Jordan Harden

Patent Trials and Appeals Board

Jul 31, 2019

14662058 - (D) (P.T.A.B. Jul. 31, 2019)

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.
14/662,058 03/18/2015 Jordan Harden 40765-0002001 8083
20985 7590 07/31/2019
FISH & RICHARDSON P.C. (SD)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
LYNCH, MEGAN E
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
07/31/2019 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JORDAN HARDEN
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Appeal 2017-010046
Application 14/662,058
Technology Center 3700
____________

Before JEREMY M. PLENZLER, GEORGE R. HOSKINS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jordan Harden (“Appellant”)1 appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1, 3–9, 11, and 13–16 in this
application. Claims 2, 10, and 12 have been canceled. See Appeal Br. 1.
The Board has jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 Jordan Harden is identified as the real party in interest. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The independent claims are claims 1, 13, and 14. Claim 1
illustratively recites:
1. A shoelace comprising:
a cord having two ends;
two aglets[2], one at each end of the cord; and
three or more magnets integrated within the shoelace,
wherein the three or more magnets include a first magnet
disposed at a first location within or adjacent to one of the two
aglets, a second magnet disposed at a second location within or
adjacent to the other of the two aglets, and a third magnet
disposed at a centerpoint of the cord.
Appeal Br. 10 (Claims App.).
REJECTIONS ON APPEAL
Claims 1, 3, 5, 7–9, 11, 14, and 15 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Jianping (CN 103519510 A, pub. Jan. 22, 2014)
and Schwartzbart (US 7,402,045 B2, iss. July 22, 2008).
Claims 4 and 6 stand rejected under 35 U.S.C. § 103 as unpatentable
over Jianping, Schwartzbart, and Wardwell (GB 20,627, iss. Sept. 12, 1912).
Claim 13 stands rejected under 35 U.S.C. § 103 as unpatentable over
Jianping, Schwartzbart, and Flores (US 2015/0257488 A1, pub. Sept. 17,
2015).
Claim 16 stands rejected under 35 U.S.C. § 103 as unpatentable over
Jianping, Schwartzbart, and Alexander (US 4,842,522, iss. June 27, 1989).

2 A shoelace is “typically . . . finished off at both ends with stiff sections,
known as aglets.” Spec. ¶ 2.
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OPINION
Every claim rejection on appeal cites Jianping’s Figure 1 as disclosing
shoelace cord 1 comprising first and second magnets 3 respectively disposed
at each aglet 2 of the shoelace, and cites Schwartzbart’s Figure 4 as
disclosing “three or more magnets (16B) integrated within a tubular
sheath (12B).” Final Act. 3–4 (independent claim 1), 6–7 (independent
claim 14), 8–9 (independent claim 13). The Examiner determines it would
have been obvious “to have provided the shoelace of Jianping with three or
more magnets, as taught by Schwartzbart, in order to provide a shoelace
having additional magnetic points for securing the shoelace when in use.”
Id.
Appellant contends the rejection improperly relies on Schwartzbart for
obviousness, because Schwartzbart is non-analogous art. Appeal Br. 5–7,
7–9. Appellant asserts the present invention is directed to a shoelace
comprising magnets, whereas Schwartzbart is directed to electrical
conductors comprising magnets. Id. at 5–6 (citing Spec. ¶ 1, and
Schwartzbart, Title, 1:6–7, 4:36–39). According to Appellant, no reasonable
person would consider shoelaces to be from the same field of endeavor as
electrical connectors. Id. at 6; Reply Br. 1–3. Appellant further argues the
problems addressed when connecting two electrical conductors together to
create an electrical pathway are not reasonably pertinent to the problems
addressed when using a shoelace to retain a shoe on a wearer’s foot during
rigorous activity. Appeal Br. 6–7, 8–9 (citing Schwartzbart 1:7–11, and
Spec. ¶ 18); Reply Br. 3–4. In Appellant’s view, the fact that the presently
claimed invention and Schwartzbart both disclose “a cord with magnets in
it” is irrelevant to the test for determining whether Schwartzbart is
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analogous. Appeal Br. 7–8 (citing In re Bigio, 381 F.3d 1320, 1325
(Fed. Cir. 2004)).
The Examiner answers that Schwartzbart is analogous art because
“Schwartzbart teaches a cord that encapsulates magnets and a shoelace is
merely a cord placed in a shoe for use.” Ans. 2. In the Examiner’s view,
Schwartzbart “relates to the same field of [A]ppellant’s endeavor, i.e. a cord
with multiple magnetic attachment points.” Id. Further according to the
Examiner, “the main directive of Schwartzbart is to connect portions of a
cord together using magnets which are arranged within the cord,” so
Schwartzbart “is reasonably pertinent to the particular problem with which
the [A]ppellant was concerned, i.e. a cord with multiple magnetic attachment
points.” Id. at 2–3.
“Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor [as the
inventor’s], regardless of the problem addressed, and (2) if the reference is
not within the field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved.” In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992). A reference
is reasonably pertinent if it is one that, because of the matter with which it
deals, would have logically commended itself to an inventor’s attention in
considering his or her invention as a whole. In re ICON Health & Fitness,
Inc., 496 F.3d 1374, 1379–80 (Fed. Cir. 2007).
We agree with Appellant’s argument that Schwartzbart is not
analogous art under either criterion of the applicable test. Concerning the
first criterion, Appellant’s field of endeavor is shoelaces, or perhaps more
broadly stated footwear. See Spec. ¶ 1 (“This disclosure relates to
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shoelaces.”), ¶ 2 (“Shoelaces . . . are a system commonly used to secure
shoes, boots and other footwear.”), ¶ 3 (“a shoelace as describe[d] herein”).
Schwartzbart’s field of endeavor, by contrast, is “a system for electrically
connecting components” such as two conductive elements 12, 14.
Schwartzbart, 1:6–7, 2:6–24 (describing Fig. 1). These are not the same
field of endeavor.
Concerning the second criterion, Appellant’s invention is involved
with the problem of how to design a shoelace to secure footwear on a
wearer’s foot. Spec. ¶¶ 2, 18. This involves passing the shoelace through a
series of holes or similar structures in the footwear, and then “[t]ightening
the lacing and tying off the ends” to “secure[] the foot within the shoe.” Id.
¶ 2.
By contrast, Schwartzbart was involved with the problem of providing
“an electrical interconnection configured to magnetically couple two or
more conductive elements together to establish an electrical conductive path
between the conductive elements.” Schwartzbart, 1:6–11 (emphases added),
1:38–42. Schwartzbart’s magnetic coupling of conductive elements 12, 14
advantageously provides: (a) “a ‘quick disconnect’ feature that is useful to
quickly and easily interrupt the flow of current from one conductive element
to the other” (id. at 2:53–56), and (b) strain relief when a tensile force is
applied to one or both of conductive elements 12, 14, because the magnetic
connection permits elements 12, 14 to slide with respect to each other (id. at
1:21–37, 3:11–45 (“[T]he amount that first and second conductive
elements 12 and 14 may slide relative to one another is related to the lengths,
placement, and number of magnetic elements associated with each
conductive element.”), Figs. 2A–2B). Neither of those problems — the need
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to quickly and easily interrupt a flow of electrical current, and the need to
provide strain relief via a sliding connection — is one that would have
logically commended itself to an inventor’s attention in considering a
shoelace invention as a whole.
The Examiner notes, correctly, that Appellant’s disclosure and
Schwartzbart’s disclosure both involve “a cord that encapsulates magnets,”
to provide “attachment points.” Ans. 2–3. However, we agree with
Appellant’s argument that this similarity is insufficient, by itself, to establish
that Schwartzbart is analogous art. The facts of In re Klein, 647 F.3d 1343
(Fed. Cir. 2011), are illustrative. In that case, the application at issue
concerned “a mixing device for use in preparation of sugar-water nectar for
certain bird and butterfly feeders.” Id. at 1345. The device had a moveable
divider, which could be held within the mixing device at multiple selectable
positions defined by a series of rails, to separate the device into two
compartments corresponding to different mixing ratios of sugar and water
filling the two compartments to the same level. Id. at 1345–46. Three cited
prior art references (Roberts, O’Connor, and Kirkman) taught devices
having a moveable divider held in place by slots, grooves, or threads, to
divide a container into differently-sized compartments. Id. at 1347, 1348–
50. Despite those similarities between the inventor’s disclosure and the
prior art disclosure, the Federal Circuit found that the prior art was not
analogous, because the purpose of the prior art was “to separate solid
objects,” whereas the inventor’s purpose was to mix different ratios of sugar
and water. Id. at 1350–51 (“If [a reference] is directed to a different
purpose, the inventor would accordingly have had less motivation or
occasion to consider it.”) (quoting Clay, 966 F.2d at 659)). Similarly here,
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there are some similarities between Schwartzbart and the inventor’s
disclosed device, but those devices serve very different purposes.
“A reference qualifies as prior art for an obviousness determination
under § 103 only when it is analogous to the claimed invention.” Klein,
647 F.3d at 1348; see also In re Ethicon, Inc., 844 F.3d at 1344, 1349
(Fed. Cir. 2017) (“Generally, a skilled artisan would only have been
motivated to combine analogous art.”). Because Schwartzbart is
non-analogous art, we do not sustain the rejections on appeal.
DECISION
The Examiner’s decision to reject claims 1, 3–9, 11, and 13–16 is
reversed.
REVERSED