Appeal 2007-2227
Application 10/778,963
Federal Circuit held that, where the only difference between the prior art and the
claims was a recitation of relative dimensions of the claimed device and a device
having the claimed relative dimensions would not perform differently than the
prior art device, the claimed device was not patentably distinct from the prior art
device. Upon review of the spiral shaped necklace extension of Cayton, it would
reasonably appear that the claimed spiral shaped necklace extension is merely a
predictable use of a prior art element according to its established function for
extending a necklace length.
In the present case, we find that the necklace extension device of Cayton is
similar to that of the claimed invention except the “top” spiral (as shown in Figure
2, reproduced above) is shorter and of a smaller size than the “bottom” spiral and
thus not a mirror image of the top bottom spiral. In Figure 2 of Cayton, as is clear
from the drawing, the top, smaller spiral is open and can accommodate additional
necklace chains. We further find that it would have been obvious to one of
ordinary skill in the art to extend the length (size) of the top, small spiral of Cayton
to the length and shape of the bottom, large spiral of Cayton to form a mirror
image of the bottom spiral to further accommodate multiple necklace chains, as an
alternative design available and known in the prior art. In addition, Cloud,
although an earring jewelry piece, also reflects that a larger spiral is a known
design available to the ordinary designer in the jewelry art.
At best, we find that Appellant has merely extended the size of the smaller,
top spiral of Cayton and that this change in size does not perform differently than
the opposing larger spiral disclosed in Cayton. Both spirals perform equivalently
in Cayton. The larger spiral at the bottom of the necklace extension of Cayton is a
design known to one of ordinary skill in the necklace extension art. The larger and
smaller spirals function equivalently in Cayton as attaching means to the necklace.
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