Ex Parte Kronenbeger

Patent Trial and Appeal Board

Mar 21, 2013

10910680 (P.T.A.B. Mar. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RONALD KRONENBERGER
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Appeal 2011-000257
Application 10/910,680
Technology Center 3700
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Before LINDA E. HORNER, BRETT C. MARTIN, and
BART A. GERSTENBLITH, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Ronald Kronenberger (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1-25, 28, and 29. Claims
26 and 27 are canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

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THE INVENTION
Appellant’s claimed invention relates to the “combination of a
headwear piece and an object releasably attached thereto through a tether
arrangement.” Spec. 1, ll. 5-6. Claims 1 and 19 are independent. Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. In combination:
(a) a headwear piece comprising a crown with a surface
for engaging a wearer’s head to maintain the headwear piece in
an operative position on the wearer’s head and an exposed
external surface;
(b) at least one object that has an identification thereon
that relates to at least one of: a) an event; b) a location; c) an
institution; d) a product; e) a service; f) a person; g) an animate
object; h) an inanimate object; i) a team; and j) a participant in
an event;
wherein the at least one object comprises either a
functional item specifically made to perform a clearly
identifiable and intended function independently of the
headwear piece that is not related to the headwear piece and
that can be used by a wearer to assist in the performance of a
task by a wearer or a replica of a functional item specifically
made to perform a clearly identifiable function independently of
the headwear piece that is not related to the headwear piece;
and
(c) a tether through which the at least one object is
maintained on the headwear piece,
wherein there is an identification, independent of the at
least one object and applied directly on the exposed external
surface on the headwear piece, that is coordinated with the
identification on the at least one object,
the identification on the at least one object separate from
the identification applied directly on the exposed external
surface on the headwear piece.
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Independent claim 19 is also directed to the combination of a
headwear piece and object (or replica thereof). Claim 19 calls for the object
(or replica thereof) to be “specifically designed to perform a clearly
identifiable function independently of the headwear piece that is not related
to the construction of the headwear piece.”
THE REJECTIONS
Appellant seeks review of the following rejections:
1. Claim 19 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement;
2. Claims 1, 7-9, 12, 15, 18, 19, 23, and 28 under 35 U.S.C. § 102(b) as
being anticipated by Kahl (US 2002/0108189 A1; iss. Aug. 15, 2002);
3. Claims 2, 4-6, 12, 13, 16, 28, and 29 under 35 U.S.C. § 103(a) as
being unpatentable over Kahl and Williams (US 1,163,054; iss.
Dec. 7, 1915); and
4. Claims 3, 10, 11, 14, 17, 20-22, 24, and 25 under 35 U.S.C. § 103(a)
as being unpatentable over Kahl and Keating (US 5,898,946; iss.
May 4, 1999).
ANALYSIS
Rejection 1: Claim 19 under 35 U.S.C. § 112, first paragraph
To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellant possessed the claimed
invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
The Examiner found that the limitations in claim 19 regarding the
function of the object being “not related to the construction of the headwear
piece” are not adequately supported by the original disclosure. Ans. 3-4.
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Appellant argues that these limitations are intended to distinguish the object
from “a conventional label or tag that is attached on headwear and other
apparel” which contains information “regarding the construction of the
headwear piece.” Br. 6-7. Appellant points to page 8 of the Specification
which describes that “the object 14 may be an independently useful object
made to perform a specific independent function, such as a key chain, a nail
clipper, a golf-related tool, etc.” Id. at 7 (quoting original Spec. 8, ll. 15-17).
Appellant argues that this category of objects performs a function that is not
related to the construction of the headwear piece. Id.
We agree with Appellant that the disclosure in the Specification of
exemplary objects which are made to perform at least one function that is
not related to the construction of the headwear piece is sufficient disclosure
to reasonably convey to skilled artisans that Appellant possessed the claimed
invention as of the filing date. In other words, one of ordinary skill reading
the examples provided in the original disclosure would understand that
Appellant was in possession of an invention in which the object is
specifically designed to perform a clearly identifiable function that is not
related to the construction of the headwear piece. Accordingly, we reverse
the rejection of claim 19 under 35 U.S.C. § 112, first paragraph, based on
lack of an adequate written description.
Rejection 2: Claims 1, 7-9, 12, 15, 18, 19, 23, 28
under 35 U.S.C. § 102(b)
Appellant offers arguments pertaining to all the claims subject to this
rejection and offers additional argument for dependent claim 12. Br. 8-10.
For the arguments pertaining to all of the claims, we select claim 1 as
representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). We separately
consider the additional argument pertaining to claim 12.
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Claim 1
The Examiner found that Kahl anticipates each and every element of
claim 1. Ans. 4-5. Appellant does not contest the Examiner’s findings
except as to the finding that Kahl’s hang tag 14 satisfies the claimed “object”
as called for in claim 1. Br. 9-10.
Claim 1 calls for the object to comprise either a functional item or a
replica of such “specifically made to perform a clearly identifiable and
intended function independently of the headwear piece that is not related to
the headwear piece.” We construe this limitation, under a broadest
reasonable interpretation, to call for the object to be made to perform at least
one function that is not related to the headwear piece.
The Examiner determined that Kahl’s hang tag 14 can be used to
assist in the performance of a task, i.e., teaching or educating about an event.
Ans. 5 (citing Kahl, para. [0032]). The Examiner found that this educating
function is independent of the headwear piece and is not related to the
headwear piece. Id.; see also Ans. 9 (“the tag of Kahl provides factual
information about an event or object”).
Kahl discloses a garment, such as a hat, that includes, imprinted or
embroidered thereon, a visible representation of an object from whence
came matter used in dyeing the garment and further discloses that it may be
desirable to imprint or embroider on the garment “certain event information,
e.g., an identification of an event in which the object has been used.” Kahl,
paras. [0024], [0031]-[0032]. For example, Kahl discloses that if the
garment commemorates a stock car or driver that has won a particular race,
the garment may include text identifying that race, or if the car was driven
by someone who was declared driver of the year, the garment may include
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this information imprinted thereon. Id. at para. [0032]. As such, Kahl’s
garment includes both a visible representation of an object (e.g., a stock car)
and information about the driver or race associated with the stock car. Kahl
further discloses that when the garments are ready for distribution to the
public, the garments are accompanied by a hang tag that informs the reader
that the garment was colored with a formulation that contained at least a
portion of the object and identifies the nature of the portion that was used,
e.g., the paint from the stock car. Id. at paras. [0029], [0035].
Kahl provides an example of an imprint on the hang tag which reads:
“Dyed with paint from Reggie Price’s Ford Taurus, winner of the 1999
Springfield 500.” Id. at paras. [0035], [0049]. In this example, as with the
information disclosed by Kahl to be on the garment, this hang tag includes
information about the object/nature of the portion of the object used to dye
the garment, and it also includes information about an event, i.e., that Reggie
Price won the 1999 Springfield 500 in a Ford Taurus. In another example,
Kahl describes a hang tag bearing information about the object/nature of the
portion of the object used to print on a garment, as well as information about
an event, i.e., that the Springfield University Golden Mustangs were the Big
Seven Champions of 1999. Id. at para. [0053]. As such, we agree with the
Examiner’s finding that Kahl’s hang tag is a functional item made to
perform a clearly identifiable and intended function of providing information
about an event, and that this function is independent of the headwear piece
and is not related to the headwear piece and can be used by a wearer to assist
in the performance of a task by the wearer, i.e., providing information about
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the event. Accordingly, we affirm the rejection of claims 1, 7-9, 15, 18, 19,
23, and 28 as being anticipated by Kahl.1
Claim 12
Appellant argues that Kahl does not disclose a functional item/object
designed to perform a function related to the identification on the headwear
piece. Br. 10. Kahl’s hangtag 14 is designed to perform a function (e.g.,
providing information that Reggie Price won the 1999 Springfield 500
driving a Ford Taurus) related to the identification (e.g., the embroidered
picture of Reggie Price’s Ford Taurus) on the headwear piece. Kahl, paras.
[0030] – [0035]. Accordingly, we affirm the rejection of claim 12.
Rejection 3: Claims 2, 4-6, 12, 13, 16, 28,
and 29 under 35 U.S.C. § 103(a)
Claim 2
Appellant argues that claim 2 requires “a booklet for a golf course
with pre-printed yardages for the golf course” and that Williams’s program
contains no information relating to a golf course. Br. 11. We disagree with
Appellant’s proffered claim construction. Claim 2 depends from claim 1
and recites, in relevant part, “wherein the at least one object comprises a
booklet for a golf course on which yardages are identified for the golf
course.” We agree with the Examiner (Ans. 10) that the claim language
does not require yardages for a golf course to be pre-printed on the booklet.

1 We note that to the extent the function of the object of claim 1 is
determined solely by the printed matter on the object, for the reasons
discussed infra in our analysis of claim 2, such a distinction is not one on
which patentability can be based. For example, a hang tag having a grid
printed thereon for keeping score of an athletic event is not patentably
distinguishable from the same hang tag having information printed thereon
solely related to the headwear piece.
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We further agree with the Examiner’s finding (Ans. 10) that the program of
Williams is capable of having yardages for a golf course identified therein
because it is capable of recording information therein.
We also agree with the Examiner’s determination (Ans. 10) that even
if claim 2 were read to require a booklet having yardages for a golf course
pre-printed thereon, the particular information that is printed on the booklet
is not a patentably distinct feature because the printed matter (i.e., the
yardage information) is not functionally related to the booklet, and the
booklet is not functionally related to the yardage information. See In re
Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) (affirming a rejection because an
instruction sheet in a kit is printed matter that merely teaches a new use for
an existing product and the printed matter in no way depends on the kit and
the kit does not depend on the printed matter); c.f., In re Gulack, 703 F.2d
1381, 1386-87 (Fed. Cir. 1983) (reversing a rejection because the printed
matter and the circularity of the underlying substrate were interrelated so as
to produce a new product). Accordingly, we affirm the rejection of claim 2
under 35 U.S.C. § 103(a) as being unpatentable over Kahl and Williams.
Claims 4, 5, and 13
For each of claims 4, 5, and 13, Appellant relies on arguments similar
to those asserted for patentability of claim 2. Br. 12. Appellant argues that
the claimed subject matter distinguishes over the combination of Kahl and
Williams because: (1) the program of Williams does not include information
relating to a score card for an athletic event (claim 4); (2) Williams would
not lead one of ordinary skill to modify Kahl so that the object is specifically
a golf score card (claim 5); and (3) Williams in combination with Kahl
would not render obvious an object that is part of a ticket for an event
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(claim 13). Id. In each case, Appellant bases the argument for patentability
on printed matter that is not functionally related to the substrate. For the
same reasons discussed supra with regard to claim 2, we find that the printed
matter recited in claims 4, 5, and 13 does not patentably distinguish the
claimed invention over Kahl in combination with Williams.
We further disagree with Appellant’s contention that the program of
Williams is “a blank card” with no information relating to a score card for an
event. Figure 1 of Williams shows a printed matter section Aʹ on the
program that contains a grid that could be used to keep score of a sporting
event, such as a baseball game. See Ans. 10 (describing the card of
Williams as “providing a spreadsheet having boxes” for recording
information). Accordingly, we affirm the rejection of claims 4, 5, and 13
under 35 U.S.C. § 103(a) as being unpatentable over Kahl and Williams.
Claims 6, 12, 16, 28, and 29
Appellant states that these claims, which all depend from claim 1, “are
allowable for at least the reasons advanced relative to the allowability of
claim 1.” Br. 13. Having found Appellant’s arguments as to claim 1
unpersuasive as to error in the Examiner’s rejection, we likewise affirm the
rejections of claims 6, 12, 16, 28, and 29 under 35 U.S.C. § 103(a) as being
unpatentable over Kahl and Williams.
Rejection 4: Claims 3, 10, 11, 14, 17, 20-22, 24, and 25
under 35 U.S.C. § 103(a)
Claims 3 and 25
Appellant argues that the rejection of claims 3 and 25 should be
reversed because Keating does not disclose that the object comprises a key
chain separate from the tether as claimed. Br. 13. The Examiner found that
chain 26 of Keating corresponds to the claimed “tether” and that Keating’s
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plastic packet 22 corresponds to the claimed key chain. Ans. 11. While
Keating’s plastic packet 22 may be capable of holding a key therein it is not
a “key chain” without a chain. Chain 26 cannot be both the claimed “tether”
and part of the claimed “key chain.” Thus, we disagree with the Examiner’s
finding that Keating discloses a key chain separate from a tether as called for
in claims 3 and 25.2 Accordingly, we reverse the rejection of claims 3 and
25 under 35 U.S.C. § 103(a) as being unpatentable over Kahl and Keating.
Claim 14
Claim 14 depends from claim 1 and calls for the tether to be
“designed to permanently maintain the at least one object on the headwear
piece.” The Examiner found that Keating’s tether 26 “is permanently
affixed to the headwear piece” and also found that “[l]inks (32) [of tether 26]
allow the tether to be separable from the headwear by exerting a moderate
force between the object and the headwear.” Ans. 7-8. The Examiner
explained that “the connection of the tether is considered to be permanent
until force is intentionally applied to the connection.” Ans. 8; see also Ans.
11 (“[t]he connection is permanent since the device is permanently
connected unless otherwise desired by the user.”).
Keating describes:
A chain 26 is inserted through a hole 28 in the packet 22
to releasably attach the packet 22 of markers 16 to the hat 12.
The chain 26 is the conventional type used, for example, with
key chains, having a series of connected balls 30, the last of

2 While claim 25 simply recites “wherein the at least one object comprises a
key chain,” claim 19, from which claim 25 depends, calls for “a tether
through which the at least one object is maintained on the headwear piece.”
As such, we understand claim 25 to call for the tether and the object to be
separate features of the claimed combination.
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which is insertable in an elongated link 32 having an opening
on one side.
Keating, col. 3, ll. 42-48. As such, Keating discloses a tether that is used to
releasably attach an object to the headwear piece. See Spec. 10, ll. 16-17
(distinguishing between tethers that effect a “permanent connection” versus
a “separable connection”). The Examiner’s finding that Keating’s tether is
permanently affixed to the headwear piece is not supported by a
preponderance of the evidence. Accordingly, we reverse the rejection of
claim 14 as being unpatentable over Kahl and Keating.
Claims 10, 11, 17, 20-22, and 24
Appellant states that these claims, which all depend from either claim
1 or claim 19, are “allowable for at least the reasons argued with respect
thereto.” Br. 14. Having found Appellant’s arguments as to claims 1 and
19 unpersuasive as to error in the Examiner’s rejection, we likewise affirm
the rejections of claims 10, 11, 17, 20-22, and 24 under 35 U.S.C. § 103(a)
as being unpatentable over Kahl and Keating.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1, 2, 4-13,
15-24, 28, and 29. We REVERSE the decision of the Examiner to reject
claims 3, 14, and 25.
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-IN-PART

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