Ex Parte Anderson

Patent Trial and Appeal Board

May 31, 2016

12917459 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/917,459 11/01/2010
91424 7590
Lawrence E. Anderson
6304 Waterway Dr.
Falls Church, VA 22044
06/01/2016
FIRST NAMED INVENTOR
LA WREN CE E. ANDERSON
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.
Wear_Protectl 1552
EXAMINER
FERREIRA, CATHERINE M
ART UNIT PAPER NUMBER
3765
MAILDATE DELIVERY MODE
06/01/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAWRENCE E. ANDERSON
Appeal2014-004781
Application 12/917,459
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Lawrence E. Anderson (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 1-20. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We REVERSE.
THE INVENTION
Appellant's invention relates to head protectors.
Claims 1 and 13 are independent, are illustrative of the claimed
invention, and are reproduced below:
Appeal2014-004781
Application 12/917,459
1. A device adapted to be worn on the head of a user
compnsmg:
at least one inflatable band adapted to encircle the middle
of the head of the user and having first and second modes;
the at least one inflatable band adapted to encircle the
middle of the head of the user in both the first and second
modes, the at least one inflatable band being deflated in a first
mode and inflated in a second mode;
one of a proximity sensor, inertia switch or gravity
actuated switch operatively connected to the at least one
inflatable band;
a gas releasing device operatively connected to the at
least one inflatable band which causes the inflatable band to be
inflated with gas when one of the proximity sensor, inertia
switch or gravity switch is actuated;
whereby the device is adapted to encircle and protect the
middle of the head of the user and is automatically activated in
the case of a fall or impact to cushion the head of the user.
13. A device adapted to be worn on the head of a user
compnsmg:
an inflatable band having first and second states; a first
state in which the inflatable band is collapsed and adapted to
closely encircle the middle of the head of the user having the
appearance and configuration of a sweat band, and a second
state in which the cross section of the inflatable band is inflated;
a sensor operatively connected to the inflatable band;
a gas releasing device which causes the inflatable band to
inflate when the sensor is actuated;
whereby the inflatable band is worn on the head of the
user and is automatically activated from the first state to the
second state in the case of a fall or sudden impact to cushion the
head of the user.
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Application 12/917,459
THE REJECTIONS
The Examiner has rejected:
(i) claim 3 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter;
(ii) claims 1, 3, 9, and 13-15 under 35 U.S.C. § 112, second
paragraph, as being indefinite;
(iii) claims 1-7, 10-14, and 18 under 35 U.S.C. § 102(b) as being
anticipated by Buckman (US 7,150,048 B2, iss. Dec. 19, 2006);
(iv) claims 9, 16, 19, and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Buckman and Willis (US 4,324,005, iss. Apr. 13, 1982);
(v) claim 8 under 35 U.S.C. § 103(a) as being unpatentable over
Buckman in view of Comparetto (US 4,663,785, iss. May 12, 1987); and
(vi) claims 15 and 17 under 35 U.S.C. § 103(a) as being unpatentable
over Buckman and Liou (US 5,129,106, iss. July 14, 1992).
ANALYSIS
Non-statutory Subject Matter--Claim 3
The Examiner finds that "reference to 'the head of the user' renders
the claim unpatentable," because "claim language drawn to encompass the
human body or parts thereof are considered non-statutory subject matter."
Final Act. 2.
Appellant asserts that "Applicant is not attempting to claim the head
of the user or any part of the human body" and that "[ n Jo legal basis is seen
for the rejection under 35 USC 101." Reply Br. 4.
We disagree with the Examiner's contention that claim 3 is directed to
non-statutory subject matter under 35 U.S.C. § 101. The claim recites a
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Application 12/917,459
device adapted to be worn on the head of a user not, for example, a human
comprising a wearable device. The claim relates only to the placement of
the device on the human head, and as a whole, does not encompass a human
orgamsm.
The rejection of claim 3 as being directed to non-statutory subject
matter is not sustained.
Claims 1, 3, 9, and 13-15--Indefiniteness
With respect to claims 1, 3, 13, and 15, the Examiner finds that the
phrase "the middle of the head of the user" renders the claims indefinite
because "applicant has not positively recited the relationship or orientation
of these directional limitations with the wearer or the invention." Final Act.
3. Similarly, with respect to claims 3 and 14, the Examiner finds that the
phrases "the circumference of the head" and "the circumference of the
middle of the head" render these claims indefinite because "applicant has not
positiveiy recited the orientation of these directionai iimitations with the
wearer or the invention." Id. For claims 9, 13, and 14, the Examiner finds
that the use of the phrases "resemble in appearance a sweatband," "having
the appearance and configuration of a sweatband," and "resembles a
sweatband in appearance," render those claims indefinite because "applicant
has not positively recited the structure that is being claimed." Id.
Appellant asserts that "[t]he middle of the head of the user is defined
in the specification and drawings." Appeal Br. 5 (citing Spec. i-fi-18, 19, 30,
53, 68, 69, 72; Figs. 3, 9). Appellant argues that, with respect to the phrase
"circumference of the head," a person "in the art would appreciate that [the]
inflatable band is positioned as would be a sweat band on the head of the
wearer," namely, "worn on the forehead of the user." Id. at 5---6 (citing Spec.
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Application 12/917,459
i-f 8). As to the phases "resemble in appearance a sweatband", "having the
appearance and configuration of a sweatband," and "resembles a sweatband
in appearance," Appellant argues that "[t]he claims must be interpreted in
the light of the specification and drawings in which the appearance of a
sweatband is repeatedly defined and/or described." Id. at 6.
Although the Examiner notes that the middle of the head might
include a place different than Appellant's disclosed embodiments (see
Answer 2-3) that consideration relates to the breadth of the claim, not any
potential indefiniteness of the claim. SmithKline Beecham Corp. v. Apotex
Corp., 403 F.3d 1331, 1341 (Fed. Cir. 2005) (breadth is not indefiniteness).
Because Appellant's Figures 9 and 10 show a band about the circumference
of the middle of the head of the user, and because paragraph 8 discloses that
the band "is perceived to be a conventional sweat band," we are persuaded
by Appellant's arguments to the effect that, when read in light of the
Specification, persons of ordinary skin in the art wouid understand what is
meant by each of the claimed phrases. The rejection of claims 1, 3, 9, and
13-15 under 35 U.S.C. § 112, second paragraph, is not sustained.
Claims 1-7, 10-14, and 18--Anticipation--Buckman
Claims 1-7 and 10-12
Claim 1 recites, in part, "at least one inflatable band adapted to
encircle the middle of the head of the user." Claim 1 further requires that
the at least one inflatable band is adapted to encircle the middle of the head
of the user in both a deflated mode and an inflated mode.
The Examiner finds that "Buckman teaches a collar (70) which is
removable/detachable from the vest, coat or jacket (as seen in Figure 7 A and
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Application 12/917,459
7B) and resembles a band prior to inflation." Ans. 3--4. The Examiner also
finds that Buckman discloses "a helmet or hat with airbags that expand
downward from the bottom of the helmet (upon inflation)," which is a
device that would "resemble a band worn around the circumference of the
head of the wearer." Id. at 4. The Examiner's position is that the phrase
"adapted to" is functional language that the prior art need only have the
ability to perform, and that "Buckman is capable of encircling the middle of
the head and being worn on the head." Final Act. 4--5.
Appellant asserts that Buckman's collar 70 extends downward along
the spine and is intended to protect the neck. Reply Br. 7. Appellant argues
that Buckman does not disclose an "inflatable band adapted to encircle the
middle of the head of the user in both the first and second modes." Id. at 7-
8. Appellant asserts that "Buckman's device is not adapted to be worn on
the head of the user and does not have the configuration of a band," and as
such, Buckman's eiements "are not arranged as in claim l." Id. at 8 (citing
Net Moneyin, Inc v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)).
With respect to Buckman's hat embodiment, Appellant argues that "no hat
or helmet is depicted to enable one of ordinary skill to make or use such a
device," and "Buckman's airbags serve to stabilize and support the neck."
Id. at 10 (citing Buckman, col. 9, 11. 24--25).
Our reviewing court has recognized that, "the phrase 'adapted to' is
frequently used to mean 'made to,' 'designed to,' or 'configured to."' Aspex
Eyewear, Inc. v. Marchan Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir.
2012 ). Although the phrase can also mean "'capable of or 'suitable for,"'
id., here the written description makes clear that "adapted to," as used in the
Specification and claim 1 has a narrower meaning, viz., that the claimed
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Application 12/917,459
device is designed or constructed to fit over a user's head. Specifically, the
Specification states that "FIG. 9 is a schematic illustration of a preferred
embodiment designed ... for fitting over a user's head," and that "FIG. 10 is
a schematic illustration of a preferred embodiment designed ... for fitting
over a user's head, showing the inflated (engaged position)." Spec. i-fi-168,
69. By contrast, collar 70 in Buckman fits around a user's neck. Buckman,
Fig. 7 A. Although we appreciate that the collar might be placed on the head,
it was not designed as such and the Examiner has not provided a cogent
reason why one would use it on the head. As such, collar 70 is not adapted
to encircle the middle of the head of the user. Moreover, even though collar
70 resembles a band prior to inflation, claim 1 also requires that the band
encircles the head in the inflated mode. In the inflated mode of Figure 7B of
Buckman, "APG collar 70 has expanded upward to protect the back of the
head, the side of the head, and the neck from impact," and thus, in the
inflated mode, coiiar 70 no ionger resembies a band and does not encircle
the head. Buckman, col. 17, 11. 19-20; Fig. 7B. As best understood, the
implementation in Buckman using a hat would have the same shortcomings
as does the collar embodiment. Specifically, Buckman discloses that, for the
hat embodiment, "airbags [that] expand downward toward the shoulders
from the bottom of the helmet or hat" to protect the neck. Buckman, col. 9,
11. 22-25. Buckman does not suggest that the airbags would also cover the
face, as would be required to encircle the head in the inflated mode. Thus,
while it is possible that the Buckman hat embodiment might have the
configuration of a band in the deflated mode, Buckman does not describe the
hat embodiment with sufficient specificity to establish that in the inflated
mode, the hat or some portion thereof would resemble a band worn around
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Application 12/917,459
the circumference of the head of the wearer. For these reasons, the
Examiner has not established a prima facie case of anticipation of claim 1.
Therefore, the rejection of claim 1 and the rejection of claims 2-7 and 10-12
depending from claim 1 is not sustained.
Claims 13, 14, and 18
Claim 13 recites, in part, a first state in which the inflatable band is
collapsed and adapted to closely encircle the middle of the head of the user
having the appearance and configuration of a sweat band.
The Examiner finds that Buckman discloses a device adapted to be
worn on the head of a user including an inflatable band 70 having the
appearance and configuration of a sweat band. Final Act. 8 (citing
Buckman, Fig. 12, ref. 206). As was the case for claim 1 discussed above, in
the Answer, the Examiner states that Buckman's collar 70 "is removably
detachable from the garment which makes it capable of being worn in
various positions on the head including encircling the middie of the head of
the wearer." Ans. 10. The Examiner also states that because "Buckman
teaches pods or air bags (206) which are removabl[y] attached to the harness
via hook and loop fastening means or the like," the pods "are capable of
being worn in various positions on the head of the wearer, including
encircling the middle of the head." Id.
Appellant asserts that element 206 in Figure 12 of Buckman is not a
sweat band. Appeal Br. 13. Appellant argues that collar 70 of Buckman
"does not have the appearance of a sweat band, which encircles the middle
of the head of the user when collapsed." Reply Br. 13.
As discussed supra with respect to claim 1, the phrase "adapted to,"
means that the claimed device is designed or constructed to fit over a user's
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Application 12/917,459
head. As also discussed above, collar 70 of Buckman is configured to fit
around a user's neck, and thus, is not adapted to closely encircle the middle
of the head. With respect to the embodiment of Figure 12 of Buckman, this
figure depicts a deployed state of pod 206 (see Buckman, col. 11, 11. 66-67),
and as such, it is only speculation that pod 206 closely encircles the middle
of the head of the user in a collapsed state. Moreover, as discussed supra
one of ordinary skill in the art would be able to determine whether a device
resembles a sweat band, and Buckman's pod 206, which covers the neck and
sides of the head, but not the forehead, does not have the appearance and
configuration of a sweat band. See Buckman, Fig. 12. In view of this, the
Examiner has not established a prima facie case of anticipation of claim 13.
Thus, we do not sustain the rejection of claim 13 and the rejection of claims
14 and 18, which depend therefrom.
Claims 9, 16, 19, and 20--0bviousness--Buckman/Willis
The Examiner does not reiy on the teachings of Wiiiis in any manner
that would overcome the shortcomings of Buckman discussed supra with
respect to claims 1 and 13. Because claim 9 and claims 16, 19, and 20
depend, respectively, from claim 1 and claim 13, the rejection of these
claims is not sustained for the same reasons.
Claim 8--0bviousness--Buckman/Comparetto
The Examiner does not rely on the teachings of Comparetto in any
manner that would overcome the shortcomings of Buckman discussed supra
with respect to claim 1. The rejection of claim 8 is not sustained for the
same reasons advanced above for claim 1.
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Application 12/917,459
Claims 15 and 17--0bviousness--Buckman/Liou
The Examiner does not rely on the teachings of Liou in any manner
that would overcome the shortcomings of Buckman discussed supra with
respect to claim 13. Because claims 15 and 1 7 depend from claim 13, the
rejection of these claims is not sustained for the same reasons set forth above
with respect to claim 13.
DECISION
The rejection of claim 3 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter is reversed.
The rejection of claims 1, 3, 9, and 13-15 under 35 U.S.C. § 112,
second paragraph, as being indefinite is reversed.
The rejection of claims 1-7, 10-14, and 18 under 35 U.S.C. § 102(b)
as being anticipated by Buckman is reversed.
The rejection of claims 9, 16, 19, and 20 under 35 U.S.C. § 103(a) as
being unpatentable over Buckman and Willis is reversed.
The rejection of claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over Buckman in view of Comparetto is reversed.
The rejection of claims 15 and 17 under 35 U.S.C. § 103(a) as being
unpatentable over Buckman and Liou is reversed.
REVERSED
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