Ex parte Mertins

Board of Patent Appeals and Interferences

Jul 7, 1999

08639737 (B.P.A.I. Jul. 7, 1999)

Application for patent filed April 29, 1996.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOERG T. MERTINS
_____________
Appeal No. 99-0031
Application 08/639,7371
______________
ON BRIEF
_______________
Before CALVERT, COHEN and CRAWFORD, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 99-0031
Application 08/639,737
2
This is an appeal from the final rejection of claims
1, 2 and 4. Of the other claims remaining in the application,
claim 3 has been indicated as being allowable if rewritten in
independent form, and claims 6 to 8 have been allowed.
The claims on appeal are drawn to an attachment for
a baseball type cap, and are reproduced in the appendix to
appellant's brief.
The reference applied in the final rejection is:
Nieves-Rivera 5,493,734 Feb. 27, 1996
Claims 1, 2 and 4 stand finally rejected under 35
U.S.C. § 102(e) as anticipated by Nieves-Rivera. Since appel-
lant states on page 3 of the brief that the claims stand or
fall together, we will decide the appeal on the basis of claim
1.
37 CFR § 1.192(c)(7).
The examiner sets forth the basis of the rejection
on pages 2 and 3 of the final rejection (Paper No. 6) as:
Nieves-Rivera shows an attachment 10
comprised of securement means 12, 14, and
16, a connector portion having diverging
side edges 17a, 17b, and neck shield 20a,
Appeal No. 99-0031
Application 08/639,737
3
20b. Securement means 12, 14, and 16 could
be secured to only the adjustment strap of
a cap. This would be especially true if
the cap was a relatively large cap with a
relatively large adjustment strap and if
the securement means 12, 14, and 16 were
pushed together. . . .
. . . .
The securement means 12, 14, and 16 [of]
Nieves-Rivera could clearly be secured to
the adjustment strap of a relatively large
size adjustment means if the securement
means 12, 14, and 16 were pushed together.
Further, the connector portion and shield
20a and 20b could [be] folded into and worn
on the inside of a relatively large cap.
After fully considering the record in light of the
arguments presented by appellant in the brief and reply brief,
and by the examiner in the answer, we conclude that claim 1 is
not anticipated by Nieves-Rivera.
"To anticipate a claim, a prior art reference must
disclose every limitation of the claimed invention, either
explicitly or inherently." In re Schreiber, 128 F.3d 1473,
1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). Although an
element may be defined functionally, i.e., by what it does, it
is anticipated if the prior art structure inherently possesses
Appeal No. 99-0031
Application 08/639,737
4
the functionally defined limitations. Id., 128 F.3d at 1478,
44 USPQ2d at 1432.
In the present case, the preamble of claim 1 recites
"[a]n attachment for a baseball type cap having a hemispheric
opening and adjustment strap at the rear thereof and a bill in
front, comprising, . . . ." Appellant, citing several cases,
asserts that "the preamble is a limitation on the scope of the
claim" (brief, page 9; reply brief, pages 1 and 2). Insofar
as appellant may be arguing that claim 1 is drawn to the
combination of a baseball type cap and an attachment, we agree
with the
examiner that it is not, since the preamble recites an attach-
ment for a cap. However, the preamble limits the scope of the
claim to the extent that where a limitation in the body of the
claim refers back to structure recited in the preamble, the
preamble structure referred to is incorporated into that
limitation. For example, the recitation "securement means for
securing said attachment only to the adjustment strap of said
cap" is interpreted as "securement means for securing said
Appeal No. 99-0031
Application 08/639,737
5
attachment only to the adjustment strap at the rear of a
baseball type cap."
Nieves-Rivera does not disclose a baseball type cap,
but rather discloses an attachment to the liner 32 of a helmet
36. This does not necessarily remove Nieves-Rivera as an
anticipatory reference however, for it may still anticipate
claim 1 if the structure disclosed would inherently be capable
of performing the functions claimed. In re Schreiber, supra;
In re Casey, 370 F.2d 576, 580, 152 USPQ 235, 238 (CCPA 1967).
As for the specific limitations recited in claim 1,
we agree with the examiner that Nieves-Rivera discloses the
recited "securement means," since the securing devices 12, 14,
16 of the reference would be inherently capable of being
secured to the
rear adjustment strap of a baseball type cap if they were
pushed
together, the claim language not excluding such an arrange-
ment. Also, Nieves-Rivera discloses a connector portion and a
Appeal No. 99-0031
Application 08/639,737
6
deployable neckshield portion, as claimed. However, we do not
consider that the limitation "said connector portion being
shaped such that when folded inside said cap, said connector
portion fills said hemispheric opening to protect a user's
forehead when worn in reverse style" is readable on the at-
tachment (shield) 10 of Nieves-Rivera. The examiner contends
that attachment 10 "could clearly be folded up and pivoted to
the inside of [a baseball type] cap" (answer, page 5), but
even assuming that to be correct, claim 1 also requires that
when so folded, the connector portion protects a user's fore-
head "when worn." The attachment 10 of Nieves-Rivera is
relatively large, extending down over the shoulders of the
wearer and laterally over the cheeks (see Fig. 5). The refer-
ence does not disclose that attachment 10 may be folded inside
the helmet 36, and given its size, we do not consider that
even if it were attached to a relatively large baseball type
cap, the cap could still be worn in a normal fashion if the
attachment were folded inside it. In this regard, we agree
with appellant that (brief, page 6; original emphasis):
Appeal No. 99-0031
Application 08/639,737
7
The structure of Nieves-Rivera's shield
as disclosed in the drawings and described
in the specification is a large billowy
device generally incapable of being stuffed
inside of a baseball cap and then worn as
such. Even a larger size cap would not
accommodate the shield of Nieves-Rivera and
still be wearable on the head of a user.
Accordingly, since Nieves-Rivera does not disclose
all the limitations of claim 1, the rejection of that claim
under § 102(e), as well as of claims 2 and 4 grouped there-
with, will not be sustained.
Conclusion
The examiner's decision to reject claims 1, 2 and 4
is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
IRWIN CHARLES COHEN ) APPEALS AND
Administrative Patent Judge ) INTERFER-
ENCES
)
)
Appeal No. 99-0031
Application 08/639,737
8
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
IAC:psb
Appeal No. 99-0031
Application 08/639,737
9
Jim Zegeer
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