Ex Parte Rosendall

Patent Trial and Appeal Board

Nov 13, 2014

11697745 (P.T.A.B. Nov. 13, 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.
11/697,745 04/09/2007 Eric A. Rosendall HEN001 P353 6988
277 7590 11/14/2014
PRICE HENEVELD LLP
695 KENMOOR SE
P O BOX 2567
GRAND RAPIDS, MI 49501
EXAMINER
KIM, SHIN H
ART UNIT PAPER NUMBER
3638
MAIL DATE DELIVERY MODE
11/14/2014 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 ERIC A. ROSENDALL
____________

Appeal 2012-011598
Application 11/697,745
Technology Center 3600
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.

HORNER, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Eric A. Rosendall (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 1, 3, 4, 6–10, 12–18, and 20,
which are all the pending claims. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
THE INVENTION
Appellant’s claimed invention relates to “a collar which extends over
the hook and wires of a hanging basket used in merchandising live plants.”
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Spec. para. 1. Claims 1, 8, and 13 are independent. Claim 1, reproduced
below, is illustrative of the subject matter on appeal.
1. A display collar for a hanging plant comprising:
a planar panel of material formed into a curved body
defining a conical collar, said body dimensioned for positioning
said collar above a basket of a hanging basket when positioned
over a basket hanger; and
a pop-out display panel coupled to said body and defined
by a pair of arcuate die cuts formed in facing relationship in
said body to define a pair of hinges integral with said body and
coupling said display panel to said body, said hinges aligned on
an axis orthogonal to a radius of curvature of said body.
THE EVIDENCE
The Examiner relies upon the following evidence:
Lynas 3,382,779 May 14, 1968
Ossiatzky 6,050,604 Apr. 18, 2000
Tsuji US 2004/0216338 A1 Nov. 4, 2004

THE REJECTIONS
Appellant seeks review of the following rejections:
1. Claims 1, 3, 4, and 6 under 35 U.S.C. § 103(a) as unpatentable over
Lynas and Tsuji.
2. Claims 7–10, 12–18, and 20 under 35 U.S.C. § 103(a) as unpatentable
over Lynas, Tsuji, and Ossiatzky.
ISSUES
The issues presented by this appeal are:
Whether Lynas discloses a “conical collar.”
Whether Tsuji or Ossiatzky is analogous art.
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Whether the Examiner provided adequate explanations of the reasons
one of ordinary skill in the art would have been led to modify the collar of
Lynas with the teachings of Tsuji and Ossiatzky.
ANALYSIS
Rejection of claims 1, 3, 4, and 6 under 35 U.S.C. § 103 as unpatentable
over Lynas and Tsuji
Appellant offers arguments pertaining to all the claims subject to this
ground of rejection (i.e., claims 1, 3, 4, and 6). See Br. 7–9. In other words,
Appellant argues claims 1, 3, 4, and 6 as a group. For the arguments
pertaining to these claims, we select independent claim 1 as representative.
See 37 C.F.R. § 41.37(c)(1)(iv) (2014).
The Examiner found, and Appellant does not contest, that Lynas
discloses a display collar comprising a planar panel of material formed into a
curved body, said body dimensioned for positioning the collar over an
object, and a display coupled to the body, and that Lynas does not directly
disclose the display to be a pop-out display panel. Final Act. 2; Br. 8.
The Examiner further found that Lynas’s display collar defines a
“conical collar.” Final Act. 2. While Appellant does not explicitly
challenge this finding in the Brief, Appellant characterizes Lynas’s display
collar as being “elliptical” and defining “an oval, football-shaped outline.”
Br. 8. To the extent that Appellant, by these characterizations, is
challenging implicitly the Examiner’s determination that Lynas discloses the
claimed “conical collar,” we find that Lynas’s collar is conical, as that term
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would be understood by one of ordinary skill in the art when read in light of
the Specification.
In particular, Appellant describes the collar, as depicted in Figure 1 of
the Application, as being a “conical collar” formed by joining the opposed
side edges of a planar panel of material, which panel has an upper curved
edge with a first radius of curvature and a lower scalloped edge with a
second radius of curvature. Spec. paras. 15–16; Figs. 1–6. The resulting
collar is depicted as a tapered collar having a relatively narrow opening at
the top and a relatively wider opening at the bottom.
The Examiner found, and Appellant does not dispute, that Lynas
discloses a similar planar panel, wherein the opposed side edges of the panel
are joined to form a collar. Final Act. 2; Br. 8. See also Lynas Fig. 4
(showing the panel having an upper curved edge with a first radius of
curvature and a lower curved edge with a second radius of curvature) and
Lynas Figs. 1, 2; col. 2, ll. 67–72 (showing the panel formed into a generally
tapered collar having a narrow mouth at the top and a wide mouth at the
bottom).
Appellant asserts that the fold line 8 of Lynas’s panel results in the
collar having an oval shape. Br. 8. Lynas explains, however, that
“[p]referably the fold at the fold line 8 is what is termed a blunt fold, that is
one that provides a slightly radiused bend at the fold line as shown in
FIGURE 1 rather than a sharp crease for a purpose as will hereinafter
appear.” Lynas col. 3, ll. 11–14. We find that Lynas shows a collar having
a substantially circular, relatively narrow mouth at the top and a
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substantially circular, relatively wider mouth at the bottom such that it
defines a conical collar, as claimed. We further find that the blunt fold along
the fold line 8 of Lynas’s panel does not result in a collar that is other than
conical, as that term would be understood in light of Appellant’s
Specification.
We now turn our attention to the reference relied on by the Examiner
to show a pop-out display panel. The Examiner found that Tsuji discloses a
pop-out display panel formed with hinges and arcuate die cuts as called for
in claim 1. Final Act. 2. The Examiner further determined that it would
have been an obvious modification to modify the collar of Lynas to include a
pop-out display panel comprising a hinge, as taught by Tsuji, as “a means to
enhance the display information on the display collar.” Final Act. 3.
Appellant acknowledges that Tsuji discloses “some form of pop-out
presentation in an invitation card environment,” but argues that Tsuji is non-
analogous art. Br. 8–9. In particular, Appellant argues that “[t]he wedding
invitation card of the Tsuji et al. reference would not be a field of endeavor
one skilled in the art would address for guidance in designing a hanging
plant collar display.” Br. 8. Appellant further argues that “[t]he structural
hinge arrangement of Applicant’s pop-out display panel is entirely different
than the tilt-out winged presentation of the Tsuji et al. card.” Id. Appellant
adds that “[i]f the Tsuji et al. card were folded into a cylinder, the winged
section 3 would no longer project outwardly.” Id.
Criteria for determining whether prior art is analogous
may be summarized as “(1) whether the art is from the same
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field of endeavor, regardless of the problem addressed, and (2)
if the reference is not within the field of the inventor’s
endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved.”
Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir.
2014) (quoting In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992)).
As to the first criterion, we agree with Appellant that the wedding
invitation card of Tsuji is not from the same field of endeavor as the hanger
collar of Appellant’s claimed invention. We next turn to the second
criterion.
A reference is reasonably pertinent if . . . it is one which,
because of the matter with which it deals, logically would have
commended itself to an inventor’s attention in considering his
problem. If a reference disclosure has the same purpose as the
claimed invention, the reference relates to the same problem,
and that fact supports use of that reference in an obviousness
rejection.
Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir.
2011) (quoting Clay, 966 F.2d at 659); see also In re Klein, 647 F.3d 1343,
1348 (Fed. Cir. 2011) (same standard). “The pertinence of the reference as a
source of solution to the inventor’s problem must be recognizable with the
foresight of a person of ordinary skill, not with the hindsight of the
inventor’s successful achievement.” Scientific Plastic, 766 F.3d at 1359
(citations omitted).
Appellant’s Specification describes that at the time of the invention,
hanger tags were in use for merchandising hanging baskets. Spec. para. 3.
Appellant’s Specification further describes that hanger collars have been
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used in a variety of applications for advertising or protective purposes.
Spec. para. 2 (providing examples of collars used in connection with
garment hangers and milk containers). Appellant describes the problems to
be solved as providing: (1) “an improved hanging basket collar which
eliminates both the necessity of additional folding steps for application of
the collar to a basket and the need for two different designs depending upon
the number of suspension wires,” and (2) “a collar which provides plant
information carried thereon in an eye-catching manner.” Spec. para. 4.
With regard to this second problem, the teachings of Tsuji are
reasonably pertinent. In particular, as explained below, Tsuji has the same
purpose as the claimed invention and relates to the same problem. Tsuji
describes a wedding invitation card having a “running-out part 3 which has
the movable piece 10 provided so as to jump out from the card body 1 in
three dimensions.” Tsuji para. 22. Tsuji also describes that “[a]s shown in
FIG. 3, when [the card] is opened, the running-out part 3 including the wing
part can jump out so that [i]t makes the customers happy and fun[.]” Tsuji
para. 31. Tsuji further discloses another embodiment in which the running-
out part 3 is used on a card to mark a seat at a table for a wedding reception.
Tsuji Fig. 6; para. 39.1 Tsuji discloses a way to manufacture a card, using
cut-outs and hinged portions of the card, to produce an eye-catching, three-

1 Appellant asserts that if the Tsuji card were folded into a cylinder, the
winged section 3 would no longer project outwardly. Br. 8. Appellant
provides no technical explanation or factual basis for this assertion. Further,
this assertion is belied by the tent card embodiment depicted in Figure 6 of
Tsuji.
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dimensional pop-out portion that is fun for customers. Thus, Tsuji, because
of the matter with which it deals, logically would have commended itself to
an inventor’s attention in considering Appellant’s problem of producing a
collar which provides plant information carried thereon in an eye-catching
manner.
The Examiner further determined that it would have been obvious to
place Lynas’s collar, as modified by Tsuji, over any object that receives
decorative material, including a hanging basket, as “a means to enhance the
appearance of the object.” Final Act. 3. We find unpersuasive Appellant’s
argument that the Tsuji reference would not be a logical choice for one
skilled in the art in designing horticultural products because Lynas does not
suggest explicitly using the bottle collar with a hanging plant or to modify it
to include a pop-out display. In light of Appellant’s admissions that collars
were known in the art at the time of the invention and in use on hangers and
milk containers (Spec. paras. 2–3), we agree with the Examiner’s
determination of obviousness of the subject matter of claim 1. Claims 3, 4,
and 6 fall with claim 1.
Rejection of claims 7–10, 12–18, and 20 under 35 U.S.C. § 103 as
unpatentable over Lynas and Tsuji
Appellant offers arguments pertaining to all the claims subject to this
ground of rejection (i.e., claims 7–10, 12–18, and 20). See Br. 9–10. In
other words, Appellant argues claims 7–10, 12–18, and 20 as a group. For
the arguments pertaining to these claims, we select independent claim 8 as
representative. See 37 C.F.R. § 41.37(c)(1)(iv) (2014).
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Independent claim 8 is similar in many respects to independent
claim 1, and it adds a feature that the “body [of the collar] includ[es] a
locking tab and a mating slot for coupling said opposed edges to one another
to form said body into a conical shape.” Br., Claims App. The Examiner
relied on Lynas and Tsuji for the same teachings as discussed above in the
rejection of claim 1. Final Act. 4–5. The Examiner noted that “Lynas in
view of Tsuji discloses a collar wherein the opposite edges of the panel of
material are bonded by means of adhesive” and that “Lynas in view of Tsuji
does not directly disclose a tab and slot configuration for means of
attachment.” Final Act. 4, 5. The Examiner turned to Ossiatzky to
demonstrate that at the time of the invention a tab and slot mechanism was a
known alternative to adhesive as a means to join ends of a panel. Final Act.
6; Ans. 5; see also Ossiatzky col. 2, ll. 41–49 (teaching that tab 32 and slots
34 of the embodiment of Figure 6 may be replaced with a strip of adhesive
44, as shown in Figure 7, to affix edges of a sheet together to form a stand).
Appellant argues that Ossiatzky’s standup page formed from a
coloring book page is not designed to be used as a collar, and thus “one
skilled in the art of designing packaging for live plants would not look to the
non-analogous children’s coloring book art for guidance.” Br. 9. While we
agree with Appellant that Ossiatzky is not from the same field of endeavor
as Appellant’s claimed collar, this argument fails to address the second
criterion for determining analogous art, namely whether the reference, while
not from the inventor’s field of endeavor, is still reasonably pertinent to the
particular problem with which the inventor is involved. Scientific Plastic,
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766 F.3d at 1359. As such, Appellant does not persuade us, by this
argument, that the Examiner erred in looking to the teaching in Ossiatzky for
a known substitution of one means of attaching opposing edges of a panel
for another means of attaching opposing edges of a panel. We find that the
teaching in Ossiatzky to join opposing edges of a panel using a tab and slot
as a substitute for adhesive would have been reasonably pertinent to the
problem of designing an improved hanging basket collar that Appellant was
looking to solve. Further, Appellant’s argument misapprehends the
Examiner’s reliance on Ossiatzky. The Examiner does not propose to use
Ossiatzky’s display as a collar for a hanging basket. Rather, the Examiner
relied on Ossiatzky to demonstrate that it was well known at the time of the
invention to join opposed edges of a panel as an alternative means of joining
to the adhesive disclosed in the improved collar of Lynas. We find that a
person having ordinary skill in the art at the time of the invention would
have known of these alternative joining means in light of Ossiatzky.
Appellant finally argues that “[t]he Examiner’s proposed modification
to the prior art amounts to an entire redesign of the Lynas structure not based
upon the Tsuji et al. and Ossiatzky disclosures but based upon the teaching
of Applicant’s disclosure.” Br. 10. We do not find that the Examiner
engaged in impermissible hindsight reconstruction. With regard to the
proposed modification of Lynas with the pop-out display of Tsuji, the
Examiner explained that such a modification would have been obvious in
light of Tsuji’s teaching that a pop-out display is fun for customers. “[I]f a
technique has been used to improve one device, and a person of ordinary
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skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007). For the reasons discussed above regarding the teaching in Tsuji that
the use of a pop-out display provides fun for the customers, the improvement
to the collar of Lynas by adding a pop-out display panel, such as taught in
Tsuji, is the predictable use of prior art elements according to their
established functions. Id. With regard to the proposed modification of
Lynas to substitute the adhesive of Lynas with the tab and slot of Ossiatzky,
this modification is an obvious substitution of one element for another
known in the field to yield a predictable result. KSR, 550 U.S. at 416. For
these reasons, we are not persuaded that the Examiner erred in determining
that the subject matter of claim 8 would have been obvious to one of
ordinary skill in the art at the time of the invention in light of Lynas, Tsuji,
and Ossiatzky.
CONCLUSIONS
Lynas discloses a “conical collar.” Both Tsuji and Ossiatzky are
analogous art. The Examiner provided adequate explanations of the reasons
one of ordinary skill in the art would have been led to modify the collar of
Lynas with the teachings of Tsuji and Ossiatzky.
DECISION
The decision of the Examiner to reject claims 1, 3, 4, 6–10, 12–18,
and 20 is AFFIRMED.
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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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