Ex Parte Cooper

Patent Trial and Appeal Board

Apr 25, 2017

13853100 (P.T.A.B. Apr. 25, 2017)

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.
13/853,100 03/29/2013 Jack Cooper JGF 13-7 6782
111716 7590 04/27/2017
Fisihman Rr Asisinoiates; T T .P
EXAMINER
3975 University Drive, Suite 400
Fairfax, VA 22030
FRANKLIN, JODI COHEN
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
04/27/2017 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):
request @ fishmanllc .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACK COOPER
Appeal 2015-004955
Application 13/853,100
Technology Center 1700
Before JEFFREY T. SMITH, N. WHITNEY WILSON, and
JEFFREY R. SNAY, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s May
20, 2014 decision finally rejecting claim 12 (“Final Act.”). We have
jurisdiction over the appeal under 35 U.S.C. § 6(b). An oral hearing was held
on April 4, 2017.
We affirm.
1 Appellant identifies the real party in interest as Jack Cooper (Br. 1).
Appeal 2015-004955
Application 13/853,100
CLAIMED SUBJECT MATTER
Appellant’s invention is directed to a combination of a cigar and a cigar
box (Abstract). The cigar includes an elongated cigar puller contained within
the tobacco fill, where the cigar puller has a hook attached to its end and
extending outside the cigar (Spec. 7, 16). The cigar box includes a base which
can hold cigars horizontally and a top which can be opened from the base (Spec.
17—18). A cigar is hung by the hook from the open top (Spec. 17). Details of the
claimed invention are set forth in claim 12, as reproduced below from the
Claims Appendix:
12. A novel cigar and cigar box combination comprising:
a cigar having wrapped tobacco fill material and an
elongated cigar puller contained within said tobacco fill
material while said tobacco fill material is being wrapped,
wherein a portion of said cigar puller extends from an end of
said cigar, a pull tab in the form of a hook exterior of said
tobacco fill material, and secured to said cigar puller;
a cigar box for storing and displaying a collection of said
cigars, said box including a base, which can hold a plurality of
cigars horizontally therein and a top which is attached to and
can be opened from said base, at least one of said cigars placed
vertically by being hung on said opened top by means of said
hook.
REJECTIONS
I. Claim 12 is rejected on the grounds of non-statutory
obviousness-type double patenting over claim 1 of Cooper.2
2 Cooper, US 8,448,646 B2, issued May 28, 2013.
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Application 13/853,100
II. Claim 12 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lai3 and Sukert,4 in view of Bums,5 Gaisman,6 and
further in view of Menkel7 and Nagatani.8
DISCUSSION
Rejection I. The Examiner determines that claim 12 is not identical to
claim 1 of Cooper, “but that that they are not patentably distinct from each
other because claim 1 recites all of the limitations of present claim 12” (Final
Act. 6). Appellant argues that Cooper’s claim 1 does not disclose a cigar
puller having a hook at the end as recited in appealed claim 12, and that this
stmcture was not suggested or needed by Cooper’s claim 1.
The judicial doctrine of obviousness-type double patenting precludes an
applicant from extending the term of protection for a patented invention by
claiming an obvious variant of the patented invention in a subsequent patent
application. See In reLongi, 759 F.2d 889, 892 (Fed. Cir. 1985). Generally,
an obviousness-type double patenting analysis entails two steps. First, the
claim in the earlier patent and the claim in the pending application are
constmed to determine the differences between them. Second, a
determination is made whether the differences in subject matter between the
two claims render the claims patentably distinct. See, e.g., Eli Lilly & Co. v.
Barr Labs., Inc., 251 F.3d 955, 968 (Fed. Cir. 2001). When considering
3 Fai, US 5,692,605, issued December 2, 1997.
4 Sukert, US 1,676,118, issued December 24, 1925.
5 Bums, US 1,778,482, issued September 10, 1927.
6 Gaisman, US 3,324,861, issued January 22, 1965.
7 Menkel, US 3,774,774, issued November 27, 1973.
8 Nagatani et al., US 3,791,554, issued February 12, 1974.
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Application 13/853,100
whether the invention defined in a claim of an application would have been an
obvious variation of the invention defined in the claim of a patent or
copending application, the disclosure of the patent or copending application
may not be used as prior art. General Foods Corp. v. Studiengesellschaft
Kohle mbH, 972 F.2d 1272, 1279 (Fed. Cir. 1992).
In this instance, appealed claim 12 recites that the elongated cigar puller
has a tab in the form of a hook. None of the claims of Cooper discloses such a
hook-shaped tab. Thus, Appellant has shown error in the Examiner’s finding
that Cooper’s “claim 1 recites all of the limitations of present claim 12.” The
Examiner also finds that the invention of claim 12 “showing the hooks can
further be seen in Fig 17 and Col. 10” of Cooper. However, as discussed
above, in a non-statutory double patenting analysis, the disclosure (i.e. the
Specification and drawings) of the double-patenting reference may not be
used as prior art. General Foods, 972 F.2d at 1279. Thus, Cooper’s drawings
and Specification may not be used to show that it would have been obvious to
modify the combination shown in Cooper’s claim 1.
Accordingly, we reverse the obviousness-type double patenting
rejection over Cooper.
Rejection II. Appellant’s basic argument seeking reversal of the
rejection is that the rejection is based on a hindsight-driven analysis of the
prior art (Br. 2—3). The Examiner has the initial burden of establishing a
prima facie case of obviousness based on an inherent or explicit disclosure
of the claimed subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on
review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability.”). To establish a prima facie case of obviousness,
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Application 13/853,100
the Examiner must show that each and every limitation of the claim is
described or suggested by the prior art or would have been obvious based on
the knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d
1071, 1074 (Fed. Cir. 1988). Furthermore, the Examiner must articulate
some “reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir 2006).
This reasoning must show that “there was an apparent reason to combine the
known elements in the fashion claimed.” KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007). The apparent reason need not appear in one or more
of the references on which the examiner relies. Instead, the examiner when
analyzing the evidence may employ common sense not inconsistent with the
ordinary level of knowledge and skill in the art at the time of the invention.
Perfect Web Techs, v. InfoUSA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir.
2009).
We have reviewed the arguments and evidence presented by
Appellant in the Appeal Brief and during the oral hearing seeking reversal of
the obviousness rejection, and conclude that Appellant has not shown
reversible error in the appealed rejection, essentially for the reasons set forth
in the Final Action and the Answer. We add the following primarily for
emphasis.
Appellant explains why each of the cited references differs from the
claimed invention (Br. 3—4). However, it is well established that “one
cannot show non-obviousness by attacking references individually where, as
here, the rejections are based on a combination of references.” In re Keller,
642 F.2d 413, 426 (CCPA 1981).
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Application 13/853,100
Appellant acknowledges that the combination of Lai and Sukert
adequately teach the structure of the claimed cigar box, but argues that
neither discloses the claimed cigar or how it is to be stored in the box (Br. 3).
This argument is not persuasive of reversible error, as the Examiner relies on
the other cited art to teach these features.
Appellant objects to the Examiner’s reliance on Gaisman as teaching
an elongated cigar puller extending from the end of the smoking article (id.).
In particular, Appellant argues that Gaisman “is not remotely concerned with
cigars” (id.). However, Gaisman specifically states that while its invention
“is here specifically disclosed in cigarette form, it will be appreciated that
that is by way of exemplification only, and that it is also adaptable for use in
other objects to be smoked, such as cigars.'1'’ (Gaisman, 2:51—54, emphasis
added). Appellant also contends that Gaisman does not disclose that its
elongated member is “structured so as to be used to hang a cigarette, let
alone a cigar as claimed in the present invention” (Br. 3). However, it is
apparent from the following annotated version of Gaisman’s FIG. 2 that its
elongated member could indeed be used to hang a cigarette or cigar:
FIG. 2
This annotated version of Gaisman’s Fig. 2 shows a cross-sectional view of an
embodiment of its invention.
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Application 13/853,100
Nothing in the Specification provides a definition of “hook” which
would exclude the end of the puller shown in Fig. 2 of Gaisman.
With regards to the claim limitations relating to storing the cigars
vertically by hanging them off the top of the opened box by the hook at the
end of the puller, the Examiner relies on Menkel as teaching the advantages of
displaying cigars vertically and Nagatani as showing that hooks can be used to
store items vertically (Final Act. 4, citing Menkel, Figs. 2-4, 4:53—56;
Nagatani, 1:19-31, 1:30-40, and 2:38-47). The Examiner further explains
that these references would have suggested to a person of skill in the art that
cigars should be displayed vertically and that hooks in the cigar can be used
for that purpose (Final Act. 4).
Appellant’s arguments (that Menkel’s arrangement eliminates the
need for using a cigar puller with a hook to hang the cigars, and that
Nagatani is directed to a vending machine) (Br. 4) do not refute the
Examiner’s reasoning for making the required combinations, but merely
point out differences between the cited references and the claimed invention.
Such arguments are not persuasive because the rejection is based on a
combination of references. In re Keller, 642 F.2d at 426.
For the foregoing reasons, we affirm the obviousness rejection of claim
12.
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CONCLUSION
We REVERSE the rejection of claim 12 on the grounds of non-
statutory obviousness-type double patenting over claim 1 of Cooper.
We AFFIRM the rejection of claim 12 under 35 U.S.C. § 103(a) as
being unpatentable over Lai and Sukert, in view of Bums, Gaisman, and
further in view of Menkel and Nagatani.
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)(l)(iv).
AFFIRMED
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