Ex parte Carey et al.

Board of Patent Appeals and Interferences

Feb 17, 2000

08619269 (B.P.A.I. Feb. 17, 2000)

Claims 9, 12 and 16 were amended subsequent to the final1
rejection.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MICHAEL J. CAREY and JOSEPH H. EDWARDS
____________
Appeal No. 1999-2537
Application No. 08/619,269
____________
ON BRIEF
____________
Before FRANKFORT, NASE, and GONZALES, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 4, 5, 7, 9, 11, 12, 15 to 18, 22, 23 and
25 to 27. Claim 24 has been allowed. Claims 10, 19 and 201
have been withdrawn from consideration under 37 CFR § 1.142(b)
Appeal No. 1999-2537
Application No. 08/619,269
as being drawn to a nonelected invention. Claims 1 to 3, 6,
8, 13, 14 and 21 have been canceled.
We AFFIRM.
Appeal No. 1999-2537 Page 3
Application No. 08/619,269
BACKGROUND
The appellants' invention relates to an article of
clothing to be worn about the head (specification, p. 1). A
substantially correct copy of the claims under appeal is set
forth in the appendix to the appellants' brief. An
understanding of the invention can be derived from a reading
of exemplary claim 22 which is reproduced below.
22. An article of clothing to be worn on the head of
a user and adapted for use with sport goggles which have
a height and width, said article of clothing comprising:
a mask member formed of a first material that is
insulative and wind-resistant, said mask member being
sized to snugly cover a portion of the face of a user and
said mask member having a middle edge for positioning
above the mouth and below the nose of a user, a perimeter
which includes an upper edge for positioning under the
eyes of a user and a lower edge for positioning below the
mouth of a user;
a head member formed of a second material different
from said first material, said second material being
closely woven and elastically deformable, said head
member being sized to substantially enclose the head of a
user and fixedly connected to said mask member along at
least a portion of said perimeter of said mask member
excluding said upper edge, said head member and said mask
member together being sized to completely surround the
head of a user, and said head member having a head edge
for positioning above the eyes of a user;
an eye opening formed to register with the eyes of a
user, said eye opening being defined by said head edge
spaced from said upper edge of said mask member a height
less than the height of protective sport goggles; and
a scarf portion unitarily formed to be an extension
of said head member for extending downwardly from said
Appeal No. 1999-2537 Page 4
Application No. 08/619,269
head member to be positionable around and proximate the
neck of a user, said scarf portion being fixedly
connected to said mask member along a portion of said
perimeter of said mask member excluding said upper edge.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Ensten 2,039,478 May 5,
1936
Reisen 3,725,956 Apr. 10,
1973
Carey et al. 5,214,804 June 1,
1993
(Carey)
Claims 4, 5, 7, 9, 11, 12, 15 to 18, 22, 23 and 25 to 27
stand rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and
distinctly claim the subject matter which the appellants
regard as the invention.
Claims 4, 5, 7, 9, 11, 12, 15 to 18, 22, 23 and 25 to 27
stand rejected under 35 U.S.C. § 103 as being unpatentable
over Carey in view of Ensten and Reisen.
Appeal No. 1999-2537 Page 5
Application No. 08/619,269
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the final rejection (Paper
No. 18, mailed August 1, 1997) and the answer (Paper No. 28,
mailed August 17, 1998) for the examiner's complete reasoning
in support of the rejections, and to the brief (Paper No. 27,
filed June 26, 1998) and reply brief (Paper No. 29, filed
October 19, 1998) for the appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
In accordance with 37 CFR § 1.192(c)(7), we have selected
claim 22 as the representative claim from the appellants'
grouping of claims 4, 5, 7, 9, 11, 12, 15 to 18, 22, 23 and 25
Appeal No. 1999-2537 Page 6
Application No. 08/619,269
to 27 to decide the appeal on each of the above-noted
rejections. See page 3 of the appellants' brief.
The indefiniteness issue
We will not sustain the rejection of claims 4, 5, 7, 9,
11, 12, 15 to 18, 22, 23 and 25 to 27 under 35 U.S.C. § 112,
second paragraph.
The second paragraph of 35 U.S.C. § 112 requires claims
to set out and circumscribe a particular area with a
reasonable degree of precision and particularity. In re
Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977).
In making this determination, the definiteness of the language
employed in the claims must be analyzed, not in a vacuum, but
always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted
by one possessing the ordinary level of skill in the pertinent
art. Id.
The examiner's focus during examination of claims for
compliance with the requirement for definiteness of 35 U.S.C.
Appeal No. 1999-2537 Page 7
Application No. 08/619,269
§ 112, second paragraph, is whether the claims meet the
threshold requirements of clarity and precision, not whether
more suitable language or modes of expression are available.
Some latitude in the manner of expression and the aptness of
terms is permitted even though the claim language is not as
precise as the examiner might desire. If the scope of the
invention sought to be patented can be determined from the
language of the claims with a reasonable degree of certainty,
a rejection of the claims under 35 U.S.C. § 112, second
paragraph, is inappropriate.
Furthermore, the appellants may use functional language,
alternative expressions, negative limitations, or any style of
expression or format of claim which makes clear the boundaries
of the subject matter for which protection is sought. As
noted by the Court in In re Swinehart, 439 F.2d 210, 160 USPQ
226 (CCPA 1971), a claim may not be rejected solely because of
the type of language used to define the subject matter for
which patent protection is sought.
Appeal No. 1999-2537 Page 8
Application No. 08/619,269
Breadth of a claim is not to be equated with2
indefiniteness. See In re Miller, 441 F.2d 689, 169 USPQ 597
(CCPA 1971).
See In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023,3
(continued...)
With this as background, we analyze the specific
rejection under 35 U.S.C. § 112, second paragraph, made by the
examiner of the claim 22. The examiner determined (answer, p.
4) that the term "the height of protective sport goggles" is
indefinite because sport goggles are manufactured in a variety
of different heights.
We agree with the appellants (brief, pp. 3-7, and reply
brief, pp. 2-3) that claim 22 is not indefinite.
Specifically, we agree with the appellants that the mere
breadth of claim 22 does not in and of itself make claim 22
indefinite. Additionally, we believe that claim 22 when read2
in light of the second full paragraph of page 9 of the
specification defines the metes and bounds of the claimed
invention with a reasonable degree of precision and
particularity. In that regard, it is our view that broadest
reasonable interpretation consistent with the specification3
Appeal No. 1999-2537 Page 9
Application No. 08/619,269
(...continued)3
1027 (Fed. Cir. 1997). See also In re Sneed, 710 F.2d 1544,
1548, 218 USPQ 385, 388 (Fed. Cir. 1983).
of the term "the height of protective sport goggles" is that
the height of the eye opening is less than the tallest height
of sport goggles.
We also agree with the appellants that the other
independent claims on appeal (i.e., claims 23, 25, 26 and 27)
are not indefinite for the reasons set forth above with
respect to claim 22.
For the reasons set forth above, the decision of the
examiner to reject claims 4, 5, 7, 9, 11, 12, 15 to 18, 22, 23
and 25 to 27 under 35 U.S.C. § 112, second paragraph, is
reversed
The obviousness issue
We sustain the rejection of claims 4, 5, 7, 9, 11, 12, 15
to 18, 22, 23 and 25 to 27 under 35 U.S.C. § 103.
Appeal No. 1999-2537 Page 10
Application No. 08/619,269
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981).
Carey discloses an article of clothing 10 including a
protective mask 12 with a scarf 14 combined therewith. As
shown in Figure 2, the mask member 12 is sized and shaped to
fit about the face and has an upper edge which extends along
the lower part of the eye socket areas of the user and
contouredly over the nose. The mask member also has a lower
edge which extends under the chin and upwardly toward the
upper edge on both sides of the face rearward of the eye
socket areas. The scarf member 14 is secured to the mask
member along the lower edge. The scarf member is sized to
extend downwardly from the lower edge substantially the height
Appeal No. 1999-2537 Page 11
Application No. 08/619,269
of the neck. The scarf member extends in width rearwardly
about the neck on both sides of the head. Securing means are
associated with the scarf member to secure the article of
clothing about the head of the user and preferably behind the
head of the user. As shown in Figure 1, the mask member 12
includes a middle edge 68 formed under the nose of the user.
Carey teaches (column 2, lines 4-12, and column 5, lines 17-
28) that the mask member 12 is preferably a closed-cell
neoprene with an internal fleece layer laminated thereto and
an external water-resistant material (e.g., LYCRAâ„¢) is also
laminated thereto. Carey also teaches (column 2, lines 13-16,
and column 4, lines 42-55) that the scarf member is desirably
made of a soft, stretchable material, preferably, the scarf
member is made of fleece-like material such as POLAR TECâ„¢. As
shown in Figure 2, the article of clothing 10 is positioned
about the user's head 78 which is shown in phantom. A cap 80
is positioned about the head 78 along with goggles 82 which
have a strap 84 extending rearwardly about the head 78. Carey
teaches (column 5, lines 60-63) that the lower portion of the
goggles 82 is cut away and not shown and that the cut away
Appeal No. 1999-2537 Page 12
Application No. 08/619,269
We regard the examiner's application of the teachings of4
Reisen to be mere surplusage since Carey's scarf member is
made of closely woven and elastically deformable material
(i.e., a fleece-like material such as POLAR TECâ„¢).
portion fits over the top 79 of the mask member 12 and more
specifically over an upper edge 16 of the mask member.
Ensten discloses a knitted article of headwear which
covers the head, neck and lower portion of the face of the
face, leaving the eyes and nose of the user exposed as shown
in Figure 1. The headwear includes a crown or skull covering
portion 1 and lower portion 2 which constitutes a neck piece
and face-cover portion.
In applying the above-noted test for obviousness, we
reach the conclusion that it would have been obvious at the
time the invention was made to a person having ordinary skill
in the art to extend the scarf member of Carey to cover the
crown or skull of the user as suggested by the headwear of
Ensten for the self-evident advantages thereof (e.g., no need
for a separate cap).4
Appeal No. 1999-2537 Page 13
Application No. 08/619,269
The arguments advanced by the appellants (brief, pp. 8-
11, and reply brief, pp. 3-5) are unpersuasive for the
following reasons. First, the appellants have argued
deficiencies of each reference on an individual basis,
however, it is well-settled that nonobviousness cannot be
established by attacking the references individually when the
rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097,
231 USPQ 375, 380 (Fed. Cir. 1986). Secondly, we note that
all of the features of the secondary reference need not be
bodily incorporated into the primary reference (see In re
Keller, supra, at 642 F.2d 425, 208 USPQ 881) and the artisan
is not compelled to blindly follow the teaching of one prior
art reference over the other without the exercise of
independent judgment (see Lear Siegler, Inc. v. Aeroquip
Corp., 733 F.2d 881, 889, 221 USPQ 1025, 1032 (Fed. Cir.
1984)). Lastly, we note that while there must be some
teaching, reason, suggestion, or motivation to combine
existing elements to produce the claimed device, it is not
necessary that the cited references or prior art specifically
suggest making the combination (see B.F. Goodrich Co. v.
Appeal No. 1999-2537 Page 14
Application No. 08/619,269
Aircraft Braking Systems Corp., 72 F.3d 1577, 1583, 37 USPQ2d
1314, 1319 (Fed. Cir. 1996) and In re Nilssen, 851 F.2d 1401,
1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988)) as the appellants
would apparently have us believe. Rather, as stated above,
the test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in
the art. Moreover, in evaluating such references it is proper
to take into account not only the specific teachings of the
references but also the inferences which one skilled in the
art would reasonably be expected to draw therefrom. In re
Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). In
this case, it is our opinion that the combined teachings of
Carey and Ensten would have made it obvious at the time the
invention was made to a person having ordinary skill in the
art to arrive at the subject matter of claim 22 for the
reasons set forth above.
For the reasons set forth above, the decision of the
examiner to reject claim 22 under 35 U.S.C. § 103 is affirmed.
In accordance with 37 CFR § 1.192(c)(7), claims 4, 5, 7, 9,
Appeal No. 1999-2537 Page 15
Application No. 08/619,269
11, 12, 15 to 18, 23 and 25 to 27 fall with claim 22. Thus,
it follows that the decision of the examiner to reject claims
4, 5, 7, 9, 11, 12, 15 to 18, 23 and 25 to 27 under 35 U.S.C.
§ 103 is also affirmed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 4, 5, 7, 9, 11, 12, 15 to 18, 22, 23 and 25 to 27 under
35 U.S.C. § 112, second paragraph, is reversed and the
decision of the examiner to reject claims 4, 5, 7, 9, 11, 12,
15 to 18, 22, 23 and 25 to 27 under 35 U.S.C. § 103 is
affirmed.
Since at least one rejection of each of the appealed
claims has been affirmed, the decision of the examiner is
affirmed.
Appeal No. 1999-2537 Page 16
Application No. 08/619,269
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
Appeal No. 1999-2537 Page 17
Application No. 08/619,269
THOMAS J. ROSSA
TRASK BRITT & ROSSA
PO BOX 2550
SALT LAKE CITY, UT 84110-2550
APPEAL NO. 1999-2537 - JUDGE NASE
APPLICATION NO. 08/619,269
APJ NASE
APJ GONZALES
APJ FRANKFORT
DECISION: AFFIRMED
Prepared By: Gloria Henderson
DRAFT TYPED: Feb 10, 2000
FINAL TYPED: