12223037 (P.T.A.B. Jul. 21, 2014)

Ex Parte Maier-Hunke

Patent Trial and Appeal BoardJul 21, 2014

12223037 (P.T.A.B. Jul. 21, 2014)

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. 12/223,037 03/20/2009 Horst-Werner Maier-Hunke 407-419 4698 7590 07/21/2014 Mark P. Stone Attorney at Law 400 Columbus Avenue Valhalla, NY 10595 EXAMINER KIM, SHIN H ART UNIT PAPER NUMBER 3638 MAIL DATE DELIVERY MODE 07/21/2014 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 HORST-WERNER MAIER-HUNKE ____________ Appeal 2012-006185 Application 12/223,0371 Technology Center 3600 ____________ Before MICHAEL C. ASTORINO, BART A. GERSTENBLITH, and KEVIN W. CHERRY, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1–20. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. Claimed Subject Matter Claim 1, the sole independent claim, is representative of the subject matter on appeal and is reproduced below with added emphasis. 1 According to the Appellant, “‘Durable’ Hunke & Jochheim GmbH u. Co. KG, a limited partnership organized under the laws of Germany, . . . is the real party in interest.” App. Br. 2. Appeal 2012-006185 Application 12/223,037 2 1. Name badge of transparent plastic with a front part (1) and a rear part (2) joined to the said front part (1) by a first spring- loaded yoke (3), as well as with at least one retaining ridge (5), protruding in the intervening space between the front part (1) and the rear part (2) and joined to the front part (1) or rear part (2) by a second yoke (4), for a cardboard insert which can be introduced into the gap formed by the retaining ridge (5) and the front part (1) of the badge from the side edges of the badge, wherein both the front part (1) and also the retaining ridge (5) and the front part (1) or rear part (2) facing it contact one another due to a spring action from the yokes (3, 4), wherein said name badge is formed integrally as an injection moulded part such that at least one of said first and second yokes is sufficiently resilient to bias said front and rear parts towards each other. Rejections Claims 1, 2, 4–6, 9, 11, 13, and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable over Maloney (US 4,869,004, iss. Sept. 26, 1989) and Florjancic (US 6,089,289, iss. July 18, 2000). Claims 3, 10, 12, and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable over Maloney, Florjancic, and Ohman (US 6,811,736 B1, iss. Nov. 2, 2004). Claims 7 and 16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Maloney, Florjancic, and Carmen (US 4,000,570, iss. Jan. 4, 1977). Claims 8, 18, and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Maloney, Florjancic, and Burgess (US 4,065,863, iss. Jan. 3, 1978). Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over Maloney, Florjancic, Ohman, and Carmen. Appeal 2012-006185 Application 12/223,037 3 Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over Maloney, Florjancic, Ohman, and Burgess. ANALYSIS The Appellant argues the combined teachings of Maloney and Florjancic, proffered by the Examiner, would not have rendered obvious the subject matter of claim 1. See App. Br. 6, 9–11. In response to the Appellant’s argument, the Examiner quotes the Manual of Patent Examining Procedure (MPEP), which includes citations to In re Fessmann and In re Marosi concerning product-by-process claims. Ans. 11–12. The Appellant understands the Examiner’s use of the quotation from the MPEP to be “that independent claim 1 is a ‘product-by-process’ claim, and that the Examiner has less of a burden to establish obviousness.” Reply Br. 2. The Appellant disagrees with the applicability of the Examiner’s suggestion for claim 1. Id. We agree with the Appellant. Claim 1 recites “wherein said name badge is formed integrally as an injection moulded part such that at least one of said first and second yokes is sufficiently resilient to bias said front and rear parts towards each other.” App. Br., Claims App’x (emphasis added). This limitation imparts a structural characteristic to the name badge. The Examiner’s rejection lacks supporting evidence and/or technical reasoning corresponding to that limitation of claim 1, i.e., a name badge that is “formed integrally as an injection moulded part” including the structural characteristic “that at least one of said first and second yokes is sufficiently resilient to bias said front and rear parts towards each other.” See App. Br. 9–11. Appeal 2012-006185 Application 12/223,037 4 The Examiner finds Maloney discloses a name badge formed integrally, but not as an injection molded part. Id. at 5. The Examiner finds Florjancic discloses a holder formed as an injection molded part. Id. at 5, 11. Returning to Maloney, the Examiner finds Maloney discloses a name badge having a front part (11), a rear part (12), a retaining ridge (13), a first spring loaded yoke (14), and a second yoke (15), “such that at least one of the said first and second yokes [14, 15] is sufficiently resilient to bias the front [11] and rear [12] parts towards each other.” Id. at 5. However, Maloney and Florjancic, by themselves or in combination, fail to teach the structural characteristic of the claimed name badge. Thus, the Examiner’s rejection of claim 1 is not sustained. The remaining rejections of claims 2–20, based on Maloney and Florjancic alone or in combination with Ohman, Carmen, Burgess, or Ohman and Carmen, rely on the same error discussed above. As such, the Examiner’s rejections of claims 2–20 are not sustained. DECISION We REVERSE the rejections of claims 1–20. REVERSED Klh