Ex Parte Holley

Patent Trial and Appeal Board

Apr 20, 2016

12589142 (P.T.A.B. Apr. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/589, 142 10/19/2009
76773 7590 04/21/2016
JT HOLLIN, ATTORNEY AT LAW, PC
110 HABERSHAM DRIVE
SUITE 144
FAYETTEVILLE, GA 30214
FIRST NAMED INVENTOR
Jimmy Don Holley
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
HOLLEY_0809 7965
EXAMINER
PAUL, DISLER
ART UNIT PAPER NUMBER
2655
MAILDATE DELIVERY MODE
04/21/2016 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 JIMMY DON HOLLEY
Appeal2014-005581
Application 12/589,142
Technology Center 2600
Before ROBERT E. NAPPI, NORMAN H. BEAMER, and
JOHN D. HAMANN, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the Final
Rejection of claims 1 through 6.
We affirm.
INVENTION
Appellant's invention is directed to headgear with audio recording
and playback capability that can capture the sound of the voice of the wearer
or other sounds in the vicinity of the headgear. Abstract.
Appeal2014-005581
Application 12/589,142
Claim 1 is illustrative of the invention and is reproduced below:
1. An item of apparel, being a hat or headgear, having audio recording,
audio track storage, and audio playback components, further
compnsmg;
a crown;
a brim grid having an upper and a lower surface, said brim grid
attached to said crown, wherein said brim grid internally houses
a) a multi-purpose recording module b) microphone,
c) speaker, d) lithium button cell batteries, e) wire leads, f) push-
button recording switch, g) push-button playback switch, h) erase
button, i) recording microchip, j) pre-recorded material microchip;
an upper brim cover attached to the upper portion of said brim
grid; and
a lower brim cover removably attached to lower portion of said
brim grid, wherein said device may be programmed and operated to
capture the sound of the voice of the wearer of the device or other
sounds proximate the wearer of the device, record and store said
sound or sounds, and audibly transmit said recorded sound or sounds
so as to be audible to the wearer or other persons nearby.
REJECTION AT ISSUE
The Examiner has rejected claims 1through6 under 35 U.S.C. § 103
over Peng (US 5,510,961; Apr. 23, 1996), Lopez (US 2002/0191801 Al;
Dec. 19, 2002), and Seade (US 2008/0304682 Al; Dec. 11, 2008). Final
Office Action 6-18. 1
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
contentions that the Examiner has erred. Further, we have reviewed the
1 Throughout this opinion we refer to the Appeal Brief filed November 30,
2012; Final Office Action mailed May 4, 2012; and the Examiner's Answer
mailed on February 28, 2013.
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Application 12/589,142
Examiner's response to Appellant's arguments. We disagree with
Appellant's arguments and we incorporate herein and adopt as our own: the
findings and reasons set forth by the Examiner in the Final Office Action
and the reasons and rebuttals set forth in the Examiner's Answer (Ans. 2-7).
We incorporate such findings, reasons, and rebuttals herein by reference
unless otherwise noted. We, however, highlight and address specific
findings and arguments below for emphasis.
Initially, we note Appellant's arguments generally are not directed to
a single claim but rather critique the Examiner's rejection. Thus, we select
claim 1 to focus and highlight Appellant's arguments so that we can address
specific findings and arguments more clearly.
Appellant's arguments on pages 11 through 12 of the Answer address
the Examiner's findings that Lopez teaches the pushbutton recording switch,
pushbutton playback switch, and erase switch. Specifically, Appellant's
provide an analysis that the operations of the buttons of Lopez creates a
more complicated operation as compared to the operations of Appellant's
invention. See Answer 11-12. We are not persuaded by these arguments of
error in the Examiner's rejection. While Appellant's Specification may
describe a simpler operation than taught by Lopez, as identified by the
Examiner, on pages 2 and 3 of the Answer, these operations are not claimed
and as such Appellant's argument is not commensurate with the scope of the
claim.
Appellant argues the Examiner misconstrued the law as the size,
dimension, and weight are important considerations, not design preferences
as the device must fit with the brim of headgear. Answer 12-13. We are
similarly not persuaded of error by this argument. The Examiner has
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Application 12/589,142
presented evidence, Ping and Seade, which shows it was known to
incorporate audio electronic devices within the brim of a hat. Thus, the
Examiner has provided ample evidence to show that it was known and the
skilled artisan would incorporate audio electronics into the brim of a hat.
Further, Appellant has not shown that making the electronic circuits of
Lopez to fit within the brim of a hat is "uniquely challenging or difficult for
one of ordinary skill in the art" or "represented an unobvious step over the
prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citing KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007)).
Appellant argues Peng's sound pickup is not a recording module with
a recording microchip, as there is no possibility of long term retention of
recorded sounds or storage of audio tracks. App. Br 12-14. The Examiner
provided a comprehensive response to these arguments. Answer 4--5 (citing
Peng Fig. 3 and col. 2, 11. 1-25). We concur with the Examiner's findings.
Additionally, we note that claim 1 does not recite a limitation directed to
long term retention of sounds and as such Appellant's argument is not
commensurate with the scope of claim 1.
Appellant argues that Seade does not teach a form fitting brim grid.
Br. 15. In response, the Examiner identifies that Peng, not Seade, was cited
as teaching the claim limitation directed to the brim grid. Ans. 5. Thus,
Appellant's argument is not persuasive of error in the Examiner's rejection
as it does not address the Examiner's findings directed to this limitation.
Further, we note the claim merely recites the brim grid as having two
surfaces (with covers), attached to the crown of the hat and housing
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Application 12/589,142
components, as such the arguments directed to "form fitting" are not
commensurate with the scope of the claim. 2
Finally, Appellant argues none of the references disclose a
multipurpose recording module, microchip, or a pre-recoded microchip. Br.
15. Specifically, Appellant asserts:
there can be no suggestion or motivation derived from the Seade
device, for any combination of the Seade device with any of the
other references set forth. This is criticality true, since the
Applicant's device relies strictly, in its entirety, on pre-recorded
music material or device-actuated recordations of user-selected
audio or music sounds, for its means and nodes of sound
playback.
Br. 15. This argument has not persuaded us of error in the Examiner's
rejection. As discussed above, we are not persuaded by Appellant's
argument that the combination of the references does not teach the recording
module or microchip. Further, the Examiner has taken Official Notice,
which has not been challenged, that use of a microchip with pre-recorded
material is well known in the art. Final Office Action 6, 9. 3 Further, the
Examiner finds that Seade was relied upon to teach the brim covers the brim
grid and electrical wiring between components in a hat. Final Office Action
10 and Answer 6. Based upon these teachings and the teachings of Peng and
2 While the Examiner did not rely upon Seade to teach the claimed brim
grid, it appears from Seade Fig 8 and accompanying discussion item 17 a
meet Appellant's claimed brim grid as it has two covers, is attached to the
crown and houses an audio electrical component, speaker 14.
3 This noticed finding appears to be supported by Lopez's discussion of pre-
recorded questions, paragraph 19, and Seade' s discussion of reproducing
music from MP3 players.
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Application 12/589,142
Lopez, the Examiner finds the combination is nothing more than the
combination of known elements to produce a predictable result. Final Office
Action 14. "The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
As Appellant's arguments have not persuaded us of error in the
Examiner's rejection of claim 1 and these arguments also relate to the other
claims on appeal, we sustain the Examiner's rejection of claims 1 through 6
under 35 U.S.C. § 103.
DECISION
We affirm the Examiner's rejection of claims 1 through 6 under 35
U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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