Ex Parte Grilliot et al

Patent Trial and Appeal Board

Feb 21, 2013

11375735 (P.T.A.B. Feb. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WILLIAM L. GRILLIOT, MARY I. GRILLIOT, and
THOMAS STACHLER
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Appeal 2011-000228
Application 11/375,735
Technology Center 3600
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Before LINDA E. HORNER, STEFAN STAICOVICI, and
SCOTT A. DANIELS, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
William L. Grilliot et al. (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-8 under
35 U.S.C. § 103(a) as being unpatentable over the helmet of Appellants’
prior art Figures 1 and 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and designate our affirmance as a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
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Application 11/375,735

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THE INVENTION
Appellants’ claimed invention “pertains to a protective helmet of a
type worn by a firefighter or by an emergency worker, as equipped with a
mounting device, by which a badge is mounted to the protective helmet.”
Spec. 1, ll. 4-6. Claims 1 and 5 are independent. Claim 5, reproduced
below, is representative of the subject matter on appeal.
5. A protective helmet of a type worn by a firefighter or by
an emergency worker, wherein the protective helmet is
equipped with a mounting device, by which a badge having a
front face bearing indicia is mounted to the protective helmet,
wherein the mounting device comprises a fitment, which is
mounted to the protective helmet and which has a recess
opening downwardly and receiving an upper portion of the
badge, the upper portion comprising an upper end of the badge,
and wherein the mounting device comprises a blade, which is
mounted to the protective helmet and which has a portion
extending upwardly along a back face of the badge and is
received in the recess.
Independent claim 1 is directed to a protective helmet substantially
similar to claim 5 except that claim 1 also calls for the portion of blade
extending upwardly along a back face of the badge to extend “as far as the
upper edge of the badge.”
ISSUE
Appellants argue claims 1-8 as a group. App. Br. 3-6. We select
claim 5 as representative, and claims 1-4 and 6-8 stand or fall with claim 5.
See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner found that prior art Figures 1 and 2 teach a protective
helmet as called for in claim 5 except for the blade extending into the recess.
Ans. 4-6. Appellants do not contest these findings by the Examiner. The
Examiner determined that it would have been obvious to extend the blade as
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Application 11/375,735

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called for in claim 5 “to provide more support for the badge by supporting a
larger surface area of the back surface or the entire length of the back
surface of the badge.” Ans. 5-6.
Appellants argue that the rejection should be reversed because it is
“based upon a conclusory and unsupported assertion, attempt[s] to modify
the prior art contrary to the principle of operation of the prior art and to
render the prior art unsatisfactory for it[s] intended purpose, and ignore[s]
the long felt need evidenced by the prior art cited by the Examiner.” App.
Br. 3.
The issue presented by this appeal is whether the extension of the
prior art blade upwardly along the back face of the badge such that the blade
extends into the recess as called for in claim 5 would have been obvious to
one of ordinary skill in the art in light of prior art helmet with mounting
device shown in Figures 1 and 2 and the knowledge of one of ordinary skill
in the art.
FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. Appellants’ Specification describes that “it has been known for the
mounting device to comprise . . . a blade, which is mounted to the
protective helmet and which has a portion extending upwardly along a
back face of the badge, toward but not as far as the upper portion of
the badge.” Spec. 1, ll. 12-17.
2. Appellants’ Specification describes that “[i]f the [prior art] blade is a
leaf spring, as has been known, the upwardly extending portion of the
blade biases the badge frontwardly.” Spec. 1, ll. 17-18. See also
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Spec. 3, l. 25 – Spec. 4, l. 2 (front portion 62 of prior art leaf spring
blade 60 biases badge 30 frontwardly).
3. Appellants’ Specification describes in the Background of the
Invention:
Because the blade portion extending
upwardly along the back face of the badge does
not extend as far as the upper portion of the badge,
it has been possible for a foreign object, such as a
wire, inadvertently to enter the recess from the
front face of the badge, to bend the upper portion
of the badge backwardly, over an upper end of the
blade, and to be thus caught in the recess. It is
distracting for a wearer of the protective helmet to
have to dislodge a foreign object caught in the
recess.
Spec. 1, ll. 19-25.
4. Prior art Figure 2 shows a recess 54 in fitment 50 which is wider than
the thickness of badge 30, such that the upper portion 40 of badge 30
can be pushed rearwardly within recess 54 by wire W.
5. Appellants’ leaf spring blade 70 also biases the badge 30 frontwardly.
Spec. 2, 13-15; id. at 4, ll. 17-18.
ANALYSIS
One of ordinary skill in the art at the time of Appellants’ invention
was aware of the problem of foreign objects, such as wires, entering the
recess from the front face of the badge and bending the upper portion of the
badge backwardly over an upper end of the blade. Fact 3. The function of
blade 60 of the prior art mounting device of Figures 1 and 2 is to bias the
badge frontwardly within recess 54. Fact 2. The extension of the blade
upwardly so that it extends into recess 54 does not change the function of the
blade; it still biases the badge frontwardly. Fact 5.
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Prior art Figure 2 shows a recess 54 in fitment 50 which is wider than
the thickness of badge 30, such that the upper portion 40 of badge 30 can be
pushed rearwardly within recess 54 by wire W. Fact 4. One of ordinary
skill in the art facing the known problem of the badge being bent backwardly
due to foreign objects entering the recess had a finite number of predictable
solutions, viz, decrease the width of the recess so that it is substantially the
same dimension as the thickness of the badge, fill the slack within the recess
behind the badge to prevent the badge from being able to bend backwardly,
or provide additional support to the back of the badge to prevent the badge
from being able to bend backwardly. Appellants chose the latter of these
predictable solutions.
By extending the blade upwardly along the back of the badge so that
the blade extends into the recess, Appellants provided additional support to
the back of the badge. Because the blade of Appellants’ invention provides
the same function as the blade of the prior art (Facts 2, 5), and because the
provision of additional support to the back of the badge is one of a finite
number of predictable solutions, we find that a person of ordinary skill in the
art would have had good reason to pursue the known options within his or
her technical grasp, and thus, the claimed subject matter is “the product not
of innovation but of ordinary skill and common sense.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007). As such, the solution to the known
problem would have been obvious to try in light of a prior art blade that
already biases the badge frontwardly, and thus the subject matter of claim 5
would have been obvious to one of ordinary skill in the art at the time of
Appellants’ invention.
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Appellants argue that it would not have been obvious to one of
ordinary skill in the art to extend blade 60 into the recess 54 because such a
modification would defeat the “intended purpose of allowing the element 36
of the badge to be loaded over the end of the blade with the blade assembled
to the helmet.” App. Br. 4. As the Examiner noted, Appellants have not
provided evidence that the prior art blade 60 is made to stop short of the
recess to allow element 36 of the badge to be loaded over the end of the
blade with the blade assembled to the helmet. Ans. 7. “Attorney’s argument
in a brief cannot take the place of evidence.” In re Pearson, 494 F.3d 1399,
1405 (CCPA 1974) (citation omitted). Further, we agree with the Examiner
that the fact that the badge is riveted to the helmet belies Appellants’
assertion that the prior art mounting device is designed to allow different
badges to be selectively used with helmet. Ans. 7.
Further, even if extending the blade into the recess would not allow
element 36 of the badge to be slid over the top of the blade with the blade
assembled to the helmet, the modification does not defeat the purpose of the
mounting device. We note that element 36 is attached to badge 30 by rivets.
Spec. 3, ll. 13-15. If, as Appellants argue, the rivet used to attach the lower
portion of the badge to the helmet “can easily be removed to allow a badge
to be replaced after initial assembly of a badge to the helmet” (Reply Br. 2),
then we see no reason why one of the rivets used to attach brace 36 to badge
30 could not likewise be easily removed to allow the badge to be replaced
after initial assembly of the mounting device and badge to the helmet. As
such, Appellants’ argument that the proposed modification would defeat the
intended purpose of the prior art mounting device is not persuasive of error
in the determination of obviousness of the claimed subject matter.
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Appellants also argue that the rejection is in error because it ignores
evidence of long-felt need, asserting:
It is telling that while the problem identified by the application
is not new, the Office Action identifies eight references that are
considered pertinent to Applicants’ disclosure, with the earliest
being dated December 28, 1875 and the latest being dated April
30, 1974, yet none of these references have proposed or shown
the invention recited in the claims and which is now asserted in
the Office Action to be obvious, even though 40 years have
passed since the publication of the latest document cited in the
Office Action. The failure of others in the last 40 years to arrive
at the claimed invention is a clear indication of nonobviousness.
App. Br. 6.
The Federal Circuit has determined that its precedent requires
Appellants to “submit actual evidence of long-felt need, as opposed to
argument . . . because ‘[a]bsent a showing of long-felt need or the failure of
others, the mere passage of time without the claimed invention is not
evidence of nonobviousness.’” In re Kahn, 441 F.3d 977, 990-91 (Fed. Cir.
2006) (quoting Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317,
1325 (Fed. Cir. 2004)); accord In re Wright, 569 F.2d 1124, 1127 (CCPA
1977) (“The mere age of the references is not persuasive of the
unobviousness of the combination of their teachings, absent evidence that,
notwithstanding knowledge of the references, the art tried and failed to solve
the problem.”). Appellants have failed to provide sufficient evidence that
others tried and failed to solve the problem. As such, we do not find
Appellants’ arguments based on the mere age of the references persuasive of
nonobviousness. Accordingly, we affirm the Examiner’s rejection of claim
5 under 35 U.S.C. § 103(a) as being unpatentable over Figures 1 and 2.
Claims 1-4 and 6-8 fall with claim 5.
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Because the reasoning relied on by the Board to sustain the rejection
of claims 1-8 under 35 U.S.C. § 103(a) differs somewhat from the reasoning
relied on by the Examiner, we designate our affirmance of the rejection of
claims 1-8 as a NEW GROUND OF REJECTION so as to provide
Appellants with a full and fair opportunity to respond to the thrust of the
rejection.
CONCLUSION
The extension of the prior art blade upwardly along the back face of
the badge so that the blade extends in to the recess as called for in claim 5
would have been obvious to one of ordinary skill in the art in light of prior
art helmet with mounting device shown in Figures 1 and 2 and the
knowledge of one of ordinary skill in the art.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1-8 and
designate this affirmance as a NEW GROUND OF REJECTION.
37 C.F.R. § 41.50(b) provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

Appeal 2011-000228
Application 11/375,735

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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)(1)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)

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