Ex Parte Kushner

Patent Trial and Appeal Board

Oct 22, 2012

10852634 (P.T.A.B. Oct. 22, 2012)

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.
10/852,634 05/24/2004 Robert Gerald Kushner PC-04-003 3374
7590 10/22/2012
STUART WHITTINGTON, ESQ.
3142 N. 82nd WAY
MESA, AZ 85207
EXAMINER
NEWHOUSE, NATHAN JEFFREY
ART UNIT PAPER NUMBER
3782
MAIL DATE DELIVERY MODE
10/22/2012 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 ROBERT GERALD KUSHNER
________________

Appeal 2010-009102
Application 10/852,634
Technology Center 3700
________________

Before STEVEN D.A. McCARTHY, PHILLIP J. KAUFFMAN and
MICHELLE R. OSINSKI, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s 1
decision finally rejecting claims 25-41. Claims 1-24 are cancelled. We have 2
jurisdiction under 35 U.S.C. § 6(b)(1).3

1 The Appellant is the real party in interest.
Appeal No. 2010-009102
Application No. 10/852,634

2
We sustain the rejection under 35 U.S.C. § 103(a) of: 1
claims 25-30, 32, 33 and 37-39 as being unpatentable 2
over Ainley (US 6,728,995 B2, issued May 4, 2004) and 3
Holland (US 6,681,452 B1, issued Jan. 27, 2004); and 4
claim 31 as being unpatentable over Ainley, Holland, 5
Sakwa (US 4,336,882, issued Jun. 29, 1982) and Clover (US 6
4,288,006, issued Sep. 8, 1981); 7
We do not sustain the rejection under § 103(a) of: 8
claims 32, 33, 35 and 37-39 as being unpatentable over 9
Holland and Jo (US 6,101,689, issued Aug. 15, 2000); 10
claim 34 as being unpatentable over Holland, Jo and 11
Fagen (US 6,726,054 B2, issued Apr. 27, 2004); and 12
claims 36 and 40 as being unpatentable over Holland, Jo 13
and Sakwa; and 14
claim 41 as being unpatentable over Holland, Jo, Sakwa 15
and Clover. 16
Neither do we sustain the rejections of claims 25-41 under 35 U.S.C. § 112, 17
second paragraph, as being indefinite. 18
The Examiner also provisionally rejected claims 25-37, 40 and 41 19
under the judicially-created doctrine of obviousness-type double-patenting 20
as being unpatentable over claims 1, 7, 9, 10, 14, 17-19 and 22 of Kushner 21
792 (Application US 10/712,792, filed Nov. 12, 2003), alone or in view of 22
Ainley. (See Ans. 2; Final Office Action mailed April 25, 2008 at 3-5). 23
Kushner 792 was the subject of Appeal 2009-014364, in which the Board 24
issued an opinion on June 27, 2012 (the “Kushner 792 Decision”). Kushner 25
792 then was abandoned as of September 14, 2012. We do not reach the 26
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Application No. 10/852,634

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rejection of claims 25-37, 40 and 41 as being unpatentable over claims 1, 7, 1
9, 10, 14, 17-19 and 22 of Kushner 792, alone or in view of Ainley, in this 2
appeal. 3
Claims 25 and 32 are independent. Claim 25 is illustrative: 4
25. A holder for supporting and securing 5
objects, the holder comprising: 6
an upper arm member having a first cushion 7
disposed on a bottom side thereof and a dispenser 8
disposed on a top side thereof; 9
a lower arm member including a second 10
cushion member, the lower arm member having 11
side thereof hingedly attached to a corresponding 12
end of the upper arm member such that the upper 13
and lower arm members form a clamping body 14
having a hinge at one end and a latching 15
mechanism at an opposite end, wherein the first 16
and second cushions oppose one another between 17
the hinged end and latching end to secure objects 18
such as eyeglass temples there between when said 19
upper and lower arm members are in a closed 20
position; and 21
a clip disposed on the surface of the lower 22
arm member opposite the second cushion member, 23
the clip configured to secure the holder to a desired 24
surface; 25
wherein said dispenser is configured to hold 26
and dispense one or more separately provided 27
dispensable items for human consumption. 28
Appeal No. 2010-009102
Application No. 10/852,634

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ISSUES 1
The Appellant argues the rejections of claims 25-30, 32, 33 and 37-39 2
as being unpatentable over Ainley and Holland as a group. (See Br. 7-11). 3
Claim 25 is representative of the group. The Appellant argues the 4
patentability of claim 31 solely on the basis that the teachings of Sakwa and 5
Clover fail to remedy perceived deficiencies in the combined teachings of 6
Ainley and Holland as applied to claim 25. (See Br. 11-12). 7
Only issues and findings of fact contested by the Appellant have been 8
considered. See Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010). 9
Three issues are dispositive of the appeal: 10
First, are claims 25 and 32 indefinite because it is unclear 11
whether the claims positively recite dispensable items for 12
human consumption as elements of the claimed subject matter? 13
(See Br. 3-5). 14
Second, do the evidence and technical reasoning 15
underlying the rejection of representative claim 25 adequately 16
support the conclusion that one of ordinary skill in the art 17
would have had reason to combine the teachings of Ainley and 18
Holland in the fashion claimed, including all limitations of 19
claim 25? (See Br. 7-11). 20
Third, do the evidence and technical reasoning 21
underlying the rejection of independent claim 32 adequately 22
support the conclusion that one of ordinary skill in the art 23
would have had reason to combine the teachings of Holland and 24
Jo such that a holder including a second arm member having an 25
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Application No. 10/852,634

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end thereof pivotally attached to a corresponding end of a first 1
arm member would have been obvious? (See Br. 15). 2
3
FINDINGS OF FACT 4
The record supports the following findings of fact (“FF”) by a 5
preponderance of the evidence. 6
7
Ainley 8
1. Ainley describes a spectacles caddy 1 including a first body part 9
or lower arm member 2 and a second body part or upper arm member 3. 10
(Ainley, col. 2, ll. 46-48 and fig. 1). The body parts 2, 3 are hingedly 11
attached at a hinge end. (Ainley, col. 3, ll. 31-33 and fig. 4). 12
2. Figures 1, 3 and 4 of Ainley depict the body part 3 as having an 13
outwardly-facing circular cavity. 14
3. Ainley’s spectacles caddy 1 includes a latching arrangement 202 15
including a push button 22 having a notch 23 for engagement with a latch 16
hook 24 formed as part of the upper arm member 3. (Ainley, col. 3, ll. 24-17
30). The latching arrangement 20 is at a latching end of the body parts 2, 3 18
opposite the hinge end. (Ainley, col. 3, ll. 31-33 and fig. 4). 19
4. Ainley’s spectacles caddy 1 also includes a deformable insert 20
17 folded to define deformable parts or cushions 18, 19. The first cushion 21
19 is disposed on a bottom side of the upper arm member 3. The second 22
cushion 18 is disposed on a top side of the lower arm member 2. (Ainley, 23
col. 3, ll. 43-47 and figs. 4 and 5). The first and second cushions 19, 18 24

2 Element 20 corresponds to the latching arrangement, and is depicted (e.g.,
figs. 2, 4, 5), but is not named by element number.
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oppose one another between the hinged end and latching end of the upper 1
and lower arm members. (Ainley, fig. 4). 2
5. When the body parts 2, 3 of Ainley’s spectacles caddy 1 are 3
closed, the temples of a pair of eyeglasses may be gripped or clamped 4
between the body parts 2, 3 and held in place by the parts 18, 19 of the insert 5
17. (Ainley, col. 3, ll. 3-8; see also id., ll. 13-17). 6
6. Ainley’s spectacles caddy 1 also includes a clip 4 disposed on 7
the bottom side of the lower arm member 2 opposite the second cushion 8
member 18. (Ainley, col. 2, ll. 49-50). Ainley teaches using the clip 4 to 9
secure the spectacles caddy 1 to a vehicle visor. (Ainley, col. 2, ll. 49-55). 10
11
Holland 12
7. Holland describes a clamping apparatus 10 including a base 13
member 12 and an upper member 14. Holland describes the upper member 14
14 as being movably secured to the base member 12 via hinges 18 for 15
pivotal movement. (Holland, col. 2, l. 66 – col. 3, l. 5). A spring element 26 16
biases a forward edge portion 15a of the upper member 14 toward a forward 17
edge portion 13a of the base member 12 to retain items such as documents 18
between the upper member 14 and the base member 12. (Holland, col. 3, l. 19
66 – col. 4, l. 4). 20
8. Figure 4 of Holland depicts the hinges 18 as being positioned in 21
the middle of the upper side of the base member 12 and in the middle of the 22
lower side of the upper member 14. Holland does not describe or portray 23
any apparatus including members pivotally connected at the end of either 24
member. 25
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9. Holland’s clamping apparatus 10 includes a flexible sheet 1
dispenser 30 removably secured in a recessed portion 17 of the upper 2
member 14. The flexible sheet dispenser 30 includes a housing 40 and a 3
flexible sleeve 50 configured to dispense individual flexible sheets 62 from 4
one or more stacks 60. (Holland, col. 4, ll. 17-23). Holland does not 5
describe the flexible sheets 62 as being susceptible of being eaten. 6
7
Fagen 8
10. Fagen discloses that breath films or oral care strips such as 9
those sold under the designation “Cool Mint Listerine PocketPaks” were 10
available on the market. (Fagen, col. 1, ll. 25-28). 11
12
ANALYSIS 13
First Issue 14
The Examiner concludes that one of ordinary skill in the art could not 15
determine whether claims 25 and 32 are limited to combinations including 16
“dispensable items for human consumption.” (Ans. 3 and 4). The Examiner 17
points to dependent claims 26-28, which recite particular types of 18
dispensable items, as evidence that claim 25 is indefinite. (Ans. 11). The 19
“wherein” clauses of claims 25 and 32 which the Examiner quotes on pages 20
3 and 4 of the Answer are functional, however. That is, the two “wherein” 21
clauses recite functions which the claimed structures must be capable of 22
performing. (See Br. 3-4). Claims 26-28 further define the function recited 23
in the “wherein” clause of claim 25. None of claims 25-28 and 32 positively 24
recites dispensable items for human consumption as a structural limitation. 25
Since the Answer does not identify any ambiguity in the scope of claim 25 26
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or claim 32 which might render either claim indefinite, we do not sustain the 1
rejection of claims 25-41 under § 112, second paragraph, as being indefinite. 2
3
Second Issue 4
Holland describes a clamping apparatus 10 including a flexible sheet 5
dispenser 30 for dispensing flexible sheets 62 for use by a human consumer. 6
(FF 9). Despite this, the Appellant contends that neither Ainley nor Holland 7
describes a dispenser “configured to hold and dispense one or more 8
separately provided dispensable items for human consumption.” (See Br. 9-9
10). Although not stated expressly, the Appellant appears to interpret the 10
term “dispensable items for human consumption” as limited to dispensable 11
items which a human may eat. The Examiner appears to interpret the term 12
“dispensable items for human consumption” more broadly so as to 13
encompass the flexible sheets 62 described by Holland. (See Ans. 11). 14
The Appellant does not identify any formal definition or clear 15
disclaimer in the Specification which might resolve the interpretation of the 16
term “dispensable items for human consumption.” In fact, the Appellant 17
does not appear to have used the term “human consumption” in the 18
Specification at all other than in the claims. Neither does the Appellant 19
appear to argue that the term “dispensable items for human consumption” 20
has a specialized meaning in the pertinent art. 21
The common usage of the term “consumption” is sufficiently broad to 22
encompass 23
the utilization of economic goods in the 24
satisfaction of wants or in the process of 25
production resulting in immediate destruction (as 26
in the eating of foods), gradual wear and 27
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deterioration (as in the habitation of dwellings), no 1
change aside from natural decay (as in the 2
enjoyment of art objects), or transformation into 3
other goods (as in manufacturing). 4
(WEBSTER’S THIRD NEW INT’L DICTIONARY (G&C Merriam Co. 1971) 5
(“consumption,” def. 2)). This definition encompasses more than the mere 6
eating of a dispensable item. It is sufficiently broad to encompass the 7
ordinary use of the flexible sheets 62 described by Holland. Since the 8
Specification makes no mention of the term “human consumption,” nothing 9
in the Specification is inconsistent with the dictionary definition quoted 10
above. Therefore, Holland describes a dispenser “configured to hold and 11
dispense one or more separately provided dispensable items for human 12
consumption.” 13
Alternatively, the Examiner has reason to believe that Holland’s 14
dispenser 30 is capable of dispensing “dispensable items for human 15
consumption” in the narrow sense of items to be eaten by a human 16
consumer. Holland’s flexible sheet dispenser 30 is capable of dispensing 17
sheet-like items. (FF 9). The Examiner correctly takes notice that one of 18
ordinary skill in the art would have known of sheet like items to be taken 19
internally by a human consumer, such as the breath films or oral care strips 20
mentioned in Fagen. (See FF 10). Given the structural similarity between 21
these breath films and the flexible sheets 60 dispensed by Holland’s 22
dispenser 30, the Examiner has reason to believe that a dispenser of the type 23
described by Holland is capable of dispensing breath films or oral care 24
strips. (See Ans. 11-12; Final Office Action mailed April 25, 2008 at 6). 25
Where, as here, the Patent Office has reason to believe that a 26
functional limitation is an inherent characteristic of the prior art, the 27
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Appellant has the burden to produce evidence to rebut the Examiner’s 1
reasoning. See In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977) (quoting In 2
re Swinehart, 439 F.2d 210, 212-13 (CCPA 1971)). The Appellant does not 3
identify any evidence casting significant doubt on the Examiner’s finding 4
that Holland’s flexible sheet dispenser 30 is capable of dispensing 5
dispensable items for human consumption, even were “dispensable items for 6
human consumption” limited to items which might be eaten or otherwise 7
taken internally. In the absence of significant evidence to the contrary, we 8
adopt the Examiner’s finding. 9
The Appellant also argues that the Examiner has not articulated 10
persuasive reasoning with some rational underpinning to establish that one 11
of ordinary skill in the art would have had reason to combine the teachings 12
of Ainley and Holland in the fashion claimed in claims 25 and 32. (See Br. 13
7-8). Nevertheless, “if a technique has been used to improve one device, 14
and a person of ordinary skill in the art would recognize that it would 15
improve similar devices in the same way, using the technique is obvious 16
unless its application is beyond his or her skill.” KSR Int’l Co. v. Teleflex, 17
Inc., 550 U.S. 398, 417 (2007). 18
Ainley and Holland describe similar devices. Ainley’s spectacles 19
caddy 1 and Holland’s clamping apparatus 10 each include pivotally-20
connected members capable of gripping or clamping items between the 21
members. (Compare FF 1 and FF 5 with FF 7). In addition, upper members 22
of both Ainley’s spectacles caddy 1 and Holland’s clamping apparatus 10 23
include depressions or recessed portions, albeit arguably for different 24
purposes. (Compare FF 2 with FF 9). Holland teaches improving the 25
clamping apparatus 10 by combining the base and upper members 12, 14 for 26
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holding objects with a dispenser 30 configured to hold and dispense flexible 1
sheets 60. (See FF 9). It would have been obvious to improve Ainley’s 2
spectacles caddy 1 in the same way that Holland teaches improving the 3
clamping apparatus 10, namely, by removably inserting a dispenser into a 4
recessed portion on the upper arm member 3 of Ainley’s spectacles caddy 1. 5
Therefore, the Examiner correctly concluded that it would have been 6
obvious “to create the hinged object carrier of Ainley et al. with the surface 7
for retaining a dispenser, dispenser and movable panels of Holland in order 8
to created [sic] a multi-function clamping device.” (Ans. 5-6). The 9
Appellant suggests no persuasive reason why implementing the proposed 10
modification would have been beyond the level of ordinary skill in the art. 11
Neither does the Appellant suggest any reason why the results of the 12
proposed modification might have been unpredictable. We sustain the 13
rejection of claims 25-30, 32, 33 and 37-39 under § 103(a) as being 14
unpatentable over Ainley and Holland. Since the Appellant argues the 15
rejection of claim 31 as being unpatentable over Ainley, Holland, Sakwa and 16
Clover solely on the ground that the teachings of Sakwa and Clover fail to 17
remedy perceived deficiencies in the combined teachings of Ainley and 18
Holland, we sustain the latter rejection as well. 19
20
Third Issue 21
Claim 32 recites a clip including a “second arm member having an 22
end thereof pivotally attached to a corresponding end of the first arm 23
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member such that the upper and lower arm members3 form a clamping 1
body.” The Appellant correctly points out that Holland fails to describe a 2
personal article holder including a second or lower arm member having an 3
end pivotally attached to a corresponding end of a first or upper arm 4
member. (Br. 15). 5
The Appellant correctly argues that the term “end” as used in claim 32 6
is limited to lateral end portions of the arms. Despite the Examiner’s 7
conclusion to the contrary (see Ans. 13), the term is not sufficiently broad to 8
encompass the upper or lower side of the arms. In both the Specification 9
(e.g., Spec., paras. [0031] and [0032]) and the claims (e.g., appealed claim 10
25), the Appellant has used the term “sides” to indicate the top and bottom 11
sides of the arms. The consistent use of different terms implies an intent to 12
give the terms different meanings. See CAE Screenplates Inc. v. Heinrich 13
Fiedler GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000).4 14

3 We assume for purposes of this appeal only that the “upper and lower
arm members” recited in claim 32 are the same structures earlier recited as
the first and second arm members.

4 The Examiner alternatively interprets the term “end” as used in claim
32 as sufficiently broad to encompass “a left and a right end (with one of the
ends including the middle pivot point).” (Ans. 13). This interpretation
would encompass essentially the entire surfaces of the upper and lower
arms. In other words, the interpretation would render essentially superfluous
the limitation of claim 25 that “second arm member having an end thereof
pivotally attached to a corresponding end of the first arm member.” Since
the term “ends” may reasonably be interpreted to refer to lateral ends, the
alternative interpretation is not reasonable in this context. Stumbo v.
Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007)(our
reviewing court disfavors any claim interpretation which would render a
claim term meaningless).
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Therefore, the term “end” as used in claim 32 is limited to a lateral 1
end. Holland fails to describe a personal article holder including arms 2
pivotally connected at lateral ends. (See FF 7 and 8). The Examiner 3
articulates no persuasive reason in view of the combined teachings of 4
Holland and Jo why one of ordinary skill in the art might have modified the 5
clamping apparatus described by Holland so as to meet this limitation. We 6
do not sustain the rejection of claims 32, 33, 35 and 37-39 under § 103(a) as 7
being unpatentable over Holland and Jo. 8
Furthermore, the Examiner fails to explain how the teachings of 9
Fagen, Sakwa or Clover might have remedied this deficiency. We do not 10
sustain the rejection of claim 34 under § 103(a) as being unpatentable over 11
Holland, Jo and Fagen; the rejection of claims 36 and 40 under § 103(a) as 12
being unpatentable over Holland, Jo and Sakwa; or the rejection of claim 41 13
under § 103(a) as being unpatentable over Holland, Jo, Sakwa and Clover. 14
15
DECISION 16
We AFFIRM the Examiner’s decision rejecting claims 25-33 and 37-17
39. 18
We REVERSE the Examiner’s decision rejecting claims 34-36, 40 19
and 41. 20
No time period for taking any subsequent action in connection with 21
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008). 22
23
AFFIRMED-IN-PART 24
25
26
Klh 27