UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. TRISTAR PRODUCTS, INC. Petitioner

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1 Paper No.: Filed: March 3, 2015 Filed on behalf of: Tristar Products, Inc. By: Noam J. Kritzer Ryan S. McPhee BAKOS & KRITZER UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD TRISTAR PRODUCTS, INC. Petitioner v. CHOON S DESIGN INC. Patent Owner Patent No. 8,622,441 PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,622,441

2 TABLE OF CONTENTS I. MANDATORY NOTICES UNDER 37 C.F.R. 42.8(a)(1)... 1 A. REAL PARTY-IN-INTEREST UNDER 37 C.F.R. 42.8(b)(1)... 1 B. RELATED MATTERS UNDER 37 C.F.R. 42.8(b)(2)... 1 C. LEAD AND BACK-UP COUNSEL... 3 D. SERVICE INFORMATION... 3 II. PAYMENT OF FEES 37 C.F.R III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R A. Grounds for Standing Under 37 C.F.R (a)... 4 B. Identification of Challenge Under 37 C.F.R (b) and Relief Requested Effective Filing Date Claim Construction Under 37 C.F.R (b)(3)... 9 IV. SUMMARY OF THE 441 PATENT A. BRIEF DESCRIPTION The 441 Patent Specification B. SUMMARY OF THE PROSECUTION HISTORY OF THE 441 PATENT V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE 441 PATENT IS UNPATENTABLE A. GROUND I: CLAIMS 1, 2, AND 5 ARE ANTICIPATED BY ZALTZMAN Claim 1 is Anticipated by Zaltzman Claim 2 is Anticipated by Zaltzman Claim 5 is Anticipated by Zaltzman B. GROUND II: CLAIMS 11, 12, 15, AND 16 ARE OBVIOUS IN VIEW OF ZALTZMAN Claim 11 is Obvious Over Zaltzman in View of Phelps Claim 11 is Obvious Over Zaltzman in View of Norris Claim 11 is Obvious Over Zaltzman in View of Linstead Claim 12 is Obvious Over Zaltzman in View of Phelps or Norris Claim 15 is Obvious Over Zaltzman in View of Carruth or Meltzer Claim 16 is Obvious Over Zaltzman in View of Carruth or Meltzer C. GROUND III: CLAIMS 1, 2, AND 5 ARE ANTICIPATED BY LIJOVICH ii

3 1. Claim 1 is Anticipated by Lijovich Claim 2 is Anticipated by Lijovich Claim 5 is Anticipated by Lijovich D. GROUND IV: CLAIMS 11, 12, 15, AND 16 ARE OBVIOUS IN VIEW OF LIJOVICH Claim 11 is Obvious Under 35 U.S.C. 103(a) in View of Lijovich and Phelps Claim 11 is Obvious Under 35 U.S.C. 103(a) in View of Lijovich and Norris Claim 11 is Obvious Under 35 U.S.C. 103(a) in View of Lijovich and Linstead Claim 12 is Obvious Under 35 U.S.C. 103(a) in View of Lijovich and Phelps Claim 15 is Obvious Under 35 U.S.C. 103(a) in View of Lijovich and Phelps Claim 16 is Obvious Under 35 U.S.C. 103(a) in View of Lijovich and Phelps and Carruth or Meltzer E. GROUND V: CLAIMS 1, 2, AND 5 ARE ANTICIPATED BY NEDRY Claim 1 is Anticipated by Nedry Claim 2 is Anticipated by Nedry Claim 5 is Anticipated by Nedry F. GROUND VI: CLAIMS 11, 12, 15, AND 16 ARE OBVIOUS IN VIEW OF NEDRY AND PHELPS Claim 11 is Obvious in View of Nedry and Phelps Claim 12 is Obvious in View of Nedry and Phelps Claim 15 is Obvious in View of Nedry and Phelps Claim 16 is Obvious in View of Nedry and Phelps VI. CONCLUSION iii

4 TABLE OF AUTHORITIES Cases Page(s) Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629 (Fed. Cir. 2011)... 10, 12 Clio USA, Inc. v. The Procter and Gamble Co., IPR (PTAB)... 3 Graves v. Principi, 294 F.3d 1350 (Fed. Cir. 2002)... 2 In re Seversky, 474 F.2d 671 (CCPA 1973)... 8 Invue Security Prods. V. Merchandising Techs., Inc., IPR (PTAB)... 2 Nautique Boat Co., Inc. v. Malibu Boats, LLC, IPR (PTAB)... 2 Statutes 35 U.S.C passim 35 U.S.C passim 35 U.S.C. 311 et seq.....passim Regulations 37 C.F.R et seq....passim iv

5 EXHIBITS Ex U.S. Patent No. 8,622,441 Ex File History of U.S. Patent No. 8,622,441 Ex File History of U.S. Provisional Application No. 61/846,270 Ex File History of U.S. Patent Application No. 13/626,057 Ex Certificate of Service in the Litigation Ex Stipulated Order of Dismissal Without Prejudice in the Litigation Ex Rules of Practice, 77 Fed. Reg. No. 157 Ex Ex Ex Ex Ex Ex Carruth et al. U.S. Patent No. 8,418,434 ( Carruth ) Meltzer U.S. Patent No. 5,426,788 ( Meltzer ) Linstead U.S. Patent No. 3,438,223 ( Linstead ) Yates U.S. Patent No. 2,274,572 ( Yates ) Zaltzman U.S. Patent No. 4,023,245 ( Zaltzman ) Nedry U.S. Patent Publication No. 2014/ ( Nedry ) Ex Nedry Provisional 61/838,952 Ex Norris, Kathy. I Can t Believe I m Loom Knitting! (Little Rock, AR: Leisure Arts, Inc. 2010) ( Norris ) Ex Phelps, Isela. Looming Knitting Primer (New York: St. Martin s Griffin 2007) ( Phelps ) v

6 Ex Lijovich. Basic Instructions for Using a Double Lucet (January 2002, revised June 2002) ( Lijovich ) Ex Ex Ex The Horde of Vigdis (Aug ) ( Vigdis ) Declaration of Youjiang Wang, Ph.D., P.E. Declaration of Woli I. Urbe, Esq. vi

7 Pursuant to 35 U.S.C and 37 C.F.R. 42, Tristar Products, Inc. ( Petitioner ) respectfully petitions for Inter Partes Review (IPR) of claims 1, 2, 5, 11, 12, 15, and 16 of U.S. Patent No. 8,622,441 ( the 441 Patent ), which was filed on September 5, 2013 and issued on January 7, 2014, to Choon s Design LLC, and is currently assigned to Choon s Design Inc. ( Patent Owner ) according to the United States Patent and Trademark Office assignment records. I. MANDATORY NOTICES UNDER 37 C.F.R. 42.8(a)(1) A. REAL PARTY-IN-INTEREST UNDER 37 C.F.R. 42.8(b)(1) Petitioner Tristar Products, Inc. is the real party-in-interest for the instant petition. B. RELATED MATTERS UNDER 37 C.F.R. 42.8(b)(2) The 441 Patent is asserted by the Patent Owner in the following litigations pending in the United States District Court for the Eastern District of Michigan: Choon s Design Inc. v. NGS icommerce Enters. Corp., filed February 24, 2014 (2:14-cv-10847); Choon s Design Inc. v. Tristar Products, Inc., filed February 24, 2014 (2:14-cv-10848) ( the Litigation ); Choon s Design Inc. v. Quality Innovations Inc., filed March 14, 2014 (2:14-cv-11102); and Choon s Design Inc. v. Optari LLC, filed August 21, 2014 (4:14-cv-13242). Petitioner is the named defendant in the Choon Litigation. The earliest that Petitioner was served was March 4, Ex

8 The 441 Patent was the subject of a complaint by Petitioner for declaratory judgment filed in the United States District Court for the District of New Jersey in Tristar Products, Inc. v. Choon s Design LLC, filed February 25, 2014 (2:14-cv ) ( the Litigation ). Petitioner and Patent Owner stipulated to a dismissal of the Litigation on September 8, 2014, and the Litigation was dismissed without prejudice on September 9, Ex Although the Litigation was a civil action challenging the validity of the 441 Patent, the Litigation is not a bar to this petition under 35 U.S.C. 315(a)(1). The Court of Appeals for the Federal Circuit has held that [t]he dismissal of an action without prejudice leaves the parties as though the action had never been brought. Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir. 2002). On this principle, the Board has repeatedly held that dismissal of a civil action without prejudice does not bar inter partes review under 35 U.S.C. 315(a). See, e.g., Nautique Boat Co., Inc. v. Malibu Boats, LLC, IPR , Paper 13 at 9-11 (PTAB Nov. 26, 2014) (holding that petitioner s declaratory judgment action for invalidity in the United States District Court for the Middle District of Florida, which was dismissed without prejudice, did not bar inter partes review); Invue Security Prods. v. Merchandising Techs., Inc., IPR , Paper 17 at 8-10 (PTAB, Jun. 27, 2013) (holding that dismissal without prejudice of petitioner s declaratory 2

9 judgment action in the United States District Court for the Western District of North Carolina does not trigger the statutory bar prohibiting inter partes review); Clio USA, Inc. v. The Procter and Gamble Co., IPR , Paper 9 at 6-9 (PTAB, Jan. 9, 2014) (holding that where petitioner s action for declaratory judgment was dismissed without prejudice, it is treated as if it never existed, and does not bar inter partes review under 35 U.S.C. 315(a)). The 441 Patent has not been the subject of IPR or other post-grant proceedings. C. LEAD AND BACK-UP COUNSEL Petitioner provides the following designation of counsel. LEAD COUNSEL: Noam J. Kritzer patent@bakoskritzer.com nkritzer@bakoskritzer.com Bakos & Kritzer 147 Columbia Turnpike Suite 102 Florham Park, New Jersey Tel: Fax: BACKUP COUNSEL: Ryan S. McPhee patent@bakoskritzer.com rmcphee@bakoskritzer.com Bakos & Kritzer 945 Fourth Avenue Suite 411 San Diego, California Tel: Fax: D. SERVICE INFORMATION Please address all correspondence to the lead counsel at the address provided in section I.C of this Petition. Petitioner also consents to electronic service by at patent@bakoskritzer.com. 3

10 II. PAYMENT OF FEES 37 C.F.R Petitioner submits herewith the fees set forth in 37 C.F.R (a) for this Petition for Inter Partes Review. III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R A. Grounds for Standing Under 37 C.F.R (a) Petitioner certifies that the 441 Patent is available for IPR and that Petitioner is not barred or estopped from requesting IPR. B. Identification of Challenge Under 37 C.F.R (b) and Relief Requested Petitioner requests inter partes review of claims 1, 2, 5, 11, 12, 15, and 16 of the 441 Patent on the grounds set forth in the table below and requests that each of the claims be found unpatentable. An explanation of how claims 1, 2, 5, 11, 12, 15, and 16 are unpatentable under the statutory grounds identified below, including the identification of where each element is found in the prior art references, and the relevance of each of the prior art references, is provided in the form of detailed claim charts. Additional explanation and support for each ground of rejection is set forth in the Declaration of Youjiang Wang, Ph.D., P.E. (Ex. 1019). 4

11 Ground 441 Patent Basis for Unpatentability Claims Ground I Claims 1, 2, and 5 Anticipated under 35 U.S.C. 102 by Zaltzman Ground II Claims 11, 12, 15, and 16 Obvious under 35 U.S.C. 103 in view of Zaltzman Ground III Claims 1, 2, and 5 Anticipated under 35 U.S.C. 102 by Lijovich Ground IV Claims 11, 12, 15, and 16 Obvious under 35 U.S.C. 103 in view of Lijovich Ground V Claims 1, 2, and 5 Anticipated under 35 U.S.C. 102 by Nedry Ground VI Claims 11, 12, 15, and 16 Obvious under 35 U.S.C. 103 in view of Nedry and Phelps 1. Effective Filing Date The 441 Patent issued on January 7, 2014 from U.S. Application Serial No. 14/018,542 filed on September 5, 2013 ( the 542 Application ), purports to be a continuation of U.S. Application Ser. No. 13/626,057 ( the 057 Application ) filed September 25, 2012, and claims priority to U.S. Provisional Application Ser. No. 61/846,270 filed on July 15, 2013 ( the 270 Provisional ). To facilitate consideration, the relationship between the three applications is graphically illustrated below. Copies of the USPTO electronic file wrappers for the foregoing applications are being submitted as Ex. 1002, Ex. 1004, and Ex While the 542 Application is characterized as a continuation of the 057 Application, the 542 Application was filed with a set of claims which are not supported by the originally-filed disclosure of the 057 Application. 5

12 a. The 057 Application Does not Disclose an access slot disposed therebetween or upper and lower tabs Independent claim 1 as filed of the 542 Application requires that each of the posts include a first arm and a second arm and an access slot disposed therebetween and dependent claim 5 as filed of the 542 Application requires that each of the first arm and the second arm include upper and lower tabs for holding the links on the corresponding first arm and second arm. Ex at 188 (emphasis added). The 057 Application discloses an access groove 34A, 34B (Ex at 0021) and pins 21 each include arms 19 disposed on either side of an access groove 25. Ex at As shown in Figs. 6, 10, 11 and 12 of the 057 Application, the 057 Application does not provide support for posts with an access slot disposed therebetween or upper and lower tabs. However, the 270 Provisional Application discloses that [e]ach of the pins 28A, 28B includes a first arm 32a-b and second arm 34a-b supported on a base 36. The arms 32a-b, 34a-b defines an access slot 38 that extends across both of the posts 28A, 28B. Ex at Further, the 270 Provisional Application discloses that [e]ach of the first and second arms 32a-b, 34a-b include upper and lower tabs 42 that maintain a linked article within a center section 44. Ex at The 270 Provisional Application provides support for a post with a first arm and a second arm that include upper and lower tabs on the first arm and second arm as 6

13 required by claim 1. As such, the earliest priority date of independent claim 1 of the 441 Patent is the filing of the 270 Provisional Application on July 15, b. The 057 Application Does Not Disclose an access slot defined between a first arm and a second arm Dependent claim 12 of the 542 Application requires at least two posts spaced part from each other in a first direction, wherein each of the posts include an access slot defined between a first arm and a second arm. Ex at 190 (emphasis added). The term access slot is not found in the 057 Application. The 057 Application only makes references to an access grove. Ex at 0021 and As shown in the chart below, only the 270 Provisional Application provides support for posts that include an access slot defined between a first arm and a second arm as required by dependent claim 12 as filed of the 542 Application. 057 Application 270 Provisional Application Each of the access grooves 34A, 34B The arms 32a-b, 34a-b defines an extend entirely through the pins 28A, access slot 38 that extends across both 28B including through the flanges 30A, of the posts 28A, 28B. Ex B and the bases 32A, 32B and the bridge 36. Ex The pins 21 each include arms 19 disposed on either side of an access groove 25. Ex

14 057 Application 270 Provisional Application As such, the earliest priority date of independent claim 11 of the 441 Patent is the filing of the 270 Provisional Application on July 15, c. No Incorporation-by-Reference in the 057 Application The 057 Application fails to any incorporation-by reference language. Accordingly, the disclosure of each of these applications is limited to the written description specifically contained in each of them. Pursuant to 37 C.F.R. 1.57(a), an incorporation by reference must be set forth in the specification and must: (1) [e]xpress a clear intent to incorporate by reference by using the root words incorporat(e) and reference (e.g., incorporate by reference ); and (2) [c]learly identify the referenced patent, application, or publication. (emphasis added) A priority claim to an earlier field application without the language required by 37 C.F.R. 1.57(b) is not sufficient. In re de Seversky, 474 F.2d 671 (CCPA 1973). The words incorporate and reference are not used by the 057 Application. As such, the 057 Application cannot rely on the disclosure of any prior application to provide support for any of the claim features of the 441 Patent discussed above. 8

15 d. Designation as Continuation Does Not Save the 441 Patent The 542 Application was filed as a continuation of the 057 Application. This designation does not affect the conclusions reached above, because the 542 Application was filed with claims that contained subject matter which is not supported by the disclosure of the 057 Application. When a continuation application is filed with a claim reciting new matter not disclosed in its parent application, the continuation application does not receive the benefit of the parent s earlier filing date. See, e.g., Lockwood, 107 F.3d at e. Examination Under Pre-AIA Law is Non-Binding The file history of the 542 Application indicates that it was examined under the Pre-AIA Patent Law. This occurred as a result of the Patent Owner s failure to properly designate the 542 Application as AIA for containing at least one claim having an effective filing date on or after March 16, 2013 in a Statement Under 37 C.F.R or 1.78 for AIA Transition Applications. Accordingly, it is respectfully requested that the Board properly reexamined the 441 Patent under the AIA First-Inventor to File provisions. 2. Claim Construction Under 37 C.F.R (b)(3) Pursuant to 37 C.F.R (b), and solely for the purpose of this review, Petitioner construes the claim language such that the claims are given their broadest reasonable construction in light of the specification of the 441 Patent. For terms 9

16 not specifically listed and construed below, Petitioner construes them for purposes of this review in accordance with their plain and ordinary meaning under the required broadest reasonable construction. Petitioner reserves the right to challenge the validity of claims 1, 2, 5, 11, 12, 15, and 16 as failing to satisfy the requirements of 35 U.S.C. 112, and Petitioner s proposed claim constructions should not be construed as a waiver to challenge the claims on such grounds. For the purpose of discussing invalidity of the challenged claims in view of prior art references, Petitioner will attempt to construe various ambiguous claim terms under the broadest reasonable interpretation standard. a. The Preamble of Claim 1 The preamble of claim 1 (i.e., [a] device for creating an item consisting of a series of links ) is not a claim limitation. The phrase for creating an item consisting of a series of links merely recites an intended use of the device, and does not constitute a limitation of claim 1. If a prior art reference discloses the structural limitations of claim 1, the prior art would read on claim 1. If the Board construes the preamble as a limitation, a prior art device need only be capable of performing the recited function. See, Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 654 (Fed. Cir. 2011) ( Where all structural elements of a claim exist in a prior art product, and that prior art product is capable of satisfying all functional or intended 10

17 use limitations, the claimed invention is nothing more than an unpatentable new use for an old product. ) (citation omitted); see also MPEP b. access slot Claim 1 recites wherein each of the posts include a first arm and a second arm and an access slot disposed therebetween. Petitioner requests that the term access slot is construed as an open space between the first arm and the second arm. c. upper and lower tabs Claim 1 recites wherein each of the first arm and second arm include upper and lower tabs for holding the links on the corresponding first arm and second arm. Petitioner submits that the broadest reasonable interpretation for upper and lower tabs is upper and lower portions extending outward. d. for holding the links on the corresponding first arm and second arm Claim 1 recites wherein each of the first arm and second arm include upper and lower tabs for holding the links on the corresponding first arm and second arm. The phrase for holding the links on the corresponding first arm and second arm merely recites an intended use of the device, and does not constitute a limitation of claim 1. If a prior art reference discloses the structural limitation of the upper and lower tabs, the prior art would read on this limitation of claim 1. If the Board 11

18 construes this phrase as a limitation, a prior art device need only be capable of performing the recited function. See, Bettcher 661 F.3d at 654; see also MPEP e. The Preamble of Claim 11 The preamble of claim 11 (i.e., [a] kit for creating an item consisting of a series of links ) is not a claim limitation. The phrase for creating an item consisting of a series of links merely recites an intended use of the kit, and does not constitute a limitation of claim 11. If a prior art reference discloses the structural limitations of claim 11, the prior art would read on claim 11. If the Board construes the preamble as a limitation, a prior art device need only be capable of performing the recited function. See, Bettcher 661 F.3d at 654; see also MPEP f. for manipulating elastic members relative to each other Claim 15 recites a hook for manipulating elastic members relative to each other. The phrase for manipulating elastic members relative to each other merely recites an intended use of the hook, and does not constitute a limitation of claim 15. If a prior art reference discloses the structural limitation of claim 15, the prior art would read on claim 15. If the Board construes this phrase as a limitation, a prior art device need only be capable of performing the recited function. See, Bettcher 661 F.3d at 654; see also MPEP

19 IV. SUMMARY OF THE 441 PATENT A. BRIEF DESCRIPTION 1. The 441 Patent Specification The 441 Patent is directed to a device for creating an item formed by a series of Brunnian links. The 441 Patent discloses that [a] Brunnian link is a link formed from a closed loop doubled over itself to capture another closed loop to form a chain. Ex at 1: With reference to Fig. 1, a kit 10 comprises template 12, clip 16, hook 14, and a number of elastic members 18 to form links for a wearable item. Ex at 1:66 2:5, Fig. 1. With reference to Figs. 4-6, template 12 comprises a base 36 supporting two posts 28A and 28B, each of which comprises a first arm 32a-b and a second arm 34a-b. Each of the arms 32a-b and 34a-b comprises upper and lower tabs 42. Ex at Figs

20 B. SUMMARY OF THE PROSECUTION HISTORY OF THE 441 PATENT The 441 Patent issued from the 542 Application, which was filed on September 5, The Patent Office issued a communication on November 14, 2013 stating that the 542 Application was being identified as a pre-aia application and would be examined under pre-aia law. Ex at 66. An Examiner Interview was held on November 14, 2013, during which the Patent Examiner and applicant discussed Newcomb U.S. Patent No. 222,937 and Stewart U.S. Patent No. 289,578. Ex at 38. A Notice of Allowance was issued on November 27, 2013 and contained an Examiner s Amendment that, among other amendments, added the following phrase to claim 1: wherein each of the first arm and the second arm include upper and lower tabs for holding the links on the corresponding first arm and second arm. Ex at 34. The 441 Patent issued on January 7, V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE 441 PATENT IS UNPATENTABLE A. GROUND I: CLAIMS 1, 2, AND 5 ARE ANTICIPATED BY ZALTZMAN Zaltzman (Ex. 1012), which was not cited during the prosecution of the 441 Patent, issued on May 17, 1997, and discloses a hand-loom kit. With reference to Figs. 1, 1A, and 3 (reproduced below), the hand-loom kit comprises modules 14

21 including a plurality of pins 5. Claims 1-2 and 5 are anticipated and therefore rendered unpatentable by Zaltzman under 102(b). 1. Claim 1 is Anticipated by Zaltzman As shown in the chart below, Zaltzman discloses every element of Claim 1. Claim 1 A device for creating an item consisting of a series of links, the device comprising: at least two posts spaced part from each other in a first direction, Zaltzman Zaltzman discloses a hand-loom kit for woven products, which inherently consists of a series of links. See, 1:4-7; 1:37-39; 5:8. The hand-loom kit in Zaltzman includes at least two modules A and C (i.e., two posts) spaced apart from each other in a first direction. See e.g., 2:37-39; Fig. 3 (reproduced herein). wherein each of the posts include a first arm and a second arm and an access slot disposed therebetween, wherein each of the first arm and the second arm include upper and lower tabs for holding the links The modules in Zaltzman include a plurality of pins 5 (i.e., arms) longitudinally spaced a distance x apart, which includes an access slot therebetween. See e.g., 2:2-4; 2:52-54; Figs. 1 (reproduced below). As shown in Fig. 1A (reproduced herein), the pins 5 include a rounded top (i.e., an upper tab) and a flanged base (i.e., a lower tab), which 15

22 Claim 1 on the corresponding first arm and second arm. Zaltzman holds a link on corresponding pins 5. See., e.g., 2:13-20, 2:25-27; Fig. 1A and Fig Claim 2 is Anticipated by Zaltzman As shown in the chart below, Zaltzman discloses every element of Claim 2. Claim 2 The device as recited in claim 1, including a base supporting the at least two posts. Zaltzman The hand-loom in Zaltzman includes a module B (i.e., a base) for supporting modules A and C. See, e.g., Fig Claim 5 is Anticipated by Zaltzman As shown in the chart below, Zaltzman discloses every element of claim 5. Claim 5 The device as recited in claim 1, wherein the tabs are spaced horizontally apart from each other. Zaltzman As shown in Fig. 1 (reproduced herein) the pins 5, including rounded tops and flanged bases are spaced horizontally apart from each other. 16

23 B. GROUND II: CLAIMS 11, 12, 15, AND 16 ARE OBVIOUS IN VIEW OF ZALTZMAN 1. Claim 11 is Obvious Over Zaltzman in View of Phelps The following chart contains element-by-element comparisons of claim 11 and Zaltzman and Phelps: Claim 11 A kit for creating an item consisting of a series of links, the kit comprising: a template including at least two posts spaced part from each other in a first direction, wherein each of the posts include an access slot defined between a first arm and a second arm; and at least one clip including inward facing ends disposed on each side of an opening for securing ends of the series of links together. Zaltzman in View of Phelps Zaltzman discloses a hand-loom kit for woven products, which inherently consists of a series of links. See, 1:4-7; 1:37-39; 5:8. The hand-loom structure in Zaltzman includes at least two modules A and C spaced apart from each other in a first direction. See e.g., 2:37-39; Fig. 3 (reproduced above in Claim 1). The modules in Zaltzman include a plurality of pins 5 longitudinally spaced a distance x, which defines an access slot. See e.g., 2:2-4; 2:52-54; Figs. 1 (reproduced above). Phelps discloses a stitch holder: Opening First inward facing end Inward direction Second inward facing end Inward direction Phelps, Ex. 1016, 18 17

24 Claim 11 Zaltzman in View of Phelps End Opening End Phelps, Ex. 1016, 18 The last limitation recited in claim 11 requires at least one clip including inward facing ends disposed on each side of an opening for securing ends of the series of links together. While Zaltzman does not specifically teach a clip including inward facing ends, Phelps does. More particularly, Phelps discloses various methods of making knitted articles with the use of looms. Ex at As part of components for use with looms, Phelps discloses stitch holders, such as those illustrated herein, for holding live stitches that will be worked on later in the project, like a neckline or a tricky bit of shaping. Ex at 10 (emphasis added). The use and function of stitch holders, such as those in Phelps, are well known in the art. Ex at 44. For instance, Yates (Ex. 1011) and Linstead (Ex. 1010) disclose examples of such stitch holders. Yates describes stitch holders as follows: In the art of hand knitting it is customary, when knitting various garments which require that one or more openings be maintained in the body of the garment, at some given point or points, to temporarily 18

25 transfer from the knitting needles a number of stitches to a stitch holder for later consideration, so that the main knitting can be continued irrespective of the stitches on the stitch holder. The stitches on the stitch holder are later picked up and knitted in, when finishing that section of the garment. Ex at 1:3-13. As shown in Fig. 4, a piece of knitting is placed on the stitch holder, wherein each of the stitch loops of the piece is loaded onto, and held by, a leg portion 11 of the holder such that the stitch loops are prevented from becoming loose (i.e., unraveled). Stitch loops Piece of knitting Yates, Ex. 1011, Fig. 4 (with annotation). Linstead (Ex. 1010) also discloses a stitch holder 10 used for basically the same purpose as in Yates. The stitch holder 10 is illustrated in Fig

26 Stitch holder Stitch loops As shown above, stitch holders and their usage/functions are well known in the art. Ex at 44. Accordingly, when the stitch holders shown in Phelps are used in conjunction with the hand-loom kit as taught by Zaltzman, they receive and hold live stitches or stitch loops of a knitted component from the loom for assembly with another knitted component so as to complete a finished knit article. Ex at 49. The following illustration depicts how the stitch holder in Phelps would hold live stitches together. Ex at 50. As shown above, the live stitches of the knit component are loaded onto and held by the stitch holder in Phelps. Each of these live stitches is an end of a series 20

27 of knitted loops and therefore constitutes an end of a series of links. Ex at 51. Accordingly, the stitch holder of Phelps holds and thereby secures ends of a series of links together. At a minimum, the stitch holder of Phelps is capable of securing ends of a series of links together. Thus, Phelps discloses the clip recited in claim 11 of the 441 Patent. Ex at 52. Claim 11 also requires that the clip includes inward facing ends disposed on each side of an opening. As depicted below, the stitch holder of Phelps has two ends, and both ends face inward i.e., towards the center of the clip. First inward facing end Inward direction Opening Second inward facing end Inward direction Phelps, Ex at 18 (annotated). Thus, Phelps discloses a clip including inward facing ends disposed on each side of an opening. The device disclosed in Zaltzman is a hand-loom kit. Phelps specifically teaches that its stitch holder can be used when knitting with a loom, stating Essential Tools for your Loomy Bag. Ex at 7. Thus, a skilled person would have been motivated to provide the hand-loom kit with the Phelps stitch holder such that a 21

28 partially finished component made with the Zaltzman hand-loom kit could be loaded onto the stitch holder for assembly with another knit component for completing a finished knit article. Ex at 55. Accordingly, claim 11 is obvious over Zaltzman in view of Phelps. Ex at 56. Phelps also teaches additional clips (i.e., devices for holding things together) for securing ends of a series of links made with the use of knitting looms. Phelps discloses a scarflet comprising a series of links, and two ends thereof secured to one another by a pin/brooch (i.e., a clip). Ex at 13. The pin/brooch disclosed by Phelps would inherently have a backside pin fastener or clasp to secure the pin/brooch to the scarflet. Ex at 58. Pin/brooch (clip) Ends of series of links As demonstrated, Phelps teaches use of these additional holding devices (i.e., the pin/brook and buttons) specifically in conjunction with knit articles made with the use of knitting looms. Ex at In such circumstances, a skilled person would have been motivated to provide the knitting apparatus of Zaltzman with the Phelps pin/brooch and buttons as part of a kit such that two ends of a linked article 22

29 can be secured to one another. Ex at 62. Accordingly, claim 11 is obvious over Zaltzman in view of Phelps. Ex at Claim 11 is Obvious Over Zaltzman in View of Norris While Zaltzman does not specifically teach a clip including inward facing ends, Norris does. Norris (Ex. 1015) has a copyright date of 2010 (Ex at 7), which is more than one year before the priority date of the 441 Patent. Norris discloses that stitches [can be] removed from the pegs and placed on a cable needle while other stitches are being worked. We used a U-shaped cable needle. Ex at 3; see id. at 4-5 (photos reproduced below). As demonstrated above, the cable needle in Norris holds together two live stitches or loops when removed from the loom while other stitches are worked on. Since each of these live stitches form ends of a series of knitted knots, they constitute ends of a series of links. Ex at 70. Accordingly, Norris cable needle holds and secures ends of a series of links together. To the extent that the cable needle does not specifically perform that function, it is capable of performing same. Ex at

30 The device disclosed in Zaltzman is a hand-loom kit. Norris specifically teaches that its the cable needle is used in conjunction with knitting a loom. Ex at 3-9, 12. Thus, a skilled person would have been motivated to provide the hand-loom kit of Zaltzman with the Norris clip devices for the same purposes as disclosed in Norris. Ex at 73. Accordingly, claim 11 is obvious over Zaltzman in view of Norris. Ex at Claim 11 is Obvious Over Zaltzman in View of Linstead While Zaltzman does not specifically teach a clip including inward facing ends, as described above, Linstead does. More particularly, Linstead discloses a stitch holder 10 comprising a U-shaped needle 11 having a pair of needle ends 12 and a curved intermediate portion 13. As depicted in Fig. 1 below, needle ends 12 of Linstead face inward towards the center of the stitch holder. Linstead further discloses that stitches 14 are retained on the stitch holder by end protection means or end connector 15. Ex. 1010, 2:19-20 (emphasis added). Inward direction First inward facing needle end Inward direction Opening Second inward facing needle end Linstead, Ex. 1010, Fig. 1 (annotated). 24

31 Thus, Linstead discloses a clip including inward facing ends disposed on each side of an opening. A skilled person would have been motivated to provide the handloom kit of Zaltzman with the Linstead clip devices for the same purposes as disclosed in Linstead for holding partially complete stitches while another part is being knitted. Ex. 1010, 1: Claim 12 is Obvious Over Zaltzman in View of Phelps or Norris Claim 12 is dependent on claim 1 and further requires a base supporting the at least two posts. As shown in the chart below, Zaltzman discloses the base element in claim 9, and each and every element that claim 12 depends on in view of Phelps or Norris as discussed above. Claim 12 The kit as recited in claim 11, including a base supporting the at least two posts. Zaltzman in View of Phelps or Norris The hand-loom in Zaltzman includes a module B for supporting the at least two modules A and C. See, e.g., Fig. 3 (reproduced above). 5. Claim 15 is Obvious Over Zaltzman in View of Carruth or Meltzer Claim 15 is dependent on claim 1 and further requires a hook for manipulating elastic members relative to each other. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. Ex parte 25

32 Masham, 2 USPQ2d 1647 (B.P.A.I. 1987). The phrase for manipulating elastic members relative to each other recites a function rather than a structural limitation. As such, a hook is the only structural limitation of claim 15. Zaltzman discloses the use of a weaving needle with the hand-loom kit. Ex : Thus, it would have been obvious to a skilled person to use a hook which is a type of weaving needle. 6. Claim 16 is Obvious Over Zaltzman in View of Carruth or Meltzer Claim 16 is dependent on claim 1 and further requires a plurality of elastic members for forming the series of links. As noted above, Brunnian links are known in the art. Ex at 86. For example, the links disclosed in Carruth and Meltzer are formed in exactly the same manner as described in the 441 Patent. Referring to Figs. 2-3 (reproduced below), Carruth describes its links as follows. The units 110 are interlocked to form a continuous chain (e.g., via a connecting mechanism). For example, as shown in FIG. 3, to form the chain, a first unit 110 a is folded (e.g., in half) in a folded configuration, wherein the folded configuration has a first top arc 210a and a second top arc 210b that are positioned next to each other, and a first bottom hook 220a and a second bottom hook 220b, wherein the bottom hooks 220 are positioned across from each other. A second unit 110b is fed through both bottom hooks 220 of the first unit 110, then the second unit 110b is folded to the folded configuration (as described above). Ex at 2:

33 Carruth, Ex. 1008, Fig. 2 Carruth, Ex. 1008, Fig. 3 Meltzer also discloses a chain formed by Brunnian links. Referring to Figs. 4 and 5 (reproduced herein), Meltzer discloses: [T]he connecting loop 24 is supported by hand (or by some mechanical means) and a second toroidal loop 26 is... squeezed together to flatten it somewhat. This flattened loop is then passed through the central opening 28 of the looped connecting member 24. Then the ends of the flattened second toroidal loop 26 are opened while its mid-portion is within the opening 28 of the looped connecting member 24 so that the second toroidal loop 26 is in a configuration having a bridging midsection 30 and a pair of end openings 32, with the bridging midsection 30 extending through the opening 28 in the looped connecting member 24 and the end openings 32 being axially aligned with each other and located outside of the looped connecting member After the first looped link 22A is formed (and connected to the connecting loop 24) a third toroidal loop 26 is squeezed flat and inserted through the axially aligned extending end openings 32 of the first looped link 22A. The third toroidal shaped loop 26 is then opened so that it is in the same configuration as the first looped link 22A, to thereby form the third toroidal loop into the second looped link 22B. 27

34 This procedure is then repeated to form and connect the remaining looped links 22C-22H of the ornament 20. Ex at 4: Meltzer, Ex. 1009, Fig. 4 Meltzer, Ex. 1009, Fig. 5 Thus, Carruth and Meltzer disclose the plurality of elastic members for forming the series of links as recited in claim 16 of the 441 Patent. C. GROUND III: CLAIMS 1, 2, AND 5 ARE ANTICIPATED BY LIJOVICH 1. Claim 1 is Anticipated by Lijovich Lijovich has a copyright date of January 2002, revised June 2002, which is more than one year before the filing date of the earliest application to which the 441 patent can claim priority. Lijovich discloses a double lucet for creating a cord. As shown in the following figures, the device comprises two individual lucets, each with two horns. The two lucets are coupled together. Lijovich discloses a method of using the device with yarn to create a cord. See Lijovich; Ex at

35 Lijovich; Ex at 1. Claim 1 requires at least two posts spaced part from each other in a first direction. Lijovich discloses two lucets, each of which meets the required structure of a post. As shown in the first figure above, the lucets are separated and thus spaced apart from each other. Thus, the lucets meet this limitation of claim 1. Alternatively, when assembled together, the lucets intersect in the center of the double lucet, with each lucet extending outward from the center. Thus, when assembled, the lucets are spaced apart from each other in a first direction, as shown in the top-down view below: Lucet 1 The lucets are spaced apart in a first direction Lucet 2 Claim 1 further requires that each post includes a first arm and a second arm and an access slot disposed therebetween. As shown in the above figures, each 29

36 lucet disclosed by Lijovich has two horns, each of which meets the required structure for an arm. Claim 1 further requires that each of the first arm and the second arm include upper and lower tabs for holding the links on the corresponding first arm and second arm. As discussed above, the recitation of upper and lower tabs requires upper and lower portions extending outward. Each horn disclosed by Lijovich has a concave shape, with an upper portion extending outward from the center of the horn and a lower portion extending outward from the center of the horn. Lijovich discloses that the middle area in between the upper and lower portions is where yarn is wound. Ex at 2-5. The following chart provides an element-by-element comparison of claim 1 and Lijovich: The 441 Patent 1. A device for creating an item consisting of a series of links, the device comprising: at least two posts spaced part from each other in a first direction, Lijovich Basic Instructions for Using a Double Lucet The technique for using a double lucet is simply a variation on basic luceting, creating a thicker, sturdy, two-color cord. Ex at 1 (emphasis in original). Lijovich discloses two posts: 30

37 Post 1 Post 2 Post 1 Post 2 wherein each of the posts include a first arm and a second arm and an access slot disposed therebetween, Each post includes a first arm and a second arm: Post 2 1 st arm Post 2 2 nd arm Post 1 1 st arm Post 1 2 nd arm Post 2 Post 1 An access slot is disposed between the first arm and a second arm on each post: 31 Post 1 1 st arm

38 Post 2 1 st arm Post 1 2 nd arm Post 2 Access Slot Post 1 Access Slot Post 2 2 nd arm wherein each of the first arm and the second arm include upper and lower tabs for holding the links on the corresponding first arm and second arm. Each arm has a concave shape forming an upper and lower extension. Post 1 1 st arm Upper extension Post 1 2 nd arm Upper extension Post 1 1 st arm Lower extension Post 1 2 nd arm Lower extension 32

39 Post 2 2 nd arm Upper extension Post 2-2 nd arm Lower extension Post 2 1 st arm Upper extension Post 2 1 st arm Lower extension As demonstrated above, Lijovich discloses every limitation of claim Claim 2 is Anticipated by Lijovich Claim 2 is dependent on claim 1 and further requires a base supporting the at least two posts. Lijovich discloses a handle on one of the lucets that functions as a base, supporting both lucets during use. Handle / Base Lijovich; Ex at 1. Lijovich, Ex at 5. 33

40 As demonstrated above, Lijovich discloses every limitation of claim Claim 5 is Anticipated by Lijovich Claim 5 is dependent on claim 1 and further requires wherein the tabs are spaced horizontally apart from each other. As demonstrated above with respect to claim 1, Lijovich discloses two lucets, each with two horns, and each horn has portions extending outward that meet the claim limitation for tabs. As shown below, Lijovich discloses that the extensions are spaced apart horizontally from each other. The upper extensions (tabs) are spaced apart horizontally from each other. The lower extensions (tabs) are spaced apart horizontally from each other. Lijovich; Ex at 5 (rotated counterclockwise). As demonstrated above, Lijovich discloses every limitation of claim 5. 34

41 D. GROUND IV: CLAIMS 11, 12, 15, AND 16 ARE OBVIOUS IN VIEW OF LIJOVICH 1. Claim 11 is Obvious Under 35 U.S.C. 103(a) in View of Lijovich and Phelps Claim 11 requires a template including at least two posts spaced apart from each other in a first direction. As discussed above, Lijovich discloses two lucets, each of which meets the required structure of a post. As shown in the figures above, the lucets are separated and thus spaced apart from each other in a first direction. Thus, the lucets meet this limitation of claim 11. Alternatively, when assembled together, the lucets intersect in the center of the double lucet, with each lucet extending outward from the center. Thus, when assembled, the lucets are spaced apart from each other in a first direction, as shown in the top-down view above. Claim 11 further requires wherein each of the posts include an access slot defined between a first arm and a second arm. As shown in the figures above, each lucet disclosed by Lijovich has two horns, each of which meets the required structure for an arm. Further, the distance between the horns define an access slot required by claim 11. While Lijovich does not specifically teach a clip including inward facing ends, Phelps does. As discussed above in Section V(B)(1) with respect to Zaltzman, Phelps discloses stitch holders for use with looms. The discussion of Phelps, Yates, and Linstead applies here with respect to Lijovich as well. 35

42 The device disclosed in Lijovich is for a double lucet for creating a cord. Phelps specifically teaches that its stitch holder can be used when knitting with a loom, stating Essential Tools for your Loomy Bag. Ex at 7. Thus, a skilled person would have been motivated to provide the double lucet with the Phelps stitch holder such that a partially finished component made with the Lijovich double lucet could be loaded onto the stitch holder for assembly with another knit component for completing a finished knit article. Ex at 101. Accordingly, claim 11 is obvious over Lijovich in view of Phelps. Ex at 103. As discussed above, Phelps also teaches additional clips (i.e., devices for holding things together) for securing ends of a series of links made with the use of knitting looms. A skilled person would have been motivated to provide the double lucet of Lijovich with the Phelps pin/brooch as part of a kit such that two ends of a linked article can be secured to one another. Ex at 100. Accordingly, claim 11 is obvious over Lijovich in view of Phelps. Ex at 101. The following chart provides an element-by-element comparison of claim 11 and Lijovich and Phelps: The 441 Patent 11. A kit for creating an item consisting of a series of links, the kit comprising: Lijovich Basic Instructions for Using a Double Lucet; and Phelps Loom Knitting Primer The technique for using a double lucet is simply a variation on basic luceting, creating a thicker, 36

43 a template including at least two posts spaced part from each other in a first direction, sturdy, two-color cord. Ex at 1 (emphasis in original). Lijovich discloses two posts: Post 1 Post 2 Post 1 Post 2 wherein each of the posts include an access slot defined between a first arm and a second arm; and Each post includes a first arm and a second arm: Post 2 1 st arm Post 2 2 nd arm Post 1 1 st arm Post 1 2 nd arm Post 2 Post 1 37

44 An access slot is defined between the first arm and a second arm on each post: Post 2 1 st arm Post 1 2 nd arm Post 1 2 nd arm Post 2 2 nd arm Post 2 Access Slot Post 1 Access Slot at least one clip including inward facing ends disposed on each side of an opening for securing ends of the series of links together. Phelps discloses a stitch holder: Opening First inward facing end Second inward facing end Inward direction Inward direction 38 Phelps, Ex. 1016, at Claim 11 is Obvious Under 35 U.S.C. 103(a) in View of Lijovich and Norris While Lijovich does not specifically teach a clip including inward facing ends, Norris does. As described above in Section V(B)(2), Norris cable needle holds and secures ends of a series of links together. To the extent that the cable needle does not specifically perform that function, it is capable of performing same.

45 The device disclosed in Lijovich is for a double lucet for creating a cord. Norris specifically teaches that its cable needle is used in conjunction with knitting a loom. Ex at 3-9, 12. Thus, a skilled person would have been motivated to provide the double lucet of Lijovich with the Norris clip devices for the same purposes as disclosed in Norris. Ex at 101. Accordingly, claim 11 is obvious over Lijovich in view of Norris. Ex at Claim 11 is Obvious Under 35 U.S.C. 103(a) in View of Lijovich and Linstead While Lijovich does not specifically teach a clip including inward facing ends, as described above, Linstead does. More particularly, Linstead discloses a stitch holder 10 comprising a U-shaped needle 11 having a pair of needle ends 12 and a curved intermediate portion 13. As depicted in Fig. 1 below, needle ends 12 of Linstead face inward towards the center of the stitch holder. Linstead further discloses that stitches 14 are retained on the stitch holder by end protection means or end connector 15. Ex. 1010, 2:19-20 (emphasis added). 39

46 Inward direction Opening First inward facing needle end Inward direction Second inward facing needle end Linstead, Ex. 1010, Fig. 1 (annotated). Thus, Linstead discloses a clip including inward facing ends disposed on each side of an opening. A skilled person would have been motivated to provide the double lucet of Lijovich with the Linstead clip devices for the same purposes as disclosed in Linstead for holding partially complete stitches or cords while another part is being knitted. Ex. 1010, 1: Claim 12 is Obvious Under 35 U.S.C. 103(a) in View of Lijovich and Phelps Claim 12 is dependent on claim 1 and further requires a base supporting the at least two posts. As shown in the figure below, the handle of the double lucet disclosed by Lijovich provides a base to support the two posts. 40

47 Post 1 Post 2 Base Claim The kit as recited in claim 11, including a base supporting the at least two posts. Lijovich See figure above. Ex at 5 4. Claim 15 is Obvious Under 35 U.S.C. 103(a) in View of Lijovich and Phelps Claim 15 is dependent on claim 1 and further requires a hook for manipulating elastic members relative to each other. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (B.P.A.I. 1987). The phrase for manipulating elastic members relative to each other recites a function rather than a structural limitation. As such, a hook is the only structural limitation of claim 15. While Lijovich does 41

48 not specifically teach a hook, Phelps does. Phelps discloses the use of crochet hooks, such as those illustrated below, for picking up dropped stitch or when binding off a flat panel from the knitting loom. Ex at 10. Phelps, Ex at 17 The Horde of Vigdis (Ex. 1018) has a publication date of August 5, 2011, which is more than one year before the filing date of the earliest application to which the 441 patent can claim priority. As illustrated below, The Horde of Vigdis teaches the use of a hook to form a lucet cord. The Horde of Vigdis, Ex at 3 42

49 Thus, a skilled person would have been motivated to provide the double lucet with the Phelps hooks to form a lucet chord. Accordingly, claim 11 is obvious over Lijovich in view of Phelps. 5. Claim 16 is Obvious Under 35 U.S.C. 103(a) in View of Lijovich and Phelps and Carruth or Meltzer Claim 16 is dependent on claim 11 and further requires a plurality of elastic members for forming the series of links. A claim containing a recitation of the intended use of a device does not constitute a limitation of the claim. See Ex parte Masham, 2 USPQ2d 1647 (B.P.A.I. 1987). The phrase for forming the series of links recites a function rather than a structural limitation. As such, a plurality of elastic members is the only structural limitation of claim 16. While Lijovich does not specifically teach the use of a plurality of elastic members, as evidenced by Carruth and Meltzer and as acknowledged by Patent Owner in the 441 Patent, methods of manually creating Brunnian links with elastic bands are well known in the art. See, e.g., Ex at 2:17-18; 2:31-41 and Fig. 3; Ex at 2:30-49; Ex at 4:19-55; and Ex at 111. The device disclosed in Lijovich is a double lucet for creating a cord. The cord formed from the Lijovich device can be assembled to form an ornament. Carruth and Meltzer discuss the use of elastic bands for forming ornaments. Thus, a skilled person would have been motivated to provide the double lucet with a plurality of elastic members to form an ornament. Although 43

50 Lijovich cautions against damaging the double lucet from tugging tightly, it would have been obvious to a skilled person to use elastic bands with minimal tension or utilize a double lucet formed from hard wood of sufficient thickness or plastic or metal to withstand an elastic member. Ex at 113. Accordingly, claim 16 is obvious over Lijovich in view of Phelps or Norris and Meltzer or Carruth. E. GROUND V: CLAIMS 1, 2, AND 5 ARE ANTICIPATED BY NEDRY 1. Claim 1 is Anticipated by Nedry As discussed above, the earliest priority date for claim 1 of the 441 Patent is July 15, 2013 (i.e., the filing date of the 270 Provisional Application). Nedry (Ex. 1013) claims the benefit of the 098 Provisional Application (Ex. 1014), which was filed on June 25, Nedry is therefore prior art as of June 25, 2013 with respect to the subject matter described in the 270 Provisional Application. Nedry discloses a platform for linking elastic bands together to form bracelets, anklets, necklaces and jewelry products. Ex at Abstract; Ex at 001, 003. The platform comprises a base 12 with a plurality of stations 16 for retaining elastic bands. Ex at Abstract, Fig. 3, ; Ex at Fig. 3, Each station 16 comprises a pedestal 30 and two stems 32 which extend upward from the base. Ex at Fig. 2, 0037; Ex at Fig. 2,

51 Each stem comprises a crown 34 at the top with a distal end 36 extending outward from the stem. Ex at Fig. 2, 0037; Ex at Fig. 2, Nedry, Ex at Figs Nedry discloses that the platform can be used for weaving interlinking bands to provide a plurality of interwoven elastic bands. Also disclosed is a method for weaving interlinking bands comprising the steps of a) stretching an elastic band between two or more stems of two or more stations of a platform having a plurality of stations aligned into one or more rows such that tension created by the stretching holds the band in place suspended between the two or more stems, b) stretching another elastic band between two or more stems of two or more stations of a platform having a plurality of stations aligned into one or more rows such that tension created by the stretching holds the band in place suspended between the two or more stems, c) pulling a portion of one of the elastic bands through the elastic band by means of 45

52 a weaving utensil, d) attaching the portion of the elastic band pulled through another elastic band to at least one stem such that tension caused by stretching the elastic band holds the portion in place about the at least one stem; and repeating steps a-d to provide a plurality of interwoven elastic bands. Nedry, Ex at 0023; see also Ex at Abstract, 008, and Nedry: The following chart provides an element-by-element comparison of claim 1 The 441 Patent Nedry U.S. Publication No. 2014/ A device for creating an item consisting of a series of links, the device comprising: Platform For Weaving Interlinking Bands. Ex. 1013, Title; Ex. 1014, Title. at least two posts spaced part from each other in a first direction, Nedry discloses a plurality of stations 16 mounted on a base 12. Ex at Fig. 3, ; Ex at Fig. 3, Ex at Fig

53 At least two of the stations are spaced apart from each other in a first direction: Two stations Ex at Fig. 3 (partial view). As shown in Fig. 2, each station comprises a pedestal 30 (i.e., a post). Ex at Fig. 2; Ex at Fig. 2. wherein each of the posts include a first arm and a second arm and an access slot disposed therebetween, As shown in Fig. 3 (reproduced above), the two pedestals are spaced apart from each other. Each station 16 comprises two stems 32 (i.e., a first arm and a second arm) extending upward from a pedestal 30. A space (i.e., an access slot) is disposed between the two stems. 47

54 wherein each of the first arm and the second arm include upper and lower tabs for holding the links on the corresponding first arm and second arm. Ex at Fig. 2, 0037; Ex at Fig. 2, Each stem 32 comprises a crown 34 with a distal end 36 protruding from the stem (i.e., an upper tab) and a protrusion at the bottom of the stem just above the pedestal 30 (i.e., a lower tab). Ex at Fig. 2, 0037; Ex at Fig. 2. The stems hold elastic bands. In use elastic bands are stretched over two or more stems, either on the same station or on neighboring stations. Ex at 0043; Ex at 008, 0016,

55 As demonstrated above, Nedry discloses every limitation of claim Claim 2 is Anticipated by Nedry Claim 2 is dependent on claim 1 and further requires a base supporting the at least two posts. Nedry discloses base 12 (i.e., a base) supporting stations 16 (i.e., the at least two posts). The following chart provides a comparison of claim 2 and Nedry: The 441 Patent Nedry U.S. Publication No. 2014/ The device as recited in Nedry discloses a base 12 that supports stations claim 1, including a base 16. Ex at Fig. 3, ; Ex supporting the at least two at Fig. 3, Platform 10 is posts. comprised of a base 12 in the shape of a flattened cylinder. Ex at 0035; Ex at 21. A large portion of top surface 14 may be covered by a plurality of stations 16. Ex at 0036; see also Ex at Ex at Fig. 3. As demonstrated above, Nedry discloses every limitation of claim 2.

56 3. Claim 5 is Anticipated by Nedry Claim 5 is dependent on claim 1 and further requires wherein the tabs are spaced horizontally apart from each other. As demonstrated above with respect to claim 1, Nedry discloses stems 32, each with a crown 34 (i.e., an upper tab) and a portion extending from the base of the stem (i.e., a lower tab). When base 12 is laid flat, the crows and protrusions on station 16 are spaced apart horizontally from each other. See Ex at Figs. 1-3, 6; Ex at Figs. 1-3, 6. The following chart provides a comparison of claim 5 and Nedry: The 441 Patent Nedry U.S. Publication No. 2014/ The device as recited in The crowns 34 (i.e., an upper tabs) and claim 1, wherein the tabs are protrusions at the base of each stem 32 (i.e., a spaced horizontally apart lower tabs) are spaced apart from each other. from each other. When base 12 is laid flat, the crowns 34 (i.e., an upper tabs) and protrusions at the base of each stem 32 (i.e., a lower tabs) are spaced horizontally apart from each other. Ex. 1013, Fig. 1; Ex. 1014, Fig. 1. As demonstrated above, Nedry discloses every limitation of claim 5. 50

57 F. GROUND VI: CLAIMS 11, 12, 15, AND 16 ARE OBVIOUS IN VIEW OF NEDRY AND PHELPS 1. Claim 11 is Obvious in View of Nedry and Phelps As discussed above, the earliest priority date for claim 11 of the 441 Patent is July 15, 2013 (i.e., the filing date of the 270 Provisional Application). Nedry (Ex. 1013) claims the benefit of the 098 Provisional Application (Ex. 1014), which was filed on June 25, Nedry is therefore prior art as of June 25, 2013 with respect to the subject matter described in the 270 Provisional Application. Nedry discloses a platform for linking elastic bands together to form bracelets, anklets, necklaces and jewelry products. Ex at Abstract; Ex at 001, 003. The platform comprises a base 12 with a plurality of stations 16 for retaining elastic bands. Ex at Abstract, Fig. 3, ; Ex at Fig. 1014, Each station 16 comprises a pedestal 30 and two stems 32 which extend upward from the base. Ex at Fig. 2, 0037; Ex at Fig. 2, A space is provided between the two stems. Ex at Fig. 2; Ex at Fig. 2. Claim 11 requires at least one clip including inward facing ends disposed on each side of an opening for securing ends of the series of links together. While Nedry does not specifically teach a clip, Phelps does. More particularly, Phelps discloses various methods of making knitted articles with the use of looms. Ex

58 at As discussed above in Section V(B)(1), Phelps discloses the clip recited in claim 11. Ex at 126. The device disclosed in Nedry is a loom-like platform for weaving interlinking bands. Phelps specifically teaches that its stitch holder can be used when knitting with a loom, stating Essential Tools for your Loomy Bag Ex at 7. Thus, a skilled person would have been motivated to provide the platform of Nedry with the Phelps stitch holder such that a partially finished component made with the Nedry platform could be loaded onto the stitch holder for assembly with another linked component for completing a finished linked article. Ex at 127. Accordingly, claim 11 is obvious over Nedry in view of Phelps. Ex at 129. As discussed above, Phelps also teaches additional clips (i.e., devices for holding things together) for securing ends of a series of links made with the use of knitting looms. A skilled person would have been motivated to provide the platform of Nedry with the Phelps pin/brooch as part of a kit such that two ends of a linked article can be secured to one another. Ex at 127. Accordingly, claim 11 is obvious over Nedry in view of Phelps. Ex at 129. The following chart provides an element-by-element comparison of claim 11 and Nedry and Phelps: 52

59 The 441 Patent 11. A kit for creating an item consisting of a series of links, the kit comprising: Nedry U.S. Publication No. 2014/ and Phelps Loom Knitting Primer Nedry discloses a Platform For Weaving Interlinking Bands. Ex. 1013, Title; Ex. 1014, Title. a template including at least two posts spaced part from each other in a first direction, Nedry discloses a plurality of stations 16 mounted on a base 12. Ex at Fig. 3, ; Ex at Fig. 3, Ex at Fig. 3. At least two of the stations are spaced apart from each other in a first direction: Two stations 53

60 Ex at Fig. 3 (partial view). As shown in Fig. 2, each station comprises a pedestal 30 (i.e., a post). wherein each of the posts include an access slot defined between a first arm and a second arm; and Ex at Fig. 2; Ex at Fig. 2. As shown in Fig. 3 (reproduced above), the two pedestals (posts) are spaced apart from each other. Each station 16 comprises two stems 32 (i.e., a first arm and a second arm) extending upward from a pedestal 30. A space (i.e., an access slot) is disposed between the two stems. at least one clip including inward facing ends disposed on each side of an opening Ex at Fig. 2, 0037; Ex at Fig. 2, Nedry discloses that the stems hold elastic bands. In use elastic bands are stretched over two or more stems, either on the same station or on 54

61 for securing ends of the series of links together. neighboring stations. Ex at 0043; Ex at 008, 0016, Phelps discloses a stitch holder: First inward facing end Inward direction Opening Second inward facing end Inward direction Phelps, Ex at 10 (annotated). As demonstrated above, the kit of claim 11 is rendered obvious in view of Nedry and Phelps. 2. Claim 12 is Obvious in View of Nedry and Phelps Claim 12 is dependent on claim 11 and further requires a base supporting the at least two posts. Nedry discloses base 12 (i.e., a base) supporting stations 16 (i.e., the at least two posts). The following chart provides a comparison of claim 12 and Nedry: The 441 Patent Nedry U.S. Publication No. 2014/ The kit as recited in claim Nedry discloses a base 12 that supports stations 11, including a base 16. Ex at Fig. 3, ; Ex supporting the at least two at Fig. 3, Platform 10 is posts. comprised of a base 12 in the shape of a flattened cylinder. Ex at 0035; Ex at 21. A large portion of top surface 14 may be 55

62 covered by a plurality of stations 16. Ex at 0036; see also Ex at Ex at Fig. 3. Nedry and Phelps render obvious the kit of claim 11. As demonstrated above, Nedry discloses the additional limitation of claim 12. Accordingly, claim 12 is obvious in view of Nedry and Phelps. 3. Claim 15 is Obvious in View of Nedry and Phelps Claim 15 is dependent on claim 11 and further requires a hook for manipulating elastic members relative to each other. Nedry discloses weaving utensil 18 which has a handle 19 on one end and a weaving hook 17 on the opposite end. Ex at 0035, Figs. 1, 3; Ex at Abstract, 008, 0012, 0021, 0027, Figs. 1, 3. Nedry further discloses that the hook is used for manipulating elastic members such as rubber bands. Specifically, Nedry discloses that a utensil may be used to 56

63 assist in interlinking the bands (Ex at 0017) and that a weaving utensil may be used to pull a portion of an elastic band stretched between two or more stems. Ex at 0023, 0035; see also Ex at Abstract, 008, 0012, 0021, 0027, Figs. 1, 3. The following chart provides a comparison of claim 12 and Nedry: The 441 Patent Nedry U.S. Publication No. 2014/ The kit as recited in claim Nedry discloses a weaving utensil that has a 11, including a hook for hook: Top surface 14 may also include a clip manipulating elastic members 22 for securing a weaving utensil 18 to the top relative to each other. surface 14 when not in use. In this embodiment, the weaving utensil 18 may be elongate having a handle 19 on one end and a weaving hook 17 on the opposite end. Ex at Ex at Fig