Ex Parte Honeycutt

Patent Trial and Appeal BoardMar 22, 2019

14092636 (P.T.A.B. Mar. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/092,636 11/27/2013 28960 7590 03/22/2019 HAVERSTOCK & OWENS LLP 162 NORTH WOLFE ROAD SUNNYVALE, CA 94086 FIRST NAMED INVENTOR Rob Honeycutt 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 ATTORNEY DOCKET NO. CONFIRMATION NO. HCUTT-00111 5681 EXAMINER SULLIVAN, MATTHEW J ART UNIT PAPER NUMBER 3677 MAIL DATE DELIVERY MODE 03/22/2019 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 ROB HONEYCUTT Appeal2017-010443 Application 14/092,636 Technology Center 3600 Before JAMES P. CALVE, ARTHUR M. PESLAK, and SEAN P. O'HANLON, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 27-29, 36-38, 41, 42, and 44--46. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 Snik LLC is the Applicant and identified as the real party in interest. Appeal Br. 2. Appeal2017-010443 Application 14/092,636 THE CLAIMED SUBJECT MATTER Appellant's invention "relates to a cord holder used to affix a headset cord to clothing and bags." Spec. 1:10. Claim 27, reproduced below with italics added, is illustrative of the claimed subject matter. 27. A headset cord holder comprising: a body coupled to at least one article from the group of articles consisting of a bag and an item of clothing, the body comprising an outside surface, wherein the body is part of a closure mechanism that releasably couples a first portion of the at least one article to a second portion of the at least one article; and a first groove integrally molded within the outside surface of the body that directly receives and releasably secures a headset cord, the first groove comprising a first groove wall, a second groove wall and a groove entry space, both the first groove wall and the second groove wall extending into the body below the outside swface to form the first groove, such that when the headset cord is secured within the first groove, at least a portion of the headset cord is held within the body and below the outside surface. REJECTIONS 1) Claims 27, 29, 36, 38, 41, 42, 44, and 46 are rejected under 35 U.S.C. Â§ I02(b) as anticipated by or, in the alternative, under 35 U.S.C. Â§ I03(a) as unpatentable over Yang (US 7,559,123 Bl, issued July 14, 2009). 2 2) Claims 28, 37, and 45 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Yang and Nasu (US 6,526,635 B2, issued Mar. 4, 2003). 2 Although independent claim 44 is not listed in the heading, it is addressed in the body of the rejection. Final Act. 3, 6. 2 Appeal2017-010443 Application 14/092,636 DISCUSSION Rejection 1 The Examiner finds that "element 3" of Yang corresponds to the "body" recited in claim 27. Final Act. 4 ( citing Yang, Fig. 2). Further, the "Examiner interprets the outside surface as constituting all the exterior surfaces of the device of Yang which do not contact the tube/cord when the tube/cord is placed within the groove." Id. In support of the rejection, the Examiner submits an annotated drawing of Yang's element 3. Id. at 6. The primary thrust of Appellant's contentions is that the Examiner's interpretation of "body" "is different [from] the teachings and illustrations of Yang." Appeal Br. 7. In support of this contention, Appellant argues that "Yang teaches that 'the coupling device 32 is a substantially U-shaped resilient plate member formed integral with the top wall of the mounting base 31." Id. at 7-8. (citing Yang, 4:16-18). According to Appellant, "the groove walls [ ofJ Yang rise above the body" and, thus, the "grooved walls of Yang do not extend into the body" as required by claim 27. Id. The Examiner responds that "[ n ]either applicant's specification nor his claims provide significant limitations or disclosure as to the details of the claimed 'body."' Ans. 3. The Examiner also notes that "Yang does not disclose any particular structure as constituting a 'body'. In fact the term 'body' does not appear anywhere within the disclosure of Yang." Id. For the following reasons, we sustain the rejection of claim 27. Appellant's Figure IA illustrates an embodiment of the claimed "headset cord holder 100 having a groove 120 molded into the body 110 of a shirt button." Spec. 4:14--15; Fig. IA. The Specification further describes 3 Appeal2017-010443 Application 14/092,636 that "body 110 is configured to be coupled to a shirt ... in place of a standard button." Id. 4:18-19. Further, "one or more apertures 115 are formed in body 11 O" for sewing body 110 to an item of clothing. Id. 4: 19- 21. Appellant's Figure ID is reproduced below: Figure ID illustrates that groove 120 extends outward from the "button" which is described as body 110. See Fig. ID. Yang discloses that "adapter member 3 comprises a mounting base 31 and a coupling device 32 fixedly provided at the top side of mounting base 31." Yang 3: 15-17. A portion of Yang's Fig. 2 is reproduced below: Yang's Figure 2 illustrates that coupling device 32 comprises two walls that extend outward from base 31 and form a groove. 4 Appeal2017-010443 Application 14/092,636 Appellant does not adequately explain why "the groove walls of Yang rise above the body" and, "do not extend into the body" (Appeal Br. 7) but groove 120 in Appellant's Figure ID extends into body 110 and does not rise above body 110. The bottom of groove 120 ends near the top of the button structure, body 110, and Yang's groove walls similarly end near the joint between the groove and base 31. Consequently, Appellant's contention does not apprise us of error in the Examiner's finding that Yang anticipates claim 27. Appellant also argues that Yang does not disclose a headset cord holder but rather "a side release buckle that is used to hold a suction tube of a water bottle." Appeal Br. 7 (citing Yang, 4:41-50, Fig. 9). We note that "headset cord holder" is recited in the preamble of claim 27. Id. at 14 (Claims App.). As discussed above, Appellant does not direct us to any structural distinction between the body of claim 27 and Yang. In the absence of a structural distinction in the body of the claims, we are not apprised of Examiner error because Appellant is merely attempting to claim a new intended use of an old product. In re Schreiber, 128 F. 3d 1473, 1477 (Fed. Cir. 1997), citing In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). For all the foregoing reasons, we are not apprised of Examiner error in the anticipation rejection of claim 27 and sustain the rejection of claim 27 and claim 29, which depends from claim 27, as anticipated by Yang. Appellant relies on the same argument for independent claims 36 and 44. Appeal Br. 10-12. We sustain the anticipation rejection of claims 36 and 44 as well as dependent claims 38, 41, 42, and 46 for the same reasons. The Examiner alternately rejected the claims as unpatentable over Yang. Final Act. 3--4. In the alternate rejection, the Examiner determines 5 Appeal2017-010443 Application 14/092,636 that, if Appellant's interpretation of Yang is correct and mounting base 31 corresponds to the recited body, it would have been obvious to one of ordinary skill in the art "to extend surface 314 up around walls 3 2 of Yang because this would buttress and strengthen the walls against breakage and a change in shape is generally considered obvious." Id. at 4. Appellant failed to provide arguments in response to the obviousness rejection. See Appeal Br. 6-12. Consequently, we summarily sustain the rejection of claims 27, 29, 36, 38, 41, 42, 44, and 46 as unpatentable over Yang. Rejection 2 Claims 28, 37, and 45 depend from claims 27, 36, and 44, respectively. Appeal Br. 14--16 (Claims App.). In the Appeal Brief, Appellant argues that these claims are patentable based on the same arguments raised in connection with claims 27, 36, and 44. Id. at 12. We sustain the rejection of these claims for the same reasons stated above. DECISION The Examiner's decision rejecting claims 27-29, 36-38, 41, 42, and 44--46 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 6