Ex Parte MAIR

Patent Trial and Appeal Board

Sep 27, 2017

13273314 (P.T.A.B. Sep. 27, 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.
13/273,314 10/14/2011 Oliver MAIR 2011_1595A 9992
29673 7590 09/29/2017
STEVENS & SHOWALTER LLP
7019 CORPORATE WAY
DAYTON, OH 45459-4238
EXAMINER
COX, STEPHANIE A
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
09/29/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PTO@sspatlaw.com
ssllp@speakeasy.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OLIVER MAIR
Appeal 2017-001394
Application 13/273,3141
Technology Center 1700
Before TERRY J. OWENS, WESLEY B. DERRICK, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL2
Appellant appeals the Examiner’s Final Rejection of claims 1—40,
which constitute all the claims pending in this application. 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies “D. SWAROVSKI KG” as the real party in interest.
App. Br. 2.
2 In our Decision, we refer to the Specification filed October 14, 2011
(“Spec.”); the Final Office Action dated July 16, 2015 (“Final Act.”); the
Appeal Brief dated February 1, 2016 (“App. Br.”); the Examiner’s Answer
to the Appeal Brief dated September 7, 2016 (“Ans.”); and the Reply Brief
dated November 4, 2016 (“Reply Br.”).
Appeal 2017-001394
Application 13/273,314
The Claimed Invention
Appellant’s disclosure relates to a decorative element having two
mutually spaced substantially parallel panels having a plurality of precious
stones arranged between the panels. Spec. 2; Abstract. Claim 1 is
illustrative of the claimed subject matter on appeal and is reproduced below
from the Claims Appendix to the Appeal Brief (App. Br. 1) (key disputed
claim language italicized and bolded):
1. A decorative element comprising:
two mutually spaced substantially parallel panels,
wherein at least one of the panels is at least partially translucent
for visible light;
a plurality of precious stones arranged between the
panels; and
a position-fixing device for fixing the position of the
precious stones, the position-fixing device being arranged
between the panels, the position-fixing device having
compartments in which precisely one respective precious stone
is arranged,
wherein at least one of the panels directly adjoins the
compartments,
and wherein the compartments include walls which
extend continuously from one of the panels to the other of the
panels so as to be perpendicular to the panels.
The References
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Swain US 2,429,379 Oct. 21, 1947
Weissberg US 3,406,821 Oct. 22, 1968
Poll US 5,056,656 Oct. 15, 1991
Light Sources in Electronics, http://hyperphysics.phy-
astr.gsu.edu/hbase/ electronic/leds.html (dated Feb. 11, 2001; last
visited Sep. 10, 2012) (hereinafter “Light Sources”).
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Application 13/273,314
Cuts of Gem Stones, http://www.all-color-gem-stones.com/cuts-of-
gem-stones.html (dated Jan. 8, 2008; last visited Sep. 10, 2012)
(hereinafter “Cut of Gem Stones”).
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1—11, 14, 15, 20-25, and 31—40 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Weissberg in view of Poll
(“Rejection 1”). Ans. 3; Final Act. 3.
2. Claims 12, 13, and 16—19 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Weissberg and Poll as applied to claims 1 and 2
above, and further in view of Cut of Gem Stones (“Rejection 2”). Ans. 7;
Final Act. 7.
3. Claims 26—30 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Weissberg in view of Poll as applied to claim 1 above,
and further in view of Swain and Fight Sources (“Rejection 3”). Ans. 8;
Final Act. 7-8.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we are unpersuaded of
reversible error and, therefore, affirm the Examiner’s rejections for the
reasons set forth in the Answer to the Appeal Brief and Final Office Action.
See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the
Board’s practice to require an applicant to identify the alleged error in the
examiner’s rejections,” citing Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential)).
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Application 13/273,314
We highlight and address specific findings and arguments below for
emphasis.
Rejection 1
Appellant presents substantive argument for the patentability of
independent claims 1 and 36, but does not present any additional substantive
argument for the patentability of dependent claims 2—11, 14, 15, 20-25, 31—
35, 37, and 38. App. Br. 3, 8, 12. The arguments as to claims 1 and 36 do
not differ in substance. We select claim 1 as representative and claims 2—11,
14, 15, 20—25, and 31—38 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv). Appellant presents further argument as to claims 39 and
40, as a group. Claim 40 is representative as to the further argument.
Claims 1—11, 14, 15, 20-25, and 31—38
The Examiner determines that the combination of Weissberg and Poll
suggests a decorative element satisfying all of the limitations of claim 1 and
thus, would have rendered the claim obvious. Ans. 3—5.
The Examiner finds that Weissberg teaches the majority of the
limitations of claim 1, but that the reference fails to teach the compartments
having walls extending continuously from one of the panels to the other.
Ans. 3^4 (citing Weissberg, Figs. 1—6, col. 1,11. 45—50, claim 1). The
Examiner, however, relies on Poll for disclosing this missing limitation. Id.
at 4.
In particular, the Examiner finds Poll teaches a decorative element to
house precious stones having storage strips or compartments that comprise
“holding lips” which are adhered to a second panel and that the
compartments have side walls that extend from the bottom panel to the top
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panel. Ans. 4 (citing Poll, col. 2,11. 44—55); see also Poll, col. 5,11. 40-45,
Fig. 9.
Based on the above findings, the Examiner concludes that
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to include such walls for
the compartments in Weissberg as [Poll] teaches that such
feature adds more protection for the stone [and] . . . [a]dding
such known feature to the decorative device of Weissberg
would have yielded th[e] predictable result of effectively
surrounding each stone to protect from mechanical stress, as
well as dust and moisture from storage ....
Ans. 4—5 (citing Poll, col. 2,11. 44—55, Fig. 9).
Appellant argues that the Examiner’s rejection should be reversed
because the combination of Weissberg and Poll does not disclose or suggest
(1) “two mutually spaced substantially parallel panels, and a position-fixing
device arranged between the panels” and (2) a position-fixing device
“wherein the compartments include walls which extend continuously from
one of the panels to the other of the panels so as to be perpendicular to the
panels,” as required by claim 1. App. Br. 4.
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection. On the record before us, we find that a
preponderance of the evidence and sound technical reasoning support the
Examiner’s analysis and determination that the combination of Weissberg
and Poll suggests all of the limitations of claim 1 and would have rendered
the claim obvious. Weissberg, Figs. 1—6, col. 1,11. 45—50, claim 1; Poll, col.
2,11. 44—55, col. 5,11. 40-45, Fig. 9.
We do not find Appellant’s argument regarding the “two mutually
spaced substantially parallel panels” and “position-fixing device arranged
between the panels” limitations of claim 1 persuasive of reversible error for
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the well-stated reasons provided by the Examiner at pages 3^4 and 10-11 of
the Answer. In particular, we concur with the Examiner’s finding (Ans. 10)
that Weissberg discloses a lid 2 that is partially translucent to visible light,
which corresponds to one of the claimed panels, and a container bottom part
1, which corresponds to the other claimed parallel panel. Weissberg, Figs. 1,
4, col. 2,11. 9-10, 18-22, 23-25.
As the Examiner further finds (Ans. 10), Weissberg also discloses
compartments (recesses 3) that hold the gems in place and directly adjoin
one of the panels, which corresponds to the “position-fixing device arranged
between the panels” recited in the claim. Weissberg, Figs. 3—6, col. 2,11. 9—
12, 20-23.
We do not find Appellant’s argument regarding the limitation
“wherein the compartments include walls which extend continuously from
one of the panels to the other of the panels so as to be perpendicular to the
panels” persuasive because it is premised on what Appellant contends the
Weissberg and Poll references teach individually, and not on the combined
teachings of the references as a whole and what the combined teachings
would have suggested to one of ordinary skill in the art. One cannot show
non-obviousness by attacking references individually where the rejection is
based on a combination of references. See In re Keller, 642 F.2d 413, 425
(CCPA 1981).
Contrary to what Appellant’s argument suggests, the Examiner relies
on Poll for teaching that the walls extend continuously from the first panel to
the second panel, and that the walls can be perpendicular to the panels. As
the Examiner finds (Ans. 4, 12), Poll teaches a decorative element to house
precious stones having storage strips (i.e., “compartments”) that comprise
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holding lips which are adhered to a second panel, that the compartments
have side walls that extend from the bottom panel to the top panel, and that
the walls can be perpendicular. Poll, col. 2,11. 44—55, col. 5,11. 40-45, Fig.
9.
Appellant’s argument reveals no reversible error in the Examiner’s
factual findings and analysis in this regard.
Moreover, the Examiner provides a reasonable basis and identifies a
preponderance of the evidence in the record to evince why one of ordinary
skill would have combined the teachings of the references to arrive at
Appellant’s claimed invention. Ans. 4—5, 13. See also KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”).
Appellant fails to direct us to sufficient evidence or provide an
adequate technical explanation to establish why the Examiner’s articulated
reasoning for combining the teachings of the prior art to arrive at the claimed
invention lacks a rational underpinning or is otherwise based on some other
reversible error.
Appellant’s disagreement with the Examiner’s reasoning for
combining the references, without more, is insufficient to show reversible
error. KSR, 550 U.S. at 420 (explaining that any need or problem known in
the art can provide a reason for combining the elements in the manner
claimed).
Appellant’s assertions that “one of ordinary skill in the art would not
have modified Weissberg to include the walls of [Poll] based on the
teaching in [Poll] that the gems can be protected by a cover” (App. Br. 7)
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and “a person having ordinary skill in the art would clearly not have
modified the Weissberg reference in view of the [Poll] reference in such a
manner” {id. at 8) are not persuasive of reversible error because they are
conclusory and Appellant does not provide an adequate technical
explanation or direct us to sufficient evidence in the record to support them.
Attorney argument is not evidence. In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984).
We, therefore, sustain the Examiner’s determination that the
combination of Weissberg and Poll suggests all of the limitations of claims
1-11, 14, 15,20-25, and 31-38.
Claims 39 and 40
Representative claim 40 depends from claim 1 and recites:
A decorative element as set forth in claim 1, wherein the
position-fixing device and the panels are discrete structural
components.
App. Br. 23 (Claims App’x).
The Examiner determines that the combination of Weissberg and Poll
suggests all of the limitations of claim 40 and would have rendered claim 40
obvious. Ans. 3—5, 7, 10.
Appellant argues that the Examiner’s rejection of claim 40 should be
reversed for reasons similar to those previously presented in response to the
Examiner’s rejection of claim 1. App. Br. 13. In particular, Appellant
argues that the combination of Weissberg and Poll does not teach the
“wherein the position-fixing device and the panels are discrete structural
components” limitation of claim 40 because Weissberg discloses a panel and
a position-fixing device which form one single body and Poll discloses a
position-fixing device which includes a removable cover. Id. at 13.
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We do not find Appellant’s argument persuasive of reversible error in
the Examiner’s rejection for principally the same reasons previously
discussed above regarding claim 1. Contrary to what Appellant’s argument
implies, the cited art does in fact suggest “two mutually spaced substantially
parallel panels, and a position-fixing device arranged between the panels,”
as claimed.
Moreover, we find that the preponderance of the evidence and sound
technical reasoning support the Examiner’s analysis and determination that
the combination of Weissberg and Poll suggests all of the limitations of
claim 40, including “wherein the position-fixing device and the panels are
discrete structural components,” and would have rendered the claim obvious.
Weissberg, Figs. 1—6, col. 1,11. 45—50, claim 1; Poll, col. 2,11. 44—55, col. 5,
11. 40-45, Fig. 9.
In particular, we are unpersuaded of error in the Examiner’s finding
that the combination of Weissberg and Poll suggests that the prior art
elements which correspond to the claimed panels and position-fixing device
are, indeed, discrete structural components. As the Examiner finds (Ans. 7,
10) Weissberg teaches a container comprising separate, discrete structural
panels insofar as the lid 2 (i.e., one panel) can slide out of the container
bottom part 1 {i.e., the other panel) and block the entrances of the recesses 3
{i.e., position-fixing device). Weissberg, col. 2,11. 9—10, 18—25, Figs. 1, 4,
5. As the Examiner further finds (Ans. 7, 10), Poll teaches that the disclosed
storage strips 1 are discrete structural components in that they too would be
separate from the panels in the combined structure. Poll, col. 2,11. 44—55,
col. 3,11. 19-21, Fig. 9.
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Appellant’s argument at page 14 of the Appeal Brief regarding the In
re Dulberg case does not indicate reversible error in the Examiner’s analysis
and factual findings in this regard. Contrary to what Appellant’s argument
seems to suggest, the cited portion of the In re Dulberg decision does lend
some support to the Examiner’s conclusion (Ans. 7) that it would have been
obvious to one of ordinary skill to make the position-fixing device a discrete
structural component. See In re Dulberg, 289 F.2d 522, 523 (CCPA 1961)
(holding that it would have been obvious to make a cap a separate,
“manually removable” component of a structure for holding lipsticks).
We are unpersuaded of reversible error and, therefore, sustain the
Examiner’s determination that the combination of Weissberg and Poll
suggests all of the limitations of claims 39 and 40.
Accordingly, we affirm the Examiner’s rejection of claims 1—11, 14,
15, 20-25, and 31—40 under 35 U.S.C. § 103(a) as obvious over the
combination of Weissberg and Poll.
Rejections 2 and 3
Appellant does not present any additional substantive arguments in
response to the Examiner’s Rejections 2 and 3, stated above. Rather,
Appellant relies on the same arguments presented above in response to the
Examiner’s Rejection 1 regarding the combination of Weissberg and Poll
and the patentability of claim 1. See App. Br. 15.
Accordingly, based on the findings and technical reasoning provided
by the Examiner and for the same reasons discussed above for affirming
Rejection 1, we affirm the Examiner’s Rejections 2 and 3.
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DECISION
The Examiner’s rejections of claims 1—40 are affirmed.
It is ordered that the Examiner’s decision is affirmed.
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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