Ex Parte Gionfriddo

Board of Patent Appeals and Interferences

Feb 28, 2011

11444589 (B.P.A.I. Feb. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL WILLIAM GIONFRIDDO
____________

Appeal 2009-010401
Application 11/444,589
Technology Center 3700
____________

Before JOHN C. KERINS, STEVEN D.A. McCARTHY and MICHAEL W.
O’NEILL, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-010401
Application 11/444,589

2
STATEMENT OF THE CASE
Paul William Gionfriddo (Appellant) seeks our review under 35
U.S.C. § 134 of the Examiner’s rejection of claims 1-9 and 16-18, the only
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

THE INVENTION
Appellant’s invention is directed to a garment having bullet-resistant
soft body armor to be worn on the leg. Claim 1, reproduced below, is
illustrative of Appellant’s invention:
1. A garment comprising:

a bullet-resistant soft body armor, having an upper
portion for covering at least a portion of a lower
body of a user, having a lower portion located in
proximity to the upper portion which is sufficiently
elongated such that the lower portion wraps around
to cover at least a portion of a leg of the user; the
lower portion having a first and second side, the
first side for wrapping around the leg of the user;
the second side having an attachment mechanism
for securing to the first side around the leg of the
user; and

an attachment mechanism located at the upper
portion of the garment wherein the mechanism
secures the garment to the user.

Independent claim 16 is similar in scope.
Appeal 2009-010401
Application 11/444,589

3
THE REJECTIONS
The Examiner has rejected claims 1, 7-9, and 16-18 under 35 U.S.C.
§ 102(b) as being anticipated by Sacks (US 6,138,275, iss. Oct. 31, 2000).
The Examiner has further rejected claims 2-6 under 35 U.S.C.
§ 103(a) as being unpatentable over Sacks.

ISSUES
Has the Examiner established that Sacks discloses each element in
independent claims 1 and 16? Has the Examiner correctly concluded that
the subject matter of claims 2-6 would have been obvious to a person of
ordinary skill in the art?

ANALYSIS
Claims 1, 7-9 and 16-18--Anticipation--Sacks
The Examiner maintains that the body armor vest disclosed by Sacks
(see Fig. 2) is a “leg protector,” and then recites all of the elements of claim
1, for the most part without specifically identifying what parts of the vest
correlate to the claim elements. (Ans. 3). The Examiner does not address
how the disclosed vest, described in Sacks as wrapping around the shoulders
and torso, can reasonably be regarded as a leg protector.
Possibly in recognition of the unsustainability of that position, the
Examiner, in the “Response to Argument” section of the Answer, states
that Sacks discloses “that ‘additional items of body armor’ can be attached
in combination to the [vest].” (Ans. 4, quoting Sacks, col. 5, ll. 51-64). The
Examiner finds that it is thus inherent that the additional body armor of
Appeal 2009-010401
Application 11/444,589

4
Sacks would be “capable of being worn and fastened about the leg or any
other parts of body as disclosed therein.” (Ans. 4).
Sacks discloses that a “leg protector” is a type of “[a]dditional items
of body armor” contemplated to be attached to the vest, without providing a
single word as to what construction or configuration might be used for the
leg protector. (Sacks, col. 5, ll. 60-64). The Examiner’s position that the leg
protector would inherently be capable of being fastened around the leg,
while positing one possible and maybe even probable configuration, is not
sufficient to maintain an anticipation rejection based on inherent disclosure.
Inherency may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient. In re Oelrich, 666 F.2d 578, 581 (CCPA 1981).
The rejection of independent claims 1 and 16, and that of claims 7-9,
17, and 18 depending from these claims, as being anticipated by Sacks, will
not be sustained.
Claims 2-6--Obviousness--Sacks
The rejection of these claims relies on the same deficient findings as
were made in the anticipation rejection discussed above. The Examiner
makes no additional findings or conclusions of obviousness with respect to
the limitations set forth in claim 1, from which these claims depend. The
rejection will not be sustained.
Appeal 2009-010401
Application 11/444,589

5
CONCLUSIONS
The Examiner erred in finding that the armor vest disclosed in Sacks
discloses all elements of the claims rejected as being anticipated by Sacks.
The same erroneous findings were relied on in rejecting claims 2-6 as being
obvious over Sacks.

DECISION
The decision of the Examiner to reject claims 1-9 and 16-18 is
reversed.

REVERSED

hh

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