Tammy Santana, Inc.

Patent Trials and Appeals Board

Jul 21, 2021

2021000886 (P.T.A.B. Jul. 21, 2021)

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.
15/590,664 05/09/2017 Tamara Santana BSANT.00001 4331
120981 7590 07/21/2021
Braxton Perrone, PLLC
5000 Legacy Drive
Ste 465
Plano, TX 75024
EXAMINER
MOHANDESI, JILA M
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
07/21/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
braxton@braxtonperrone.com
butz@braxtonperrone.com
perrone@braxtonperrone.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TAMARA SANTANA

Appeal 2021-000886
Application 15/590,664
Technology Center 3700
____________

Before JOHN C. KERINS, MICHELLE R. OSINSKI, and
MICHAEL L. WOODS, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 4, and 7–17. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 The term “Appellant” is used herein to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Tammy Santana, Inc., as the real party in
interest. Appeal Br. 3.
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THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to a system for coupling a decorative
item. Claim 1 is illustrative, and is reproduced below with additional
formatting added:
1. A system for coupling a decorative item, said system
comprising:

a coupler comprising a mount and a base, wherein said base is
coupled to said mount, and

wherein said mount couples to a decorative item, and wherein
said base couples atop an object;

wherein said coupler is a single hook for receiving laces, and

wherein said hook comprises one open side and one closed side;

wherein said open side is located between said base and said
mount and is used to receive laces;

wherein said decorative item comprises a crystal, and wherein said
mount comprises a prong mount, and wherein said coupler comprises
the shape of a single hook.

Appeal Br. 13 (Claims App.).

THE REJECTIONS
The Examiner rejects claims 1, 3, 4, and 7–17 under 35 U.S.C. § 103
as being unpatentable over Lovell (US 2013/0019381 A1, published Jan. 24,
2013) and Baron Pearson (US 6,012,203, issued Jan. 11, 2000).

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ANALYSIS
Claims 1, 3, 4, and 7–17-- Unpatentability over Lovell and Baron Pearson
Appellant’s arguments are principally directed to limitations
appearing in independent claim 1, and Appellant notes that claims 16 and 17
include similar limitations, to which the same arguments apply. Appeal Br.
6–11. Appellant additionally argues aspects of the rejection of claims 16
and 17 separately from claim 1. We take claim 1 as being representative of
a group that also includes claims 3, 4, and 7–15, and address the additional
arguments directed to claims 16 and 17 separately.
Claims 1, 3, 4, and 7–15
The Examiner finds that Lovell discloses a system with a mount, a
base coupled to the mount, the mount coupled to a decorative item, where
the coupler comprises a single hook with one open side and one closed side,
the open side located between the base and the mount and used to receive
laces. Final Act. 3. The Examiner admits that Lovell does not disclose a
decorative crystal item coupled to the base with a prong mount, and relies on
Baron Pearson as disclosing a decorative element (20) placed within an
eyelet so that the flat bottom (24) of the decorative element faces upwardly
with prongs (32). Id. at 3–4. The Examiner concludes that it would have
been obvious to modify the Lovell system to include a decorative element
having a flat back crystal held by prongs, as disclosed in Baron Pearson, and
Appellant does not contest the Examiner’s finding and conclusion as to this
modification. Id.; Appeal Br. 6–9. Appellant’s arguments focus on the
Examiner’s findings as to the disclosure in Lovell. See Appeal Br. 6–9. An
Examiner-annotated version of Figure 2A of Lovell appears below.
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Depicted above is an Examiner-annotated version of Figure 2A of Lovell
from the Final Rejection, which is a clip element that attaches to laces of a
shoe. Lovell ¶ 15.
Appellant argues that Figure 2A of Lovell does not have the shape of
a single hook. Appeal Br. 7. Further, Appellant argues that Lovell does not
disclose a hook with an open side and a closed side. Id. at 8. Appellant also
argues that the Examiner relies on element 8 in Lovell as disclosing the
closed side of the hook, and that this element is not on the alleged hook in
Figure 2A cited by the Examiner, but is instead an element appearing on a
different embodiment in Figure 1A of Lovell. Id. at 8–9.
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The Examiner responds by providing a further annotated view of
Figure 2A of Lovell, and noting that the mapping of the closed side of the
hook to element 8 of Lovell, set forth in the Final Action, is a typographical
error and reference should have been made to element 10 in Figure 2A of
Lovell. Ans. 4–5. Appellant argues that this clarification of the Examiner’s
position constitutes a new ground of rejection. Reply Br. 5. However,
Appellant has not petitioned to the Director under 37 C.F.R. § 1.181, as
required for designation as a new ground of rejection,2 and instead responds
to the merits. Id. at 5–6. We address the merits of the rejection before us.
An Examiner-annotated version of Figure 2A of Lovell appears below.

2 See 37 C.F.R. § 41.40(a); MPEP § 1207.03(b).
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Depicted above is an Examiner-annotated version of Figure 2A of Lovell
from page 5 of the Examiner’s Answer, which is a clip element that attaches
to laces of a shoe. Lovell ¶ 15.
In this annotated version, the Examiner has introduced a curved line
showing a hook shape and arrows pointing out the open side and closed side
of the single hook. Appellant argues that the portion of the device relied on
by the Examiner as being an open side of a hook is not actually open, but is
instead a “wall,” and that “[e]ven if element 11 is hinged outwardly, at that
point the coupler is no longer the claimed shape of a hook.” Reply Br. 5.
Appellant’s arguments do not apprise us of error in the rejection. As
to Appellant’s initial argument that Figure 2A of Lovell does not disclose “a
shape of a single hook,” pointing to its own Figure 2 as showing an example
of the same (Appeal Br. 7–8), we find nothing in the language of claim 1,
nor does Appellant point to any lexicographic definition in the Specification,
limiting the shape of the claimed hook to exactly the shape illustrated in
Appellant’s Figure 2.
Appellant’s further arguments that Lovell does not disclose a hook
shape with an open side and closed side are not indicative of Examiner error.
The Examiner’s annotated Figure 2A in the Answer clearly illustrates how
Lovell is regarded as providing a hook shape along the mount and base.
Appellant’s argument that the Lovell construction in Figure 2A does not
include an open side of a hook because a “wall” is present, is understood as
referring to the presence of hinged element 11 on the structure. The
Examiner, however, explains that the open side of the hook in Lovell is
“formed between the hinge 11 and the vertical wall,” and is not the hinged
element or “wall” itself. Ans. 5. Therefore the presence of Lovell’s hinge
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11, a component that is separate and distinct from the hook portion of
Lovell, has no effect as to the Examiner’s interpretation as to the Lovell
hook having an open side. There is still a clear opening for laces where the
Examiner’s annotation to the open side of the hook appears on the
Examiner’s annotated Figure 2A in the Examiner’s Answer. That the open
side area of the hook may engage with hinged element 11 to close off that
open space as desired also does not mean that the hook itself does not have
an open side. Further, claim 1 does not preclude an additional element, e.g.,
a hinged element like that in Lovell that may engage with the hook, and a
lace positioned in the open side of the hook.
For the foregoing reasons, we are not apprised of Examiner error, and
we sustain the Examiner’s rejection of claim 1 as being unpatentable over
Lovell and Baron Pearson. Claims 3, 4, and 7–15 fall with claim 1.
Claim 16
Appellant traverses the Examiner’s assertion of official notice that it is
well known to couple a base to a skate with adhesive. Appeal Br. 10.
Appellant maintains that it “disputed this official notice and disputes it
now.” Id.
The Image File Wrapper (IFW) of the present application evidences
that claim 16 was initially presented in a “Response to Office Action Mailed
February 20, 2019 And Request for Continued Examination (RCE)”
submitted on June 20, 2019. The Examiner first identified that Official
Notice was being taken at page 7 of the Non-Final Action dated July 17,
2019. Appellant filed a “Response to Office Action Mailed July 17, 2019”
on January 17, 2020 (hereafter “Response I”). In that paper, Appellant
acknowledged the Examiner’s reliance on Official Notice in the rejection of
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claim 16, but did not object thereto, and instead argued only that the then-
cited Tallarico reference3 failed to disclose, and teaches away from, the
limitations of claim 16. Response I, p. 11. In the Final Action from which
this appeal is taken, the Examiner advised that, “[s]ince [Appellant] did not
traverse the examiner’s assertion of the official notice, the official notice has
resulted in an admission thereafter to be admitted prior art.” Final Act. 5. In
its “Response to Final Office Action Mailed March 5, 2020” dated May 5,
2020 (hereafter “Response II”), Appellant makes the same statement
appearing in the Appeal Brief to the effect that it had disputed and continues
to dispute the taking of Official Notice. Response II, p. 8.
The record does not support Appellant’s contention that it had
disputed the Examiner’s taking of Official Notice in a timely, appropriate,
and substantive manner. Therefore, the argument is not indicative of
Examiner error.
Notwithstanding that the Examiner correctly found that Appellant’s
prior responses did not traverse the taking of Official Notice, in the Answer,
the Examiner cites to Labonte (US 2016/0007674 A1, published Jan. 14,
2016) and states that Labonte “discloses a skate (skate boot 2, see figure 4),
having couplers/lace members 35 & 37. Wherein the couplers/lace members
35, 37 can be mounted to the medial and lateral upper edges of the medial or
lateral side portions of the outer shell 12 of the skate via any method known
in the art such as stitching, over-molding, thermal bonding, high-frequency
bonding, vibration bonding, piping, adhesive, or any combination thereof.”
Ans. 6.

3 US 2,913,793, issued Nov. 24, 1959.
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Appellant responds to the effect that the Examiner’s citation to
Labonte is not timely made (Reply Br. 6), whereas, as noted above, it is
actually Appellant that did not initially object to the taking of Official Notice
in a timely and appropriate manner. Appellant additionally appears to
believe, erroneously, that the Examiner proposed to modify Lovell in view
of Labonte, in arguing that the Examiner has failed to provide any rationale
or motivation “for using or combining Labonte.” Id. Instead, the Examiner
cites to Labonte as evidencing that the taking of Official Notice finds
support in the prior art. Further, we find that Labonte includes a sufficient
showing that it is well known in the art to couple a base to a skate with
adhesive, and, therefore, the rejection of claim 16 is sustained.
Claim 17
The procedural posture for Claim 17 is essentially the same as that of
claim 16, and Appellant’s arguments are likewise essentially the same.
Appeal Br. 11; Reply Br. 6–7. For the reasons set forth above in addressing
the rejection of claim 16, the rejection of claim 17 is also sustained.
DECISION
The rejection of claims 1, 3, 4, and 7–17 as being unpatentable over
Lovell and Baron Pearson is affirmed.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 4, 7–
17
103 Lovell, Baron
Pearson
1, 3, 4, 7–
17

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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