Ex Parte Lane

Board of Patent Appeals and Interferences

Feb 28, 2011

10861939 (B.P.A.I. Feb. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TERESA LANE
____________________

Appeal 2009-012266
Application 10/861,939
Technology Center 3700
____________________

Before: WILLIAM F. PATE III, JENNIFER D. BAHR, and
FRED A. SILVERBERG, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-012266
Application 10/861,939
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
2, 29, 30 and 33.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to a hair accessory. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A hair accessory, comprising:
a transparent ribbon-style member comprising at least a
first section and a second section; and
a first plurality of hair strand bundles attached to said
first section;
wherein said second section is void of any hair strand
bundles.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Simonson
Muller
Vidal
US D 541,125
US D 59,261
US D 445,217 S
Jun. 18, 1895
Oct. 4, 1921
Jul. 17, 2001
Gold US 2004/0237987 A1 Dec. 2, 2004

2 Claims 4-8, 10, 28, 31, 32, and 34-38 were also rejected in the Final Office
Action mailed December 26, 2006. However, Appellant did not appeal the
rejection of these claims in the Brief. Br. 2. Thus the Examiner noted, and
we agree, the rejections of these claims is not under review on appeal. See
Ans. 2-3.

Appeal 2009-012266
Application 10/861,939
3
REJECTIONS
Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Muller and Gold. Ans. 3.
Claims 29, 30 and 33 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Simonson, Gold and Vidal. Ans. 4.

OPINION
We have carefully reviewed the rejections on appeal in light of the
arguments of the Appellant and the Examiner. As a result of this review, we
have reached the conclusion that the applied prior art establishes the prima
facie obviousness of the claims on appeal. Therefore the rejections on appeal
are affirmed. Our reasons follow.
Turning first to the rejection of claims 1 and 2, we adopt as our
findings of fact the Examiner’s findings from pages 3 and 4 of the Answer.
We additionally agree with the Examiner that it would have been obvious to
use a transparent ribbon-like member in the hair accessory of Muller. Gold
clearly teaches that the base or hair attaching member may be made of a
transparent material to be invisible or inconspicuous, since the underlying
skin shows through the transparent base. Combining this feature into the hair
accessory of Muller is combining the prior art elements using a known
method to yield a predictable result of invisibility or inconspicuousness.
Appellant argues that there is no need to disguise the ribbon-like
member and have it blend into the user’s skin as set forth in Gold. We
disagree. The Gold publication clearly implies that some users of artificial
hair products would rather disguise that they are using such a product and
give the appearance that their hair is entirely natural. Therefore the prior art
recognizes a clear need for invisible or inconspicuous supporting structures.
Appeal 2009-012266
Application 10/861,939
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Turning to the rejection of claim 2, we are in agreement with the
Examiner that an elastic style member would have been a known technique
to improve the hair accessory of Muller. We agree with the Examiner that
elastic is commonly used by one of ordinary skill in the art for the purpose
of adjustability. The Examiner, having established that this adjustability
knowledge was in the art, could properly rely on a conclusion of
obviousness based on common knowledge and common sense of a person of
ordinary skill without any specific hint or suggestion in a particular
reference. See In re Bozeck, 416 F.2d 1385, 1390 (CCPA 1969). In our view,
adjustability is one of the technology independent attributes which are
included in the implicit motivation to combine which may be gleaned from
the prior art as a whole. See DyStar Textilfarben GmbH & Co. v. C.H.
Patrick Co., 464 F.3d 1356, 1368-69 (Fed. Cir. 2006).
We further note that the reference to Simonson does disclose an
elastic band. While the Examiner has not applied Simonson against claims 1
and 2, he has applied the reference against the other claims on appeal that
require an elastic ribbon member.
Turning to the rejection of claims 29, 30, and 33 we adopt the
Examiner’s findings of fact on page 4 of the Answer as our own. We also
adopt the Examiner’s conclusion that the subject matter of claims 29, 30,
and 33 would have been prima facie obvious from Simonson in view of
Gold and Vidal. Appellant argues that there would be no reason to modify
the elastic circular member of Simonson to be transparent as Gold teaches.
Discounting for a minute that Vidal has been cited to show two regions,
wherein only one region is operatively coupled to hair strands, in our view,
making the elastic member of Simonson of a transparent material would
have utility in that the hair could be rearranged in a myriad of configurations
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Application 10/861,939
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such as parts and the like without the band member being conspicuous or
obvious. Therefore the Appellant’s argument that it would not have been
obvious to make the Simonson elastic member as a transparent band is not
credited. Moreover, we note that Simon, when modified by Vidal, would
have hair on only the second section with no hair covering the band on the
first section. This is a clear teaching from the art that the elastic circular
member is ideally crafted of a transparent material so that the band is not
visible to onlookers.
For these reasons the rejection of claims 29, 30 and 33 is affirmed.

DECISION
The rejection of claims 1 and 2 under 35 U.S.C. § 103 is affirmed.
The rejection of claims 29, 30 and 33 under 35 U.S.C. § 103 is
affirmed.

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

nlk

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