Ex Parte Eisenberg

Patent Trial and Appeal Board

Jun 14, 2016

11950871 (P.T.A.B. Jun. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111950,871 12/05/2007
26582 7590 06/16/2016
HOLLAND & HART, LLP
222 South Main Street, Suite 2200
P.O. Box 11583
SALT LAKE CITY, UT 84147
FIRST NAMED INVENTOR
Jordan David Eisenberg
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P002 (76494.0003) 7306
EXAMINER
ANDERSON, AMBER R
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
06/16/2016 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):
patentdocket@hollandhart.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JORDAN DAVID EISENBERG
Appeal2014-006847 1
Application 11/950,871 2
Technology Center 3600
Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-27 and 33. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
Feb. 10, 2014) and Reply Brief ("Reply Br.," filed May 19, 2014), and the
Examiner's Answer ("Ans.," mailed Mar. 17, 2014).
2 Appellant identifies CollarCard, LLC as the real party in interest. App.
Br. 1.
Appeal2014-006847
Application 11/950,871
CLAIMED INVENTION
Appellant's claimed invention "relates to a device that is easily
transformable from a credit card sized card, in some cases with removable
hang tab and/or imprinted advertising, into one or more collar stays, which
can be selectively removed and reinserted into the card[.]" Spec. i-f 1.
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A collar stay card, comprising:
a resilient, flexible sheet member having first and second
opposing edges and third and fourth opposing edges, the first and
second opposing edges forming a width therebetween, the third
and fourth opposing edges forming a height therebetween, the
width being greater than the height, and wherein the sheet
member is formed of a layer of material having a front surface
defining a front plane and a rear surface defining a rear plane;
and
one or more detachable collar stays within the sheet
member, each detachable collar stay having an elongated
rectangular shape including tv,ro long edges and two short edges,
wherein at least one short edge forms a symmetrically tapered
point, and wherein the detachable collar stays are removable
from the flexible sheet member and leave a hole therein when
removed, and
a delivery system formed of a layer of the material and
located within the front and rear planes, and configured to be
attached to a hook or garment, wherein the resilient, flexible
sheet member hangs from the delivery system when the delivery
system is affixed in a vertical orientation to a hook or garment.
REJECTION
Claims 1-27 and 33 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bullen (US 2004/0113418 Al, pub. June 17, 2004) and
Best (US 6,898,880 B2, iss. May 31, 2005).
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Appeal2014-006847
Application 11/950,871
ANALYSIS
Appellant argues claims 1-27 and 33 as a group. See App. Br. 4--5.
We select claim 1 as representative. The remaining claims stand or fall with
claim 1. See 37 C.F.R. §41.37(c)(l)(iv).
We are not persuaded by Appellant's argument that the Examiner
erred in rejecting claim 1under35 U.S.C. § 103(a) because Best, on which
the Examiner relies, does not disclose or suggest
a delivery system formed of a layer of the material and located
within the front and rear planes, and configured to be attached to
a hook or garment, wherein the resilient, flexible sheet member
hangs from the delivery system when the delivery system is
affixed in a vertical orientation to a hook or garment,
as recited in claim 1. App. Br. 4--5. Instead, we agree with, and adopt, the
Examiner's response to Appellant's argument as set forth at pages 2-3 of the
Answer. We add the following discussion for emphasis only.
Best relates to claim tag assemblies used for various purposes in a
variety of service industries. Best, col. 1, 11. 13-19. Figure 2 of Best shows
a claim tag assembly 25 having a first identification portion 30 and a second
identification portion 32. Id. col. 3, 11. 17-18. As shown in Figure 2,
plurality of score lines 60, 61 define the card 34 being separable from the
first 30 and second 32 portions. Id. col. 5, 11. 35-37; see also id. col. 3, 11.
22-24. First portion 30 includes a hanging section 66 defining an opening
68 for mounting to a rear view mirror of the vehicle. Id. col. 5, 11. 1--4. The
second identification portion is attached to the keys of vehicle 28. Id. col. 3,
11. 18-22.
Appellant argues that the Examiner's reliance on Best's first
identification portion 30 as a "delivery system" is misplaced because "when
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Appeal2014-006847
Application 11/950,871
the first identification portion (30) is hanging in a vehicle, the other
components are detached from the identification portion." App. Br. 5.
Appellant's argument is unpersuasive because it focuses on functional
differences in an apparatus claim, instead of structural differences. It is
permissible, as Appellant does in claim 1, to recite features of an apparatus
using functional language. See In re Schreiber, 128 F.3d 1473, 1478 (Fed.
Cir. 1997). But functional language may not be relied on for patentability if
the prior art discloses or suggests structure capable of performing the recited
function. See Schreiber, 128 F.3d at 1478-1479.
Here, Best discloses hanging first identification portion 30 of claim
tag assembly 25 after detaching first identification portion 30, card 34, and
second identification portion 32 from one another at score lines 60, 61.
Nonetheless, we agree with the Examiner that Best discloses structure
capable of performing the argued functional language. For example, Best
discloses that first vehicle identification portion 30 includes a hanging
section 66 defining an opening 68 and slit 7 0 for mounting first
identification portion in a vehicle. And Best further discloses first
identification portion 30, card 34, and second identification 32 of claim tag
25 being attached (but separable) at score lines 60, 61.
We are not persuaded that the Examiner erred in finding that Best's first
identification portion is capable of allowing second identification portion 32
and/or card 34 to hang from first identification portion 30 when the first
identification portion is affixed in a vertical orientation to a hook or garment,
as required by claim 1.
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Appeal2014-006847
Application 11/950,871
In view of the foregoing, we sustain the Examiner's rejection of
claim 1 under 35 U.S.C. § 103(a). We also sustain the rejection of claims 2-
27 and 33, which fall with claim 1.
DECISION
The Examiner's rejection of claims 1-27 and 33 under 35 U.S.C.
§ 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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