Ex Parte Gallagher

Patent Trial and Appeal Board

Jan 23, 2015

11899345 (P.T.A.B. Jan. 23, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JEFFREY GALLAGHER
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Appeal 2013-000046
Application 11/899,345
Technology Center 3700
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Before STEFAN STAICOVICI, LYNNE H. BROWNE, and
LISA M. GUIJT, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Jeffrey Gallagher (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting under 35 U.S.C. § 102(b) claims 2–4 as
anticipated by Coombs (US 6,023,288, issued Feb. 8, 2000) and under 35
U.S.C. § 103(a) claims 2–14 as unpatentable over Guelzow (US
2008/0023002 A1, published Jan. 31, 2008), Coombs, and Collins (US

1 According to Appellant, the real parties in interest are Morning Pride
Manufacturing, LLC and Honeywell International, LLC. Br. 1.

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1,749,998, issued Mar. 11, 1930)2. See Ans. 3. Claim 1 has been cancelled.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

INVENTION
Appellant’s invention relates to “protective helmets” and “thermal
imaging cameras that can be mounted to such protective helmets.” Spec. 1,
para. 4 and Fig. 1.
Claims 3 and 6 are representative of the claimed invention and read as
follows:
3. A bracket for mounting a camera to a protective helmet
having an identification shield mounted to a mount point of the
helmet by a fastener, the bracket comprising:
a helmet mount portion having an upper edge, a lower
edge, and a mount opening between the upper and lower edges
and located to align with the mount point of the helmet; and
a camera mount portion extending from the helmet
mount portion to provide a mount location for the camera,
wherein the camera mount portion extends from the
lower edge to extend beneath the identification shield with the
bracket and shield mounted to the helmet.

6. A protective head gear combination for mounting a
camera, the combination comprising:
a protective helmet having a mount point;
an identification shield mounted to the mount point; and

2 The rejections under 35 U.S.C. § 102(b) of claims 15, 16, and 19 as
anticipated by Timlin (US 1,517,180, issued Nov. 25, 1924) and under 35
U.S.C. § 103(a) of claims 15–20 as unpatentable over Guelzow, Coombs,
and Collins have been withdrawn by the Examiner. Ans. 3.
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a camera mount bracket mounted to the mount point,
sandwiched between the identification shield and the protective
helmet.

ANALYSIS
The anticipation rejection based upon Coombs
Appellant does not present arguments for the patentability of claims 2
and 4 apart from claim 3. See Br. 3–4. Therefore, in accordance with 37
C.F.R. § 41.37(c)(1)(vii) (2011), we select claim 3 as the representative
claim to decide the appeal of the rejection of these claims, with claims 2 and
4 standing or falling with claim 1.
The Examiner finds that Coombs teaches a bracket 90 for mounting a
device capable of holding a camera to a helmet 12A including a mount
opening 91. Final Act. 2–3 (citing Coombs, Fig. 8).
Appellant argues that in contrast to the Examiner’s interpretation of
Coombs, reference number 91 indicates a “groove” for receiving resilient
member 76 in order to wedge member 90 between resilient member 76 and
cap 73 with bracket 90 residing in groove 75. Br. 3–4 (citing Coombs, col.
6, ll. 20–23). Thus, according to Appellant, “Coombs et al does not disclose
or suggest mount openings as recited in independent claim 3.” Id. at 4.
We are not persuaded by Appellant’s arguments because claims are to
be given their broadest reasonable interpretation consistent with the
Specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). In this case, an ordinary and customary meaning of the term
“opening” is “a hole or empty space that you can go through.” Merriam
Webster’s Collegiate Dictionary (10th Ed. 1997). Coombs’ groove 91 is an
empty space in bracket 90 through which resilient member 76 goes through
to hold member 90 (bracket) in groove 75 of cap 73. See Coombs, col. 6, ll.
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17–23 and Fig. 8. Furthermore, we agree with the Examiner that the mount
point3 “is merely anywhere an identification shield may be mounted to a
helmet; which in this instance is in the general location of 12A of figure 8,”
that is, the location where the arrow of reference number 12A is pointing in
Figure 8. Ans. 4. Thus, because groove 91 is located directly beneath “the
general location of 12A of figure 8,” groove 91 is in alignment with the
mount point of Coombs’ helmet 12A, as called for by independent claim 3.
As such, for the foregoing reasons, groove 91 constitutes a “mount
opening . . . located to align with the mount point of the helmet,” as called
for by independent claim 3. Accordingly, we sustain the rejection under 35
U.S.C. § 102(b) of independent claim 3, and claims 2 and 4 falling with
claim 3, as anticipated by Coombs.

The obviousness rejection based upon Guelzow, Coombs, and Collins
Claims 2–4
Appellant does not present arguments for the patentability of claims 2
and 4 apart from independent claim 3. See Br. 4–6. We select claim 3 as the
representative claim to decide the appeal of the rejection of these claims,
with claims 2 and 4 standing or falling with claim 1.
Appellant argues that the Examiner arrived at the rejection by
employing impermissible hindsight reconstruction. Br. 5–6. More
specifically, Appellant argues that the Examiner’s reasoning to combine the
teachings of Guelzow, Coombs, and Collins has “absolutely no rational

3 Appellant’s Specification describes the “mount point” as the location
on the helmet where an identification badge is mounted to the helmet. Spec.
2, paras. 7–8.
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underpinning other than the use of the claims as a template to reconstruct the
prior art.” Id.
However, the Examiner has provided an adequate reason with rational
underpinning, namely, using Coombs’ bracket 90 “capable of retaining or
sandwiching a lower edge of a shield while mounting a camera in a pivoting
manner.” Final Act. 4; see also In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006). “[W]hen a patent claims a structure already known in the prior art
that is altered by the mere substitution of one element for another known in
the field, the combination must do more than yield a predictable result.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). In this case, the
Examiner finds that Coombs’ bracket 90 would have been a suitable
substitute for Guelzow’s structure that allows camera 307 to be mounted to
helmet 300. See Ans. 5. Given that both Guelzow and Coombs disclose
head protection helmets having cameras and display units mounted thereon,
the Examiner has a sound basis for finding that Coombs’ bracket 90 would
have been a suitable substitute for Guelzow’s structure that allows camera
307 to be mounted to helmet 300. We further agree with the Examiner that,
“the claim language [of claim 3] does not require an ID shield or helmet.”
See id. at 4. Appellant has not provided persuasive evidence showing that
the Examiner’s proposed substitution would have been either beyond the
level of ordinary skill in the art or unpredictable to a person of ordinary skill
in the art. As such, we are not persuaded of hindsight in the Examiner’s
rejection based on Guelzow, Coombs, and Collins.
Lastly, Appellant once more argues against the disclosure of Coombs
as presented supra. Br. 4–5. However, we are not persuaded for the same
reasons as expressed above.
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In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of independent claim 3, and claims 2 and 4 falling
with claim 3, as unpatentable over Guelzow, Coombs, and Collins.

Claim 5
Appellant argues that because Coombs fails to disclose a helmet
mount portion having “a mount opening,” Coombs also fails to disclose
“another mount opening,” as called for by claim 5. Br. 6.
At the outset, for the reasons set forth supra, we do not agree with
Appellant that Coombs’ bracket 90 does not include “a mount opening,” as
called for by independent claim 3. However, the Examiner has failed to set
forth any findings of “another mount opening” in either Coombs’ bracket 90
or in the helmet structure of Guelzow as modified by Coombs and Collins.
See Final Act. 3–4. As such, the Examiner’s legal conclusion of
obviousness is not supported by facts, and thus, cannot stand. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967). Accordingly, we do not
sustain the rejection of claim 5 as unpatentable over the combined teachings
of Guelzow, Coombs, and Collins.

Claims 6–14
In contrast to independent claim 3, independent claim 6 requires both
an identification shield and a camera mount bracket mounted to the same
mount point on a protective helmet such that the camera mount bracket is
“sandwiched between the identification shield and the protective helmet.”
Compare Br. 10 with id. at 11, Claims App.
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The Examiner finds that because camera 307 of Guelzow is “located
on a pad connected through the brim portion of the helmet to display
element 30[6],” it would have been “an obvious connection to provide a
mount opening and fastener connection at this location as taught by Collins.”
Final Act. 4. The Examiner also finds that Coombs’ bracket 90 is “capable
of retaining or sandwiching a lower edge of a shield while mounting a
camera in a pivoting manner.” Id. According to the Examiner, mounting an
identification shield using holes through a protective helmet and Coombs’
mounting bracket 90 “is not considered unreasonable as an ID shield is
necessary to be visible in order for it to remain functional i[.]e.[,] for rescue
personnel to easily identify each other in an emergency type environment.”
Ans. 7 (citing Coombs, Fig. 8).
Appellant argues that Guelzow fails to disclose a camera mount
bracket; Collins fails to disclose a flashlight mounting bracket and an
identification shield mounted to a common mount point; and although
Coombs discloses a camera mount bracket, Coombs fails to disclose a
camera mount bracket sandwiched between an identification shield and a
protective helmet. Br. 6–7. Thus, according to Appellant, the combined
teachings of Guelzow, Coombs, and Collins fail to disclose an identification
shield and a camera mount bracket, as called for by claim 6. Id. at 7.
Although we appreciate that the protective helmet head gear of
Guelzow, as modified by Coombs and Collins, includes a protective helmet
307 (as per Guelzow), an identification shield 27 (as per Collins ), and a
camera mount bracket 90 (as per Coombs), the resulting protective helmet
head gear is not the structure required by independent claim 64. More

4 See Guelzow, Fig. 6; Coombs, Fig. 8; and Collins, Fig. 3.
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specifically, we do not see how the identification shield and the camera
mount bracket are mounted to the same mount point on the protective helmet
such that the camera mount bracket is “sandwiched between the
identification shield and the protective helmet,” as called for by independent
claim 6. Guelzow discloses mounting camera 307 through the brim of
protective helmet 300. See Guelzow, Figs. 3, 5. Coombs discloses that
bracket 90 is sandwiched between resilient member 76 and inner deformable
cap 73, which is mounted removably to outer hard shell 72 of protective
helmet 12A. See Coombs, col. 6, ll. 19–23 and Fig. 8. In other words, the
mount point of Coombs’ bracket 90 is located on the interior and under the
brim of protective helmet 12A. In contrast, because Collins’ identification
shield 27 is located on the crown of protective helmet 5, the mount point is
located on the exterior and above the brim of protective helmet 5. See
Collins, Fig. 3. As such, it is unclear how the Examiner is proposing to
modify the protective helmet of Guelzow having a through the brim mount
point with Coombs’ bracket having an under the brim mount point and
Collins’ identification shield having an above the brim mount point so that a
common mount point exists, as called for by independent claim 6.
Furthermore, even assuming arguendo that a person of ordinary skill in the
art would provide holes through Coombs’ bracket, as the Examiner suggests
(see Ans. 7), it is not clear how such a modification results in a common
mount point for the camera mount bracket and identification shield of
Guelzow’s helmet as modified by Coombs and Collins. Moreover, the
reason proffered by the Examiner, namely, “for rescue personnel to easily
identify each other in an emergency type environment” (id.), appears to
already be performed by locating the identification shield on the crown of
Guelzow’s protective helmet. See Guelzow, Fig. 2. The Examiner has not
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provided any findings that Guelzow recognized a problem with securing the
identification shield on the crown of its protective helmet. Thus, without a
persuasive articulated rationale based on rational underpinnings for
modifying the reference as proposed, the Examiner’s rejection appears to be
the result of hindsight analysis. See Kahn, 441 F.3d at 988. Therefore, we
do not sustain the rejection of claims 6–14 under 35 U.S.C. § 103(a) as
unpatentable over Guelzow, Coombs, and Collins.

SUMMARY
We affirm the Examiner’s decision to reject claims 2–4 and reverse
the Examiner’s decision to reject claim 5–14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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