Ex Parte Brantley

Patent Trial and Appeal Board

Feb 18, 2016

13527814 (P.T.A.B. Feb. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/527,814 06/20/2012
28736 7590 02/19/2016
WILLIAM H. HOLLIMON
118 N. Gadsden Street
TALLAHASSEE, FL 32301
FIRST NAMED INVENTOR
Charles W. Brantley
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.
CCH 4160
EXAMINER
COLLINS, ANDREW WARREN
ART UNIT PAPER NUMBER
3765
MAILDATE DELIVERY MODE
02/19/2016 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 CHARLES W. BRANTLEY
Appeal2014-001963
Application 13/527,814
Technology Center 3700
Before LINDA E. HORNER, LISA M. GUIJT, and ERIC C. JESCHKE,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Charles W. Brantley (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner's decision to reject claims 1 and 5-13. Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2014-001963
Application 13/527,814
CLAIMED SUBJECT MATTER
Sole independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A safety helmet comprising:
a rigid outer shell formed of a polymer material
and having inside and outside surfaces;
a foamed polymer lining fixedly attached to the
inside surface of said hard outer shell; and
a plurality of cushioning air bags attached in layers
to the inside of said hard outer shell over said foamed
polymer lining, each layer of said plurality of cushioning
air bags having a flexible air impervious enclosure, each
said enclosure being filled with a resilient foamed
polymer and each said enclosure having a plurality of
apertures therein, and each said enclosure plurality of
apertures being of a size and number different from at
least one other said enclosure to thereby require a
different predetermined force on the enclosure to expel
air therefrom;
whereby a safety helmet provides shock absorption
therein for the safety of the \vearer of the helmet.
REJECTIONS
Claims 1, 5, and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ewing (US 2002/0184699 Al; pub. Dec. 12, 2002) and
Milliren (US 7,341,776 Bl; iss. Mar. 11, 2008).
Claims 7-10 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ewing, Milliren, and Shih (US 7,607,179 B2; iss. Oct. 27,
2009).
Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ewing, Milliren, Shih, and Tsuchiya (US 4,500,075; iss.
Feb. 19, 1985).
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Application 13/527,814
OPINION
Claims 1, 5, and 6- Obviousness over Ewing and Milliren
The Examiner finds that Ewing discloses "a plurality of cushioning
layers 16, 18," but that Ewing does not disclose the layers as being a
plurality of cushioning air bags, each layer having a flexible air impervious
enclosure filled with resilient foamed polymer and having apertures sized
and numbered as claimed. Final Act. 3--4. The Examiner relies on Milliren
for teaching "cushioning air bags 10 ... having a flexible air impervious
enclosure 12 ... filled with a resilient foamed polyurethane and having ...
apertures 14 ... size[ d] and number[ ed] to require a predetermined force on
the enclosure to expel air." Id. at 4 (citing Milliren, col. 2, 11. 44--50, col. 5,
11. 61---67, col. 6, 11. 1-13, Figs. 2, 4). More particularly, the Examiner finds
that Milliren "provid[ es] teaching for two different layers with two different
resistances to predetermined forces," because Milliren discloses that
regulating the amount of resistance provided by air bags by controlling the
total open area through the air impervious enclosure is known. Id. at 5. The
Examiner points out that Milliren specifically states that "very small and/or
highly spaced vent holes[] create slightly diminished rigidity" whereas
"larger and/or more closely spaced vent holes[] create substantially
diminished rigidity." Id. The Examiner proposes that
[ t ]he combination of the disclosure of Ewing with the teachings
of Milliren will provide for a helmet with a plurality of layers to
the inside of [the] hard outer shell over [the] foamed polymer
lining (disclosed by Ewing), wherein [the] plurality of layers is a
plurality of cushioning air bags (taught by Milliren). The
combination of Ewing as modified by Milliren will further
disclose each layer of [the] plurality of cushioning air bags
having a flexible air impervious enclosure, each [of the]
enclosure[ s] being filled with a resilient foamed polymer and
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Application 13/527,814
each [of the] enclosure[ s] having a plurality of apertures therein,
and each [of the] enclosure plurality of apertures being of a size
and number different from at least one other [of the] enclosure[ s]
to thereby require a different predetermined force on the
enclosure to expel air therefrom (disclosures of Ewing and
Milliren[]).
Ans. 4.
The Examiner reasons that it would have been obvious "to have used
the air bag cushioning layers as taught by Milliren for the protective padding
layers of the helmet of Ewing as a substitution of one known padding layer
used in helmets for another." Final Act. 6; see also Ans. 4. The Examiner
determines that "[t]he progressive rigidity taught within the air bag
structures of Milliren will provide the same characteristics and achieve the
same goals as that of the padding layers of Ewing," concluding that the
claimed invention "merely use[ s] one known type of padding (air bags,
Milliren) in a layered, progressive manner (Ewing) while providing no
unexpected results for the basis of this substitution." Final Act. 6; Ans. 4--5.
Additionally, the Examiner reasons that
it would have been obvious to try this combination[], as the two
methods for creating a cushioning liner layer in a helmet
(generally foam as taught by Ewing and cushioning air bags
having a flexible air impervious enclosure with said enclosure
being filled with a resilient foamed polyurethane and having a
plurality of apertures 14 therein, and said enclosure plurality of
apertures being of a size and number to require a predetermined
force on the enclosure to expel air therefrom as taught by
Milliren) would be considered mechanical equivalents that could
be used interchangeably in helmet design and manufacture.
Final Act. 5---6; Ans. 5---6.
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Appeal2014-001963
Application 13/527,814
Appellant argues, inter alia, that "[n]one of the references make any
showing of any teaching or show any reason to combine them" and that
"[a]ny combination would require a complete redesign which still would not
produce a helmet in accordance with claim 1." Br. 6. Appellant concludes
that the Examiner improperly relied on hindsight. Id.
We find Appellant's arguments persuasive. Although our reviewing
court has rejected the rigid requirement of a teaching or suggestion or
motivation within the prior art in order to show obviousness, "rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness." In re Kahn,
441F.3d977, 988 (Fed. Cir. 2006), cited with approval in KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007); see alsoKSRint'l, at415.
We agree with Appellant that the combination proposed by the
Examiner is not merely a substitution of one known padding layer for
another, but rather involves redesigning or modifying Milliren's padding to
arrive at Appellant's invention, as recited in claim 1. Further, for the
reasons below, we determine that the Examiner failed to articulate adequate
reasoning with some rational underpinning to support such a modification in
determining that Appellant's invention as recited in claim 1 is obvious.
Milliren discloses only a single layer comprising foam 13 enclosed in
skin 12, wherein skin 12 has different zones with apertures sized and
numbered to exhibit different or nonequivalent local rigidity. See, e.g.,
Milliren, col. 6, 11. 9-13. Milliren further discloses that "vent holes 14
provide fluid communication between the ambient environment and the
exterior-most region (outer surface) of the ensheathed foam substrate 13,"
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Application 13/527,814
depicting vent holes 14 only on a single or outer surface of foam 13. Id.,
col. 3, 1. 41--43, Figs. 2, 5. Ewing discloses, inter alia, three layers of foam
14, 16, 18, wherein the inner and outer-most layers are made from a foam
having differing stiffness and energy absorption properties than the middle
layer. See Ewing, Abstract.
Substituting three of Milliren's single layers in place of Ewing's three
foam layers, as proposed by the Examiner, would result in three identical
layers, each layer having the same zones of differing local rigidity as the
other layers. In other words, each of Milliren's layers, when merely
substituted as a layer of Ewing's helmet, would not necessarily have
apertures sized and numbered differently from at least one of the other
layers. Thus, the Examiner's proposed combination involves modifying at
least one of Milliren' s single layers to have at least one zone that has
apertures of a size and number that is different from the size and number of
apertures of at least one other layer, as recited in claim 1.
Although the Examiner reasons that such a modification would have
been obvious in view of Ewing's teachings regarding the desirability of
multiple layers exhibiting different energy absorptive capabilities, the
Examiner articulates no rationale for doing so. Moreover, Milliren discloses
the desirability of a single, continuous layer and the use of vent holes 14 for
providing fluid communication between the ambient environment and the
outer surface of ensheathed foam substrate 13 (or cushioning air bag). The
Examiner does not explain how Milliren's outwardly venting holes 14 would
perform when selected as an embedded layer, as required in Ewing and
according to the Examiner's proposed combination. Thus, without an
articulated rationale based on rational underpinnings for modifying the
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Application 13/527,814
references as proposed, the Examiner's rejection appears to be the result of
hindsight analysis. See Kahn, 441 F.3d at 988.
Regarding the Examiner's "obvious to try" reasoning, although the
Examiner establishes that there was a recognized problem in the art, namely,
to design a hehnet liner that withstands differing impact forces, the
Examiner has not sufficiently supported the finding in the rejection that there
are only a finite number of predictable potential solutions to the recognized
problem. See Ans. 6; MPEP § 2143(E). The Examiner's determination that
Ewing's approach and Milliren's approach to solving the problem are
"mechanical equivalents" does not mean that boundless solutions do not
exist. See Ans. 5---6. Thus, the Examiner's conclusion of obviousness, as
obvious to try, is not supported by adequate facts.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 1 and claims 5 and 6 depending therefrom.
Claims 7-13 - Obviousness over Ewing, Milliren, Shih, and Tsuchiya
The Examiner relies on the same reasoning for combining Ewing and
Milliren in rejecting claims 7-13 as relied upon for rejecting independent
claim 1. Final Act. 6, 8. Neither Shih nor Tsuchiya cures the deficiencies in
the Examiner's findings or reasoning with respect to the combination of
Ewing and Milliren, and therefore, for the reasons discussed supra, we also
do not sustain the Examiner's rejection of claims 7-13, which depend from
claim 1.
DECISION
The Examiner's decision to reject claims 1 and 5-13 under 35 U.S.C.
§ 103(a) is REVERSED.
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Appeal2014-001963
Application 13/527,814
rvb
REVERSED
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