Ex Parte Mahoney

Board of Patent Appeals and Interferences

Nov 30, 2011

11087055 (B.P.A.I. Nov. 30, 2011)

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.
11/087,055 03/23/2005 Jerome R. Mahoney IVC-118A 3093
7590 12/01/2011
Kenneth P. Glynn
24 Mine Street
Flemington, NJ 08822
EXAMINER
PATEL, TAJASH D
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
12/01/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JEROME R. MAHONEY
____________________

Appeal 2009-014717
Application 11/087,055
Technology Center 3700
____________________

Before STEVEN D.A. MCCARTHY, EDWARD A. BROWN, and
JAMES P. CALVE, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-014717
Application 11/087,055

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STATEMENT OF THE CASE
Jerome R. Mahoney (Appellant) appeals under 35 U.S.C. § 134(a) from a
rejection of claims 21-38. (App. Br. 2). Claims 1-20 have been cancelled. (Id.).
We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We affirm.

THE INVENTION
Independent claim 21, reproduced below, is representative of the appealed
claims:
21. A pedestrian air bag device, which comprises:
(a) a containment and deployment housing for at
least one air bag;
(b) attachment means connected to said housing
for attachment to a pedestrian wherein said attachment
means includes apparel selected from the group
consisting of a jacket, a vest, top outerwear, pants and
jumpsuit;
(c) said at least one air bag contained within said
housing and having at least one compressed gas chamber
for release of compressed gas into and deployment of
said at least one air bag; and
(d) at least one sensor and release mechanism
connected to said compressed gas chamber for opening
said at least one compressed gas chamber in response to
said at least one sensor sensing a predetermined change
in a physical characteristic.

THE REJECTIONS
1. Claims 21-27 and 29 are rejected under 35 U.S.C. § 102(b) as
anticipated by Keyes (US 5,500,952, issued Mar. 26, 1996).
2. Claims 28 and 30-38 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Keyes.
Appeal 2009-014717
Application 11/087,055

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ISSUES
The following issues have been raised in this appeal.
1. Did the Examiner err in finding that Keyes discloses "attachment
means . . . for attachment to a pedestrian, wherein said attachment means includes
apparel selected from the group consisting of a jacket, a vest, top outerwear, pants
and jumpsuit," as recited in claims 21 and 30?
2. Did the Examiner err in determining that it would have been obvious
to one of ordinary skill in the art in view of Keyes to incorporate "an on/off
mechanism" in Keyes' device to result in the device recited in claim 28?
3. Did the Examiner err in determining that it would have been obvious
to one of ordinary skill in the art in view of Keyes to incorporate "an alarm
mechanism" in Keyes' device to result in the device recited in claim 30?

ANALYSIS
Rejection of claims 21-27 and 29 as anticipated by Keyes
Claim 21 recites, inter alia, "attachment means . . . for attachment to a
pedestrian, wherein said attachment means includes apparel selected from the
group consisting of a jacket, a vest, top outerwear, pants and jumpsuit."
(Emphasis added). The Examiner found that Keyes discloses air bag outerwear
apparel (i.e., belt or cummerbund-like garment 12) having attachment means (i.e.,
hook and loop securing areas 14, 16). (Ans. 3; see also Keyes, col. 5, ll. 18-23).
The Examiner found that Keyes' belt is an article of clothing, specifically "top
outerwear." (Ans. 4).
Appellant contends that the device recited in claim 21 includes attachment
means that require apparel selected from the recited group, and that in all of the
attachment means, at least the upper torso or lower torso is covered by the apparel.
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Application 11/087,055

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(Br. 7). Appellant contends that Keyes' belt or cummerbund-like garment only
covers at most the waist, and does not function as apparel, but is worn over
apparel. (Id.). These contentions are not persuasive.
Claim 21 is directed to an article, and recites no limitation that precludes the
"apparel" from being worn over clothing. An ordinary meaning of "apparel" is
"something that clothes or adorns." Merriam-Webster's Collegiate Dictionary 59
(11th ed. 2003). Appellant, however, has presented no persuasive argument why
Keyes' belt or cummerbund-like garment would not "clothe" or "adorn" a person
wearing it, regardless of whether the device is worn over clothing, or why Keyes'
device could not function as "apparel" according to this ordinary meaning. This
meaning is consistent with the language of claim 21, which recites that "apparel" is
"selected from the group consisting of a jacket, a vest, top outerwear . . . . " and
these items are commonly understood to be worn over other apparel or clothing.
Appellant also contends that Keyes' device is not "dimensioned" to function
as apparel (Br. 7-8), and is held in only one dimension by a belt, whereas the
present invention is "multiple dimensioned in that the extremities hold the device
in place in multiple dimensions" (Id. at 8). The Examiner correctly found that such
functional scope is not claimed (Ans. 4), and claim 21 also does not recite any
dimensions for the apparel. It is well-established that unclaimed features cannot be
relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
In addition, Appellant does not provide any persuasive argument why the
claimed "top outerwear" is distinguishable from Keyes' belt or cummerbund-like
garment. Claim 21 itself does not further limit the scope of the term "top
outerwear." The Patent and Trademark Office gives claims their broadest
reasonable interpretation consistent with the specification, reading the claim
language as it would be interpreted by one of ordinary skill in the art. See In re
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Application 11/087,055

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Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Appellant
does not contend that the Specification presents a specific definition of the term
"top outerwear," or expressly disclaims a broad interpretation. See In re Paulsen,
30 F.3d 1475, 1480 (Fed. Cir. 1994) (An applicant is permitted to define specific
terms used to describe the invention by setting forth a definition for terms with
reasonable clarity, deliberateness and precision.); and In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004) ("Absent claim language carrying a narrow meaning, the
PTO should only limit the claim based on the specification or prosecution history
when those sources expressly disclaim the broader definition.").
An ordinary meaning of the term "cummerbund" is "a broad waistband usu.
worn in place of a vest with men's dress clothes and adapted in various styles of
women's clothes." Merriam-Webster's Collegiate Dictionary 305 (11th ed. 2003)
(emphasis added). As a "cummerbund" is a broad waistband usually worn in place
of a vest with men's dress clothes, and a vest is a member of the group of "apparel"
recited in claim 21, Appellant has not presented any persuasive reasoning why
Keyes' cummerbund could not function as "apparel."
Hence, we sustain the anticipation rejection of claim 21. Appellant does not
separately argue any specific limitations recited in claims 22-27 and 29, which
depend from claim 21, and we also sustain the rejection of claims 22-27 and 29.

Rejection of claims 28 and 30-38 as unpatentable over Keyes
Claim 28 depends from claim 21 and recites "an on/off mechanism to
deactivate all sensors of said at least one sensor . . . " The Examiner determined
that it would have been obvious to one skilled in the art to provide Keyes' sensor
with an on/off switch, and that it is well known in electronic devices to provide an
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Application 11/087,055

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on/off switch to prevent battery run down and inadvertent actuation/operation of
the device during its storage or transport. (Ans. 3, 5).
Appellant contends that Keyes teaches away from an on/off switch, and
there is no motivation to combine Keyes' device with an on/off switch. (Br. 9-10).
Appellant contends that Keyes' device provides protection against hip fractures,
and there would always be a need to have the sensors on. (Id. at 10). Appellant
contends that Keyes teaches away from providing the capability to turn the device
off, and there would be no motivation to turn it off. (Id.). We do not find these
contentions persuasive.
Firstly, Appellant has cited no description in Keyes that criticizes, discredits,
or otherwise discourages use of an on/off switch in the device. Hence, Appellant's
contention that Keyes teaches away from an on/off switch is not persuasive. See In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). In addition, the Examiner has
articulated an adequate reason why one skilled in the art would have desired to use
an on/off switch in Keyes' device. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections
on obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness.")). Thus, we sustain the
obviousness rejection of claim 28.
Independent claim 30 is directed to a pedestrian air bag device and recites
"attachment means" as recited in claim 21, and "an alarm mechanism." The
Examiner determined that it would have been obvious to one skilled in the art to
provide Keyes' sensor with an alarm to provide a warning upon activation of the
switch (Ans. 5), and to alert persons that the wearer may need assistance or
medical attention (Id. at 6).
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Regarding claim 30, Appellant relies on the same arguments discussed supra
with respect to claim 21, and additionally substantially the same arguments made
for claim 28. (Br. 9-10). However, because we find no deficiencies in the
Examiner's rejections of claims 21 and 28, we also sustain the rejection of claim
30. Appellant does not separately argue any specific limitations recited in claims
31-38, which depend directly or ultimately from claim 30, and we also sustain the
rejection of claims 31-38.
CONCLUSION
1. The Examiner did not err in finding that Keyes discloses "attachment
means . . . for attachment to a pedestrian, wherein said attachment means includes
apparel selected from the group consisting of a jacket, a vest, top outerwear, pants
and jumpsuit," as recited in claims 21 and 30.
2. The Examiner did not err in determining that it would have been
obvious to one of ordinary skill in the art in view of Keyes to incorporate "an
on/off mechanism" in Keyes' device to result in the device recited in claim 28.
3. The Examiner did not err in determining that it would have been
obvious to one of ordinary skill in the art in view of Keyes to incorporate "an alarm
mechanism" in Keyes' device to result in the device recited in claim 30.

DECISION
Each of the Examiner's rejections 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).

AFFIRMED
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