Ex Parte Elahi et al

Board of Patent Appeals and Interferences

May 1, 2012

10842960 (B.P.A.I. May. 1, 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.
10/842,960 05/11/2004 Ebrahim Elahi 3077
7590 05/01/2012
KEIVAN RAZAVI
APT. 9A
420 EAST 55th STR
NEW YORK, NY 10022
EXAMINER
PATEL, TAJASH D
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
05/01/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte EBRAHIM ELAHI and
KEIVAN EDWARD RAZAVI
____________________

Appeal 2010-003203
Application 10/842,960
Technology Center 3700
____________________

Before: PHILLIP J. KAUFFMAN, GAY ANN SPAHN, and
MICHAEL L. HOELTER, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003203
Application 10/842,960

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

THE INVENTION
Appellants’ claimed invention “relates to a collar support member that
is adapted to store and/or secure pins and other fastening items associated
with various garments.” Spec. 1, para. [0001]. Claims 1, 10, and 17 are the
independent claims on appeal. Claim 1, reproduced below, is representative
of the claimed subject matter:
1. A garment collar support member for shaping a garment
collar, the garment collar support member comprising:
(a) a first collar shaping region adapted to support a first
collar associated with the garment collar, the first collar shaping
region comprising a first non planar surface;
(b) a second collar shaping region adapted to support a
second collar associated with the garment collar, the second
collar shaping region comprising a second non planar surface;
and
(c) a coupling system associated with coupling the first
and second collar shaping region together for providing a
housing region between the first and second non-planar surface,
wherein the housing region stores at least one fastening item.1

REJECTIONS2
1. Claims 1, 2, 7-9, and 16 are rejected under 35 U.S.C. § 102(b) as
anticipated by Graubarth (US 1,083,826; iss. Jan. 6, 1914).

1 Claim 1 recites “non-planar” both with and without a hyphen.
2 We alter the order of the rejections from that of the Answer to facilitate our
analysis.
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2. Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Graubarth and Tiss (US 3,865,286; iss. Feb. 11, 1975).
3. Claims 1, 2, 5, 6, 10-13, 17, 18, and 20 are rejected under 35 U.S.C. §
102(b) as anticipated by Turner (US 2,508,126; iss. May 16, 1950).
4. Claims 14, 15, and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Turner and Tiss.

OPINION
Claim Construction
Independent claim 1 is directed to a garment collar support member
comprising a first collar shaping region having a first non-planar surface and
a second collar shaping region having a second non-planar surface
configured so when coupled together, the first and second collar shaping
regions provide a housing region between the first and second non-planar
surfaces that stores at least one fastening item. The Specification describes
that when the first and second collar shaping regions 102a, 102b are coupled
together, the first and second non-planar surfaces provide a housing region
(hollow area) that stores at least one fastening item. Spec. paras. [0008],
[0021]; fig 1. The non-planar surfaces may, for example be concave, but
may have any shape that provides a housing region between the non-planar
surfaces. Spec. para. [0021]; fig 2a, 2c.
Consequently, claim 1 calls for a garment collar support member
comprising first and second collar shaping regions having first and second
non-planar surfaces, respectively, wherein the non-planar surfaces have any
shape that when coupled together provides a housing region (hollow area)
for storing at least one fastening item.
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Application 10/842,960

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Claims 1, 2, 7-9, and 16 as anticipated by Graubarth
The Examiner found that Graubarth discloses a garment collar
support member having a housing region (slots G) that stores at least one
fastening item (button F). Ans. 3, 6.
Graubarth discloses a new and improved stiffener for convenient
attachment to the collar that “consists essentially of a stiffening member A”
preferably made of sheet metal in the form of a horseshoe, and having slots
G. Graubarth, col. 1, ll. 11-13, 44-45, 50-51; figs. 1-3. Graubarth does not
disclose folding stiffening member A so that it is coupled to itself.
Graubarth, passim. Because Graubarth’s slots G are openings in stiffening
member A, and are not a hollow area between first and second non-planar
surfaces, we agree with Appellants that Graubarth does not disclose a
housing region as called for in claim 1. See Graubarth, col. 1, ll. 76-77; see
also Br. 8-9.
As this finding is in error, we cannot sustain the rejection of
independent claim 1 or its dependent claims 2, 7-9, and 16. See Verdegaal
Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987) (“A
claim is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art
reference.”).

Claims 3 and 4 are rejected as unpatentable over Graubarth and Tiss
Claims 3 and 4 depend from independent claim 1. The rejection of
claims 3 and 4 relies upon the same findings related to Graubarth as the
rejection of independent claim 1, with a modification to substitute adhesive,
as taught by Tiss, for the fastener of Graubarth. Ans. 3-4, 6-7. Tiss does not
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cure the deficiencies of Graubarth (see analysis of claim 1, supra). See Br.
15-16. As such, we cannot sustain the rejection of claims 3 and 4.

Claims 1, 2, 5, 6, 10-13, 17, 18, and 20 as anticipated by Turner
Claims 1-9, and 16
Appellants argue that independent claim 1 is not anticipated by
Turner, because Turner does not disclose a housing area as called for in
claim 1. Br. 10-12.
The Examiner’s finding that Turner discloses a garment collar support
having first and second non-planar surfaces that, when coupled together,
form a housing region that stores a fastening item (clip type retainer 9) fails
to identify which portions of Turner’s device correspond to the first and
second collar shaping regions and the first and second non-planar surfaces of
claim 1. Ans. 3-4, 6.
Turner discloses a man’s shirt collar stiffener, preferably made of
spring steel wire or the like, having a cross member 5 with legs 7 at each
end. Turner, col. 2, ll. 1-2, 25-29, 34-40; figs. 1, 2. Legs 7 extend from each
end of cross member 5, having a clip type collar point ornamental retainer 9
at the opposite end. Turner, col. 1, ll. 34-40; figs 1, 2. Loop 9a of clip type
retainer 9 slips over the collar point edge 11a of collar 11 and is retained by
finger tightening screw 9c. Col. 1, ll. 41-42, 57-58; col. 2, ll. 21-24; figs. 1,
2. While the portion of leg 7 forming loop 9a retains a fastener (Turner, fig.
2), the convex surfaces of the wire that forms loop 9a do not provide a
housing region (hollow area) that stores that fastening item. Contra Ans. 3-
4, 6; Br. 10-12. As such, we cannot sustain the rejection of claim 1 and its
dependent claims 2-9 and 16.
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Claims 10-15
Independent claim 10 is a method claim, and is similar to independent
claim 1 in that it calls for providing a housing (hollow area) in which to
locate the at least one garment fastening item. As explained in the analysis
of claim 1 supra, Turner does not disclose a housing as claimed, and for that
reason, we agree with Appellants that the Examiner’s determination that
Turner discloses the method of claim 10 is in error. Contra Ans. 3-4, 6-7;
see also Br. 12-13. As such, we cannot sustain the rejection of independent
claim 10 and its dependent claims 11-15.
Claims 17, 18, and 20
Independent claim 17 is a method claim. Appellants argue that Turner
does not disclose removing at least one garment fastening item from a
garment, and attaching that item to a collar support member. Br. 14. The
rejection of claim 17 contains no findings regarding the steps of claim 17.
Ans. 3-4, 6-7. Nor do we find any disclosure in Turner relating to removing
at least one garment fastening item from a garment, and attaching that item
to a collar support member as called for in claim 17. Turner, passim; see
also Br. 14-15. Given this, we cannot sustain the rejection of claim 17 or its
dependent claims 18 and 20 as anticipated by Turner.

Claims 14, 15, and 19 as unpatentable over Turner and Tiss
Claims 14 and 15 depend from independent claim 10, and claim 19
depends indirectly from independent claim 17. The rejection of claims 14,
15, and 19 relies upon the same findings as the rejection of their respective
independent claims 10 and 19 as anticipated by Turner, with a modification
to substitute adhesive, as taught by Tiss, for the fastener of Turner. Ans. 5-
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7. As explained supra, Turner does not anticipate independent claims 10
and 17, and Tiss does not cure the deficiencies of Turner. See Br. 17-22. As
such, we cannot sustain the rejection of claims 14, 15, and 19.

DECISION
We reverse the Examiner’s decision to reject claims 1, 2, 7-9, and 16
under 35 U.S.C. § 102(b) as anticipated by Graubarth.
We reverse the Examiner’s decision to reject claims 3 and 4 under 35
U.S.C. § 103(a) as unpatentable over Graubarth and Tiss.
We reverse the Examiner’s decision to reject claims 1, 2, 5, 6, 10-13,
17, 18, and 20 under 35 U.S.C. § 102(b) as anticipated by Turner.
We reverse the Examiner’s decision to reject claims 14, 15, and 19
under 35 U.S.C. § 103(a) as unpatentable over Turner and Tiss.

REVERSED

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