Ex Parte McGoogan

Patent Trial and Appeal Board

Sep 16, 2016

13045012 (P.T.A.B. Sep. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/045,012 03/10/2011
52554 7590
Southeast IP Group, LLC
P.O. Box 14156
GREENVILLE, SC 29610
09/19/2016
FIRST NAMED INVENTOR
John C. MCGOOGAN
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.
MCG-001 2090
EXAMINER
ANNIS, KHALED
ART UNIT PAPER NUMBER
3765
MAILDATE DELIVERY MODE
09/19/2016 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 JOHN C. MCGOOGAN
Appeal2015-000952
Application 13/045,012
Technology Center 3700
Before EDWARD A. BROWN, GEORGE R. HOSKINS, and
FREDERICK C. LANEY, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
John McGoogan (Appellant) 1 appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 1-5. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 The inventor, John C. McGoogan, is identified as the real party in interest.
Br. 1.
Appeal2015-000952
Application 13/045,012
CLAIMED SUBJECT MATTER
Appellant's disclosure "relates generally to cold weather hats and
headwear. More specifically, the present invention includes a toboggan
style hat with a removable baseball cap style visor." Spec. p. 1, 11. 5-7.
Claim 1, reproduced below, is representative of the claimed subject matter:
1. A cold weather hat with a removable visor comprising:
a hat member that fits snugly over a wearer's head and
ears, wherein said hat member includes an outer side and an inner
side;
said inner side of said hat member defining a pair of holes;
wherein each said hole is an open end of an inner tube
positioned adjacent said inner side of said hat member, and
wherein each said inner tube is oriented at an upward angle
toward a top of said hat member;
a first removable visor member comprising a bill member
and a pair of arms extending rearwardly away from said bill
member; and
wherein said arms of said first removable visor member
are adapted to be received within said holes and positioned
within each said inner tube when said visor member is removably
attached to said hat member.
Br. 11 (Claims App.).
REJECTIONS
I. Claim 5 is rejected under 35 U.S.C. § 112, second paragraph, as
indefinite.
II. Claims 1and2 are rejected under 35 U.S.C. § 102(b) as
anticipated by McCallum (US 5,367,713, issued Nov. 29, 1994).
III. Claims 3-5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over McCallum.
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Application 13/045,012
ANALYSIS
Rejection I
Claim 5 depends from claim 1 and recites ''further including a second
removable visor member that may be attached to said hat member and used
interchangeably with said first removable visor member." Br. 12 (Claims
App., emphasis added). The Examiner determines that the phrase "may be
attached" renders the claim indefinite "because it is unclear whether the
limitation(s) following the phrase are part of the claimed invention." Non-
Final Act. 3.
We construe claim 5 as reciting a hat comprising a first removable
visor member and a second removable visor member, which visor members
may be attached interchangeably to the hat member. This construction is
consistent with the description at page 7, lines 1---6, of the Specification.
Accordingly, we determine that the meaning of claim 5 is sufficiently clear
when read in light of the Specification. We do not sustain the rejection of
claim 5 under 35 U.S.C. § 112, second paragraph.
Rejection II
The Examiner finds that McCallum discloses all limitations of claim
1. Non-Final Act. 4-5 (citing McCallum, Fig. 3).
In contrast, Appellant contends that McCallum fails to disclose
several claim limitations. Br. 4---6. Particularly, claim 1 recites "a hat
member that fits snugly over a wearer's head and ears." Id. at 11 (Claims
App., emphasis added). Appellant contends that McCallum does not
disclose a hat that covers a wearer's ears; rather, "McCallum' s Figs. 1, 6, 9,
and 14 all show a hat designed to rest above the ears, using the ears for
supporting the brim above a wearer's face and not covering the ears." Id. at
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Appeal2015-000952
Application 13/045,012
5 (emphasis added). The Examiner responds that McCallum's hat member
"does fit snugly over the upper portion of the ears of the wearer." Ans. 3.
Appellant's contention is persuasive. Figures IA and IB of
Appellant's disclosure depict how hat 10 "fits snugly over a wearer's head
and ears." The Specification describes that "the hat 10 is ... shaped to fit
over a user's head and ears." See Spec. p. 5, 11. 2--4. Consistent with this
disclosure, we construe "fits snugly over" to mean "snugly covers."
Applying this construction to claim 1, we agree with the Examiner that
McCallum's hat can be considered to fit snugly over a wearer's head.
However, the Examiner fails to identify support in McCallum to show, and
otherwise does not explain, how McCallum's hat member "fits snugly over"
a wearer's ears. Consequently, the Examiner's finding that McCallum meets
this limitation is not supported by a preponderance of the evidence.
Claim 1 also recites that "each said hole is an open end of an inner
tube positioned adjacent said inner side of said hat member." Br. 11 (Claims
App.). Claim 1 specifies that "each inner tube is oriented at an upward
angle toward a top of said hat member." Id. (emphasis added). This
limitation is shown in Figure 3 of Appellant's disclosure. See also Spec. p.
6, 11. 8-14. The Examiner finds that McCallum discloses a pair of holes 86,
each of which is an open end of an inner tube. Non-Final Act. 4. The
Examiner explains that Figure 6 of McCallum shows that "the space
between the flap (79) and the inner surface of the hat where the arms (84)
are inserted is a hollow elongated flat cylinder which resemble a tube as
defined by the Appellant (See Page 5, last paragraph)." Ans. 3.
Appellant contends that, in Figures 6-10 and 14 of McCall um, "the
arms of the visor, within the slits 86 behind the 'reinforcing flap' 89 [sic],
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Appeal2015-000952
Application 13/045,012
are positioned so that they are parallel with the bottom periphery of the hat,
and include no upwardly angled tubes, as claimed." Br. 6 (emphasis added).
The Examiner responds that, in McCallum:
each of the inner tube (a right and a left tubes) portion (in the
north-south direction) relative to an axis extending along the
width of the inner sleeve (east-west direction), for example a
line taken between the flap (79) and the inner surface of the hat
edge adjacent to the wearer's ear), are oriented at an upward
angle (90 degrees) from the top edge (adjacent the ear of the
wearer toward a top of said hat member adjacent the crown of
the wearer[)].
Ans. 3--4.
Appellant's contention is persuasive. Figure 6 of McCallum does not
show clearly that the "inner tubes" defined by reinforcing flap 79 are
"oriented at an upward angle toward a top" of the hat. In addition, the
Examiner does not identify any description in McCallum that supports this
finding.
Further, claim 1 recites that "said inner side of said hat member
defining a pair of holes." Br. 11 (Claims App., emphasis added). Appellant
explains that Figures 6 and 7 of McCallum show the slits for receiving the
visor arms are on the outer side of the hat. Id. at 6. The Examiner responds
that Figure 6 of McCallum "clearly illustrates that the slits/holes (86) are
indeed on the inner side of the hat facing the head of the wearer." Ans. 4.
McCallum describes that "[t]he removable plastic visor 76 has arms
84 which extend through slits 86 on opposite sides of hat layer 74."
McCallum, col. 5, 11. 6-7. Figure 6 shows the inside of the hat with slit 86
and arms 84 represented by broken lines. Figure 7 shows the outside of the
hat with slit 86 represented by solid line and arms 84 by broken line. We
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Appeal2015-000952
Application 13/045,012
agree with Appellant that these figures show that slit 86 is on the outer side
of the hat, not the inner side as required by claim 1.
For the above reasons, we are persuaded that the Examiner erred in
finding that McCallum discloses all limitations of claim 1. Accordingly, we
do not sustain the rejection of claim 1 and dependent claim 2 as anticipated
by McCallum.
Rejection III
The Examiner's further reliance on McCallum to reject dependent
claims 3-5 does not cure the deficiencies of McCallum with respect to claim
1. Final Act. 5-7. We also do not sustain the rejection of claims 3-5 as
unpatentable over McCallum.
DECISION
We reverse the Examiner's decision to reject claims 1-5.
REVERSED
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