Ex Parte Arnold

Patent Trial and Appeal Board

Feb 22, 2017

13465389 (P.T.A.B. Feb. 22, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/465,389 05/07/2012 Derek Leslie Arnold 00676.0008.USR3 1829
32894 7590 02/24/2017
HOYNPr ROKH MONFOTFR T T P
EXAMINER
Rembrandt Tower 31st Floor
Amstelplein 1
SUTTON, ANDREW W
Amsterdam, 1096 HA
NETHERLANDS
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
02/24/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
amdocketing @ hoyngrokh .com
ronny. amir sehhi @ hoyngrokh .com
david. o wen @ hoyngrokh .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEREK LESLIE ARNOLD
Appeal 2015-007651
Application 13/465,3 891
Patent US 6,922,850 B1
Technology Center 3700
Before LINDA E. HORNER, ERIC C. JESCHKE, and
BRENT D. DOUGAL, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Derek Leslie Arnold (Appellant)2 seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision, as set forth in the Final Office Action,
1 Application 13/465,389, filed May 7, 2012 is a divisional of Application
11/888,885, filed August 2, 2007 (Reissue Patent RE44,250), which is a
reissue of Application 10/049,990, filed April 15, 2002 (Patent US
6,922,850 Bl, issued August 2, 2005) (“’850 Patent”), which is a filing
under 35 U.S.C. § 371 of PC/NL00/00589, filed August 24, 2000.
2 Appellant identifies Pinlock Patent B.V. as the real party in interest.
Appeal Br. 2.
Appeal 2015-007651
Application 13/465,389
Patent US 6,922,850 B1
dated March 27, 2014 (“Final Act.”), rejecting claims 21^40.3 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to “a visor assembly.” ’850
Patent, col. 1,1. 3. Claims 21 and 32 are the independent claims on appeal.
Claim 21 is illustrative of the subject matter on appeal and is reproduced
below.
21. Visor assembly comprising;
an outer shield;
a replaceable inner shield spaced from the outer shield and
located within the periphery of the outer shield;
a recess in the outer shield, the dimensions of which at
least correspond to the peripheral dimensions of the inner shield
such that the inner shield can be fitted therein;
mechanical fixing elements for detachably fixing the inner
shield to the outer shield;
elements for fixing the outer shield to a further component,
optionally being a helmet or a goggles frame; and
a spacer extending around the periphery of said inner
shield, said spacer being adhered to the inner shield and fitted
detachably against said outer shield,
wherein the inner shield is detachable from the outer shield
and visor assembly.
3 Claims 1-20 are cancelled; claims 41-60 are withdrawn from
consideration. Appeal Br. 2.
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Application 13/465,389
Patent US 6,922,850 B1
REJECTIONS
The Final Action includes the following grounds of rejection:
1. Claims 21, 22, 24, 32, and 33 under 35 U.S.C. § 102(b) as
anticipated by Paquet (FR 2675348 Al, published October 23,
1992).
2. Claim 23 under 35 U.S.C. § 103(a) as unpatentable over Paquet.
3. Claims 25-27 and 34-36 under 35 U.S.C. § 103(a) as unpatentable
over Paquet and Dawn (US 5,475,878, issued December 19, 1995).
4. Claims 28, 29, 37, and 38 under 35 U.S.C. § 103(a) as
unpatentable over Paquet and Elifritz (US 3,880,157, issued April
29, 1975).
5. Claims 30 and 39 under 35 U.S.C. § 103(a) as unpatentable over
Paquet and Ritchey (US 5,067,174, issued November 26, 1991).
6. Claims 31 and 40 under 35 U.S.C. § 103(a) as unpatentable over
Paquet and Bell (US 4,028,739, issued June 14, 1977).
ANALYSIS
First Ground of Rejection
Claim 21
The Examiner finds that Paquet discloses all the elements of the visor
of claim 21, including “a replaceable inner shield 2 supported by the outer
shield and spaced from the outer shield” and “a spacer 4 extending around
the periphery of said inner shield, said spacer being adhered to the inner
shield and fitted detachably against said outer shield . . . wherein the inner
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Patent US 6,922,850 B1
shield is detachable from the outer shield and visor assembly (with removal
of [item] 13).” Final Act. 2-3 (citing Paquet, Fig. 7). Appellant argues
“Paquet does not explicitly discuss the nature of the attachment between the
inner and outer walls, other than what can be discerned from the figures.”
Appeal Br. 4-5. With regard to the embodiment depicted in Figure 7,
Appellant asserts the “inner and outer walls are directly connected to
respective sides of a spacer 4” and “the spacer 4 must be permanently fixed
to both the inner and outer walls so that their working position is supported.”
Id. at 6. Appellant contends that the teeth-like protrusions on element 13
demonstrate that element 13 is pushed into the gap between the walls 1 and
2 and the spacer 4, and thus, the gap must be permanently fixed to
frictionally hold element 13 within it. Id. at 6-7. Based on this
interpretation of the embodiment of Figure 7 of Paquet, Appellant argues
that Paquet’s “spacer 4 is not detachably fitted against the outer wall, as
required by claim 21 . . . .” Id. at 7. The Examiner replies that “[t]he shield
and the spacer are not formed as one integral part, as shown in figure 7, and
therefore [are] capable of being detached.” Ans. 2.
We disagree with the Examiner that simply because spacer 4 and
outer wall 1 are not formed integrally, they are necessarily capable of being
detached. The Examiner’s broad interpretation of “fitted detachably” would
encompass a spacer that is adhered to the outer shield. The claim language,
however, contrasts “adher[ing]” the spacer to the inner shield and “fit[ing]
detachably” the spacer against the outer shield. Appeal Br. 12 (Claims
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App.). This distinction also is described in Appellant’s Specification, which
describes that bead material of peripheral rim 7 “is stuck to the inner shield
but is applied to outer shield 2 only after it has set, that is to say after the
silicone material 7 no longer has any adhesive properties.” ’850 Patent,
col. 3,11. 53-56; see also id. at col. 3,1. 63 (describing that “no permanent
adhesive joint” has been produced between outer shield 2 and peripheral rim
7). Thus, “fitted detachably” does not encompass a spacer that is adhered to
the outer shield.
We agree with Appellant that Paquet does not explicitly disclose the
nature of the attachment between outer wall 1, inner wall 2, and spacer 4.4
We further agree with Appellant that “the figure is simply not clear as to
how the pertinent structures are put together.” Appeal Br. 10 (emphasis and
internal quotation marks omitted). Appellant presents a reasonable
explanation of one possible manner of attaching and assembling Paquet’s
outer wall 1, inner wall 2, spacer 4, and element 13 based on what may be
discerned from Figure 7. There is insufficient evidence in Paquet to support
the Examiner’s finding by a preponderance of the evidence that Paquet
discloses a spacer “fitted detachably against said outer shield” as recited in
claim 21. For this reason, we do not sustain the rejection of independent
4 In the Final Action, the Examiner states that “the rejection was made off of
the drawings [of Paquet] and did not use the contents of the French language
specification.” Final Act. 5.
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claim 21, and dependent claims 22 and 24, under 35 U.S.C. § 102(b) as
anticipated by Paquet.
Claim 32
Unlike claim 21, independent claim 32 does not recite a spacer “fitted
detachably against said outer shield.” Appeal Br. 13 (Claims App.). Claim
32 recites, however, “the inner shield . . . being detachable from the outer
shield and visor assembly.” Id. Appellant argues, with regard to the similar
limitation in claim 21, that in Paquet, “an inner wall 1 and an outer wall 2
are ‘permanently fixed’ to each other.” Appeal Br. 5. As discussed above,
Appellant contends that “inner and outer walls are directly connected to
respective sides of a spacer 4 ... so that their working position is
supported.” Id. at 6; see also id. at 7 (Appellant arguing that “[i]t is unclear
how removal of element 13 . . . results in the inner shield being detachable
from the outer shield”).
We disagree with the Examiner that “[o]ne could detach/replace the
[claimed] inner shield with a variety of means to detach or replace the inner
shield.” Final Act. 6. The Specification distinguishes the invention from
prior art visor assemblies in which the inner and outer shields are “fixed to
one another with the aid of a moulding material” such that “the inner and the
outer shield would have to be removed in the event of damage.” ’850
Patent, col. 1,11. 14-15, 31-34; see also id. at col. 3,1. 63 (describing that
“no permanent adhesive joint” has been produced between outer shield 2 and
peripheral rim 7). For the same reasons discussed above in the analysis of
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claim 21, Paquet’s lack of explicit disclosure of the manner of attaching and
assembling Paquet’s outer wall 1, inner wall 2, spacer 4, and element 13
results in insufficient evidence, based on Figure 7 alone, to support the
Examiner’s finding that Paquet discloses “the inner shield is detachable from
the outer shield and visor assembly,” as called for in claim 32. For these
reasons, we do not sustain the rejection of independent claim 32 and
dependent claim 33 under 35 U.S.C. § 102(b) as anticipated by Paquet.
Remaining Grounds of Rejection
The remaining grounds of rejection of dependent claims 23, 25-31,
and 34^40 are based on the same deficient findings as to Paquet’s disclosure
of all the elements of independent claims 21 and 32, from which these
claims depend. Final Act. 3-5. Accordingly, for the same reasons discussed
above with respect to the rejection of claims 21 and 32, we likewise do not
sustain the remaining rejections of dependent claims 23, 25-31, and 34^40
under 35 U.S.C. § 103(a).
DECISION
The decision of the Examiner to reject claims 21-40 is REVERSED.
REVERSED
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