm extending in cross-section parabolically
away from the bottom edge of the second arm from a point located between
the bottom and top edges of the first arm to the top edge of the first arm, as
recited in claim 1. App. Br. 10.
The first issue before us is:
Has the Appellant shown that the Examiner erred in determining that
claims 1-7 would have been obvious to one having ordinary skill in the art at
the time of the invention in light of the teachings of Parker and Hummel
because the combined references would not result in the first arm extending
in cross-section parabolically away from the bottom edge of the second arm
from a point located between the bottom and top edges of the first arm to the
top edge of the first arm?
The Examiner found that Parker teaches two arms that are parabolic in
cross-section, and that Wolff teaches a separate attaching means to
interconnect the arms of a clip. Ans. 4. The Examiner concluded “[i]t
would have been obvious to one having ordinary skill in the art at the time
the invention was made to replace the live hinge disclosed by Parker with
the spring-biased hinge, as taught by Wolff, in order to make it easier to
open the clip.” Ans. 4.
Appellant contends that Parker and Wolff do not teach or suggest the
position of the attaching means, as recited in claim 8. App. Br. 24.
The second issue before us is:
Appeal 2008-6095
Application 10/868,514

6
Has the Appellant shown that the Examiner erred in determining that
claims 8-10, and 12 would have been obvious to one having ordinary skill in
the art at the time of the invention in light of the teachings of Parker and
Wolff and that claims 9-11 would have been obvious to one having ordinary
skill in the art at the time of the invention in light of the teachings of Parker,
Wolff, and Hummel because the combined references do not teach or
suggest the claimed position of the attaching means?

FINDINGS OF FACT
We find that the following enumerated facts are supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Parker discloses a clip for sealing a milk carton that slides over the
top edges of the carton and may be written on for easy
identification of the carton’s contents. Parker, Abstract and Fig. 1.
2. Hummel discloses an auxiliary handle to extend around and grip a
pot handle as a heat insulator and to facilitate gripping. Hummel,
col. 1, ll. 2-14.
3. Hummel’s side pieces 6 are of the same length and height, and at
their top margins, form hinge connection 7 through a series of
longitudinal aligned tubular parts 11 alternating on each side piece
6, so that pin 10 fits through the tubular parts 11 along the length
of side pieces 6. Hummel, col. 3, ll. 26-27; col. 3, l. 65 to col. 4,
l. 13.
Appeal 2008-6095
Application 10/868,514

7
4. Spring 8, located in space 12 (a longitudinal space between the
inner most tubular parts 11), urges side pieces 6 together, and the
ends of spring 8 are held in place by clip-like elements 13 on the
central portions of side pieces 6. Hummel, col. 3, ll. 14-15; col. 4,
ll. 20-30.
5. Side pieces 6 are downwardly divergent to grip a pot handle, and
have full-length, inwardly-extending flanges 9 along the bottom
margins that are adapted to underlie the side margins of a pot
handle. Hummel, col. 3, ll. 27-29, 41-46.
6. The front upper corners of side pieces 6 have a pair of upwardly
divergent ears 14 attached so that when a user pinches ears 14
towards each other, side pieces 6 are swung apart, allowing the
device to be positioned on, or removed from, a pot handle.
Hummel, col. 4, ll. 38-69.

PRINCIPLES OF LAW
Appellant’s Burden
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
Appeal 2008-6095
Application 10/868,514

8
ANALYSIS

Rejection of claims 1-5 and 7 under 35 U.S.C. § 103(a) as unpatentable over
Parker and Hummel
Claim 1 is for an apparatus that includes first and second connected
arms. The arms are closest together at a point between the top and bottom
edges of the arms, and the arms extend away from each other parabolically
from that point. Specifically, claim 1 recites that “the first arm extends in
cross-section parabolically away from the bottom edge of the second arm
from the point to the top edge of the first arm.” Appellant contends that the
combination of Parker and Hummel would not result in an apparatus
meeting this limitation of claim 1. App. Br. 10.
The Examiner’s proposed combination includes replacing the live
hinge of Parker with Hummel’s spring-biased hinge and handles. App. Br.
3. We will describe this combination in order to compare it to the claimed
device.
Parker’s clip for a milk carton with reference numerals added by the
Examiner is reproduced below.
Appeal 2008-6095
Application 10/868,514

9

The figure depicts Parker’s clip for a milk carton with reference numerals
added by the Examiner (Parker, Fig 3; Ans. 6).
We have added a line a-a to Figure 3 at the point along first arm 10 at
which the arm turns from traveling outwardly to traveling inwardly for
purposes of defining the “live hinge” portion of the clip as that portion of the
clip above line a-a. To replace the “live hinge” of Parker, the rejection uses
the portion of first and second arms 10 and 20 below the line a-a. In cross-
section, moving upwardly along first arm 10 from point 100, first arm 10
appears to move away parabolically from bottom edge 90 of second arm 20
part of the way to the top edge 50 of first arm 10, and then turns and extends
parabolically towards bottom edge 90 of second arm 20 such that first arm
Appeal 2008-6095
Application 10/868,514

10
10 adjoins second arm 20 at their top edges 50, 80. The same portion of
second arm 20 would be used, so that second arm 20 is a mirror image of
first arm 10. After removing the live hinge, Parker would provide two
parabolically-shaped arms.
Hummel discloses an auxiliary handle to extend around and grip a pot
handle as a heat insulator and to facilitate gripping (Fact 3). A pair of side
pieces 6 are of the same length and height, joined at the top by hinge 7 (Fact
4). Side pieces 6 extend in cross-section first outwardly divergently and
then inwardly divergently (flanges 9) so that the downwardly divergent
portions cover the top of a pot’s handle, and flanges 9 cover the bottom (Fact
6). Hinge 7 is formed at the top edges of side pieces 6 by a series of
longitudinally-aligned tubular parts 11 alternating on each side piece 6, so
that pin 10 fits through tubular parts 11 (Fact 4). Spring 8 is located in gap
12 in tubular parts 11 and urges side pieces 6 towards each other (Fact 5). A
pair of upwardly divergent ears 14, located at the front upper corners of side
pieces 6, is attached so that when a user pinches ears 14 toward each other,
side pieces 6 are swung apart from each other (Fact 7).
Adding the spring-biased hinge of Hummel to the arms of Parker
would result in a device with the top edges of the first and second arms of
Parker forming a series of longitudinal aligned tubular parts alternating on
each arm, so that a pin fits through the tubular parts. A spring would be
located in a gap in the tubular parts and urges the arms towards each other.
A pair of upwardly divergent handles located at the first edge of each arm
would be attached so that when a user pinches the handles towards each
other, the arms are swung apart.
Appeal 2008-6095
Application 10/868,514

11
Thus, the device resulting from the combination would have arms that
extend away from each other parabolically from a point at the top of the
arms (the hinge), and from that point up the handles (ears) would extend
upwardly and outwardly. In contrast, the claim requires the arms to be
closest together at a point between the top and bottom edges of the arms, and
that the arms extend away from each other parabolically from that point to
the top edges of the arms. Thus, the device resulting from the combination
proposed by the Examiner would not meet the limitation of claim 1 of an
apparatus having a first arm extending in cross-section parabolically away
from the bottom edge of the second arm from the point to the top edge of the
first arm.
The rejection of claims 2-5 and 10 must also be reversed by virtue of
their dependence from claim 1.

Rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable over Parker,
Hummel, and White
Claim 6 depends from claim 1, and the rejection of claim 6 is based
on the combination analyzed in the rejection of claim 1, supra, with the
added modification of placing the ribs of White on the handles of Hummel.
Ans. 4. The rejection does not recite any further modification to the
rejection outlined for claim 1. Id. For the reasons analyzed in claim 1,
supra, the prior art does not meet the requirements of claim 6.

Appeal 2008-6095
Application 10/868,514

12
Rejection of claims 8-10 and 12 under 35 U.S.C. § 103(a) as unpatentable
over Parker and Wolff
Independent claim 8 has two limitations related to where the attaching
means (hinge) is placed on the arms. First, the hinge must be placed so that
the distance from the bottom edge of each arm to the hinge is greater than
the distance from the hinge to the top edge of each arm. Second, the hinge
must be placed so that the first arm extends in cross-section from the bottom
edge of the first arm parabolically towards the bottom edge of the second
arm to a point located between the bottom edge of the first arm and the
attaching means, and then from that point, the first arm extends in cross-
section parabolically away from the bottom edge of the second arm to the
attaching means. In other words, the attaching means must be placed above
the point the arms are nearest each other in cross section.
The Examiner found that Parker teaches two arms that are parabolic in
cross-section (as analyzed in claim 1, supra). The Examiner also found that
Wolff teaches a separate attaching means to interconnect the arms of a clip.
The Examiner concluded “[i]t would have been obvious to one having
ordinary skill in the art at the time the invention was made to replace the live
hinge disclosed by Parker with the spring-biased hinge, as taught by Wolff,
in order to make it easier to open the clip.” Ans. 4.
The rejection does not provide a discussion of where Wolff’s hinge
would be placed in the Examiner’s proposed modification to Parker’s clip so
as to connect the arms of Parker’s clip, and does not in any way address
either of the two positioning requirements of the claim. Appellant contends
that Parker and Wolff do not teach or suggest the position of the attaching
means. App. Br. 24. Given the rejection’s silence regarding placement of
Appeal 2008-6095
Application 10/868,514

13
the attaching means, we agree. We also reverse the rejection of claims 9, 10
and 12 by virtue of their dependence on claim 8.
We must address one other issue related to this rejection. In the final
rejection of claims 8-10 and 12, the Examiner found the claims were
unpatentable over the combination of only Parker and Wolff. Final Office
Action 4-5, March 5, 2007. Similarly, in the Answer, the Examiner lists
only Parker and Wolff in the statement of the grounds of rejection of claims
8-10 and 12. Ans. 4. The analysis of the rejection of claims 9 and 10 then
relies on disclosures in Hummel for aspects of the claimed hinge. Ans. 5. It
appears that the Examiner improperly made a new ground of rejection of
claims 9 and 10 for the first time in the Answer without following the proper
procedures for doing so, such that the Appellant has not had a fair
opportunity to respond to this new ground. See MPEP § 1207.03 (requiring
that a new ground of rejection in an Examiner’s Answer must be approved
by a Technology Center Director or designee and be prominently identified).
In any event, the combination taught by Parker and Hummel was analyzed
for claim 1, supra, and because that combination does not meet each element
of the claim, likewise the combination of Parker, Wolff, and Hummel also
would not have suggested each element of dependent claims 9 and 10.

Rejection of claim 11 under 35 U.S.C. § 103(a) as unpatentable over Parker,
Wolff, and Hummel
Claim 11 depends from claim 8, and adds the limitation of handles.
The Examiner applied the combined references of the rejection of claim 8
(Parker and Wolff), and added the handles of Hummel. This rejection, fails
for the same reasons as claim 8, supra.
Appeal 2008-6095
Application 10/868,514

14

CONCLUSIONS
Appellant has shown the Examiner erred in determining that claims 1-
7 would have been obvious to one having ordinary skill in the art at the time
of the invention in light of the teachings of Parker and Hummel because the
combined references would not result in an apparatus having a first arm
extending in cross-section parabolically away from the bottom edge of the
second arm from a point located between the bottom and top edges of the
first arm to the top edge of the first arm.
Appellant has shown the Examiner erred in determining that claims
8-10 and 12 would have been obvious to one having ordinary skill in the art
at the time of the invention in light of the teachings of Parker and Wolff and
that claims 9-11 would have been obvious to one having ordinary skill in the
art at the time of the invention in light of the teachings of Parker, Wolff, and
Hummel because the combined references do not teach the position of the
attaching means.

DECISION
We reverse the Examiner's rejection of claims 1-12.

REVERSED

vsh

PATENTS+TMS, P.C.
2849 W. ARMITAGE AVE.
CHICAGO IL 60647