Ex Parte Burnstein

Patent Trial and Appeal BoardDec 19, 2012

11858121 (P.T.A.B. Dec. 19, 2012)

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. 11/858,121 09/20/2007 Tracey E. Burnstein 36363-5 2178 59582 7590 12/19/2012 DICKINSON WRIGHT PLLC 2600 WEST BIG BEAVER ROAD SUITE 300 TROY, MI 48084-3312 EXAMINER JUNGE, KRISTINA N S ART UNIT PAPER NUMBER 3611 MAIL DATE DELIVERY MODE 12/19/2012 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 TRACEY E. BURNSTEIN ____________________ Appeal 2010-012480 Application 11/858,121 Technology Center 3600 ____________________ Before: WILLIAM V. SAINDON, BRETT C. MARTIN, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-012480 Application 11/858,121 2 STATEMENT OF CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 10-16. Claims 1-9 have been withdrawn from consideration by the Examiner. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Claims 10 and 11 are independent. Claim 10, reproduced below, is illustrative of the claimed subject matter: 10. A non-wearable device including a body member having a plurality of openings formed in a soft elastomeric material, said plurality of openings sized to releasably secure pin members thereon, and at least two pin members releasably positioned in said openings, said non-wearable device selected from the group comprising a toothbrush, a hairbrush, a ruler, a picture frame, a bag, a notebook, a comb, a suitcase strap, a lamp, a pillow, a handkerchief, a cigarette case, a box, and a wall hanging. REJECTIONS 1. Claim 16 is rejected under 35 U.S.C. § 112, second paragraph, as indefinite; 2. Claims 10-13 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Graham (US 2,067,526; iss. Jan. 12, 1937) and Snoke (US 5,581,925; iss. Dec. 10, 1996); 3. Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Graham, Snoke, and Tran (US 6,478,336 B2; iss. Nov. 12, 2002); Appeal 2010-012480 Application 11/858,121 3 4. Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Graham, Snoke, and Gwinn (US 3,077,684; iss. Feb. 19, 1963); and 5. Claim 16 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Graham, Snoke, and Nurre (US 5,598,652; iss. Feb. 4, 1997). OPINION Indefiniteness - Claim 16 As Appellant does not address the indefiniteness rejection, Appellant has waived any argument of error and we summarily sustain the rejection of claim 16 under 35 U.S.C. § 112, second paragraph, as indefinite. See 37 C.F.R. § 41.37(c)(1)(vii). Obviousness - Claims 10-13 The Examiner determined that the combined teachings of Graham and Snoke render the subject matter of claims 10 and 11 obvious. Ans. 4-5. Appellant initially argues that Graham “fails to suggest the claimed usage of a soft elastomeric material.” App. Br. 6 and 9. However, these arguments do not inform us of Examiner error because the Examiner does not rely on Graham as teaching the soft elastomeric material. The Examiner finds that “Snoke teaches a customizable picture frame which utilizes a soft elastomeric material” and cites the combination of Graham and Snoke as rendering the subject matter of claims 10 and 11 obvious. Ans. 5. When addressing the Examiner’s proposed modifications based on Snoke, Appellant argues that Snoke “does not teach or suggest the use of custom pins in combination with a plurality of holes formed in [a] soft elastomeric material of a product body.” App. Br. 7 and 10. Appellant Appeal 2010-012480 Application 11/858,121 4 argues that the teachings of Snoke would not motivate one skilled in the art to modify Graham and are not suggestive of customization. App. Br. 7-10. However, as explained by the Examiner, “[t]he Snoke reference is only being used to teach a different material which can be used in the invention of Graham, not to teach any of the specifics of the customization of the invention.” Ans. 8. Further, Appellant’s argument directed to a lack of suggestion or motivation in Snoke for the proposed modification to Graham is foreclosed by KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), in which the Court rejected the rigid requirement of a teaching, suggestion or motivation to combine known elements in order to show obviousness. KSR, 550 U.S. at 415. While a conclusion of obviousness must be supported by explicit findings and analysis establishing an apparent reason to combine the known elements in the manner required in the claim at issue, “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. The Examiner determines that it would have been obvious “to incorporate the teachings of Snoke into the invention of Graham, as Graham teaches that the invention is applicable to articles made of materials having the property of elasticity or resilience” and “since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.” Ans. 5. Graham states that “a very tight bind and juncture of the parts is obtained which . . . holds them firmly united so that they will not become separated in ordinary use of the article or be accidentally dislodged” Appeal 2010-012480 Application 11/858,121 5 (page 1, col. 1, ll. 33-38) and explains that “[t]he elasticity or resilience of the material allows the two parts to be easily pressed together . . . and effects a very secure bond” (Page 1, col. 2, ll. 37-41). Appellant has not explained why a soft elastomeric material would be unsuitable for use in Graham. We find nothing in the disclosure of Graham that precludes the use of a soft elastomeric material to secure the pin, particularly in view of Graham’s discussion of the elasticity of the material providing a good bond. In view of the above, we sustain the rejection of claims 10 and 11. Claim 12 depends from claim 11 and further recites that “said body member may be repeatedly customized.” Appellant argues that “[t]he Figures in the Graham reference provide no suggestion on whether the system is capable of repeated customization as claimed” and “[t]he cited portion of the specification merely states that the initials or symbols may be applied but fails to suggest the claimed repeated customization.” App. Br. 11. The limitation “may be repeatedly customized” in claim 12 is a functional limitation only requiring that the prior art be capable of performing the recited function. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Appellant’s argument that Graham does not disclose a device that is capable of repeated customization is not persuasive without some evidence or explanation as to why the Examiner’s determination is erroneous. Appellant contends that in Graham “the attached items are intended to be semi-permanent and not readily swapped by the customer” (App. Br. 11) but fails to persuasively explain why Graham, including the proposed modifications, is not capable of being repeatedly customized. For these reasons, we sustain the rejection of claim 12. Appeal 2010-012480 Application 11/858,121 6 Appellant does not provide any separate arguments for claim 13, which depends from claim 11. Therefore, claim 13 falls with claim 11. Obviousness - Claims 14-16 Claim 14 depends from claim 11 and further defines the non-wearable device as a notebook. Appellant argues that Tran would not motivate one skilled in the art to modify Graham as suggested by the Examiner. App. Br. 13. However, as noted above, arguments directed to a lack of motivation in a prior art reference do not apprise us of Examiner error. In response to the rejection of claim 15, Appellant contends that “[t]he Gwinn reference clearly teaches . . . [a] permanent marking [that] teaches away from the claimed ‘repeated customization.’” App. Br. 13-14. The Examiner has cited Gwinn as an example of a customizable article that could be used with the teachings of Graham. Ans. 8. The mere existence of differences between Gwinn and Graham is not sufficient to establish that Gwinn teaches away from their combination. Appellant’s arguments are not persuasive because Appellant has not pointed to anything in the disclosure of Gwinn that disparages the claimed arrangement. Appellant’s sole argument regarding the rejection of claim 16 is that Nurre fails to remedy perceived deficiencies in the disclosures of Graham and Snoke. As discussed earlier, the Examiner correctly found that there were no such deficiencies. Therefore, Appellant’s arguments do not apprise us of Examiner error. For these reasons, we sustain the rejection of claims 14-16. Appeal 2010-012480 Application 11/858,121 7 DECISION We AFFIRM the Examiner’s decision to reject claims 10-16. 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 mls