Ex parte Zoullas

• Decision Date: 31 December 2008
• Docket Number: 528,Application 10/836,Appeal 2008-3784
• Parties: Ex parte DEBORAH A. ZOULLAS Technology Center 3600
• Court: Patent Trial and Appeal Board

Ex parte DEBORAH A. ZOULLAS Technology Center 3600

Appeal 2008-3784

Application 10/836, 528

United States Patent and Trademark Office, Patent Trial and Appeal Board

December 31, 2008

Before LINDA E. HORNER, STEVEN D.A. MCCARTHY and MICHAEL W O'NEILL, Administrative Patent Judges.

DECISION ON APPEAL

HORNER, Administrative Patent Judge.

STATEMENT OF THE CASE

Deborah A. Zoullas (Appellant) seeks our review under 35 U.S.C § 134 of the final rejection of claims 1-29. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION

We AFFIRM-IN-PART.

THE INVENTION

The Appellant's claimed invention is an eyeglass holder necklace assembly (Spec. 1:¶0003). Claims 1 and 16, reproduced below, are representative of the subject matter on appeal.

1. A necklace assembly for holding a pair of eyeglasses, the necklace assembly comprising:

a necklace for wearing about a neck of a wearer, said necklace having a first end and a second end; and

an eyeglass-holder assembly connected between said first end and said second end of said necklace, said eyeglass-holder assembly comprising:

an eyeglass-holder loop having an opening passing therethrough shaped and dimensioned to receive a temple piece of a pair of eyeglasses;

a first swivel linker and a second swivel linker, each swivel linker having a necklace-side connector and a holder-loop-side connector, said necklace-side connector and said holder-loop-side connector being rotatably connected to each other to allow full rotation about a swivel axis;

said holder-loop-side connectors of said first swivel linker and said second swivel linker being connected to the eyeglass-holder loop at locations spaced apart from one another about the loop and

said holder-loop-side connectors being rotatable about said loop; and

each necklace-side connector being fixedly connected directly to said necklace such that said necklace abuts said each necklace-side connector; and

wherein the necklace assembly may be worn about the neck of the wearer with a pair of eyeglasses in a folded-closed configuration removably pendulously held in said eyeglass-holder loop of said eyeglass-holder assembly with a temple piece extending downwardly from one side of said eyeglass-holder loop opening and a lens frame of the eyeglasses extending downwardly from an opposite side of said loop opening and with twisting induced in said necklace by movement of the wearer tending to be relieved by rotation of at least one of said holder-loop-side connectors relative to said necklace-side connectors and said holder-loop-side connectors relative to said loop.

16. A swivel-linker for use in a necklace assembly for holding a pair of eyeglasses, the swivel-linker comprising:

a necklace-side connector and a holder-loop-side connector, said necklace-side connector being attachable to a necklace;

said holder-loop-side connector having a connector opening configured to receive an eyeglass-holder loop having an eyeglass opening passing therethrough shaped and dimensioned to receive a temple piece of a pair of eyeglasses, said connector opening configured to allow said holder-loop-side connector to rotate about the eyeglass- holder loop when the eyeglass-holder loop is received in said connector opening, said holder-loop-side connector including a pin protruding away from said connector opening;

said necklace-side connector having a cavity, said cavity comprising a groove configured to receive said pin to rotatably connect said necklace-side connector and said holder-loop-side connector and to allow full rotation between said necklace-side connector and said holder-loop-side connector about a swivel axis, said groove having a diameter larger than a diameter of a remainder of said cavity; and

wherein rotation of at least one of said holder-loop-side connector relative to said necklace-side connector and said holder-loop-side connector relative to the eyeglass-holder loop relieves twisting induced in the necklace in response to said holder-loop-side connector receiving the eyeglass-holder loop, said necklace-side connector being connected to the necklace and the necklace being worn about the neck of a wearer with a pair of eyeglasses in a folded-closed configuration removably pendulously held in the eyeglass-holder loop with a temple piece extending downwardly from one side of the eyeglass-holder loop opening and a lens frame of the eyeglasses extending downwardly from an opposite side of the eyeglass opening.

THE REJECTIONS

The Examiner relies upon the following as evidence of unpatentability:

Yeh

US 5, 281, 041

Jan. 25, 1994

DeCotis

US 5, 893, 198

Apr. 13, 1999

Appellant seeks review of the following rejection:

The Examiner rejected claims 1-29 under 35 U.S.C. § 103(a) as unpatentable over DeCotis in view of Yeh.

ISSUES

The Examiner found the subject matter of claims 1-15 was obvious in view of DeCotis and Yeh. Appellant contends Yeh is non-analogous art, there is no reason to combine the references, and the combined references do not teach every element of the claims (App. Br. 7-14).

The first issue before us is:

Has Appellant shown that the Examiner erred in rejecting claims 1-15 because a person of ordinary skill in the art would not have considered Yeh, because there is no reason to combine the references, or because the prior art does not teach every element of the claims?

The Examiner found claims 16-29 were obvious in view of DeCotis and Yeh. Appellant contends Yeh does not disclose a cavity comprising a groove with a diameter larger than the diameter of the remainder of the cavity, as recited in claim 16 (App. Br. 15).

The second issue before us is:

Has Appellant shown that the Examiner erred in rejecting claims 16-29 because Yeh does not disclose a cavity comprising a groove with a diameter larger than the diameter of the remainder of the cavity?

FINDINGS OF FACT

We find that the following enumerated facts are supported by at least a preponderance of the evidence. Ethicon, Inc. v Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office).

1. Appellant sought to create "an eyeglass holder necklace assembly which holds a pair of eyeglasses neatly and securely even as a wearer of the necklace assembly moves about" (Spec. 1:¶0003).

2. Appellant's device includes a swivel-linker comprised of a necklace-side connector and a holder-loop-side connector (Spec. 3:¶0006).

a. Necklace-side connector 28 has a top end 27 and a bottom end 29 (Spec. 5:¶0018-0019; Fig. 2).

b. Top end 27 is open to permit second necklace end 18 to enter and be fixedly connected (e.g. by glue) to inner surface 23 of cavity 21 (Spec. 5:¶0018-0019;Fig.2).

c. Bottom end 29 has a rotatable pin-and-socket connection to holder-ring-side connector ring 30 (also referred to as the "holder-loop-side connector") that relieves twisting induced in the necklace by the wearer, this connection may include a groove 31 to receive linker pin 32 of holder-ring-side connector ring 30 (Spec. 3:¶0006; 5:¶0019; Fig. 2).

d. Holder-loop-side connector 30 has linker pin 32 at the top end and connector-ring central opening 40 at the bottom end (Spec. 5:¶0019; Fig. 2).

e. Connector-ring central opening 40 is rotatably coupled to the eyeglass-holder loop 22 (also referred to as "eyeglass-holder ring"), and this connection relieves twisting induced in the necklace by the wearer (Spec. 3:¶0006; 6:¶0023; Fig. 2).

f. Thus, a problem faced by Appellant when inventing this device was a mechanical connection problem.

3. Ropes, leashes, cords, and necklaces have similarities in design, use, and characteristics.

4. Yeh discloses a swivel end fitting for attachment to "ropes, leashes, and cords" (Yeh, col. 1, ll. 61-63).

5. Yeh teaches the swivel end fitting pivots freely, and does not disclose that rotation requires a force above a certain specified amount (Yeh, col. 4, ll. 5-7; passim).

6. Yeh teaches the swivel end fitting has an eye to permit attachment to other objects (Yeh, col. 2, ll. 8-11).

7. Yeh teaches the swivel end fitting will withstand shocks and jerks (Yeh, col. 2, 1. 15).

8. DeCotis discloses a holder for a pair of eyeglasses (DeCotis, col. 1, 11. 5-7).

9. DeCotis discloses an embodiment with a spring-loaded releasable clasp 48 to permit the necklace to be removed without slipping the necklace over the wearer's head (DeCotis, col. 3, ll. 5-10; col. 5, ll. 7-10).

10. DeCotis also discloses an embodiment without a releasable clasp that is removed by slipping the necklace over the wearer's head (DeCotis, col. 2, ll. 3-24 (detailing an embodiment without a releasable clasp); see also col. 3, ll. 5-10 (describing a preferred embodiment that adds a releasable clasp, implying other embodiments do not have a releasable clasp).

11. DeCotis describes swivel linkers 24, 26 rotate to relieve twisting or kinking of the necklace induced by movement of the wearer (DeCotis, col. 2, ll. 35-41).

12. DeCotis does not disclose the terminal loop to necklace-side connector ring connection as capable to relieve twisting (DeCotis, passim).

13. DeCotis does not disclose the device will perform improperly without the terminal loop to necklace-side connector ring connection (DeCotis, passim).

14. Appellant presents no evidence the combination of Yeh and DeCotis found by the Examiner is beyond the skill of a person of ordinary skill in the art (App. Br. & Reply Br., passim).

15. Yeh's swivel end fitting is cylindrically-shaped (Yeh, Figures 1 and 2).

16. A groove is commonly defined as "a long narrow channel or depression." (App. Br. 14; Ans. 17.)

17. Appellant's Specification does not provide a definition for "groove" (Spec, passim).

18. Yeh discloses a groove...