Jason Bier and Josh Gutstein are Chicago lawyers. They are also entrepreneurs. Several years ago, when stayed collar dress shirts were once again gaining popularity in the men's fashion world, Bier and Gutstein found themselves facing a persistent problem: like socks, their stays (either one at a time or by pairs) would eventually disappear, usually due to inadvertently forgetting to remove them before laundry or dry cleaning.
So the two formed a new partnership in addition to their law firm, and invented the Stayclip, a keychain-like device which, when coupled with specially designed collar stays, keeps those stays organized and easily accessible. (And it works, too: I have purchased one for myself and given several as gifts -- though I'm not quite sure who the target market is for the $7,800 set of platinum stays, or the $595 designer shirts that expose the diamond studs and/or monograms.) Bier and Gutstein also sought patent protection on several aspects of their creation, both for design and utility.
One of those patents finally issued today as U.S. Patent No. 7,578,034 after a long battle in the PTO. The case is unremarkable but for an Examiner who insisted that this:
was an anticipatory reference for this:
1. A device for storing at least one perforated collar stay comprising:
first and second arcuate members releasably engageable to form a closed loop, at least one arcuate member being pivotable; and
a collar stay having a perforation, and an arcuate member extending through the perforation.
It was, strangely, a 102 rejection--not 103 for obviousness. So how did the Examiner say that the keyholder met the claimed limitation of "a collar stay having a perforation"? Because "a key is capable of functioning as a collar stay. For example, a long key having a small head portion such as taught by [other prior art] can be used as a collar stay."
This led to what may be the greatest piece of evidence ever submitted to the PTO: a Rule 132 declaration by Bier with this exhibit as support that "A key is not a collar stay," and that using a key as such would damage a shirt's collar.
The BPAI agreed last November:
We acknowledge the Examiner’s argument that a key 9 is considered a collar stay, since a key is capable of functioning as a collar stay. The first part of the Examiner’s statement is simply erroneous. A key is not a collar stay. And the Examiner is in error for “considering” it so. The second premise is that a key is capable of functioning as a collar stay. This statement is amenable to proof, but the Examiner, who bears the burden of establishing anticipation by a preponderance of the evidence, has offered no proof for this assertion. Inasmuch as this assertion has been challenged on the record by the Appellants, it is incumbent on the part of the Examiner to offer more than a bare assertion that this is so. Since the Examiner has merely repeated his argument in more detail at page 11, we must conclude that this finding is based on speculation.
For their troubles, the patentees were awarded over 1,100 days of patent term extension due to to PTO delays. Congratulations, Josh & Jason.
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