Ex Parte Dammann et al

Patent Trial and Appeal Board

Jan 22, 2018

13652977 (P.T.A.B. Jan. 22, 2018)

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.
13/652,977 10/16/2012 Myrene Anderson Dammann 71088-001 1421
50437 7590 01/24/2018
DUFT BORNSEN & FETTIG, LLP
1526 SPRUCE STREET
SUITE 302
BOULDER, CO 80302
EXAMINER
FERREIRA, CATHERINE M
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
01/24/2018 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):
docketing @ dbflaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MYRENE ANDERSON DAMMANN,
CINDA LOU KOCHEN, and TAMI JEAN KOCHEN
Appeal 2016-007464
Application 13/652,977
Technology Center 3700
Before STEVEN D.A. McCARTHY, LISA M. GUIJT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s decision2 rejecting claims 1—20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify The Shower Scene, LLC as the real party in interest.
Appeal Br. 3.
2 Appeal is taken from the Non-Final Office Action dated September 25,
2015 (“Non-Final Act.”).
Appeal 2016-007464
Application 13/652,977
CLAIMED SUBJECT MATTER3
Claims 1, 17, and 18 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal, with
disputed limitations italicized for emphasis.
1. Headwear apparel4 comprising:
a material forming a cavity adapted to receive a
human head through an opening at a bottom portion5;
a brim coupled to a bottom portion of the cavity and
extending outward from the cavity;
a channel defining the opening and extending along
a portion of the circumference of the bottom portion of the
apparel, wherein the channel defines a lower edge of the
bottom portion;
3 The pending claims are the claims presented in the Amendment dated
August 5, 2015, which was filed along with a Request for Continued
Examination. The Examiner’s Non-Final Office Action dated September 25,
2015 includes findings regarding limitations that are not recited in the claims
subject to appeal.
4 Notably, “the headwear” recited in clam 14 appears to lack proper
antecedent basis. See Appeal Br. 28 (Claims App’x). The body of claim 1,
as well as the preamble of claim 14, uses the term “the apparel” to refer back
to the “Headwear apparel” appearing in the preamble of claim 1. Assuming
“the headwear” appearing in dependent claim 14 is intended to refer back to
the “Headwear apparel” appearing in the preamble of claim 1, the use of two
different terms referring back to the same structure is potentially confusing.
5 The limitation “a bottom portion” most likely refers to a bottom portion of
the apparel, providing antecedent basis for the bottom portion of the apparel
recited later in the claim, as compared to the bottom portion of the cavity
also recited in claim 1.
2
Appeal 2016-007464
Application 13/652,977
a draw cord positioned to slide within the channel,
the draw cord having a portion that exits the channel to
provide access to the draw cord for a user of the apparel;
and
a locking means associated with the portion of the
draw cord that exits the channel, the locking means
configured to hold the draw cord at a desired position,
wherein the portion of the draw cord that exits the
channel is movable to the desired position to cinch the
channel, thereby providing tension on the bottom portion
of the apparel configured to conform the opening to the
user’s head and seal the user’s hair from external moisture,
wherein the locking means is configured by holding
the draw cord at the desired position, and
wherein the brim is attached to an arcuate joint
section comprising a rigid material on the cavity that
resists deformation when the draw cord is held taught.
REJECTIONS
I. Claims 1, 5, 7, and 9-13 stand rejected under 35 U.S.C. § 112,
sixth paragraph.
II. Claims 1, 3—6, 10—12, 14, and 16 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Costello (US 7,665,154 B2; issued
Feb. 23, 2010), Rattay (US 2006/0168709 Al; published Aug. 3, 2006), and
Bums (US 1,211,075; issued Jan. 2, 1917).
III. Claim 2 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Costello, Rattay, Bums, and Balaban (US 5,309,574;
issued May 10, 1994).
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Application 13/652,977
IV. Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Costello, Rattay, Bums, and Bouteloup (US 2,583,992;
issued Jan. 29, 1952).
V. Claims 9, 13, and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Costello, Rattay, Bums, Coluccio (US 6,467,096 Bl;
issued Oct. 22, 2002), and Bouteloup.
VI. Claim 17 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Balaban, Rattay, Coluccio, Bouteloup, Bums, Costello,
and Toth (US 8,117,677 B2; issued Feb. 21, 2012).
VII. Claims 18—20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Herndon (US 809,947; issued Jan. 16, 1906) and Bums.
ANALYSIS
Rejection I
The Examiner rejects claims 1,5,7, and 9-13 under 35 U.S.C. § 112,
sixth paragraph, because “the use of the word ‘means’ is not accompanied
by the necessary functional language.” Non-Final Act. 3 (emphasis
omitted). The sixth paragraph of 35 U.S.C. § 112, reproduced below, sets
forth the manner in which means-plus-function limitations should be
expressed and interpreted.
An element in a claim for a combination may be expressed as a
means or step for performing a specified function without the
recital of stmcture, material, or acts in support thereof, and such
claim shall be constmed to cover the corresponding stmcture,
material, or acts described in the specification and equivalents
thereof.
4
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Application 13/652,977
If the requirements of 35 U.S.C. § 112, sixth paragraph, have not been met,
the claim language is not treated as a means-plus-function limitation or is
considered indefinite under 35 U.S.C. § 112, second paragraph. See Manual
of Patent Examining Procedure § 2181 III. (rev. 7, Nov. 2015). Thus, the
Examiner’s rejection is improper and cannot be sustained.
Notwithstanding, the standard for determining whether a limitation is
a means-plus-fimction term is not based merely on the presence of the word
“means,” but, rather, on “whether the words of the claim are understood by
persons of ordinary skill in the art to have a sufficiently definite meaning as
the name for structure.” Williamson v. Citrix Online, LLC, 792 F.3d 1339,
1349 (Fed. Cir. 2015). We determine that the claim term “locking means,”
as recited in independent claim 1, specifies a function (i.e., a means for
locking the position of the draw cord) without reciting structure for doing so.
See Manual of Patent Examining Procedure § 2181 I.B. (rev. 7, Nov. 2015)
(instructing that, under certain circumstances, the terms “ink delivery
means” and “means for delivering ink” could both be interpreted as proper
means-plus-fimction limitations). The Specification discloses that
[ljocking means 110 may comprise any suitable structure for
engaging draw cord 108 to hold or lock the position of draw cord
relative to the channel 106 in which draw cord 108 is configured
to slide. In one exemplary embodiment locking means 110 may
be a cord lock as generally known in the industry that provides a
spring tension to grip draw cord 108 at any desired position. . . .
A cord lock (locking means 110) may be slid along draw cord
108 to a desired position providing the appropriate tension for
channel 106 and thus opening 104.
5
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Application 13/652,977
Spec. 112; see also id. 114 (“locking means comprises a loop end 116 [for
engaging] buttons 118 .. . [or] a hook-and-loop fastener (e.g., Velcro)”); cf.
Appeal Br. 25 (Claims App’x) (claim 5: “wherein the locking means
comprises a cord lock”). Thus, we construe “locking means” to cover the
corresponding structure described in the Specification (i.e., a cord lock, loop
end, hook-and-loop fastener) and equivalents thereof.6
In sum, we do not sustain the Examiner’s rejection of claims 1, 5, 7,
and 9-13 under 35 U.S.C. § 112, sixth paragraph, because the rejection is
improper, and we determine that the claim term “locking means” is a means-
plus-function term, invoking 35 U.S.C. § 112, sixth paragraph.
Rejection II
Regarding independent claim 1, the Examiner finds, inter alia, that
Costello’s Figure 1 depicts a brim coupled to a bottom portion of the cavity
and extending outward from the cavity, as claimed. Non-Final Act. 5 (citing
Costello, Fig. 1). The Examiner relies on Bums for disclosing a brim
“attached to an arcuate joint section (as best seen in Figure 1) comprising a
rigid material,” as claimed. Id. at 6 (citing Bums 1. 46, Fig. 1). In support,
the Examiner determines that Bums’ “net” is “capable of being rigid but still
flexible when moved in certain directions,” such that Bums’ net “resists
6 Notably, the claim language “locking means further comprises,” as recited
in claims 7, 9, and 10 depending from claim 1, is inaccurate, to the extent the
claim term “further” indicates that some stmcture corresponding to the
locking means is recited in claim 1, such that further stmcture is added by
claims 7, 9, and 10.
6
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Application 13/652,977
deformation when the draw cord is held taught,” as claimed. Id.', see also
Ans. 5 (citing Bums 1:46, Figs. 1—3).7
Appellants argue that “an arcuate joint section is not shown in Bums,
nor is it described as resisting deformation when a draw cord is pulled tight.”
Appeal Br. 20. In support, Appellants submit that Bums’ liner L is made of
“silk, satin, or net,” which “are well understood to be soft materials” because
“liners for hats directly contact the user’s head and are intended to provide
comfort to a user.” Id. at 21 (citing Bums 11. 44^47); see also Reply Br. 13.
Appellants also submit that “[ijmplementing a rigid net for a liner would
substantially increase the discomfort of a user while yielding no benefit to
Bums,” and that, in Bums, “the liner itself is mobile and intended to
adjust/move when force is applied,” rather than resisting deformation, as
7 Regarding independent claim 1, the Examiner does not articulate any
reasoning for modifying Costello’s headwear to include a net (i.e., arcuate
joint section comprising rigid material) as taught by Bums. See Non-Final
Act. 5—7; Ans. 3—11. Similarly, regarding independent claim 17, the
Examiner does not articulate any reasoning for modifying Balaban’s
headwear to include Bums’ net. See Non-Final Act. 12—14; Ans. 10. See In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections 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.”) (cited with approval in KSR
Inti Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)); cf. Non-Final Act. 16
(wherein, regarding independent claim 18, the Examiner determines that it
would have been obvious to modify Herndon’s headwear by attaching the
brim to an arcuate joint “with a reinforcing material” as taught by Bums, “to
provide stmcture to the crown so it remains snug on the head of the wearer
and will not stretch out when the drawstring is pulled.”).
7
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Application 13/652,977
claimed. Appeal Br. 21 (citing Bums 11. 63—66); see also Reply Br. 13—14.
Appellants conclude that Bums teaches away from a liner (i.e., arcuate joint
section) comprising rigid material, as claimed, and that the Examiner’s
interpretation of Bums’ net comprising rigid material would “render Bums
inappropriate for its intended purpose.” Appeal Br. 21; see also Reply Br.
13-14.
Bums discloses that “lining L comprises an elongated strip offlexible
material or fabric which may be silk, satin, net or any other desired flexible
fabric.” Bums 11. 44-47 (emphasis added). Thus, a preponderance of
evidence does not support the Examiner’s finding that Bums’ liner L
comprises rigid material, or is capable of being rigid.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1 and claims 3—6, 10—12, 14, and 16 under 35 U.S.C.
§ 103(a).
Rejections III—V
Regarding claims 2, 7—9, 13, and 15, which depend from independent
claim 1, the Examiner’s reliance on Balaban for disclosing the claimed
polyurethane laminate material (Non-Final Act. 9), on Bouteloup for
disclosing features of the claimed locking means {id. at 9-10), and on
Coluccio and/or Bouteloup for disclosing features of the claimed channel
and/or the claimed locking means {id. at 11—12) does not cure the
deficiencies in the Examiner’s finding regarding Bums, as discussed supra
with respect to claim 1.
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Application 13/652,977
Accordingly, we do not sustain the Examiner’s rejection of claims 2,
7—9, 13, and 15 under 35 U.S.C. § 103(a) for the reasons stated supra with
respect to claim 1.
Rejection VI
Appellants argue that independent claim 17 is allowable for the same
reasons as claim 1, as set forth supra. Appeal Br. 22. Claim 17 requires, in
relevant part, a brim “attached to an arcuate joint section of the apparel
comprising a rigid material.” Id. at 30—31 (Claims App’x). The Examiner
erroneously relies on Bums’ net for disclosing an arcuate joint section
comprising a rigid material, as discussed supra with respect to claim 1.
Non-Final Act. 14.
Accordingly, we do not sustain the Examiner’s rejection of claim 17
under 35 U.S.C. § 103(a) for the reasons stated supra with respect to claim
1.
Rejection VII
Regarding independent claim 18, the Examiner finds, inter alia, that
Herndon generally discloses the claimed shower cap headwear apparel,
except that Herndon fails to disclose a brim “attached to an arcuate joint,
comprising a rigid material,” as claimed. Non-Final Act. 15. The Examiner
relies on Bums for disclosing this feature, specifically finding that Bums’
“net” is “capable of being rigid but still flexible when moved in certain
directions.” Id. at 16 (citing Bums 1. 46, Figs. 1, 2). Appellants argue that
the “‘flexible’ liner material recited in Bums (particularly ‘silk,’ ‘satin,’ and
‘net’ . . .), is not the same as a rigid one.” Appeal Br. 12—13. For the
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Application 13/652,977
reasons stated supra with respect to claim 1, we agree that the Examiner
erred in determining that Bums discloses an arcuate joint comprising rigid
material.
Accordingly, we do not sustain the Examiner’s rejection of claim 18
under 35 U.S.C. § 103(a) for the reasons stated supra with respect to claim
1.
DECISION
The Examiner’s rejection of claims 1, 5, 7, and 9—13 under 35 U.S.C.
§112, sixth paragraph, is reversed.
The Examiner’s rejection of claims 1—20 under 35 U.S.C. § 103 is
reversed.
REVERSED
10