Ex Parte Barwacz

Board of Patent Appeals and Interferences

Apr 12, 2010

10282280 (B.P.A.I. Apr. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte ROBERT FRANCISZEK BARWACZ
_____________

Appeal 2009-001209
Application 10/282,280
Technology Center 2800
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Decided: April 12, 2010
_______________

Before JOHN A. JEFFERY, KENNETH W. HAIRSTON, and
CARLA M. KRIVAK, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

Appeal 2009-001209
Application 10/282,280
2
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1 to 20. We have jurisdiction under 35 U.S.C. § 6(b).
We will sustain the obviousness rejections.
Appellant has formed a knot in a flexible elongated cord that connects
first and second sound attenuating elements. The knot is unformed by
moving the first and the second attenuating elements in a direction away
from each other (Figs. 1, 5, and 6; Spec. 5, 6, and 8 to 10; Abstract).
Claim 1 is illustrative of the claimed invention, and it reads as
follows:
1. A hearing protective device, comprising:
a first sound attenuating element;
a second sound attenuating element;
a flexible elongated member connecting the first sound attenuating
element and the second sound attenuating element; and
a knot formed in the flexible elongated member as to allow for
unforming of the knot by moving the first sound attenuating element in a
direction away from the second sound attenuating element.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Johnston US 2,459,530 Jan. 18, 1949
Powers US 4,253,452 Mar. 3, 1981
Knauer WO 02/43633 A1 Jun. 6, 2002
Appellant’s Admitted Prior Art Figure 4 (hereinafter APA Figure 4).
Appeal 2009-001209
Application 10/282,280
3
The Examiner rejected claims 1 to 6, 10 to 16, and 18 to 20 under 35
U.S.C. § 103(a) based upon the teachings of APA Figure 4 in view of
Johnston.
The Examiner rejected claims 7 and 8 under 35 U.S.C. § 103(a) based
upon the teachings of APA Figure 4, Johnston, and Knauer.
The Examiner rejected claims 9 and 17 under 35 U.S.C. § 103(a)
based upon the teachings of APA Figure 4, Johnston, and Powers.
With respect to claims 1 to 6, 10 to 16, and 18 to 20, the Examiner
contends (Final Rej. 3) that it would have been obvious to one of ordinary
skill in the art “to form a slip-knot in a cord (rope) as taught by L.E.
Johnston within the teaching of applicant’s admitted prior art for the
advantages of providing a tied cord, having practical appearance of being
secured and which can be easily slipped loose and untied quickly, without
reducing it[s] applicability and nature of tying.” Appellant argues that
“APA and Johnston are non-analogous art” because Johnston relates to a
device for tying knots in a closure cord of a container (Br. 4), and “there is
no objective reason to combine the teachings of APA and Johnston” (Br. 7).

ISSUES
Are the knot-tying teachings of Johnston non-analogous art to APA
Figure 4?
Did the Examiner err by combining the knot tying teachings of
Johnston with the hearing protective device in APA Figure 4?

Appeal 2009-001209
Application 10/282,280
4
FINDINGS OF FACT (FF)
1. According to Appellant’s admitted prior art, it is known to gather or
bundle a cord 12 that connects earplugs 10 with a plastic clip 16 (Figure 2;
Spec. 3), a paper wrap 22 (Figure 3; Spec. 4), or a circular shaped cord
bundle 14 (Figure 4; Spec. 4, 5).
2. Johnston describes a device that is used to form a slip knot in a
closure cord 19 of a bag 18’ (Figs. 2-5; col. 2, ll. 33-56; col. 3, ll. 30 -57;
col. 4, ll. 1-4).
3. Johnston indicates that a slip knot is tight and secure, but temporary
because it can be easily untied by pulling on the ends of the cord (col. 2, ll.
33-56; col. 3, ll. 55-57; col. 4, ll. 1-4).

PRINCIPLES OF LAW
“[T]he combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). The Court
explained:
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at 417.
Appeal 2009-001209
Application 10/282,280
5
ANALYSIS
For all of the reasons expressed by the Examiner, and for the
additional reasons set forth infra, we agree with the Examiner that Johnston
may not be analogous art to APA Figure 4 (Ans. 4, 7), but
[T]he Supreme Court has held that when all the
claimed elements were known in the prior art and
one skilled in the art could have combined the
elements as claimed by known methods with no
change in their respective functions, and the
combination would have yielded predictable
results to one of ordinary skill in the art at the time
of the invention, is sufficient to establish a prim[a]
facie case of obviousness. See KSR International
Co. v. Teleflex Inc., 550 U.S., 82 USPQ2d 1385
(2007). In this particular case, appellant’s
admitted prior art of figure 4, clearly depicts all the
claim elements, and although appellant states that
element (14) is not a knot, the tying or untying of a
knot is not new and is well known in the prior art.
(Ans. 8).
In summary, the obviousness rejection of claims 1 to 6, 10 to 16, and
18 to 20 is sustained because we agree with the Examiner (Ans. 9) that the
claims are obvious in view of the applied prior art teachings because “a
particular known technique (tying or untying a knot) was recognized as part
of the ordinary capabilities of one skilled in the art as disclosed by
Johnston.”
The obviousness rejections of claims 7 to 9 and 17 are sustained
because Appellant has not presented any patentability arguments for these
claims apart from the arguments presented for claims 1 to 6, 10 to 16, and 18
to 20.

Appeal 2009-001209
Application 10/282,280
6
CONCLUSION OF LAW
Appellant and the Examiner agree that APA Figure 4 and Johnston are
non-analogous art; however, as indicated supra, the Court in KSR indicated
that it is permissible to use a teaching from one field of endeavor (i.e., a slip-
knot applied to two ends of a cord in Johnston) to make a predictable
improvement to a similar device in another field of endeavor (i.e., the two
ends of a cord in APA Figure 4). Thus, the Examiner did not err by
combining the knot tying teachings of the two ends of the cord in Johnston
to the two ends of the cord in APA Figure 4 because it yielded a predictable
result. See KSR, 550 U.S. at 416.

ORDER
The obviousness rejections of claims 1 to 20 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv).

AFFIRMED

Tkl

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