Ex Parte Fahsel

Patent Trial and Appeal Board

Apr 27, 2017

13127699 (P.T.A.B. Apr. 27, 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.
13/127,699 05/04/2011 Susan Fahsel 67927.2.1 4110
22859 7590 05/01/2017
FREDRIKSON & BYRON, P.A.
INTELLECTUAL PROPERTY GROUP
200 SOUTH SIXTH STREET, SUITE 4000
MINNEAPOLIS, MN 55402
EXAMINER
LAVENDER, JACK W
ART UNIT PAPER NUMBER
3677
NOTIFICATION DATE DELIVERY MODE
05/01/2017 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):
IP@FREDLAW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUSAN FAHSEL
Appeal 2015-002558
Application 13/127,699
Technology Center 3600
Before JOHN C. KERINS, EDWARD A. BROWN, and
ARTHUR M. PESLAK, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Susan Fahsel (Appellant)1 2 3appeals under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1, 2, 4, 5, 7, 39-42, 44-46, 48, 49, 51,
and 52 under 35 U.S.C. § 103(a) as unpatentable over Hoffman (US
6,594,871 B2, issued July 22, 2003) and Benkowski (US 3,949,506, issued
Apr. 13, 1976).2,3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION.
1 Magnabilities LLC is identified as the real party in interest. Appeal Br. 3.
2 Claims 3, 6, 8—38, 43, 47, and 50 have been cancelled. Appeal Br. 20—22
(Claims App.).
3 A rejection of claims 1, 2, 4, 5, 7, 39-42, 44-46, 48, 49, 51, and 52 under
35 U.S.C. § 112, first paragraph, has been withdrawn. Ans. 5.
Appeal 2015-002558
Application 13/127,699
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, illustrates the claimed subject matter.
1. An interchangeable jewelry assembly comprising:
(a) a frame having a continuous planar back wall defined
by a perimeter and a continuous sidewall running along the
perimeter, the sidewall extending perpendicular to the back wall,
the sidewall and the backwall defining a recess in the frame
wherein the backwall has magnetic properties;
(b) a plurality of non-flexible interchangeable decorative
elements with at least one of the plurality of decorative elements
having a convex front surface, a planar back surface and a
perimeter edge, the decorative element being configured to fit
inside the recess so that only the front surface is exposed and
extends outward from the frame and the back surface and the
perimeter edge are covered and unexposed, the plurality of
decorative elements include a magnet affixed to their respective
back surface that removably secures the decorative element
inside the recess of the frame so that a user can replace one
interchangeable decorative element with another without the use
of a utensil.
Appeal Br. 20 (Claims App.).
ANALYSIS
Rejection of claims 1, 2, 4, 5, 7, 39—42, 44—46, 48, 49, 51, and 52
Appellant presents argument for claims 1 and 40, and does not present
separate argument for dependent claims 2, 4, 5, 7, 39, 41, 42, 44-46, 48, 49,
51, and 52. Appeal Br. 11—19; see also id. at 20-23 (Claims App.). We
select claims 1 and 40 to decide the appeal as to the rejection, with the
dependent claims standing or falling with claims 1 and 40. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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Combination of Hoffman and Benkowski
Hoffman discloses a jewelry element 10 including replaceable
ornamental elements 12 that have a decorative exterior surface 14 and are
removably received in recess 18 of frame 16. Hoffman, col. 1,1. 66—col. 2,
1. 7, col. 2,11. 16—18, Fig. 1. A magnet 20 is provided on the bottom surface
of ornamental elements 12. Id. at col. 2,11. 24—26, Fig. 1. Frame 16
includes aperture 32 to provide access for stylus 34 for dislodging an
ornamental element 12 from frame 16. Id. at col. 2,1. 66—col. 3,1. 1, Fig. 1.
Once an ornamental element 12 has been dislodged from frame 16, another
ornamental element with a different decorative surface decoration may be
inserted into recess 18. Id. at col. 3,11. 3—8.
The Examiner finds that Hoffman fails to disclose a decorative convex
front face on the interchangeable buttons (i.e., ornamental elements 12), and
a continuous planar back surface defining the bottom of the recess in the
frame. Final Act. 4. The Examiner relies on Benkowski to teach an
interchangeable button system for decorating a frame, which system
includes buttons 24 with magnets 34 on their back surfaces for engaging
magnetic planar back surface 40 of recess 32 in frame 12. Id.', see
Benkowski, Figs. 1, 2. The Examiner finds that Benkowski’s buttons
include convex front surface 28. Final Act. 4. The Examiner finds that
Benkowski additionally discloses interchangeable buttons in the form of
baseballs having a convex front surface. Id. (citing Benkowski, Fig. 7).
The Examiner concludes that it would have been obvious to use
Benkowski’s magnetic planar fastening system in Hoffman’s jewelry
system, because Benkowski’s system would function equally as well as
Hoffman’s magnetic fastening system for interchanging magnetic buttons.
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Id. The Examiner also concludes that it would have been obvious to have
convex front surfaces on the interchangeable buttons to alter their physical
appearance to match a wearer’s outfit or an event (id. at 4—5) and to change
the aesthetics of a jewelry item to suit the wearer’s fashion needs (id. at 5).
Appellant first contends that Benkowski is non-analogous art. Appeal
Br. 16. A reference is analogous art to the claimed invention if: (1) the
reference is from the same field of endeavor, regardless of the problem it
addresses; or (2) if the reference is not within the same field of endeavor, it
is still reasonably pertinent to the particular problem faced by the inventor.
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). A reference is
“reasonably pertinent” to the problem faced by the inventor if it “logically
would have commended itself to an inventor’s attention in considering his
problem.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379—80
(Fed. Cir. 2007).
The claimed invention is an interchangeable jewelry assembly (claim
1) and a user-designable jewelry kit (claim 40). The Specification describes
that the jewelry assemblies enable individuals to customize jewelry using
interchangeable decorative inserts. See Spec. 12. Appellant contends that
Benkowski is not concerned with changing the look of a piece of jewelry.
Appeal Br. 16.
The Examiner finds that Benkowski relates to the problem of easily
mounting and demounting a plurality of interchangeable raised ornamental
team units to a plaque. Ans. 7. The Examiner explains that Benkowski
solves this problem by using a magnetic system including first magnet 34
provided on ornamental team unit 24 and second magnet 36 provided on the
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plaque, which forms part of a continuous bottom wall for each recess. Id.',
see also Benkowski, Figs. 1, 2.
Benkowski relates to displaying ornamental elements on an
ornamental article, disclosing ornamental or decorative plaques that include
ornamental elements configured to be selectively repositionable on the
plaques. Benkowski, col. 1,11. 5—8,11. 36—37. The ornamental elements can
have distinct ornamental characteristics. Id. at col. 2,11. 47—52. Either
repositioning the ornamental elements on the plaque, or substituting
ornamental elements having different ornamental characteristics on the
plaque, would change the plaque’s ornamental appearance.
Regarding the scope of analogous art:
The Supreme Court’s decision in KSR International Co. v.
Teleflex, Inc., 550 U.S. 398 (2007), directs us to construe the
scope of analogous art broadly, stating that ‘ familiar items may
have obvious uses beyond their primary purposes, and a person
of ordinary skill often will be able to fit the teachings of multiple
patents together like pieces of a puzzle.” Id. at 402 (emphasis
added).
Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010).
Consistent with Wyers, we find that Benkowski is reasonably pertinent to the
problem addressed by the inventor, and thus, qualifies as analogous prior art.
Appellant contends that one would not have been motivated to modify
Hoffman based on Benkowski’s teachings because this would prevent
Hoffman from functioning as intended. Appeal Br. 16. Particularly,
Appellant contends that Hoffman uses magnets 22, 24 to create recess 18 in
base 16, and magnet 20 on ornamental element 12 fits into recess 18 to
create a flux pattern that assures ornamental element 12 is securely held in
place. Id. (citing Hoffman, Fig. 2). Appellant asserts that replacing
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Hoffman’s structure with Benkowski’s (i.e., one magnet in the base and one
magnet on the back of the ornament) would not create the flux pattern
required by Hoffman. Id. at 16—17.
This contention is not persuasive. Although Hoffman teaches that
magnets 20, 22, 24 produce the flux pattern shown in Figure 2 to secure
ornamental element 12 to frame 16 (see Hoffman, col. 2,11. 51, 65),
Appellant provides no persuasive argument or evidence to show that
Benkowski’s magnets 34, 36 would not be effective to hold Hoffman’s
ornamental element 12 securely in the recess of frame 16 when substituted
in Hoffman. Thus, Appellant does not apprise us of any error in the
Examiner’s position that replacing Hoffman’s magnet arrangement with
Benkowski’s would not prevent the magnetic securing of Hoffman’s
decorative elements to the frame, or prevent a user from easily removing the
decorative elements from the frame when magnetically secured. That is, the
modification would not prevent Hoffman’s device from functioning as
intended. Ans. 8. Appellant fails to provide any persuasive argument or
evidence to show that this proposed substitution of known elements would
have been uniquely challenging to a person of ordinary skill in the art and
more than “the simple substitution of one known element for another” with
predictable results. See KSR, 550 U.S. at 417.
Appellant also contends that one would not have been motivated to
change Hoffman’s non-planar back surface to a planar back surface. Appeal
Br. 17. Appellant asserts that Hoffman requires a utensil to dislodge the
ornament, while claims 1 and 40 recite that the decorative element can be
replaced without the use of a utensil. Id.
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These contentions are not persuasive. Hoffman discloses that stylus
34 is inserted through aperture 32 in frame 16 to dislodge ornamental
element 12. Hoffman, col. 2,1. 66—col. 3,1. 3, Fig. 1. Appellant does not
direct us to any disclosure in Benkowski that any “utensil” is required to be
used to remove an ornamental element for replacement with another.
Rather, Benkowski’s ornamental elements 24, for example, are configured to
allow a user to remove them by hand. See, e.g., Benkowski, Fig. 2. Hence,
it is our understanding that the proposed modification of Hoffman would,
advantageously, allow a user to remove a decorative element magnetically
secured to the frame without the use of a stylus. Appellant provides no
persuasive argument why a “utensil” would be needed to remove a
decorative element, or aperture 32 would be needed in frame 16, in the
proposed combination.
Appellant further contends that a locating mechanism (40) would need
to be incorporated in Hoffman to prevent rotation of a button when placed in
the recess, but such a locating mechanism would be undesirable in a jewelry
piece. Reply Br. 2. Benkowski teaches that slot 40 assures the desired
orientation of team unit 24 when mounted to the plaque. Benkowski, col. 3,
11. 3—4, Fig. 2. Appellant contends that Hoffman does not teach that the
recess created by the magnetic arrangement ensures proper orientation
between the button and the frame/recess. Reply Br. 2. Accepting this
contention, we are not persuaded there would be a need to incorporate a
locating mechanism, such as taught by Benkowski, in Hoffman to prevent
rotation of the button in the recess. To the extent Appellant is contending
that the structure of Benkowski must be physically combinable with the
structure of Hoffman, we disagree. “It is well-established that a
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determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements.” In re Mouttet,
686 F.3d 1322, 1332 (Fed. Cir. 2012); In re Sneed, 710 F.2d 1544, 1550
(Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references
be physically combinable to render obvious the invention under review.”); In
re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference . . . .”). We are not persuaded that
the Examiner’s combination, without such bodily incorporation, would be
unable to meet the claim limitation that the magnet affixed to the respective
back surface of the decorative elements “removably secures the decorative
element inside the recess of the frame.” Appeal Br. 20 (Claims App.).
Objective Indicia of Non-Obviousness (Secondary Considerations)
Appellant provides a Declaration Under 37 C.F.R. § 1.132 by Susan
Fahsel, the named inventor (hereafter “Declaration” or “Decl.”), as evidence
of objective indicia of non-obviousness pertaining to commercial success.
Appeal Br. 17—19. We have considered this evidence. See, e.g., In re Huai-
Hung Kao, 639 F.3d 1057, 1067 (Fed. Cir. 2011) (“[W]hen secondary
considerations are present, though they are not always dispositive, it is error
not to consider them.”).
“[Ejvidence of commercial success ... is only significant if there is a
nexus between the claimed invention and the commercial success.” Ormco
Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311—12 (Fed. Cir. 2006). The
success must be attributable to the claimed invention, not something else.
Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 740 (Fed. Cir. 2013).
To establish a nexus, the “[ejvidence of secondary considerations must be
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reasonably commensurate with the scope of the claims.” Kao, 639 F.3d at
1068. Establishing a nexus between the claimed invention and the
commercial success of a product requires “proof that the sales [of the
product] were a direct result of the unique characteristics of the claimed
invention—as opposed to other economic and commercial factors unrelated
to the quality of the patented subject matter.” In re Huang, 100 F.3d 135,
140 (Fed. Cir. 1996).
Appellant contends that the Declaration makes clear that the
commercial embodiments sold are “coextensive” with the claimed invention
of the pending claims, and that the commercial embodiments sold possess
each of the elements in claim 1. Appeal Br. 17—18; see also Decl. 13. The
Declaration discusses customizable jewelry pieces that were developed and
sold by Magnabilities. Decl. ^fl[ 5—9. The Declaration states, “[b]ased on the
above, I believe that the Magnabilities jewelry base pieces and inserts fall
within the scope of the pending claims of the ‘699 Application.” Id. 110.
Appellant does not provide a direct comparison between each
limitation of any claim and the features of any commercial embodiment
sold. For example, Appellant does not provide a claim chart for claim 1, and
evidence of a commercial embodiment sold, such as one or more annotated
photographs, definitively establishing the existence of each claim element in
the commercial embodiment. Further, claim 40 recites different limitations
from claim 1, and thus, requires a different evidentiary showing than claim
1. We cannot discern from the evidence before us whether any of the
commercial embodiments sold is covered by any of the claims, i.e.,
embodies the invention as recited in any claim. Consequently, we are
unable to determine whether the commercial embodiments sold may possess
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any unclaimed features. This is relevant because, “if the commercial success
is due to an unclaimed feature of the device, the commercial success is
irrelevant.” Ormco, 463 F.3d at 1312. We also are unable to determine
whether the commercial embodiments sold may lack any claimed feature(s).
Thus, we are not persuaded that Appellant’s evidence of commercial success
is based on commercial embodiments that are commensurate in scope with
the claims.
In addition to its position there is correspondence between the claimed
invention and the commercial embodiments sold, Appellant contends that
the sales of the commercial embodiments establish commercial success.
Appeal Br. 17—18 (referencing Declaration || 11—34). In support, the
Declaration provides a chart that shows, for each of the years 2009-2013,
the gross revenue from “Magnabilities Products Covered by the ‘699
Application.” Decl. 133. The chart shows that gross revenue from sales of
the Magnabilities products increased from 2009 to 2010, but subsequently
decreased each successive year from 2011—2013. Id. The gross revenue for
2013 was about one-half of the 2010 gross revenue. Id. The chart also
shows that in the years 2011 and 2012 “at least 4” competitors sold “similar
products,” and in 2013 “at least 5” competitors did so. Id.
The Declaration does not provide sufficient evidence to establish that
the “similar products” sold by the competitors in 2011—2013 embody the
invention claimed. The Declaration merely refers to “knock-off products
that similarly allowed a buyer to easily modify a base piece of jewelry with
interchangeable, magnetic decorative pieces” and “decorative inserts that
they advertised would fit into the Magnabilities base jewelry pieces.” Decl.
132. This description of the competitor products does not provide sufficient
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evidence of what structure the “similar products” have, much less establish
that any of these products are commensurate in scope with any of the claims.
In addition, the information fails to provide sales data for the competitor
products, or any evidence as to why purchasers bought them. Absent such
information, Appellant does not establish that its reduced sales were due
directly to the competitors selling products that have the claimed features.
To the extent the sales of the “similar products” during 2011—2013 were not
“a direct result of the unique characteristics of the claimed invention,” these
sales weaken Appellant’s commercial success position. That the
competitors’ sales caused a significant reduction in sales revenue for the
Magnabilities products, absent evidence in the record that the competitors’
products copied the claimed invention, raises the question of whether the
sales of Magnabilities products was actually due to the characteristics of the
claimed invention.
The Declaration attributes the decline in sales of the Magnabilities
products “to increased competition in the marketplace, as no competitors
were selling a Magnabilities-like product in January 2010, but at least four
imitation products had entered the market by January 2011.” Decl. 136.
Appellant states, “[i]n paragraph 36 [of the Declaration], Ms. Fahsel clearly
states that she believes the decline in sales from their peak in year 2010 was
because of the increased competition in the marketplace by the introduction
of imitation products.” Reply Br. 3. To the extent Appellant attributes the
decrease in gross revenue from sales of the Magnabilities products from
2011 to 2013 exclusively to the sales of the “similar products,” Appellant
fails to provide sufficient evidence to show that any of the “similar
products” are commensurate in scope with any of the claims.
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We also note that the Declaration states:
As noted above, before the Magnabilities product was
introduced, there were no similar products on the market in the
gift industry that would allow a buyer to easily customize a
base jewelry piece by removing and replacing, without a tool or
utensil, decorative design inserts sized to precisely fit a recess
on the base piece of jewelry and held in place by a magnet.
Decl. 138 (emphasis added). This statement seems to imply that “the
market in the gift industry” in which the Magnabilities products were sold
included additional, “non-similar” products. To the extent Appellant’s
position is that the relevant “market” should be limited to those products that
“allow a buyer to easily customize a base jewelry piece by removing and
replacing, without a tool or utensil, decorative design inserts sized to
precisely fit a recess on the base piece of jewelry and held in place by a
magnet,” we find this definition of the “market” overly narrow because it
appears to encompass only Appellant’s product (at least until any
competitors’ products commensurate with the scope of Appellant’s claims
began to be sold). But, in any event, we cannot discern from the evidence
before us whether the sales of the commercial embodiments from 2009 to
2013 represented a substantial share of any relevant market. See Huang, 100
F.3d at 140.
Appellant also contends that the Fahsel Declaration closely ties the
commercial success of the Magnabilities jewelry pieces to the claimed
attributes resulting in the jewelry assembly. Appeal Br. 18 (referencing
Decl. ^Hf 35—40). The Declaration describes that in interacting with
customers, store owners, distributors, and vendors, “I have frequently been
told that the Magnabilities products embody a novel and innovative
concept.” Decl. 139. The Declaration also states that “Magnabilities has
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received numerous unsolicited customer comments raving about the
Magnabilities concept. Customers love the ability to easily customize a base
piece of jewelry with precisely sized decorative design inserts that are
securely held in place.” Id.
These unsubstantiated, unspecific customer comments are insufficient
“proof that the sales [of the Magnabilities products] were a direct result of
the unique characteristics of the claimed invention.” Rather, this represents
the Declarant’s opinion as to the purchasers’ reason for buying the products,
and, alone, is insufficient. See Huang, 100 F.3d at 140 (“Instead, the
applicant must submit some factual evidence that demonstrates the nexus
between the sales and the claimed invention—for example, an affidavit from
the purchaser explaining that the product was purchased due to the claimed
features.”). Appellant does not provide such factual evidence from such
persons that attests to the reasons the products were purchased. But even if
these persons purchased Magnabilities products as a direct result of the
described characteristics, these unspecified purchases are still insufficient
evidence to demonstrate commercial success of the claimed jewelry
assembly.
Further, “[i]f commercial success is due to an element in the prior art,
no nexus exists.” Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369
(Fed. Cir. 2011); Ormco, 463 F.3d at 1312 (“[I]f the feature that creates the
commercial success was known in the prior art, the success is not
pertinent.”); Richdel, Inc. v. Sunspool Corp., 714 F.2d 1573, 1580 (Fed. Cir.
1983) (commercial success is relevant only when it is “due to [something]
disclosed in the patent. . . which was not readily available in the prior art”).
Applying this principle, we find that Hoffman’s jewelry provides “the ability
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to easily customize a base piece of jewelry with precisely sized decorative
design inserts that are securely held in place.” See Decl. 139 (describing
claimed invention). Similarly, Benkowski’s ornamental articles allow users
to easily customize an ornamental base piece “with precisely sized
decorative design inserts that are securely held in place.” Hoffman and
Benkowski both utilize magnetic interaction between ornamental elements
and an ornamental base, and both allow users to substitute ornamental
elements having different ornamental characteristics to change the
ornamental appearance. Benkowski further teaches magnetically secured
ornamental elements having different ornamental characteristics that can be
the repositioned and substituted without use of a utensil. Accordingly, the
features of the Magnabilities products that Appellant attributes their
commercial success to were known in the prior art. This weighs against the
relevance of any commercial success evidence.
The Declaration states, “[t]he innovative nature of the Magnabilities
product has also consistently received unsolicited positive mention in
newspaper articles and industry publications.” Decl. 140. In support,
Appellant provides Exhibit A, which “is a compilation of some of the
unsolicited publications featuring and discussing the Magnabilities products
that fall within the scope of the claims of the ‘699 Application.” Id.
The Declaration does not identify any particular publication in Exhibit
A that describes the Magnabilities products in sufficient detail to establish
whether they fall within the scope of any of the claims, or establishes that
the Magnabilities products experienced particular sales. In the absence of
any evidence of nexus, the publications do not significantly support
Appellant’s commercial success position.
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The Declaration also states that the commercial success of the
Magnabilities products does not stem from other sources. Decl. 141. In this
regard, the Declaration states that the commercial success of the
Magnabilities products is not due to fashion trends or the style of the jewelry
pieces. Id. H 42-43. The Declaration states that Magnabilities sells
“thousands of varieties and styles of the inserts which can be
interchangeably placed in the recesses of the bases on the Magnabilities
jewelry pieces” and “[n]o particular piece or group of pieces of
Magnabilities jewelry has ever driven the commercial success of the
Magnabilities line of products.” Id. 143.
But even accepting that the Magnabilities line of products is available
in many different styles and designs, and no particular piece or group of
jewelry has driven sales, this does not establish that the sales of the products
were not due, at least to some extent, to the appearance of the jewelry.
Indeed, claims 1 and 40 both recite “decorative elements.” Further,
objective evidence of secondary considerations of non-obviousness should
be tied to the functional aspects of the claimed invention for a utility patent
application. See Cable Elec. Products, Inc. v. Genmark, Inc., 770 F.2d
1015, 1027 (Fed. Cir. 1985) (“for commercial success of a product
embodying a claimed invention to have true relevance to the issue of non­
obviousness, that success must be shown to have in some way been due to
the nature of the claimed invention, as opposed to other economic and
commercial factors unrelated to the technical quality of the patented subject
matter”). To the extent the sales performance of the Magnabilities products
was due to their appearance, the sales performance does not have true
relevance to the issue of non-obviousness of the claimed invention.
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Finally, the Declaration states:
I believe that the primary driver of Magnabilities
commercial success has been the products features that are
claimed in the pending patent application. When individuals
have a chance to actually see how Magnabilities products work,
the benefit and appeal of a base jewelry piece that is easily
customized through the removal and replacement of various
decorative design inserts comes through.
Decl. 149 (emphasis added). This statement merely represents an opinion
as to the primary reason for the purported commercial success of the
Magnabilities products, and, as such, is insufficient. See Huang, 100 F.3d at
140.
When an Applicant submits evidence in response to a rejection, we
determine patentability based “on the totality of the record.” In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992). Based on the record before us, we
determine that Appellant has not established a nexus between the purported
commercial success and unsolicited praise and the merits of the claimed
invention. Although Appellant has provided objective evidence of non­
obviousness, the overall weight of this evidence does not outweigh the
evidence of obviousness relied upon by the Examiner. See Sud-Chemie, Inc.
v. Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) (“evidence
of unexpected results and other secondary considerations will not necessarily
overcome a strong prima facie showing of obviousness”); Leapfrog Enters.
v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (objective
evidence of non-obviousness presented, including substantial evidence of
commercial success, praise, and long-felt need, was inadequate to overcome
the strength of the prima facie obviousness showing). Thus, we sustain the
rejection of claims 1 and 40, and claims 2, 4, 5, 7, 39, 41, 42, 44^46, 48, 49,
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51, and 52 falling therewith, under 35 U.S.C. § 103(a) as unpatentable over
Hoffman and Benkowski.
New ground of rejection of claims 1, 2, 4, 5, 7, and 39
For the written description requirement of 35 U.S.C. § 112, first
paragraph, “the test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
See AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en banc). In order to show “possession,” “the specification must
describe an invention understandable to that skilled artisan and show that the
inventor actually invented the invention claimed.” Id. (emphasis added).
Claim 1 recites “a plurality of non-flexible interchangeable decorative
elements with at least one of the plurality of decorative elements having a
convex front surface,” “the decorative element being configured to fit inside
the recess so that only the front surface is exposed and extends outward from
the frame and the back surface and the perimeter edge are covered and
unexposed,” and “a user can replace one interchangeable decorative element
with another without the use of a utensil.'” Appeal Br. 20 (Claims App.)
(emphasis added). Claim 1 does not require that each decorative element
have a convex front surface, or that “a user can replace one interchangeable
decorative element [having a convex front surface] with another [having a
convex front surface] without the use of a utensil.” Rather, claim 1
encompasses, for example, a jewelry assembly having one decorative
element having a convex front surface and one or more decorative elements
that do not have a convex front surface, such that “a user can replace one
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interchangeable decorative element [not having a convex front surface] with
another [not having a convex front surface] without the use of a utensil.”
Paragraph 19 of the Specification describes that Figure 4 shows a
decorative element that “does not sit flushly within the recessed portion of
the frame,” which configuration allows the decorative element to be simply
and rapidly removed by applying tangential pressure to it. The Specification
explains that, “[i]n this way, the decorative element can be quickly and
easily replaced to display multiple designs and does not require the use of a .
. . utensil. . . .” Id.', see also id. 128.
Figure 4 shows that the decorative element fitted inside recess 10 has
a convex front surface. As shown, “only the front surface is exposed and
extends outward from the frame,” whereas “the back surface and the
perimeter edge [of the decorative element] are covered and unexposed,” as
claimed. The Specification does not appear to disclose any embodiment of
the decorative element that does not include a convex front surface and “is
exposed and extends outward from the frame.” Moreover, to the extent that
the Specification might be seen as disclosing decorative elements that do not
extend outward from the frame,4 the Specification does not evidence
possession of such elements that are replaceable without the use of a utensil,
as claimed. Consequently, we find that Appellant’s original disclosure
would not reasonably convey to those skilled in the art that the inventor had
possession of the subject matter of claim 1 as of the filing date. Thus, we
enter a new ground of rejection of claim 1, and claims 2, 4, 5, 7, and 39
4 The Specification makes reference to Hoffman, now cited in rejecting the
claims, which has decorative elements that do not extend outward from the
frame of Hoffman. See Spec. 14.
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Appeal 2015-002558
Application 13/127,699
depending therefrom, under 35U.S.C. § 112, first paragraph, as failing to
meet the written description requirement.
DECISION
The Examiner’s decision to reject claims 1, 2, 4, 5, 7, 39-42, 44-46,
48, 49, 51, and 52 is affirmed.
We enter a new ground of rejection of claims 1, 2, 4, 5, 7, and 39
under 35U.S.C. § 112, first paragraph, as failing to meet the written
description requirement.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the
appellant, within two months from the date of the decision, must
exercise one of the following two options with respect to the new
ground of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
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Appeal 2015-002558
Application 13/127,699
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01 (9th Ed.,
Rev. 07.2015, Nov. 2015).
No time period for taking any subsequent action in connection with
this appeal maybe extended according to 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED; 37 C.F.R, $ 41.50(b)
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