Ex Parte Lodge et al

Board of Patent Appeals and Interferences

Apr 23, 2009

11500610 (B.P.A.I. Apr. 23, 2009)

1

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS R. LODGE, SR.,
and SUSAN M. LODGE

____________

Appeal 2009-1676
Application 11/500,6101
Technology Center 1700
____________

Decided:2 April 23, 2009
____________

Before EDWARD C. KIMLIN, CATHERINE Q. TIMM, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL

1 Application 11/500,610, Universal Bow, filed 8 August 2006. The
specification is referred to as the “610 Specification,” and is cited as “Spec.”
The real party in interest is listed as the inventors. (Amended Brief of
Appellants, filed 2 November 2007 (“Br.”), 1.)
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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A. Introduction
Thomas R. Lodge, Sr., and Susan M. Lodge (“Mr. and Mrs. Lodge,”
or “Appellants”) timely appeal under 35 U.S.C. § 134(a) from the final
rejection3 of claims 1-6, which are all of the pending claims. Oral argument
by counsel, assisted by Mr. and Mrs. Lodge, was heard on 7 April 2009,
before a court reporter.4 We have jurisdiction under 35 U.S.C. § 6(a). We
AFFIRM.
The subject matter on appeal relates to a pre-formed decorative ribbon
bow having an adjustable loop. According to the 610 Specification, the loop
is secured by a cinch retainer that permits the loop to be tightened about the
package while positioning the bow at a desired location. The claimed bow is
said to be easy to manufacture and easy to use on a variety of packages of
different types and sizes; and the cinch is said to allow the engagement of
additional decorative items with the bow.
Representative Claims 1 and 6 are reproduced from the Claims
Appendix to the Principal Brief on Appeal:
1. A universal adjustable pull bow for attachment to a package
which comprises,
a length of ribbon to extend around a package,
said ribbon length having at least one loop and two tails,
said ribbon length having
a cinch retainer at its center, to hold said loop and
restrain said tails from slipping,
decorative means engaged by said cinch retainer,

3 Office action mailed 2 April 2007 (“Final Rejection”; cited as “FR”).
4 The transcript will be made of record (“Tr”), but was not available when
this Decision and Opinion were mailed.
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and whereupon pulling of said tails said ribbon
length grips said package.
(Claims App., Br. 6; indentation added.)
6. A universal bow as defined in claim 1 in which, said cinch
retainer includes one or more loops of elastic material.
(Claims App., Br. 6; indentation added.)
The Examiner has maintained the following grounds of rejection:5
A. Claims 1-3 stand rejected under 35 U.S.C. § 102(b) in view of
Spathis6
B. Claims 1, 3, and 4 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Spathis and James.7
C. Claims 1-6 stand rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Spathis and Flatto.8
In their Brief, and at oral argument, Mr. and Mrs. Lodge stress that the
prior art patents relied on by the Examiner are deficient because, in their
view, the patents fail to disclose or render obvious an elastic cinch retainer;
and that Spathis is limited to a single bow, and does not have provisions to
hold decorative items. Moreover, Appellants argue that the patents do not
suggest combining their teachings with the teachings of other patents, and
that, as a result, the Examiner erred by relying on hindsight, based on the

5 Examiner’s Answer mailed 30 April 2008. (“Ans.”).
6 George Spathis and Anita C. Korrasik, Adjustable Pull Bow, U.S. Patent
4,528,217 (1985).
7 Bill Y. James, Interchangeable Center Unit for Decorative Package Bow,
U.S. Patent 2,736,115 (1956).
8 George Flatto, Bow, U.S. Patent 2,105,436 (1938).
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teachings of Appellants’ own disclosure. Appellants do not argue expressly
the separate patentability of the subject matter covered by dependent claims.
The Examiner responds that an elastic cinch retainer is not a limitation
recited in claims 1-5, and that only claim 6 recites that the cinch retainer is
elastic. The Examiner finds that the center [slip] knot 309 taught by Spathis
can be considered to be the cinch retainer. Alternatively, according to the
Examiner, James teaches a retainer (or fastener) 16, that would have been
obvious to use in combination with the bow taught by Spathis. Moreover,
the Examiner finds that Flatto teaches elastic cinch retainers 11a or 12,
which, according to the Examiner, a person having ordinary skill in the art
would have found obvious to use to secure the knot of a bow. The Examiner
finds further that the bow described by Flatto can be considered to be a
decorative portion of the retainer.
The critical issues in this Appeal are:
1) What is a “cinch retainer,” as that term is defined in
the 610 Specification and used in the claims?
2) Is the term “cinch retainer” sufficiently broad to:
a) encompass the slip knot taught by Spathis?
b) encompass the fastener 16 taught by James?
3) Would the art relied on by the Examiner have taught, suggested, or
motivated the person having ordinary skill in the art to secure the slip
knot taught by Spathis with the decorative retainers taught by Flatto?

9 For clarity, component numbers in the Figures are presented in bold font
throughout this Opinion.
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B. Findings of Fact
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The 610 Specification
1. According to the 610 Specification, there is a need for a preformed
bow that can be secured to packages of varying sizes and shapes. (Spec. 1.)
2. Existing bows are said to loosen and shift in position, and to be
limited to two loops and two tails. (Spec. 1.)
3. The bow of the invention is said to have two adjustable tails, can have
a number of loops, which are held securely, and which can be combined
with decorative items. (Spec. 1.)
4. In the words of the 610 Specification, the terminology used to
describe the invention “is intended to encompass not only the described
embodiments, but also technical equivalents, which operate and function in
substantially the same way to bring about the same result.” (Spec. 3.)
5. Figure 1 from the 610 Specification, which is a drawing of an
embodiment of a bow in combination with a package 11 about which the
ribbon 12 has been snugged and cinched, is reproduced on the following
page:
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{Specification Figure 1 is reproduced below}

{Figure 1 is said to show a bow}
6. According to the 610 Specification, “the bow 10 includes a length of
ribbon 12 of well known type . . . [and] has left hand tail 14 and a right hand
tail 15.” (Spec. 4.)
7. As shown in the Figures, “[a] cinch member 16 is provided through
which both the left hand and right hand tails 14 and 15 have been pulled and
which retainer 16 prevents slippage.” (Spec. 4.)
8. The 610 Specification teaches further that “[t]he retainer 16 may be
formed of one or more loops of ribbon of well-known type, and available
from many manufacturers.” (Spec. 4.)
9. Figure 1 also shows a plurality of decorative loops 20 having ends 21
and 21, engaged by cinch retainer 16. (Spec. 4.)
10. In the words of the 610 Specification, “[i]f desired a plurality of loops
of elastic string material (not shown) may be provided under retainer 16 for
greater retention of the item 24 [not shown], and the ribbon tails 14 and 15.”
(Spec. 4.)
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Spathis
11. Spathis describes an adjustable pull bow 20 that is illustrated in
Figure 10, which is reproduced below:

{Spathis Figure 10 is said to show an adjustable bow}
12. According to Spathis, the bow 20 comprises an adjustable outer
loop 22 and a bow portion 24, which in turn comprises right loop 26 and left
loop 28, a center knot 24, a stationary tail 32, and an adjustable tail 34.
(Spathis, col. 2, ll. 11-17.)
13. The bow 24 with outer loop 22 is placed in a desired configuration
about a package 25 [not shown]. (Spathis, col. 2, ll. 26-28.)
14. Spathis instructs, “[b]y pulling the left ribbon tail 34, the adjustable
loop 22 can be tightened around the package.” (Spathis, col. 2, ll. 28-30.)
15. Spathis instructs further that “[o]ther modifications and variations will
be apparent to those skilled in the art.” (Spathis, col. 3, ll. 58-59.)
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James
16. As shown in James, Figures 2 and 3, which are reproduced below,

{James Figures 2 and 3 are said to show a decorative bow}
James describes a bow 10 having an opening (not shown) for receiving a
paper fastener 16 that may be used to hold a small card holder 34, which
may be made from a paper clip, as shown in Figure 4 (not reproduced here).
(James col. 1, l. 68 through col. 2, l. 5.)
Flatto
17. Flatto describes bows having an elastic band through which a lock of
hair may be slipped, so the bow can be worn as a hair ornament. (Flatto, 1,
left col., ll. 1-8.)
18. Such a bow is shown in Figure 2, which is reproduced below,

{Flatto Figure 2 is said to show a decorative bow}
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19. Flatto teaches that a ribbon 10 is folded to produce petals 10a, which
are held in position by a central band 11, which also holds in position a
second elastic band 12 that can be secured about, e.g., a lock of hair.
(Flatto, 1, right col., ll. 33-39.)
20. In another embodiment, Flatto teaches that band 11 may be replaced
by an elastic strap 11a, shown in Figure 9 (not reproduced here). (Flatto, 2,
left col., ll. 11-13.)
C. Discussion
The Appellants bear the procedural burden of showing harmful error
in the Examiner’s rejections. See, e.g., In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness”) (citation and internal quote omitted).
During examination of an application for patent, “the PTO applies to
the verbiage of the proposed claims the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997). Moreover, as explained eloquently many years ago,
it is improper to read limitations from the specification into the claims:
“[w]e should have no warrant for limiting the claims by the elements of the
disclosure which they do not include, even if the elements were new. A
patentee who claims broadly must prove broadly; he may not claim broadly,
and recede as he later finds that the art unknown to him has limited his
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invention. That is the chance he must take in making broad claims.”
Foxboro Co. v. Taylor Instrument Co., 157 F.2d 226, 232 (2d Cir. 1946) (L.
Hand, J.) The Supreme Court explained the issue many years earlier in the
following words: “if we once begin to include elements not mentioned in the
claim, in order to limit such claim . . . , we should never know where to
stop.” McCarty v. Lehigh Valley R. Co., 160 U.S. 110, 116 (1895).
As noted supra, Appellants have not argued expressly the separate
patentability of any dependent claims. For each rejection, the dependent
claims therefore stand or fall with independent claim 1. 10
Appellants’ principal argument, that the references do not teach an
elastic cinch retainer, has no force. The only suggestion we have found in
the 610 Specification that the cinch retainer may be elastic is the teaching
that, if desired, loops of elastic string material may be provided under the
cinch retainer “for greater retention of the item 24 and the ribbon tails 14
and 15.” (Spec. 4; FF 10.) Clearly, the 610 Specification itself teaches that
the cinch retainer need not be elastic, in general. We shall not read the
limitation of elasticity into the cinch retainer recited in claim 1.
Moreover, when we turn to the 610 Specification for further guidance
as to the meaning of the term “cinch retainer,” we find the functional
definition that a cinch retainer, as suggested by the name, “prevents
slippage.” (Spec. 4; FF 7.) We are informed further that the cinch retainer
“may be formed of one or more loops of ribbon.” (Id.; FF 8.) Although

10 See 37 C.F.R. § 41.37(c)(1)(vii), which reads in most relevant part, “[a]ny
arguments or authorities not included in the brief or a reply brief filed
pursuant to § 41.41 [providing for a Reply Brief] will be refused
consideration by the Board, unless good cause is shown.”).
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particular embodiments are described, we do not find a more precise
definition of a “cinch retainer.” Moreover, we observe that claim 2, which
depends from claim 1, recites that the “cinch retainer is of a ribbon
material.” The cinch retainer recited in claim 1 must be broad enough to
encompass all cinch retainers recited in claim 2. With this guidance, we
have no difficulty finding that the slip knot 30 described by Spathis meets all
the limitations given for a cinch retainer, as that term is used in claim 1.
As the Examiner found, the bow 20 described by Spathis has loops 26
and 28, which form a “decorative means” that are engaged by the slip
knot 30, i.e., the cinch retainer. Appellants do not dispute that pulling on
ribbon ends 32 and 34 causes the loop 22 to grip package 25. Accordingly,
we find that Appellants have not shown reversible error in the Examiner’s
determination that the subject matter of claim 1 is anticipated by Spathis. As
Appellants have not presented separate arguments for the patentability of
claims 2 and 3, they fall with claim 1.
As for the rejection of claims 1 through 6 in view of the combined
teachings of Spathis and Flatto, we find that Appellants’ argument that there
would have been no motivation to combine the teachings of these references
is not supported by credible evidence of record. Whether there would have
been such motivation is a question of fact. In re Gartside, 203 F.3d 1305,
1316 (Fed. Cir. 2000) (“The presence or absence of a motivation to combine
references in an obviousness determination is a pure question of fact.”)
(citation omitted.) In making this assessment, we must attribute ordinary
creativity to the hypothetical person having ordinary skill in the art. KSR
Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1742 (2007) (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”).
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The central band 11 or the elastic strap 11a described by Flatto perform a
similar function to the slip knot, and we have no difficulty concluding that it
would have been obvious for a person of ordinary skill in the art would to
secure a bow with another securing element in addition to the Spathis slip
knot 30. Similarly, given that Flatto describes bows having loops as
decorative items, we have no difficulty concluding that it would have been
obvious to a person of ordinary skill in the art to use the elastic cinch means
taught by Flatto to bind in a decorative item including a ribbon loop.
Appellants have not clearly made arguments for the separate
patentability of any dependent claims. However, to the extent that
Appellants argue that claim 4 requires a decorative means other than a loop
of ribbon, we are satisfied that the suggestion of one binding in one kind of
decorative means—a bow with loops—would have suggested to the ordinary
gift wrapper that other decorative means be bound by the cinch to the knot.
As for claim 6, which requires that “said cinch retainer includes one or more
loops of elastic material,” we reject Appellants’ implicit interpretation that
this language requires the cinch retainer to be elastic. The plain language
only requires the cinch retainer to “include” one or more loops of elastic
material. The manner of inclusion is not limited by other language in the
claim or by a definition in the 610 Specification. Therefore, giving the term
‘include” the broadest ordinary meaning, we hold that claim 6 encompasses
at least cinch retainers that are provided with one or more loops of elastic
material under the retainer, as described in the 610 Specification at page 4.
This definition is broad enough to read on the bow described by Flatto in
Figure 2, regardless of how the elastic loop 12 is employed.
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We conclude that Appellants have not shown harmful error in the
Examiner’s combination of the teachings of Spathis and Flatto to reject
claims 1-6.
However, the rejection of claims 1, 3, and 4 in view of the combined
teachings of Spathis and James fails because, as Appellants point out, the
fastening element 16 passes through the ribbon 10. Such a fastening
element, used with the bow taught by Spathis, would prevent the adjustment
of loop 22 by pulling on ends 32 and 34, as taught by Spathis.
Because each claim stands rejected on at least one ground maintained
by the Examiner, the decision of the Examiner is AFFIRMED.
D. Order
We AFFIRM the rejection of claims 1-3 stand rejected under
35 U.S.C. § 102(b) in view of Spathis..
We REVERSE the rejection of claims 1, 3, and 4 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of Spathis and James.
We AFFIRM the rejection of claims 1-6 under 35 U.S.C. § 103(a) in
view of the combined teachings of Spathis and Flatto.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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PL Initial:
sld

ZACHARY T. WOBENSMITH, III
7746 101ST COURT
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