Ex Parte McQueer

Board of Patent Appeals and Interferences

Jun 21, 2010

10987889 (B.P.A.I. Jun. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PAMELA S. MCQUEER
____________________

Appeal 2009-013145
Application 10/987,889
Technology Center 3700
____________________

Decided: 22 June 2010
____________________

Before JAMESON LEE, MICHAEL P. TIERNEY, and
SALLY C. MEDLEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is a decision on appeal by an Appellant under 35 U.S.C. § 134(a)
from a final rejection of claims 1-46. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm-in-part.
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References Relied on by the Examiner
Cosby 4,698,845 Oct. 13, 1987
Mitchell 4,868,925 Sep. 26, 1989
Chang 5,390,368 Feb. 21, 1995
Jankowski US 6,375,537 B1 Apr. 23, 2002

The Rejections on Appeal
The Examiner rejected claims 1, 3, 4, and 10 under 35 U.S.C.
§ 102(b) as anticipated by Chang.
The Examiner rejected claims 11, 12, 35-39, and 44 under 35 U.S.C.
§102(b) as anticipated by Jankowski.
The Examiner rejected claims 7 and 9 under 35 U.S.C. § 103(a) as
unpatentable over Chang.
The Examiner rejected claims 5 and 6 under 35 U.S.C. § 103(a) as
unpatentable over Chang and Cosby.
The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Chang and Mitchell.
The Examiner rejected claims 2, 11-19, 21, 23, 27, 28, 30-35, 37, 39,
40, 42, and 44-46 under 35 U.S.C. §103(a) as unpatentable over Chang and
Jankowski.
The Examiner rejected claims 11-26 and 31-43 under 35 U.S.C.
§103(a) as unpatentable over Cosby and Jankowski.
The Examiner rejected claim 29 under 35 U.S.C. §103(a) as
unpatentable over Chang, Jankowski, and Mitchell.

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The Invention
The invention relates to a protective athletic garment for protecting
athletes during sporting competition. (Spec. 1: ¶ 0002.)
Claim 1 is reproduced below (Claims App’x. 1-2):
1. A protective athletic garment, comprising:

a pair of shoulder protection plates adapted to cover at least a
portion of each shoulder of a user;

a pair of epaulets adapted to cover at least a portion of each
shoulder of a user, wherein the pair of epaulets are coupled to the pair
of shoulder protection plates, and wherein a top surface of each
epaulet extends downwardly from a horizontal when in a free state of
movement;

at least one rear arch plate adapted to cover at least a portion of
a back of a user, wherein the at least one rear arch plate is coupled
with the at least one shoulder protection plate, and wherein the at least
one rear arch plate includes a lower portion that extends downwardly
and is adapted to cover an upper lumbar region of a back of a user,
and a pair of first side portions adapted to wrap about each side of a
user;

at least one front arch plate adapted to cover at least a portion of
a chest of a user, coupled to the pair of shoulder protection plates, and
having a body portion defining a forwardly facing first surface and a
pair of relief areas extending outwardly from the first surface defining
a cavity within an interior of the garment that is adapted to receive a
pectoral area of a user, a lower portion that extends downwardly and
is adapted to cover an upper abdominal area of a user, and a pair of
second side portions adapted to wrap about each side of a user; and

a padding member operably coupled to at least a select one of
the at least one rear arch plate and the at least one front arch plate,
wherein the padding is configured and oriented to provide a gap
between an uppermost portion of the padding adapted to cover each
shoulder of a user, and an upper most portion of each of the at least
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one rear arch plate and the at least one front arch plate when the
padding is in a free state of movement.
B. ISSUES
1. Has the Appellant shown that the Examiner erred in finding that
Chang discloses an athletic garment having the features of front and rear
arch plates with side portions that are adapted to wrap around each side of a
user of the garment?
2. Has the Appellant shown that the Examiner erred in finding that
Jankowski’s “elastic nylon” shoulder straps constitute a substantially rigid
shoulder portion?
3. Has the Appellant shown that the Examiner erred in
determining that there is adequate reason to combine the teachings of Chang
and Jankowski?
4. Has the Appellant shown that the Examiner erred in
determining that there is adequate reason to combine the teachings of Cosby
and Jankowski?
C. FINDINGS OF FACT
1. Chang discloses a shoulder pad assembly for football players.
(Chang Abstract.)
2. In Chang, the shoulder pad assembly includes body arches 10,
20 that form components on the front and rear of the assembly. (Id. at 41-
49; Figs. 1, 2.)
3. Portions of the body arches are bound together by webbings 44.
(Id. at 3:24-31; Figs. 1, 2.)
4. Jankowski discloses a protective breast shield for use by an
athlete and that is impact resistant. (Jankowski Abstract.)
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5. Breast shield 1 is designed to fit over a female breast area and
over some of the rib cage area. (Id. at 1:66-67.)
6. In Jankowski, the breast shield includes a pair of shoulder
straps 3 for attaching the breast plate to a user’s body. (Id. at 6-8.)
7. Jankowski describes that shoulder straps are made of “elastic
nylon material.” (Id. at 2:6-7.)
8. In Jankowski, the term “soccer” appears only twice and then
only in the context of an example of a sport that may subject a player to
injury due to a soccer ball striking the player in the chest with substantial
impact. (Jankowski 1:22-25.)
9. Jankowski also recognizes that in each of the sports of
“basketball, baseball, softball, and football” a player may also experience
blows to their chest area. (Id. at 1:18-20.)
10. Jankowski’s breast shield serves to provide protection to a
player from blows to the chest. (Id. at Abstract.)

D. PRINCIPLES OF LAW
Anticipation is established only when a single prior art reference
discloses all elements of the claimed invention. In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990).
Arguments of counsel cannot take the place of evidence lacking in the
record. Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir.
1997).
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E. ANALYSIS
The rejection of claims 1-10 based on Chang
Independent claim 1 was rejected as anticipated by Chang. Claims 2-
10 are dependent on claim 1 and were rejected based on either Chang alone
or Chang with one of Cosby, Mitchell, and Jankowski. Dependent claims 3-
10 are argued collectively with claim 1. We focus on the contested
limitations of claim 1. The claim is drawn to a protective athletic garment
and requires “at least one rear arch plate” including “a pair of first side
portions adapted to wrap about each side of a user[.]” (Claims App’x. 1.)
Claim 1 also requires “at least one front arch plate” including “a pair of
second side portions adapted to wrap about each side of a user[.]” (Id.)
In accounting for the above-quoted limitations, the Examiner found
that Chang discloses a shoulder pad assembly as a protective athletic
garment having left and right body arches 10, 20, which form a rear arch
plate and front arch plate. The Examiner further found that the front and rear
arch plates include portions 44 which operate to join the arch plates to one
another by wrapping around the sides of a user of the garment. (Ans. 3:10-
18.)
The Appellant challenges the Examiner’s findings, arguing that
Chang’s elements 44 are disclosed as webbings that are separate and distinct
components from its body arches 10, 20 and thus do not form parts of the
body arches. (Br. 6:3-8.) The Appellant thus concludes that Chang does not
disclose front and rear arch plates that include side portions which are
adapted to wrap about the side of a user. (Id. at 6:9-10.)
In the context of the Appellant’s specification, the structure that
makes-up the front and rear arch plates does not include any fastening
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devices that connect the arch plates. Indeed, the specification describes that
separate “binding” may be used to connect the front and rear arch plates.
(Spec. 6: ¶ 18.) In Chang, the webbings 44 that are identified by the
Examiner as forming portions of body arches 10 and 20, are separate
elements from the body arches and operate as means to bind the front
portions of the body arches to the back portions. It is unreasonable to view
those separate binding webbings as portions of the body arches.
The Appellant’s claim 1 requires that the front and rear arch plates
each include side portions that are adapted to wrap around the sides of a
user. Chang does not show or describe that any portion of its body arches
are adapted to wrap around the sides of a user. Chang, therefore, does not
disclose all the features of claim 1.
For the foregoing reasons, we do not sustain the rejection of claim 1
as anticipated by Chang.
Claims 3, 4 and 10 are each dependent on and include all the
limitations of claim 1. Those dependent claims were also rejected as
anticipated by Chang. We also do not sustain the rejection of claims 3, 4,
and 10.
Claims 7 and 9 are each dependent on claim 1 and were rejected under
35 U.S.C. § 103(a) as unpatentable over Chang. The Examiner’s
conclusions of obviousness relate to features added by claims 7 and 9 and do
not account for the above-noted deficiencies of Chang in connection with
claim 1. We also do not sustain the rejection of claims 7 and 9 over Chang.
With regard to dependent claims 2, 5, 6, and 8, the Examiner
additionally cites to one of Cosby, Mitchell, and Jankowski in rejecting
those claims. Those references, however, are cited to account for features
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that are added by those claims and are not relied upon to make-up the above-
noted deficiencies of Chang with respect to claim 1. Accordingly, we also
do not sustain the rejections of claims 2, 5, 6, and 8.
The rejection of claims 11, 12, 35-39 and 44 based on Jankowski
Claims 11, 12, 35-39 and 44 were rejected as anticipated by
Jankowski. Claim 11 is independent. Claims 12, 35-39 and 44 are
dependent on, and argued collectively with, claim 11. We focus on the
disputed features of claim 11.
Claim 11 is drawn to a protective athletic garment that includes “a
substantially rigid shoulder portion adapted to protect a shoulder area of a
user from impact[.]” (Claims App’x. 3.) The Examiner found the above-
quoted limitation is disclosed in Jankowski. The Appellant disputes that
finding.
Jankowski discloses a protective breast shield 1 for use by an athlete
that includes a pair of shoulder straps 3 for attaching the breast plate to a
user’s body. (Jankowski Abstract.) The Examiner pointed to those shoulder
straps as being “substantially rigid.” Jankowski, however, describes that the
straps are made of “elastic nylon material.” (Id. at 2:6-7.) In making her
determination that an “elastic nylon material” is one that is “substantially
rigid,” the Examiner first states in the Final Rejection mailed September 4,
2008 that the term “substantially rigid” has a meaning that is allegedly of
such breadth that “[a]nything can be considered substantially ridged [sic,
rigid].” (Final Rej. 13:9-10.)
The Examiner, however, provides no reasonable support for that
statement, which effectively reads the term “substantially rigid” out of the
claims. That is improper.
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As further justification for her position, the Examiner states in the
Examiner’s Answer mailed April 10, 2009 the following (Ans. 4:9-17):
All fabric materials are rigid to a degree, including elastic/nylon
material. Elastic/nylon material would have a substantially greater
rigidity in comparison to other materials. Furthermore, the degree of
rigidity of an elastic nylon material would also be affected by the
temperature of the material, very cold temperatures would create a
substantially more rigid material then when the same material is at
room temperature.

Thus, the Examiner contends that because there theoretically exists
some material that is less rigid than an elastic nylon material, then the elastic
nylon material may be considered substantially rigid. That position is
unreasonable. By that standard, all materials are at once substantially rigid
and yet also substantially non-rigid.
“Rigid” means “deficient in or devoid of flexibility.” Merriam
Webster’s Collegiate Dictionary 1008 (10th ed. 1996). A material that is
“substantially rigid” is one that is substantially devoid of flexibility. That
meaning is consistent with the Appellant’s specification which describes that
shoulder portions of the invention are “constructed of a hardened, impact
resistance material such as a hardened plastic or vinyl.” (Spec. 5: ¶ 00015.)
On the other hand, the term “elastic” that appears in Jankowski in
describing its shoulder straps conveys a meaning that is synonymous with
“flexible” and in particular means “capable of being easily stretched or
expanded and resuming formed shape: FLEXIBLE.” Merriam Webster’s
Collegiate Dictionary 370 (10th ed. 1996). It is unreasonable to view the
requirement that a material be substantially devoid of flexibility as also
encompassing a material that is flexible, such as Jankowski’s elastic nylon
material.
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Furthermore, the Examiner does not point to any support for her
assertion that the elastic nylon material will obtain increased rigidity when
subjected to “very cold temperatures.” Neither does the Examiner
adequately explain, why, even if the assertion is true, a material that
increases its rigidity only for a limited time under an extreme circumstance,
i.e., very cold temperatures, meets the general and unrestricted claim
requirement of a shoulder portion that is “substantially rigid.”
We reject the Examiner’s position that Jankowski’s elastic nylon
straps form the “substantially rigid shoulder portion” that is required by
claim 11. We do not sustain the rejection of claims 11, 12, 35-39, and 44 as
anticipated by Jankowski.
The rejection of claims 11-19, 21, 23, 30-35, 37, 39, 40, 42,
and 44-46 based on Chang and Jankowski

The Examiner rejected claims 11-19, 21, 23, 27, 28, 30-35, 37, 39, 40,
42, and 44-46 over Chang and Jankowski and claim 29 over Chang,
Jankowski, and Mitchell.
The Appellant does not dispute that the prior art discloses all the
features of the above-noted claims. Rather, in challenging the rejections, the
Appellant argues that there is insufficient reason to combine the teachings of
Chang and Jankowski. According to the Appellant, Jankowski’s breast plate
is limited in use to the sport of soccer, which the Appellant characterizes as a
“low impact sport.” (Br. 9:22-23.) The Appellant urges that her inventive
garment, and also, evidently, Chang’s athletic garment, is for use with a
“high impact sport” such as football. (Id. at 9:24-26.) Based apparently on
some distinction between equipment used for low impact sports and that
used for high impact sports, the Appellant concludes that a person of
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ordinary skill in the art would not have had adequate reason to combine the
teachings of Chang and Jankowski.
The Appellant’s argument is unpersuasive. It is not meaningfully
explained why all features on garments for a low impact sport are per se
unusable on a garment for a high impact sport. We reject that position. In
particular, the Appellant does not explain why one with ordinary skill in the
art would not recognize a breast shield as something useful in a garment for
a high impact sport.
Furthermore, the Appellant does not explain the basis for regarding
soccer as a low impact sport. The assertion that soccer is a “low impact
sport” is simply an unsupported argument of the Appellant’s counsel, which
cannot take the place of evidence lacking in the record. Estee Lauder Inc.,
129 F.3d at 595.
Moreover, Jankowski itself recognizes that during play of soccer a
player may be exposed to “impact” from a kicked ball that “can be
substantial.” (Jankowski 1: 22-25.) That the sport of soccer presents the risk
of a substantial impact to a player is not consistent with the Appellant’s
opinion that soccer is a “low impact sport.”
In any event, contrary to the Appellant’s assertion, Jankowski’s
protective breast plate is not limited to any one sport, let alone the sport of
soccer. The term “soccer” appears only twice in Jankowski and then only in
the context of an example of a sport that may subject a player to injury due
to a soccer ball striking the player in the chest. (Id.) Jankowski also
recognizes that in each of the sports of “basketball, baseball, softball, and
football” a player may also experience blows to their chest area. (Id. at 1:18-
20) (emphasis added.) Jankowski’s inventive breast plate serves to provide
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protection to a player from those sort of blows. (Id. at Abstract.) The
Appellant’s assertion that Jankowski is limited to a particular sport, i.e.,
soccer, to the exclusion of other sports, such as football, is incorrect.
Jankowski’s reference to football as a sport in which a player may
experience blows to the chest is a strong suggestion for using its breast
shield in a football garment.
For all the foregoing reasons, we sustain the rejection of claims 11-19,
21, 23, 27, 28, 30-35, 37, 39, 40, 42, and 44-46 over Chang and Jankowski
and the rejection of claim 29 over Chang, Jankowski, and Mitchell.
The rejection of claims 11-26 and 31-43
over Cosby and Jankowski

Cosby discloses a protective shock absorbing athletic garment that
may be worn by participants of a sport such as football. (Cosby 1:6-22.)
The Appellant’s argument pertaining to the combination of Cosby and
Jankowski is essentially the same as that presented with respect to the
combination of Chang and Jankowski. Namely, the Appellant urges that
there is insufficient motivation to combine the teachings of those references
because Jankowski’s teachings are limited to the “low-impact sport of
soccer,” which precludes their implementation into a garment used in
football, such as in Cosby. (Br. 10:10-30.)
For the same reasons as those given above in connection with Chang
and Jankowski, we reject the Appellant’s arguments with respect to the
combination of Cosby and Jankowski. We sustain the rejection of claims
11-26 and 31-43 over Cosby and Jankowski.
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F. CONCLUSION
1. The Appellant has shown that the Examiner erred in finding
that Chang discloses an athletic garment having the features of front and rear
arch plates with side portions that are adapted to wrap around each side of a
user of the garment.
2. The Appellant has shown that the Examiner erred in finding
that Jankowski’s “elastic nylon” shoulder straps constitute a substantially
rigid shoulder portion.
3. The Appellant has not shown that the Examiner erred in
determining that there is adequate reason to combine the teachings of Chang
and Jankowski.
4. The Appellant has not shown that the Examiner erred in
determining that there is adequate reason to combine the teachings of Cosby
and Jankowski.
G. ORDER
The rejection of claims 1, 3, 4, and 10 under 35 U.S.C. §102(b) as
anticipated by Chang is reversed.
The Examiner rejection of claims 7 and 9 under 35 U.S.C. §103(a) as
unpatentable over Chang is reversed.
The rejection of claims 5 and 6 under 35 U.S.C. §103(a) as
unpatentable over Chang and Cosby is reversed.
The rejection of claim 8 under 35 U.S.C. §103(a) as unpatentable over
Chang and Mitchell is reversed.
The rejection of claim 2 under 35 U.S.C. §103(a) as unpatentable over
Chang and Jankowski is reversed.
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The rejection of claims 11, 12, 35-39, and 44 under 35 U.S.C. §102(b)
as anticipated by Jankowski is reversed.
The rejection of claims 11-19, 21, 23, 27, 28, 30-35, 37, 39, 40, 42,
and 44-46 under 35 U.S.C. §103(a) as unpatentable over Chang and
Jankowski is affirmed.
The rejection of claims 11-26 and 31-43 under 35 U.S.C. §103(a) as
unpatentable over Cosby and Jankowski is affirmed.
The rejection of claim 29 under 35 U.S.C. §103(a) as unpatentable
over Chang, Jankowski, and Mitchell is affirmed.

AFFIRMED-IN-PART

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