Ex Parte Mulrine et alDownload PDFPatent Trial and Appeal BoardOct 18, 201312079071 (P.T.A.B. Oct. 18, 2013) Copy Citation 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. 12/079,071 03/24/2008 Karla Mulrine 028417.079118 8630 7590 10/18/2013 Royal W. Craig Ober, Kaler, Grimes & Shriver 120 East Baltimore Street Baltimore, MD 21202-1643 EXAMINER LEGESSE, NINI F ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 10/18/2013 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 KARLA MULRINE and R. MICHAEL MULRINE, JR. ____________________ Appeal 2011-007950 Application 12/079,071 Technology Center 3700 ____________________ Before BIBHU R. MOHANTY, PHILIP J. HOFFMANN, and THOMAS F. SMEGAL, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-007950 Application 12/079,071 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the rejection of claims 1-7 and 9-18.1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The rejected claims are directed to a portable fabric toy hanger or “valance” that the Specification describes as attachable by magnets to the sunshade of infant carriers and strollers, to provide an easily adjustable hanger for attaching infant toys (Spec. para. [005]). Claims 1 and 11, reproduced below and representative of the other claims on appeal, are the only independent claims. 1. A portable infant toy hanging valance, comprising: a flexible rectangular fabric sheet including a pair of long edges and a pair of short edges, said long edges comprising a double-layer of fabric sewn together to form a plurality of pockets; a plurality of a magnets periodically spaced along and fixedly attached lengthwise at corresponding positions along both long edges of the sheet, each magnet being fully enclosed in and contained within a corresponding one of said plurality of sewn pockets, for securing said sheet by wrapping said sheet about said short edges around an elongate strut and overlapping and both said long edges of the sheet, with spaced magnets along each long edge fixedly attached to 1 Our decision will refer to Appellants’ Specification (“Spec.,” filed March 24, 2008), Appeal Brief (“App. Br.,” filed September 2, 2010), and Reply Brief (“Reply Br.,” filed January 31, 2011), as well as the Examiner’s Answer (“Ans.,” mailed December 1, 2010). Appeal 2011-007950 Application 12/079,071 3 corresponding magnets in the other long edge, thereby securing said long edges together by magnetic attraction; and a plurality of ribbon loops periodically spaced along and fixedly attached lengthwise along the sheet for providing points of attachment for infant toys. 11. A portable infant toy hanging valance, comprising: a flexible rectangular sheet; and a plurality of a magnets periodically spaced along and fixedly attached to each of two opposing edges of said sheet; such that said opposing edges of said sheet are affixed together by magnetic attraction when the sheet is folded about the midline between said opposing edges thereby securing said valance to an object about which it is folded; and a ribbon loop fixedly connected to said sheet providing a point of attachment for said infant toy. THE REJECTIONS The Examiner rejects the claims as follows: Claims 1-7, 9 and 10 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite; claims 1-7, 9, and 10 are rejected under 35 U.S.C. § 103(a) as unpatentable over Fasano (US 5,715,571, iss. Feb. 10, 1998) in view of Sitbon (US 2005/0102802 A1, pub. May 19, 2005); and claims 11-18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Fasano in view of Pelt (US 6,546,599 B2, iss. Apr. 15, 2003) . Appeal 2011-007950 Application 12/079,071 4 ANALYSIS 35 U.S.C. § 112 rejection Claims 1-7, 9, and 10 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter that Appellants regard as the invention. Specifically, the Examiner states “[i]n claim 1 line 9, the expression ‘overlapping and both said long edges of the sheet’ is not clear” (Ans. 3). We note that if the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite. Energizer Holdings Inc. v. Int’l Trade Comm’n, 435 F.3d 1366 (Fed. Cir. 2006) (holding that “anode gel” provided by implication the antecedent basis for “zinc anode”); Ex parte Porter, 25 USPQ2d 1144, 1145 (BPAI 1992) (“controlled stream of fluid” provided reasonable antecedent basis for “the controlled fluid”). Only claims “not amenable to construction or insolubly ambiguous are indefinite.” Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1371 (Fed. Cir. 2008) (citations and quotation marks omitted). In this case, we agree with Appellants that the word “and” is easily recognized as extraneous, and thus the scope of claim 1 is reasonably ascertainable to those skilled in the art. Therefore, we reverse the rejection of claim 1 under 35 U.S.C. § 112, second paragraph, as well as the rejection of claims 2-7, 9, and 10, that depend from the independent claim. 35 U.S.C. § 103(a) rejections With respect to independent claim 1, Appellants argue that contrary to the statement in the Examiner’s Answer, Fasano fails to teach all of Appellant’s claimed invention, except for magnets. Fasano teaches a Velcro-secured cuff for wrapping around a handle. Appeal 2011-007950 Application 12/079,071 5 Appellant’s invention is a “valance” which is defined in the specification as “an ornamental drapery hung across a top edge of something such as a table, canopy or window.” (App. Br. 8). We disagree with Appellants’ argument that Fasano does not teach a valance. We note that Appellants do not submit arguments explaining why the handle cover taught by Fasano is not an ornamental drapery hung across a top edge of something, consistent with Appellants’ Specification. Instead, Appellants argue that Fasano does not teach a valance that is the same as Appellants’ valance, and that Fasano does not teach a valance that can be attached across a top edge of a sunshade of an infant carrier. These arguments are not relevant, however, as claim 1 does not include these limitations. Thus, we are not persuaded by this argument. Appellants also argue that Fasano’s wrap around fabric strap secured by Velcro ™ cannot be wrapped “around” a sunshade and cannot be fixedly attached, and therefore Fasano fails to teach or suggest the limitation of claim 1 of “securing said sheet by wrapping said sheet about said short edges around an elongate strut and overlapping and both said long edges of the sheet, with spaced magnets along each long edge fixedly attached to corresponding magnets in the other long edge, thereby securing said long edges together by magnetic attraction.” (App. Br. 8., italics removed.) We note, however, that claim 1 does not require that the valance be wrapped around a sunshade. Further, Appellants have not explained why Fasano’s cover, which is wrapped around an elongate shopping cart handle, is not wrapped around an elongate strut as required by the claim. Thus, we are not persuaded by this argument. Appeal 2011-007950 Application 12/079,071 6 Appellants argue that the Examiner’s proposed combination of Fasano and Sitbon would be improper, because “the Examiner’s proposed substitution of the magnets of Sitbon for the Velcro of Fasano would render the latter inoperative for Appellant’s intended purpose, and would alter its principal of operation” (App. Br. 9). We note, however, that it is not relevant whether the proposed combination satisfies Appellants’ intended purpose. Thus, we are not persuaded by this argument. Appellants further argue the proposed modification would render the prior art unsatisfactory for its intended purpose, because “[s]ubstituting the magnets of . . . [Sitbon] in place of the Velcro attachment means of Fasano as suggested by the Examiner eliminates the ability of Fasano’s cover to wrap around and be tightly secured to cart handles of varying size” (App. Br. 10). We do not agree with Appellants. First, we note Appellants have not sufficiently established that an intended purpose of Fasano is to provide a tight fit around a shopping cart handle. Further, Appellants have not established to what extent Fasano’s handle cover may be oversized but still be considered as providing a tight fit. Still further, including multiple magnets may permit Fasano’s handle cover to be configured into tubes having different diameters. Thus, for these reasons, we are not persuaded by this argument. Appellants state there is no motivation to combine Fasano and Sitbon, arguing that [o]ne skilled in the art seeking to affix a child’s toy to a sunshade (which cannot be fully encircled) would not be taught or motivated to combine Fasano with the magnets of either secondary reference in as much as doing so requires a change in the basic principle under which the Fasano was Appeal 2011-007950 Application 12/079,071 7 designed to operate as well as substantial redesign of the elements shown. Where the Examiner’s proposed combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious. (App. Br. 10-11.) However, even assuming we agree with Appellants’ arguments regarding the suitability of using Fasano as a toy affixed to a sunshade, claim 1 does not recite this limitation. Thus, we are not persuaded by this argument. Finally, Appellants argue [t]he Examiner also improperly relies on common knowledge stating that “One of ordinary skill in the art . . [.] would have expected Appellant’s invention to perform equally well with magnets that are attached by adhesive . . . or magnets attached by stitching or pocket sewing because all these attachment ways disclosed by Appellant and by the . . . Sitbon . . . reference above perform the same function of attaching an element on a structure.” (App. Br. 11, italics removed.) We agree with the Examiner, however, that it is an obvious matter of design choice to include the magnets taught by Sitbon in the cover of Fasano such that “each magnet [is] fully enclosed in and contained within a corresponding one of said plurality of sewn pockets” as required by claim 1. We note that Appellants’ reasons for placing magnets in sewn pockets instead of simply adhering the magnets to the fabric either provide the same advantages as adhered magnets (e.g., permitting the valance to be attached either encircling a handle or attached to a magnetic handle, allowing sets of magnets to remain attached to one Appeal 2011-007950 Application 12/079,071 8 another when other sets of magnets are unattached, etc.) or are well-known reasons for isolating the magnets (e.g., to prevent children from being exposed to the magnets and adhesives, etc.). Thus, we are not persuaded by this argument. Based on the foregoing, we sustain the rejection of claim 1, as well as the rejection of claims 2, 3, 5-7, 9, and 10, which were not separately argued by Appellants. With respect to claim 4, Appellants state [c]laim 4 is further distinguished because it requires the ribbon loops to be affixed along a centerline of said sheet. This provides an advantage in that it ballasts the magnets away from the child. The Examiner contends that “loops 24 and 34 are considered as being affixed along a centerline as shown in figures 1 and 3 of the Fasano reference.” Viewing Fasano FIG. 4, it is abundantly clear that loops 24 and 34 are not affixed along a centerline. (App. Br. 13.) We note that Appellants do not submit detailed arguments addressing why the Examiner is incorrect in stating that Figures 1 and 3 of Fasano do not show loops 24 and 34 affixed along a centerline, but instead simply disagree with the Examiner and reference another figure. Thus, we are not persuaded of error by Appellants’ arguments. Further, regardless of whether Fasano shows loops 24 and 34 affixed along a centerline, we find that placing loops 24 and 34 along a centerline would be obvious. Therefore, we sustain the rejection of claim 4. With respect to independent claim 11, Appellants appear to incorporate arguments made with respect to claim 1 (App. Br. 13-14). Appeal 2011-007950 Application 12/079,071 9 Inasmuch as we sustained the rejection of independent claim 1, we are not persuaded by these arguments. Appellants additionally argue, with respect to claim 11, that the proposed configuration [combining Fasano and Pelt] may work with the intended use of Fasano’s invention, i.e., to cover a straight shopping handle cover, but would be insufficient to work with the intended use of Appellant’s invention, i.e., to attach to a curved bassinet cover or child carrier. Therefore the cited patents cannot be combined. (App. Br. 14.) We note, however, that claim 11 does not include the limitation of “a curved bassinet cover or child carrier,” and thus Appellants’ arguments are therefore not relevant. For these reasons, we are not persuaded by this argument. Appellants also argue with respect to claim 11 that “the cited Peltz [sic] reference is non-analogous art” (App. Br. 14). We disagree, and agree with the Examiner that each of Fasano and Pelt is directed to securing one device to another device (Ans. 10), and thus the references are both reasonably pertinent to the problem with which the inventor was concerned. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). Therefore, we are not persuaded by this argument. Appellants argue with respect to claim 11 most importantly, the combination still fails to teach Appellant’s claims as amended. Appellant has clearly disclosed that using magnets provides an advantage, is used for a particular purpose, or solves a stated problem. Magnets allow attachment to a fabric sunshade which neither reference contemplates. . . . One skilled in the art seeking a solution that serves the purpose of Appellant’s invention would not combine the Appeal 2011-007950 Application 12/079,071 10 magnetic attachment mechanism of Pelt with the shopping cart handle cover of Fasano. (App. Br. 15.) We note, however, that it is not relevant whether the Examiner’s combination of Fasano and Pelt would “allow attachment to a fabric sunshade” as argued by Appellants, because this is not required by claim 11. Further, it is not relevant whether “[o]ne skilled in the art seeking a solution that serves the purpose of Appellant’s invention would not combine the magnetic attachment mechanism of Pelt with the shopping cart handle cover of Fasano,” as the proposed combination need not seek the same solution or serve the same purpose of Appellants’ invention. Therefore, we are not persuaded by this argument. Finally, Appellants appear to argue with respect to claim 11 that “neither reference contemplates a series of magnets sewn into pockets in corresponding positions along both long edges” (App. Br. 15). We note, however, that claim 11 does not require magnets sewn in pockets. Therefore, we are not persuaded by this argument. Based on the foregoing, we sustain the rejection of claim 11, as well as claims 12-18, which were not separately argued by Appellants. DECISION The rejection of claims 1-7, 9, and 10 under 35 U.S.C. § 112, second paragraph, is REVERSED. The rejection of claims 1-7, 9, and 10 under 35 U.S.C. § 103(a) as unpatentable over Fasano in view of Sitbon is AFFIRMED. The rejection of claims 11-18 under 35 U.S.C. § 103(a) as unpatentable over Fasano in view of Pelt is AFFIRMED. Appeal 2011-007950 Application 12/079,071 11 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)(1)(iv). AFFIRMED mls Copy with citationCopy as parenthetical citation