Ex Parte Cherin et alDownload PDFPatent Trial and Appeal BoardMay 30, 201813909659 (P.T.A.B. May. 30, 2018) Copy Citation 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."). 2 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" 3 Appeal2017-008372 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 4 Appeal2017-008372 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 5 Appeal2017-008372 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. 6 Appeal2017-008372 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 7 Appeal2017-008372 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 Copy with citationCopy as parenthetical citation