Ex Parte Berkowitz et al

Patent Trial and Appeal Board

Apr 23, 2018

13099359 (P.T.A.B. Apr. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/099,359 05/03/2011 Stacey Beth Berkowitz
98783 7590 04/25/2018
Perkins Coie LLP - DEN General
P.O. Box 1247
Seattle, WA 98111-1247
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
111811-8001.USOO 1647
EXAMINER
FERREIRA, CATHERINE M
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
04/25/2018 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STACEY BETH BERKOWITZ and
JOHN WRAY CARPENTER
Appeal2017-003585
Application 13/099,359
Technology Center 3700
Before JENNIFER D. BAHR, FREDERICK C. LANEY, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Stacey Beth Berkowitz and John Wray Carpenter ("Appellants")
appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting
claims 1, 3, 5, 6, 8-18, and 20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2017-003585
Application 13/099,359
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A placket truss for use on a placket having a plurality of
buttons sewn thereto with thread, said placket truss comprising:
an elongate member including opposed end portions;
a medial clip integral with the elongate member and
disposed between said opposed end portions, said medial clip
including a bend whereby the medial clip doubles back onto the
elongate member and extends in a direction transverse to a length
of the elongate member; and
wherein each said end portion includes at least one slot sized and
adapted to engage the thread of a corresponding button.
REJECTIONS
1) Claims 1, 3, 5, 6, 8-17, and 20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Chennault (US 5,337,457, issued
Aug. 16, 1994), Pehr (US 3,381,865, issued May 7, 1968), and
Rees (US 1,098,638, issued June 2, 1914).
2) Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Chennault, Pehr, Rees, and Perina (US 3,717,908, issued Feb. 27,
1973).
DISCUSSION
Rejection 1
Claims 1, 3, 5, 6, and 8-10.
With respect to independent claim 1, the Examiner finds that
Chennault discloses a placket truss comprising an elongate member
including opposed end portions and wherein each end portion includes at
least one slot as recited. Final Act. 3 ( citing Chennault Figs. 1, 2). The
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Application 13/099,359
Examiner finds that Pehr discloses a medial clip integral with the elongate
member disposed between opposed end portions. Id. at 3--4 ( citing Pehr,
Fig. 1 ). The Examiner finds that Rees discloses a clip with a bend whereby
the clip doubles back onto the elongate member and extends in a direction
transverse to a length of the elongate member. Id. at 4--5 (citing Rees, Figs.
1, 2, and 3). The Examiner concludes that it would have been obvious to
one of ordinary skill in the art "to modify the placket truss of Chennault by
constructing the elongate member with a medial clip as taught ... by Pehr in
order to better hold the placket in place." Id. at 5.
Appellants contend that Pehr' s receiving loop 21 "is not a clip and is
not located medially between opposed end portions. Instead, loop 21 is an
end portion of the neck tie holder." Appeal Br. 5 (citing Pehr, Fig. 7).
Appellants also contend that "[t]he rejection does not provide any rationale
for modifying Chennault with the teachings of Rees." Id. at 7.
The Examiner responds with an annotated version of Pehr's Figure 1
in which the Examiner identifies the medial clip as extending from the
bottom portion of element 21 up to the top of the slot identified as element
19. Ans. 3. With respect to Appellants' contention that the Examiner has
not provided a rationale for modifying Chennault with Rees, the Examiner
asserts that the references
contain multiple notches/slots and clip structures which would
make them capable of functioning as a placket truss that engages
the front and back of the placket and holds the placket in place.
Each of the references are analogous art and address the same
problem of securing the components together while engaging
different parts of that front and back of the garment.
Id. at 11.
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Application 13/099,359
Even if we were to accept the Examiner's finding that the portion of
Pehr's device that the Examiner asserts corresponds to the "medial clip" is in
fact a clip, the Examiner does not adequately explain the proposed
modification of Chennault by Pehr. Final Act. 3-5. Further, the Examiner
does not provide a reason for subsequently combining the teachings of Rees
with the modified device of Chennault. Id. For these reasons, we determine
that the rejection of claim 1 is not supported by a rational underpinning.
We, thus, do not sustain the rejection of claim 1. See In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)("there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.).
Further, we do not sustain the rejection of claims 3, 5, 6, and 8-10 which
depend directly or indirectly from claim 1.
Claims 11-17, 19
Independent claim 11 requires "an elongate member ... configured to
confront the back side of the placket." Appeal Br. 14 (Claims App.). The
Examiner finds, inter alia, that Chennault discloses a placket truss 10 with
"at least one slot ... sized and adapted to engage the thread of a
corresponding button" and "is capable of attaching to the front of the placket
from the front or back of the placket as it attaches around the button shank of
the placket truss" but fails to disclose "a clip integral with the elongate
member confronting the front side of the placket and a back side." Final
Act. 8-9. The Examiner finds that Pehr "discloses a clip integral with the
elongate member" and Rees "discloses a clip ... confronting the front side
... of the placket ... and wherein each said clip include a bend." Id. at 9.
The Examiner concludes that it would have been obvious "to modify the
placket truss of Chennault by constructing the elongate member with at least
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Application 13/099,359
one slot at each end as taught by Pehr and the clip confronting the front side
of the placket as taught by Rees in order to hold the truss in place." Id.
Appellants contend that "Chennault attaches to the button threads that
extend between the placket and the button. The back side of the placket
does not have these threads. Therefore, Chennault's neckwear anchor
cannot be attached to the back side of the placket." Appeal Br. 9.
Appellants also contend that "one of ordinary skill in the art would not
modify Chennault to confront the back side of the placket, because to do so
would render Chennault unsatisfactory for its intended purpose, which is to
anchor a tie to a wearer's shirt." Id. (citing Chennault, 2:61---68). In
response, the Examiner maintains the rejection and asserts "the resilient
device of the combined references is indeed capable of engaging the front
and the back of the placket and the button shank." Ans. 8. For the following
reasons, we do not sustain the rejection of claim 11.
Chennault discloses "a tie anchoring device." Chennault, 3:49-50.
Chennault's tie anchoring device includes "attachment members 18 and 20"
having "extended portions 30 and 32 which define access slots 34 and
retaining slot 36." Id. 3:54--55, 63---64, Fig. 2. The tie anchoring device
"can engage button threads from the left or the right side of the buttons 24
and 26, either attachment member 18 or 20 may be the upper attachment
member to engage the button threads of button 24." Id. 4:57---61. Further,
main member 15 of the tie anchoring device is "inserted through the tie loop
22 and the attachment members 18 and 20 have engaged the button threads."
Id. 4:62---64, Fig. 1. Further, as can be seen from Fig. 1, Chennault's tie
anchoring device "confronts" the front side of the placket not the back side.
See Spec. 5, Figs. 7, 8.
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We do not sustain the rejection of claim 11 because the Examiner has
not adequately explained how Chennault's tie anchoring device is capable of
"being configured to confront the back side of the placket," as required by
claim 1. See Final Act. 9; Ans. 8. The slots in Chennault's tie anchoring
device connect to the threads of buttons 24 and 26 in the space between the
back of the buttons and the front of the placket. The Examiner does not
direct our attention to any disclosure in Chennault that the button threads are
loose enough on the back of the placket to allow the slots on the tie
anchoring device to engage the threads on the back of the placket. In the
absence of such a disclosure, the Examiner has not established that
Chennault' s tie anchoring device is configured to confront the back side of
the placket, with the clip confronting the front side of the placket and
adapted to engage a thread of a corresponding button, as required in claim
11, nor is it sufficiently clear how the rejection proposes to modify
Chennault' s device in view of Pehr and Rees to satisfy these limitations.
Chennault 2:61---68. We, thus, do not sustain the rejection of claim 11
because the rejection is not supported by a rational underpinning. We also
do not sustain the rejection of claims 12-17 and 19 which depend directly or
indirectly from claim 11.
Claim 20
Independent claim 20 requires the elongate member to be "adapted to
confront the back side of the placket." The Examiner relies on the same
reasoning as claim 11 that Chennault's tie anchoring device is capable of
attaching to the "back of the placket" to satisfy this limitation. Final Act. 11.
As with the rejection of claim 11, the Examiner has not established that
Chennault's tie anchoring device is configured to confront the back side of
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the placket, with the clip confronting the front side of the placket, as
required in claim 20, nor is it sufficiently clear how the rejection proposes to
modify Chennault's device in view of Pehr and Rees to satisfy these
limitations. We, thus, do not sustain the rejection of claim 20 for the same
reasons stated above in connection with claim 11.
Rejection 2
Claim 18 depends from claim 11. Appeal Br. 16 (Claims App.). The
Examiner rejects claim 18 based on the combination of Chennault, Pehr, and
Rees with additional disclosure from Perina. Final Act. 13. The Examiner
does not rely on the additional disclosure from Perina to cure the
deficiencies in the combination of Chennault, Pehr, and Rees stated above in
connection with claim 11. Id. We, therefore, do not sustain the rejection of
claim 18 for the same reasons stated in connection with claim 11.
DECISION
The Examiner's decision rejecting claims 1, 3, 5, 6, 8-18, and 20 is
reversed.
REVERSED
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