Ex Parte Kronenberger

Patent Trial and Appeal Board

Jul 30, 2013

11253037 (P.T.A.B. Jul. 30, 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.
11/253,037 10/18/2005 Ronald Kronenberger 00130P0410US 1843
7590 07/31/2013
WOOD, PHILLIPS, KATZ, CLARK & MORTIMER
Citigroup Center
Suite 3800
500 West Madison Street
Chicago, IL 60661-2511
EXAMINER
HADEN, SALLY CLINE
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
07/31/2013 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 RONALD KRONENBERGER
____________________

Appeal 2011-007289
Application 11/253,037
Technology Center 3700
____________________

Before: MICHAEL C. ASTORINO, HYUN J. JUNG, and
ADAM V. FLOYD, Administrative Patent Judges.

JUNG, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Ronald Kronenberger (Appellant) appeals under 35 U.S.C. § 134 from
an Examiner’s decision to reject claims 1, 3, 4, 6-9, 12, 13, 15-17, and 40.
App. Br. 2. Claims 2, 5, 10, 11, 14, and 18-39 have been cancelled. Id. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
The claims are related to an “adornment that is highlighted by fraying
of a material.” Spec. 1:5-6. Claims 1 and 17 are independent. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An adorned headwear piece having an
exposed surface and comprising:
a first layer defining a majority of the
exposed surface; and
adornment that is exposed for viewing,
the adornment comprising a first edge with a
length and bounding a predetermined shape, the
predetermined shape having an outline that is
defined at least partially by the first layer,
the first edge defined by a material that has a
tendency to fray at the first edge,
the first layer altered at a location spaced
from the first edge and along a substantial extent
of the length of the first edge so that fraying at the
first edge is controlled to within a predetermined
distance from the first edge,
the first edge treated to produce visible
fraying at the first edge along a substantial extent
of the length of the first edge,
wherein the first edge surrounds a space at
the exposed surface corresponding to the
predetermined shape,
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wherein the visible fraying resides at least
partially within the space surrounded by the first
edge,
the fraying defined by strands that project
away from the location at which the first layer is
altered into the space over a substantial portion of
the length of the first edge,
the first edge extending substantially fully
around and defining the outline of the
predetermined shape that is at least one of: a) a
word; b) a logo; c) a letter; d) a depiction of i) a
person; ii) a place; or iii) an identifiable and
recognizable object; and e) a depiction of an object
associated with at least one of: i) a person; ii) a
place; and iii) an event,
wherein the adornment comprises a second
edge coextensive with the first edge and spaced
therefrom a substantially uniform equal distance
over a substantial portion of the length of the first
edge,
the second edge treated to produce visible
fraying at the second edge along a substantial
extent of the predetermined shape, the fraying at
the second edge defined by strands that project
generally toward the first edge.

REJECTIONS
The Appellant seeks our review of:
the rejection of claims 1, 3, 4, 6-9, 12, 13, 15-17, and 40 under 35
U.S.C. § 112, second paragraph, as indefinite because of the term
“adornment”;
the rejection of claims 1, 3, 4, 6, 8, 9, 12, 13, 15, 16, and 40 under 35
U.S.C. § 112, second paragraph, as indefinite because of the phrase “altered
into the space over a substantial portion of the length of the first edge”; and
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the rejection of claims 1, 3, 4, 6-9, 12, 13, 15-17, and 40 under 35
U.S.C. § 103(a) as unpatentable over Kim Deneault, Raggedy Reverse
Applique (Dec. 16, 2004), http://www.hgtv.com/crafting/raggedy-reverse-
applique/index.html (last visited Apr. 16, 2010) (hereinafter “Deneault”).

ANALYSIS
Indefiniteness
The Examiner finds that the term “adornment” renders independent
claims 1 and 17 and their dependent claims indefinite. Ans. 3-4. The
Examiner questions what the adornment is and how the adornment differs
from the recited “space.” Id.
The Appellant argues that “the first edge, which is expressly claimed
as making up part of the adornment, is characterized as surrounding a
‘space’” and that the “space is an actively claimed element.” App. Br. 8.
The Appellant contends that “whether or not it is considered to be part of the
claimed adornment, or another separate component, is of no significance in
terms of whether the claim is definite.” Id.
The Examiner replies that “it remains unclear to what the adornment
is referring” because “the adornment is in addition to the first layer, and
separate from the first layer . . . , it cannot be determined from Appellant’s
disclosure what the adornment is.” Ans. 7-8.
The Appellant’s arguments are persuasive. The language of a claim
satisfies § 112, second paragraph, if “one skilled in the art would understand
the bounds of the claim when read in light of the specification.” Exxon
Research & Eng’g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir.
2001). A claim is indefinite if the language of the claim is susceptible of no
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reasonable interpretation. Id. Claim 1 recites an “adorned headwear piece
. . . comprising: a first layer . . . and adornment . . . comprising a first edge . .
. wherein the first edge surrounds a space,” and claim 17 recites an “adorned
headwear piece . . . comprising: a first layer . . . and adornment . . .
comprising a first edge on the first layer . . . the first edge . . . around a
space.” App. Br., Claims App’x. Claims 1 and 17 thus recite adornment
that comprises a first edge that surrounds or is around a space. Furthermore,
page 9, lines 11-13, of the Specification states that “as shown schematically
in Fig. 2, the edge 14 and/or the edge 18 define all or part of adornment 22 at
the exposed surface 12 of the article 10.”
Thus, because one skilled in the art would understand the bounds of
claims 1 and 17 when read in light of the Specification, we do not sustain the
Examiner’s rejection of claims 1 and 17 and their dependent claims 3, 4, 6-9,
12, 13, 15, 16, and 40 under 35 U.S.C. § 112, second paragraph, as indefinite
because of the term “adornment”.
The Examiner also rejects independent claim 1 and its dependent
claims 3, 4, 6, 8, 9, 12, 13, 15, 16, and 40 under 35 U.S.C. § 112, second
paragraph, as indefinite because the Examiner finds that the phrase “altered
into the space over a substantial portion of the length of the first edge”
renders independent claim 1 and its dependent claims indefinite. Ans. 4. In
particular, the Examiner states that “[b]y Appellant’s disclosure, it appears
Appellant intends ‘altered’ to mean ‘sewn.’” Id. The Examiner questions
“how is the first layer sewn into the space” and questions whether the
Appellant “intend[s] to claim the first layer is frayed into the space.” Id.
Thus, the Examiner states that “[f]or the purpose of examination, ‘altered’
will be treated as ‘sewn.’” Id.
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The Appellant argues that the phrase “‘at which the first layer is
altered’ is a characterization of the ‘location’” and that the “strands are not
altered, but project away from the location ‘into the space’.” App. Br. 8.
The Appellant also states that the claim “might be clarified by including
commas as . . . underlined: ‘…the fraying defined by strands that project
away from the location, at which the first layer is altered, into the space over
a substantial portion of the length of the first edge.’” Id.; see also Ans. 8.
The Appellant further states that “[i]t appears that the Examiner’s
interpretation of this language would not have any effect upon the claim
rejections made in the Final Action.” Id. However, the Examiner questions
whether the first layer is sewn into a space or if the Appellant intended that
the first layer is frayed into the space. Ans. 4. The Examiner states that
“[f]or the purpose of examination, ‘altered’ will be treated as ‘sewn.’”
Ans. 4. Thus, the Examiner interprets claim 1 as requiring the first layer to
be altered or sewn into a space and does not interpret claim 1 as requiring
either that the first layer is frayed into a space or that strands project into a
space, as clarified by the Appellant.
The Appellant’s argument also do not challenge the Examiner’s
interpretation as being inconsistent with what one skilled in the art would
understand when reading claim 1 in light of the Specification. See App.
Br. 8. Furthermore, Figures 11 and 12 and page 14, lines 6-14 of the
Specification, which describe these figures, show and describe a line of
stitching between edges 14 and 18 and that a space may remain detectable
between strands associated with the spaced edges 14 and 18. Thus, the
Examiner’s interpretation of a first layer into a space is not inconsistent with
the Specification.
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Thus, in view of the Examiner’s interpretation and the Appellant’s
different interpretation of the phrase “the fraying defined by strands that
project away from the location at which the first layer is altered into the
space over a substantial portion of the length of the first edge,” we sustain
the Examiner’s rejection of claim 1 and its dependent claims 3, 4, 6, 8, 9, 12,
13, 15, 16, and 40 under 35 U.S.C. § 112, second paragraph, as indefinite.
Obviousness
Our analysis of claim 1 and its dependent claims 3, 4, 6, 8, 9, 12, 13,
15, 16, and 40 indicates that speculation needs to be made as to the meaning
of the terms employed and assumptions as to the scope of the claims. A
rejection under 35 U.S.C. § 103 should not be based on speculation and
assumption. See In re Steele, 305 F.2d 859, 862 (CCPA 1962).
Accordingly, the Examiner’s rejection under 35 U.S.C. § 103(a) of these
claims is not sustained.
For independent claim 17, the Examiner states that “the modified
Deneault invention discloses the invention substantially as claimed, as
shown in the claim rejections [of claims 1, 3, 4, 6-9, 12, 13, 15, 16, and 40].”
Ans. 7. The Examiner finds that “Deneault discloses the invention
substantially as claimed” and that “Deneault does not expressly disclose a
second edge.” Ans. 4, 5. The Examiner states that “in order to provide a
second edge, Deneault would need only provide an additional traditional
applique on the reverse applique (such as on the t-shirt depicted)” and
concludes that “[i]t would have been obvious . . . to have provided a second
edge coextensive with the first edge and spaced therefrom a substantially
uniform equal distance over a substantial portion of the length of the first
edge and treating it to produce visible fraying along a substantial extent and
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the fraying defined by strands that project generally toward the first edge for
the purpose of aesthetics, using up scrap fabrics, or providing an additional
layer of insulation.” Id. at 5-6. The Examiner further finds that “the
modified Deneault invention discloses strands on the first edge contact and
intermingle with strands on the second edge over a substantial length of the
first edge” and that “the modified Deneault invention discloses the fraying
on the edges is intermingled over a substantial length of the first edge.” Id.
at 6, 7.
The Appellant argues that “[c]laim 17 further distinguishes over
Deneault by characterizing the strands on the first and second edges as
projecting towards each other.” App. Br. 11. The Examiner responds that
“[f]rayed edges and fringes have strands that naturally intermingle, and
having fraying at a predetermined length is an obvious aesthetic
modification.” Ans. 9. The Appellant further argues that “the intermingling
that is referenced involves strands projecting towards each other from
spaced edges” and that the “Examiner has not identified where such
interaction of strands occurs in the prior art to support this position.” Reply
Br. 2.
The Appellant’s arguments are persuasive. The Examiner finds
straying but does not find strands projecting towards each other in Deneault.
See Ans. 5, 6, and 7. Instead, the Examiner proposes modifying Deneault to
provide “a second edge coextensive with the first edge and spaced therefrom
a substantially uniform equal distance . . . and treating it to produce visible
fraying along a substantial extent and the fraying defined by strands that
project generally toward the first edge for the purpose of aesthetics, using up
scrap fabrics, or providing an additional layer of insulation.” Ans. 5-6.
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However, the Examiner’s rationale does not articulate sufficient reasoning
with some rational underpinning to support providing a second edge as
required by claim 17 to result in strands projecting towards each other.
“[R]ejections 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.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). The
Examiner’s articulated reason of “aesthetics, using up scrap fabrics, or
providing an additional layer of insulation” does not adequately explain why
a person of ordinary skill in the art would have been led to provide a second
edge coextensive with and spaced a substantially uniform equal distance
from a first edge and treated to produce visible fraying defined by strands
that project generally toward the first edge.
Thus, we do not sustain the Examiner’s rejection of claim 17 or its
dependent claim 7 under 35 U.S.C. § 103(a) as unpatentable over Deneault.

DECISION
The Examiner’s rejection of claims 1, 3, 4, 6, 8, 9, 12, 13, 15, 16, and
40 under 35 U.S.C. § 112, second paragraph, as indefinite is affirmed.
The Examiner’s rejection of claims 7 and 17 under 35 U.S.C. § 112,
second paragraph, as indefinite is reversed.
The Examiner’s rejection of claims 1, 3, 4, 6-9, 12, 13, 15-17, and 40
under 35 U.S.C. § 103(a) as unpatentable over Deneault is reversed.

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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-IN-PART

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