Ex Parte Kronenberger

Patent Trials and Appeals Board

Jun 13, 2019

14323157 - (D) (P.T.A.B. Jun. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/323,157 07/03/2014 Ronald Kronenberger
32116 7590 06/17/2019
WOOD, PHILLIPS, KATZ, CLARK & MORTIMER
500 W. MADISON STREET
SUITE 1130
CHICAGO, IL 60661
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.
KR010824P00010US 5796
EXAMINER
SLAWSKI, BRIAN R
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
06/17/2019 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):
docketing@woodphillips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD KRONENBERGER 1
Appeal2018-007470
Application 14/323, 157
Technology Center 1700
Before BRADLEY R. GARRIS, GEORGIANNA W. BRADEN, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-16 and 21. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM.
1 Ronald Kronenberger is identified as the real party in interest (App. Br. 1 ).
Appeal2018-007470
Application 14/323, 157
In sole independent claim 1, Appellant claims a method of adorning
an article ( e.g., a baseball-style cap) comprising the steps of: cutting first
flexible, resilient layer 14 along first border edge 20 to thereby produce void
26 (Fig. 2); providing pre-formed, flexible, resilient insert piece 28
configured as a single fabric layer to fit within the void and having second
border edge 34 wherein the first and second border edges are urged against
each other as an incident of the insert piece being directed into the void
(Fig. 3); with the insert piece directed into the void, fixing the insert piece
and remaining portion of the first layer together to define an adornment
assembly 10 (Fig. 7); and integrating the adornment assembly into an
article 12 (Fig. 8). In dependent claim 2, Appellant claims the method
according to claim 1 "wherein the insert piece and remaining portion of the
first layer are fixed together as an incident of integrating the adornment
assembly into the article."
A copy of representative claims 1 and 2, taken from the Claims
Appendix of the Appeal Brief, is set forth below.
1. A method of adorning an article, the method comprising the
steps of:
providing a first flexible, resilient layer having a first thickness
between oppositely facing first and second surfaces;
cutting the first layer fully between the first and second surfaces along
a first border edge that surrounds a discrete piece of the first layer;
separating the discrete piece of the first layer from a remaining
portion of the first layer to thereby produce a void within the first border
edge;
providing a pre-formed, flexible, resilient insert piece configured as a
single fabric layer to fit within the void and having a thickness between third
and fourth surfaces and a second border edge having a shape that conforms
to a shape of at least a portion of the first border edge;
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Application 14/323, 157
directing the insert piece by itself into the void with the void and
insert piece prealigned so that the second border edge is placed against the
first border edge along portions of the first and second border edges where
the first and second border edge shapes conform,
the insert piece and void relatively dimensioned so that the insert
piece is compressed so that the portions of the first and second border edges
are urged against each other as an incident of the insert piece being directed
into the void,
with the insert piece directed into the void, fixing the insert piece and
remaining portion of the first layer together to define an adornment
assembly; and
integrating the adornment assembly into an article to adorn the article,
the first and third surfaces substantially flush with the adornment
assembly integrated into the article,
2. The method of adorning an article according to claim 1 wherein
the insert piece and remaining portion of the first layer are fixed together as
an incident of integrating the adornment assembly into the article.
The Examiner maintains a rejection of claim 2 under 35 U.S.C. §
112(d) or pre-AIA 35 U.S.C. § 112, 4th paragraph, as being of improper
dependent form for failing to further limit the subject matter of the claim
upon which it depends, or for failing to include all the limitations of the
claim upon which it depends (Non-Final Action (dated December 22, 2017)
2-3).
According to the Examiner, the claim 2 recitation of fixing together
"as an incident of integrating the adornment assembly into the article" is
incompatible with the claim 1 recitation of fixing together "to define an
adornment assembly[] and integrating the adornment assembly into an
article" (id.).
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Application 14/323, 157
Appellant argues that the Examiner's interpretation of claim 1 "is
unduly restrictive" (App. Br. 4). Appellant states that, "[s]ince claim 1 is
broad enough to cover a method wherein the adornment assembly is defined
either independently or as it is integrated into an article, the language in
claim 2 is not inconsistent with that in claim 1" (id.).
We observe that Appellant does not explicate the statement that
"claim 1 is broad enough to cover a method wherein the adornment
assembly is defined ... as it is integrated into an article [in accordance with
claim 2]."
In response to Appellant's argument, the Examiner explains that the
claim 1 recitation indicates a chronology wherein the step of fixing together
"to define an adornment assembly" necessarily occurs prior to the step of
"integrating the adornment assembly into an article" and that such a
chronology is incompatible with the claim 2 recitation of fixing together "as
an incident of integrating the adornment assembly into the article" (Ans. 12).
Significantly, the Reply Brief filed by Appellant does not address the
Examiner's explanation (see generally Reply Br.).
Under these circumstances, the appeal record supports the Examiner's
determination that dependent claim 2 is incompatible with parent
independent claim 1. Therefore, we sustain the Examiner's§ 112 rejection
of claim 2.
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Appeal2018-007470
Application 14/323, 157
Under 35 U.S.C. § 103, the Examiner rejects independent claim 1 as
unpatentable over Wang (US 2006/0212993 Al; Sept. 28, 2006) in view of
Chen (US 2008/0141567 Al; June 19, 2008) and Krasno (US 2,245,202;
June 10, 1941) (Non-Final Action 3-6) and rejects remaining dependent
claims 2-16 and 21 as unpatentable over these references alone or in
combination with additional prior art (id. at 7-10). 2
We will sustain these § 103 rejections for the reasons given in the
Non-Final Action, the Examiner's Answer, and below.
The Examiner finds that Wang teaches or would have suggested a
method of adorning an article wherein a void 94 is created in a first flexible,
resilient layer 93 of stacked up multi-layer materials such as elastic fabrics
and wherein a flexible, resilient insert piece 92 of stacked up multi-layer
materials such as elastic fabrics is fitted within the void (id. at 4--5 (citing
Wang, e.g., ,r,r 9, 33, Figs. 13-14)).
2 Appellant presents arguments directed to independent claim 1 specifically
(App. Br. 4--10). However, the separately presented statements regarding
the patentability of certain dependent claims (id. at 10-15) are characterized
by the Examiner as "not substantive, but instead brief assertions that the
limitations of these claims would not be obvious over the prior art, without
elaboration of Appellant's reasoning" (Ans. 16). Appellant does not dispute
the Examiner's characterization (see generally Reply Br.). Under these
circumstances, we consider Appellant's dependent claim statements to point
out merely what the claims recite such that the statements are not substantive
arguments for separate patentability of the claims. See 3 7 C.F .R.
§ 4I.37(c)(iv). Accordingly, all of dependent claims 2-16 and 21 rejected
under § 103 will stand or fall with parent independent claim 1.
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Application 14/323, 157
While insert piece 92 may be configured as multi-layers of elastic
fabrics, the Examiner finds that Wang does not teach the insert piece is
configured as a single fabric layer as claimed (id. at 5). The Examiner finds
that Chen discloses a method of adorning articles wherein a single layer is
fitted within the void of a first layer and concludes that it would have been
obvious to replace Wang's multi-layer fabric insert piece with a single fabric
layer insert piece as suggested by Chen "in order to achieve the same effect
desired by Wang with an insert piece of simpler construction" (id.).
The Examiner finds that Wang fails to teach insert piece 92 and void
94 are relatively dimensioned so that their border edges are urged against
each other as an incident of the insert piece being directed into the void in
accordance with claim 1 (id. at 5---6). The Examiner finds that Krasno
teaches snugly fitting an insert piece into a first layer for improved aesthetic
effect and concludes that it would have been obvious to dimension Wang's
insert piece and void so that their border edges are urged against each other
as claimed to achieve the improved aesthetic effect taught by Krasno (id. at
6).
Appellant disputes the Examiner's finding that Wang teaches or
would have suggested insert piece 92 is flexible and resilient as claimed
(App. Br. 5). According to Appellant, "piece 92 is shown in Fig. 13 to have
four distinct layers that are integrated into a 'base board' formed by
'adhering or sewing the layers together"' (id. (citing Wang ,r 9)). Appellant
argues "[b ]y reason of sewing or adhering the layers together to produce the
piece 92, the resulting 'base board' is inherently not flexible or resilient ...
consistent with the characterization of this component 92 as a 'board"' (id.).
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Application 14/323, 157
Appellant's argument is unpersuasive for the reasons given by the Examiner
such as the Examiner's point that the argument is not supported by credible
evidence (Ans. 12-13). Moreover, this argument appears to be premised on
the belief that Wang's multi-layer base board and piece 92 require four
layers as shown in Figure 13 of Wang. Contrary to this belief, Wang
discloses that the base board and piece 92 comprise multi-layers broadly,
thereby encompassing as few as two layers adhered or sewn together
wherein each of these layers is made of elastic fabric (Wang ,r 9). It is
reasonable to consider an embodiment of two elastic fabric layers to possess
the claimed characteristics of flexibility and resilience, and this
reasonableness supports the Examiner's finding that Wang teaches or would
have suggested insert piece 92 having such characteristics.
Appellant argues that replacing Wang's multiple fabric layer insert
piece with a single fabric layer as proposed by the Examiner would not
achieve the multi-layered 3D effect or the reduced manufacture cost desired
by Wang (App. Br. 7).
We agree with the Examiner that Appellant's 3D effect argument is
not convincing (Ans. 14). The Examiner correctly explains that Wang
teaches a 3D effect created by the exposed side edges of multi-layers but that
such a 3D effect is inapplicable to insert piece 92 when ultimately disposed
in void 94 because side edges of the so-disposed piece 92 are unexposed as
shown in Figure 14 of Wang (id.). As for Appellant's argument concerning
the reduced manufacture cost referred to by Wang, we share the Examiner's
position that "it is unclear how substituting a single layer insert piece for a
multi-layer insert piece would incur substantial economic burden" (id.).
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Application 14/323, 157
Additionally and contrary to the implication of this argument, "[t]hat a given
combination would not be made by businessmen for economic reasons does
not mean that persons skilled in the art would not make the combination
because of some technological incompatibility." In re Farrenkopf, 713 F.2d
714, 718 (Fed. Cir. 1983).
Appellant also argues that modifying Wang's insert piece 92 to be a
single layer as claimed "would require somehow elevating the single layer
making up the component 92 within a void which is four times deeper than
the thickness of the layer making up the element 92" (App. Br. 8).
As above, this argument is premised on the incorrect belief that Wang
requires piece 92 and base board void 94 to have the four layers of thickness
shown in Figure 13. We reiterate our earlier point that Wang broadly
discloses the base board and piece as comprising multi-layers, thereby
encompassing piece 92 and void 94 having as little as two layers of
thickness. We agree with the Examiner's proposal that it would have been
obvious to provide Wang with a single layer insert piece 92 having the same
thickness as void 94 (Ans. 15), particularly for a void having a thickness of
only two layers. Appellant acknowledges the Examiner's proposal (Reply
Br. 6) but fails to explain with any reasonable specificity why an artisan
would not have possessed the skill or motivation to provide insert piece 92
as a single layer having the same thickness as void 94.
Finally, Appellant challenges the Examiner's proposed combination
of Wang and Krasno by arguments disparaging Krasno such as "Krasno
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Application 14/323, 157
applies an adhesive between the abutted edges which would inherently
destroy the sharpness of the transition there between" (App. Br. 10).
In response, the Examiner states "[t]hese arguments are not persuasive
because they do not address any limitations specifically recited in the
claims" ( Ans. 16).
In the Reply Brief, Appellant replies to the Examiner's statement via a
new argument not raised in the Appeal Brief that apparently paraphrases
certain claim 1 language. In particular, Appellant argues "[ c ]laim 1 requires
that the insert piece directed into the void, the second border edge is placed
against the first border edge along portions of the first and second border
edges ... [whereas] [i]n Krasno, the corresponding edges are spaced from
each other by a thickness of the adhesive line there between" (Reply Br. 7).
Appellant fails to explain why good cause exists for considering the
newly raised argument ( or why claim 1 requires no adhesive be present
between the first and second border edges or why such a requirement would
not be satisfied by Krasno's corresponding edges prior to applying adhesive
therebetween). Under these circumstances, we will not consider this new
argument for purposes of the present appeal. See 37 C.F.R. § 4I.41(b)(2).
For the above-stated reasons and those given by the Examiner, we
sustain the§ 103 rejections of claims 1-16 and 21.
The decision of the Examiner is affirmed.
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Application 14/323, 157
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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