Ex Parte Jensen et al

Patent Trial and Appeal BoardDec 21, 2012

11446899 (P.T.A.B. Dec. 21, 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. 11/446,899 06/05/2006 Bradford Brian Jensen 518320-725065 2590 24325 7590 12/24/2012 PATENT GROUP 2N JONES DAY NORTH POINT 901 LAKESIDE AVENUE CLEVELAND, OH 44114 EXAMINER MCMANMON, MARY ELIZABETH ART UNIT PAPER NUMBER 2875 MAIL DATE DELIVERY MODE 12/24/2012 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 BRADFORD BRIAN JENSEN, ROGER DONN BENTLEY, and KIM IRWIN McCAVIT _____________ Appeal 2010-007565 Application 11/446,899 Technology Center 2800 ______________ Before DAVID M. KOHUT, JOHNNY A. KUMAR, and BRYAN F. MOORE, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007565 Application 11/446,899 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 5-11 and 18-25. App. Br. 2. Claims 1-4 and 12-17 are canceled. Id. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. INVENTION The invention is directed to an artificial candle that has a tube simulating a candle and an electric lamp simulating a candle flame. See Spec. 1:13-14. Claims 5 and 10 are exemplary of the invention and reproduced below: 5. An artificial candle comprising: a tube simulating a candle and having top and bottom ends; a post extending upward from the top end; a nub mounted on the post and diametrically larger than the post; and a flame piece simulating a candle flame and having a bore configured to receive the nub, and in its condition before receiving the nub the bore having a lower section diametrically smaller than the nub and an upper section diametrically larger than the lower section, with a first surface circumferentially surrounding and bounding the lower section; the flame piece being configured to be manually pushed down onto the nub by a user, with the first surface being elastically stretched by the nub as the nub passes through the lower section toward the upper section, and for the stretching of the first surface to be relieved by the nub arriving at a detent position in which the nub is totally within the upper section, and for the flame piece to remain in the detent position if not subjected to further manual force, but able to be manually pushed further downward beyond the detent position. Appeal 2010-007565 Application 11/446,899 3 10. An artificial candle apparatus comprising: a tube simulating a candle and having top and bottom ends; a post extending upward from the top end; a lamp mounted on the post; and flame pieces simulating a candle flame, configured to be interchangeably mounted over the lamp by a user, and differing from each other in size, shape and/or color. REFERENCES Gerlat US 3,233,093 Feb. 1, 1966 Bordner US 5,046,632 Sep. 10, 1991 Rong US 2003/0043579 A1 Mar. 6, 2003 REJECTIONS AT ISSUE Claims 5-9, and 18-21 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Gerlat and Bordner. Ans. 3-7. Claim 10, 11 and 22-25 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Gerlat and Rong. Ans. 7-12. ISSUES 1. Did the Examiner err in combining Gerlat and Bordner and finding that the combination teaches or suggests “the stretching of the first surface to be relieved by the nub arriving at a detent position in which the nub is totally within the upper section, and for the flame piece to remain in the detent position if not subjected to further manual force, but able to be manually Appeal 2010-007565 Application 11/446,899 4 pushed further downward beyond the detent position,” as recited in claim 5? 2. Did the Examiner err in combining Gerlat and Rong and finding that the combination discloses “flame pieces simulating a candle flame, configured to be interchangeably mounted over the lamp by a user, and differing from each other in size, shape and/or color,” as recited in claim 10? ANALYSIS 35 U.S.C. § 103(a) - Gerlat and Bordner Claims 5-9, and 18-21 Appellants argue “Bordner's bucket lid is so different from Gerlat’s flame piece in terms of field of endeavor, functional purpose, structure and desirable traits, that the skilled person in Gerlat's field would not have considered its features relevant, beneficial or applicable to Gerlat’s candle flame piece.” This argument is not persuasive. Prior art references are considered analogous if they are “from the same field of endeavor, regardless of the problem addressed,” or if they are “reasonably pertinent to the particular problem with which the inventor is involved.” In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992). Here, both Gerlat and Bordner are concerned with the problem of providing a cover over another component. We agree with the Examiner (Ans. 12) that the references are not so different as to be considered nonanalogous. Claim 5 recites a flame piece is “manually pushed further downward beyond the detent position.” Appellants argue that Bordner does not disclose this limitation. App. Br. 8. Specifically, Appellants argue that Appeal 2010-007565 Application 11/446,899 5 “Bordner’s lid cannot be pushed downward beyond that detent position as claimed; it is prevented from doing so by abutment of the lid's gasket 86 (Fig. 6) against the bucket rim 18.” Id. We are not persuaded by this argument. Bordner teaches that container has a lid with a latching detent 76 and a lid stacking surface 72. Bordner, Fig. 6. Bordner teaches that the container has a secondary detent 56. Id. Bordner’s figures 1 and 6 are represented below: Figures 1 and 6 show two views of the container and lid assemblage. Appeal 2010-007565 Application 11/446,899 6 According to figure 6 above, it is apparent that the lid of Bordner is capable of being pressed onto the container such that lid stacking surface 78 expands and comes to rest just below secondary detent 56. Bordner, Fig. 6; see also Ans. 4, 13. . Secondary detent 56 is the claimed nub. See Ans. 4, 13. Thus, Bordner teaches “being configured to be manually pushed down onto the nub by a user, with the first surface being elastically stretched by the nub as the nub passes through the lower section toward the upper section, and for the stretching of the first surface to be relieved by the nub arriving at a detent position in which the nub is totally within the upper section.” Additionally, since secondary detent holds lid stacking surface 78 in place, Bordner teaches “remaining in the detent position if not subjected to further manual force.” See Id. Claim 5 also recites that the flame piece is “able to be manually pushed further downward beyond the detent position.” Appellants argue that “Bordner discloses no part that can, as claimed, be pushed lower beyond its detent position.” App. Br. 8. However, the Examiner relies on the combination of Bordner and Gerlat to teach this limitation. Therefore, Appellants’ argument does not respond to the Examiner’s specific findings. Nonetheless, we agree with the Examiner that one of ordinary skill in the art would recognize that to accommodate the combination of Bordner and Gerlat, plastic hood 30 would be made of an elastic material, such as disclosed in Bordner (Bordner 2:22-29), such that plastic hood 30, as shown in Gerlat Fig. 2, can be pressed further down. Ans. 4. Thus, the combination of Bordner and Gerlat teaches the limitation the flame piece is “able to be manually pushed further downward beyond the detent position.” Appeal 2010-007565 Application 11/446,899 7 Claims 6-9 and 18-21 are not separately argued and depend from claim 5 and thus fall with claim 5. Thus, for the reasons stated above we affirm the Examiner’s decision to reject claims 5-9, and 18-21. 35 U.S.C. § 103(e) - Gerlat and Rong Claims 10, 11 and 22-25 Claim 10 recites “flame pieces simulating a candle flame, configured to be interchangeably mounted over the lamp by a user, and differing from each other in size, shape and/or color.” Appellants argue that: “in contrast to the claim limitation of the differing cover pieces simulating the same thing - specifically a flame - each of Rong's cover pieces simulates a different thing: one simulates a heart, another simulates a flower, another a star, etc. No two cover pieces of Rong simulate the same thing as claimed, much less the claimed "flame". Therefore, the references, even combined, lack the limitation of differing "flame pieces simulating a candle flame” App. Br. 10. (Emphasis in original.) However, it has long been held that features that relate to “ornamentation only and have no mechanical function whatsoever” cannot be relied upon for patentability of a claim in a utility patent application. In re Seid, 161 F.2d 229, 231 (CCPA 1947). We agree with the Examiner (Ans. 13-14) that the simulation of a candle flame is purely ornamental, and as the ornamentation is the only argued claim element, we sustain the rejection of claim 10. Claims 11 and 22-25 are not separately argued and depend from claim 10 and thus fall with claim 10. Thus, for the reasons stated above we affirm the Examiner’s decision to reject claims 5-9, and 18-21. DECISION The Examiner’s decision to reject claims 5-11 and 18-25 is affirmed. Appeal 2010-007565 Application 11/446,899 8 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 ke