Laskin, Hardy A. et al.

Patent Trials and Appeals Board

Sep 2, 2020

2019002256 (P.T.A.B. Sep. 2, 2020)

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.
14/332,713 07/16/2014 Hardy A. Laskin 8401.003/7399-A-1 1092
23308 7590 09/02/2020
Rimon Law, P.C.
Steven Colby
800 Oak Grove Ave., Suite 250
Menlo Park, CA 94025
EXAMINER
HELVEY, PETER N.
ART UNIT PAPER NUMBER
3734
NOTIFICATION DATE DELIVERY MODE
09/02/2020 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):
PV-PatentDoc@rimonlaw.com
RLpatentdoc@rroyselaw.com
docketing.rimonlaw@clarivate.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HARDY A. LASKIN and RYAN JAMES MURRAY

Appeal 2019-002256
Application 14/332,713
Technology Center 3700
____________

Before BRUCE T. WIEDER, BRADLEY B. BAYAT, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision rejecting claims 1–6, 8–11, 19–22, 25, and 26. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as “the
named inventors, Hardy A. Laskin and Ryan J. Murray.” Appeal Br. 3.
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ILLUSTRATIVE CLAIM
1. A cigar holder comprising in combination:
a) a first member including a first base, the first member
further including a retainer secured to, and integral with, the
first base to form a one-piece structure therewith, the retainer
including a split band adapted to releasably extend about a cigar
for securing the cigar to the first member, the first base
including a generally planar base surface of a first surface area;
b) a first magnet having a generally planar magnet
surface of a second surface area secured to the generally planar
base surface of the first base of the first member;
c) the first surface area being at least as large as the
second surface area; and
d) a second member having a second base, the second
base including a metallic member for being attracted to the first
magnet and for releasably securing the second base to the first
base when the second base is brought proximate to the first
base, the second member including a clip secured to the second
base and adapted to couple the second member to a hat.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Markowitz US 2,644,212 July 7, 1953
Potter US 5,025,966 June 25, 1991
Heydt US D408,097 Apr. 13, 1999
Ferrari US 6,530,510 B2 Mar. 11, 2003
Steele US 2014/0043580 A1 Feb. 13, 2014

REJECTIONS
I. Claims 1, 2, 6, 10, 11, and 25 are rejected under 35 U.S.C.
§ 103 as unpatentable over Markowitz.
II. Claims 3–5 are rejected under 35 U.S.C. § 103 as unpatentable
over Markowitz and Ferrari.
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III. Claims 8 and 9 are rejected under 35 U.S.C. § 103 as
unpatentable over Markowitz and Steele.
IV. Claims 19 and 26 are rejected under 35 U.S.C. § 103 as
unpatentable over Markowitz and Potter.
V. Claim 20 is rejected under 35 U.S.C. § 103 as unpatentable
over Markowitz, Potter, and Ferrari.
VI. Claim 21 is rejected under 35 U.S.C. § 103 as unpatentable
over Markowitz and Heydt.
VII. Claim 22 is rejected under 35 U.S.C. § 103 as unpatentable
over Markowitz, Potter, and Heydt.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Markowitz Does Not Teach “the first surface area being
at least as large as the second surface area”
Independent claims 1 recites, in part: a “first base including a
generally planar base surface of a first surface area”; “a first magnet having
a generally planar magnet surface of a second surface area secured to the
generally planar base surface of the first base of the first member”; and “the
first surface area being at least as large as the second surface area.”
The “first surface area” is the size of the “generally planar base
surface” and the “second surface area” is the size of the “generally planar
magnet surface.” The Specification illustrates such a relationship between
the “first surface area” and the “second surface area,” in Figure 5,
reproduced below, an upward-looking plan view showing a surface of first
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base 32, which has an area larger than the area covered by first magnet 42
(see Spec. 6, ll. 13–19):

Figure 5 is an upward-looking view of a disclosed embodiment, showing the
relationship of surface areas of first base 32 and first magnet 42. See id.
The Examiner rejects claim 1 as obvious over the combination of two
embodiments of Markowitz’s pencil-holding device, with the embodiment of
Figures 1–5 teaching claim 1’s “first surface area being at least as large as
the second surface area.” Final 3. According to the Examiner, Markowitz’s
housing 18 teaches a “generally planar base surface of a first surface area”
and Markowitz’s magnet 21 teaches the “generally planar magnet surface of
a second surface area.” Id. Figure 5 of Markowitz, reproduced below,
provides a cross-sectional view of housing 18 and magnet 21:
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Figure 5 of Markowitz is a cross-sectional view, showing part of the
arrangement of housing 18 and magnet 21.
The Appellant does not contend that the cross-sectional representation
of Markowitz’s Figure 5, by itself, fails to show claim 1’s “first surface area
[of the base] being at least as large as the second surface area [of the
magnet].” Yet, the Appellant argues that, even if the embodiment of
Markowitz’s Figures 8–11 were modified, by combining it with features of
the embodiment of Markowitz’s Figures 1–5 (per the Examiner’s rejection
of claim 1), the resulting combination “would still fail to provide” claim 1’s
“first surface area being at least as large as the second surface area.” Reply
Br. 4. Indeed, as the Appellant points out, a portion of Markowitz’s magnet
21 “protrudes beyond” housing 18. Id. Markowitz describes this
configuration as follows:
According to the invention the magnet 21 extends
longitudinally beyond one end 22 of the housing 18 which is
cut back angularly, as shown most clearly in Fig. 2. Thus, the
projecting end of the magnet forms a sort of finger 23 whose
purpose will be described hereinafter.
. . . .
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. . . [I]f, due to jostling or the like, the pencil 15 and the
magnet 21 should slip downward, the finger 23 of the latter
engages behind the lip 26 and effects an even firmer holding in
place of the pencil, see Fig. 2.
Markowitz col. 2, ll. 42–47, col. 3, ll. 9–13. The dimensional relationship of
Markowitz’s magnet 21 and housing 18 is seen in Figures 1 and 2. Figure 1
of Markowitz is reproduced below:

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Figure 1 of Markowitz is an exploded perspective view of the pencil-holder
embodiment of Markowitz’s Figures 1–5. Id. at col. 1, ll. 37–39, col. 2,
ll. 32–35. Figure 2 of Markowitz is reproduced below:

Figure 2 of Markowitz is a side elevation view of the embodiment of
Markowitz’s Figures 1–5. Id. at col. 1, ll. 40–42, col. 2, ll. 42–47.
In view of Markowitz’s Figures 1, 2, and 5, and the related description
(id. at col. 2, ll. 42–47, col. 3, ll. 9–13), we find that the embodiment of
Figures 1–5 does not teach the claimed “first surface area [of the base] being
at least as large as the second surface area [of the magnet],” by a
preponderance of the evidence. Indeed, the surface area of the generally
planar surface of magnet 21 (which faces housing 18) appears to be greater
than the surface area of the generally planar surface of housing 18 (which
faces magnet 21).
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Accordingly, we do not sustain the rejection of independent claim 1
and dependent claims 2–6, 8–11, 21, and 25 under 35 U.S.C. § 103.
The other independent claim in the Appeal (claim 19) also recites “the
first surface area being at least as large as the second surface area.” In
claim 19, the “first surface area” is the size of the “generally planar base
surface” and the “second surface area” is the size of the “generally planar
surface” of “a first metallic member.” Claim 19 also recites a “second
metallic member,” with “at least one of said first and second metallic
members being a magnet.” With respect to claim 19, the Examiner relies
upon Markowitz, in the same manner discussed above, to teach the claimed
“first surface area being at least as large as the second surface area.” See
Final 7.
Our analysis of claim 1, in regard to Markowitz, applies equally to the
rejection of claim 19. Accordingly, we do not sustain the rejection of
independent claim 19 and dependent claims 20, 22, and 26 under 35 U.S.C.
§ 103.
Reasons to Combine/Modify
Distinct Embodiments of Markowitz
The Examiner’s rejections of independent claims 1 and 19 involve
combining the teachings of separate embodiments within a single reference
(Markowitz). See Final 3–4, 7.
The Appellant argues that the Examiner has failed to provide a reason
for combining features of distinct embodiments in Markowitz. See Appeal
Br. 9–12.
Our reviewing court has explained the need for a reason to combine
such teachings, notwithstanding their appearance within a single reference:
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Whether a rejection is based on combining disclosures from
multiple references, combining multiple embodiments from a
single reference, or selecting from large lists of elements in a
single reference, there must be a motivation to make the
combination and a reasonable expectation that such a
combination would be successful, otherwise a skilled artisan
would not arrive at the claimed combination.
In re Stepan Co., 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017). See also B.F.
Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582 (Fed. Cir.
1996) (“When obviousness is based on a particular prior art reference, there
must be a showing of a suggestion or motivation to modify the teachings of
that reference.”)
In regard to the proposed combination of teachings, within
Markowitz, the Examiner states:
[T]he level of ordinary skill in the art at the time of the
invention would certainly have included the knowledge that
such a one piece construction would reduce material costs,
assembly costs during manufacture, and reduce the possibility
of breakage during use due to fewer parts being used.
Final 4. Yet, the sufficiency of these particular reasons would depend upon
the nature of the particular manufacturing techniques involved, which the
Examiner has not articulated — let alone supported with evidence.
The Examiner also states that changing the size/shape of elements in
Markowitz’s embodiments “would have been an obvious matter of design
choice.” Final 4.
A so-called “design choice” rationale has been deemed appropriate
where one prior art element or property is proposed to be substituted for
another that achieves the same purpose. See ACCO Brands Corp. v.
Fellowes, Inc., 813 F.3d 1361, 1367 (Fed. Cir. 2016) (“The prior art
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consistently locates the two sensors at issue in the shredder’s feed, and no
party disputes that an ordinary artisan would have found this the obvious
location for the combination of sensors. The ordinary artisan would then be
left with two design choices.”); Ex parte Maeda, Appeal 2010-009814, 2012
WL 5294326, at *3 (PTAB Oct. 23, 2012) (informative). Cf. In re Gal, 980
F.2d 717, 719 (Fed. Cir. 1992) (“The Board held that Gal had simply made
an obvious design choice. However, the different structures of Gal and
Matsumura achieve different purposes.”) Our reviewing court has cautioned
that “[m]erely stating that a particular [limitation] is a design choice does not
make it obvious.” Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056,
1069 n.4 (Fed. Cir. 2018) (first alteration in original) (quoting Cutsforth, Inc.
v. MotivePower, Inc., 636 F. App’x 575, 578 (Fed. Cir. 2016)
(nonprecedential)).
In the present Appeal, the Examiner’s invocation of the design-choice
theory is not supported by the findings that Federal Circuit case law requires
— e.g., that the available “choices” function equally well. Indeed,
Markowitz presents the opposite situation. As discussed above, the
reference itself indicates that the use of a larger surface area of magnet 21
(resulting in the protruding finger 23), relative to the opposing surface area
on housing 18, plays a significant role in establishing a secure connection
with the magnetically attracted disc 24. See Markowitz col. 2, ll. 42–47, col.
3, ll. 3–13.
Although the Examiner does not identify an adequate reason to
combine teachings of Markowitz’s embodiments, we are not deciding that
no such reason might be articulated on the present record. Markowitz
discloses at least some inter-embodiment combinations of elements. See
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Markowitz col. 3, ll. 40–45 (“The pencil engaging clip just described [i.e., of
Figs. 8–11], is illustrated as used with a pocket clip disc 24 such as that
shown in Figs. 3 and 4, but it is appreciated that this modified clip could also
be used with the pocket clip shown in Figs. 6 and 7.”) Yet, we do not
address the sufficiency of any such suggestion, in the first instance.
The insufficiency of the Examiner’s reasons to combine teachings of
distinct references in Markowitz provides an additional reason for not
sustaining the Examiner’s rejections of the claims in the Appeal under 35
U.S.C. § 103.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 6, 10,
11, 25
103 Markowitz 1, 2, 6, 10,
11, 25
3–5 103 Markowitz, Ferrari 3–5
8, 9 103 Markowitz, Steele 8, 9
19, 26 103 Markowitz, Potter 19, 26
20 103 Markowitz, Potter,
Ferrari
20
21 103 Markowitz, Heydt 21
22 103 Markowitz, Potter,
Heydt
22
Overall Outcome 1–6, 8–11,
19–22, 25,
26

REVERSED