Ex parte Pileggi

Board of Patent Appeals and Interferences

May 12, 1998

08089375 (B.P.A.I. May. 12, 1998)

Application for patent filed July 12, 1993. According to1
appellant, this application is a continuation of Application
07/818,081, filed January 8, 1992, now U.S. Patent No. 5,239,707,
issued August 31, 1993, which is a continuation-in-part of
Application 07/774,796, filed October 10, 1991, now abandoned,
which is a continuation-in-part of Application 07/724,835, filed
July 2, 1991, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 34
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte VINCENT J. PILEGGI
__________
Appeal No. 97-0454
Application No. 08/089,3751
__________
ON BRIEF
__________
Before CALVERT, ABRAMS and NASE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner finally
rejecting claims 5, 6, 10 and 11, which constitute all of the
claims remaining of record in the application.
Appeal No. 97-0454
Application No. 08/089,375
2
The appellant's invention is directed to an apparatus for
restraining a necktie. The subject matter before us on appeal is
illustrated by reference to claim 5, which has been reproduced in
an appendix to the Appeal Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Smith et al. (Smith) 4,324,004 Apr. 13, 1982
Jones 5,095,546 Mar. 17, 1992
(filed Feb. 1, 1990)
THE REJECTIONS
According to the Examiner’s Answer, the following rejections
stand:
Claims 5, 6, 10 and 11 under 35 U.S.C. § 103 as being
unpatentable over Jones in view of Smith.
Claims 5, 6, 10 and 11 under the judicially created doctrine
of obviousness-type double patenting as being unpatentable
over Jones in view of Smith and claims 1, 3, 6 and 7 of U.S.
Patent No. 5,239,707.
The rejections are explained in the Examiner's Answer. The
opposing viewpoints of the appellant are set forth in the Appeal
Brief.
Appeal No. 97-0454
Application No. 08/089,375
3
OPINION
The Rejection Under Section 103
The test for obviousness is what the combined teachings of
the prior art would have suggested to one of ordinary skill in
the art. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). In establishing a prima facie case of obviousness
under 35 U.S.C. § 103, it is incumbent upon the examiner to
provide a reason why one of ordinary skill in the art would have
been led to modify a prior art reference or to combine reference
teachings to arrive at the claimed invention. See Ex parte
Clapp, 227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985). To this
end, the requisite motivation must stem from some teaching,
suggestion or inference in the prior art as a whole or from the
knowledge generally available to one of ordinary skill in the art
and not from the appellant's disclosure. See, for example,
Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5
USPQ2d 1434, 1052 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
Independent claim 5 is directed to a self-restraining
necktie which comprises, inter alia, a vertical member attached
to the rear of the outwardly facing section (the front) of the
tie and a horizontal member having a buttonhole therein slidably
secured to the vertical member. The claim requires that the
Appeal No. 97-0454
Application No. 08/089,375
This is explained in column 1 of the Smith reference,2
applied by the examiner against the claims.
4
vertical and horizontal members be “formed from a sheet of
stiffened cloth” made by bonding a sheet of the original tie
material to a “fusion cloth.” The purpose of utilizing stiffened
cloth is to overcome a problem in the art by improving the
sliding interface between the vertical and the horizontal
members, thereby improving the ability of the necktie to
automatically adjust to increases and decreases in slack when the
wearer moves (specification, pages 14-16). “Fusion cloth” is a
material used as a backing for shirt collars and the like to
eliminate the development of wrinkles, bulges or other
imperfections which would detract from the appearance of the
garment.2
It is the examiner’s position that Jones discloses all of
the components of the tie recited in claim 5, except for making
the horizontal and vertical members of a stiffened cloth. For
this, the examiner looks to Smith, which discloses the use of
“fusion cloth” in shirt collars. The examiner concludes that it
would have been obvious to one of ordinary skill in the art to
make the two members of Jones out of fusion cloth “where a crisp
look and a long wearing accessory is desired” (Answer, page 6).
Appeal No. 97-0454
Application No. 08/089,375
5
We do not agree. Jones discloses exactly the type of tie
restraining device over which the appellant believes his
invention to be an improvement, but there is no recognition in
Jones of the problem solved by the appellant’s invention. While
the secondary reference teaches the use of stiffened cloth, it is
not for use in a necktie or in an article of apparel in which
there is a requirement for one member to slide upon another, nor
is it for the purpose of facilitating sliding action. The
purpose of the stiffened cloth in Smith is to improve the
appearance of the outer layer of a garment by reducing the
tendency of the outer layer to wrinkle or bulge (column 1). The
horizontal and vertical members recited in claim 5 are on the
back side of the necktie and are not the outer layers of a
garment. Thus, from our perspective, one of ordinary skill in
the art would not have found suggestion in the teachings of Smith
to make the restraining members of a stiffened cloth such as the
fusion cloth used as a backing for shirt collars.
It is our view that the combined teachings of Jones and
Smith fail to establish a prima facie case of obviousness with
respect to the subject matter recited in claim 5. We therefore
will not sustain this rejection of claim 5 or, it follows, of
claims 10 and 11, which depend therefrom.
Appeal No. 97-0454
Application No. 08/089,375
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The rejection of independent claim 6 also will not be
sustained, based upon the same reasoning.
We note in passing that in view of the reasoning set forth
above, we need not address the examiner’s allegation that the
claims contain product-by-process limitations, which add no
patentable distinction to the claims.
The Double Patenting Rejection
The presence of this rejection in the Examiner’s Answer is a
mystery to us. It was made in the first office action (Paper No.
5), to which the appellant responded by filing a terminal
disclaimer (Paper No. 6). This was duly noted on the face of the
file wrapper, and the examiner stated in the final rejection
(Paper No. 15) that the terminal disclaimer overcame the double
patenting rejection. However, the rejection was repeated in the
very paper in which its success was acknowledged, as well as in
the Examiner’s Answer, and thus its status is not absolutely
clear.
It would appear that the appellant believes this rejection
has been overcome. However, to insure that the matter is
settled, we shall take the initiative of not sustaining the
double patenting rejection, based upon the record before us.
Appeal No. 97-0454
Application No. 08/089,375
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SUMMARY
The decision of the examiner is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge)
)
)
)
NEAL E. ABRAMS ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
JEFFREY V. NASE )
Administrative Patent Judge)
Appeal No. 97-0454
Application No. 08/089,375
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