Ex Parte Cherin et al

Patent Trial and Appeal Board

May 30, 2018

13909659 (P.T.A.B. May. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/909,659 06/04/2013
1342 7590
PHILLIPS LYTLE LLP
One Canalside
125 Main Street
BUFFALO, NY 14203
05/30/2018
FIRST NAMED INVENTOR
Joshua Cherin
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.
5095
EXAMINER
FERREIRA, CATHERINE M
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
05/30/2018 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 JOSHUA CHERIN,
KARL BURNS, and
DOUGLAS DA VIDSON 1
Appeal2017-008372
Application 13/909,659
Technology Center 3700
Before MICHAEL L. HOELTER, JEFFREY A. STEPHENS, and
SEAN P. O'HANLON, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-17, which constitute all the claims pending in
this application. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the real party in interest as New Era Cap Co., Inc.
Br. 1.
Appeal2017-008372
Application 13/909,659
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates generally to the field of baseball
type caps, and more particularly to an improved cap protector and
attachment system." Spec. ,r 1 2. Apparatus claim 1 is the sole independent
claim, is illustrative of the claimed subject matter, and is reproduced below:
1. A protector for a cap, said cap having a generally domed
crown and a bill connected to said crown and extending away
from said crown, said crown comprising a front generally half
domed part and a rear generally half domed part, said front part
having an outer front surface and an inner front surface, said rear
part having an outer rear surface and an inner rear surface, said
inner front surface and said inner rear surface defining an interior
cavity for receiving the head of a wearer, comprising:
a substantially rigid body having a front generally half-
domed surface configured and arranged to follow contours of
said front part of said crown of said cap, a left side portion and a
right side portion;
a retaining element configured and arranged to extend
from a first connection on said left side portion of said body
around said outer front surface of said front part of said crown
above said bill to a second connection on said right side portion
of said body;
wherein said body and said retaining element are
configured and arranged such that said front surface of said body
engages said outer rear surface of said rear part of said crown
when said rear part is folded into said front part at a substantially
transversely extending fold; and
wherein said shape of said front part of said crown is
protected by said front surface of said body.
2 We refer to the Specification, filed June 4, 2013 ("Spec."); Final Office
Action, mailed Feb. 10, 2016 ("Final Act."); Appeal Brief, filed Sept. 29,
2016 ("Br."); Examiner's Answer, mailed Feb. 7, 2017 ("Ans.").
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Appeal2017-008372
Application 13/909,659
Hale et al.
Schoonover
Zakarin
Yan
Shen
REFERENCES
us 4,805,782
us 5,012,531
US 6,612,472 Bl
US 6,647,554 Bl
US 2005/0086727 Al
REJECTIONS ON APPEAL
Feb.21, 1989
May 7, 1991
Sept. 2, 2003
Nov. 18, 2003
Apr. 28, 2005
Claims 1 and 13 are 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 inventor or a joint inventor
regards as the invention.
Claims 1-9 and 13 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Schoonover and Shen.
Claim 10 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Schoonover, Shen, and Yan.
Claims 11 and 12 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Schoonover, Shen, and Hale.
Claims 14--17 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Schoonover, Shen, and Zakarin.
ANALYSIS
The rejection of claims 1 and 13 as being indefinite
Addressing claim 1, the Examiner concludes that the terms "generally
domed," "rear generally half domed," and "substantially transversely
extending" are indefinite because it is "unclear what structural element"
they refer to. Final Act. 2-3; see also Ans. 2-3. Appellants disagree, stating
that these terms "properly represent approximation and are not indefinite"
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Application 13/909,659
and that terms of degree do "not automatically render the claim indefinite."
Br. 6-7 ( citations omitted). Appellants also contend that claim 1 does not
merely recite these terms in the abstract, but instead, the claim provides
context as to their use, such that one skilled in the art would understand what
is meant by such language. Br. 7-8.
We agree with Appellants that the above-identified terms, and how
they are employed in claim 1, do not render claim 1 indefinite such that one
skilled in the art would be unable to ascertain that which is claimed.
Accordingly, and based on the record presented, we do not sustain the
Examiner's rejection of claim 1 as being indefinite.
Regarding claim 13 ( which depends from claim 1 ), the Examiner
contends the language recited therein "renders the claim indefinite." Final
Act. 3. The Examiner asks, "Is the Applicant disclosing the cap has rear
portion opposite the bill??" Final Act. 3; see also Ans. 4. Appellants
explain the direction or orientation recited and contend, "these relative
directions would be understood by a person of ordinary skill in the art." Br.
8. The Examiner, however, is not satisfied with Appellants' explanation and
repeats the same question. Ans. 4.
There seems to be a disconnect between the actual language of claim
13 and the question posed by the Examiner. Claim 13 does not address any
cap/crown rear portion or its position vis-a-vis the bill. Instead, claim 13
states that the bill extends away from the cap's crown in a first direction, and
claim 13 further states that the left and right side portions of the rigid body
extend beyond the cap's transverse fold in an opposite direction. There is no
discussion of any crown rear portion or in which direction such a rear
portion extends. Accordingly, we are not persuaded the Examiner's
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Application 13/909,659
question is relevant, and further, we are not persuaded that such misplaced
concern renders claim 13 indefinite. We do not sustain the Examiner's
rejection of claim 13 as being indefinite.
The rejection of claims 1-9 and 13
as unpatentable over Schoonover and Shen
Sole independent claim 1 recites a cap with a bill, a rigid body
configured to follow the interior contours of a folded cap, and a retaining
element extending around the front of the folded cap above the bill and
engaging connections (openings) on the left and right portions of the rigid
body. The Examiner relies on Schoonover for disclosing a folded cap and
its rigid body protector, but acknowledges that "Schoonover is silent to a
retaining element" or the manner by which such element extends. Final Act.
5-7. The Examiner relies on Shen for disclosing this retaining element
stating that Shen's elastic retaining element is "capable of' being arranged
as claimed. Final Act. 8; Ans. 4, 5, 7.
Appellants contend the Examiner erred in combining "two non-
compatible embodiments of Shen together with Schoonover" and that the
Examiner instead relied upon "the impermissible use of hindsight
reconstruction." Br. 9; see also Ans. 5. Appellants also address the
Examiner's "capable of' rationale stating that the question "is not one of
mere capability," but instead whether Shen's retaining element was "'made
to, designed to, or configured to' perform the function" recited. Br. 10
(referencing In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014)).
Appellants also contend, "Schoonover already provides a secure retaining
element for holding the cap in the disclosed protective shell. Thus there is
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Application 13/909,659
no motivation to look beyond Schoonover for a second retaining mechanism
as it would be both redundant" and "inoperative." Br. 12.
The Examiner is modifying Schoonover by disregarding
Schoonover' s teaching of inserting or sandwiching a folded cap between
upper and lower shells 40A, 50A, thereby protecting both the outside and
inside of the cap. See Schoonover Fig. 6A. Instead, the Examiner only
addresses upper shell 40A and not also its opposite mating lower shell 50A.
Final Act. 5-7; see also Ans. 5 (addressing only the "domed protective
device with multiple fastening elements on either side" (i.e., Schoonover
upper shell 40A)), 7. The Examiner then re-positions upper shell 40A to
where lower shell 50A had once been (i.e., to the inside of the cap) based on
Shen's disclosure of a first embodiment showing the protector outside the
cap (Shen Figs. 1-3) and a second embodiment showing the protector inside
the cap (Shen Figs. 4--5). 3 Ans. 5. However, Shen's embodiment showing
the protector inside the cap (as proposed by the Examiner) does not employ
a retaining strap. See Shen Figs. 4--5. Regardless, the Examiner employs
Shen's strap 130 used in Shen's alternate "outside the cap" embodiment
(Figs. 1-3) stating that this strap 130 is "capable of' being used in the other
embodiment. Final Act. 8; see also Ans. 4, 5, 7. Appellants also point out
that Shen's "outside the cap" embodiment discloses strap 130 "configured to
wrap around the back of the cap" and not around the front of the cap as now
proposed by the Examiner. Br. 9. However, the Examiner states that Shen
teaches a strap that is "capable of extending around the outer front surface"
3 Schoonover also discloses protective shells inside and outside the cap (i.e.,
shells 40A and 50A), but the Examiner is not "sandwiching" the cap in-
between these shells as taught by Schoonover.
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Application 13/909,659
of the cap "due to its material properties" (and does not address Shen's lack
of any elastic strap in Shen's selected "inside the cap" embodiment). Ans. 4;
see also Final Act. 8-9. In summation, the Examiner explains that it would
have been obvious to combine Schoonover and Shen "in order to provide a
secure manner in which to hold the rigid body in the cap and maintain the
shape of the cap." Final Act. 8-9.
In view of Appellants' contentions (see supra), the Examiner does not
explain how Schoonover's original, un-modified "sandwiching" system is
deficient or otherwise fails to already "provide a secure manner in which to
hold the rigid body in the cap and maintain the shape of the cap" as stated.
Final Act. 9. The Examiner does not explain why one skilled in the art
would discard Schoonover' s teaching of protecting both the inside and
outside of the cap in favor of only protecting one side thereof as now
proposed. The Examiner also combines disparate embodiments of Shen by
extracting the retaining strap of the "outside the cap" version and combining
this strap with Shen's "inside the cap" version, stating that "replacing the
Velcro fasteners with an elastically resilient strap would not prevent the
device from being held in place." Ans. 6. However, Shen employs the
elastic strap to secure the protector "about the wearer's head" whereas Shen
employs Velcro to secure the protector "inside the ball cap." Shen ,r,r 25, 30.
The Examiner does not explain ( other than that it is "capable of') how
tensioning the protector "about a wearer's head" equates to a Velcro
securement of the protector to "inside the ball cap" itself (where a head is
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Application 13/909,659
not needed). 4 In other words, the two embodiments employ two distinct
manners of attachment of the protector, i.e., one to the head, the other to the
cap, and the Examiner does not explain how the method of the one can be
readily employed with the method of the other. Compare Shen Figs. 1-3,
with id. at Figs. 4--5; see also Br. 10.
In view of the above, we agree with Appellants that the Examiner has
relied on impermissible hindsight reconstruction (see Br. 9, 11) because the
Examiner does not explain why such changes and/or modifications would
have been undertaken other than based on knowledge gleaned from
Appellants' disclosure. Accordingly, we do not sustain the Examiner's
rejection of sole independent claim 1 as being obvious over Schoonover and
Shen. Further, the additional art relied upon (i.e., Yan, Hale, and Zakarin),
does not cure the above defects in the expressed combination of Schoonover
and Shen. Thus, we likewise do not sustain the Examiner's rejections of
dependent claims 2-17.
DECISION
The Examiner's rejection of claims 1 and 13 as indefinite is reversed.
The Examiner's rejections of claims 1-17 as being obvious are
reversed.
REVERSED
4 The Examiner states, "[t]he modification of Schoonover requires merely
exchanging the Velcro fasteners with the elastic strap." Ans. 7; see also id.
at 8.
8