Ex Parte Johnson

Patent Trial and Appeal Board

Jul 17, 2013

12283242 (P.T.A.B. Jul. 17, 2013)

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.
12/283,242 09/09/2008 Joseph Allen Johnson 1700 6796
7590 07/18/2013
Joseph Johnson
P.O. Box 411821
Melbourne, FL 32941
EXAMINER
NOVOSAD, CHRISTOPHER J
ART UNIT PAPER NUMBER
3641
MAIL DATE DELIVERY MODE
07/18/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOSEPH ALLEN JOHNSON
____________________

Appeal 2011-004134
Application 12/283,242
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-004134
Application 12/283,242

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STATEMENT OF THE CASE1
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 2, 4, and 7. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The rejected claims are directed to a pick up tool, which may be used
to pick up a flying disc used during a game of disc golf (Spec. 1). Claim 1,
reproduced below, is the sole independent claim.
1. A tubular, segmented, folding pick up
tool comprising:
A:) tubing segments, each having an
attached metal coupling sleeve with a female
diameter sized to receive mating male segments
whereby all of the segments can be connected
together male-female and thereby form a tool
shaft;
B:) a length of elastic, stretch cord laced
through a center hole of all connected tubing
segments and having finite pre-tension applied and
secured in place at both ends with a knot to anchor
the cord ends; designed to allow the tool to be
deployed with cord tension holding all segments
together or collapsed by pulling all segments apart
and folded;
C:) a plastic cap, friction fit or glued on a
first end of the tool shaft which dresses the secured
stretch cord and protects the end of the tool and
provides comfort and protection for a user's hand;

1 Our decision will refer to Appellant’s Specification (“Spec.,” filed
September 9, 2008), Appeal Brief (“App. Br.,” filed September 10, 2010),
and Reply Brief (“Reply Br.,” filed December 10, 2010), as well as the
Examiner’s Answer (“Ans.,” mailed December 8, 2010).

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D:) a user-changeable suction cup fitted to a
second end metal coupling sleeve designed to be
pressed against a surface of an item to be picked
up and create a suction adhesive action to enable
pick up of a golf disc or “Frisbee” plastic disc or
golf disc “markers” or playing cards or poker chips
or other smooth surface objects.

THE REJECTIONS
The Examiner rejects the claims as follows:
Claim 7 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement;
claims 1, 2, 4, and 7 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite;
claims 1, 2, and 4 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Slauf (US 6,705,654 B2, iss. Mar. 16, 2004) in view of
Borah (US 2,750,222, iss. Jun. 12, 1956); and
claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Slauf in view of Borah, and further in view of Hyman (US 3,669,133, iss.
Jun. 13, 1972).
ANALYSIS
Rejection under 35 U.S.C. § 112, First Paragraph
The Examiner rejects dependent claim 7 as failing to comply with the
written description requirement. Specifically, the Examiner states there is
no support in the original application for the limitations of using the tool as a
cane, balancing stick, or walking stick “by placing the second end in the
hand and the first end on the ground” as recited in claim 7, and thus the
claim recites new matter (Ans. 4). In response, Appellant argues the
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Application 12/283,242

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Specification supports these limitations in paragraph 19, lines 5-7, which
states that the “overall length [of the tool] is the average length of a walking
stick” (App. Br. 7, Reply Br. 12-13). Although we have reviewed the
portion of the Specification identified by Appellant, we find this portion of
the Specification does not state actually using the tool as a walking stick,
and thus does not state anything about hand placement or placing an end of
the tool on the ground. For these reasons, we find Appellant has not
established that the Specification supports the limitations of claim 7, and we
therefore sustain the rejection of claim 7 under 35 U.S.C. § 112, first
paragraph.
Rejection under 35 U.S.C. § 112, Second Paragraph
The Examiner rejects each of the claims as being indefinite.
Specifically, the Examiner states that independent claim 1 includes the
trademark “Frisbee,” and the use of a trademark as a limitation in a claim
renders the claim indefinite (Ans. 4). Each of the remaining claims depends
from independent claim 1.
Where a trademark is used in a claim as a limitation to identify or
describe a particular material or product, the claim does not ordinarily
comply with the requirements of 35 U.S.C. § 112, second paragraph. This is
because the metes and bounds of the claim are in doubt, as a trademark
cannot be used to identify any particular product. Rather, a trademark is
used to identify a source of goods and not the goods themselves. In this
case, Appellant is using the trademark “Frisbee” to identify a particular
product. A trademark simply does not function in this manner. See Ex parte
Simpson, 218 USPQ 1020 (BPAI 1982). For these reasons, we sustain the
rejection of claims 1, 2, 4, and 7 under 35 U.S.C. § 112, second paragraph.
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Rejections under 35 U.S.C. § 103(a)
The Examiner rejects independent claim 1, as well as dependent
claims 2 and 4, as unpatentable over a combination of Slauf and Borah. The
Examiner also rejects claim 7 as unpatentable over a combination of Slauf,
Borah, and Hyman (Ans. 5-8). We have fully considered Appellant’s
arguments, but find the arguments are not persuasive. While Appellant
argues many differences between the invention and the prior art, what is at
issue is whether there are patentable differences between the claims and the
prior art. For example, Appellant attempts to first differentiate the invention
from Slauf by describing the invention as a pick-up and a retrieval tool, and
by describing Slauf as only a retrieval tool (App. Br. 4-6). Appellant does
not reference, however, limitations in the claims, and does not consider that
the Examiner combined the suction cup of Borah with the tool of Slauf so
that the combination would be capable of picking up a disc. Appellant then
argues there is no motivation to shorten the length of the tool of Slauf (App.
Br. 8-9), even though Appellant does not claim the length of the tool.
Appellant similarly discussed the stowability, function, usability, and
advantages provided by the invention (App. Br. 10-12), without reference to
the claims. With respect to Appellant’s arguments regarding the
combinations of Slauf, Borah, and Hyman (App. Br. 12-16), we affirm the
rejections for the reasons set forth by the Examiner in the Examiner’s
Answer.
DECISION
The Examiner’s rejections of claims 1, 2, 4, and 7 are AFFIRMED.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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