Ex Parte Jones

Patent Trial and Appeal Board

Sep 29, 2017

12658718 (P.T.A.B. Sep. 29, 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.
12/658,718 02/16/2010 Stephanie Ann Jones 972-001 9837
1026 7590 10/02/2017
TT TFFORD G FR A YNF. EXAMINER
136 DRUM POINT RD KATCOFF, MATTHEW GORDON
SUITE 7A
BRICK, NJ 08723 ART UNIT PAPER NUMBER
3725
MAIL DATE DELIVERY MODE
10/02/2017 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 STEPHANIE ANN JONES
Appeal 2016-005441
Application 12/658,718
Technology Center 3700
Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and
ERIC C. JESCHKE, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Stephanie Ann Jones (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision (1) to reject claims 1—3 under 35 U.S.C.
§ 102(b) as anticipated by Creative Memories #3 or Creative Memories
Custom Cutting System;1 and (2) to reject claim 4 under 35 U.S.C. § 103(a)
as unpatentable over Creative Memories #3 or Creative Memories Custom
Cutting System. Claims 5—8 have been withdrawn from consideration. We
have jurisdiction under 35 U.S.C. § 6(b).
1 Available at https://www.google.com.
Appeal 2016-005441
Application 12/658,718
We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to a cover button template tool.
Spec. (Title), Figs. 1, 3, 4.
Claim 1, the sole independent claim on appeal, is representative of the
claimed subject matter and recites:
1. A cover button template for facilely preparing cloth
or fabric for use in the fabrication of a cover button, the
cover button template comprising:
a transparent cover button template having a
doughnut shape defined by a planar upper surface, a planar
lower surface, and a circular outer periphery defining a
fabric cut line, there being formed through the template a
central aperture defined by an inner circular side wall, said
central aperture sized to a diameter of a button shell.
ANALYSIS
Anticipation by Creative Memories #3 or Creative Memories Custom
Cutting System
Claims 1 and 2
Appellant does not offer arguments in favor of dependent claim 2
separate from those presented for independent claim 1. See Br. 9-13. We
select claim 1 as the representative claim, and claim 2 stands or falls with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Claim 3 is addressed separately
below.
Appellant contends that a review of the internet websites of Creative
Memory Systems “show[s] the creation of decorative circles cut from craft
paper in order to prepare designs. [Nowhere] is there a suggestion or hint
that the Creative Memory System could be utilized with fabric to create
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Application 12/658,718
cover buttons, nor could they without having [Appellant’s] sizing indicia for
a particular button.” Br. 10.
As an initial matter, we note that claim 1 recites nothing about “sizing
indicia for a particular button.” See Br. 18, Claims App. Thus, Appellant’s
argument is not commensurate in scope with claim 1. See In re Self, 671
F.2d 1344, 1348 (CCPA 1982) (Limitations not appearing in the claims
cannot be relied upon for patentability).
Anticipation requires the claimed subject matter to be disclosed in the
prior art, not necessarily the recited intended use, such as its manner of
cooperation with some unclaimed subject matter. Appellant cannot obtain a
claim covering a prior-art apparatus by the mere recitation of a different use
for that apparatus. See, e.g., In re Schreiber, 128 F.3d 1473, 1477—78 (Fed.
Cir. 1997) (“It is well settled that the recitation of a new intended use for an
old product does not make a claim to that old product patentable.”).
In response to Appellant’s argument, the Examiner correctly points
out that, “as this is an apparatus claim, the prior art merely has to be capable
of performing the functional limitations claimed. As such, the Creative
Memories System merely has to be able to be used with fabric.” Ans. 3. In
addition, the Examiner states that “[t]here is no reason that the Creative
Memories System template cannot be used with fabric. As the prior art is
merely a circular template that is placed on an object there is nothing that
would prevent [its] use with (i.e. placed upon) a variety of materials
including fabric.” Id. The Examiner’s findings are sound. Appellant does
not apprise us of Examiner error.
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Application 12/658,718
Appellant contends that “from reviewing the Creative Memories
Custom System, it would appear that the blades of that system are not
capable of cutting fabric.” Br. 10. Here, the Examiner correctly points out
that claim 1 is “not directed to a blade and the prior art is being used to teach
a template, not the blade, [as such,] this argument is not persuasive.” Ans. 3.
Appellant contends that “[t]he tracks of the Creative Memory System
are not graduated.” Br. 10. Here, the Examiner correctly points out that
“nowhere is this actually claimed and as such [this argument] is not
persuasive.” Ans. 3.
Appellant contends that the template system of the subject invention
“requires the cut of the fabric to be made against the outer circumferential
edge of the template.” Br. 11.
Appellant’s argument is not persuasive because claim 1 does not
“require [] the cut of the fabric to be made against the outer circumferential
edge of the template,” as Appellant asserts. Rather, claim 1 merely recites
“a transparent cover button template having ... a circular outer periphery
defining a fabric cut line.” See Br. 11; see also id. at 18, Claims App.; In re
Self, 671 F.2d at 1348.
Appellant contends that Creative Memory System “does not allow for
the template to allow the coverage needed to assemble the button, and
therefore does not and cannot complete the same task as the cover button
template.” Br. 10. In this case, the Examiner correctly points out that “the
coverage is not actually claimed and,... the claim is directed towards an
apparatus and as such the prior art merely has to be able to perform the
functions claimed.” Ans. 3. The Examiner further states that “[a]s the prior
art discloses all of the structural features (see the figure and the discussion
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Application 12/658,718
below) and can perform the functions claimed, the Creative Memories
System reads on the claimed subject matter.” Ans. 3; see also id. at 4—5
(The Examiner’s annotated figure from Creative Memory System). The
Examiner’s findings are sound. Appellant does not apprise us of Examiner
error.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 1 as anticipated by
Creative Memories #3 or Creative Memories Custom Cutting System.
Accordingly, we sustain the Examiner’s rejection of claim 1 as anticipated
by Creative Memories #3 or Creative Memories Custom Cutting System.
We further sustain the Examiner’s rejection of claim 2, which falls with
claim 1.
Claim 3
Appellant contends that “[sjince it is not cutting fabric before a cover
button, there is no provision in the Creative Memories Custom Cutting
System to allow the user to have an indicia of the excess he will need in
order to secure the excess in the rear of the cover button.” Br. 11.
The Examiner correctly points out that “indicia for the excess of the
button is not actually claimed.” Ans. 4. The Examiner further states that
“Creative Memories System has various indicia on the template as seen in
the figure reproduced below (E5, E6, E7, E8) which at least some of can [be]
useful [for] things such as an amount of material in excess.” See Ans. 4; see
also id. at 5 (The Examiner’s annotated figure from Creative Memory
System). The Examiner’s findings are sound. Appellant does not apprise us
of Examiner error.
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Application 12/658,718
Moreover, Appellant does not apprise us how the distance from inner
circular side wall E4 to circular outer periphery E2, as identified in the
Examiner’s Custom Memories System’s annotated figure, would not
“perform the functional limitation” of defining and identifying an amount of
material in excess of the face material to be tucked into a rear cavity of the
button shell, as claimed. See Ans. 4; see also id. at 5 (The Examiner’s
annotated figure from Creative Memory System); Br. 18, Claims App.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting dependent claim 3 as anticipated by Creative
Memories #3 or Creative Memories Custom Cutting System. Accordingly,
we sustain the Examiner’s rejection of claim 3 as anticipated by Creative
Memories #3 or Creative Memories Custom Cutting System.
Obviousness over Creative Memories #3 or Creative Memories Custom
Cutting System
Claim 4
Appellant contends that “there is no teaching suggesting or modifying
[sic.] in the Creative Memories Custom Cutting System, which would allow
it to accomplish Appellant’s cover button without significant changes to the
Creative Memories Custom Cutting System.” Br. 15. Specifically,
Appellant contends that “[t]he indicia on Appellant’s template identifies the
size of the central aperture. The templates are then formed with an outer
periphery, which is a predetermined distance from the central aperture so as
to define the proper amount of excess fabric material required for [the
selected] button.” Id. Appellant further contends that “[t]he Creative
Memories Custom Cutting System appears to have no indicia, and no
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Application 12/658,718
relationship between the central aperture and the outer periphery for
predetermining the excess amount of cloth required.” Br. 15—16.
As an initial matter, Appellant’s contention regarding the “the
Creative Memories Custom Cutting System [being] a hit or miss system if it
was tried to be applied to fabric as opposed to paper stock,” (see Br. 16),
amounts to unsupported attorney argument, and thus, is entitled to little, if
any, weight. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)
(Arguments and conclusions unsupported by factual evidence carry no
evidentiary weight). Further, as noted above, the Examiner correctly points
out that “indicia for the excess of the button is not actually claimed.” Ans.
4. Rather, claim 4 merely recites that the “size of said central aperture
matching the size of said button shell is identified by indicia.” Br. 18,
Claims App.
Here, the Examiner states that “[ijndicia is defined as distinguishing
marks and thus any marks which are able to indicate size would read on this
limitation (which the indicia of the prior art can indicate)” and that “Creative
Memories System has various indicia on the template as seen in the figure
reproduced below (E5, E6, E7, E8) which at least some of can indicate size
of the button shell.” See Ans. 4; see also id. at 5 (The Examiner’s annotated
figure from Creative Memory System). The Examiner further states that
claim 4
seems to claim that the central aperture is the same size as the
button shell and the aperture is identified by the indicia (E8). As
the size of the central aperture is the same as that of the button
shell, E8 would thus also indicate the size of the button shell.
See Ans. 4; see also id. at 5 (The Examiner’s annotated figure from Creative
Memory System). The Examiner’s findings are sound and supported by a
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preponderance of the evidence, and the Examiner’s conclusions therefrom
are based on rational underpinnings. Appellant does not provide persuasive
evidence or argument apprising us of Examiner error.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting dependent claim 4 as unpatentable over
Creative Memories #3 or Creative Memories Custom Cutting System.
Accordingly, we sustain the Examiner’s rejection of claim 4 as unpatentable
over Creative Memories #3 or Creative Memories Custom Cutting System.
DECISION
We AFFIRM the Examiner’s decision to reject claims 1—3 as
anticipated by Creative Memories #3 or Creative Memories Custom Cutting
System.
We AFFIRM the Examiner’s decision to reject claim 4 as
unpatentable over Creative Memories #3 or Creative Memories Custom
Cutting System.
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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