Ex Parte Dassler et al

Patent Trial and Appeal Board

Feb 12, 2018

13250860 (P.T.A.B. Feb. 12, 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.
DA 837.007 6025
EXAMINER
MORAN, KATHERINE M
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
13/250,860 09/30/2011
53437 7590 02/13/2018
ROBERT M. SCHWARTZ, P.A.
P.O. BOX 221470
HOLLYWOOD, EL 33022
ALFRED K. DASSLER
02/13/2018 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 ALFRED K. DASSLER, ROBERT M. SCHWARTZ,
and ALBERT J. HOFELDT
Appeal 2017-002129
Application 13/250,860
Technology Center 3700
Before MICHAEL L. HOELTER, JILL D. HILL, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, and 4—9. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appeal 2017-002129
Application 13/250,860
CLAIMED SUBJECT MATTER
The claims are directed to a support element for “protective pads and
padding and the like” used in “articles which contact body parts,” e.g.,
cycling gloves. Spec. 1,1. 29-2,1. 2. Claims 1, 4, 6, 8, and 9 are
independent. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A support element comprising:
a padding structure constructed of a plurality of
interconnected spherical shaped structures together defining a
pliable support element;
said spherical shaped structures being formed of a material
and being interconnected to one another with a connection
defining flexible interconnectors for enabling said padding
structure to be flexibly bent, said connection being a living hinge
formed with said material of said spherical shaped structures; and
a walled containment, said padding structure being
disposed within said walled containment.
EVIDENCE
The Examiner relies on the following evidence in the rejections on
appeal:
Grick US 4,432,099 Feb. 21, 1984
Copeland US 2006/0070171 A1 Apr. 6, 2006
Simic US 7,234,170 B2 June 26, 2007
Patterson US 7,346,935 B1 Mar. 25, 2008
Baker US 2008/0083050 A1 Apr. 10, 2008
REJECTIONS
Claims 1, 2, 5, and 8 are rejected under 35 U.S.C. § 102(b) as being
anticipated by, separately, Grick and Simic.
Claims 4, 6, 7, and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over:
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Application 13/250,860
Grick, Simic, and Copeland (claim 4);
Simic and Baker (claim 6);
Simic and Patterson (claim 7); and
Grick and Copeland (claim 9).
OPINION
Living Hinge
Appellants argue that independent claims 1 and 8 are not anticipated
by Grick because it does not teach a “living hinge” as required by the claims.
Appeal Br. 10. The Examiner finds that Grick’s “exposed surfaces of layer
84” between the “ball shaped structures 86” are “living hinge[s] formed with
said material of said spherical shaped structures” as required by the claims.
Final Act. 3; see also Grick Figs. 2, 3. However, Appellants argue that this
structure cannot be a living hinge because of the way that it is manufactured.
In particular, because the ball shaped structures or protuberances are vacuum
formed from a single piece of material, “the sheet would be stretched at the
hollow protuberances (86) because material is displaced at the protuberances
during forming thereof’ and “the protuberances (86) would in fact be
THINNER than the alleged region.” Appeal Br. 12.
Appellants further argue that:
if any of [Grick’s] structure were considered as a living hinge
(which appellants do not believe that it is due to the minor
difference in thickness due to forming from a uniform sheet and
a lack of “rigid” bodies), it would be that the hollow
protuberances (86) are in fact living hinges between the alleged
region “84”.
Id.
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Application 13/250,860
The Examiner responds that “the claims [do not] recite the living
hinge as having a structural feature of being thinner than that of the
protuberances/spherical shaped structures.” Ans. 2. The Examiner
continues, the “references teach the spherical elements as being formed of
the same material as that of the living hinge and this material is considered
capable of allowing for the padding structure to be bent.” Id. at 3.
Appellants argue that the Examiner’s claim construction is
inconsistent with the ordinary meaning of the term “living hinge” as
evidenced by Wikipedia and Appellants’ Specification. Reply Br. 3.
Appellants cite Wikipedia as defining a living hinge as “a thin flexible hinge
(flexure bearing) made from the same material as the two rigid pieces it
connects, rather than cloth, leather, or some other flexible substance. It is
typically thinned or cut to allow the rigid pieces to bend along the line of
the hinge.” Id. Appellants’ Specification states that a living hinge is “a
hinge which results from a thinned portion of the material of the plate
elements 3 as a result of injection molding.” Spec. 15,11. 20—22. Appellants
argue that therefore, the claimed living hinge does “require a thinned region
or possibly cuts to result in a living hinge.” Reply Br. 3.
The United States Patent and Trademark Office gives claims their
broadest reasonable interpretation consistent with the Specification, reading
claim language in light of the Specification as it would be interpreted by one
of ordinary skill in the art. See In re Am. Acad, of Sci. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
We agree with Appellants that the Examiner’s claim construction of
“living hinge” “as being formed of the same material as” of the spherical
elements and the material being “capable of allowing for the padding
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Application 13/250,860
structure to be bent” is overly broad. We determine that a “living hinge”
requires more than mere flexibility of the material generally. Instead, and
consistent with Appellants’ usage, we construe “living hinge” to mean a
flexible hinge made from the same material as two adjacent pieces it
connects, where the hinge has less material (i.e., is “thinned” or cut) than the
two adjacent pieces to allow the adjacent pieces to bend along the line of the
hinge.
As the Examiner has not shown that Grick teaches a living hinge, we
do not sustain the anticipation rejection over Grick of claims 1, 2, 5, and 8.
We also do not sustain the obviousness rejection of claim 9, which also
relies on this same unsupported finding.
Walled Containment
Appellants argue that independent claims 1 and 8 are not anticipated
by Simic because Simic does not teach a “padding structure being disposed
within said walled containment” as required by the claims. The Examiner
finds that “Simic teaches a [mitten] comprising a padding structure
constructed of a plurality of interconnected spherical and ball shaped
structures 25.” Final Act. 4. The Examiner further finds “that the [mitten] is
molded as a one-piece unit and therefore is formed of the same material
throughout.” Id. At the same time, the Examiner also finds that “[t]he
padding structure is disposed within the walled containment formed by
mitten sides 3,5.” Id. at 5. The Examiner further explains that it is the
“exterior surfaces” of the sides that “form the walled containment.” Ans. 4.
Appellants argue that the sides of the mitten are also the padding
structure and so “the sides are not and cannot be disposed within
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themselves.” Appeal Br. 14—15. We agree. As noted above, the Examiner
found “that the [mitten] is ... a one-piece unit. . . formed of the same
material throughout.” Final Act. 4. Part of that structure, i.e. part of the
wall, is formed as a ball-shaped structure. It is unclear how part of the
walled containment can also be “disposed within said walled containment”
as required by claims 1 and 8.1
Thus, we do not sustain the anticipation rejection over Simic of claims
1, 2, 5, and 8. We also do not sustain the obviousness rejections of claims 6
and 7 which rely on this same unsupported finding.
Shore Hardness of20—95 Shore A
Independent claim 4 is similar to claim 1 in some respects, but also
includes “said padding structure having vent openings formed therein” and
“said spherical shaped structures being formed of a material having a shore
hardness of 20—95 Shore A.” The Examiner finds that Grick teaches a
support element with padding structure, but does not teach either of the
above highlighted limitations. Final Act. 5. The Examiner finds that
Copeland teaches the vent openings {id.), which Appellants do not contest
{see generally, Appeal Br. 16—19).
The Examiner finds that “Simic teaches a padding structure with the
spherical shaped structures being formed of a material having a shore
hardness within the range of 20—95 Shore A.” Final Act. 5. The Examiner
determines that “it would have been obvious to . . . modify Grick to form the
1 Reading the walled containment and the padding structure as separate
components is also consistent with the Specification. See e.g., Spec. 23,11.
8-11, 15-19; Figs. 15, 17.
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spherical structures of a material having a shore harness of 20-95 Shore A in
that this value is known to result in structures having desired flexibility and
elongation properties.” Id.
Appellants argue that using Simic’s material in Grick’s helmet would
render the helmet unsatisfactory for its intended purpose. Appeal Br. 17—18.
Appellants assert that Grick’s internal helmet layers must “retain their
plastic deformation” “so that during use, the open pockets (86) of the layers
deform to absorb energy of a crash.” Id. at 17. Appellants argue that
“[providing the hollow protuberances (86) in a material having a hardness
of 20-95 Shore A would not allow such required deformation as the layer
would in no way be considered as rigid.” Id. at 17. Appellants further argue
that “modification of Grick as alleged by the examiner to include the
material of Simic would in fact destroy the ability of the protuberances (86)
to deform in the required manner during an impact.” Id. at 18.
However, Appellants have not provided any evidence in support of
this allegation, and it is not otherwise self-evident from the record that a
“layer [with a hardness of 20—95 Shore A] would in no way be considered as
rigid” or that the modification would “destroy the ability of the
protuberances (86) to deform in the required manner during an impact.” Id.
at 17—18. Thus, Appellants’ statement is merely attorney argument, with no
supporting evidence which does not inform us of error in the Examiner’s
rejection of claim 4. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(“Attorney’s argument in a brief cannot take the place of evidence.”).
In the Reply Brief, Appellants argue for the first time that the
Examiner’s reason to combine is unsupported. Reply Br. 8—10. As noted
above, in the Final Action the Examiner determined that “it would have been
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obvious to . . . modify Grick to form the spherical structures of a material
having a shore harness of 20-95 Shore A in that this value is known to result
in structures having desired flexibility and elongation properties.” Final Act.
5.
Though Appellants only cite to the Examiner’s Answer in their
arguments (Reply Br. 8—10), this determination was made in the Final
Action (Final Act. 5). Appellants do not offer any explanation why this
argument could not have been presented in the Appeal Brief. Therefore, we
will not consider this new and untimely argument. See 37 C.F.R. §§
41.37(c)(l)(iv), 41.41(b)(2); Ex parte Borden, 93 USPQ2d 1473, 1477
(BPAI 2010) (informative).
DECISION
The Examiner’s rejections of claims 1, 2, and 5—9 are reversed.
The Examiner’s rejection of claim 4 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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