Ex Parte Hokin

Board of Patent Appeals and Interferences

Dec 10, 2008

10870825 (B.P.A.I. Dec. 10, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte BRADLEY JACOB HOKIN
__________

Appeal 2008-4973
Application 10/870,825
Technology Center 3700
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Decided: December 10, 2008
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Before TONI R. SCHEINER, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
bandanna, which the Examiner has rejected as anticipated or obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Claims 1-3 and 6-17 are pending and on appeal. Claims 1, 3, 6, and
10 are representative and read as follows:
Appeal 2008-4973
Application 10/870,825

1. A bandanna comprising:
a generally square piece of material having one or more graphics located
thereupon that can be folded and tied into a bandanna by an individual, the
location of said one or more graphics selected so that said one or more
graphics are properly oriented when said generally square piece of material
is folded by an individual and tied into a bandanna and worn.

3. The bandanna as recited in claim 2, wherein said piece of material is made
from paper.

6. The bandanna as recited in claim 1, wherein said one or more graphics are
sports related.

10. A method for forming a bandanna comprising the steps of:
(a) providing a generally square piece of material that can be folded and tied
into a bandanna by an individual; and
(b) locating one or more graphics on said generally square piece of material
such that said one or more graphics are properly oriented when said
generally-square piece of material is folded into a bandanna by an individual
and tied into a bandanna and worn on the head of a wearer.

The claims stand rejected as follows:
• Claims 1, 2, 8-11, 13, 14, 16, and 17 under 35 U.S.C. § 102(b) as
anticipated by Doty;1
• Claims 3 and 12 under 35 U.S.C. § 103(a) as obvious in view of
Doty; and
• Claims 6, 7, and 15 as obvious in view of Doty and Flannery.2
The claims rejected as anticipated have been argued in two groups:
the product claims stand or fall with claim 1 and the method claims stand or
fall with claim 10. The claims rejected for obviousness have not been

1 Doty, U.S. Patent 4,993,080, issued Feb. 19, 1991.
2 Flannery, U.S. Patent 4,468,818, issued Sept. 4, 1984.
2
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Application 10/870,825

argued separately and therefore stand or fall together. 37 C.F.R.
§ 41.37(c)(1)(vii).
Issue
The Examiner’s position is that Doty discloses a bandanna that meets
all the limitations of claim 1 and that, alone or in combination with Flannery,
would have made obvious the additional limitations of claims 3 and 6.
Appellant contends that neither Doty nor Flannery discloses a
bandanna and therefore the references do not anticipate or make obvious the
claimed bandanna.
The issue to be decided is: Did the Examiner err in finding that Doty
discloses a product that meets the limitations of claim 1 and a process that
meets the limitations of claim 10?
Findings of Fact
1. The Specification states that “bandannas normally consist of a
generally square piece of fabric, for example, cotton, silk, rayon, or other
fabric folded in half forming a triangle” that can be tied around the head.
(Spec. ¶0002.)
2. The Specification states that
[t]he principles of the invention are also applicable to other
types of headwear, such as a generally square or rectangular
piece of material folded, for example, into a square or
rectangular shape, which, in turn, is tied on the head of the
wearer. . . . As used herein, such headwear is also considered to
be a bandanna.

(Spec. ¶0018.)
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Application 10/870,825

3. The Specification does not define the phrase “properly oriented.”
4. Doty discloses a headband with a message printed on it (Doty, col.
1, ll. 29-36).
5. The headband is made from a piece of “flexible, foldable cloth,
preferably such as used for handkerchiefs or bandannas. It can be used for
general purposes when not used as a headband.” (id. at col. 1, l. 67 to col. 2,
l. 2.)
6. Doty’s headband optionally includes one or a pair of tassels (id. at
col. 1, ll. 40-43).
7. Doty’s Figure 1 is reproduced below:

The figure shows “a headband . . . in its unfolded, flat condition” (id.
at col. 1, ll. 66-67).
8. The message strip on Doty’s headband is visible when the
headband is worn (id. at col. 2, ll. 17-18).
Principles of Law
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
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Application 10/870,825

the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
“[W]here a patentee defines a structurally complete invention in the
claim body and uses the preamble only to state a purpose or intended use for
the invention, the preamble is not a claim limitation.” Rowe v. Dror, 112
F.3d 473, 478 (Fed. Cir. 1997).
Analysis
Claim 1 is directed to a “generally square piece of material having
one or more graphics located thereupon” in such a way that the “graphics are
properly oriented” when the piece of material is worn as a bandanna (see
claim 1). The recitation that the claimed product is a “bandanna” represents
its intended use; the claim language does not limit the claimed product to
one having the configuration of a bandanna (e.g., folded into a triangle and
having two of its corners tied together).
Doty discloses a generally square piece of material with a graphic on
it. The material reasonably appears to be capable of being folded and tied
into a bandanna. Doty discloses that the graphic on the material is located in
such a way that it is visible when the piece of material is worn as a
headband. Based on its location, the graphic would also be visible (i.e.,
“properly oriented”) if Doty’s product was worn as a bandanna. The
Examiner’s finding that Doty’s product meets all the limitations of claim 1 is
supported by the evidence.
Doty also discloses all the limitations of claim 10. The only
manipulative steps of claim 10 are “providing a generally square piece of
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Application 10/870,825

material” and “locating one or more graphics” on it such that they are
“properly oriented” when the piece of material is worn as a bandanna (claim
10). As with claim 1, the references in claim 10 to a “bandanna” are merely
the intended use of the product produced by the claimed method.
Appellant also argues that the Examiner erred in concluding that
claims 3 and 12 would have been obvious based on Doty, and that claims 6,
7, and 15 would have been obvious based on Doty and Flannery (Appeal Br.
4-6).
The only error asserted by Appellant, however, is based on his
assertion that Doty does not disclose a bandanna (id.). For the reasons
discussed above, we conclude that the intended use of the claimed product as
a bandanna does not distinguish the claimed product or method from that
disclosed by Doty. Appellant has not asserted that Doty, alone or combined
with Flannery, would not have made obvious any of the actual limitations of
claims 3, 6, 7, 12, and 15.
CONCLUSIONS OF LAW
The Examiner correctly found that Doty discloses a product meeting
all the limitations of claims 1 and a process that meets the limitations of
claim 10.
SUMMARY
We affirm the rejection of claims 1, 2, 8-11, 13, 14, 16, and 17 under
35 U.S.C. § 102(b) as anticipated by Doty, the rejection of claims 3 and 12
under 35 U.S.C. § 103(a) as obvious in view of Doty, and the rejection of
claims 6, 7, and 15 under 35 U.S.C. § 103(a) as obvious in view of Doty and
Flannery.
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Application 10/870,825

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc

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