Ex Parte Lando et al

Patent Trial and Appeal Board

May 30, 2018

14866985 (P.T.A.B. May. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/866,985 09/27/2015
85444 7590 05/30/2018
Bay Area Technolgy Law Group PC
2171 E. Francisco Blvd., Suite L
San Rafael, CA 94901
FIRST NAMED INVENTOR
Ron Lando
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.
811.133 7208
EXAMINER
COLLINS, DARRYL J
ART UNIT PAPER NUMBER
2872
MAIL DATE DELIVERY MODE
05/30/2018 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 RON LANDO and PIETRO MESSINA
Appeal2017-009536
Application 14/866,985
Technology Center 2800
Before DONNA M. PRAISS, MONTE T. SQUIRE, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-16. We have jurisdiction. 35 U.S.C. § 6(b).
We affirm-in-part and enter new grounds of rejection pursuant to our
authority under 3 7 C.F .R. § 41. 50(b ). Because our affirmance relies upon
reasoning that differs from the Examiner's decision, we designate the
affirmance also as new grounds.
1 We cite to the Specification ("Spec.") filed September 27, 2015; Final
Office Action ("Final Act.") dated March 24, 2017; Appellants' Appeal
Brief ("App. Br.") dated April 4, 2017; Examiner's Answer ("Ans.") dated
June 15, 2017; and Appellants' Reply Brief ("Reply Br.") dated June 25,
2017.
Appeal2017-009536
Application 14/866,985
BACKGROUND
The subject matter on appeal relates to "eyewear having a snap-
together bridge feature and a flexible strap." Spec. 1. Claim 1 is illustrative:
1. Eyewear comprising a pair of lenses and frame halves, each
frame half supporting one of said lenses and each frame half
comprising a releasable connector for connecting said frame
halves together at the bridge of the user's nose, temple pieces
having first and second ends, each temple piece being rigid and
pivotally connected to a frame half at its first end and to a
flexible strap at its second end said flexible strap comprising a
material flexible enough to bend or fold without deforming or
breaking when stored, each of said temple pieces being of a
length to pass over and behind the ear of the user such that said
flexible strap is U-shaped and drapes over and is in contact with
a user's neck when said eyewear is being worn.
App. Br. 12 (Claims Appendix).
REJECTIONS
I. Claims 1, 3, 9, and 13 stand rejected under 35 U.S.C. § I02(a)(l) as
anticipated by Lando. 2
II. Claims 2, 4, 10, and 14 stand rejected under 35 U.S.C. § 103 as
unpatentable over Lando and Wingate. 3
III. Claims 5, 7, 11, and 15 stand rejected under 35 U.S.C. § 103 as
unpatentable over Lando and Skuro. 4
IV. Claims 6, 8, 12, and 16 stand rejected under 35 U.S.C. § 103 as
unpatentable over Lando, Wingate, and Skuro.
2 US 6,253,388 Bl, issued July 3, 2001 ("Lando").
3 US 1,936,319, issued November 21, 1933 ("Wingate").
4 US 7,766,477 B2, issued August 3, 2010 ("Skuro").
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Application 14/866,985
OPINION
Rejection I
Claim 1
The Examiner finds that Lando describes eyewear that includes each
feature recited in claim 1, including rigid temple pieces that are of a length
to pass over and behind the ears of a user, and a flexible strap. Final Act. 4--
5. Regarding the temple pieces, the Examiner points to Lando' s Figure 1
and column 2, lines 46-47. Id. at 5. We reproduce Lando's Figure 1 below:
Figure 1 is a front perspective view depicting eyewear having temple pieces
12 that extend respectively from lens frames 14 to a flexible strap 13. 5
Lando 2:34--40, 50-53. Although Lando states that the temple pieces
"preferably include hooked portions 16 for hooking around the ears" (id.
2:46-47), the noted hooked portions are solely depicted as being formed by
the strap, and not by the rigid temple pieces (see id. Figs. 2--4). Lando's
5 Appellants contend that Lando' s strap 13 is "generally rigid" and,
therefore, not flexible as claimed. App. Br. 5. However, Lando expressly
characterizes strap 13 as "flexible enough to be bendable." Lando 2:50-53.
Appellants do not point to evidence that would support an interpretation of
the term, "flexible," in claim 1 that would exclude the flexibility described
in Lando.
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Application 14/866,985
rigid temple pieces are not shown to extend to a user's ears when in use. See
id. Fig. 4.
Regarding the recited flexible strap, the Examiner further points to
Lando' s Figure 6, which we reproduce below:
Figure 6 is a side perspective view of a second embodiment which
depicts eyewear having temple pieces 19 that extend respectively from lens
frames 14 to a "completely flexible strap" 17. Id. 3:12-18. Here too,
Lando's temple pieces are not shown to extend around a user's ears when in
use.
The Examiner has the initial burden of establishing a prima facie case
of anticipation by pointing out where each of the claim limitations appears in
a single reference. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In
re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). Because the Examiner does
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Application 14/866,985
not identify in either of Lando' s embodiments the existence of rigid temple
pieces that extend around a user's ears, we do not sustain the anticipation
rejection.
However, we find that Lando' s teaching that temple pieces
"preferably include hooked portions 16 for hooking around the ears" (Lando
2 :46-4 7) provides a reason for one of ordinary skill in the art to lengthen the
temple pieces 19 shown in Lando' s Figure 6 so that they would extend
beyond a user's ears when in use. Conventional eyeglasses frequently
include extended temple pieces that rest on a user's ears to provide support
for the glasses during use. Because there is no dispute that the eyewear
depicted in Lando' s Figure 6 includes all of the remaining features recited in
claim 1, we conclude that claim 1 would have resulted from an obvious
extension of temple pieces 19 to reach beyond a user's ears.
For the foregoing reasons, we do not sustain the Examiner's
anticipation rejection of claim 1, and we enter a new ground of rejection in
which claim 1 is determined to be unpatentable under 35 U.S.C. § 103 over
Lando.
Claims 3, 9, and 13
Each of claims 3, 9, and 13 depends from claim 1. Appellants do not
present any argument specifically directed to the additional features recited
in these dependent claims. Claim 3 further requires that the extended temple
pieces "hook over the ears of a user," which, as noted, is suggested by
Lando. Lando 2:46-47 ("for hooking around the ears"). Regarding claims 9
and 13, Lando expressly teaches magnets for forming a releasable nosepiece
connection (id. at 2:56-57) and fabric or rubber for forming the flexible
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strap 17 depicted in Figure 6 (id. at 3:14). Accordingly, we determine
claims 3, 9, and 13 are also unpatentable under 35 U.S.C. § 103 over Lando.
Rejection II
With regard to Rejection II, Appellants argue the rejected claims as a
group. See App. Br. 7. We select independent claim 2 as representative and
decide the propriety of Rejection II based on the representative claim alone.
Claim 2 generally recites all of the features recited in claim 1, and
further requires that each temple piece includes pivotally connected first and
second segments. The Examiner's findings concerning Lando are as
discussed above. See Final Act. 6-7. The Examiner further finds that
Wingate teaches forming eyeglass temple pieces as pivotally connected
segments. Id. at 7 (citing Wingate Fig. 2). In light of Wingate's teaching,
the Examiner finds that one of ordinary skill would have had a reason to
provide Lando' s eyeglasses with pivotally segmented temple pieces to
permit foldability and storage. Id.
Appellants argue that Lando' s "generally rigid" strap would preclude
any foldability otherwise attained by Wingate' s pivotally segmented temple
pieces. App. Br. 7. Appellants' argument does not address the alternative
embodiment depicted in Lando' s Figure 6, which provides a strap that
Lando expressly characterizes as "completely flexible." Lando 3: 13.
Because we find, for the reasons discussed in connection with claim 1, that it
would have been obvious to one of ordinary skill to extend the temple pieces
depicted in Lando' s Figure 6, Appellants' argument based on a strap that
materially differs from that which is depicted in Figure 6 is insufficient to
identify reversible error in the Examiner's finding that one of ordinary skill
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would have had a reason to enhance foldability of Lando' s eyeglasses by
providing pivotally segmented temple pieces.
Accordingly, we sustain Rejection II. Because our reasoning includes
the same departure from the Examiner's reading of Lando as is discussed in
connection with claim 1, we designate this part of our decision a new ground
of rejection.
Rejection III
Appellants argue claims 5 and 7 under separate headings, and do not
separately argue either claim 11 or 15. Claim 5 depends from claim 1, and
further requires telescoping strap segments proximate the temple pieces to
permit the strap to be lengthened and shortened. Claim 7 similarly requires
telescoping strap segments.
The Examiner finds that Skuro discloses an adjustable strap for
eyeglasses, wherein the strap includes telescoping portions that are
attachable to temple pieces. Final Act. 8. The Examiner finds that Skuro,
therefore, provides one of ordinary skill with a reason to provide Lando' s
eyeglass strap with adjustable, telescoping portions. Id.
Concerning both claims 5 and 7, Appellants argue that Skuro teaches
a restraining strap rather than a flexible strap. App. Br. 7-9; Reply Br. 2-3.
Appellants further argue that Skuro 's use of inner and outer strap layers adds
to production cost relative to that of the claimed invention. App. Br. 8.
These arguments are not persuasive. As noted, Lando discloses a flexible
strap. Lando further teaches that the strap preferably is adjustable. Lando
2:45--46 ("Temples 12 are preferably telescopic for fitting different
wearers."); id. at 3: 14 ( characterizing the flexible strap as "adjustable in
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length"). Appellants do not present persuasive evidence that Skuro's
telescoping structure would not have reasonably been expected to provide
the desired strap adjustability in Lando. Nor do Appellants point to any
aspect of the claims that precludes Skuro' s two-layer strap configuration.
Accordingly, we sustain Rejection III. We designate this part of our
decision a new ground of rejection for the same reasons provided in
connection with Rejection II.
Rejection IV
Appellants present the same arguments with regard to Rejection IV as
are presented in connection with Rejections II and III. See App. Br. 9, 11-
13. We sustain Rejection IV as a new ground of rejection for the reasons set
forth above.
DECISION
The Examiner's decision rejecting claims 1, 3, 9, and 13 under
35 U.S.C. § 102(a)(l) is reversed.
The Examiner's decision rejecting claims 2, 4--8, 10-12, and 14--16
under 35 U.S.C. § 103 is affirmed. We designate our affirmance as a new
ground of rejection pursuant to 37 C.F.R. § 4I.50(b).
A new ground of rejection is entered, rejecting claims 1, 3, 9, and 13
under 35 U.S.C. § 103.
TIME PERIOD FOR RESPONSE
This decision contains new grounds of rejection pursuant to 37 C.F.R.
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Application 14/866,985
§ 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 4I.50(b) also provides that Appellant, 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 ....
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
AFFIRMED-IN-PART; 37 C.F.R. § 4I.50(b)
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