Ex Parte Markfield

Patent Trial and Appeal BoardOct 3, 2016

13280071 (P.T.A.B. Oct. 3, 2016)

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. 13/280,071 10/24/2011 Linda Markfield MARKFIELD-P004 9997 45812 7590 10/05/2016 Law Office of Michael D. Eisenberg Intellectual Property Law 1991 Village Park Way Suite 100 Encinitas, CA 92024 EXAMINER NGUYEN, SON T ART UNIT PAPER NUMBER 3643 NOTIFICATION DATE DELIVERY MODE 10/05/2016 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): meisenberg @ mdepatents .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LINDA MARKFIELD Appeal 2015-0000581’2 Application 13/280,071 Technology Center 3600 Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and MATTHEW S. METERS, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the rejection of claims 1—12. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Our decision references Appellant’s Specification (“Spec.,” filed Oct. 24, 2011) and Appeal Brief (“Br.,” filed May 5, 2014), as well as the Final Office Action (“Final Action,” mailed July 26, 2013) and the Examiner’s Answer (“Answer,” mailed July 16, 2014). 2 According to Appellant, Imagine That International, Inc., is the real party in interest. Br. 3. Appeal 2015-000058 Application 13/280,071 According to Appellant, the invention “relates to protective collars, also known as veterinary restraints, for small animals and commonly called ‘Elizabethan collars’ or ‘e-collars’. The collar is useful for preventing the animal from licking or biting wounds, or disrupting surgical stitches. The collar . . . prevents disruption of medications applied topically.” Spec. 12. Claims 1, 9, and 12 are the only independent claims. See Br., Claims App. We reproduce claims 1 and 12, below, as representative of the appealed claims. 1. A protective collar effective as a veterinary restraint when fitted on an animal, the protective collar comprising: a layered assembly comprising; a first sheet comprising a flexible substantially non- resilient material having inner and outer arcuate edges extending between a first end and a second end of the first sheet, the inner and outer arcuate edges comprising single circular arcs, wherein the outer arcuate edge has a substantially greater radius than the inner edge; a second sheet comprising a flexible substantially non- resilient material and having a substantially similar shape to that of the first sheet; wherein when assembled, the first and second sheets form the layered assembly having an outer arcuate edge and an inner arcuate edge and a first end and a second end; the first sheet and the second sheet being formed into the assembly by securing together the outer arcuate edges and the inner arcuate edges and the first and second ends of the first and second sheets; a closure, effective to secure the first and second ends of the protective collar, such that when the first and second ends of the protective collar are secured, a closed configuration is formed having an inner opening and an outer opening, the inner opening being substantially smaller than the outer opening, wherein the outer opening, when worn is located forward of the wearer’s 2 Appeal 2015-000058 Application 13/280,071 neck and is configured to encompass the wearer’s head and the inner opening is configured to encompass a wearer’s neck but not the head, to form a generally cone shaped restraint; wherein the protective collar is sized and shaped to encompass both the wearer’s head and neck on different parts of the restraint. 12. A protective E-collar, comprising: a layered assembly comprising; a first sheet comprising a flexible substantially non- resilient material having inner and outer arcuate edges extending between a first end and a second end of the first sheet; a second sheet comprising a flexible substantially non- resilient material and having a substantially similar shape to that of the first sheet; wherein when assembled, the first and second sheets form the layered assembly having an outer arcuate edge and an inner arcuate edge and a first end and a second end; the first sheet and the second sheet being formed into the assembly by securing together the outer arcuate edges and the inner arcuate edges and the first and second ends of the first and second sheets; a closure, effective to secure the first and second ends of the protective collar, such that when the first and second ends of the protective collar are secured, a closed configuration is formed having an inner opening and an outer opening, the inner opening being substantially smaller than the outer opening; wherein only the inner opening of the two openings is adapted to fit securely around the neck of the wearer. Br., Claims App. 3 Appeal 2015-000058 Application 13/280,071 REJECTIONS AND PRIOR ART The Examiner rejects claims 1—5 and 7—12 under 35 U.S.C. § 103(a) as unpatentable over Lippincott (US 5,133,295, iss. July 28, 1992) and Schmid (US 6,659,046 B2, iss. Dec. 9, 2003). The Examiner rejects claim 6 under 35 U.S.C. § 103(a) as unpatentable over Lippincott, Schmid, and Moenning (US 2007/0073203 Al, pub. Mar. 29, 2007). The Examiner rejects claims 1—12 on the grounds of nonstatutory obviousness-type double patenting as unpatentable over claims 1—13 of U.S. Patent No. 8,042,494. See Final Action 2—11; see also Answer 2. ANALYSIS Double patenting rejection Inasmuch as there is no indication in the record that the Examiner withdraws the double patenting rejection, and Appellant does not argue against the rejection, we summarily sustain this rejection. Obviousness rejections With respect to independent claim 1, the claim requires a closure, effective to secure the first and second ends of the protective collar, such that when the first and second ends of the protective collar are secured, a closed configuration is formed having an inner opening and an outer opening, the inner opening being substantially smaller than the outer opening, wherein the outer opening, when worn is located forward of the wearer’s neck and is configured to encompass the wearer’s head and the inner opening is configured to encompass a wearer’s neck but not the head, to form a generally cone shaped restraint; 4 Appeal 2015-000058 Application 13/280,071 wherein the protective collar is sized and shaped to encompass both the wearer’s head and neck on different parts of the restraint. Br., Claims App. Appellant argues that neither reference discloses a cone- shaped restraint as claimed. See Br. 9. We agree with Appellant. The Examiner finds that Lippincott discloses such a restraint. See Final Action 2 (citing Lippincott col. 3,11. 30-44); see also Answer 2 (citing Lippincott col. 3,11. 35—40). We note, however, that the referenced portion describes how Lippincott’s invention differs from prior art devices that are conical. More specifically, the cited portion of Lippincott states that [t]he collar rings 15 and 17 of the collar 10 of the present invention are composed of soft, flexible and non-resilient material that has sufficient body to form a floppy collar that stands out to some extent from the neck opening but insufficient rigidity to give the animal the feeling of having its head confined, in a frustro-conical funnel, as in many of the prior art devices, or otherwise. In this way, the invention significantly reduces the discomfort of the animal, and produces a minimal interference with its comfort and ability to move around. In effect, the invention provides a soft, flexible barrier between the head and the rest of the body, rather than an annoying, frightening rigid or semi-rigid “container” around the head. Lippincott col. 3,11. 30-44 (bold original, italics added). Thus, based on the foregoing, we do not sustain the rejection of independent claim 1, or the rejections of claims 2—7 depending from claim 1. Further, inasmuch as independent claim 8, from which claims 9—11 depend, recites a similar limitation and is rejected for similar reasons, we also do not sustain the rejection of claims 8—11. Independent claim 12 differs in scope from claim 1, and does not require such a cone-shaped restraint. Appellant argues that the rejection of this claim is in error because neither reference discloses the claim feature of 5 Appeal 2015-000058 Application 13/280,071 “only the inner opening of the two openings is adapted to fit securely around the neck of the wearer.” Br. 9—10. Lippincott shows an inner opening (e.g., neck hole 18) fitting securely around the neck of the wearer, and an outer opening (e.g., the outer edge of collar 10) that is not secured around the wearer’s neck. See Lippincott Figs. 1,2. Thus, we sustain the rejection of claim 12. DECISION We summarily AFFIRM the Examiner’s nonstatutory obviousness- type double patenting rejection of claims 1—12. We REVERSE the Examiner’s obviousness rejections of claims 1—11. We AFFIRM the Examiner’s obviousness rejection of claim 12. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 6