Ex Parte Elie et al

Board of Patent Appeals and Interferences

Aug 16, 2012

11098899 (B.P.A.I. Aug. 16, 2012)

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.
11/098,899 04/04/2005 Stephanie Elie 99999.354 8108
7590 08/17/2012
Whit Bivens, Esq.
Musick, Peeler & Garrett
Suite 1900
225 Broadway
San Diego, CA 92101
EXAMINER
SPISICH, MARK
ART UNIT PAPER NUMBER
3727
MAIL DATE DELIVERY MODE
08/17/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEPHANIE ELIE and MONICA BRANNEN
____________

Appeal 2010-008697
Application 11/098,899
Technology Center 3700
____________

Before PHILLIP J. KAUFFMAN, CHARLES N. GREENHUT, and
JOHN W. MORRISON, Administrative Patent Judges.

MORRISON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Stephanie Elie and Monica Brannen (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 5-13. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2010-008697
Application 11/098,899

2
THE INVENTION
Appellants’ claimed invention relates to a towel system used in an
exercise environment. Claims 5 and 6 are the independent claims on appeal.
Claims 5 and 6 are illustrative and are reproduced below:
5. A towel system comprising:
a towel;
a pouch adapted to receive and temporarily contain
personal effects;
means for temporarily attaching said pouch to said
towel; and
a display area on the surface of said pouch adorned with
graphics or indicia by any known means.

6. A towel system comprising:
a towel;
a pouch adapted to receive and temporarily contain
personal effects;
means for temporarily attaching said pouch to said
towel; and
a magnet attached to said towel to allow said towel to
be attached to any ferro-magnetic surface.

THE REJECTION
Appellants seek review of the following rejection:
Claims 5-13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gires (FR 2,682,301 published April 16, 1993, also
referred to as the '301 patent) in view of Change (US Patent 4,885,195
issued Dec. 5, 1989).

Appeal 2010-008697
Application 11/098,899

3

ANALYSIS
With regard to claim 5, the Examiner has determined that “[i]t would
have been obvious to one of ordinary skill to provide any indicia or graphics
to any part of the device of '301[Gires], in particular the pouch as taught by
Change. Matters relating to ornamentation alone which have no mechanical
function cannot be relied upon to patentably distinguish the claimed
invention from the prior art.” Ans.3. The Appellants contend that “Claim 5
requires a display area on the surface of the pouch adorned with graphics or
indicia. The pouch of '301 does not appear to be designed for the display of
graphics or indicia. Figure 1 of '301 shows a zipper (7) in the middle of the
pouch surface which makes the display of graphics or indicia impossible or
impractical.” App. Br. 6. It has long been established that “differences in
ornamentation are entitled to little weight in determining the obviousness of
a claim to a structure.” See In re Seid, 161 F.2d 229, 231 (CCPA 1947). As
such, the addition of graphics on the pouch could not be relied upon to
overcome an obviousness rejection based on the combination of the Gires
and Change.
The Appellants also argue that Gires “teaches away from the display
of graphics or indicia.” App. Br. 6. As to whether the use of a zipper would
teach away from the display of graphics or indicia on the pouch, “[t]he fact
that the motivating benefit comes at the expense of another benefit, however,
should not nullify its use as a basis to modify the disclosure of one reference
with the teachings of another. Instead, the benefits, both lost and gained,
should be weighed against one another.” Winner Int'l Royalty Corp. v.
Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000)]. In this case, the benefit
Appeal 2010-008697
Application 11/098,899

4
of the zipper could be balanced with the benefit of placing graphics on the
pouch to achieve the benefits taught by both references. Therefore, the ‘301
patent does not teach away from the use of Change’s display of graphics or
indicia. For the reasons discussed supra, we affirm the rejection of Claim 5.
Addressing claim 6, the Examiner has determined that “[i]t would
have been obvious to one of ordinary skill to have provided a magnet to the
device of '301 for the purpose of securing the towel for storage” and “a
beach towel is simply a towel and could be used at any location.” Ans. 4-5.
The Appellants contend that, “the device is a beach towel. Beaches are
generally devoid of ferromagnetic surfaces. Accordingly, there would be no
reason to provide the device of '301 with a magnet as required by claim 6.”
App. Br. 6.
To begin, the Appellants’ contention is not commensurate in scope
with claim 6 because it is directed to a towel rather than a beach towel. See
In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail
from the outset because . . . they are not based on limitations appearing in
the claims.”). Further, the proper inquiry is whether the Examiner has
articulated adequate reasoning based on a rational underpinning to explain
why a person of ordinary skill in the art would have been led to combine the
'301 patent with the teachings of Change. See KSR Int'l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (Rejecting the rigid requirement of a teaching,
suggestion or motivation to combine known elements in order to show
obviousness, but nonetheless making clear that “rejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” (citing In re Kahn, 441 F.3d
Appeal 2010-008697
Application 11/098,899

5
977, 988 (Fed. Cir. 2006)). We believe that the Examiner has articulated
adequate reasoning to establish the obviousness of the claimed subject
matter and that the Appellants have not provided convincing evidence to
overcome the Examiner’s finding that a beach towel could be used at any
location chosen by the user. As such, we affirm the rejection of Claim 6 and
of claims 7-9 which depend therefrom and are argued solely based upon
dependency. App. Br. 7.
Appellants argue claims 10-13 as a group, and we select claim 10 as
representative. App. Br. 7-8; see 37 C.F.R. § 41.37(c)(1)(vii)(2011).
Appellants argue that Change teaches away from the proposed combination
because Change locates the U-shaped magnet 17 at the midpoint of one edge
of the towel rather than proximate the location of the removable pouch as
called for in claims 10-13. App. Br. 7. Similarly, Appellants argue that
“[t]he pocket (12) is located at a distal corner of the towel. Thus, even if
'301 were combined with Change, the resulting combination would not meet
the limitations of claims 10 through 13.” App. Br. 7.
These arguments are unpersuasive because they fail to address the
rejection as articulated by the Examiner. The Examiner did not rely on the
position of the pouch or the magnet as disclosed in the prior art. Rather, the
Examiner determined that “the mere change in location of the magnet and/or
pocket would be an obvious choice of design (or obvious rearrangement of
the essential working parts) to one having ordinary skill in the art.” Ans. 5.
We agree with the Examiner. While there are no per se rules of obviousness,
minor changes in the placement of elements may be an obvious matter of
design choice. See e.g., In re Kuhle, 526 F. 2d 553, 555 (C.C.P.A. 1975).
The specific location of the magnet and/or pocket appears to be the product
Appeal 2010-008697
Application 11/098,899

6
of simply select one of a plurality of a finite number of identified predictable
solutions—locations on the towel. This does not appear to be the product of
innovation but of a selection process that occurs in the ordinary course of
constructing a known device. See e.g., In re Kubin, 561 F. 3d 1351, 1358-61
(Fed. Cir. 2009).
As such, we affirm the rejection of claims 10-13.

DECISION
We AFFIRM the decision of the Examiner to reject claims 5-13.
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
JRG