Ex Parte Kaufman

Patent Trial and Appeal Board

Aug 9, 2017

13234624 (P.T.A.B. Aug. 9, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/234,624 09/16/2011 Jacob Kaufman KAU-10302/29 3548
131270 7590 08/10/2017
BELZER PC
ATTN: John G. Posa
2905 Bull Street
Savannah, GA 31405
EXAMINER
KINSAUL, ANNA KATHRYN
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
08/10/2017 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 JACOB KAUFMAN
____________________

Appeal 2016-004860
Application 13/234,624
Technology Center 3700
____________________

Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1–8. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claims are directed to a sweatband with a convertible visor. Spec.
¶ 2. Claims 1 and 5 are independent. App. Br. 9–10, Claims App. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A head-worn article, comprising:
a band portion having an upper edge and a
lower edge adapted to encircle the head of a
wearer above the eyes of the wearer, thereby
assuming a generally round or oval shape when
worn;
the band portion having inner and outer
layers of a soft, absorbent material, wherein the
inner layer of the band portion includes an inner
surface that contacts the wearer, and the outer
layer of the band portion includes an outer
surface facing away from the wearer;
a visor portion having inner and outer layers
composed of the same soft, absorbent material
as the inner and outer layers of the band portion;
the visor portion being attached to the band
portion along a line spanning at least one-
quarter of the outer surface of the band portion,
but not entirely around the band, thereby
creating an arc-shaped line of attachment; and
whereby the visor portion assumes two
stable states without any rotation of the band
portion; namely, a flipped-down state for use as
a visor over the eyes of the wearer, and a flipped
–up state above the eyes of the wearer with the
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visor portion disposed against the outer surface
of the band portion.
REFERENCES
Miller
Zauner
Nicastro
Hanson
Des. 234,236
US 4,293,958
US 4,393,519
US 4,776,042
Feb. 4, 1975
Oct. 13, 1981
July 19, 1983
Oct. 11, 1988
Kim US 2005/0273906 A1 Dec. 15, 2005

REJECTIONS1
Claims 5–8 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the written-description requirement. Non-Final Act. 6.2
Claims 5–8 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the enablement requirement. Id. 6–7.
Claims 1 and 3 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kim and Zauner. Id. at 7.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Kim, Zauner, and Hanson. Id. at 9.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Kim, Zauner, and Nicastro. Id. at 10
Claims 5, 7, and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Miller and Zauner. Id. at 10–11.

1 The Examiner objected to the Specification and drawings because of “new
matter” issues. See Non-Final Act. 4–5. In the Appeal Brief, Appellant states
“Appellant hereby withdraws its attempt to amend the drawings. Since the
drawing filed on February 24, 2015 was not entered, Appellant sees no need
for corrected drawing sheets in compliance with 3 7 CFR § 1.121 (d)” and
“Appellant hereby withdraws its attempt to amend the specification.” App.
Br. 7 (filed Oct. 13, 2015).
2 Dated July 27, 2015.
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Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Miller, Zauner, and Hanson. Id. at 13.
ANALYSIS
Claims 5–8—Failure to Satisfy Written-Description and Enablement
Requirements
Claim 5 is drawn to a head-worn article “consisting of” a “band
portion” with “inner and outer layers of a soft absorbent material,” and a
“visor portion” with inner and outer layers composed of the same material,
the visor portion capable of assuming a stable “flipped down” state over a
wearer’s eyes, or a stable “flipped up” state against the outer surface of the
band portion. App. Br. 10, Claims App. The transition phrase “consisting
of” is understood to exclude any elements not specified in the claim. See
PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed.Cir.1998).
According to the Examiner, “[paragraph 12] of the specification does not
include support for a band and visor without additional materials.” Non-
Final Act. 6. The Examiner explains that “it is not understood how the visor
would still function properly in a flipped up position if no stiffening
materials are provided as currently claimed.” Id. For this reason, the
Examiner considers the Specification as not adequately describing claim 5 or
providing adequate enabling disclosure for claim 5. Id. at 6–7. Claims 6–8
depend from claim 5. App. Br. 10, Claims App.
Appellant responds that paragraph 12 of the Specification is not the
only part of the Specification that describes or provides enabling disclosure
for claim 5. App. Br. 2. For example, Appellant refers to the drawings, as
well as the disclosure “that the band portion assumes a generally round or
oval shape when worn, and that the visor portion is attached to the band
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portion along a line spanning at least one-quarter of the outer surface of the
band portion, [] not entirely around the band, thereby creating an arc-shaped
line of attachment.” App. Br. 3. Appellant concludes from these disclosures
that “even with soft, absorbent material (which may have some inherent
elasticity), two stable up/down states are achieved.” Id. The Examiner does
not respond to this contention, much less show it to be incorrect. See Ans. 2.
Accordingly, we do not sustain the Examiner’s rejections of claims 5–8 as
lacking adequate written description or enabling support under
35 U.S.C. § 112(a).
Claims 1 and 3—Obviousness over Kim and Zauner
Appellant does not offer arguments in favor of dependent claim 3
separate from those presented for independent claim 1. See App. Br. 3–5.
We select claim 1 as the representative claim, and claim 3 stands or falls
with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Kim discloses all the limitations of
independent claim 1 except for (1) the visor spans at least a quarter of the
outer surface of the band; (2) the band has inner and outer layers composed
of soft, absorbent material, the inner layer including an inner surface that
contacts the wearer, the outer layer including an outer surface facing away
from the wearer; and (3) the visor layers being of the same soft absorbent
material as that of the band. Non-Final Act. 7–8 (citing Kim ¶¶ 7, 19, 22,
Figs. 2, 5). For these limitations, the Examiner relies on Zauner. Id. at 8
(citing Zauner, 3:3–5, 4:11–15, 53–56, Figs. 1–4). According to the
Examiner, a person of ordinary skill would have
modified the invention of Kim and attached the visor to at least
a quarter of the outer surface of the band and made the band of
inner and outer layers and the band and visor inner and outer
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layers both being a same soft absorbent material as taught by
Zauner; because Zauner teaches that it is known in the art to
provide this configuration and it is beneficial for absorbing
perspiration of a wearer.

Non-Final 8–9 (citing Zauner, 4:56–60).
In response, Appellant argues that “Kim is unrelated to absorbent
materials or perspiration absorption.” App. Br. 3. Appellant also argues that
Kim’s headwear incorporates “hard” materials in the visor, and that “there is
no teaching or suggestion that the rim [of Kim’s headwear] is multi-
layered.” Id. at 3–4.
First, the Examiner relies on Zauner, not Kim, to teach a head-worn
article made with multiple layers of a soft absorbent material. Non-Final
Act. 8 (citing Zauner, 3:3–5, 4:11–15, 53–56, Figs. 1–4). Appellant does not
appear to dispute the Examiner’s contention that Zauner teaches these
limitations. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(holding that nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of references). Second, it is not relevant that Kim incorporates “hard”
materials in its visor. Unlike claim 5, claim 1 uses the open “comprised of”
transition phrase, which permits the inclusion of elements not specified in
the claim. See Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261,
1271, (Fed. Cir. 1986).
In the Reply Brief, Appellant argues for the first time that “Kim’s
semi-rigid plastic visor does not flip up to be against the band as is the case
with Appellant’s structure.” Reply Br. 3. Normally, we do not consider new
arguments presented in a Reply Brief that are not accompanied by a showing
of good cause why they could not have been presented in the Appeal Brief.
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37 C.F.R. § 41.41(b)(2); Ex Parte Borden, 98 USPQ2d 1473, 1476–77
(BPAI 2010) (informative). In any event, we note that the Examiner relies
on Kim ¶ 22 as teaching this limitation. According to this teaching, visor 10
may be “raised and set so that it touches the front rim [of] portion 9 of [the]
sun visor.” Kim ¶ 22. The limitation requiring the visor portion to be
“disposed against the outer surface of the band portion” reasonably
encompasses the visor “touch[ing]” the rim, as Kim teaches, particularly
when the limitation is accorded its broadest reasonable interpretation.
In summary, and based on the record presented, Appellant has not
apprised us of Examiner error in rejecting independent claim 1 as
unpatentable over Kim and Zauner. Accordingly, we sustain the Examiner’s
rejection of claim 1 as unpatentable over Kim and Zauner. We further
sustain the Examiner’s rejection of claim 3, which falls with claim 1.
Claim 2— Obviousness over Kim, Zauner, and Hanson.
Claim 2 depends from claim 1 and additionally recites “wherein the
band portion and the visor portions are both made of terrycloth material.”
App. Br. 9, Claims App. The Examiner relies on Hanson as teaching that
terrycloth is an absorbent material used in making head-worn articles to
absorb sweat. Non-Final Act. 9 (citing Hanson, 1:14–16, 2:8–10). The
Examiner finds that it would have been obvious to make the head-worn
article taught be Kim/Zauner from terrycloth as Hanson teaches because it
was “known in the art to use terrycloth as an absorbent material in head-
worn articles.” Id. Appellant responds that it would not have been obvious
to make the articles of Kim or Zauner out of terrycloth because “Kim is
unrelated to absorbent materials or perspiration absorption,” Kim
“provide[s] a visor with a composite soft and hard construction,” and “[t]he
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article of Zauner is also a composite structure, also teaching away from a
terrycloth band and visor.” App. Br. 5–6.
As an initial matter, the Examiner relies on the combined teachings of
Kim, Zauner, and Hanson. Appellant’s arguments regarding Kim are the
same arguments raised above in response to the Examiner’s rejection of
claim 1. For the reasons discussed above, we find them unpersuasive.
Regarding Zauner, Appellant does not direct us to any discussion in Zauner
that “teaches away” from a terrycloth band and visor. See In re Fulton, 391
F.3d 1195, 1201 (Fed Cir. 2004). Moreover, in response to Appellant’s
contention, the Examiner correctly points out that “Zauner explicitly
discloses a similar visor having absorbent fabric.3 Zauner does not explicitly
disclose that the absorbent fabric used is the specific absorbent fabric known
as ‘terry cloth’[;] however[,] Hanson explicitly discloses that terry cloth is
an absorbent fabric and is known to be used in head worn articles.”4 Ans. 4.
The Examiner concludes that “it would be obvious to cover the visor of Kim
with fabric disclosed as having beneficial properties in the prior art.” Id.
The Examiner’s findings are sound and supported by a preponderance of the
evidence, and the Examiner’s conclusions therefrom are based on rational
underpinnings. Appellant does not provide persuasive evidence or argument
apprising us of Examiner error.

3 Zauner discloses that the band “may be formed from a cloth material which
is moisture absorbent” and the visor “may also be formed of a flexible, cloth
material which itself may be substantially moisture absorbent.” See Zauner,
2:33–36 and 3:3–5, respectively; see also id. at 4:53–60; Non-Final Act. 8.
4 Hanson discloses that the headband “is comprised of an elongated strip of
porous cloth material 2. We have found that terry cloth is a suitable
[absorbent] material for the band.” See Hanson, 2:4–9 (emphasis omitted) see
also Non-Final Act. 9.
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Accordingly, we sustain the Examiner’s rejection of claim 2 as
unpatentable over Kim, Zauner, and Hanson.
Claim 4— Obviousness over Kim, Zauner, and Nicastro
Claim 4 depends from claim 1 and additionally recites “wherein: the
visor portion defines a forward edge in the flipped-down state when used as
a visor; and wherein the forward edge of the visor portion is at or below the
upper edge of the band portion in the flipped-up state.” App. Br. 9, Claims
App. The Examiner relies on Nicastro as teaching this additional limitation.
Non-Final Act. 10 (citing Nicastro, Figs. 6A, 6B, 7B). The Examiner
determines that it would have been obvious to modify Kim/Zauner in
accordance with Nicastro “because Nicastro teaches that this visor size is
known in the art” and “may provide the added benefits of comfort, style,
design, or fashion to a wearer.” Id. Appellant responds that “‘comfort,
style, design, and fashion’ do not provide an adequate justification to
combine references.” App. Br. 6. But Appellant does not provide legal
support for a blanket prohibition against considering these factors as a
reason to combine references. On the contrary, our reviewing court has
emphasized “an expansive and flexible approach” to determining
obviousness that is inconsistent with adopting such blanket rules. KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 415 (2007).
Accordingly, we sustain the Examiner’s rejection of claim 4 as
unpatentable over Kim, Zauner, and Nicastro.

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Claims 5, 7, and 8— Obviousness over Miller and Zauner;
Claim 6— Obviousness over Miller, Zauner, and Hanson
The Examiner finds that claims 5, 7, and 8 would have been obvious
over Miller and Zauner, and that claim 6 would have been obvious over
Miller, Zauner, and Hanson. Non-Final Act. 10–13. For claims 5, 7, and 8,
Appellant responds that “Zauner includes various structural elements that
supersede a rejection over Appellant’s consisting of claim formulation,” and
that “Zauner is also a composite structure including a support element 26
and biasing means 14 comprising a portion of elastic material 15.” App.
Br. 6. Appellant makes similar arguments in response to the rejection of
claim 6. Id. at 7 (“Zauner is a composite structure including a support
element 26 and biasing means 14 comprising a portion of elastic material 15.
Hanson includes sponges or pads 11, 12, Velcro closures, etc.”).
As an initial matter, the Examiner’s relies on the combined teachings
of Miller and Zauner or Miller, Zauner, and Hanson. The Examiner cited
Zauner merely for its teaching of a head-worn article having inner and outer
layers of matching soft, absorbent material, and a visor that may be placed in
a flipped-up state. Non-Final Act. 11. The Examiner cited Hanson merely
for its teaching that terrycloth is an absorbent material used in making head-
worn articles to absorb sweat. Id. at 13. Appellant does not explain why the
Examiner’s reliance on these teachings somehow requires the Examiner to
incorporate into Miller the additional structure that Appellant identifies.
That Zauner and Hanson may teach additional structure does not prevent the
Examiner from relying on each reference for limited purposes. “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference, but rather
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whether a skilled artisan would have been motivated to combine the
teachings of the prior art references to achieve the claimed invention.”
Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d
1373, 1381 (Fed. Cir. 2016) (internal citations and quotation marks omitted).
Appellant does not provide persuasive evidence or argument apprising us of
error in the Examiner’s proposed reasoning for the combined teachings of
Miller and Zauner or Miller, Zauner, and Hanson.
Accordingly, we sustain the Examiner’s obviousness rejections of
claims 5–8.

DECISION
We REVERSE the Examiner’s decision to reject claims 5–8 for lack
of written description.
We REVERSE the Examiner’s decision to reject claims 5–8 for lack
of enablement.
We AFFIRM the Examiner’s decision to reject claims 1 and 3 as
unpatentable over Kim and Zauner.
We AFFIRM the Examiner’s decision to reject claim 2 as
unpatentable over Kim, Zauner, and Hanson.
We AFFIRM the Examiner’s decision to reject claim 4 as
unpatentable over Kim, Zauner, and Nicastro.
We AFFIRM the Examiner’s decision to reject claims 5, 7, and 8 as
unpatentable over Miller and Zauner.
We AFFIRM the Examiner’s decision to reject claim 6 as
unpatentable over Miller, Zauner, and Hanson.
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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)(1)(iv).

AFFIRMED